Delhi District Court
Tenax S.P.A vs Kapri Stone Products Pvt. Ltd on 5 December, 2025
DLST010014292017
IN THE COURT OF SH. ARUL VARMA,
DISTRICT JUDGE-02, SOUTH DISTRICT, SAKET COURTS
COMPLEX, NEW DELHI
TM No. 8/2017
Filing No. 607/2017
CNR No. DLST01-001429-2017
In the matter of
M/s Tenax India Stone Products Pvt Ltd.
49-A2, Canara Bank Road,
Next to Bharat Tissus,
Bommasandra Industrial Area,
Bangalore-560099 ......Plaintiff
VERSUS
Kapri Stone Products Pvt. Ltd.
5055, 1st Floor, Sirkiwalan
Hauz Qazi
Delhi-110 006 .......Defendant
Date of Institution : 20.02.2017
Date of reserving the judgment : 04.12.2025
Date of Pronouncement : 05.12.2025
Decision : Dismissed
Arul Digitally signed
by Arul Varma
Date: 2025.12.05
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JUDGMENT/ORDER
Index to the Judgment
I. BRIEF FACTS/CASE OF THE PLAINTIFF.................................................3
II. WRITTEN STATEMENT OF DEFENDANTS.............................................7
III. ISSUES FRAMED........................................................................................ 7
IV. EVIDENCE LED BY PARTIES...................................................................8
V. ISSUE WISE ANALYSIS & FINDINGS THERETO..................................10
i. Issue no 1: Whether the plaintiff is the registered owner and prior user
of the trademark "TENAX", if so, its effect?............................................10
ii. Issue no 2: Whether the defendant has infringed the trademark
belonging to the plaintiff by adopting the trademarks "TENAX"
"TENEXO", if so, its effect?.....................................................................10
iii. Issue no 3: Whether the trademarks "TENAX" "TENEXO" being
used by the defendant are deceptively similar or violation of the
intellectual property rights of the plaintiff?..............................................10
iv. Issue no 4: Whether the defendant by its acts, passed off its goods as
those of the plaintiff, and thus violated the plaintiff's common law rights?
.................................................................................................................. 10
v. Issue no 5: Whether this Court has no territorial jurisdiction to
entertain and try the present suit?............................................................14
vi. Issue no 6: Whether no cause of action accrue to the plaintiff to file
the present suit?........................................................................................23
vii. Issue no 7: Whether the plaintiff is entitled to rendition of accounts
and damages?............................................................................................ 23
viii. Issue no 8: Whether the defendant is entitled to damages?...............23
VI. RELIEF........................................................................................................24
Arul Digitally signed
by Arul Varma
Date: 2025.12.05
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TENAX S.P.A. Vs KAPRI STONE PRODUCTS PVT. LTD.
I. BRIEF FACTS/CASE OF THE PLAINTIFF
1. The facts as asseverated by the Plaintiff are hereby succinctly
recapitulated: That the present suit was instituted by the
plaintiff's predecessor namely TENAX SPA Viale I, Maggio
226/263, 370-Volargne (Verona), Italy. During the course of
the proceedings, TENAX SPA, assigned and transferred all its
rights, interest and goodwill in and to the Trade Marks/Labels
which includes copyright in the artworks thereof to the
plaintiff M/s Tenax India Stone Products Private Limited, 49-
A2, Canara Bank Road, next to Bharat Tissus, Bommasandra
Industrial Area, Bangalore-560099, vide Deed of Assignment
of Trademarks dated 20.03.2020.
2. It was alleged that Mr. Sachin Sharma is the constituted
attorney and authorized signatory of the Plaintiff Company,
and that he is aware of the facts and circumstances of this
case. He is duly authorized to prosecute the present suit on
behalf of the plaintiff including to sign and verify the
pleadings, applications, depose to its facts, swear the
affidavits etc, therein, tender evidence and do all other acts
for the conduct of the present proceedings vide resolution
passed in his favour.
3. It was further alleged that by virtue of the said Assignment,
plaintiff is the owner and proprietor of the subject matter
trademarks/labels and copyright in the artwork thereof and
goodwill acquired therein.
