Arun Mohan, an IP lawyer practising before the Madras High Court has sent us this very interesting post which examines a judgment of the Madras High Court that has a significant impact on the issue of jurisdiction in IP cases. Arun adds the disclaimer that the firm that he is employed for represented the defendants in the present case. Image from here.
Jurisdictional woes before the Madras High Court
by,
Arun C. Mohan
There have been multiple cases on jurisdiction, and invoking original side jurisdiction of high courts causes many an IP litigator sleepless nights, involving invoices, distributors, brochures et al.
There is an interesting division bench order of the Madras High Court in this regard. It can be accessed here. The single judge order can be accessed here. (both are unreported).
A quick read of the order would show that leave of the High Court can be obtained merely on the following 2 grounds:
1. A certificate is granted by the registry within the jurisdiction of the High Court
2. Pleadings are made that sales of the plaintiff’s products are made across India; even though there is neither specific pleading as to having sales within the specific jurisdiction of the High Court nor any document to such effect.
The outcome of this is obvious. Courts having “original jurisdiction” i.e. Madras, Bombay, Calcutta and Delhi can be approached on the single premise that a certificate of registration was granted by the registry which falls within its jurisdiction. Conveniently enough, trademark registries are present in the very same cities, with the exception of the trademark office at Ahmadabad.
Extending this ratio to patent, copyright and design cases, invoking jurisdiction comes exceptionally easy. For example, a logical conclusion would be that a company based only out of Manipur, could take action against a Defendant based only in Manipur, in the Delhi High Court on the basis that the Copyright Registry in Delhi issued a certificate to it!
Large companies would obviously stand benefitted by this order, as they have the option of pursuing an IP litigation before a High Court, which gives the benefit of quick and effective orders, along with a mature/aware judiciary especially when compared to the lower judiciary. The flip side to this is the hardship that can be caused to defendants, who may ill afford the cost of litigating before a High Court in another city. High Court litigation is rather expensive when compared to litigation in the lower judiciary.
With cases like Dhoda House placing various stringent pre-requisites to establish jurisdiction, this case provides an interesting googly in the mix.
(The DB order was appealed against before the Supreme Court. However, the plaintiff chose to withdraw the suit following cancellation of its mark by the IPAB. The DB order is now oft quoted in leave petitions before the Madras High Court)
Prashant, I have read the judgment of the DB. It is most unfortunate that the attention of the court was not drawn to the Supreme Court Judgment in very famous case of Dhodha House. Had the attention of the court to the said Supreme Court Judgment been brought I am sure that the dictum of the judgment would not have been as it is now.
As the said judgment is being often quoted and relied upon in Chennai, it should be challenged by citing the Dhodha case. I think even a single judge of the Chennai High Court can refuse to follow the DB Judgment relying on the Supreme Court stating that the DB has not referred to the said judgment.
I believe it is also normal in Madras High Court to have the interim injunction application heard after the court has granted an ex parte interim injunction order like in Delhi High Court. This is against the provisions of Rule 3A of Order 39, the court shall make endeavour to dispose off the application for the interim injunction under Order 39 Rule 1 & 2 within the period of 30 days of so granting the ex parte ad interim injunction and in case the court is unable to do so, it shall record reasons in writing. It seldom happens. Am I right in my thinking?