Where Can You File a Copyright or Trademark Suit in India? The Supreme Court Settles the Question
Introduction
One of the most practically significant questions in intellectual property litigation in India has long been: where exactly can a plaintiff — particularly a corporation with offices in multiple cities — file a lawsuit for copyright infringement or trademark infringement? Can a large company with branch offices spread across the country simply choose a court in a distant city that is convenient to it, even if its principal office and the entire cause of action are located elsewhere? This question touched the lives of authors, artists, musicians, and trademark holders across India, and had generated considerable confusion in courts for years.
The Supreme Court of India, in its landmark judgment in Indian Performing Rights Society Ltd. v. Sanjay Dalia, decided on July 1, 2015 and reported as (2015) 10 Supreme Court Cases 161, finally settled this controversy with clarity and firmness. The judgment, delivered by Justice Arun Mishra on behalf of a bench also comprising Justice Jagdish Singh Khehar, interpreted Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999 in a purposive and balanced manner — protecting plaintiffs from genuine hardship without allowing the law to be weaponised for harassment of defendants.
Factual and Procedural Background
Two separate matters were heard and decided together by the Supreme Court since they raised an identical question of law.
The first matter arose from Civil Appeals Nos. 10643–44 of 2010, which originated from a suit filed before the Delhi High Court by the Indian Performing Rights Society Limited (IPRS), the appellant-plaintiff, against one Sanjay Dalia and another. IPRS filed Civil Suit FAO (OS) No. 359 of 2007 before the Delhi High Court. The core of the suit was that the defendant, who owns cinema halls in Maharashtra and Mumbai, was infringing the performing rights of IPRS without obtaining a proper licence. Crucially, the entire cause of action — the alleged infringement — had arisen in Mumbai, Maharashtra. The head office of IPRS was also situated in Mumbai. However, IPRS had a branch office in Delhi, and it was on this basis alone that it chose to file the suit in Delhi. The defendant raised a jurisdictional objection. The Single Bench of the Delhi High Court upheld the defendant's objection and held that the suit should have been filed in Mumbai. The Division Bench of the Delhi High Court confirmed this view. IPRS then approached the Supreme Court by way of appeal.
The second matter arose from Civil Appeal arising out of SLP (C) No. 8253 of 2013, involving Advance Magazine Publishers Inc. as plaintiff and Just Lifestyle (P) Ltd. as defendant. The suit involved infringement of the trade mark of the well-known magazine "Vogue India." The registered office and publishing operations of Vogue India were based in Mumbai. The plaintiff sought to invoke the jurisdiction of the Delhi High Court under Section 134 of the Trade Marks Act, 1999 by pointing to a branch office in Delhi and the fact that the magazine was sold and circulated to subscribers in Delhi. The application for amendment of the plaint to demonstrate Delhi's jurisdiction was rejected by the Delhi High Court, including by the Division Bench, which held that a branch office alone, without any cause of action having arisen there, was not sufficient to invoke the court's jurisdiction. That order was challenged before the Supreme Court.
The Dispute
At the heart of both cases was the interpretation of two special provisions. Section 62(2) of the Copyright Act, 1957 and Section 134(2) of the Trade Marks Act, 1999 — both containing a "non obstante" clause, meaning they override other laws including the Code of Civil Procedure, 1908 — provide that a copyright or trade mark suit can be filed not only where the defendant resides or where the cause of action arises (as under Section 20 of the Code of Civil Procedure), but also in a court within whose jurisdiction the plaintiff resides, carries on business, or personally works for gain.
The plaintiff-appellants argued that these provisions gave them an absolute and independent right to sue in any court within whose limits they carried on business — even a branch office — irrespective of where their principal office was and irrespective of where the cause of action arose. They relied, among others, on the Supreme Court decision in Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, and on decisions of the Delhi High Court including Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, and Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, to support the contention that Section 62 and Section 134 created a special forum with no requirement to link the cause of action to the plaintiff's place of business.
The respondents, on the other hand, argued that allowing such an interpretation would lead to enormous mischief — large corporations with offices spread across the country could drag defendants to any distant city they chose, simply because they had a branch office there. The respondents argued that the true purpose of the provisions was to protect plaintiffs who found it difficult and expensive to litigate far from their homes, not to give corporations a weapon to harass defendants by choosing remote and inconvenient courts.
Reasoning and Analysis of the Judge
Justice Arun Mishra undertook an exhaustive exercise of statutory interpretation, drawing on Indian and foreign precedents as well as Parliamentary history, and applying what is known as the "purposive construction" or "mischief rule" of statutory interpretation, famously articulated in Heydon's Case, (1584) 3 Co Rep 7a : 76 ER 637, a centuries-old English case.
