In filing a civil suit the Plaintiff typically has two options as regards the place where the suit can be filed/instituted: 1) the place where the Defendant actually and voluntarily resides or carries on business or personally works for gain, or 2) the place where the cause of action wholly or in part arises. In cases where Companies/Corporations are Defendants it is usually the "carries on business" clause that becomes applicable.

However, an additional and third option of forum where the Plaintiff may file the suit is provided in cases of trademark and copyright infringement suits by the respective Acts [S. 134 of the Trademarks Act, 1999 and S.62 of the Copyright Act, 1962]. In these cases the Plaintiff may file the suit at the place where the Plaintiff actually and voluntarily resides or carries on business or personally works for gain.

This provision of an additional forum is meant to ease the burden on the Plaintiff, whose trademark or copyright has been infringed, of filing suits in remote or several places where such infringement occurs. Thus it is a beneficial provision in the interest of trademark and copyright holders.

The Hon'ble High Court of Delhi recently interpreted the above provision relating to owners of trademarks and copyrights in the Ultra Home Construction judgement1 and elaborated the position of law in this regard -particularly for the situation where the Plaintiff is a Company/Corporation with a head/registered/principal office in a city and branch/subordinate offices in various other cities. In the same judgement the Court also clarified the law laid down in this regard by the Hon'ble Supreme Court of India in the case of Sanjay Dalia2.

As per the position of law elaborated by the Hon'ble Delhi High Court, such a Plaintiff, when its trademark or copyright is infringed, must follow one of the four scenarios listed below in deciding where to institute the corresponding civil suit:

Scenario 1. Where the Plaintiff has only one office (registered/head/principal office) -then no matter where the cause of action occurs the suit must be instituted in the Court which has jurisdiction over the said office ie. the suit must be instituted in the place where the sole office is located.

Scenario 2. Where the Plaintiff has a principal office in one place, subordinate office at another place and the cause of action has arisen at the place where the principal office is located -in such a scenario the Plaintiff must institute the suit at the place where its principal office is located. The Plaintiff is barred by law in such a scenario from instituting the suit in the place where its subordinate office is located.

Scenario 3. Where the Plaintiff has a principal office in one place, subordinate office at another place and the cause of action has arisen at the place where the subordinate office is located -in such case the Plaintiff must institute the suit at the place where its subordinate office is located. The Plaintiff is barred by law in such a scenario from instituting the suit in the place where its principal office is located.

Scenario 4. Where the Plaintiff has a principal office in one place, subordinate office at another place and the cause of action has arisen at a place different from these two places ie. the cause of action has arisen neither at the place of the principal office nor at the place of the subordinate office -in such a scenario the Plaintiff must institute the suit at the place where it has its principal office. The Plaintiff is barred by law in such a scenario from instituting the suit in the place where its subordinate office is located.

Thus in cases of trademark and copyright infringement, the above four scenarios need to be taken into consideration by the Plaintiff in deciding the choice of forum for filing the suit.

Footnotes

1. Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors; http://lobis.nic.in/ddir/dhc/BDA/judgement/20-01-2016/BDA20012016FAOOS4942015.pdf

2. Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.