Comic heroes fail to find protection in India

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A division bench of Delhi High Court recently refused an appeal to an order passed earlier by the same court in Archie Comic Publications Inc (Archies) v Purple Creations Pvt Ltd & Ors that held it had no jurisdiction to entertain the suit. In April 2008, a single judge of the court had directed the suit be returned to Archies, after Purple Creations questioned the court’s jurisdiction arguing Archies had no business in India, much less in Delhi.

New York-based Archies had been seeking a permanent injunction and damages against Purple Creations, a Mumbai-based company, alleging infringement of its trademark. Although Archies had registered its trademark in India in October 1989, it did not have an office in the country.

The division bench, affirming the judgment of the single judge, held that section 134 of the Trademarks Act, 1999, requires Archies to file its suit at the place where it “carries on business or personally works for gain”.

HiResArchies had argued that Delhi High Court had jurisdiction to hear its suit as part of the cause of action arose within its jurisdiction: its trademark has been advertised in the Trade Marks Journal that was circulated in Delhi and also one bookshop in Delhi has been importing its books and comics and retailing it in Delhi. However, the court held that neither of these was a good enough reason for Archies to be seen to be carrying on business in its jurisdiction.

This judgment suggests prior use of a trademark may not be good enough while fighting infringement; it will also be necessary to establish territorial jurisdiction. As such, this decision might have been different if the New York-based Archies had a registered office in India.

The update of court judgments is compiled by Bhasin & Co, Advocates, a corporate law firm based in New Delhi. The authors can be contacted at lbhasin@bhasinco.in or lbhasin@gmail.com. Readers should not act on the basis of this information without seeking professional legal advice.