The Court began by examining the scheme of Section 20 of the Code of Civil Procedure, 1908. Section 20 provides three bases for territorial jurisdiction — where the defendant resides or carries on business (clauses a and b), and where the cause of action wholly or in part arises (clause c). The Explanation to Section 20 provides that a corporation shall be deemed to carry on business at its sole or principal place of business, and in the case of a cause of action arising where it has a subordinate office, it shall also be deemed to carry on business there. The Court drew upon the interpretations of this Explanation in Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270, and New Moga Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677, which had explained that the Explanation to Section 20 does not create an additional forum for corporations but rather identifies which single court has jurisdiction based on the location of the subordinate office where the cause of action arises.
The Court then turned to the legislative history of Section 62 of the Copyright Act. The Joint Committee of Parliament, in its report preceding the insertion of Section 62(2), noted that many authors were being deterred from filing infringement suits because the courts with jurisdiction were at a considerable distance from their place of ordinary residence. The remedy proposed was to allow them to sue in the court where they ordinarily reside or carry on business. The Parliamentary debates, especially the speech of Shri P. Trikamdas recorded in the judgment, showed that the intention was to spare the author from having to run all over the country to chase the infringer, by allowing the author to sue at his own residence or place of publication. The Court noted that this was a remedial provision designed to relieve the plaintiff of inconvenience — not to cause a new inconvenience to the defendant.
Applying Heydon's four-step mischief rule — which requires identifying the common law before the Act, the mischief it did not address, the remedy Parliament provided, and the true reason of the remedy — the Court concluded that the mischief was the difficulty faced by authors and trademark owners in suing at distant courts. The remedy was to allow them to sue where they reside or carry on business. However, the Court held that this remedy cannot be stretched to allow a plaintiff who resides and carries on principal business at Place A, and where the cause of action also arises at Place A, to ignore Place A entirely and sue at a distant Place B merely because it has a branch office there.
The Court relied heavily on the concept of "counter-mischief" as discussed by the learned author Bennion in Bennion on Statutory Interpretation, Section 318, Part XXI, which cautions that Parliament cannot have intended to cure one mischief only to create an equally severe or worse mischief in its place. The Court also drew strength from the Supreme Court's own reasoning in Sonic Surgical v. National Insurance Co. Ltd., (2010) 1 SCC 135, where a similar provision in the Consumer Protection Act, 1986 relating to "branch office" was interpreted to mean only that branch office where the cause of action had arisen, in order to avoid an absurd result.
Regarding the non obstante clause — the expression "notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force" — the Court held that it does not completely oust Section 20 of the CPC. The clause provides an additional forum to the plaintiff; it does not grant an unlimited licence to pick any forum the plaintiff desires. The Court stated clearly that Sections 62(2) and 134(2) have to be read alongside Section 20 CPC, not as replacements for it. The word "include" in these provisions, said the Court, shows that the jurisdiction is wider than that under Section 20 CPC, but that wider jurisdiction must still operate within sensible limits.
The Court then drew a practical rule: if the cause of action has arisen wholly or in part at a place where the plaintiff is residing or carrying on business or has its principal office, then the suit must be filed at that place. The plaintiff cannot bypass that place and choose a distant branch office location. However, if the cause of action has not arisen at the principal place of business or residence, then the plaintiff retains the benefit of the special provisions and can sue at the court within whose limits the plaintiff resides or carries on business.
To illustrate the absurdity of the opposite view, the Court gave the example: if a corporation has its principal place of business in Mumbai, the cause of action arises in Mumbai, and it also happens to have branch offices in Kanyakumari and Port Blair, the plaintiff could — under the interpretation urged by the appellants — drag the defendant to a court in Port Blair or Kanyakumari. Parliament never intended such a result, and it was the Court's duty to prevent it.
On the question of convenience of lawyers and the fact that the bulk of intellectual property cases are filed in Delhi, the Court firmly and unhesitatingly rejected this as a relevant consideration. The territorial jurisdiction of a court is determined by law, not by the expertise or convenience of lawyers practicing there. This submission was dismissed without hesitation.
As for the precedents cited by the appellants, the Court carefully distinguished each. The decision in Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, was explained as actually supporting the Court's interpretation, since the Delhi Court in that case had jurisdiction because the plaintiff had its registered office in Delhi and the cease and desist notice was also received in Delhi. In Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, the Court noted that the precise question before it had not come up for consideration and a decision is not to be construed like a statute — it binds only on the point actually decided. The Court similarly dealt with Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, and Paragon Rubber Industries v. Pragathi Rubber Mills, (2014) 14 SCC 762, finding that none of them settled the question that was now before the Court.
