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 “INDIA TV”. The defendant contested this, claiming, among other things, the lack of jurisdiction of the High Court to entertain this suit.
While this suit was pending, the defendant instituted a parallel suit in the Arizona District Court in the United States seeking non-infringement. The plaintiff sought an anti-suit injunction against the Indian proceedings. The defendants argued that the Delhi High Court had no authority to preside over them, since they neither resided nor worked for gain in India; the promoters were residents of the US; and the registering authority was based in Arizona. All of these factors cumulatively made Arizona the forum conveniens in this matter, according to them.
Since this was an anti-suit injunction filed in the US, for the determination of personal jurisdiction, the position of US courts was considered. The defendant cited Cybersell Inc v. Cybersell Inc and Ors.3 which recognized a three-part test to determine personal jurisdiction,
“i. The non-resident defendant must do some act, enter some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum,
- the claim must be one which arises out of or results from the defendant’s forum-related activities;
iii. exercise of jurisdiction must be reasonable.”
Cybersell4 also held that there must be sufficient minimum contact for personal jurisdiction to be established, which depends upon the nature and quality of commercial activity conducted.
The defendant also contended that “a mere maintenance of a homepage accessible in India is not sufficient to confer jurisdiction where there is no evidence to show that defendant No. 1 specifically targeted audiences in India.”
The plaintiff on the other hand, referred to Compuserve Inc. v. Patterson5 where general and specific personal jurisdiction was differentiated: where a specific jurisdiction has sufficient contact with the forum state to allow district courts to adjudicate by norms of fair play and justice. A three-step test, which went beyond that cited by the defendants, was as follows:
- the defendant purposefully avails himself of acting or causing a consequence in the forum state;
- the cause of action must arise from the defendant’s activities there; and
- the acts of the defendant must have a substantial enough connection with the forum to make exercise of jurisdiction over the defendant reasonable
On this basis, the plaintiff contended their goodwill was being damaged in India by the defendants, the website was highly interactive, and was not only accessible but offered the option of subscription.
In the case in India, the Delhi High Court held that in order to determine personal jurisdiction, it would have to consider three things: firstly, whether the defendant’s activities have sufficient connection with the forum; secondly, whether the cause of action arose out of these activities and thirdly, whether exercise of jurisdiction will be reasonable. It found that although mere accessibility is not a ground of personal jurisdiction, the fact that the website was interactive and the defendants had intentions of operating in India meant that there was sufficient connection with India. The Court also said that the defendants had enough Indian links for it to exercise jurisdiction while the plaintiff had an office only in India and did not have offices anywhere else in the world. Further, the damage to the plaintiff’s goodwill within India was a consequence of the defendants’ activities and thus the court had personal jurisdiction over the defendants.
Soon after, the Delhi High Court upheld the test laid down in India TV 6 and expanded upon its applicability, in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Ors.7 In this case, the plaintiff, since 1994 had adopted and used the mark “Banyan Tree” and the banyan tree device, and claimed that both of which, due to extensive use, had acquired a distinct association with the plaintiff. In October 2007, the plaintiff learnt that the defendant had initiated a project named ‘Banyan Tree Retreat’, which was advertised on their website. The plaintiff contended that the Delhi High Court had territorial jurisdiction since the defendants had presence in India through their web page, the webpage was not passive and interactive, and the defendant had sent brochures to residents in Delhi.
The Delhi High Court held that the plaintiff would have to establish that the defendant purposefully availed of the jurisdiction of the forum court. It would have to show that the use of website was with the intention of concluding a commercial transaction. The Court also clarified that to be seen as purposeful availment, there must necessarily be a commercial transaction in the forum state, by specifically reaching out, or marketing, to customers. Neither a mere advertisement nor an insufficiently interactive website which does not purposefully transact with customers would be sufficient to determine jurisdiction. Where cause of action is established under section 20(3) of the Civil Procedure Code, 1908, the court will have the jurisdiction to try the matter.
In a previous post, we highlighted a more recent case where the Delhi High Court in HT Media Limited & Anr v. Brainlink International, INC. and Anr.8 granted an anti-suit injunction against a suit initiated in the United States District Court for the Eastern District of New York. The High Court held that the suit before the US court was “vexatious “and “oppressive” since the website had been established with the motive of targeting Indian viewers, which later became inactive. This test for whether foreign proceedings are ‘oppressive’ or ‘vexatious’ is helpful to maintain international comity in India as well as around the world.
Anti-suit injunctions are a contentious device used to tackle conflicts arising out of jurisdiction- and forum-shopping. Courts are wary in handling such cases, and such injunctions are not granted frequently or lightly. Usually, strict tests have to be met before any such grant. The grant of an anti-suit injunction implies encroaching on the jurisdiction of another court, and thus, if not considered with particular care and consideration, can affect international relations. Although India does not have any explicit rules governing the award of anti-suit injunctions, Indian courts should grant injunctions on principles of equity and preventing lapses in the delivery of justice, while also considering the basic doctrine of international comity.
1 Dinesh Singh Thakur v. Sonal Thakur, (2018) 17 SCC 12.
2 2007 (35) PTC 177 (Del.).
3 130 F.3d 414.
4 130 F.3d 414.
5 89 F.3d 1257.
6 2007 (35) PTC 177 (Del.).
7 CS (OS) No.894/2008.
8 CS (COMM) 119/2020.