Introduction
The jurisdiction of a court depends on its relevant area, geographical location of the court, the monetary worth and subject matter. Each of these factors is independently considered for a court to have jurisdiction.
As stated in the provisions of the Code of Civil Procedure, a Court in India may have jurisdiction over a matter if the cause of action arises within its territorial jurisdiction or if the defendant carries on business, resides or personally works for profit, within its territorial jurisdiction. The geographical location of the plaintiff is not to be considered.
However, in cases where an action for infringement of a registered copyright or trademark is brought, the civil court holding the relevant jurisdiction of where the plaintiff resides, or carries on business or works for profits, also has jurisdiction.
“The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015” defined IP disputes as business disputes and consequently altered procedural law to fast track and manage their timeline, to speed up and increase efficiency of trials involving intellectual property. The Act provided for the creation of commercial sectors within high courts and currently, the Delhi and Bombay High Courts have set up commercial divisions to manage IP suits.
As per Section 104 of the Patents Act, 1970 and Section 22(4) of the Designs Act. In cases where the validity of a patent is challenged as a reply or via a counter claim and a design is challenged to protect oneself in a patent and design encroachment case respectively, the High Court may take cognizance in such matters.
Acquiring vital/significant proof of encroachment and revelation
Anton Piller orders
An Anton Piller order is essentially a civil action for encroachment, wherein the court official can be designated ex parte to visit the defendant’s premises, look and hold onto the products causing infringement.
John Doe orders
These orders are very helpful in anti-counterfeiting activities and activities against copyright and broadcast theft. The court permits the offended party to officially incorporate them into the suit, when the defendants have been surely recognised.
Norwich Pharmacal orders
A Norwich Pharmacal request essentially involves seeking data or documentation from third parties who might possess relevant information to help the Court in an IP suit. In the case of Souza Cruz SA v. N K Jain, the Delhi High Court ordered the Commissioner of Customs and Excise at Hyderabad to reveal the total details of encroaching cigarettes being traded to Ukraine.
Discovery
Under the arrangements of Order XI Rules 1 and 2 of the Code of Civil Procedure 1908, discovery is a procedure that can be instituted only after initiation of court proceedings. Section 115 of the Patents Act 1970 states that in any suit to encroachment or different procedures under the Act, the court may delegate a free qualified expert or in other words seek expert opinion, to help the court or to ask and report upon any such inquiry of reality or assessment that doesn’t include an issue of understanding of law, as it might define for the reason.
Remedies and Reliefs
As given in Sec.108 of the Patents Act 1970 the relief a court may grant in any suit for infringement can include an injunction subject to conditions the court sees fit, as well as either damages or a record of profits
In Bridgestone Corporation v. Tolins Tires Pvt Ltd the court directed the defendants who were assembling and trading encroaching Bridgestone tires abroad to pay the offended party 3 million rupees and furthermore to pay 500,000 rupees to legitimate guide.
Appellate Review
In India, a suit for encroachment of trademark, copyright or patents can be documented in a court not lower than a district court. The High Courts of Delhi, Calcutta, Madras, Bombay, Shimla, and Jammu and Kashmir, are courts with original jurisdiction and hence are an exception to the rule.
Author: Marvie Magotra, Fourth Year student at Army Institute of Law
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