Mallcom (India) Limited Vs Rakesh Kumar.

Court can pass summary Judgement under Order 13 A of commercial court act even suo moto

Introduction: The case of Mallcom (India) Limited & Anr. v. Rakesh Kumar & Ors. [CS(COMM) 480/2016], decided by the Delhi High Court on March 19, 2019, before Justice Rajiv Sahai Endlaw, is a landmark decision in Indian intellectual property law, demonstrating the efficacy of summary judgment in commercial disputes involving trademark infringement, passing off, and copyright infringement. The plaintiffs, Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., sought to restrain the defendants from using a deceptively similar trademark, "TICER," for safety shoes, which infringed their registered "TIGER" mark. The court’s grant of summary judgment without a formal application under Order XIIIA of the Code of Civil Procedure (CPC) underscores the judiciary’s commitment to expeditious resolution of commercial suits under the Commercial Courts Act, 2015. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the legal principles established, offering insights into trademark protection and procedural innovations in commercial litigation.

Detailed Factual Background: Mallcom (India) Limited and Mallcom Safety Pvt. Ltd., market leaders in safety equipment, particularly industrial safety shoes, adopted the stylized trademark "TIGER" (Label) around 2004-05, using it intermittently and adopting it as their primary brand in 2010. The mark, registered on September 30, 2010, in Class 9 (No. 2030791) for safety shoes and equipment, features a distinctive stylization of the word "TIGER," with unique letter designs (e.g., "T" as a cursive-reverse J, "G" as a C with a bar). The plaintiffs secured copyright registration for the mark’s artistic work on October 28, 2012, and design registration for the shoe sole on May 23, 2007. Their safety shoes, sold under the "TIGER" mark, achieved BIS and ISO certifications and an India Design Mark Award. Sales grew from Rs. 11.6 crores in 2009-10 to Rs. 31 crores in 2013-14, with significant advertising expenditure. The plaintiffs’ products were exported globally, packaged in a distinctive get-up with unique color combinations, and they held pending applications for related marks in Classes 8, 9, and 25.

The defendants, Rakesh Kumar, Manoj Kumar, M.K. Sales Corporation, Adeeba International, and Alina Exim, were accused of manufacturing and selling inferior safety shoes under the mark "TICER," adopted in 2015. Defendant no. 4 (Adeeba International) claimed proprietorship of "TICER," applying for its registration on June 13, 2015, in Class 9. The defendants’ products mimicked the plaintiffs’ packaging, sole design, and mark placement, allegedly posing as authorized dealers and violating Legal Metrology (Packaging Commodities) Rules, 2011, by omitting manufacturing details. The plaintiffs provided comparative images showing near-identical trade dress and marks, alleging counterfeiting and consumer deception.

Detailed Procedural Background:The plaintiffs filed the suit [CS(COMM) 480/2016] on April 29, 2016, seeking permanent injunctions against trademark infringement, passing off, copyright infringement, and design infringement, along with delivery of infringing goods, rendition of accounts, and damages. They filed IA No. 5571/2016 for interim relief under Order XXXIX Rules 1 and 2 CPC. On May 5, 2016, the court issued summons, granted an ex parte ad-interim injunction restraining the defendants from using the "TICER" mark, and appointed commissions to seize infringing goods. Defendants no. 4 and 5 filed IA No. 12236/2017 under Order XXXIX Rule 4 CPC to vacate the interim order and IA No. 11941/2017 to amend their written statement, which was dismissed on October 5, 2018. Separate written statements were filed by defendants no. 1-3 and no. 4-5, with the plaintiffs filing replications. Defendants no. 4 and 5 also filed IA No. 12890/2018 under Order XI Rule 10 CPC and IA No. 12370/2018 under Section 151 CPC, though their specifics were not detailed.

On January 17, 2019, the plaintiffs sought summary judgment without a formal application, relying on Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, effective November 1, 2018. The court queried the procedural validity, noting Order XIIIA CPC’s requirement for an application, and adjourned the hearing to February 14, 2019. The interim injunction was made absolute on January 17, 2019. Defendants claimed a pending Special Leave Petition (SLP) against the amendment dismissal, but its outcome remained unreported. After hearing arguments on summary judgment and merits, the court reserved orders on February 14, 2019, delivering the judgment on March 19, 2019.

Issues Involved in the Case:The case raised the following issues:Whether the court could grant summary judgment without a formal application under Order XIIIA CPC, given Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018?Whether the defendants’ use of the "TICER" mark infringed the plaintiffs’ registered "TIGER" trademark and copyrighted artistic work.

Plaintiff's submission:The plaintiffs argued that their "TIGER" mark, registered in 2010, was distinctive and widely recognized, supported by sales (Rs. 11.6-31 crores), certifications, and awards. They contended that the defendants’ "TICER" mark, adopted in 2015, was deceptively similar, differing only by substituting “G” with “C,” and mimicked the stylized font, packaging, and sole design, causing confusion. The plaintiffs provided invoices from 2006, web pages, catalogues, and certifications to prove use since 2004-05. They argued that their prior registration and use entitled them to injunctions for infringement (Section 29, Trade Marks Act, 1999), passing off, and copyright infringement, citing Sun Pharmaceuticals v. Cipla [2009 (39) PTC 347 (DB)] for non-use as no defense. On summary judgment, they relied on Chapter XA Rule 1, harmonized with Order XIIIA, per Infrastructure Leasing v. Commissioner of Value Added Tax [MANU/DE/0902/2010], asserting no triable issues existed due to the defendants’ weak defense. They sought delivery of seized goods but did not press for design infringement or damages, focusing on injunctions and costs.

Defendant's submission: The defendants argued that the court lacked authority to grant summary judgment without an Order XIIIA application, citing Section 13(2) of the Commercial Courts Act for statutory precedence. They claimed “TICER” was distinct, honestly adopted by defendant no. 4 in 2015, with a pending registration application and copyright. Defendants no. 1-3, as employees or distributors of defendant no. 3 (proprietorship of Ms. Niti Devi), relied on defendants no. 4-5’s written statement. They denied the plaintiffs’ use of “TIGER” since 2004, alleging non-use and challenging invoices as unverified, citing no exclusive sales for “TIGER.” The defendants disputed the comparison images as misleading and denied posing as plaintiffs’ dealers. They argued that the plaintiffs’ assignment of a related mark (No. 1488116) to Delta Plus undermined their rights, though this was barred post-amendment dismissal. The defendants offered no substantive defense on similarity, focusing on procedural objections and general denials.

Detailed Discussion on Judgments and Citations: The court relied on several precedents to resolve procedural and substantive issues. Below is a detailed discussion of each judgment, its citation, and context:

Infrastructure Leasing & Financial Services Ltd. v. Commissioner of Value Added Tax, MANU/DE/0902/2010: Cited by the plaintiffs, this Delhi High Court decision supported harmonious construction of conflicting provisions. The court used it to reconcile Chapter XA Rule 1 with Order XIIIA, holding that the former supplemented the latter, allowing summary judgment without an application at the case management stage.

K.R. Impex v. Punj Lloyd Ltd., 2019 SCC OnLine Del 6667:Cited by the court, this Delhi High Court decision (post-dating the hearing) confirmed that Chapter XA Rule 1 permitted summary judgment without an Order XIIIA application, reinforcing the court’s procedural ruling.

Ashoka Estate Pvt. Ltd. v. Dewan Chand Builders Pvt. Ltd., 2009 (113) DRJ 193: Cited by the court, this Delhi High Court decision discussed Order XV CPC’s applicability for disposing suits without issues, supporting the court’s view that commercial suits could be resolved summarily under existing CPC provisions.

Kawal Sachdeva v. Madhu Bala Rana, 2013 SCC OnLine Del 1479: Cited by the court, this Delhi High Court decision reiterated Order XV’s scope, reinforcing the court’s authority to dispose of suits summarily when no material issues arise.

Bhupinder Jit Singh v. Sonu Kumar, 2017 SCC OnLine Del 11061: Cited by the court, this Delhi High Court decision supported summary disposal under Order XV, aligning with the court’s approach to expedite commercial suits.

Vireet Investments Pvt. Ltd. v. Vikramjit Singh Puri, 2017 SCC OnLine Del 11183: Cited by the court, this Delhi High Court decision further endorsed Order XV’s applicability, bolstering the court’s procedural framework for summary judgment.

Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, (2018) 249 DLT 220: Cited by the court, this Delhi High Court decision reinforced summary disposal principles, supporting the court’s reliance on Order XV and Chapter XA.

Bhavna Khanna v. Subir Tara Singh, 2019 SCC OnLine Del 6978: Cited by the court, this Delhi High Court decision aligned with the court’s view on summary disposal, emphasizing expeditious resolution in commercial suits.

Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., 2009 (39) PTC 347 (DB): Cited by the court, this Delhi High Court Division Bench decision held that non-use is not a defense to infringement unless the mark is removed via a Registrar application. The court applied it to reject the defendants’ non-use plea, as no removal application was filed.

H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd., (2018) 251 DLT 651: Cited by the court, this Delhi High Court decision reaffirmed that non-use does not bar infringement actions and supported the plaintiffs’ right to injunctions despite the defendants’ honest adoption claim, relevant to both infringement and passing off.

N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714:Cited by the court, this Supreme Court decision held that advertising constitutes use of a mark. The court used it to validate the plaintiffs’ evidence of use through web pages, catalogues, and advertisements.

Revlon Inc. v. Sarita Manufacturing Co., AIR 1998 Del 38: Cited by the court, this Delhi High Court decision reinforced that advertisements qualify as mark use, supporting the plaintiffs’ claim of continuous use.

N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300: Cited by the court, this Delhi High Court decision (predecessor to the Supreme Court ruling) similarly recognized advertising as use, bolstering the plaintiffs’ evidence.

Indian Shaving Products Ltd. v. Gift Pack, 1998 (18) PTC 698 (Del): Cited by the court, this Delhi High Court decision supported the principle that advertisements constitute use, affirming the plaintiffs’ documented use.

J.N. Nichols (Vimto) Ltd. v. Rose & Thistle, AIR 1994 Cal 43 (DB): Cited by the court, this Calcutta High Court Division Bench decision aligned with the advertising-as-use principle, reinforcing the plaintiffs’ claim.

Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, (2002) 98 DLT 499: Cited by the court, this Delhi High Court decision held that competitors in the same trade are presumed aware of prior marks, negating honest adoption. The court applied it to find the defendants’ adoption mala fide.

Dr. Reddy’s Laboratories Ltd. v. Reddy Pharmaceuticals Ltd., (2004) 113 DLT 363: Cited by the court, this Delhi High Court decision (affirmed in Reddy Pharmaceuticals v. Dr. Reddy’s Laboratories, 2007 (99) DRJ 331 (DB), SLP dismissed) supported the presumption of awareness, reinforcing the defendants’ bad faith.

Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court, this Supreme Court decision held that courts determine similarity in infringement and passing off cases, not witnesses, guiding the court’s visual comparison of “TIGER” and “TICER.”

Larsen & Toubro Ltd. v. Lachmi Narain Traders, (2008) 149 DLT 46 (DB): Cited by the court, this Delhi High Court Division Bench decision followed Mahendra & Mahendra, supporting the court’s authority to assess similarity without trial.

Staar Surgical Company v. Polymer Technologies International, 2016 SCC OnLine Del 4813: Cited by the court, this Delhi High Court decision reinforced judicial assessment of similarity, aligning with the court’s approach to deceptive similarity.

Kanungo Media (P) Ltd. v. RGV Film Factory, 2017 SCC OnLine Del 8768: Cited by the court, this Delhi High Court decision supported the court’s role in determining similarity, relevant to the “TIGER” vs. “TICER” comparison.

Jaideep Mohan v. Hub International Industries, (2018) 249 DLT 572: Cited by the court, this Delhi High Court decision endorsed judicial determination of similarity, supporting the court’s findings on deceptive similarity.

The Financial Times Ltd. v. The Times Publishing House Ltd., (2016) 234 DLT 305: Cited by the court, this Delhi High Court decision reinforced the court’s authority to assess similarity, applied to the visual and stylistic identity of the marks.

Biofarma v. Bal Pharma Ltd., CS(COMM) No. 1668/2016 (Decided on November 22, 2018):Cited by the court, this Delhi High Court decision supported judicial assessment of similarity, guiding the court’s conclusion on consumer confusion.

Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd., 2014 SCC OnLine Del 3412: Cited by the court, this Delhi High Court decision noted the human tendency to identify words by first and last letters, applied to find “TICER” deceptively similar to “TIGER.”

Pratibha M. Singh v. Singh & Associates, 2014 SCC OnLine Del 1982:Cited by the court, this Delhi High Court decision supported the letter-identification principle, reinforcing the likelihood of consumer confusion.

The Gillette Company LLC v. Tigaksha Metallics Pvt. Ltd., (2018) 251 DLT 530:Cited by the court, this Delhi High Court decision aligned with the letter-identification principle, supporting the court’s similarity findings.

Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65: Cited by the court, this Supreme Court decision held that honest adoption does not bar injunctions if marks are similar, guiding the court’s grant of injunctive relief.

The Timken Company v. Timken Services Pvt. Ltd., (2013) 200 DLT 453:Cited by the court, this Delhi High Court decision supported injunctions despite honest adoption, applied to prioritize consumer protection.

Jolen Inc. v. Doctor & Company, 2002 SCC OnLine Del 518: Cited by the court, this Delhi High Court decision reinforced that similarity overrides honest adoption for injunctions, supporting the plaintiffs’ relief.

Detailed Reasoning and Analysis of Judge: Court addressed both procedural and substantive issues with precision. On the procedural question, the court held that Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, empowered it to grant summary judgment sua sponte during case management, harmonizing it with Order XIIIA’s application requirement (Infrastructure Leasing, K.R. Impex). The court noted that Section 13(2) of the Commercial Courts Act applied to appeals, not procedure, and that Section 122 CPC allowed High Courts to amend CPC rules, including Order XIIIA. The court also invoked Order XV Rule 1 CPC, which permits judgment when no issues arise (Ashoka Estate), reinforcing its authority to dispose of the suit summarily.Substantively, the court applied Order XIIIA’s test: whether the defendants had a real prospect of defending the claim and if compelling reasons existed for trial. The court found no triable issues, reasoning as follows:

Prior Registration and Use: The plaintiffs’ 2010 registration (No. 2030791) predated the defendants’ 2015 application, establishing seniority (Sun Pharmaceuticals). The defendants’ unchallenged denial of invoices from 2006 lacked substance, as tax-paid invoices, web pages, catalogues, BIS/ISO certifications, and awards evidenced use since 2004 (N.R. Dongre). The defendants’ failure to seek removal of the plaintiffs’ mark for non-use negated their defense (H&M Hennes).

Deceptive Similarity: The court visually compared “TIGER” and “TICER,” finding them deceptively similar due to identical stylization and the substitution of “G” with “C,” unlikely to be noticed by unwary consumers (Mahendra & Mahendra, Allied Blenders). The Registrar’s description of “TIGER” as “CIGER” and the defendants’ identical mark placement reinforced confusion (Larsen & Toubro).

Bad Faith: The defendants, in the same trade, were presumed aware of the plaintiffs’ mark, and their 2015 adoption without challenging the plaintiffs’ registration indicated mala fide intent (Info Edge, Dr. Reddy’s). The invented word “TICER” lacked explanation, unlike the English word “TIGER” (Laxmikant Patel).

Passing Off and Copyright: The defendants’ mimicry of packaging and mark placement constituted passing off, as the plaintiffs’ trade dress was distinctive (H&M Hennes). The copyrighted stylization was infringed by identical letter designs (Jolen Inc.).

No Triable Issues: The defendants’ general denials and failure to explain honest adoption did not warrant trial, as similarity alone justified injunctions (Timken Company). The amendment plea regarding assignment was irrelevant, as it concerned a different mark (Insecticides India).

The court declined relief for design infringement, as not pressed, and for damages, due to lack of trial evidence, but awarded costs considering the defendants’ 2015-2016 use. The balance of convenience favored the plaintiffs, as consumer confusion risked irreparable harm, outweighing the defendants’ investment in infringing goods.

Final Decision: On March 19, 2019, the Delhi High Court passed a decree in favor of the plaintiffs, granting: (i) permanent injunctions restraining the defendants from infringing the “TIGER” trademark, copyrighted work, and passing off [prayer paragraphs 35(b), (c), (e)]; (ii) delivery of seized infringing goods to the plaintiffs within one month; and (iii) costs of Rs. 6 lakhs. The court granted liberty to sue separately for design infringement and disposed of the suit via summary judgment, with the decree sheet to be drawn up.

Law Settled in the Case: The case established the following legal principles:Summary Judgment Without Application: Chapter XA Rule 1 of the Delhi High Court (Original Side) Rules, 2018, allows courts to grant summary judgment sua sponte during case management, supplementing Order XIIIA CPC, enhancing expeditious disposal of commercial suits.Trademark Infringement: Prior registration and use confer rights to restrain junior users, and non-use is no defense unless challenged via a Registrar application (Section 29, Trade Marks Act, 1999).Deceptive Similarity: Courts determine similarity based on consumer perception, focusing on visual and stylistic identity, where minor letter changes (e.g., “G” to “C”) do not avert confusion.Passing Off: Mimicry of trade dress and mark placement by a junior user constitutes passing off when the senior mark is distinctive and widely recognized.Copyright in Stylized Marks: Artistic stylization of a trademark is protectable under the Copyright Act, 1957, and identical replication infringes such rights.Bad Faith Adoption: Competitors are presumed aware of prior marks in the same trade, and unexplained adoption of similar marks indicates mala fide intent, negating honest adoption defenses.Relief Scope: Honest adoption does not bar injunctive relief if marks are similar, though it may influence damages; costs can account for limited infringing use without trial.

Mallcom (India) Limited Vs Rakesh Kumar:March 19, 2019: CS(COMM) 480/2016:: High Court of Delhi:Hon'ble Judge Shri Rajiv Sahai Endlaw, J.

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

Marico Limited Vs. Mukesh Kumar

Introduction: The case of Marico Limited v. Pr. Mukesh Kumar & Ors. [CS(COMM) 1569/2016], decided by the Delhi High Court on August 27, 2018, before Justice Manmohan, is a pivotal ruling in Indian trademark and intellectual property law, addressing trademark infringement, passing off, and copyright issues related to trade dress and packaging. The plaintiff, Marico Limited, sought an interim injunction to restrain the defendants from using trade dress and labels for their EVEREST COCONUT OIL and EVEREST JASMINE HAIR OIL, which were allegedly deceptively similar to Marico’s PARACHUTE and PARACHUTE ADVANSED JASMINE products. The court’s decision to grant the injunction highlights the judiciary’s role in protecting distinctive trade dress and preventing consumer confusion caused by deliberate imitation. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into the legal principles governing trade dress protection and the balance between fair competition and intellectual property rights.

Detailed Factual Background: Marico Limited, a prominent company engaged in manufacturing and selling edible oils, hair oils, and personal care products, adopted the trademark PARACHUTE in 1948 and its blue label in 1974, registering the word mark on January 3, 1983, under Classes 3 and 29 (Registration Nos. 399592, 399593). In 1996-97, Marico introduced the PARACHUTE flag device, registered on March 20, 1997 (Nos. 737894, 737893), followed by the broken coconut device in 2004, registered on November 6, 2012 (Nos. 2423238, 2423236). Marico also registered the PARACHUTE ADVANSED JASMINE label in 2000 (Nos. 906080, 947770) and related devices in 2005 and 2011 (Nos. 1398440, 2195475, 2195474). Additionally, Marico secured copyright registration for the PARACHUTE label on August 19, 2003 (No. A-64997/2003). These registrations were valid and subsisting, with Marico’s annual reports indicating a market share of 50% in 1992-93, 53% in 1999-2000, and 57% in 2003-04, establishing PARACHUTE as a market leader.

