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  5. IS YOUR BRAND PROTECTED OUTSIDE INDIA?

Introduction

India has hundreds of laws that apply to the citizens of the country but the question is, are those laws or statutes applicable to the ones not residing in the country or in simple terms, to the foreigners? Let us simplify it with a situation, if you are in India and someone commits fraud on you on a digital platform and that particular person or website which was responsible for fraud is not in India. How will you sue them or can you even sue them? Tricky, right? Now apply the same situation to your registered trademark, what if it has been infringed by an outsider or a foreign company, can you sue them under the Trademark Act of India. In order to answer this question and protect your valuable trademarks from being misused, we are going to discuss the jurisdictional aspect of the India’s trademark statute -Trademark Act of 1999 (hereafter TM act or Act) in this article.

Trademark Act, 1999 and Jurisdiction

The TM Act came into the picture in 1999 but that does not mean that there were no suits filed before it; the Civil Procedure Code of 1908 (“CPC”) set the jurisdictional standards way before the Act. Section 20 of the CPC lays down the provisions of instituting a suit, by suit we mean any suit including infringement of trademarks. As per this section, a trademark suit can be filed:

  • at a place where the person who has infringed the trademark is residing or carrying on business or personal work;
  • at a place where any one of the multiple defaulters is residing or carrying on business or personal work;
  • at any place where the court allows the institution of a suit on its discretion, if such place is a residence/business place for the defaulter outside the court’s jurisdiction limit.

However, further the TM Act introduced another provision concerning the jurisdiction in case of infringement, passing off registered trademarks, i.e., section 134. Now, according to this provision, the registered proprietor has the right to file a suit against an infringement or passing off of a trademark within his local limits in a district court and no court inferior to it. As compared to the provision mentioned under the CPC, section 134 of the TM Act sets the jurisdiction in favour of the person instituting the suit or the registered proprietor of the trademark.

Now the questions arise as to which provision to follow? Does the registered proprietor have the choice or how does this work? Let us put you out of the misery by simplifying it into the following points:

  • The registered proprietor has the choice of filing a suit either as per the provisions of the CPC or as per section 134 of the Trademark Act.
  • Provisions of section 20 of the CPC are in addition to section 134 of the Trademark Act, therefore it should be read along with it.
  • In order to avoid abuse of the law by the registered proprietors on the part of the defaulter, the final power of deciding the jurisdiction or in which district court the suit is to be filed lies with the court of law.

Judgments on Extra-territorial jurisdiction

It is crystal clear from the provisions mentioned-above that none of the provisions specifically mentions about exercising jurisdiction over parties located outside India. So, does that mean one cannot sue a non-resident at all? No, we surely can as the courts have exercised their jurisdiction over non-residents in a number of cases before. Following are some of the recent ones:

A] HT Media Limited Vs. WWW.THEWORLDNEWS.NET (2019)

In the Delhi HC, Hindustan Times (HT) Media sued a domain registrar for infringing on its copyright by putting its content on another infringing website without giving due acknowledgment to HT. As the proprietor of the website was situated outside of India, it was difficult to identify or monitor him. The court issued an injunction ordering the website’s servers to prohibit access. This case demonstrates that Intellectual Property (IP) protection cannot be limited to a certain geographical location. Furthermore, violations can occur simultaneously in multiple locations. As a result, it is up to trademark owners to prosecute them in various jurisdictions throughout the world.

B] HT Media Limited Vs. Brainlink International, Inc (2020)

In yet another case, HT Media , a renowned national news broadcasting organisation, identified a business in New York infringing on its trademark rights by utilising the domain name www.hindustan.com , which HT had already registered as a trademark in India. In this case, before the Hon.Delhi High Court, the court ordered an injunction barring Brainlink’s use of the domain name www.hindustan.com  after exercising extra-territorial jurisdiction over the New York based party. In New York, Brainlink had filed a declaration suit. However, the Delhi HC held that the New York District Court lacked jurisdiction over the case because the trademarks were registered in India, and granted an anti-suit order prohibiting Brainlink from pursuing the case in New York.

C] Tata Sons Private Limited Vs. Hakuna Matata Tata Founders (2021)

In this matter, Tata Sons Private Limited appears to be providing a platform for crypto-currency trading under the well-known brand name/trademark “TATA,” even though Tata does not deal in crypto-currency under any brand name or trademark. Whereas, the first party, Hakuna Matata Tata Founders, is based in the United Kingdom and runs the website www.tatabonus.com. There is also a second party running the website www.hakunamatatafinance.com, based in the United States. Both the parties exploit the name “TATA Coin/$TATA” on their separate websites for selling and acquisition of cryptocurrencies. Tata filed a lawsuit in court, saying that the opposite parties were infringing on its trademark, “TATA,” and requested an interim injunction to prevent them from using the “TATA” brand on their websites.

Conclusion: The main issue before the Delhi HC was,whether the court had jurisdiction over the parties located outside India.The court denied the plea of Tata for an injunction and held that:

  • It must be proven through evidence that the opposite parties intended to target Indian clients through their websites.
  • The infringing websites must not only be accessible within the court’s jurisdiction but there must also be some direct approach to the jurisdiction in a substantial way. If this is absent then the Indian court lacks the jurisdiction to proceed against a non-resident.

In the present matter, it was not the case, as the website located outside India was not intentionally targeting Indian customers and therefore the court lacked the jurisdiction.

Takeaway:

It is apparent from the above cases that in order to comprehend trademark jurisdictional difficulties, a harmonious construction of Section 20 of the Civil Procedure Code, Section 134 of the Trade Marks Act, 1999, and the decisions of the Honourable courts is required. The legislations indeed have no provision which specifically mentions exercising jurisdiction over non-residents. But yes, the courts are using precedents as a source to overcome that difficulty. In our opinion considering the nature of infringements in the 21st century, i.e., over the internet which has no limits to boundaries, amendments shall be made by the legislators so that the Judiciary has a legit source of exercising jurisdiction over parties located outside India.

At Photon Legal we ensure that your trademark gets 360-degree protection. Our Artificially Intelligent TM watch, competitor watch analysis leave no stone unrolled when it comes to maintaining your brand integrity. We take up all that workload and make your life super easy. To seek best TM protection and enforcement, contact us now at our email id- photon.ip@photonlegal.com and we shall get right back to you!

 

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