A vodka label and a WhatsApp order: Inside Delhi High Court’s IP jurisdiction debate

A vodka label weakened one plaintiff’s claim to jurisdiction in Delhi. An order for face washes placed on WhatsApp raised questions about whether an investigator could create the connection needed to sue in the capital. An online broadcast presented a harder problem, with the Court accepting a Delhi connection and still directing the plaintiff elsewhere.

These disputes formed part of Justice Purushaindra Kumar Kaurav’s November 3 judgment returning plaints in 17 intellectual property suits.

The 246-page ruling addressed a legitimate concern. The internet allows businesses to reach consumers across India, but it also allows plaintiffs to arrange deliveries and invoke courts far from where the parties operate. Courts must examine whether the territorial connections pleaded before them withstand scrutiny.

The controversy lies in how far that examination can go. Can a court require a stronger connection than the statute prescribes? Can it return a suit after accepting that part of the cause of action arose within its territory? And how should a single judge deal with division bench decisions that appear to support a different approach?

Those questions acquired immediacy on November 6, when a Full Bench of Justices C Hari Shankar, Jyoti Singh and Vinod Kumar reserved its verdict on a reference concerning territorial jurisdiction in IP disputes.

The Full Bench repeatedly clarified that it was not hearing an appeal against Justice Kaurav’s judgment. Its answers to the reference could nevertheless affect the legal framework on which that judgment rests.

Section 20 of the Code of Civil Procedure (CPC) generally permits suits where the defendant resides or carries on business, or where the cause of action arises wholly or partly. Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act provide additional venues for covered infringement claims. Subject to the governing rules, plaintiffs may also sue where they themselves reside, carry on business or personally work for gain.

In Indian Performing Rights Society v. Sanjay Dalia, the plaintiff sought to sue in Delhi through its branch office even though its head office and the alleged infringement were in Mumbai. The Supreme Court held that the special IP provisions could not be used to choose a distant branch-office forum in those circumstances.

That restriction concerns the use of the plaintiff’s business presence to establish jurisdiction. Section 20(c) separately permits proceedings where the cause of action arises wholly or partly, making the location of the alleged wrong an independent consideration.

ABD Maestro alleged that Great Galleon’s V21 vodka copied the yellow-and-black presentation of its YELLO brand. The photograph filed with the plaint, however, carried the words “FOR SALE IN MADHYA PRADESH ONLY.”

Justice Kaurav found that the disputed product was not sold in Delhi. He also noted that the plaintiff had not pleaded whether Great Galleon held a Delhi excise licence for it. The defendant’s GST registration described a Delhi address as its principal place of business. The Court held that this expression had a distinct meaning under GST law and did not settle the jurisdiction question under the CPC.

The demand for a clearer Delhi connection was persuasive on these facts. Courts cannot be expected to accept a paragraph alluding to jurisdiction without examining the documents filed alongside it. But the weakness of an individual plaint does not establish the need for a broader restriction on statutory venues. That becomes apparent when the judgment turns to goods that actually reached Delhi.

Beiersdorf and Nivea India relied on an investigator’s account of four face washes ordered from Gujarat over WhatsApp and delivered to Bhogal in Delhi. Justice Kaurav found gaps in the evidence. The affidavit left unclear whether the investigator or an associate received the goods, while the plaint failed to explain the role of the person named on the parcel.

“‘I and/or my associate’ is not a fact. Only facts can be stated in an affidavit.”

The Court discarded the affidavit. It also examined the transaction independently, treating the courier as the buyer’s agent and concluding that delivery to the carrier in Gujarat amounted to delivery to the buyer there. The judgment then stated a broader rule.

“As a rule, the use of an investigator or any other person set up by the plaintiff to find jurisdiction before a forum court amounts to concocting jurisdiction.”

It recognised exceptions, including where an investigator documents goods already supplied to local retailers.

The difficulty with this formulation is that it places considerable weight on why the buyer arranged the transaction. The seller’s conduct also matters. If a seller willingly accepts an order and sends allegedly infringing goods into Delhi, that conduct requires examination even when the buyer intends to collect evidence. A defective affidavit can prevent the plaintiff from proving a transaction. It cannot, by itself, resolve whether a properly proved transaction points to jurisdiction.

In Banyan Tree Holding v. A. Murali Krishna Reddy, a Singapore hospitality company sued Hyderabad-based defendants over their use of “Banyan Tree” for a retreat, relying partly on their website to establish jurisdiction in Delhi.

