How to Decide Where to File a Trade Mark Infringement Suit in India
Deciding where to file a trade mark infringement suit used to be a short exercise: Section 134 of the Trade Marks Act, 1999 bars institution in any court inferior to a District Court, and Section 134(2) tells the plaintiff which District Court. The Commercial Courts Act, 2015 has complicated it, because a State may constitute a Commercial Court at a level below District Judge, and the Supreme Court has now referred the resulting conflict to a larger bench in I.S.D.S. Private Limited v. Khemka Food Products Private Limited. Until that is resolved, the forum has to be chosen with the conflict in mind. This guide sets out how.
Step 1: Fix the Cause of Action Before the Court
Section 134(1) covers three things: a suit for infringement of a registered trade mark, a suit relating to any right in a registered trade mark, and a suit for passing off arising out of the defendant's use of a mark identical with or deceptively similar to the plaintiff's mark, whether registered or unregistered.
The distinction matters for the next step, because the extended territorial rule in Section 134(2) is expressed to apply to clauses (a) and (b) of sub-section (1), which are the registered trade mark claims. A composite plaint that joins passing off to infringement should identify which relief rests on which limb rather than pleading them as one.
Step 2: Identify the Territorial Court Under Section 134(2)
Section 134(2) is the provision that makes trade mark litigation convenient for a plaintiff. Notwithstanding the Code of Civil Procedure, 1908, a District Court having jurisdiction includes the District Court within whose local limits the person instituting the suit actually and voluntarily resides, carries on business, or personally works for gain, assessed at the time the suit is instituted.
In practice, plead the residence or place of business with particulars rather than as a formula. The Explanation to the section provides that the person includes the registered proprietor and the registered user, so a registered user with its own place of business can supply the jurisdictional link.
Step 3: Value the Suit Deliberately
Valuation decides whether the Commercial Courts Act applies at all. Section 2(1)(i) defines Specified Value as the value of the subject matter determined under Section 12, which shall not be less than Rs 3 lakh or such higher value as the Central Government may notify. A trade mark suit valued below that threshold is outside the Act and goes to the District Court under Section 134 in the ordinary way.
Because valuation selects the statute and the statute selects the forum, the figure should be arrived at and recorded deliberately, with the working retained. A valuation chosen to manage court fees can move the suit to a different court without anyone intending it.
Step 4: Read the State Notification, Not Just the Act
Section 3(1) of the Commercial Courts Act permits a State Government, after consultation with the High Court, to constitute Commercial Courts at district level. Section 3(3) permits the appointment of a judge of a Commercial Court either at the level of District Judge or at a court below that level. Everything therefore turns on what the particular State has notified.
Where Commercial Courts sit at District Judge level: There is no conflict. The Commercial Court is not inferior to a District Court, Section 134 is satisfied, and the suit is filed there as a commercial suit.
Where Civil Judges (Senior Division) are notified: The conflict is live. Jharkhand, for example, has notified Civil Judges (Senior Division) as Commercial Courts with pecuniary jurisdiction between Rs 3 lakh and Rs 1 crore, which is the fact pattern the Supreme Court has referred.
Step 5: Plead Jurisdiction in the Alternative
Where the notified Commercial Court is below District Judge level, the plaint should say why that court has jurisdiction under Section 2(1)(c)(xvii), Section 3 and Section 21 of the Commercial Courts Act, and should add, in the alternative, why the District Court would have jurisdiction under Section 134 of the Trade Marks Act.
The alternative plea costs nothing at the filing stage and is the cheapest available protection if the larger bench resolves the conflict in favour of Section 134. A plaint that asserts only one basis invites a return of the plaint rather than a transfer.
Step 6: Decide Whether to Take the Objection, and When
A defendant sued before a Civil Judge (Senior Division) acting as a Commercial Court has a real objection available. It should be taken at the threshold, in the written statement and by a separate application, and it should be recorded. An objection to jurisdiction that surfaces after a contested trial invites the answer that the party took its chance on the forum.
The objection is not always worth taking. A Commercial Court applies the amended procedure, including case management, and a defendant who prefers the ordinary civil procedure may be seeking a slower forum rather than a correct one. That is a tactical choice, and it should be made consciously.
Step 7: Work Out the Appellate Route Before You File
Section 13(1) provides that a person aggrieved by the judgment or order of a Commercial Court below the level of a District Judge may appeal to the Commercial Appellate Court within sixty days, with a proviso for orders specifically enumerated under Order XLIII of the Code of Civil Procedure, 1908 as amended by the Act and under Section 37 of the Arbitration and Conciliation Act, 1996.
The appellate route that follows from the choice of forum should be identified before filing, not after an adverse interim order. Where the choice is genuinely open, it is a legitimate consideration in making it.
Common Pitfalls to Avoid
Assuming the Act answers the question: The Commercial Courts Act permits both levels of court. Only the State notification tells you which one exists where you are filing.
Treating Section 134(2) as covering passing off: The extended territorial rule is expressed to apply to clauses (a) and (b) of sub-section (1). A pure passing off claim should not be pleaded as though it attracted the same rule.
Valuing the suit as an afterthought: The Rs 3 lakh threshold in Section 2(1)(i) decides whether the Commercial Courts Act applies. Valuation is a forum decision, not merely a fee decision.
Pleading a single basis of jurisdiction: In a State that has notified Civil Judges, an alternative plea preserves the position at no cost while the reference is pending.
Sitting on the objection: A jurisdictional objection taken for the first time in appeal is worth far less than the same objection recorded at the threshold.
Key Statutory Provisions
Section 134(1) of the Trade Marks Act, 1999: No suit for infringement of a registered trade mark, for any right in a registered trade mark, or for passing off shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
Section 134(2) of the Trade Marks Act, 1999: For clauses (a) and (b) of sub-section (1), a District Court having jurisdiction includes the court within whose local limits the person instituting the suit actually and voluntarily resides, carries on business, or personally works for gain.
Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015: Disputes over intellectual property rights relating to registered and unregistered trade marks are commercial disputes.
Section 2(1)(i) of the Commercial Courts Act, 2015: Specified Value means the value of the subject matter determined under Section 12, not less than Rs 3 lakh or such higher value as the Central Government may notify.
Section 3 of the Commercial Courts Act, 2015: Constitution of Commercial Courts at district level, with sub-section (3) permitting a judge either at the level of District Judge or at a court below that level.
Section 13(1) of the Commercial Courts Act, 2015: Appeal to the Commercial Appellate Court from the judgment or order of a Commercial Court below the level of a District Judge, within sixty days.
Section 21 of the Commercial Courts Act, 2015: The Act has effect notwithstanding anything inconsistent contained in any other law for the time being in force.
Sources and References
Can civil courts hear trademark suits? Supreme Court refers issue to larger bench
Trade Marks Act, 1999, Section 134; Commercial Courts Act, 2015, Sections 2, 3, 13 and 21
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Readers should consult a qualified legal professional for advice specific to their circumstances.
Comments