Digitally signed
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Date:
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4. It was stated that the plaintiff is engaged in the business of
manufacture & trade of adhesives and which business it
commenced as early as in 1960s. In the 1960s the plaintiff
began producing products specifically catered for marble. The
plaintiff's products of manufacture and trade increased
steadily over the past 50 years which include but are not
limited to industrial glue and adhesives, stone adhesives,
natural resins, corrosion inhibitors, coatings (paints), polish,
polishing wax, detergents, resins and construction materials.
5. It was further stated that the Plaintiff is the proprietor of its -
(i) celebrated and world renowned trademark TENAX word
per se, stylized, artistic, formative; (ii) trade name of which
the word/mark TENAX is forming a material part and, (iii)
domain name www.tenax.it which bears the word/mark
TENAX as its essential part, openly, exclusively and to the
exclusion of others, uninterruptedly and in the course of trade
and as proprietor thereof being using his said trade mark in
relation to its said goods and business and carrying on its said
goods and business there under and has built up a worldwide
and globally valuable trade, goodwill and reputation there
under and acquired proprietary rights therein.
6. It was contended that the plaintiff over the period of time
expanded the use of his said Trade Mark/trade dress in
relation to its said goods & business to cover more and more
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countries across the globe and more and more goods forming
part of its said goods and business.
7. It was brought to the fore that the plaintiff has offices in five
continents and is a world leader in its industry and has a
massive online presence and its website under the said
domain name has global reach and accessibility including in
India and over which the plaintiff has been carrying on its
said goods & business worldwide.
8. The plaintiff's trade mark TENAX is duly registered in India
under the Trade Marks Act, 1999 and that the said
registrations are legal, valid, renewed and subsisting and in
full force and therefore the plaintiff has exclusive rights to
inter alia use and exploit its said registered trademarks within
the meaning of Section 28 and 29 of the Trade Marks Act,
1999 and to interfere with any rival third party unauthorized
use/application thereof.
9. The plaintiff's TENAX artistic trademark was duly registered
under International Registration No. 1297031 with the
International Bureau (WIPO) under Madrid Protocol and its
Indian fraction application has been made in the Indian Trade
Mark Registry under the TM Act and therefore the plaintiff's
trade mark TENAX is duly registered or pending registration
in all major countries of the world and across all continents.
10. It was alleged that the the defendant is a company
incorporated under the Indian Companies Act, and is engaged
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in the business of manufacture, trade and distribution of tiles
adhesive and grouts, waterproofing chemicals adhesives,
synthetic resin adhesives for domestic, tiles adhesive
industrial purpose and related goods and offering services in
connection therewith.
11.It was brought to the fore that the defendant in the year 2012
entered into a business collaboration with the plaintiff to
distribute, market and sell the plaintiff's said goods under the
plaintiff's said TENAX trademark, trade dress and copyrights.
The defendant entered into the said arrangement with the
plaintiff having regard to the plaintiff's rights, excellent
goodwill and standing of the said products and the said
trademark, copyright and trade dress.
12.It was also alleged that prior, during and post to the said
arrangement numerous correspondences were effected
between the plaintiff and the defendant but subsequently this
arrangement ran into rough weather due to inter alia the
defendants' willful default in nonpayment of moneys due to
the plaintiff and thus plaintiff addressed a letter dated
08.06.2015 upon the defendant.
13. It was alleged that the said distribution/collaboration between
the plaintiff and the defendant ceased in about the year 2016.
Thereafter, and in or about mid year 2016 the plaintiff got to
know through the market and trade that the defendant without
the plaintiff's leave and license has in relation to its impugned
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goods adopted and started using in the course of trade inter
alia the trade mark TENAX and TENEXO.
14.Hence the plaintiff filed the present suit u/s 134 and 135 of
the Trade Marks Act, 1999 and Section 51 and 55 of the
Copyrights Act, 1957 seeking permanent injunction to restrain
infringement and passing off qua the trade marks of the
plaintiff by the defendant.
II. WRITTEN STATEMENT OF DEFENDANTS
15.As per the record, summons were issued to the defendant on
25.02.2017. Written statement was filed on behalf of the
defendant on 11.05.2017 wherein they denied the allegations
as mentioned in the plaint. Vide order dated 06.03.2017,
defendant proceeded against ex-parte.
16.During the proceedings, defendant also filed an application
under Order XXXIX Rule 4 CPC. The said application was
dismissed in default for non-prosecution on 05.12.2025, as
the defendant did not appear for several dates.
