Key Provision:
Section 134 of the Trade Marks Act, 1999 governs the jurisdiction for suits relating to trademark infringement and passing off involving registered trademarks.
1. Default Jurisdiction Rules
(a) Plaintiff-Centric Jurisdiction – Section 134(1):
A suit may be instituted in a court within the local limits where the plaintiff:
- Actually and voluntarily resides; or
- Carries on business; or
- Personally works for gain.
Applicability:
- This provision extends to individuals, companies, and registered trademark proprietors or users.
In the case of corporate plaintiffs:
- Jurisdiction lies at the location of the principal office, or
- A subordinate office, provided the cause of action has arisen there.
(b) Cause of Action Jurisdiction – Section 134(2):
Alternatively, a suit may be filed in a court where the cause of action, wholly or in part, has arisen.
Example: The place where the infringing activity (such as the sale of counterfeit or deceptively similar goods) occurred.
2. Key Features
- Departure from CPC Principles:
Unlike Section 20 of the Code of Civil Procedure, 1908 (CPC), which bases jurisdiction on the defendant’s residence or cause of action, Section 134 emphasizes the plaintiff’s convenience. - Type of Court:
Proceedings may be initiated before a District Court or a High Court having original civil jurisdiction, depending on pecuniary limits and jurisdictional competence.
3. Important Judicial Precedents
• Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161
- Held: If the plaintiff’s principal office and the cause of action are situated in the same location, the suit must be filed there and not at a subordinate office, to prevent forum shopping.
• Dhodha House v. S.K. Maingi, (2006) 9 SCC 41
- Held: The expression “carrying on business” includes conducting business activities such as sales, marketing, or service provision in a given jurisdiction, even without a physical office.
4. Practical Implications
- Plaintiff-Friendly Approach:
Enables trademark proprietors to institute suits at their place of business or residence, facilitating easier enforcement of rights. - Judicial Safeguards:
Courts continue to examine the balance of convenience and discourage misuse of jurisdictional flexibility.
Conclusion:
Section 134 of the Trade Marks Act, 1999 strikes a balance between ensuring accessibility for right holders and preventing abuse through forum shopping, thus promoting fair and efficient enforcement of trademark rights in India.