The defendants, operating under the EVEREST brand, claimed to have used the SHRI LAXMI BRAND label since 1999, featuring blue bottles, a green-bordered flag, and a coconut tree, and applied for its registration on June 20, 2001 (No. 1018670), claiming use since January 1, 1999. This application was later withdrawn. In 2006, the defendants adopted the EVEREST trademark, applying for registration on July 28, 2006 (No. 1474390), and secured copyright registration for the EVEREST COCONUT OIL label on June 1, 2009 (No. A-85790/2009). They also applied for the EVEREST EVERSTAR JASMINE Hair Oil label on September 16, 2013 (No. 2596694), which was abandoned in 2016. The defendants’ website, www.everestcoconutoil.com, created on February 8, 2016, promoted their products.

Marico issued a cease-and-desist notice to the defendants on January 21, 2002, regarding the SHRI LAXMI label, which the defendants rejected on February 5, 2002. The defendants then filed a suit in Hyderabad (Suit No. 221 of 2002) for an injunction against Marico, which was dismissed in default. In 2013, Marico initiated unsuccessful criminal action against the EVEREST label due to the defendants’ copyright registration. On June 17, 2016, Marico sent another cease-and-desist notice, followed by a request for sales details on November 11, 2016, both of which the defendants rebuffed. Marico alleged that the defendants’ EVEREST products mimicked the PARACHUTE trade dress, including bottle shape, blue color (Pantone 285C), flag device, coconut tree, and broken coconut, causing consumer confusion and passing off.

Detailed Procedural Background:Marico filed the suit [CS(COMM) 1569/2016] in the Delhi High Court on November 26, 2016, seeking a permanent injunction, rendition of accounts, and other reliefs for trademark infringement, passing off, and copyright infringement. Alongside, Marico filed I.A. No. 14758/2016 for an interim injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). With the parties’ consent, the court heard and disposed of the interim application, reserving judgment on July 23, 2018. Marico submitted evidence including trademark and copyright registrations, annual reports, and comparative charts, while the defendants filed affidavits and website printouts. On August 27, 2018, Justice Manmohan delivered the judgment, granting the interim injunction and listing the suit for further proceedings. The court also noted a pending copyright cancellation proceeding initiated by Marico on October 26, 2016, before the Copyright Board.

Issues Involved in the Case: The case raised the following issues for determination:Whether the defendants’ use of the EVEREST COCONUT OIL and EVEREST JASMINE HAIR OIL trade dress and labels infringed Marico’s registered PARACHUTE trademarks and copyrights?Whether the defendants’ trade dress constituted passing off by causing confusion or misrepresenting a connection with Marico’s PARACHUTE products? Whether the Delhi High Court had territorial jurisdiction to entertain the suit, given the defendants’ operations in Telangana and alleged sales in Delhi?Whether Marico’s suit was barred by delay, laches, or acquiescence due to its awareness of the defendants’ SHRI LAXMI label since 2001?Whether the defendants were honest concurrent users of their trade dress, and whether Marico could claim exclusivity over the blue color or common trade elements?Whether the defendants’ offer to modify their trade dress mitigated the allegations of infringement and passing off?

Plaintiff's submission: The defendants deliberately copied the PARACHUTE trade dress, including bottle shape, blue color (Pantone 285C), flag device, coconut tree, broken coconut, and descriptive text, to confuse consumers. Marico provided a comparative chart highlighting identical features, such as bottle sizes, cap indentations, and nozzle design, asserting that the defendants replicated changes to PARACHUTE’s trade dress over time. Marico claimed its registrations (e.g., Nos. 399592, 737894, 2423238) and market leadership (50-57% share) established distinctiveness, supported by annual reports and consumer recognition. The plaintiff alleged infringement under Section 29 of the Trade Marks Act, 1999, as the defendants used identical elements of registered marks, and passing off due to consumer deception, citing Colgate Palmolive v. Anchor Health [2003 SCC OnLine Del 1005] for color as a trademark. Marico refuted acquiescence, noting its objections in 2002, 2013, and 2016, and argued that delay did not bar injunctions in trademark cases, per Midas Hygiene v. Sudhir Bhatia [2004 (28) PTC 121 (SC)]. On jurisdiction, Marico relied on sales through Big Bazar in Delhi and the defendants’ online presence, supported by Banyan Tree v. Murali Krishna Reddy [2010 (42) PTC 361 (Del)].

Defendants' Submission: The defendants challenged the court’s territorial jurisdiction, arguing that both parties operated in Telangana, with no evidence of EVEREST products sold in Delhi. They disputed Marico’s claim of sales through Big Bazar and denied authorizing the IndiaMart website, asserting no cause of action arose in Delhi under Section 20(c) of the CPC. The defendants claimed honest concurrent use of the SHRI LAXMI label since 1999 and EVEREST since 2006, arguing that Marico’s delay since 2001 constituted acquiescence, per Hindustan Pencils v. India Stationery [1989 SCC OnLine Del 34]. They contended that Marico’s registrations were for entire labels, not individual elements, citing Godfrey Phillips v. P.T.I [2018 SCC OnLine Del 8278] and Section 17 of the Trade Marks Act, 1999. The defendants argued that blue color was common to the trade, supported by Marico v. Sarfraj Trading [2002 (25) PTC 348 (Bom)] and Britannia v. ITC [240 (2017) DLT 156], and that Marico failed to act against other infringers. They offered to modify their trade dress to settle the dispute, claiming good faith.

Detailed Discussion on Judgments and Citations: The court analyzed several precedents to determine infringement, passing off, jurisdiction, and acquiescence. Below is a detailed discussion of each judgment, its citation, and its context: Baker v. Master Printers Union of New Jersey, 47 USPQ 69 (D.N.J. 1940)  Cited in the court’s introduction, this U.S. case highlighted the strategy of copying with enough similarity to confuse consumers but enough differences to evade legal scrutiny. The court used it to frame the defendants’ imitation of PARACHUTE’s trade dress as deliberate.

National Bell v. Metal Goods, AIR 1971 SC 898: Cited by the court, this Supreme Court decision held that a trademark proprietor need not sue insignificant infringers who do not harm distinctiveness. The court applied it to dismiss the defendants’ argument that Marico’s inaction against other blue bottle users undermined its claim.

Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., 1989 (7) PTC 14:Cited by the court, this Calcutta High Court ruling clarified that common use requires substantial evidence of third-party trade. The court used it to reject the defendants’ claim of blue color being common, as no third-party sales figures were provided.

Dr. Reddy Laboratories v. Reddy Pharmaceuticals, 2004 (29) PTC 435 (Del): Cited by the court, this Delhi High Court decision held that trademark owners need not pursue trivial infringers unless they harm business interests. The court applied it to support Marico’s selective enforcement against significant threats like the defendants.

Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005:Cited by the plaintiff, this Delhi High Court ruling recognized that color in trade dress can be a protectable trademark in passing off actions. The court used it to affirm that Marico’s blue color, combined with other elements, was distinctive and protectable.

Annamalayar Agencies v. VVS & Sons Pvt. Ltd., 2008 (38) PTC 37 (Mad): Cited by the court, this Madras High Court decision held that a blue bottle was a source identifier for PARACHUTE, and disparaging it was actionable. The court relied on it to establish the blue bottle’s distinctiveness for Marico.

Marico Industries Ltd. v. Sarfraj Trading Co., 2002 (25) PTC 348 (Bom): Cited by the defendants, this Bombay High Court ruling held that no monopoly exists over blue bottles or coconut trees. The court distinguished it, noting Marico claimed a combination of elements, not standalone features.

Britannia Industries Ltd. v. ITC Limited, 240 (2017) DLT 156: Cited by the defendants, this Delhi High Court Division Bench decision required proof of distinctiveness for color combinations. The court found it inapplicable, as Marico’s trade dress was distinctive due to market share and long use.

Godfrey Phillips India Limited v. P.T.I Private Limited, 2018 SCC OnLine Del 8278:Cited by the defendants, this Delhi High Court ruling limited infringement claims to entire registered labels under Section 17. The court distinguished it, as Marico’s individual elements were independently registered.

Hindustan Pencils Pvt. Ltd. v. India Stationery Product Co., 1989 SCC OnLine Del 34: Cited by the defendants, this Delhi High Court decision defined acquiescence as active encouragement, not mere inaction. The court applied it to reject the defendants’ acquiescence defense, as Marico consistently objected.

Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 2004 (28) PTC 121 (SC): Cited by the plaintiff, this Supreme Court decision held that delay does not bar injunctions in trademark and copyright cases. The court used it to dismiss the defendants’ laches defense, given the public interest in preventing deception.

Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2010 (42) PTC 361 (Del): Cited by the plaintiff, this Delhi High Court decision established jurisdiction for online sales through interactive websites. The court applied its “purposeful availment” and “effects” tests to confirm jurisdiction based on the defendants’ online presence.

Saleem Bhai v. State of Maharashtra, AIR 2003 SC 759: Cited by the court, this Supreme Court decision held that plaint averments are presumed true at the interim stage. The court used it to accept Marico’s claim of Big Bazar sales in Delhi.

Kamala v. K.T. Eshwara SA, (2008) 12 SCC 661: Cited by the court, this Supreme Court decision reinforced that plaint averments are credible at the preliminary stage. The court applied it to support Marico’s jurisdictional claims.

State of Maharashtra v. Ramdas Shrinivas Nayak, (1982) 2 SCC 463: Cited by the court, this Supreme Court decision affirmed that court records are conclusive. The court used it to uphold the defendants’ admission of prior Delhi sales on November 29, 2016.

Apar (P) Ltd. v. Union of India, 1992 Suppl. (1) SCC 1: Cited by the court, this Supreme Court decision reiterated the sanctity of court records. The court applied it to reject the defendants’ attempt to retract their admission.

R.R. Oomerbhoy Private Limited v. Court Receiver, High Court, Bombay, 2003 (27) PTC 580 (Bom): Cited by the court, this Bombay High Court decision quoted Wright, Layman & Umney v. Wright [1949 (46) RPC 149], cautioning against minor modifications to evade injunctions. The court used it to dismiss the defendants’ offer to tweak their trade dress.

B.K. Engineering Co. v. UBHI Enterprises (Regd.), AIR 1985 Delhi 210: Cited by the court, this Delhi High Court Division Bench decision emphasized that trading must be honest and not unintentionally unfair. The court applied it to find the defendants’ actions deceptive and unfair.

