Case Note & Summary
The case arose out of a suit for perpetual injunction filed by Hindustan Unilever Limited (plaintiff) against Ashique Chemicals and others (defendants) before the Bombay High Court seeking to restrain the defendants from using the trade mark ‘SunPlus’ or any deceptively similar mark for soaps and detergents. The plaintiff claimed to be the registered proprietor of the word marks ‘Sun’, ‘Sunlight’, and ‘Sunsilk’ under Class 3, with the mark ‘Sun’ being the root of the other associated marks. The defendants were a sole proprietary concern and their associates operating from Tamil Nadu and Kerala, using the mark ‘SunPlus’ with a distinctive device. The plaintiff became aware of the defendants’ products in January 2010 and, after first filing a suit which was withdrawn with liberty, filed the present suit on 10 March 2010. The defendants raised a preliminary objection that the Bombay High Court lacked territorial jurisdiction to entertain the suit. They contended that no cause of action arose in Mumbai as the defendants’ business was entirely outside the State and the alleged infringement did not take place there. Relying on Section 159(5) of the Trade Marks Act, 1999, they argued that prior use of the mark might exempt them from infringement. They further submitted that Section 134(2) only provides an additional forum to the plaintiff, but if the cause of action arises at the place where the plaintiff also resides or carries on business, the suit must be filed there and not elsewhere. In support, they cited a Division Bench decision of the Delhi High Court in IPRS v. Sanjay Dalia. The plaintiff countered that Section 134(2) is a non-obstante provision that overrides the Code of Civil Procedure and entitles the plaintiff to institute the suit at any place where the plaintiff actually and voluntarily resides or carries on business, irrespective of the situs of the cause of action. The plaintiff pointed to the mandatory language of the provision and its salutary purpose of protecting trademark holders from the inconvenience of litigating at distant locations. Justice S.J. Vazifdar, after considering the arguments, overruled the preliminary objection. The court held that Section 134(2) is mandatory and its terms are clear: the plaintiff may file a suit for infringement in a District Court within whose jurisdiction the plaintiff resides, carries on business, or personally works for gain at the time of institution of the suit. The use of the word ‘shall’ and the non-obstante clause ‘notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law’ indicated the legislative intent to provide an unqualified right to the plaintiff. The court declined to follow the Delhi High Court’s interpretation, finding it contrary to the express terms of the statute. The court observed that the legislature was presumably aware of the potential hardship to defendants but consciously chose to grant this privilege to plaintiffs. Consequently, the preliminary objection was dismissed, and the court proceeded to hear the notice of motion on merits, reserving the defendants’ right to challenge the jurisdictional finding.
Headnote
A) Intellectual Property - Trademark Infringement - Territorial Jurisdiction - Trade Marks Act, 1999, Section 134(2) - The Bombay High Court interpreted the scope of Section 134(2) which allows a suit for infringement to be instituted where the plaintiff resides or carries on business. The court held that the provision is mandatory and creates an additional forum, not requiring the plaintiff to file where the cause of action arose even if the plaintiff is located there. The non-obstante clause gives overriding effect over the Code of Civil Procedure. The court disagreed with the Delhi High Court's decision in IPRS v. Sanjay Dalia. Held: Preliminary objection to territorial jurisdiction overruled. (Paras 6-10)
Issue of Consideration
Whether the Bombay High Court has territorial jurisdiction under Section 134(2) of the Trade Marks Act, 1999 to entertain a suit for trademark infringement when the cause of action has arisen outside its jurisdiction but the plaintiff resides and carries on business in Mumbai
Final Decision
Preliminary objection regarding territorial jurisdiction overruled. Suit to proceed in Bombay High Court.
Law Points
- Section 134(2) of Trade Marks Act
- 1999 is mandatory and provides an additional forum
- plaintiff can sue where plaintiff resides or carries on business irrespective of where cause of action arises
- non-obstante clause overrides Code of Civil Procedure
