India jurisdiction report: Picking the right jurisdiction

This article is aimed at providing a quick understanding of matters relating to choice of jurisdiction available to an IP owner in light of statutory and judicial principles.

Earlier position

Before the present legislation—the Trademarks Act, 1999—the aspect of geographical jurisdiction of courts for trademark infringement and passing off actions was covered only under section 20 of the Civil Procedure Code, 1908 (CPC). Section 20 of CPC required institution of suits in the court having territorial jurisdiction of the place where the defendant resides; or carries out business; or works for gain; or where the cause of action arises. This provision continues in the statute book to date.

Additional forum of convenience

The Trademarks Act, 1999 introduced an additional forum for convenience of brand owners to initiate trademark infringement suits. As opposed to instituting a suit in the place where the defendant resides or carries out business, section 134 of the act enabled a registered trademark owner to institute a suit for infringement in a court that has jurisdiction over the place where the registered trademark owner resides or carries out business.