Who Judges Whom: Turf Wars, Forum Shopping And Anti-suit Injunctions

• Published date: 05 May 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Obhan & Associates
• Author: Mr Essenese Obhan and Ayesha Guhathakurta

Introduction

An anti-suit injunction is an order by the court which restricts a party from filing or continuing with proceedings in another court, including foreign courts, with regard to the subject matter of the suit.¹ When courts are approached by a party seeking an anti-suit injunction, they generally establish a 'forum conveniens', i.e., determine the most appropriate forum to decide upon the dispute. Once determined, the court recognise this forum as the one where the dispute has a 'substantial and real' connection.

Ordinarily, territorial jurisdiction in suits pertaining to intellectual property (IP) in India are determined by Section 20 of the Civil Procedure Code, 1908, which states that suits shall be instituted at the court within whose jurisdiction (i) any of the defendants reside, carry on business, or personally work for gain; or (ii) the cause of action arises, wholly or in part.

Some provisions in intellectual property law provide for additional forums that may be approached by parties. These are Section 62 of the Copyright Act, 1957 and Section 134 of the Trademarks Act, 1999. Both these provisions permit infringement suits to be instituted in any district court within whose jurisdiction the plaintiff resides, carries on business, or personally works for gain.

Anti-suit injunctions and personal jurisdiction in IP matters

Anti-suit injunctions are most common in arbitration or family law matters. However, such injunctions are occasionally granted in matters pertaining to intellectual property as well. It is mostly in cross border matters where it becomes complex, since the laws differ from country to country. In such cases, it becomes imperative to determine which country's courts are best suited to hear the case. To do this, courts must establish personal jurisdiction in the matter.

In India, where a decision relating to the interest of the parties is to be made, courts must have personal jurisdiction. Personal jurisdiction refers to the authority to make a decision regarding the party being sued. In India, personal jurisdiction is not specifically defined in law. In IP cases, the definition of this term has been derived from jurisprudence.

The question as to what constitutes personal jurisdiction was discussed at length in (India TV) Independent News Service Pvt Limited v. India Broadcast Live LLC and Ors.² In this case, the plaintiff moved the Delhi High Court for a permanent injunction restraining the defendants from using their mark...