On 30.01.2020, plaintiff's evidence was concluded and matter
was listed for final arguments.
III. ISSUES FRAMED
17.Vide order dated 25.04.2019 following issues were framed:-
1. Whether the plaintiff is the registered owner and
prior user of the trademark "TENAX", if so, its effect?
OPP Digitally signed
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Date:
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2. Whether the defendant has infringed the trademark
belonging to the plaintiff by adopting the trademarks
"TENAX" "TENEXO", if so, its effect? OPD
3. Whether the trademarks "TENAX" "TENEXO"
being used by the defendant are deceptively similar or
violation of the intellectual property rights of the
plaintiff? OPP
4. Whether the defendant by its acts, passed off its
goods as those of the plaintiff, and thus violated the
plaintiff's common law rights? OPP
5. Whether this Court has no territorial jurisdiction to
entertain and try the present suit? OPD
6. Whether no cause of action accrue to the plaintiff to
file the present suit? OPD
7. Whether the plaintiff is entitled to the rendition of
accounts and damages? OPP
8. Whether the defendant is entitled to damages? OPD
9. Relief
IV. EVIDENCE LED BY PARTIES
18. In the proceeding only one witness was examined, succinct
testimony whereof is as follows:
19. PW-1 Ms Meena Bansal: She tendered her evidence by way
of affidavit as Ex. PW-1/A. She relied upon certain
documents i.e. Representation of the trade mark/label of the
plaintiff as Ex.PW1/1, representation/photographs of
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defendant's impugned trademark [screenshot and photograph]
as Ex.PW1/2, list of plaintiff's registered trademark in India is
Mark A; registration certificates, and renewal communication
of plaintiff's registered trademarks/labels in India downloaded
from www.ipindia.nic.in as Ex.PW1/3, documents related to
plaintiff's products and brands as Ex.PW1/4 Documents
related to plaintiff's participation in exhibitions etc and
documents related to plaintiff's membership in All India
Granites & Stone Association and related documents as
Ex.PW1/5, invoices/Bills related to the sales of plaintiff's
products as Ex.PW1/6, documents related to the presence of
plaintiff's products on internet and sales/soliciting through e-
commerce/online markets and on magazines etc as Ex.PW1/7
documents related to plaintiff's trademark registration in
different countries, WIPO etc as Ex.PW1/8, status of
plaintiff's protection granted application under no.
IRDI-3407016 as Ex.PW1/9, status of defendant's impugned
trademark application as Ex.PW1/10, notice of opposition
filed by the plaintiff in Trade Marks office etc as Ex.PW1/11,
copy of legal notice dated 16.11.2016 issued to the defendant
by the plaintiff as Ex.PW1/12, reply of defendant to plaintiff's
legal notice as Ex.PW1/13, copy of letter of the plaintiff dated
17.11.2012 sent to the defendant as Ex.PW1/14, copy of letter
of the plaintiff dated 14.5.2013 sent to the defendant as
Ex.PW1/15, invoices showing the defendant purchased the
Digitally signed
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products from the plaintiff as Ex.PW1/16, copy of letter of the
plaintiff dated 8.6.2015 sent to the defendant to settle the past
due account as Ex. PW1/17, resolution-cum-authority in her
favour as Ex.PW1/18, report of Local Commission as
Ex.PW1/19, and Affidavit U/s 65B as Ex. PW1/20 bearing
signatures of deponent at point A & B. Plaintiff did not
examine any other witness in its evidence. PE was closed vide
order dated 30.01.2020. Thereafter, the matter was fixed for
final arguments. Final arguments were heard at length.
V. ISSUE WISE ANALYSIS & FINDINGS THERETO
i. Issue no 1: Whether the plaintiff is the registered owner
and prior user of the trademark "TENAX", if so, its effect?
ii. Issue no 2: Whether the defendant has infringed the
trademark belonging to the plaintiff by adopting the trademarks
"TENAX" "TENEXO", if so, its effect?
iii. Issue no 3: Whether the trademarks "TENAX"
"TENEXO" being used by the defendant are deceptively similar
or violation of the intellectual property rights of the plaintiff?
iv. Issue no 4: Whether the defendant by its acts, passed off
its goods as those of the plaintiff, and thus violated the
plaintiff's common law rights?
