The Delhi High Court reiterated that the occurrence of a cause of action in one place is a determining factor under both Art. 20 of the Code of Civil Procedure and art. 134 of the Trade-marks Act to attract the jurisdiction of the Court there.
A single bench of judges composed of Judge Manoj Kumar Ohri observed as follows:
“If under article 20 CPC, the jurisdiction of the court is attracted by reason of the location of the defendant’s establishment or from where the defendant carries on business or works for gain, under article 134 of the Trademark Law, it is the location of the applicant’s office or from where it operates, is an important factor â
In addition, he said:
“The occurrence of a cause of action or part of it, at a location, is considered a determining factor, both under Article 20 CPC and Article 134 of the trademark law, to attract the jurisdiction of the court in this place. ”
The Court had before it a claim filed in an action brought by V Guard Industries (Plaintiff) seeking a permanent injunction to prevent N Guard (Defendant) from infringing and promoting its trademark and design.
The claim was filed by the defendant challenging the jurisdiction of the High Court to hear the said action for lack of territorial jurisdiction and therefore requested that the claim be returned.
The applicant carried out an activity of manufacture, distribution and sale of electrical products under the registered trademark âV-GUARDâ. The court issued an order of January 18, 2021 granted an interim injunction ad parte prohibiting the defendant from selling or distributing the products under the brand “N-GUARD) and the domain name www.nguard.in or any other brand similar to the complainant.
Questioning the jurisdiction of the Court, the Respondent asserted that he did not carry on business in Delhi and that none of the Plaintiffs or Defendants had their registered office in Delhi.
It has also been argued that a third-party marketplace website like Amazon is not adequate to attract the jurisdiction of the Court.
On the other hand, the plaintiff argued that the availability of the defendant’s products on third-party marketplace websites like Amazon, Flipkart and Indiamart, accessible within the territorial jurisdiction of the Court, and that the offending products were delivered to Delhi.
During the hearing of the arguments, the Court considered that the territorial jurisdiction of the courts in matters of counterfeiting and trademark infringement was a delicate legal question.
Observing that the Respondent’s products were available for sale and delivery in Delhi via third markets, the Court held the following opinion:
“it is prima facie established that the defendant’s incriminated products are not only freely sold on amazon.in, but are also available for sale to Delhi customers on other third party market websites eg Amazon, Flipkart , Snapdeal, Indiamart and Shopclues, which are universally accessible, including to customers in Delhi. ”
In addition, it was found that:
“… if any part of the cause of action arose in a place where the plaintiff has its branch / subordinate office, the courts of that place will have jurisdiction to hear an action for infringement and deceptive marketing.”
Title: V GUARD INDUSTRIES LTD. v. SUKAN RAJ JAIN & ANR.
Click here to read the order