Jurisdiction in trademark infringement cases

In intellectual property practice, territorial jurisdiction often serves as the critical threshold issue that determines the course of trademark litigation. The Delhi High Court's decision in M/s Kohinoor Seed Fields India Pvt Ltd v. M/s Veda Seed Sciences Pvt Ltd provides an instructive example of these jurisdictional challenges in action. In this case, Kohinoor owned registered trademarks TADAAKHA and SADANAND for cotton hybrid seeds and used BASANT as an unregistered mark. From 2014 to 2022, it had a yearly Marketing Agreement with Veda, under which Veda was permitted to market specified Kohinoor hybrids under these marks. The last agreement, dated January 1, 2022, was executed in New Delhi.

In October 2022, Kohinoor found out that Veda was promoting seeds under “VEDA TADAAKHA GOLD BG II”, “VEDA SADANAND GOLD BG II” and “VEDA BASANT GOLD BG II” for hybrids not manufactured by Kohinoor. This was allegedly beyond the scope of the Marketing Agreement. Kohinoor, accordingly, filed a suit before the Delhi High Court for infringement and passing off, invoking Section 134(2) of the Trade Marks Act, 1999 (hereinafter, referred to as “the Act”) and pleading that (i) its registered office and registrations were in Delhi; (ii) the Marketing Agreement was executed in Delhi; and (iii) infringing products were available on IndiaMart and Kalgudi, which are accessible in Delhi.

Veda sought the return of the plaint by filing an application under Order VII Rule 10 CPC, 1908. Here, learned Single Judge held that no part of the cause of action arose in Delhi, while relying on the earlier cases of Dhodha House ((2006) 9 SCC 41), Banyan Tree 2010 ((42) PTC 361 (Del)), IPRS v. Sanjay Dalia ((2015) 10 SCC 161) and Ultra Home Construction (227 (2016) DLT 320 (DB)). Kohinoor filed an appeal against the same, wherein the Division Bench reversed the order of the learned Single Judge and restored the suit, while allowing the appeal.

The learned Single Judge had identified three issues focusing on (i) the role of the Marketing Agreement, (ii) the impact of online listings, and (iii) the effect of the Plaintiff’s principal and subordinate offices. While relying on these issues, the Division Bench passed the judgement with four major doctrinal shifts in IP jurisdictional law, each of which reconfigures how Courts should approach territorial jurisdiction in trademark infringement actions.

The Single Judge treated Dhodha House v. SK Maingi as authority that mere registration in Delhi could not establish jurisdiction. The Division Bench preserved Dhodha House but confined it to its facts, that it only held that filing of a registration application does not create a cause of action.

By contrast, the Division Bench emphasized that completed registration is central to infringement as Section 28 of the Act confers exclusive rights only on the registered proprietor. And every limb of Section 29 begins with: “A registered trade mark is infringed…”.

On this basis, the Court held that registration “unquestionably constitutes not just a part, but an indispensable part of the cause of action” for infringement. The place of registration, therefore, provides a valid territorial hook. Dhodha House judgement (supra) thus survives but its reach is narrowed: filing for registration ≠ cause of action, completed registration at a place can be a ground for claiming jurisdiction of the Court.

The Single Judge had segregated contract and IP, reasoning that the Marketing Agreement was not part of the cause of action because (i) it was not mentioned in the “cause of action” paragraph of the plaint, (ii) Kohinoor reserved separate contractual remedies, and (iii) leave was taken under Order II Rule 2, CPC to sue for breach later.

The Division Bench rejected this formalism through a close reading of Section 29 of the Act. The Bench stated that infringement occurs only when the use is by someone who is not a “registered proprietor or permitted user.” Veda’s status as a permitted user, and the limits of that permission, arose solely from the Marketing Agreement. Thus, Veda’s use as infringement depends entirely on the existence of the marketing agreement, its terms and the breach of those terms.

The Court referred the judgment in ABC Laminart, which recognizes the making of a contract as part of the cause of action; by analogy, where infringement is alleged in breach of a licensing agreement, the place of execution forms part of the infringement cause of action. This perforates the traditional wall between “pure IP” and “pure contract” for jurisdictional purposes. Therefore, licensing contracts can now serve as jurisdictional anchors in infringement suits.