20. The above four issues are being dealt with collectively.
Arul Digitally signed
by Arul Varma
Date: 2025.12.05
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REGISTRATION OF TRADE MARK
21.At the first instance, the Plaintiff is required to establish its
proprietary rights qua the trade marks in question. In this
regard, the plaintiff adduced certificates of trade mark
registrations/labels in India downloaded from
www.ipindia.nic.in as Ex PW1/3. PW-1 Ms Meena Bansal
deposed before this Court on 04.10.2019, and proved the
plaintiff's certified copy of Registration Certificate of Trade
Mark no 1202700 under Class 1 as Ex PW1/3. This certificate
would make it abundantly explicit that the Plaintiff had its
trade marks inter alia TENAX duly registered.
EFFECT OF REGISTRATION
22. Thus, a right accrued in the Plaintiff to institute a suit for
injunction to restrain the Defendant from manufacturing,
storing and selling the counterfeit products bearing its trade
mark. Such a right also extends to defend cases of malicious
prosecution initiated or sought to be initiated against the
plaintiff qua the registered trade mark. Section 28 of the
Trademarks Act, 1999 clarifies that the valid registration of a
trademark shall confer on the registered owner of the
trademark exclusive right to use the trademark in relation to
the goods or services in respect of which the trademark is
registered. The Section further empowers the owner of the
trademark to obtain relief in respect of infringement of
trademark in the matter provided under the Act. Section 134
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of the Act provides the remedy of filing a suit for
infringement of a trademark while Section 135 of the Act
describes the relief which may be granted in a suit for
infringement or passing off the trademark.
INFRINGEMENT
23. Section 29 of the Act defines the meaning of infringement of
a registered trademark. It provides that a registered trademark
is infringed by a person, who, not being a registered
proprietor or a person using by way of permitted use, uses in
the course of trade, a mark which is identical with or
deceptively similar to, the trademark in relation to goods or
services in respect of which the trademark is registered and in
such manner as to render the use of the mark likely to be
taken as being used as a trademark. Sub-Section (2) of
Section 29 of the Act further clarifies that a trademark is
infringed by using a mark which is identical or similar with
the registered trademark to an extent that it is likely to cause
confusion on the part of public that it has an association with
the registered trademark. Sub-Section (3) of Section 29 of the
Act provides a presumption in respect of a marks that is likely
to create confusion on the part of the public on account of its
identity with the registered trademark and the identity of
goods or services covered by such registered trademark.
24. In Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022)
5 SCC 1, the law qua infringement was expounded asDigitallythus:
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"The legislative scheme is clear that when the
mark of the defendant is identical with the
registered trade mark of the plaintiff and the goods
or services covered are similar to the ones covered
by such registered trade mark, it may be necessary
to prove that it is likely to cause confusion on the
part of the public, or which is likely to have an
association with the registered trade mark.
Similarly, when the trade mark of the plaintiff is
similar to the registered trade mark of the
defendant and the goods or services covered by
such registered trade mark are identical or similar
to the goods or services covered by such registered
trade mark, it may again be necessary to establish
that it is likely to cause confusion on the part of
the public. However, when the trade mark of the
defendant is identical with the registered trade
mark of the plaintiff and that the goods or services
of the defendant are identical with the goods or
services covered by registered trade mark, the
Court shall presume that it is likely to cause
confusion on the part of the public"
25.The likelihood of confusion or deception amongst the
consuming public is a sine qua non element in an action for
infringement or passing off. The degree of deception cannot
be established by laying down any objective standards.
26.The deception has necessarily to be ascertained by a
comparison of the two marks. The resemblance may be
phonetic, visual or in the basic idea represented by the
plaintiff's mark. (see Pernod Ricard India Pvt Ltd. v
Karanveer Singh Chhabra 2025 SCC OnLine SC 1701) The
purpose of the comparison is for determining whether the
essential features of the plaintiff's trade mark are to be found
Digitally signed
in the products used by the defendant. Arul by Arul Varma
Date:
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27. Now, coming to the aspect whether the plaintiff has infringed
the trademark of the defendants. This Court has perused the
representation/photographs of the defendant's impugned trade
mark i.e. Ex PW1/2 (colly) and compared it with the
representation of the trade marks/label of the plaintiff as Ex
PW1/1 (colly).