Detailed Reasoning and Analysis of Judge: The court conducted a visual comparison of the PARACHUTE and EVEREST products, noting identical features like bottle shape, blue color (Pantone 285C), flag device, coconut tree, broken coconut, and white text. The court found the resemblance so close that it suggested deliberate imitation, likely to confuse consumers, establishing a prima facie case of passing off (B.K. Engineering). Marico’s market leadership (50-57% share) and annual reports demonstrated reputation, deception, and potential damage, satisfying passing off elements (Colgate Palmolive). The court rejected the defendants’ honest concurrent use claim, finding bad faith due to their replication of PARACHUTE’s changes over time, supported by Annamalayar Agencies.

On infringement, the court held that the defendants copied independently registered elements (e.g., flag device, broken coconut), satisfying Section 17 of the Trade Marks Act, 1999, and distinguishing Godfrey Phillips. The court clarified that Marico claimed a combination of elements, not just blue color, which was distinctive due to long use and turnover (National Bell, Express Bottlers). The defendants’ failure to provide third-party sales figures undermined their “common to trade” argument. The court dismissed the acquiescence defense, as Marico’s objections in 2002, 2013, and 2016 showed no encouragement (Hindustan Pencils), and delay did not bar injunctions in trademark cases (Midas Hygiene). The defendants’ offer to modify their trade dress was rejected as an attempt to “sail near the wind” (R.R. Oomerbhoy), especially since they retained key elements.

On jurisdiction, the court accepted Marico’s averments of Big Bazar sales and online presence via IndiaMart, applying Banyan Tree’s tests and Saleem Bhai. The defendants’ 2008 affidavit and prior admission of Delhi sales, upheld as court records (State of Maharashtra), confirmed jurisdiction. The court noted the defendants’ undefended EVEREST JASMINE label, reinforcing their deceptive intent. The balance of convenience favored Marico, as consumer confusion risked irreparable harm, outweighing the defendants’ investment in infringing products.

Final Decision: On August 27, 2018, the Delhi High Court granted the interim injunction in I.A. No. 14758/2016, restraining the defendants, their agents, and affiliates from manufacturing, selling, or promoting EVEREST COCONUT OIL, EVEREST JASMINE HAIR OIL, or any deceptively similar products infringing Marico’s PARACHUTE trademarks, trade dress, or copyrights. The application was disposed of, and the suit was listed for further proceedings on October 10, 2018.

Law Settled in the Case: The case clarified several principles in trademark and intellectual property law: Trade Dress Protection: A combination of elements, including color, bottle shape, and devices, can be distinctive and protectable as a source identifier if associated with the plaintiff through long use and market leadership. Passing Off: Close resemblance in trade dress causing consumer confusion establishes passing off, even if individual elements are common, when the plaintiff proves reputation, deception, and damage. Infringement of Registered Marks: Copying independently registered elements of a trademark, not just the entire label, constitutes infringement under Section 17 of the Trade Marks Act, 1999. Acquiescence and Delay: Acquiescence requires active encouragement, not mere inaction, and delay does not bar injunctions in trademark or copyright cases when public deception is likely.Jurisdiction for Online Sales: Online sales through interactive websites or retail outlets in a court’s jurisdiction satisfy the “purposeful availment” and “effects” tests, conferring territorial jurisdiction.Bad Faith Imitation: Deliberate copying of a market leader’s trade dress changes over time indicates bad faith, negating claims of honest concurrent use.Selective Enforcement: A trademark proprietor need not sue insignificant infringers unless they threaten distinctiveness, preserving business resources.

Marico Limited Vs. Pr. Mukesh Kumar & Ors.: August 27, 2018:CS(COMM) 1569/2016:High Court of Delhi:Hon'ble Judge Shri Manmohan, J.

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

M. Rangaiah Naidu Vs Abdul Kareem Khan

Impact of Subsequent Events on Pendency of Appeal

Introduction: The case of M. Rangaiah Naidu (Died) By L.Rs. v. Abdul Kareem Khan And Ors. [1992 (1) ALT 336], decided by the Andhra Pradesh High Court on November 3, 1989, before Justice Radha Krishna Rao, is a significant ruling in the domain of rent control law, addressing the interplay between eviction proceedings for wilful default and subsequent events affecting the landlord’s title. The case arose from a revision petition challenging the eviction of a tenant from a non-residential premises owned by a usufructuary mortgagee, ordered due to non-payment of rent. The tenants argued that a subsequent decree for redemption of the mortgage extinguished the landlord’s right to pursue eviction. The court’s dismissal of the revision petition clarifies the principles governing wilful default, the consideration of subsequent events in rent control cases, and the legal obligations of mortgagees upon redemption.

Detailed Factual Background: The premises in question was a non-residential building located on Park Street, Pakala, originally owned by Syed Ahmed Saheb. On October 2, 1952, Syed Ahmed Saheb executed a usufructuary mortgage in favor of the respondents (landlords), as evidenced by Exhibit A-1. The landlords claimed they leased the premises to M. Rangaiah Naidu in April 1965 on a monthly rent of Rs. 25, payable on the first of each succeeding month. The tenant, M. Rangaiah Naidu, contended that despite the mortgage, Syed Ahmed Saheb and his family remained in possession until April 1965, when the premises was leased to him by Subhan Khan, a relative of Syed Ahmed Saheb, at Rs. 24 per month. The tenant claimed to have paid rent to Subhan Khan until March 1972.

The landlords filed an eviction petition before the Rent Controller, alleging wilful default in rent payment from June 1973 to June 1979. They relied on Exhibit A-5, a judgment in O.S. No. 527 of 1976, which confirmed a landlord-tenant relationship and decreed arrears of rent, and E.P. 126/79, an execution proceeding for rent up to May 30, 1979. The Rent Controller accepted the landlords’ plea, rejecting the tenant’s claim that Subhan Khan was the lessor, and ordered eviction. M. Rangaiah Naidu died during the appellate stage, and his legal representatives (L.Rs.) were impleaded as revision petitioners. Before the Appellate Authority, the tenants raised subsequent events: the heirs of Syed Ahmed Saheb filed O.S. No. 578 of 1982 for redemption of the mortgage against the landlords and the tenant, which was decreed on September 12, 1986. The tenants, as defendants 5 to 7 in that suit, filed an appeal (A.S. No. 20 of 1987) and obtained a stay of the redemption decree, conditional on depositing rent. Neither the mortgagor nor the mortgagee appealed the redemption decree.

Detailed Procedural Background: The landlords initiated eviction proceedings before the Rent Controller under the Andhra Pradesh Buildings (Lease and Rent Control) Act, 1960, citing wilful default. The Rent Controller, after examining evidence including Exhibit A-5 and E.P. 126/79, found a landlord-tenant relationship between the mortgagees and the tenant, confirmed the default from June 1973 to June 1979, and ordered eviction. The tenant appealed to the Appellate Authority, where M. Rangaiah Naidu’s death led to his L.Rs. being impleaded. The tenants introduced the redemption decree from O.S. No. 578 of 1982 at the appellate stage, arguing it extinguished the landlords’ title. The Appellate Authority held that the subsequent events did not alter the tenants’ default or the landlords’ right to eviction, affirming the Rent Controller’s order. The tenants filed a revision petition before the Andhra Pradesh High Court, represented by Mr. P.S. Narayana, challenging the concurrent findings. On November 3, 1989, Justice Radha Krishna Rao heard the revision petition and dismissed it, granting time for eviction until December 31, 1989.

Issues Involved in the Case: The case raised the following issues for determination:Whether the court could take cognizance of subsequent events in rent control proceedings and mould relief accordingly?

Petitioners submission: Represented by Mr. P.S. Narayana, the tenants argued that the eviction order was unsustainable due to subsequent events, particularly the redemption decree in O.S. No. 578 of 1982, which directed the mortgagee-landlords to deliver vacant possession to the mortgagor. They contended that upon redemption, the mortgagees’ title and right to continue eviction proceedings ceased, rendering the tenants trespassers rather than tenants, as per Section 74 of the Transfer of Property Act, 1882. The tenants claimed they paid rent to Subhan Khan until March 1972, believing him to be the lessor, and disputed the landlord-tenant relationship with the mortgagees. They argued that the stay of the redemption decree in A.S. No. 20 of 1987, conditional on rent deposits, further complicated the landlords’ claim. Citing precedents like Pasupuleti Venkateshwarlu v. Motor & General Traders and Kommera Mallaiah v. Yarlagadda Mahalakshmamma, the tenants urged the court to consider the redemption decree as a subsequent event that nullified the basis for eviction, asserting that the mortgagees lacked locus standi to enforce the eviction order.

Respondents submission:The landlords, represented by counsel (not named in the judgment), maintained that the tenant’s wilful default from June 1973 to June 1979 was established by the Rent Controller and Appellate Authority, supported by the decree in O.S. No. 527 of 1976 and execution in E.P. 126/79. They argued that a landlord-tenant relationship existed, as the mortgagees leased the premises to M. Rangaiah Naidu in April 1965, and the tenant’s claim of paying rent to Subhan Khan was rightly rejected. The landlords contended that the redemption decree did not extinguish their right to evict for prior default, as the default occurred during their lawful possession as mortgagees. They asserted that the tenants, as parties to the redemption suit, could not evade liability for default, and the stay in A.S. No. 20 of 1987 did not alter the eviction order’s validity. The landlords emphasized their obligation to deliver vacant possession post-redemption, which aligned with enforcing the eviction order, and cited the tenants’ failure to pay rent as a basis for upholding the lower courts’ findings.

Detailed Discussion on Judgments and Citations: The court relied on several precedents to address the consideration of subsequent events and the effect of mortgage redemption on tenancy rights. Below is a detailed discussion of each judgment, its citation, and its context:

Pasupuleti Venkateshwarlu v. Motor & General Traders, AIR 1975 SC 1409: Cited by the tenants, this Supreme Court decision, authored by Justice Krishna Iyer, held that courts must take cognizance of subsequent events to ensure just and meaningful remedies, provided fairness is maintained. The tenants used it to argue that the redemption decree altered the landlords’ title. The court applied this principle to consider the redemption decree but found it did not negate the eviction basis.

