This article is written by Pranav Gupta, Law clerk cum research assistant to Justice Sanjay Kishan Kaul, Supreme Court of India.
The law for institution of the civil suit for infringement of the trademark is well envisaged under section 134 of the Trade Mark Act, 1999. This section confers jurisdiction to the ‘District Court’ to entertain the suit for the alleged infringement of the registered trade mark, relating to any right in a registered trade mark or for a passing off arising out of the ‘use’ by the infringer of any trade mark, implying that the registered proprietor and registered user of the ‘mark’ can institute a suit where he actually and voluntarily resides, or carries on business, or personally works for gain.
The position with respect to the institution of the trade mark infringement suit under the provisions of the Code of Civil Procedure, was reiterated recently by the Hon’ble Delhi High court in the celebrated case of Burger King Corporation vs Techchand Shewakramani & Ors, where the issue that came up for consideration of their lordship was with respect to the entertainment of the suit under section 20 of the civil procedure code and section 134 of the Trade Mark Act, where there is no credible and strong apprehension at the time of filing of the suit and cause of action is quia timet cause of action passed on an imminent lounge of franchise by the Defendants in Delhi.
The factual matrix of the case, presented, before their lordship, were that the plaintiff filed the suit seeking permanent injunction restraining infringement of trademark, passing off, damages, in respect of the trademark ‘Burger King’ and ‘Hungry Jack’s’, both as a trademark, as also part of their corporate names. Whereas all the defendants are based out of Mumbai, Maharashtra. The Plaintiff is a U.S. based company. The plaintiff filed the suit before the Delhi high court under two separate laws, first under section 134 of the Trade Mark Act, 1999 and section 20 of the CPC, on the premise that numerous agreements and contracts had been entered into by him with various parties within the territory of New Delhi in furtherance of the imminent launch of its Burger King franchisee outlet in New Delhi, and that there was a strong and credible apprehension that the defendants will expand their operations under the impugned trading style/trade mark of ‘Burger King Restaurants’ in New Delhi and that there existed a threat that the Defendants will use the impugned trade-marks trade names within the jurisdiction of this Hon’ble Court.
The learned counsel for the defendants submitted that the courts of Delhi have no jurisdiction to entertain this suit, as no cause of action arose in Delhi, since all the defendants are independent and distinct entities and have no relation with each other. Moreover, the subsequent events, after filing of the suit, cannot confer the jurisdiction to the court to entertain the suit. To buttress the argument, the defendant placed reliance on the case of Indian Performing Rights Society Ltd. v. Sanjay Dalia, followed by Ultra Home Construction Pvt. Ltd. v. Purshottam Kumar Chaubey and others, to submit that the Delhi high court had no jurisdiction, since the defendants actually and voluntarily resides in Mumbai and not in Delhi.
The Plaintiff submitted that the defendants are connected with each other and have a website which is interactive. The website of Defendant No.5 which is registered in the name of Defendant No.3 lists Defendant No.7 as its property, and uses the impugned mark ‘Burger King’, and was said to be expanding their operations into Delhi, as is clear from the various documents and agreements placed on record and that the apprehensions are not just imminent but in fact real, which is very much evident from the launching of the Burger King carts and outlets in Delhi, per various agreements filed by the Defendants.
Their Lordships, in this case, explain how, if the suit is preferred alleging the infringement of trade mark under Section. 20 of the CPC, what constitutes cause of action in such cases, was the “use of the marks” constituting an infringement or a passing off action. Their lords defined the term “use” placing reference to Kerly’s Law of Trade Mark and Trade Names and to the provision of the trade mark laws and went on to explain that it is the ‘use of the mark’ or ‘use of a mark in relation to goods’, which could be either in a physical or in any other relation whatsoever to such goods, where “In relation to” refers to advertising, promotion, publicity, etc.
In addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory, or for example, invites franchisee queries from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would all constitute ‘use of a mark’.
Moreover, the objection of the defendant that the subsequent events after filing of the suit in the present case, i.e, the quia timet passing off actions qua the opening of a franchise in Delhi, was expounded by their lords after placing reliance on Laxmikant V. Patel v. Chetanbhat Shah & Ors, by holding that passing off is not to be determined by the facts as they exist on the date of filing of suit, but can be ascertained keeping in view the future expansions of the business, that may cause irreparable loss to the plaintiff-registered owner.
Therefore, the court rightly held that section 134 of the trade mark and section 62 of the copyright act are in addition to and not exclusion of section 20 CPC so far as jurisdictional forums are concerned, and if the plaintiff is successful in making out the cause of action within the jurisdiction of the court under section 20 CPC, he is not required to make reference to Section 134 of the Trade Mark Act.
The section 20 of the code of civil procedure is common law provisions, which provides the rights to the plaintiff to institute suit proceedings at a place where the defendant(s) are actually and voluntarily residing or carry on the business for gain. The intendment of the legislators behind section 20 of CPC is to provide a forum to the plaintiff to put forth his grievance against the defendant in whose local jurisdiction, the cause of action has arisen either wholly, or in part.
The provisions of section 134 of the Trade mark Act were enacted under the umbrella of Section 20 of CPC, which provides almost similar rights to the plaintiff with respect to the jurisdiction of the forum where the plaintiff (registered owner or registered user) can file a suit at his own place, or where he carries on the business for gain.
This forum so provided in section 134 is added to the forum so envisaged under section 20 of the CPC. The scope of applicability of section 20 cannot be garbed under the shadow of section 134 of Trade mark Act. Section 20 of CPC being procedural in nature, shall always prevail over the substantive law and thus goes hand in hand with Section 134 of the Trade Mark Act. Justice is the goal of jurisprudence – processual, as much as substantive.
Their Lordships in their obiter dicta, opined the importance of admission/denial in the commercial matters, regulated by the Commercial Courts Act. Admission/denial in literal meaning means either admits or denies the genuineness or validity of the documents so provided by the opposite parties. The main intention of the legislators in inserting provisions for admission/denial by way of an affidavit is to narrow down the triable issues and prevent prolonged trials and to deny only those documents whose existence, genuinity or authenticity is disputed. Their lordship held that documents such as trademark certificates, copyright certificates, legal notices, replies, e-mail correspondence, documents issued by the government, ought not to be permitted to be denied as such denials are bereft of merit and prolong the trial. Admission/denials affidavit ought to be fair, bona-fide and not prolong the trial by denying document just to harass the opposite parties into proving each and every document with certified copies/original.