Jurisdictional Challenges in E-Commerce Era
Introduction:This case revolves around a family dispute between two companies originating from the same lineage, involving allegations of trademark infringement, copyright violation, and passing off in the market for phenyle and related cleaning products. The plaintiff, Vikrant Chemico Industries Pvt Ltd, accused the defendants, Shri Gopal Engineering and Chemical Works Pvt Ltd and others, of misusing marks like "DOCTOR HAZEL'S BRAND PHENYL" and "CHEMIST BRAND GERM TROLL," which were claimed to be deceptively similar to the plaintiff's established brands "DOCTOR BRAND PHENYLE" and "DOCTOR BRAND GERM TROLL." The dispute highlighted issues of territorial jurisdiction in intellectual property suits, the scope of protection for composite trademarks, and the implications of generic terms in branding. The High Court of Delhi ultimately dismissed the suit on jurisdictional grounds while addressing the merits, underscoring the complexities in family-owned businesses transitioning into separate entities and the evidentiary thresholds required in such claims.
Factual Background: The roots of this dispute trace back to 1963 when Mr. J.B. Gupta adopted the mark "DOCTOR BRAND PHENYLE" for phenyle products. In 1972, the plaintiff company was incorporated in Kanpur, Uttar Pradesh, focusing on personal care, toiletries, pharmaceuticals, and chemicals. Mr. J.B. Gupta joined as a director in 1973, the same year the plaintiff adopted "DOCTOR BRAND GERM TROLL" for perfumed cleaners. His sons, Mr. R.K. Gupta (a plaintiff director) and Mr. G.K. Gupta (defendant no.2), were involved in family businesses. In 1975, a partnership firm, M/s Shri Gopal Engineering and Chemical Works, was formed with Mr. J.B. Gupta and Mr. G.K. Gupta as partners; Mr. R.K. Gupta joined in 1981. This firm registered "DOCTOR BRAND PHENYLE" (device) in 1985. The plaintiff obtained "CHEMIST" registration in 1986. In 1994, defendant no.1 company was formed, including family members as directors. In 1996, the partnership assigned "DOCTOR BRAND PHENYLE" to the plaintiff, and defendants nos.2 and 3 resigned from the plaintiff's board. The plaintiff secured copyright for "DOCTOR BRAND PHENYLE" in 1999 and assigned "CHEMIST" to defendant no.1 in 2000. By 2015, disputes arose when the plaintiff discovered defendants' products like "DOCTOR HAZEL'S BRAND PHENYL" (acquired via assignment in 2014) and "CHEMIST BRAND GERM TROLL." The plaintiff claimed prior use, substantial sales (Rs. 9.95 crore in 2016-2017 for "DOCTOR BRAND PHENYLE"), and deceptive similarity. Defendants countered that "DOCTOR BRAND GERM TROLL" originated with the partnership in 1983, "CHEMIST BRAND PHENYLE" was used since 2000, "DOCTOR HAZEL'S" was registered with "DOCTOR" disclaimed as generic, and their packaging was distinct and common to trade.
Procedural Background:The suit was filed on August 25, 2015, seeking permanent injunction, rendition of accounts, delivery up, and damages. On September 2, 2015, summons were issued, and an ex parte interim injunction restrained defendants from using "DOCTOR HAZEL'S BRAND PHENYL" and "CHEMIST BRAND GERM TROLL," with a Local Commissioner appointed for Kanpur premises. Mediation failed on November 18, 2015. Another Local Commissioner visited Bhopal on August 5, 2016. On August 25, 2017, during Order XXXIX Rule 2A proceedings, a Local Commissioner checked Delhi shops. On January 24, 2018, the rejection application under Order VII Rule 11 was dismissed, injunction confirmed (clarifying liberty for "CHEMIST BRAND GERM TROLL"), and the suit converted to commercial as CS(COMM) 85/2018. Issues were framed on July 9, 2018. Defendants' appeal was dismissed by the Division Bench on July 3, 2018, but the Supreme Court stayed it on February 8, 2019, urging disposal within six months. Evidence was recorded by a Local Commissioner from November 28, 2019. Judgment was reserved on May 30, 2025, and pronounced on August 20, 2025.
Core Dispute: The central conflict centered on whether defendants infringed the plaintiff's trademarks and copyrights in "DOCTOR BRAND PHENYLE" and "DOCTOR BRAND GERM TROLL," and passed off their goods as the plaintiff's through deceptively similar marks like "DOCTOR HAZEL'S BRAND PHENYL" and "CHEMIST BRAND GERM TROLL." Key sub-issues included the plaintiff's prior adoption and registration, the generic nature of "DOCTOR" and "GERM TROLL," distinctiveness of composite marks, and fabricated packaging claims. Territorial jurisdiction was pivotal, with the plaintiff asserting Delhi sales via websites, e-commerce, and Local Commissioner reports, while defendants argued passive online presence, no proven sales, and Kanpur-based operations. The suit also touched on family assignments, disclaimers in registrations, and common trade practices in phenyle branding.