Kommera Mallaiah v. Yarlagadda Mahalakshmamma, 1980 (2) ALT 134: Cited by the tenants, this Andhra Pradesh High Court ruling held that a life estate holder lost locus standi to pursue eviction after a partition assigned the premises to another. The tenants argued it supported their claim that the mortgagees lost standing post-redemption. The court distinguished this case, as the mortgagees’ right to evict arose from prior default, not extinguished by redemption.

Ram Das v. Ishwar Chander, AIR 1988 SC 1422:Cited by the court, this Supreme Court decision reaffirmed that courts can mould relief based on subsequent events in rent control cases. The court used it to justify considering the redemption decree but held it supported the landlords’ right to vacant possession.

Gopalkrishna v. G. Satyanarayana, 1984 (1) ALT 56: Cited by the court, this Andhra Pradesh High Court ruling, authored by Justice Rama Rao, held that events nullifying the basis for eviction can be considered. The court applied this to assess the redemption decree’s impact but found it reinforced the eviction order.

Alagiriswami Mudali v. Akkulu Naidu, AIR 1921 Madras 393: Cited by the court, this Madras High Court decision held that a lease created by a mortgagee terminates upon redemption, rendering the tenant a trespasser unless a new tenancy arises. The court used it to clarify that the tenants’ status post-redemption did not absolve their prior default.

S.V. Venkatarama Reddiar v. Abdul Ghani Rowther, AIR 1980 Mad 276: Cited by the court, this Madras High Court Full Bench decision held that tenants of urban property leased by a usufructuary mortgagee are not protected under the Tamil Nadu Buildings (Lease and Rent Control) Act post-redemption, per Section 76(a) of the Transfer of Property Act. The court applied this to limit the tenants’ protection, reinforcing the eviction order.

Sachalmal Parasram v. Mst Ratanbai, AIR 1972 SC 637: Cited by the court, this Supreme Court decision clarified that Section 76(a) applies primarily to agricultural lands, not urban properties, limiting the binding effect of a mortgagee’s lease post-redemption. The court used it to hold that the tenants’ lease did not survive redemption, supporting the landlords’ claim for vacant possession.

Detailed Reasoning and Analysis of Judge: Justice Radha Krishna Rao’s reasoning centered on balancing the established wilful default with the impact of the redemption decree as a subsequent event. The court affirmed the Rent Controller and Appellate Authority’s findings of wilful default from June 1973 to June 1979, supported by the decree in O.S. No. 527 of 1976 and execution in E.P. 126/79, which confirmed the landlord-tenant relationship and rejected the tenants’ claim of paying rent to Subhan Khan. The court emphasized that the default was crystallized into a decree, making subsequent rent payments irrelevant, as the arrears had legal consequences.

Addressing the tenants’ reliance on subsequent events, the court accepted the principle from Pasupuleti Venkateshwarlu and Ram Das that courts can consider post-proceeding developments to mould relief, provided fairness is maintained. The redemption decree in O.S. No. 578 of 1982, directing the mortgagees to deliver vacant possession to the mortgagor upon payment of Rs. 5,000, was a significant event. However, the court held it did not extinguish the landlords’ right to evict for prior default, as the default occurred during their lawful possession as mortgagees. Citing Alagiriswami Mudali and Sachalmal Parasram, the court noted that a mortgagee’s lease terminates upon redemption, rendering the tenant a trespasser unless a new tenancy is created. For urban properties, S.V. Venkatarama Reddiar clarified that tenants lack protection under rent control laws post-redemption, limiting the tenants’ defense.

The court rejected the tenants’ argument that the mortgagees lost locus standi, distinguishing Kommera Mallaiah, as the mortgagees’ eviction right stemmed from a valid default during their tenure. The stay in A.S. No. 20 of 1987, obtained by the tenants, did not alter the redemption decree’s effect, as neither the mortgagor nor mortgagee appealed. The court reasoned that the mortgagees’ obligation to deliver vacant possession aligned with enforcing the eviction order, as the tenants’ default necessitated their removal. The tenants’ participation in the redemption suit as defendants 5 to 7 further bound them to the decree’s consequences, including their liability for default. The court concluded that the lower courts’ reasoning was sound, as the wilful default was incurable, and the redemption decree reinforced the landlords’ right to vacant possession.

Final Decision: On November 3, 1989, the Andhra Pradesh High Court dismissed the revision petition in M. Rangaiah Naidu (Died) By L.Rs. v. Abdul Kareem Khan And Ors., upholding the eviction order for wilful default. The court granted the tenants until December 31, 1989, to vacate the premises and deliver vacant possession to the landlords. No costs were awarded.

Law Settled in the Case: The case clarified several principles in rent control and property law:Wilful Default in Rent Payment: Non-payment of rent over an extended period, confirmed by a civil court decree, constitutes wilful default under rent control laws, justifying eviction, and subsequent payments do not cure the default.Subsequent Events in Rent Control Cases: Courts can take cognizance of events , during the pendency of Appeal, post-dating the eviction petition, such as a redemption decree, to mould relief, ensuring justice aligns with current realities, per Pasupuleti Venkateshwarlu.Effect of Mortgage Redemption: A usufructuary mortgagee’s lease terminates upon redemption, rendering the tenant a trespasser for urban properties, with limited protection under rent control laws, as per Alagiriswami Mudali and S.V. Venkatarama Reddiar.Mortgagee’s Eviction Rights: A mortgagee-landlord retains the right to evict for defaults occurring during their possession, unaffected by redemption, provided the default is legally established.Tenant’s Liability Post-Redemption: Tenants remain liable for prior defaults, and their status as trespassers post-redemption does not negate eviction orders based on earlier breaches.Interplay of Rent Control and Property Law: The obligation to deliver vacant possession post-redemption aligns with enforcing eviction for default, balancing the mortgagee’s duties and tenant’s obligations.

M. Rangaiah Naidu Vs Abdul Kareem Khan : November 3, 1989: 1992 (1) ALT 336; High Court of Andhra Pradesh: Radha Krishna Rao, J.

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

Keshav Kumar Aggarwal Vs NIIT Ltd.

Introduction:  The case of Keshav Kumar Aggarwal v. M/S NIIT Ltd. [CS (OS) No. 2237/2012], decided by the Delhi High Court on March 22, 2013, before Justice Kailash Gambhir, is a significant ruling in Indian trademark law, addressing issues of trademark infringement and passing off. The plaintiff, Keshav Kumar Aggarwal, sought an interim injunction to restrain the defendant, NIIT Ltd., from using the mark "NIIT THE TURNING POINT," alleging it infringed his registered trademark "TURNING POINT" and constituted passing off. The case highlights the protection afforded to registered trademarks with secondary meaning, the importance of prior use, and the principles governing interim injunctions in trademark disputes. The court’s decision to grant the injunction underscores the judiciary’s role in safeguarding distinctive marks against deceptive similarity, even when used by larger entities. This case study provides a comprehensive analysis of the factual and procedural background, issues, submissions, judicial reasoning, cited judgments, and the law settled, offering insights into trademark protection in the educational services sector.

Detailed Factual Background:  The plaintiff, Keshav Kumar Aggarwal, operated an educational institution under the trademark "TURNING POINT" since 1998, providing coaching and training for students in classes VIII to XII and preparing them for competitive entrance exams like BBA, BBS, LAW, IIT, AIEEE, MEDICAL, CFAS, HM, and CPT. The mark was registered under Class 41 (educational services) on November 15, 2005, valid until 2015, as a label mark "TP TURNING POINT." The plaintiff claimed to have coined the mark in 1998, building significant goodwill through high-quality education, with multiple centers in Delhi operated in association with his wife’s sole proprietorship, "Pyramid Classes." The institution was associated with reputed schools like Don Bosco, Apeejay, and Ryan International, and had a strong online presence via its website (www.theturningpoint.com), Facebook, and YouTube lectures. The plaintiff provided sales figures from 1999-2012, showing growth from Rs. 29,00,000 to Rs. 61,06,693, and substantial advertising expenses, claiming the mark had become well-known under Section 2(1)(zg) of the Trade Marks Act, 1999.

In June 2012, the plaintiff discovered that the defendant, NIIT Ltd., a prominent IT education and training company, had launched a computer training program under the name "NIIT THE TURNING POINT." The plaintiff alleged this infringed his registered trademark and constituted passing off by leveraging his goodwill, causing confusion among students. The plaintiff issued a cease-and-desist notice on June 1, 2012, which NIIT denied on June 15, 2012, rejecting claims of infringement or passing off. The plaintiff argued that NIIT’s use of "TURNING POINT" was dishonest, especially since both parties had previously collaborated in 2002 and provided services at Mody School, Rajasthan, suggesting NIIT’s prior knowledge of the plaintiff’s mark. The plaintiff further noted NIIT’s opposition to a third party in Chennai using "TURNING POINT," contradicting its claim that the mark was descriptive.

The defendant, NIIT Ltd., incorporated in 1981 as Pace Education Pvt. Ltd. and renamed NIIT Ltd. in 1990, was a global leader in IT education and software services, operating under the well-known mark "NIIT." NIIT claimed "NIIT THE TURNING POINT" was adopted in May 2012 for a cloud-centric curriculum, arguing the phrase was descriptive and not exclusive to the plaintiff. NIIT’s application to register "NIIT THE TURNING POINT" was pending, and it asserted its mark was distinct due to the prefix "NIIT."

Detailed Procedural Background: The plaintiff filed the suit (CS (OS) No. 2237/2012) in the Delhi High Court in 2012, seeking a permanent injunction, damages, and other reliefs for trademark infringement and passing off, along with an interim injunction application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). The plaintiff was represented by Mr. H.P. Singh and Mr. Navroop Singh, while NIIT was represented by counsel whose identity is not specified in the judgment. The court heard arguments on the interim injunction, focusing on the plaintiff’s registered trademark, NIIT’s use of "NIIT THE TURNING POINT," and the likelihood of confusion. The plaintiff filed documents including the trademark registration certificate, sales and advertising invoices, and school acknowledgments, while NIIT submitted a computer-generated search report and its written statement. On March 22, 2013, Justice Kailash Gambhir delivered the judgment, granting the interim injunction after reserving orders on an unspecified date. The court clarified that its observations were limited to the interim stage, with the suit’s merits to be decided later.

