The Supreme Court of India in its recent Judgment1 dismissed the appeal of Dabur Industries

on grounds of lack of territorial jurisdiction to entertain the matter.

The said claim by Dabur Industries was first filed in High Court of Delhi in the year 2002
seeking permanent injunction against the defendant, K.R.Industries on two grounds:

Firstly to restrain them to reproduce any of the artistic feature of the plaintiff's Dabur Red
tooth Powder including colour combination, get up, lay out, arrangement or packaging which
shall amount to infringement of a copyright as the work was claimed to fall within the
meaning of "artistic work" as defined by Section 2(v) (c)2 of the Copyright Act, 1957.

Secondly to manufacture and sell or offer to sell tooth powder which is an imitation or
substantial reproduction of the plaintiff's Dabur Red Tooth Powder that shall amount to
passing off3.

The respondent's application for rejecting the plaint u/Order 7 Rule 11, Code of Civil
Procedure, 1908 was accepted by the single judge of high court on grounds of lack of
jurisdiction, the respondent company being a resident of Andhra Pradesh.

An intra court appeal was dismissed thereby relying upon Dhodha House Judgment4. (Fact
that the plaintiff resided within the jurisdiction of the court would not empower the court to
undertake the proceeding unless cause of action arose there) The plaintiff also failed to prove
that defendants carried out business in Delhi.

APPROPRIATE FORUM

While dismissing the appeal it was also mentioned that a suit for infringement of copyright
and passing off cannot lie in the same forum, since Section 62 Copyright Act, 1957 provides
for an additional forum which is not the case with passing off5.

Section 62(1) of the Copyright Act, 1957 defines a "district court having jurisdiction" to
include the district court where the plaintiff resides, whereas the Trademark Act doesn't
confer any such jurisdiction. The question that came into consideration in the Dhodha Case
was that whether the said district will have jurisdiction, the cause of action being both in
terms of the Copyright and the Trademark Act.

Division Bench of the High Court held that whereas the HC shall have jurisdiction to
determine the matter based on the copyright infringement, the plaintiff is entitled to file for a
fresh suit or passing off.

This Hon'ble Court has concurred with the aforesaid view holding that it stood clear after
reading the said provisions of the Copyright and Trademark Act that an additional forum i.e.
district court within the jurisdiction of which the plaintiff resides, was provided for, only in
the case of copyright infringement6 or a registered trademark7 but not for passing off8.

It has been made explicit after the Dhodha House9 judgment that an order passed by the
Court having no territorial jurisdiction shall be a nullity.

COMPOSITE SUIT

In the Patel Field caseo10, it was observed by the Court that when there are two cause of
action, under the Code of Civil Procedure, the forum, which has the jurisdiction to entertain
both the cause of actions, should be approached.

In the Dhodha Judgment11 the Court observed that a composite suit based on infringement of
trade mark, copyright, passing off and for rendition of accounts of profits as also injunction
having been filed, the Delhi High Court had the territorial jurisdiction to entertain the suit.

This would imply that where a copyright is infringed the Court shall have the incidental
power to invoke jurisdiction. The judgment cannot, however, be taken to mean that two suits
having different causes of action be club together as a composite suit.

The language of Order II Rule 3 of the Civil Procedure Code makes it clear that a composite
suit cannot entitle a court to entertain a suit in respect of which it has no jurisdiction.

RULE OF INTERPRETATION

While considering Section 6212 and Section 13413, the Court has observed that when the
latter was framed the legislature was aware of the provisions of an additional forum in the
former and thus it was the intent of the legislature not to include the same in the latter. The
exclusion in case of passing off was a result of conscious effort by the legislature, which shall
not be overlooked. The Court has followed a literal manner of interpretation of the text which
is apt according to the present matter.

For interpretation of Section 5514 of the Copyright Act, 1957 the Court has undertaken a
narrow interpretation which at the same time seems appropriate, whereby it was concluded
that the phrase "as are or may be conferred by law for the infringement of a right" cannot be
taken to mean as any other law, which, when violated, may give rise to a separate cause of
action.

However, at the same time, the Court consented that it may grant incidental relief where it
has the power to adjudicate and not otherwise.

In the said matter, the Court had the power to adjudicate by virtue of Section 62(2) of the
Copyright Act, 1957 whereas the primary ground of violation was present in the Trademark
Act, 1958. Thus, the provisions of the former could not be invoked merely to grant the
jurisdiction to adjudicate. It could also not be established that the defendant carried out
business in Delhi or goods manufactured by them were sold or were available in the market
of Delhi, which if proved would have conferred the jurisdiction on the court through Section
20 of the Civil Procedure Code. Thus considering the aforesaid reasons the appeal was
dismissed.

Footnotes

1 Dabur India Ltd. v. K.R.Industries; CIVIL APPEAL NO. 3637 OF 2008; Supreme Court of
India

2 Section 2 (v)(c) "artistic work" means-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving
or a

photograph, whether or not any such work possesses artistic quality;

(ii) work of architecture; and

(iii) any other work of artistic craftsmanship;

3 Common Law Tort to enforce an unregistered trademark.

4 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

5 Under Section 134 of the Trademark Act, 1999 for the purpose of an unregistered
trademark, "District Court having Jurisdiction" does not include where the plaintiff resides.

6 Section 62, Copyright Act, 1957.

7 Section 134, Trademarks Act, 1999

8 Section 134, Trademarks Act, 1999

9 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

10 P.M. Diesels Ltd. v. M/s. Patel Field Marshal AIR 1998 Delhi 225

11 Dhodha House v. S.K. Maingi (2006) 9 SCC 41

12 Copyright Act, 1957

13 Trademarks Act, 1999

14 55.Civil remedies for infringement of copyright - (1) Where copyright is any work has
been infringed, the owner of the copyright shall, except as otherwise provided by this Act, be
entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or
may be conferred by law for the infringement of a right.

 Lex Orbis 2008