The Court also clarified that Section 134(2) of the Trade Marks Act is in pari materia with Section 62(2) of the Copyright Act and both provisions must be interpreted identically. However, Section 134(2) applies only to infringement suits under Sections 134(1)(a) and 134(1)(b) of the Trade Marks Act. Suits for passing off under Section 134(1)(c) of the Trade Marks Act continue to be governed by Section 20 of the CPC, since Section 134(2) does not extend to passing off actions.
The Final Decision of the Court
The Supreme Court dismissed both appeals, with no order as to costs. The High Court's orders in both cases — which had declined jurisdiction to the Delhi courts — were upheld.
The Court formulated the following rule in paragraphs 52 of the judgment: Sections 62 of the Copyright Act and 134 of the Trade Marks Act must be interpreted purposively. A suit can certainly be filed by the plaintiff at a place where the plaintiff resides or carries on business or personally works for gain. The plaintiff need not travel to file a suit at the place where the defendant resides or where the cause of action wholly or in part arises. However, if the plaintiff is residing or carrying on business at a place where the cause of action, wholly or in part, has also arisen, then the plaintiff must file the suit at that place, and not at other places where the plaintiff may have branch offices.
On the request for transfer of the suit to Delhi, the Court held that it was not in a position to order such a transfer in these proceedings. If the parties desired a transfer, they were free to file an appropriate transfer application, but only before the court of competent jurisdiction, after which the question of transfer would be germane.
The Point of Law Settled
This judgment settled the following important point of law in India: Sections 62(2) of the Copyright Act, 1957 and 134(2) of the Trade Marks Act, 1999, while providing an additional forum to the plaintiff by allowing suit to be filed where the plaintiff resides or carries on business, are subject to an important limitation — if the cause of action has arisen wholly or in part at the plaintiff's principal place of residence or business or principal office, the plaintiff cannot ignore that place and file the suit at a distant subordinate or branch office location merely on the ground that the plaintiff carries on some business there as well. The provisions exist to remove the burden of distant litigation from the plaintiff, not to enable the plaintiff to impose that burden on the defendant by choosing an unconnected court. Furthermore, Section 134(2) of the Trade Marks Act applies only to infringement suits and not to passing off actions, which continue to be governed by Section 20 CPC.
Case Details
Title: Indian Performing Rights Society Limited v. Sanjay Dalia and Another
Date of Order: July 1, 2015
Case Numbers: Civil Appeals Nos. 10643–44 of 2010 (with No. 4912 of 2015 arising out of SLP (C) No. 8253 of 2013)
Neutral Citation / Report: (2015) 10 Supreme Court Cases 161
Name of Court: Supreme Court of India
Name of Hon'ble Judges: Justice Jagdish Singh Khehar and Justice Arun Mishra (Judgment delivered by Justice Arun Mishra)
Disclaimer: Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Headnote
Indian Performing Rights Society Limited Vs. Sanjay Dalia and Another, (2015) 10 SCC 161
Intellectual Property — Jurisdiction — Copyright Act, 1957, Section 62(2) — Trade Marks Act, 1999, Section 134(2) — Territorial jurisdiction for filing infringement suits — Plaintiff corporation with principal office and cause of action both at Mumbai chose to sue at Delhi citing branch office there — Held: Special forum under Section 62(2) Copyright Act and Section 134(2) Trade Marks Act is an additional forum to benefit plaintiffs who have difficulty suing at the defendant's place or where cause of action arises — However, if cause of action arises wholly or in part at the plaintiff's principal place of business or residence, plaintiff must file suit there and cannot ignore that place to sue at a distant branch office location — Non obstante clause does not completely oust Section 20 CPC — Provisions must be read purposively to avoid counter-mischief to defendant — Section 134(2) Trade Marks Act applies only to infringement suits under Sections 134(1)(a) and (b) and not to passing off actions under Section 134(1)(c), which continue to be governed by Section 20 CPC — Appeals dismissed — Heydon's Case followed — Patel Roadways Ltd. v. Prasad Trading Co., (1991) 4 SCC 270; New Moga Transport Co. v. United India Insurance Co. Ltd., (2004) 4 SCC 677; Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688; Sonic Surgical v. National Insurance Co. Ltd., (2010) 1 SCC 135 — relied on.