Issues Involved in the Case: The case raised the following issues for determination:Whether the plaintiff’s registered trademark "TURNING POINT" (as part of the label "TP TURNING POINT") was entitled to protection against NIIT’s use of "NIIT THE TURNING POINT" for similar educational services?Whether NIIT’s use of "NIIT THE TURNING POINT" constituted trademark infringement under Section 29 of the Trade Marks Act, 1999, due to deceptive similarity with the plaintiff’s mark? Whether NIIT’s use amounted to passing off by causing confusion or misrepresenting a connection with the plaintiff’s institution?

Plaintiff's submission: The plaintiff argued that "TURNING POINT" was a unique, coined mark adopted in 1998, registered in 2005 under Class 41, and had acquired distinctiveness through continuous use, substantial sales, and advertising. The plaintiff claimed "TURNING POINT" was a well-known mark under Section 2(1)(zg), associated exclusively with his institution, as evidenced by school affiliations, student success, and online presence. He alleged NIIT’s use of "NIIT THE TURNING POINT" infringed his registered mark under Section 29, as it was identical and used for identical services, causing confusion. The plaintiff further argued passing off, claiming NIIT’s use diluted his goodwill and misrepresented a connection, especially given their prior collaboration in 2002 and shared operations at Mody School. The plaintiff highlighted NIIT’s opposition to a Chennai party’s use of "TURNING POINT," exposing its mala fides in claiming the mark was descriptive. Citing precedents like Indian Shaving Products Ltd. v. Gift Pack [1998 PTC (18) 698], Ansul Industries v. Shiva Tobacco Co. [2007 (34) PTC 392 (Del.)], and Godfrey Philips India v. Girnar Foods [(2005) 30 PTC 1 (SC)], the plaintiff urged that long usage conferred secondary meaning, and deceptive similarity warranted an injunction to prevent irreparable loss.

Defendant's submission: NIIT’s counsel argued that the plaintiff’s registration was for the label "TP TURNING POINT," not "TURNING POINT" alone, and under Section 17 of the Trade Marks Act, 1999, no exclusivity applied to the words. NIIT contended that "NIIT THE TURNING POINT" was distinct due to the prefix "NIIT," a well-known mark since 1981, and that "TURNING POINT" was a descriptive, common phrase incapable of monopoly, especially in education. NIIT claimed honest adoption in May 2012 for a cloud-centric course, denying prior knowledge of the plaintiff’s mark or any collaboration at Mody School. It argued no confusion was likely, as its mark emphasized "NIIT," and submitted a search report showing multiple users of "TURNING POINT." NIIT reserved the right to seek rectification of the plaintiff’s registration if needed and cited Skyline Education Institute v. SL Vaswani [2010 (42) PTC 217 (SC)], Marico Ltd. v. Agro Tech Foods Ltd. [MIPR 2010 (3) 0226], and Three-N Products Pvt. Ltd. v. Emami Ltd. [MIPR 2008 (3) 0319] to argue that descriptive marks lack protection absent distinctiveness, and its mark was distinguishable.

Detailed Discussion on Judgments and Citations: The court analyzed several precedents cited by both parties to determine the protectability of the plaintiff’s mark and the likelihood of infringement or passing off. Below is a detailed discussion of each judgment, its citation, and its context:

Indian Shaving Products Ltd. v. Gift Pack, 1998 PTC (18) 698:Cited by the plaintiff, this Delhi High Court decision supported granting injunctions for trademark infringement where the defendant’s mark was deceptively similar, causing confusion. The plaintiff used it to argue that NIIT’s mark was identical and likely to deceive students, warranting protection.

Ansul Industries v. Shiva Tobacco Co., 2007 (34) PTC 392 (Del.):Cited by the plaintiff, this Delhi High Court ruling emphasized that trademark similarity is judged by the impression on an unwary consumer, not a vigilant one, focusing on overall similarity. The court applied this to hold that "NIIT THE TURNING POINT" could confuse students due to its similarity to "TURNING POINT."

Amritdhara Pharmacy v. Satyadeo Gupta, PTC (Suppl) (2) 1 (SC): Cited by the plaintiff, this Supreme Court decision clarified that a mark’s distinctiveness is assessed by its overall impression, not minor differences. The plaintiff argued that "TURNING POINT" was distinctive, and NIIT’s mark was deceptively similar despite the prefix.

Greaves Cotton Ltd. v. Mohammad Rafi & Ors., 2011 (46) PTC 466 (Del.):Cited by the plaintiff, this Delhi High Court case restrained the use of "GREAVES INDIA" due to its similarity to "GREAVES," protecting consumer interests. The court relied on it to find that NIIT’s use could mislead students into believing both marks shared a common origin.

United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2012 (50) PTC 433 (Del.) (DB):Cited by the plaintiff, this Delhi High Court Division Bench decision held that a label mark’s essential feature (e.g., "ORZID") is protected under Section 17, rejecting claims of non-exclusivity for parts. The court used this to affirm that "TURNING POINT" was protectable as an essential feature of the plaintiff’s label.

ACL Education Centre Pvt. Ltd. v. American Centre for Languages, 2008 (36) PTC 113 (Del.): Cited by the plaintiff, this Delhi High Court ruling granted an injunction for the mark "American Centre for Languages," finding it distinctive due to long use. The court applied this to hold that "TURNING POINT" had acquired secondary meaning through 14 years of use.

Godfrey Philips India v. Girnar Foods, (2005) 30 PTC 1 (SC): Cited by the plaintiff, this Supreme Court decision (reported as Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd., (2004) 5 SCC 257) held that descriptive marks gain protection if they acquire secondary meaning. The court relied on this to find "TURNING POINT" distinctive.

S.P. Chengalvaraya v. Jagannath, AIR 1994 SC 853: Cited by the plaintiff, this Supreme Court judgment denied relief to dishonest litigants. The plaintiff used it to question NIIT’s bona fides, given its Chennai opposition. The court did not directly apply it but noted NIIT’s contradictory stance.

Automatic Electric v. R.K. Dhawan, 1999 PTC (19) 81: Cited by the plaintiff, this Delhi High Court decision supported protecting marks with established goodwill. The plaintiff argued it reinforced his claim to exclusive rights over "TURNING POINT."

Corn Products Refining Co. v. Shangrila Food Products Ltd., [1960] 1 SCR 968: Cited by the plaintiff, this Supreme Court decision (reported as Corn Products v. Shangrila Foods, AIR 1960 SC 142) held that the defendant must substantiate claims of third-party use. The court applied this to reject NIIT’s search report as insufficient evidence of other users.

Skyline Education Institute v. SL Vaswani, 2010 (42) PTC 217 (SC): Cited by the defendant, this Supreme Court ruling denied protection to descriptive marks without distinctiveness. NIIT argued "TURNING POINT" was descriptive, but the court distinguished it, finding the plaintiff’s mark had secondary meaning.

Marico Ltd. v. Agro Tech Foods Ltd., MIPR 2010 (3) 0226: Cited by the defendant, this Delhi High Court decision held that descriptive marks require strong evidence of distinctiveness. The court found it inapplicable, as "TURNING POINT" was coined, not descriptive of the plaintiff’s services.

Three-N Products Pvt. Ltd. v. Emami Ltd., MIPR 2008 (3) 0319: Cited by the defendant, this Delhi High Court ruling emphasized comparing marks as a whole. NIIT argued its mark was distinct due to "NIIT," but the court held that "TURNING POINT" was the dominant feature, causing confusion.

Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147: Cited by the court (reported as 2001 IXAD SC 472 in some databases), this Supreme Court decision restrained the use of "Mahendra" due to its distinctiveness. The court used it to affirm that "TURNING POINT" was associated with the plaintiff.

Standard Electricals Ltd. v. Rocket Electricals, 2004 (72) DRJ 794: Cited by the court, this Delhi High Court ruling held that common words can acquire distinctiveness through long use. The court applied this to find "TURNING POINT" protectable.

Ramdev Food Products Ltd. v. Arvindbhai Rambhai, 2006 (33) PTC 281 (SC):Cited by the court via United Biotech, this Supreme Court decision clarified that a label mark’s essential feature is protected. The court used it to reject NIIT’s Section 17 argument.

Pionotist Case, (1906) 23 RPC 774: Cited by the court, this UK decision outlined the test for deceptive similarity, comparing marks by look, sound, and consumer perception. The court applied it to find NIIT’s mark confusingly similar.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 SCR (1) 737: Cited by the court, this Supreme Court ruling held that close similarity in marks establishes infringement without further evidence. The court used it to support the plaintiff’s claim.

Clock Ltd. v. Clock House Hotel Ltd., (1936) 53 RPC 269 (CA): Cited by the court via Wadlow’s Law of Passing-Off, this UK case defined passing off as misrepresenting a connection with the claimant’s business. The court applied it to find NIIT’s use misleading.

Detailed Reasoning and Analysis of Judge:Court focused on the interim injunction’s triple test: prima facie case, balance of convenience, and irreparable injury. The court found that the plaintiff adopted "TURNING POINT" in 1998, registered it in 2005, and used it continuously, as evidenced by sales figures, advertising, and school affiliations, establishing prior use and goodwill. The mark’s long usage (14 years) conferred secondary meaning, making it well-known under Section 2(1)(zg), as supported by Godfrey Philips, Mahendra & Mahendra, ACL Education, and Standard Electricals. The court rejected NIIT’s claim that "TURNING POINT" was descriptive, finding it coined and distinctive, unlike the cases in Marico and Three-N Products.

