How to ascertain territorial jurisdiction of court in cases of trade mark and copyright?

 What emerges from this discussion is this:

(a) a plaintiff suing under the Trade Marks Act or

Copyright Act can always file the suit in the jurisdiction

where he lives, works for gain or carries on business. In

the context of a company, given the view in Sanjay

Dalia, this would mean where the company has its

principal or registered office. All issues of cause of

action and situs or location of the defendant or the

cause of action are inconsequential. It makes no

difference where the defendant resides. It makes no

difference where the cause of action arose. It certainly

makes no difference that the plaintiff also happens to

have a branch office in another location where the

cause of action may have arisen or where the defendant

may reside or carries on business.

(b) Where the plaintiff has only one office, it presents no

difficulty. Where the plaintiff has multiple offices,

however, he has a limited choice. He may either bring a

Suit under Section 134(2) or Section 62(2), i.e., within

the jurisdiction where he resides; or he may invoke

Section 20 and file a suit where the Defendants reside

or work for gain or where the cause of action arose

wholly or in part. The fact that the Plaintiff has the

choice of bringing a suit based on Section 20 of the

CPC does not mean that his rights under Section

134(2) or Section 62(2) are in any way eroded, curtailed

or restricted.

(c) However, where the plaintiff chooses not to file a Suit

at his or its principal business or where his registered

office is located, and also chooses not to file a suit in a

jurisdiction covered by Section 20 of the CPC but

instead attempts to file the suit at some other location

where the plaintiff happens to have a subsidiary or

satellite office, but where there is absolutely nothing

else (neither cause of action nor any of the defendants)

the Plaintiff cannot invoke Section 134(2) or Section

62(2) to drag the Defendant to that distant location.

That, following the decision of the Supreme Court, is

the abuse that is required to be prevented. That is in

fact the only abuse that is required to be prevented.

(d) The Section 134(2) and Section 62(2) privilege or

advantage attaches to the registered office or principal

place of work. It is a privilege not to be used by

abandoning the registered office situs, abandoning the

Section 20 situs options, and travelling to some remote

location where there is neither defendant nor cause of

action. That is the mischief addressed in Sanjay Dalia.

To illustrate: the plaintiff has its registered office in

Mumbai. The defendant is in Delhi. The cause of

action arose in Delhi. The plaintiff also has another

branch office in Port Blair. A plaintiff can sue in

Mumbai or in Delhi, but not in Port Blair.

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION NO. 494 OF 2014

IN

SUIT NO. 516 OF 2013

MANUGRAPH INDIA LIMITED,

v

 SIMARQ TECHNOLOGIES PVT.

LTD.,

CORAM: G.S. PATEL, J

DATED: 15th June 2016

Citation:AIR 2016 Bom 217

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What are the parameters for testing distinctiveness of the Trade Mark?

The parameters for testing the distinctiveness of a mark as extent and period of use, goodwill and association in the minds of consumers, investments on advertisements, recognition in trade circles and channels of distribution and the relevant class of customers. 

Delhi High Court

P.P. Jewellers Pvt. Ltd. vs P.P. Buildwell Pvt. Ltd. on 24 September, 2009

Citation : 2009 (41) PTC 217 (Del)

S. Muralidhar, J.

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How to ascertain distinctiveness of a Trade Mark?

The usual approach followed by Courts of law, whilst ascertaining whether a particular trade mark has acquired a secondary meaning in relation to the product for which it is used, is to evaluate the trade mark on the anvil of various factors, viz. the extent of its use qua the product, the expenditure incurred by the plaintiff in marketing and promoting its product under the said trade mark, the profits and sales revenue revenue etc. These are valid parameters that objectively reflect the popularity, usage, consumer recognition and market strength of a trademark and thus help in ascertaining whether the trade mark has acquired a secondary meaning or not.

Delhi High Court

Cadila Healthcare Ltd. vs Gujarat Co-Operative Milk ... on 23 October, 2007

Equivalent citations: MIPR 2007 (3) 497, 2008 (36) PTC 168 (Del)

Bench: G Sistani

JUDGMENT 

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What is the difference between Trade Mark and Property Mark?

