SC Settles Jurisdiction Issue for IPR Cases | ipr case studies

SC Settles Jurisdiction Issue for IPR Cases

SC Settles Jurisdiction Issue for IPR Cases The IPR laws in India are comparable to those of many developed countries. In order to keep pace with the contemporary technological developments, India’s IPR related legislations have been amended from time to time since independence. The punishments for IPR violations had been made progressively more stringent. The present law is also in almost full conformity with the Uruguay Round Agreement on Trade-Related Intellectual Property Rights (TRIPS). In spite of all these, the awareness of IPRs is rather poor and IP violationsquiterampant.

The supreme court of India in its recent judgment in the case of Indian Performing Rights Society Ltd. V. Sanjay Dalia & Anr [(2015) 42 SCD 753] had taken up the issue of demarcating the jurisdiction in cases of IPR related disputes. As per the general rule, as provided in section 20 of The Code Of Civil Procedure, 1908 (“CPC”),a civil proceeding complaining of any kind of ‘infringement’ has to be instituted where the cause of action’, in this case ‘infringement’ arose, or where the defendants reside or carry on business. The question that arose in this particular case for consideration was that of interpreting section 62 of the copyright act, 1957 and section 134(2) of the trademarks act, 1999 with regard to the place for the institution of the suit.

In this particular case, the plaintiff was carrying on business through a branch office in Delhi through their head office was in Mumbai. The alleged ‘infringement’ had taken place in Mumbai. The concurrent finding of the Delhi High Court declining to entertain the suit in Delhi was affirmed by the apex court.

The Hon’ble supreme court observed that,

“The enactment of section 62 of the copyright act, 1957 and section 134(2) of the trademarks act, 1999 with regard to the place of institution of a suit, the common law which existed before the provisions of the law were passed, was section 20 of the CPC… The defect in the existing law was the inconvenience/deterrence caused to the authors suffering from financial constraints on account of having to vindicate their intellectual property rights at a place far away from their residence or the place of their business. The said mischief or defect in the existing law which did not provide for the plaintiff to sue at a place where he ordinarily resides or carries on business or personally works for gain was sought to be removed.

Hence, the remedy was provided incorporating the provisions of section 62 of the Copyright Act. The provisions enabled the plaintiff or any of them to file a suit at the aforesaid places. The operation of the provisions was limited and their objective was clearly to enable the plaintiff to file a suit at the place where he is ordinarily residing or carrying on business etc., as enumerated above, not to go away from such places.”

The apex court in affirming the decision of the Delhi High Court, has exhibited the use of the ‘purposive interpretive/construction rule’ i.e. the Heydon’s mischief rule, according to which a law can be interpreted in the light of the mischief it seeks to remedy, and such construction must be placed on the words that best serves the purpose of the law in question.

Hence, it may be concluded the ratiodecidendi or “the rationale for the decision” is that the provisions of section 62 of the copyright act, 1957 and section 134(2) of the trademarks act, 1999 are to be interpreted in a purposive manner together in the light of the provisions laid down under section 20 of the Code Of Civil Procedure, 1908. In deciding this case, the apex court has given a liberal observation in relation to fixing the territorial jurisdiction of the place where the cause of action arose towards the party filing the suit. That highlighted the court’s effort to harmonise the words of the statute with the subject of enactment and the object that the legislature had in view while passing such legislation.