Iconic IP Interests LLC Vs Shiv Textiles

Case Title: Iconic IP Interests LLC Vs Shiv Textiles: Date of Order: 09 May 2025:Case No.: R/Special Civil Application No. 1543 of 2025:Court: High Court of Gujarat at Ahmedabad:Coram: Hon’ble The Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Pranav Trivedi

Brief Facts:Iconic IP Interests LLC, a U.S.-based IP licensing company and subsidiary of Highlander Partners, is the proprietor of the globally recognized trademark “JOLLY RANCHER,” used for confectionery and other products. It holds valid trademark registrations in India as well. The respondent, M/s Shiv Textiles, based in India, registered the mark “JOLLY RANGER LEGWEAR” for apparel in Class 25 in 2019.

In April 2023, the petitioner discovered the respondent’s mark and sent legal notices asserting its prior rights. The respondent refused to comply, asserting that “JOLLY” is a common term and their adoption was honest. Subsequently, Shiv Textiles filed Commercial Trademark Suit No. 1 of 2023 in Bhavnagar seeking relief against alleged harassment and interference. Iconic IP challenged the maintainability of this suit and filed an application under Order VII Rule 11 CPC for rejection of the plaint, which was dismissed by the Bhavnagar District Court. Hence, the petitioner approached the Gujarat High Court under Article 227 of the Constitution.

Legal Issues:

1. Whether the plaint filed by the respondent disclosed any cause of action under Order VII Rule 11 CPC.Whether the Bhavnagar court had territorial jurisdiction based on the facts pleaded?Whether suppression of material facts by the plaintiff (respondent) justified rejection of the plaint?Whether the non-joinder of a necessary party (Hershey Company) rendered the suit legally untenable?

Reasoning of the Court:

The Gujarat High Court analyzed whether the respondent’s plaint revealed any real or legal cause of action arising within its jurisdiction. It held that the mere existence of U.S.-based online listings of the petitioner’s products on Amazon.com did not create jurisdiction in India. The goods were not shown to be marketed or sold in India, nor was there any evidence of transactions targeted at Indian consumers.

The Court distinguished the facts from those in Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, noting that in that case the defendants operated within India. In contrast, here, both the trademark and sales platform (Amazon USA) operated outside India. Without any evidence of purposeful targeting of Indian customers, no cause of action arose within Bhavnagar.

The Court also found that the respondent suppressed critical information, including prior knowledge of the petitioner’s registered trademarks in India and legal notices served upon them. This suppression of facts and non-disclosure of the petitioner’s prior rights was seen as an abuse of process.

Additionally, the Court accepted the petitioner’s argument that the suit was bad for non-joinder of Hershey Company, which had material rights under a licensing agreement and was a necessary party for complete adjudication.

Final Decision:

The High Court quashed the trial court’s order and allowed the writ petition. It held that the plaint did not disclose a valid cause of action within the jurisdiction of the Bhavnagar court and was liable to be rejected under Order VII Rule 11(a) CPC. Consequently, Commercial Trademark Suit No. 1 of 2023 was dismissed.