28.A close scrutiny thereof, specifically the defendant's choice of
typography for these marks, coupled with adoption of a trade
dress identical to that of the plaintiff's products, leads to an
inference of the goods of the defendants being counterfeit.
The trade mark TENAX has a distinct font, which is in blue
letters with a red background which has been blatantly and
brazenly copied by the defendant.The similarity is
pronounced. Despite the lawful registration of the trade marks
of the Plaintiff, the defendant employed these marks in
respect of identical goods as the plaintiff's, thereby leaving no
opportunity to the hoi polloi, the consumers, to make a
discernment, or an informed choice.
29.Therefore, issue no (i), (ii), (iii) and (iv) are decided in favour
of plaintiff and against the defendant.
v. Issue no 5: Whether this Court has no territorial
jurisdiction to entertain and try the present suit?
30. Ld. counsel contended that this Court has the requisite
jurisdiction to entertain the present Suit. Ld. counsel
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contended that (a) the plaintiff carries on business within the
jurisdiction of South Delhi (b) the defendant carries on
business within the jurisdiction of South Delhi (c) cause of
action took place in South Delhi, even though no goods were
physically purchased or delivered from South Delhi and even
if the plaintiff or defendant do not have a registered office or
shop/ showroom in South Delhi.
31.She contended that the jurisdiction is evoked on the basis of
the websites of the plaintiff i.e. www.tenax.it and website of
defendant namely www.kapristone.com. She further
contended that websites of the plaintiff and defendant are
accessible directly from South Delhi. She further submits that
through indiamart.com, tradeindia.com, the goods of the
defendant were solicited and advertised. She further submits
that through indiamart.com, alibaba.com and chinametal.com,
the goods of the plaintiff were solicited and advertised. She
lastly submits that since the websites of the plaintiff and
defendant, either directly or through third party websites, are
accessible from South Delhi, this Court has the requisite
jurisdiction.
32.To substantiate her contentions, she placed reliance on:
(a) M/s. Goldmedal Electricals Pvt. Ltd. vs. Vikram Kumar
Jain Proprietor of Sunlight Electricals & Ors. in FAO
(COMM) 141/2025 dated 23.05.2025 passed by Hon'ble
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High Court of Delhi. Relevant extract is reproduced as
follows:
"14. The Court has, therefore, acknowledged the fact that, with
the proliferation of e-commerce websites, much of trade in
consumer goods takes place across the internet. The scope and
ambit of territorial jurisdiction has been widened to a point
where the Court has held that if a website is interactive, and
enables a consumer to interact with the defendants across the
website, that by itself would constitute meaningful exploitation
by the defendant, of territorial jurisdiction of all Courts within
whose jurisdiction that website is accessible. Actual sale of the
product across the website is not now treated as an indispensible
sine qua non for territorial jurisdiction to be invoked."
(b) World Wrestling Entertainment, Inc. vs. Reshma
Collection, MANU/DE/2597/2014 passed by Hon'ble
High Court of Delhi. Relevant extract is reproduced as
follows:
"23. Let us now apply these principles to the type of
transaction over the internet, which we have explained above.
The website of the appellant/ plaintiff refers to various goods
and services. It is not an offer but an invitation to an offer, just
as a menu in a restaurant. The invitation, if accepted by a
customer in Delhi, becomes an offer made by the customer in
Delhi for purchasing the goods "advertised" on the website of
the appellant/ plaintiff. When, through the mode of the software
and the browser, the transaction is confirmed and payment is
made to the appellant/ plaintiff through its website, the
appellant/ plaintiff accepts the offer of the customer at Delhi.
Since the transaction between the two takes place
instantaneously, the acceptance by the appellant/ plaintiff is
instantaneously communicated to its customer through the
internet at Delhi. Therefore, in such a case, part of the cause of
action would arise in Delhi."
(c) Diamond Modular Pvt. Ltd. vs. Vikash Kumar & Anr.
bearing RFA no. 166/2025 dated 05.05.2025 passed by
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Hon'ble High Court of Delhi. Relevant extract is
reproduced as follows:
"6.11 Moreover, even applying the law laid down by the
Division Bench of this Court in World Wrestling Entertainment,
Inc. v Reshma Collection6, as the appellant's website was
interactive and could be accessed by any party within the
jurisdiction of the Saket District Court, the suit must be held to
have been competently instituted within the said jurisdiction."
