Copyright Trademark

Oops, the Delhi HC did it again: Claim that they have no jurisdiction for to hear Archie

The Division Bench of the Delhi High Court has once again delivered a judgment interpreting the interplay between Section 134 (2) of the TM Act/ 62(2) of the Copyright Act vis-a-vis Section 20 of the Code of Civil Procedure.

The case, Archie Comic Publications Inc. v. Purple Creations was decided through a judgment of Justice Mukta Gupta and Justice Vikramjit Sen. The facts in this case are as straightforward as they come:

i. Archie applied for registration in India under Class 16, stating user of their mark in India from 1979. The only basis for the claim of such use, as shown through the case, was a single invoice from a book store in New Delhi, and claims of importation.

ii. They claimed to have knowledge of the Defendant since 2004 when they came across a TM advertisement for PURPLE ARCHIE.

The case, of course, gets a little murkier from here on.

The jurisdiction paragraph of the suit, is in my opinion, a little vague stating only that the Court had the jurisdiction to try and entertain the suit based on the following:
(a) A part of the cause of action had arisen with the territorial jurisdiction, and,
(b) The Defendant’s mark had been advertised in the TM Journal which was circulated in Delhi.

The Court, in appeal, was called upon to decide an Application under Order 7 Rule 11 of the Code of Civil Procedure i.e. to examine whether the Plaintiff in its Plaint had in fact made out material facts establishing that the Court had the necessary jurisdiction.

The Appellant sought to rely upon Section 134 (2) of the Trademarks Act, 1999 to state the necessary jurisdiction was present. The Delhi High Court, unfortunately, disagreed.

Relying on the (in)famous decision of IPRS v. Sanjay Dalia, the Division Bench (comprising of one Judge who in fact wrote the Sanjay Dalia decision) held that the additional forum for the Plaintiff to institute a suit as provided under Section 134(2)- just like the similarly worded Section 62 (2) of the Copyright Act, could not be read disjunctively from Section 20 of the Code of Civil Procedure.

For our readers, who at this point are slightly lost in the numerous provisions mentioned above, a quick refresher: The Code of Civil Procedure in India allows a party to file a suit where the Defendant resides, or carries on business or personally works for gain or where a part of the cause of action has arisen against the opposite party. In contradistinction, the TM Act and the Copyright Act provide- what most of us consider- an additional forum for the filing of a law suit i.e. where the Plaintiff (the aggrieved party) resides, or carries on business or works for gain.

Getting back to the facts of this case, the Delhi High Court held that the provision in the TM Act and the CPC would have to be read conjunctively, i.e that apart from the fact of residence/ business of the Plaintiff being carried out, a part of the cause of action would also have to have arisen within the jurisdiction of the Court.

Proceeding on that basis, the Delhi High Court on the facts as presented in the Plaint held that this was not the case at hand, and dismissed the suit.

While the Delhi High Court may have been aided in the completely inadequate pleadings of the Plaintiff, they also refused to allow amendment to the plaint.

It seems to this blogger, that a worrying trend in jurisdiction matters has begun- which can only be rectified by the Apex Court. For IP Practitioners and those who regularly follow the blog, you may remember that the judgment in IPRS v. Sanjay Dalia has been stayed and is currently pending in appeal before the Supreme Court, and is likely to be heard sometime in October. Perhaps a clearer discourse on jurisdiction in Copyright and Trademark matters is likely to emerge? One can only hope so.

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  1. Sneha

    Kruttika… bear with me while I think out aloud…

    The main complaint against the special jurisdiction which has been conferred under the Trade Marks and the Copyright Act is that it has very high potential of being misused. That was Justice Dhingra’s main problem with Section 134(2) and Section 62(2) respectively (Microsoft v. Pradeep Khanna)

    Umm… if reading Section 20(c) CPC conjunctively with Section 134(2) and 62(2) will reduce the possibility of this misuse… then woudln’t it be a prudent solution?

    Or…maybe… This conjunctive reading of CPC and Trade Marks Act and Copyright Act should be restricted strictly to the factual situations similar to the Microsoft v. Pradeep Case – where the Plaintiff has an office in the same place as the defendant, but still chooses to sue in a different jurisdiction? In such cases, plaintiff should not be allowed to benefit from the special jurisdiction created under Trade Marks and Copyright Act.

    What is your view?

  2. iprcrazy

    Section 62 (2) of the copyright act gives additional forum to insitute the suit to the owner of the copyright. I believe that section 62 (2)[copyright act] and 134 (2)[trade marks act] are responsible for filing huge amount of IP matters in Delhi High Court.
    Thankfully the IPRS vs. sanjay is stayed by the Supreme Court.


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