Listing goods on a website accessible in Delhi not enough to prove territorial jurisdiction: Delhi HC in IP case

The Delhi High Court has ruled that a litigant cannot invoke its territorial jurisdiction in a trademark dispute merely because his legal opponent's products are accessible on a website that can be used from Delhi or because a trademark assignment or registration was executed in Delhi [Vikrant Chemico Industries Pvt Ltd v. Shri Gopal Engineering and Chemical Works Pvt Ltd].

Actual evidence of sales within Delhi is required, the Court held while returning a trademark suit filed by Vikrant Chemico Industries against Shri Gopal Engineering and Chemical Works over competing “doctor” brand phenyl products.

Justice Amit Bansal observed,

“The website of the defendant is a passive website and mere accessibility of the said website within the jurisdiction of this Court would not amount to specific targeting of customers in Delhi. Filing or assignment of a trademark in Delhi would also not constitute cause of action."

Vikrant Chemico (plaintiff), incorporated in 1972 and engaged in personal care and chemical products, claimed rights in the marks Doctor Brand Phenyle and Doctor Brand Germ Troll. It alleged that Shri Gopal Engineering had launched rival products under Doctor Hazel’s Brand Phenyle and Chemist Brand Germ Troll that infringed its registered trademarks and copyright and amounted to passing off.

The plaintiff pointed to registrations dating back to 1985, extensive sales under the “Doctor Brand” label, and a 1999 copyright registration for its packaging artwork. It argued that “Doctor” was the essential feature of its brand and that the defendants had dishonestly copied both its name and trade dress.

The defendants, however, traced their use of “Chemist” and “Doctor Hazel’s” marks to long-standing family business arrangements, including a partnership deed and assignment of rights in 1996. They argued that they were registered proprietors of the word mark "Doctor Hazel’s", and that “Doctor” was a common, laudatory term incapable of exclusive appropriation.

The Court, at the outset, found that the parties were Kanpur-based entities and that there was nothing to show that the Delhi High Court's territorial jurisdiction could be invoked in the present matter.

However, the Court proceeded to decide on the remaining legal issues raised in the case by citing the mandate in Order XIV, Rule 2 (court to pronounce judgment on all issues) of the Code of Civil Procedure (CPC) and the Supreme Court's judgment in Sathyanath v. Sarojamani (2022).

On the substantive issues, Justice Bansal found that both parties were registered proprietors — the plaintiff for the device mark "Doctor Brand Phenyle" and the defendants for the word mark "Doctor Hazel’s."

“In light of Section 28(3) of the Trade Marks Act, no infringement action can lie when both sides hold valid registrations. Such an action would only be maintainable once rectification of one of the registrations takes place,” the Court said.

The Court also dismissed the plaintiff’s attempt to claim exclusivity over the word “Doctor.”

“The registration granted in favour of the plaintiff is for the composite device mark and not for the word ‘Doctor’. The addition of ‘Hazel’s’ makes the defendants’ mark distinguishable. Further, the word ‘Doctor’ is generic and laudatory, registered by several third parties in Class 5, and cannot be monopolised,” Justice Bansal observed.

He also concluded that the packaging of the rival products was quite distinct in terms of colour scheme, font, and style, ruling out passing off or copyright infringement.

The Court, however, then proceeded to return the suit back to the plaintiff, citing a lack of territorial jurisdiction.

The plaintiffs were represented by Advocates Saikrishna Rajagopal, Nitin Sharma, Sohrab Mann, Deepika Pokharia and Abhinav Bhalla.

The defendants were represented by Advocates Peeyoosh Kalra and Yashwant Singh Baghel.

[Read Judgment]