A division bench had held that website accessibility, even interactivity, was insufficient by itself and required evidence of deliberate targeting of customers in the territory, a commercial transaction through the website and resulting harm there.

The judgment also addressed trap purchases. A solitary transaction arranged by the plaintiff could not establish purposeful availment, while evidence consisting of a series of trap transactions had to be fairly obtained, clearly pleaded and supported by material.

During the Full Bench hearing, counsel disputed a broad reading of the ruling as making investigator purchases automatically unacceptable.

Justice Kaurav generally required plaintiffs relying on website activity to demonstrate deliberate targeting of people within the territory, resulting harm and concluded commercial transactions through the website. His judgment recognised a limited relaxation for certain cases involving defendants without any presence in India.

The Full Bench hearing explored the limits of that approach through hotel websites, business inquiries and AI chatbots providing product information.

Senior Advocate Chander M Lall, addressing the broader jurisdiction question without directly addressing Justice Kaurav’s judgment, pointed to alleged infringements that occur without purchases. A disparaging advertisement or an unauthorised copyright broadcast may itself supply the basis for a claim.

This exposes a weakness in any general insistence on concluded transactions. When the alleged wrong is the publication or communication itself, the absence of a purchase says little about whether that wrong occurred within the territory.

The relevant test must account for the right asserted and the conduct alleged to violate it. A sale can demonstrate a commercial connection, but it cannot serve as a complete explanation for advertising, broadcasting and services disputes.

The Gurbani broadcast dispute brought the issue into sharper focus. The plaintiffs alleged unauthorised retransmission of a live feed from the Golden Temple. The defendant had a subordinate office in Delhi and viewers in the city could access the broadcast.

Justice Kaurav accepted that a fraction of the cause of action arose in Delhi. He nevertheless held that Amritsar was the appropriate forum.

“The material, integral, and essential part of the cause of action, however, has arisen in Amritsar.”

The Court applied forum non conveniens, under which a court possessing jurisdiction declines proceedings in favour of another forum. This is the judgment’s most contestable step. Section 20(c) expressly permits suits where the cause of action arises partly. Once a legally relevant part is established, preferring another court because more of the dispute occurred there requires a separate legal justification.

In Horlicks v. Heinz, advertising disputes between the makers of Horlicks and Complan reached a division bench after a single judge returned the plaints on grounds of forum non conveniens. The division bench restored the suits, holding that the doctrine did not apply to domestic civil suits governed by the CPC because the Code provided no basis for it.

Justice Kaurav relied on other authorities to explain why the ruling no longer held the field. During the November 6 hearing, the Full Bench indicated that a civil court possessing jurisdiction could not refuse to exercise it merely because another forum was more convenient.

These were oral observations and the Bench also questioned whether the doctrine itself required determination within the reference.

The practical concern is uncertainty. A plaintiff may satisfy the statutory conditions and still face a further inquiry into whether another competent court is more suitable. The judgment needs to explain why that additional hurdle follows from the CPC.

Justice Kaurav treated several division bench decisions as lacking binding force on particular questions, including because relevant authorities or arguments had not been considered.

In Tribhuvandas Purshottamdas Thakur v. Ratilal Motilal Patel, the Supreme Court rejected a High Court single judge’s approach to disregarding binding precedent. It emphasised that single judges ordinarily must follow decisions of division benches and full benches, with doubts addressed through the appropriate reference procedure

A subsequent Supreme Court ruling can displace the basis of an earlier High Court decision. Concluding that a division bench misunderstood existing Supreme Court law presents a different problem.

The judgment’s treatment of precedent therefore requires scrutiny independent of its policy concerns. Agreement with the aim of discouraging forum shopping does not resolve whether the route taken was available to a single judge.

The reference to the Full Bench arose from Hindustan Unilever v. Kwick Living, an advertising dispute in which HUL alleged that a campaign disparaged Vim and Surf Excel.

Justice Anup J Bhambhani referred questions about how the CPC and special IP provisions interact, where corporate plaintiffs may sue and how online activity affects jurisdiction.

Justice Kaurav acknowledged the pending reference but said that fresh suits, including requests for urgent relief, still required decisions.

“There cannot, it may be stressed, be a vacuum in law."

That explains why proceedings could continue. It does not settle how far a single judge should reformulate the governing tests while a larger bench considers competing authorities.

The Full Bench verdict may clarify both the connection needed to establish jurisdiction and the choice available once several courts are competent. The distinction between those questions should remain central.

An artificial connection may fail to establish jurisdiction, while a lawful choice among competent courts needs a different answer.