Introduction: This case revolves around the trademark dispute between Iconic IP Interests LLC, a U.S.-based licensor and proprietor of the "JOLLY RANCHER" brand, and Shiv Textiles, an Indian entity using the mark "JOLLY RANGER LEGWEAR." The legal contention centers around alleged infringement, prior use, jurisdiction, and the cause of action. The petitioner challenged the maintainability of the suit filed by the respondent before the Bhavnagar District Court, seeking rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure, 1908. The Gujarat High Court adjudicated the writ petition filed under Article 227 of the Constitution of India.
Detailed Factual Background: Iconic IP Interests LLC is a limited liability corporation incorporated in Delaware, USA. It operates as a licensing entity for intellectual property rights and is a subsidiary of Highlander Partners L.P., a U.S.-based private investment firm. The petitioner owns the trademark “JOLLY RANCHER” and its variations, which are widely recognized in connection with confectionery and related goods.
Initially, the rights to the “JOLLY RANCHER” mark were held by Huhtamaki Finance B.V., which licensed them to Hershey Chocolate & Confectionery Corporation. Subsequently, Huhtamaki transferred all rights to the petitioner, who continued the licensing agreement with Hershey.
In March 2023, during a routine search of the Indian Trade Marks Registry, the petitioner discovered that M/s Shiv Textiles had registered the trademark “JOLLY RANGER LEGWEAR” for jeans and pants in Class 25, claiming use since January 1, 2019. The petitioner, asserting global and Indian rights over “JOLLY RANCHER,” issued a legal notice dated April 28, 2023, demanding cessation of use.
The respondent replied on May 8, 2023, claiming that “JOLLY” is a generic term and that their adoption was honest and prior. A further notice was issued on June 9, 2023, followed by a non-responsive conciliatory attempt by the petitioner on August 17, 2023.
Detailed Procedural Background:
In response to the petitioner’s notices, Shiv Textiles filed a commercial trademark suit—Commercial Trademark Suit No. 1 of 2023—before the 2nd Additional District Judge, Bhavnagar. Meanwhile, the petitioner filed CS (COMM) 870/2023 before the Delhi High Court, seeking injunction, damages, and trademark rectification under Section 57 of the Trade Marks Act, 1999. It also filed application No. 5970539 on January 3, 2024, to register the “JOLLY RANCHER” mark in Class 25.
Contesting the maintainability of the Bhavnagar suit, the petitioner filed an application under Order VII Rule 11 CPC seeking rejection of the plaint, which was dismissed by the trial court on November 22, 2024. Challenging this order, the petitioner approached the Gujarat High Court through Special Civil Application No. 1543 of 2025.
Issues Involved in the Case: Whether the suit filed by the respondent disclosed a cause of action within the territorial jurisdiction of the Bhavnagar court? Whether the application under Order VII Rule 11 CPC was maintainable?
Detailed Submission of Parties: The petitioner argued that the respondent suppressed the prior existence and use of the “JOLLY RANCHER” trademark, despite knowledge derived from the petitioner’s notices. The plaint failed to disclose any act by the petitioner within the jurisdiction of Bhavnagar that could constitute a cause of action.
The petitioner submitted that mere application for trademark registration in India and a few listings on Amazon (USA) did not establish commercial activity or targeted marketing in India. The respondent’s suit was therefore frivolous and designed to harass. Reliance was placed on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr., 2022 SCC OnLine Bom 7183, emphasizing the rejection of suits founded on illusory causes of action and suppression of material facts.
The respondent argued that multiple legal notices from the petitioner and its continuous assertions over the “JOLLY RANCHER” mark created a recurring cause of action. The petitioner’s actions of applying for registration and sending cease and desist notices constituted acts giving rise to a dispute.
The respondent contended that under settled law, the court must only examine the plaint and accompanying documents when deciding an Order VII Rule 11 application, not the defense or other extrinsic materials.
Detailed Discussion on Judgments Cited: The petitioner relied on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr. (2022 SCC OnLine Bom 7183), where the Bombay High Court held that a plaint is liable to be rejected when it camouflages facts to create an illusionary cause of action. Suppression of known adverse facts can render the plaint unworthy of adjudication.
The High Court also referred to the landmark judgment Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780, where the Delhi High Court clarified that for jurisdiction to be assumed in internet-based trademark disputes, a real commercial transaction targeted at consumers within the jurisdiction must be demonstrated.
In the present case, the Gujarat High Court distinguished Banyan Tree by noting that the alleged acts did not constitute commercial targeting of Indian consumers, as the sales were through U.S.-registered websites using U.S.-registered marks.
Detailed Reasoning and Analysis of Judge: The Gujarat High Court held that the essential requirement for maintaining a suit is the existence of a cause of action within the territorial jurisdiction of the court. The petitioner’s use of the mark was limited to foreign jurisdictions. The mere availability of the goods on Amazon.com, a U.S.-based website, did not suffice to confer jurisdiction in India.
The Court found that there was no credible evidence that the petitioner had engaged in commercial activity within India. The burden was on the respondent to show targeted transactions or harm within the jurisdiction, which it failed to do.
The Court also observed that the respondent suppressed facts regarding the petitioner’s trademark registrations and legal notices, amounting to material suppression. Further, Hershey was a necessary party, and its non-joinder affected the maintainability of the suit.Therefore, the Court concluded that the plaint did not disclose any cause of action under Order VII Rule 11(a) CPC and was liable to be rejected.
Final Decision: The Gujarat High Court allowed the writ petition and set aside the impugned order dated November 22, 2024, passed by the 2nd Additional District Judge, Bhavnagar. It rejected the plaint in Commercial Trademark Suit No. 1 of 2023 under Order VII Rule 11(a) of the Code of Civil Procedure.
Law Settled in This Case: A foreign trademark proprietor does not confer jurisdiction on Indian courts merely by sending notices or having online listings on international websites unless there is evidence of targeted commercial activity in India. Suppression of material facts and absence of necessary parties are valid grounds for rejection of plaints under Order VII Rule 11. The decision affirms the principle that suits must disclose a clear and real cause of action within the forum's jurisdiction to survive legal scrutiny.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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