On infringement, the court applied Sections 28 and 29 of the Trade Marks Act, 1999, noting the plaintiff’s valid registration and NIIT’s use of an identical mark for identical services (education under Class 41). The court dismissed NIIT’s Section 17 argument, relying on United Biotech and Ramdev Food to hold that "TURNING POINT" was an essential feature of the plaintiff’s label, protectable as a whole. The Pionotist and Kaviraj Pandit tests confirmed deceptive similarity, as "NIIT THE TURNING POINT" incorporated the plaintiff’s mark, likely causing confusion among students, per Ansul Industries and Greaves Cotton. The court found NIIT’s adoption lacked bona fides, given its operations at Mody School and opposition to a Chennai party, contradicting its descriptive claim, as noted in S.P. Chengalvaraya.

On passing off, the court applied Clock Ltd. principles, finding NIIT’s use misrepresented a connection with the plaintiff, risking damage to his goodwill. NIIT’s search report was dismissed as unsubstantiated, per Corn Products. The court held that the plaintiff’s prima facie case was strong, the balance of convenience favored him due to his prior use, and irreparable injury loomed from continued confusion. NIIT’s larger size did not justify riding on the plaintiff’s goodwill, and the prefix "NIIT" did not sufficiently distinguish the mark.

Final Decision: On March 22, 2013, the Delhi High Court granted the plaintiff’s interim injunction application in CS (OS) No. 2237/2012, restraining NIIT Ltd., its directors, employees, and agents from using, marketing, or selling services under the mark "TURNING POINT" or any deceptively similar mark in Class 41 until the suit’s final disposal. The court clarified that its observations were preliminary, not affecting the suit’s merits.

Law Settled in the Case:The case clarified several principles in trademark law: Protection of Label Marks: Under Section 17, a registered label mark’s essential feature (e.g., "TURNING POINT") is protectable, even if the registration is for the whole label, extending exclusive rights to prevent infringement or passing off.Secondary Meaning for Descriptive Marks: Descriptive or common words can acquire distinctiveness through long, continuous use, gaining secondary meaning and well-known status under Section 2(1)(zg).Deceptive Similarity Test: Marks are compared as a whole, considering visual, phonetic, and structural similarity, and the perception of an unwary consumer, as per Pionotist and Kaviraj Pandit, to determine infringement under Section 29.Passing Off: Use of a similar mark misrepresenting a connection with the plaintiff’s business constitutes passing off, causing actionable damage, per Clock Ltd..Bona Fides and Prior Knowledge: A defendant’s adoption is dishonest if it has prior knowledge of the plaintiff’s mark, especially in the same industry, and contradictory actions (e.g., opposing third-party use) undermine claims of honest adoption.Interim Injunction Criteria: A plaintiff must establish a prima facie case, balance of convenience, and irreparable injury, with prior use and goodwill weighing heavily in favor of protection.

Keshav Kumar Aggarwal Vs NIIT Ltd.: Date of Order: March 22, 2013: : CS (OS) No. 2237/2012: High Court of Delhi:Hon'ble Judge Shri Kailash Gambhir, J.

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

V Guard Industries Ltd. Vs. Sukan Raj Jain

Introduction

The case of V Guard Industries Ltd. v. Sukan Raj Jain is a significant intellectual property dispute adjudicated by the High Court of Delhi, focusing on the issue of territorial jurisdiction in trademark infringement and passing off actions. The plaintiff, V Guard Industries Ltd., a company engaged in manufacturing and selling electrical goods under the registered trademark "V-GUARD," sought to restrain the defendants from using the mark "N-GUARD," alleging infringement and passing off. The primary contention arose from an application by Defendant No. 1 under Order VII Rule 10 of the Code of Civil Procedure (CPC), challenging the Delhi High Court’s jurisdiction to entertain the suit. The judgment, delivered on July 5, 2021, by Justice Manoj Kumar Ohri, provides a comprehensive analysis of jurisdictional principles in the context of online commerce and trademark law, reinforcing the evolving judicial approach to virtual business presence.

Detailed Factual Background

V Guard Industries Ltd., the plaintiff, is a well-established company based in Kerala, engaged in the manufacture, distribution, and sale of electrical goods under its registered trademark "V-GUARD" and its variants. The plaintiff claimed a strong market presence across 29 states in India, including Delhi, where it maintained a supply office and a network of distributors and retailers. Defendant No. 1, Sukan Raj Jain, operates as the sole proprietor of M/s N-Guard Electronic Industries, with its registered office in Bengaluru, Karnataka. Defendant No. 2 provides web designing services to Defendant No. 1. The plaintiff alleged that the defendants were manufacturing and selling electrical products under the mark "N-GUARD" and through the domain name "www.nguard.in," which were deceptively similar to its "V-GUARD" trademark. The plaintiff further asserted that the defendants’ products were available for sale in Delhi through third-party e-commerce platforms such as Amazon, Flipkart, Indiamart, Shopclues, and Snapdeal, and that a representative of the plaintiff had purchased an offending product via Amazon.in, which was delivered in Delhi.

The defendants, particularly Defendant No. 1, contested the plaintiff’s claims, denying any business operations or product sales in Delhi. They argued that their website was not interactive, no products could be purchased directly from it, and the alleged sale relied upon by the plaintiff was a solitary, self-generated transaction from an unrelated vendor, insufficient to establish jurisdiction in Delhi.

Detailed Procedural Background

The suit, filed as CS(COMM) 25/2021, sought a permanent injunction to restrain the defendants from infringing and passing off the plaintiff’s trademark and design, along with a prayer for rendition of accounts. On January 18, 2021, the Delhi High Court issued an ex-parte ad-interim injunction, restraining the defendants from manufacturing, selling, or advertising products under the "N-GUARD" mark or any similar mark/domain name. Defendant No. 1 subsequently filed an application (I.A. 3044/2021) under Order VII Rule 10 CPC, seeking the return of the plaint on the ground that the Delhi High Court lacked territorial jurisdiction, as no part of the cause of action arose in Delhi. The plaintiff opposed this application, relying on its pleadings and documents, including screenshots of the defendants’ website and third-party e-commerce platforms, as well as a sale invoice evidencing the purchase of the defendants’ product in Delhi.

The court also noted additional applications pending in the suit, including I.A. 803/2021 (under Order XXXIX Rules 1 & 2 CPC for interim injunction), I.A. 3043/2021 (under Order XXXIX Rule 4 CPC by Defendant No. 1 for vacation of the interim injunction), and I.A. 3046/2021 (under Section 124 of the Trade Marks Act by Defendant No. 1). However, the judgment focused solely on the jurisdictional challenge under I.A. 3044/2021. The matter was reserved on May 7, 2021, and the decision was pronounced on July 5, 2021.

Issues Involved in the Case

The central issue before the court was whether the Delhi High Court had territorial jurisdiction to entertain the suit under Section 20(c) CPC and Section 134 of the Trade Marks Act, 1999, given the defendants’ contention that no part of the cause of action arose in Delhi. Sub-issues included:

1. Whether the availability of the defendants’ products on third-party e-commerce websites accessible in Delhi constituted a cause of action within the court’s jurisdiction.
2. Whether the plaintiff’s purchase of the defendants’ product in Delhi via Amazon.in was sufficient to establish jurisdiction, or whether it constituted an impermissible “trap sale.”
3. Whether the plaintiff’s supply office in Delhi and its business operations in the city provided additional grounds for jurisdiction under Section 134 of the Trade Marks Act.
4. The extent to which the defendants’ website and online presence could be deemed as “purposeful availment” of the Delhi market to attract jurisdiction.

Detailed Submission of Parties

Plaintiff’s Submissions: The plaintiff invoked Section 20(c) CPC, arguing that the cause of action arose in Delhi due to the defendants’ business activities in the city. It relied on the following assertions:

• The defendants were selling their products in Delhi through third-party e-commerce platforms like Amazon, Flipkart, Indiamart, Shopclues, and Snapdeal, which were accessible to Delhi customers.
• The defendants’ website, www.nguard.in, was interactive, allowing customers to place orders, including from Delhi.
• A representative of the plaintiff had purchased an offending product via Amazon.in, which was delivered in Delhi, as evidenced by a sale invoice dated October 28, 2020.
• The defendants likely had substantial customers in Delhi, given their online presence.
• The plaintiff maintained a supply office in Delhi and conducted business through a network of distributors and retailers, reinforcing Delhi as a forum for the suit.

The plaintiff cited several judicial precedents to support its claim:

• M/s RSPL Limited v. Mukesh Sharma & Anr., 2016 SCC OnLine Del 4285 (DB): Emphasized that averments in the plaint must be taken as true when deciding an application under Order VII Rule 10 CPC.
• World Wrestling Entertainment, Inc. v. M/s Reshma Collection & Ors., 2014 SCC OnLine Del 2031 (DB): Equated virtual shops on the internet with physical shops, holding that online availability of products constitutes carrying on business in the forum state.
• Marico Limited v. Mukesh Kumar & Ors., 253 (2018) DLT 8: Held that the availability of products on interactive websites like Indiamart satisfies the “purposeful availment” test.
• Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260: Stressed that jurisdiction can be invoked where injury or deception occurs due to the defendants’ actions.
• Burger King Corporation v. Techchand Shewakramani & Ors., 2018 SCC OnLine Del 10881: Clarified that “use” of a trademark includes advertising and promotion, not merely sales, for jurisdictional purposes.

Defendant’s Submissions: Defendant No. 1 argued that the Delhi High Court lacked jurisdiction, as no part of the cause of action arose in Delhi. Key submissions included:

• The defendant did not carry on business in Delhi, with its registered office located in Bengaluru, Karnataka.
• The plaintiff admitted in the plaint that the defendant’s registered office was in Karnataka, and the plaintiff’s registered office was in Kerala, negating Delhi’s relevance.
• The defendant’s website, www.nguard.in, was not interactive, and no products could be purchased directly from it.
• The sale relied upon by the plaintiff was a solitary, self-generated transaction from an unrelated vendor on Amazon.in, not attributable to the defendant or its authorized agents.
• A single sale was insufficient to establish jurisdiction, especially if engineered by the plaintiff.

