Mere Website Accessibility Not Enough to Establish Jurisdiction: Delhi High Court

Mere Website Accessibility Not Enough to Establish Jurisdiction: Delhi High Court

Introduction

The Delhi High Court has ruled that a litigant cannot invoke its territorial jurisdiction in a trademark dispute merely because the opponent’s products are accessible on a website from Delhi or because a trademark assignment or registration was executed in Delhi. Actual evidence of sales within Delhi is required to establish jurisdiction.

Factual Background

The dispute arose from a suit filed by Vikrant Chemico Industries Pvt Ltd against Shri Gopal Engineering and Chemical Works Pvt Ltd over competing “doctor” brand phenyl products.

• The plaintiff, established in 1972, claimed rights over “Doctor Brand Phenyle” and “Doctor Brand Germ Troll”, relying on registrations dating back to 1985, as well as a 1999 copyright registration for its packaging artwork.
• It alleged that the defendants launched rival products under “Doctor Hazel’s Brand Phenyle” and “Chemist Brand Germ Troll”, which amounted to infringement and passing off.
• The defendants, however, relied on family business arrangements dating back to 1996 and their own registration of the word mark “Doctor Hazel’s”, arguing that “Doctor” was a common, laudatory term incapable of exclusive appropriation.

Procedural Background

The case came before Justice Amit Bansal, who at the outset found that both parties were Kanpur-based entities with no demonstrated sales in Delhi. Accordingly, there was no basis for invoking the Delhi High Court’s jurisdiction.

Nevertheless, relying on Order XIV Rule 2 of the CPC and the Supreme Court’s ruling in Sathyanath v. Sarojamani (2022), the Court proceeded to address all substantive issues raised.

Contentions and Observations

• Territorial Jurisdiction: The Court held that the defendant’s website was a passive website and that mere accessibility in Delhi does not amount to specific targeting of customers. Similarly, filing or assignment of a trademark in Delhi would not constitute cause of action.
• Evidence Requirements: The Court stressed that concrete evidence of sales within Delhi is necessary to establish jurisdiction.
• Trademark Registrations: Both parties were found to be registered proprietors—the plaintiff for the device mark “Doctor Brand Phenyle” and the defendants for the word mark “Doctor Hazel’s.”

o The Court applied Section 28(3) of the Trade Marks Act, which bars infringement actions when both parties hold valid registrations, unless one registration is rectified.

• Exclusivity over “Doctor”: The Court rejected the plaintiff’s claim of exclusivity over “Doctor,” holding that:

o the registration was for a composite device mark, not the word itself,

o the addition of “Hazel’s” made the defendant’s mark distinguishable, and

o “Doctor” was generic, laudatory, and widely registered by several third parties in Class 5.

• Passing Off and Copyright: The rival products’ packaging was found to be distinct in colour scheme, font, and style, negating claims of passing off or copyright infringement.

Reasoning and Analysis

The ruling underscores that territorial jurisdiction in IP disputes cannot be assumed from mere online presence. Courts will require proof of targeted business activity or sales within the jurisdiction.

It also reiterates that dual trademark registrations bar infringement claims unless rectification is sought, and that generic or laudatory terms like “Doctor” cannot be monopolised.

Implications

• Trademark litigants must provide concrete evidence of jurisdictional sales or targeted marketing.
• The judgment strengthens the principle that valid co-existing registrations protect both parties until one is rectified.
• The decision limits attempts to stretch Delhi High Court’s jurisdiction in IP matters purely based on website accessibility or procedural formalities in Delhi.

Representation

In this case the plaintiff was represented by Mr. Saikrishna Rajagopal, Mr. Nitin Sharma, Mr. Sohrab Mann, Ms. Deepika Pokharia and Mr. Abhinav Bhalla, Advocates. Meanwhile the respondent was represented by Mr. Peeyoosh Kalra and Mr. Yashwant Singh Baghel, Advocates.