(d) Burger King Corporation vs. Techchand Shewakramani
and Ors., MANU/DE/3133/2018 passed by Hon'ble High
Court of Delhi. Relevant extract is reproduced as follows:
"21. Thus, jurisdiction of a Court in a trade mark action, could
be invoked where there is use upon or in relation to goods. The
phrase `in relation to‟ has been interpreted to include
advertising, promotion, publicity, etc. Thus, in addition to actual
sale of goods and providing services, if a person advertises his
or her business under the mark in a territory, promotes his or her
business under the mark in a territory or for example invites
franchisee queries from a particular territory, sources goods
from a particular territory, manufactures goods in a particular
territory, assembles goods in a particular territory, undertakes
printing of packaging in a particular territory, exports goods
from a particular territory, it would constitute `use of a mark'."
(e) Suman Devi and Anr. vs. Rakesh Kumar Sharma in FAO
(COMM) 189/2025 dated 25.07.2025 passed by Hon'ble
High Court of Delhi. Relevant extract is reproduced as
follows:
"15.6 As the law stands today, therefore, the position is that
(i) Section 134 of the Trade Marks Act provides an additional
forum where the defendant can be sued, which would be any
Court within whose jurisdiction the plaintiff resides or carries on
business, subject to the plaintiff not misusing this liberty as
noted in Indian Performing Rights Society and (ii) in the e-
commerce regime, any Court, within whose territorial
jurisdiction the website of the plaintiff can be accessed, would
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be regarded as a Court within whose jurisdiction the plaintiff
"carries on business" and would, therefore, be competent to try
the infringement suit instituted by the plaintiff. This position is,
however, applicable only to infringement suits, and not to suits
which are solely for passing off, as Section 134 covers only
infringement actions."
(f) Kohinoor Seed Fields India Pvt. Ltd. vs. Veda Seed
Sciences Pvt. Ltd. in FAO (OS) (COMM) 66/2025 dated
03.12.2025 passed by Hon'ble High Court of Delhi.
Relevant extract is reproduced as follows:
"19.5 The decision in World Wrestling Entertainment
19.5.1 Banyan Tree Holding was, however, subsequently diluted
to an extent by the judgment of the Division Bench of this Court
in World Wrestling Entertainment.
19.5.2 World Wrestling Entertainment was a case which
involved Section 134 of the Trade Marks Act. The plaintiff
World Wide Wrestling Entertainment28 sought to invoke the
jurisdiction of this Court on the ground that it "carried on
business" within the jurisdiction of this Court. In other words,
WWE pressed into service Section 134(2) of the Trade Marks
Act. Banyan Tree Holding was cited against the stand of the
WWE.
19.5.3 The Division Bench proceeded to answer this issue thus :
"23. Let us now apply these principles to the type of
transaction over the internet, which we have explained
above. The website of the appellant/plaintiff refers to various
goods and services. It is not an offer but an invitation to an
offer, just as a menu in a restaurant. The invitation, if
accepted by a customer in Delhi, becomes an offer made by
the customer in Delhi for purchasing the goods "advertised"
on the website of the appellant/plaintiff. When, through the
mode of the software and the browser, the transaction is
confirmed and payment is made to the appellant/plaintiff
through its website, the appellant/plaintiff accepts the offer
of the customer at Delhi. Since the transaction between the
two takes place instantaneously, the acceptance by the
appellant/plaintiff is instantaneously communicated to its
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customer through the internet at Delhi. Therefore, in such a
case, part of the cause of action would arise in Delhi.
21.29 But, we are not concerned with the question of cause
of action between the appellant/plaintiff and its customers in
Delhi because the defendants are not such customers and
they are, in any event, all residents of Mumbai. What we are
examining is whether the third condition specified in
Dhodha House (supra) is satisfied or not. In other words, if
the contracts and/or transactions entered into between the
appellant/plaintiff on the one hand and its customers are
being concluded in Delhi, can it not be said that the essential
part of the business of the appellant/plaintiff, insofar as its
transactions with customers in Delhi are concerned, takes
place in Delhi? The offers are made by customers at Delhi.
