A trademark owner can sue for infringement where it carries on business — not only where the defendant lives or the harm occurred. The Bombay High Court confirmed this reading of Section 134 in a cement-industry dispute.
The special jurisdiction rule
Section 134 of the Trade Marks Act, 1999 gives IP plaintiffs a jurisdiction the ordinary Civil Procedure Code does not: an infringement suit may be filed in a District Court (or higher) within whose limits the plaintiff actually resides or carries on business — a deliberate convenience for rights holders.
The dispute
In Dalmia Cement (Bharat) v. Ultratech Cement, the defendants challenged the Bombay court’s jurisdiction, arguing the cause of action did not arise in Bombay and questioning whether a licensee could be a proper party.
The court’s five points
- Plaint averments are taken as true at the threshold (Order VII Rule 11 CPC).
- A licensee’s status does not create a “jurisdictional joint venture” defeating the suit.
- The “person instituting the suit” extends beyond registered users/proprietors — the Act uses “includes,” not “means.”
- Section 134 confers jurisdiction independently of the CPC.
- The cause of action need not arise where the defendant resides.
Bottom line: a proprietor may sue where it conducts business, regardless of the type of office or where the harm was felt.
Why it matters
- Forum advantage for rights holders. You can generally litigate on your home turf, reducing cost and friction.
- Plead the business connection clearly. Jurisdiction under Section 134 turns on where the plaintiff carries on business — set that out precisely in the plaint.
- Licensee involvement is not fatal. A licensee’s role does not by itself knock out jurisdiction.
Frequently asked questions
Where can I file a trademark infringement suit in India? Under Section 134, where you actually reside or carry on business, in addition to the ordinary CPC forums.
Does the cause of action have to arise where I sue? No. Section 134 gives jurisdiction based on where the plaintiff carries on business, independent of where the defendant resides or the harm arose.
Can a licensee be a party to the suit? Yes. The “person instituting the suit” is defined inclusively, and a licensee’s status does not defeat jurisdiction.
Why does Section 134 matter? It lets rights holders litigate closer to home, a practical advantage the general procedure code does not provide.
Legislation referred to
- The Trade Marks Act, 1999