Discussion on Judgments:The parties and court referenced several precedents to substantiate their positions on jurisdiction, trademark principles, and infringement. On territorial jurisdiction, the defendants relied on Dhodha House v. S.K. Maingi, 2006 (9) SCC 41, in the context that filing a trademark application or executing an assignment in Delhi does not confer jurisdiction, as cause of action arises from use, not registration processes. The court agreed, noting this barred claims based on the defendants' Delhi-based assignment of "DOCTOR HAZEL'S." Banyan Tree Holding v. A Murali Krishna Reddy, 2009 SCC OnLine Del 3780, was cited by defendants to argue passive websites do not create jurisdiction unless targeted commercial activity is shown; the court applied this to rule the defendants' site was passive, lacking evidence of Delhi-targeted sales. Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393, was referenced in the judgment to support rejecting jurisdiction claims without documentary evidence of sales, mirroring the plaintiff's failure to prove Delhi sales at filing. Kohinoor Seed Fields India Private Limited v. Veda Seed Sciences Private Limited, 2025 SCC OnLine Del 2404, was used by the court to dismiss IndiaMart listings as jurisdictional hooks, since they were third-party actions without proven communication or orders. On trademark infringement, Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738, was invoked by defendants to argue no exclusivity over parts of composite marks like "DOCTOR" without separate registration; the court applied this to limit the plaintiff's claims. Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 3370, reinforced the anti-dissection rule, citing South India Beverages India Private Limited v. General Mills Marketing Inc, 2014 SCC OnLine Del 1953, to emphasize comparing marks as wholes; the court used this to find no deceptive similarity. VIP Industries v. Carlton Shoes, 2025 SCC OnLine Del 4620, was cited in the judgment to hold no infringement between registered proprietors under Section 28(3) of the Trade Marks Act, 1999. Finally, Sathyanath v. Sarojamani, 2022 7 SCC 644, was referenced by the court to justify adjudicating all issues despite jurisdictional dismissal, ensuring comprehensive resolution.
Reasoning and Analysis of the Judge:Justice Amit Bansal meticulously analyzed the jurisdictional issue first, concluding Delhi courts lacked authority under Section 20(c) of the CPC, as no substantial evidence showed defendants' infringing sales in Delhi at suit filing. He dismissed website claims as passive, IndiaMart listings as non-commercial, and Local Commissioner reports as post-filing or hearsay, emphasizing cause of action must exist at institution. On merits, despite returning the plaint, he examined infringement claims. For "DOCTOR BRAND PHENYLE," he held no trademark infringement due to mutual registrations and anti-dissection principles, noting "DOCTOR" was generic, disclaimed in defendants' registration, and common to trade. He found labels distinct, accusing the plaintiff of fabricating red-yellow packaging to mimic defendants', contrasting it with the plaintiff's registered blue-white scheme. For "DOCTOR BRAND GERM TROLL," he ruled the mark originated with the partnership transferred to defendants, was descriptive (implying germ control), and lacked plaintiff exclusivity. Packaging comparisons showed no visual similarity, with defendants' red-white scheme used since 2000. He rejected passing off for insufficient deception likelihood and copyright claims for non-originality in plaintiff's asserted labels. Overall, the judge prioritized evidentiary rigor, family business histories, and statutory interpretations, balancing IP protection with fair competition.
Final Decision:The suit was returned to the plaintiff for lack of territorial jurisdiction, with no findings of trademark infringement, copyright violation, or passing off. The plaintiff was denied injunctions, accounts rendition, delivery up, damages, and costs. Issues on misjoinder favored the plaintiff, but all substantive claims were resolved against it. Pending applications were disposed of accordingly.
Law Settled in This Case:This judgment reinforces that territorial jurisdiction in IP suits requires concrete evidence of cause of action, such as proven sales or targeted online activity, at the time of filing, not post-suit discoveries or passive websites. It clarifies that composite trademarks grant protection only to the whole, not parts, unless separately registered, and generic/laudatory terms like "DOCTOR" for disinfectants cannot be monopolized. Descriptive marks like "GERM TROLL" lack distinctiveness without secondary meaning proof. Family assignments must be explicitly documented for rights transfer. Courts must adjudicate all issues even if dismissing on jurisdiction to avoid multiplicity, per Order XIV Rule 2 CPC. Fabricated evidence, like altered packaging, undermines claims, and common trade dresses preclude passing off.
Case Title: Vikrant Chemico Industries Pvt Ltd Vs Shri Gopal Engineering and Chemical Works Pvt Ltd & Ors
Date of Order: August 20, 2025
Case Number: CS(COMM) 85/2018
Neutral Citation: 2025:DHC:6457
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Amit Bansal
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