The defendant relied on the following precedents:

• Patel Roadways Limited, Bombay v. Prasad Trading Company, (1991) 4 SCC 270: Highlighted the need for the defendant’s actual business presence in the forum state for jurisdiction under Section 20 CPC.
• Dhodha House v. S.K. Maingi, (2006) 9 SCC 41: Emphasized that jurisdiction cannot be invoked without a substantial cause of action in the forum state.
• Indian Performing Right Society Ltd. v. Sanjay Dalia and Anr., 2008 SCC OnLine Del 1238 (IPRS (Delhi)) and (2015) 10 SCC 161 (IPRS (SC)): Clarified that jurisdiction under Section 134 of the Trade Marks Act is subject to restrictions, such as the plaintiff’s principal office location.
• Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780 (DB): Established the “purposeful availment” test for jurisdiction based on website activity, prohibiting reliance on solitary trap transactions.

Detailed Discussion on Judgments Cited by Parties

The court meticulously analyzed the precedents cited by both parties, applying their principles to the facts of the case. Below is a detailed discussion of each judgment and its context in the case:

1. M/s RSPL Limited v. Mukesh Sharma & Anr., 2016 SCC OnLine Del 4285 (DB): Cited by the plaintiff, this case reinforced the principle that an application under Order VII Rule 10 CPC is decided by treating the plaint’s averments as true, without considering the defendant’s written statement or documents. The court applied this principle to limit its inquiry to the plaintiff’s pleadings and documents, disregarding the defendant’s factual denials at this stage.
2. World Wrestling Entertainment, Inc. v. M/s Reshma Collection & Ors., 2014 SCC OnLine Del 2031 (DB): The plaintiff relied on this case to argue that the defendants’ online presence equated to carrying on business in Delhi. The court found this precedent persuasive, noting that the availability of the defendants’ products on e-commerce platforms constituted a “virtual shop” akin to a physical shop, thereby attracting jurisdiction in Delhi.
3. Marico Limited v. Mukesh Kumar & Ors., 253 (2018) DLT 8: Cited by the plaintiff, this case supported the argument that the defendants’ products on Indiamart satisfied the “purposeful availment” test. The court agreed, observing that the defendants’ listing as a verified supplier on Indiamart indicated targeted commercial activity in Delhi.
4. Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260: The plaintiff used this case to emphasize that jurisdiction arises where injury or deception occurs. The court applied this principle, noting that the plaintiff’s pleaded injury in Delhi, coupled with the defendants’ online sales, supported jurisdiction.
5. Burger King Corporation v. Techchand Shewakramani & Ors., 2018 SCC OnLine Del 10881: Cited by the plaintiff, this case clarified that “use” of a trademark includes advertising and promotion, not just sales. The court found this relevant, as the defendants’ products were promoted on e-commerce platforms accessible in Delhi, constituting “use” under the Trade Marks Act.
6. Patel Roadways Limited, Bombay v. Prasad Trading Company, (1991) 4 SCC 270: Cited by the defendant, this case emphasized the need for the defendant’s physical business presence in the forum state. The court distinguished this case, noting that Section 134 of the Trade Marks Act and the virtual presence of the defendants’ products provided additional jurisdictional grounds.
7. Dhodha House v. S.K. Maingi, (2006) 9 SCC 41: The defendant relied on this case to argue that a substantial cause of action was required. The court found this less applicable, as the plaintiff’s pleadings and documents prima facie established a cause of action in Delhi.
8. Indian Performing Right Society Ltd. v. Sanjay Dalia and Anr., 2008 SCC OnLine Del 1238 (IPRS (Delhi)) and (2015) 10 SCC 161 (IPRS (SC)): Cited by the defendant, these cases clarified jurisdictional restrictions under Section 134. The court relied heavily on IPRS (SC), which held that Section 134 provides additional forums based on the plaintiff’s residence or business, subject to the cause of action arising in that forum. This supported the plaintiff’s reliance on its Delhi supply office and the cause of action in Delhi.
9. Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780 (DB): The defendant cited this case to argue that a solitary trap sale could not establish jurisdiction. The court clarified that Banyan Tree prohibited only unfair trap sales, not legitimate purchases, and found that the plaintiff’s purchase, combined with the defendants’ online presence, satisfied the “purposeful availment” test.

Additional precedents referenced by the court included:

• D. Ramachandran v. R.V. Janakiraman and Others, (1999) 3 SCC 267: Affirmed that only the plaint’s averments are considered in preliminary objections.
• Liverpool & London S.P. & I Association Ltd. v. M.V. Sea Success I and Another, (2004) 9 SCC 512: Reiterated that jurisdiction is determined by the plaint’s averments.
• ABN-AMRO Bank v. The Punjab Urban Planning and Development Authority, AIR 2000 P&H 44: Expanded the scope of inquiry to include documents filed by the plaintiff before the hearing.
• Hari Gokal Jewellers v. Satish Kapur, 2006 SCC OnLine Del 482, and Rajiv Kumar (Deaf and Dumb) v. M/s Kewal Cargo Carriers (P) Ltd., 2006 SCC OnLine Del 496: Followed ABN-AMRO Bank, supporting the inclusion of additional documents.
• Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors., 2016 SCC OnLine Del 376: Provided a framework for jurisdiction under Section 134, applied to the plaintiff’s Delhi supply office.
• Icon Health and Fitness, Inc. v. Sheriff Usman and Anr., 2017 SCC OnLine Del 10481: Supported the plaintiff’s argument that online sales through e-commerce platforms constitute carrying on business.

Detailed Reasoning and Analysis of Judge

Justice Manoj Kumar Ohri’s reasoning was grounded in a careful application of statutory provisions (Section 20(c) CPC and Section 134 of the Trade Marks Act) and judicial precedents, tailored to the context of online commerce. The court’s analysis proceeded as follows:

1. Scope of Inquiry under Order VII Rule 10 CPC: The court emphasized that its inquiry was limited to the plaintiff’s pleadings and documents, treating all averments as true at this stage, as per D. Ramachandran (1999) and Liverpool & London (2004). The defendant’s written statement and factual denials were irrelevant, aligning with M/s RSPL Limited (2016).
2. Plaintiff’s Pleadings and Evidence: The plaintiff pleaded that the defendants’ products were available on e-commerce platforms accessible in Delhi, supported by screenshots and a sale invoice dated October 28, 2020. Additional documents filed with an application under Order XXXIX Rule 2A CPC, including screenshots showing the defendant as a verified supplier on Indiamart and Shopclues, were considered permissible under ABN-AMRO Bank (2000). These documents prima facie established the defendants’ commercial activity in Delhi.
3. Jurisdiction Based on Online Presence: The court relied on World Wrestling Entertainment (2014) to equate the defendants’ online presence with a physical shop, noting that e-commerce platforms constituted “virtual shops” accessible in Delhi. Burger King Corporation (2018) was applied to hold that “use” of the trademark included advertising and promotion, not just sales, as the defendants’ products were promoted on multiple platforms. Marico Limited (2018) supported the finding that the defendants’ listing on Indiamart satisfied the “purposeful availment” test from Banyan Tree (2009).
4. Trap Sale Argument: The defendant’s reliance on Banyan Tree (2009) to label the plaintiff’s purchase as a trap sale was rejected. The court clarified that Banyan Tree prohibited only unfair trap sales, and the defendant’s counsel conceded that the sale was not a trap but a solitary transaction. The court held that the sale, combined with the defendants’ broader online presence, was sufficient to establish jurisdiction, with the fairness of the sale being a matter for trial.
5. Injury and Cause of Action in Delhi: Applying Millennium & Copthorne (2018), the court found that the plaintiff suffered injury in Delhi due to the defendants’ deceptive use of the “N-GUARD” mark, as customers in Delhi could access and purchase the products. The cause of action thus arose in Delhi under Section 20(c) CPC.
6. Section 134 of the Trade Marks Act and Plaintiff’s Supply Office: The court analyzed IPRS (SC) (2015) and Ultra Home Construction (2016) to hold that Section 134 provides additional jurisdictions based on the plaintiff’s residence or business. The plaintiff’s supply office in Delhi, coupled with the cause of action arising from the defendants’ sales, placed the case within the “third situation” outlined in Ultra Home Construction, where jurisdiction lies at the place of the subordinate office (Delhi) where the cause of action arose.
7. Defendant’s Contentions: The defendant’s argument that its Karnataka office negated Delhi’s jurisdiction was dismissed, as Section 134 and the online cause of action overrode the need for the defendant’s physical presence in Delhi. The court found the defendant’s cited cases (e.g., Patel Roadways, Dhodha House) distinguishable, as they did not account for the virtual business context or Section 134’s provisions.
8. Prima Facie Conclusion: The court concluded that the plaintiff’s pleadings and documents prima facie established jurisdiction under both Section 20(c) CPC and Section 134 of the Trade Marks Act. The observations were expressly limited to the jurisdictional issue and would not prejudice the trial.

Final Decision

The court dismissed the defendant’s application under Order VII Rule 10 CPC, holding that the Delhi High Court had territorial jurisdiction to entertain the suit. The plaint was not returned, and the suit was directed to proceed before the Roster Bench on July 22, 2021, for further adjudication of pending applications. The court clarified that its observations were prima facie and would not affect the parties’ contentions at trial.

Law Settled in this Case:The judgment clarified several key principles in trademark law and territorial jurisdiction:

Availability of a defendant’s products on e-commerce platforms accessible in the forum state constitutes a cause of action under Section 20(c) CPC, as it equates to carrying on business in a “virtual shop” (World Wrestling Entertainment). The “purposeful availment” test from Banyan Tree is satisfied when a defendant’s products are promoted or sold on interactive websites targeting the forum state, such as Indiamart or Amazon (Marico Limited). Jurisdiction can be invoked at the place of the plaintiff’s subordinate office where the cause of action arises, as per Ultra Home Construction, even if the defendant has no physical presence in that forum (IPRS (SC)). “Use” of a trademark includes advertising and promotion, not just sales, for jurisdictional purposes (Burger King Corporation). A single sale by the plaintiff is not per se a trap sale under Banyan Tree unless proven to be unfair, and its validity is a matter for trial.

V Guard Industries Ltd. v. Sukan Raj Jain & Anr.:July 5, 2021:CS(COMM) 25/2021:High Court of Delhi at New Delhi:Name of Judge: Hon’ble Mr. Justice Manoj Kumar Ohri

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