Burger King Corporation vs Techchand Shewakramani & Ors

The plaintiff (Burger King) is a US based Company while the defendants (Techchand Shewakramani) are based in Mumbai.

The Plaintiff sought permanent injunction against the defendants with respect to their trademarks “Burger King” and “Hungry Jacks” in the Delhi High Court.

The Defendants filed the present application praying for the rejection of the plaint on the grounds of lack of cause of action and lack of territorial jurisdiction.

The defendants contended that the Delhi High Court did not have the jurisdiction to entertain the suit, given Section 134 (2) of the Trade Marks Act which reads as follows:

“Suit for infringement, etc., to be instituted before District Court.—

(1) No suit—

(a) for the infringement of a registered trade mark; or

(b) relating to any right in a registered trade mark; or

(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff’s trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

(2) For the purpose of clauses (a) and (b) of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.—For the purposes of sub-section (2), “person” includes the registered proprietor and the registered user.” (emphasis added)

The plaintiffs have not only invoked section 134 of the Trade Marks Act, but have also relied on Section 20 of the Civil Procedure Code.

“Section 20: Other suits to be instituted where defendants reside or cause of action arises.

Subject to the limitations aforesaid, every suit shall be instituted in Court within the local limits of whose jurisdiction-

(a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or

(b) any of the defendants, where there are more than one, at the time of the commencement of the suit actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or

(c) the cause of action, wholly or in part, arises.”

On examining various precedents on the issue, the Court has concluded that either Section 20 of CPC or Section 134 of Trademarks Act can be invoked when it comes to deciding the jurisdiction for initiating a trademark infringement suit. In other words, the referred section of both the statutes don’t override each other, instead they complement each other, thereby allowing the plaintiff to explore multiple options while deciding on the court in which the suit may be filed. Similarly, the CPC provision can also be invoked for initiating copyright infringement suits.

We hope this article was a useful read. The judgment can be downloaded here. 

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