The concept of a trade mark is distinct from that of a property mark. A mark, as defined by Section 2(1)(j) of the Trade and Merchandise Marks Act, 1958, includes a device, brand, heading, label, ticket, name, signature, word, letter or numerical or any combination thereof. A trade mark means a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use that mark. The function of a trade mark is to give an indication to the purchaser or a possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market, (per Bowen, L.J., in In re Powell's Trade Mark (1893) 10 R.P.C. 200. On the other hand, a property mark, as defined by Section 479 of the Penal Code means a mark used for denoting that a movable property belongs to a particular person. Thus, the distinction between a trade mark and a property mark is that whereas the former denotes the manufacture or quality of the goods to which it is attached, the latter denotes the ownership in them. In other words, a trade mark concerns the goods themselves, while a property mark concerns the proprietor. A property mark attached to the movable property of a person remains even if part of such property goes out of his hands and ceases to be his.

Supreme Court of India

Sumat Prasad Jain vs Sheojanam Prasad (Dead) & Ors on 29 August, 1972

Equivalent citations: 1972 AIR 2488, 1973 SCR (1)1050

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What is first user test or ‘first in the market’ test in respect of use of Trade Mark?

Since we are confronted with the legal propriety of a temporary
injunction, we must abjure from going into minute details and refrain from
discussing the case threadbare, in order to preclude rendering the suit itself an
exercise in futility and the decision therein a foregone conclusion. All that we
would say in the present Appeal is that since the Plaintiff-Respondents have
alleged, and have prima facie supported with proof, that they had already been
using their trademark well before the attempted user of an identical or closely
similar trademark by the Defendant-Appellant, the former would be entitled to a
temporary injunction, in light of the abovementioned ‘first in the market’ test.
We find that the Plaintiff-Respondents have made out a prima facie case. The
two other factors in an interim injunction, namely the balance of convenience
and an irreparable loss, are both in favour of the Plaintiff-Respondents, given
the potential loss of goodwill and business they could suffer should an
injunction be denied. The Defendant-Appellant has been injuncted from using
the mark ROFOL since 2005, after having launched products bearing the mark
only in the previous year, so the balance of convenience is in favour of allowing
the injunction to continue. 
 REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPEALLATE JURISDICTION
CIVIL APPEAL NO. 1018 OF 2006
Neon Laboratories Ltd. ... Appellant
Versus
Medical Technologies Ltd. & Ors. ... Respondents
VIKRAMAJIT SEN, J.
Dated;October 5, 2015.
Citation;(2016)2 SCC 672

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Whether territorial jurisdiction of court in copyright cases can be decided on basis of convenience of lawyers?

It was also submitted that as the bulk of litigation of such a
nature is filed at Delhi and lawyers available at Delhi are having
expertise in the matter, as such it would be convenient to the parties
to contest the suit at Delhi. Such aspects are irrelevant for deciding the
territorial jurisdiction. It is not the convenience of the lawyers or their
expertise which makes out the territorial jurisdiction. Thus, the
submission is unhesitatingly rejected.
Reportable
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS.10643-10644 OF 2010
Indian Performing Rights Society Ltd. 
Vs.
Sanjay Dalia & Anr.
(With C.A. No.4912/2015 @ SLP [C] No.8253/2013)
Citation;AIR 2015 SC 3479

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Whether plaintiff can file suit where he is residing as per copyright Act and trade mark Act?

In our opinion, the provisions of section 62 of the Copyright
Act and section 134 of the Trade Marks Act have to be interpreted in
the purposive manner. No doubt about it that a suit can be filed by the
plaintiff at a place where he is residing or carrying on business or
personally works for gain. He need not travel to file a suit to a place
where defendant is residing or cause of action wholly or in part arises.
However, if the plaintiff is residing or carrying on business etc. at a
place where cause of action, wholly or in part, has also arisen, he has
to file a suit at that place, as discussed above. Thus, for the aforesaid
reasons mentioned by us in the judgment, we are not inclined to
interfere with the orders passed by the High Court. Appeals are hereby
dismissed.
Reportable
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NOS.10643-10644 OF 2010
Indian Performing Rights Society Ltd. ... Appellant
Vs.
Sanjay Dalia & Anr. ... Respondents
(With C.A. No.4912/2015 @ SLP [C] No.8253/2013)
Dated;July 01, 2015.
ARUN MISHRA, J.

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