In Banyan Tree Holding v. A Murali Krishna Reddy (hereinafter, Banyan Tree) the Hon’ble Court had insisted that mere website accessibility is not enough and the plaintiff must plead targeted activity, intent to commercially transact with forum users, and local injury. Courts often read this as a demanding proof of actual online transactions in the forum state. The Single Judge applied this strictly, noting that (i) Veda had no website of its own, (ii) IndiaMart/ Kalgudi listings were by third‑party dealers, and (iii) no sales in Delhi were pleaded. Jurisdiction was therefore denied.

The Division Bench instead read Banyan Tree through the later Division Bench ruling in World Wrestling Entertainment v. Reshma Collection (hereinafter, WWE). In WWE the Hon’ble Court had held that an interactive website enabling online purchases amounts to “carrying on business” wherever such transactions can be concluded, treating the website as a “virtual shop” in each such place and not insisting on proof of actual completed sales.

Applying this, the Bench held that IndiaMart and Kalgudi are dynamic, transactional platforms allowing communication and order placement as the plaint expressly so pleaded. The Bench further held that, while considering an application under Order VII Rule 10, CPC – the pleadings must be taken as true and whether Veda or the dealers actually listed the goods is a matter for trial. The availability of infringing goods for online purchase by Delhi consumers is sufficient to say that the dynamic effect of infringement arises in Delhi.

Therefore, in our view, the Banyan Tree has not  been overruled but now there is a substantially relaxed jurisdiction turning on accessibility plus transactional capability, not proof of an actual sale. Therefore, third‑party listings can support jurisdiction.

In Ultra Home Construction v. Purushottam Kumar Chaubey (hereinafter, Ultra Home), drawing from Indian Performing Rights Society v. Sanjay Dalia (hereinafter, IPRS),  the Court devised a four‑scenario matrix for corporate plaintiffs under Section 134(2) of the Act. In “Scenario 3” (principal office at A, subordinate office at B, cause of action only at B), the plaintiff was held bound to sue at B, and not A. The Single Judge placed Kohinoor in this category: principal office in Delhi, subordinate offices in AP/Telangana, and therefore, all cause of action is outside Delhi.

The Division Bench undermines this in two ways:

1. Factually, it held that the substantial parts of the cause of action arose in Delhi including registration, contract execution, and e‑commerce offers are accessible in Delhi. Ultra Home’s doctrine is thus inapplicable.

2. Doctrinally, it openly questions Ultra Home’s reading of Section 134(2) of the Act. The Bench observes that Section 134 of the Act confers an additional, plaintiff‑friendly forum at the place of the plaintiff. To insist, in Scenario 3, that the plaintiff cannot sue at A and must sue at B is, in its words, to “re‑write Section 134”, which a Court cannot do.

The authority of IPRS as a Supreme Court precedent remains fully preserved. However, the most restrictive aspect of the Ultra Home decision, which is the reading of Section 134(2) of the Act as limiting, rather than expanding the range of Courts in which a plaintiff may sue, is explicitly questioned by the Division Bench and, in practical terms, substantially reduced in its force.

This judgment revisits the jurisdictional framework by giving greater weight to the place of the trademark registration, the location at which licensing or marketing agreements are executed, and the role of e‑commerce platforms in making goods available across jurisdictions.

At the same time, it expresses clear reservations about the most restrictive interpretation of Section 134(2) of the Act found in earlier High Court decisions, particularly where that interpretation appears to curtail, rather than enlarge, the plaintiff’s choice of forum.

In this way, the Division Bench adopts a purposive, text‑consistent and technologically responsive approach to territorial jurisdiction, one that is better suited to contemporary commercial realities and to the effective enforcement in trademark infringement cases.

About the authors: Zeeshan A. Khan is a Partner and Saumya Agarwal is an Associate at Luthra and Luthra Law Offices India.

Disclaimer: The opinions expressed in this article are those of the author(s). The opinions presented do not necessarily reflect the views of Bar & Bench.

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