Case Note & Summary
The judgment involves two appeals (Appeal No.340 of 2015 and Appeal No.95 of 2015) heard together by the Bombay High Court. In the first appeal, the appellants (M/s Harman Overseas and its partners) filed a suit for trademark infringement against Dongguan TR Bearing Company Limited and NBU Bearing Private Limited. The appellants claimed that the respondents were using a deceptively similar trademark 'TR' for bearings, and that the court had jurisdiction because the respondents' products were sold through a website accessible in Mumbai. The trial court dismissed the suit for lack of jurisdiction. In the second appeal, Intas Pharmaceuticals Limited filed a suit against Indchemie Health Specialities Private Limited and Saar Biotech for trademark infringement regarding the mark 'INTAS'. Intas argued that the court had jurisdiction because the defendants' products were available online in Mumbai. The trial court also dismissed that suit for lack of jurisdiction. The legal issue in both appeals was whether the Bombay High Court had territorial jurisdiction to entertain the suits. The appellants argued that under Section 134 of the Trade Marks Act, 1999, a plaintiff can sue where it carries on business, and that the cause of action arose in Mumbai because the defendants' websites were accessible there. The respondents contended that mere website accessibility does not confer jurisdiction; the plaintiff must show that the defendant's activities are targeted at the forum. The court analyzed the provisions of Section 20 of the Code of Civil Procedure, 1908 and Section 134 of the Trade Marks Act, 1999. It held that for a court to have jurisdiction, either the defendant must reside or carry on business within its limits, or the cause of action must arise wholly or in part within those limits. The court noted that the appellants did not carry on business in Mumbai and that the mere accessibility of a website does not constitute a cause of action. The court distinguished between passive websites and interactive websites that specifically target customers in the forum. It held that the plaintiffs failed to show that the defendants' websites were interactive or that the defendants had specifically targeted customers in Mumbai. The court also held that the registration of a trademark in India does not give jurisdiction to every court in the country. Consequently, the court dismissed both appeals, affirming the trial courts' decisions that they lacked territorial jurisdiction.
Headnote
A) Civil Procedure - Territorial Jurisdiction - Section 20 CPC - Place of Suing - The court held that for a suit to be filed at a particular place, the defendant must reside, carry on business, or the cause of action must arise wholly or in part within that jurisdiction. Mere accessibility of a website in Mumbai does not constitute a cause of action for trademark infringement. (Paras 10-15) B) Trade Marks Act, 1999 - Jurisdiction - Section 134 - Place of Suing - Section 134(2) allows a plaintiff to sue at a place where he resides or carries on business. The court held that this provision does not override the requirement of cause of action under Section 20 CPC. The plaintiff must show that the defendant's activities are targeted at the forum. (Paras 16-20) C) Intellectual Property - Trademark Infringement - Online Infringement - Jurisdiction - The court held that for online infringement, the plaintiff must establish that the defendant's website is interactive and specifically targets customers in the forum state. Passive websites do not confer jurisdiction. (Paras 21-25) D) Civil Procedure - Cause of Action - Part of Cause of Action - The court held that the mere fact that a trademark is registered in India does not give jurisdiction to every court in India. The cause of action must arise within the court's territorial limits. (Paras 26-30)
Issue of Consideration
Whether the Bombay High Court has territorial jurisdiction to entertain trademark infringement suits where the plaintiff does not carry on business within its jurisdiction and the alleged infringement occurs through a website accessible in Mumbai.
Final Decision
Both appeals are dismissed. The trial court's orders dismissing the suits for lack of territorial jurisdiction are affirmed.
Law Points
- Territorial jurisdiction
- Trademark infringement
- Cause of action
- Section 134 Trade Marks Act
- 1999
- Section 20 CPC
- Website accessibility
- Place of business