The offers are subject to confirmation/acceptance of the
appellant/plaintiff through its website. The money would
emanate or be paid from Delhi. Can it not then be considered
that the appellant/plaintiff is, to a certain extent, carrying on
business at Delhi? In our view, it would be so. Because of
the advancements in technology and the rapid growth of new
models of conducting business over the internet, it is
possible for an entity to have a virtual presence in a place
which is located at a distance from the place where it has a
physical presence. The availability of transactions through
the website at a particular place is virtually the same thing as
a seller having shops in that place in the physical world. Let
us assume for the sake of argument that the
appellant/plaintiff had a shop in Delhi from where it sold its
various goods and services. In that case, it could not be
denied that the plaintiff carried on business in Delhi. This is
apart from the fact that the appellant/plaintiff may also have
been regarded as having voluntarily resided in Delhi. When
the shop in the 'physical sense' is replaced by the 'virtual'
shop because of the advancement of technology, in our view,
it cannot be said that the appellant/plaintiff would not carry
on business in Delhi.
22. Therefore, in our view, although the learned Single Judge
had made a correct reference to the decision of the Supreme
Court in the case of Bhagwan Goverdhandas Kedia
(supra)30, the full ramifications of that decision were not
perceived by him. When the two decisions of the Supreme
Court in Bhagwan Goverdhandas Kedia (supra) and Dhodha
House (supra) are considered in the manner indicated above,
it would appear that, on the averments made by the
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appellant/plaintiff in the plaint, the Delhi High court would,
on a demurrer, have jurisdiction to entertain the suit
inasmuch as the appellant/plaintiff would be regarded as
carrying on business in Delhi within the meaning of the
expression under Section 134(2) of the Trademarks Act,
1999 and Section 62(2) of the Copyright Act, 1957.
Consequently, the learned Single Judge ought not to have
returned the plaint under Order 7 Rule 10 CPC. As a result,
the impugned order is set aside and the suit is restored to its
original number and the same be placed before the Roster
Bench for further steps therein on 28.10.2014, in the first
instance. This, however, would not preclude the defendants
from raising the plea of jurisdiction on facts which, if raised,
could be considered by the court based on the evidence and
upon the law explained above. The appeal is allowed, as
above."
19.5.4 The existence of a website of the plaintiff, over which a
commercial transaction could be concluded was, therefore,
regarded by the Division Bench in World Wrestling
Entertainment as sufficient to amount to "carrying on a
business" by WWE within the jurisdiction of this Court. The
actual conclusion of a transaction was, therefore, no longer
indispensable, after World Wrestling Entertainment.
19.5.5 World Wrestling Entertainment undoubtedly is not an
authority for understanding the expression "cause of action" as
contained in Section 20(c) of the CPC. However, it is an
authority for the understanding of the expression "carries on
business" in an era in which business is considerably carried on
over e-commerce websites. The Division Bench has held, in
World Wrestling Entertainment, that, even if the website of the
plaintiff was interactive and one over which a commercial
transaction could be concluded, that would suffice to constitute
"carrying on of business by the plaintiff", as, in the e-commerce
universe, every place where the website of an entity would be
accessible for the purpose of concluding a commercial
transaction would amount to a place where the entity has a
market place. If, therefore, WWE had a website over which
commercial transactions could be concluded at Delhi, it was
equivalent to WWE having a brick and mortar store in Delhi,
resulting in this Court having territorial jurisdiction in the
matter. Thus, the requirement of actual concluding of a
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commercial transaction over the website stands diluted in World
Wrestling Entertainment."
33. Ld. counsel for plaintiff has contended that the factum of the
defendant carrying out activities through the interactive
website, has been averred in the amended plaint, which was
taken on record on 10.02.2021. Thus, Ld. counsel contended
that in view of the aforementioned verdicts as well as
categorical averments in the plaint that website of defendant
was accessible within the jurisdiction of Delhi, this Court has
the requisite jurisdiction to entertain the matter. Submissions
heard.
34. All the abovementioned judgments, with due deference, are
not applicable to the facts of the present case. The verdict
Kohinoor Seed Fields India Pvt. Ltd. (Supra) was a matter
pertaining to an interim application moved u/o VII rule 10
CPC at a preliminary stage. Further, even Burger King
Corporation (Supra) was a judgment emanating out of issue
decided qua an application u/o VII rule 10 CPC. Further,
M/s. Goldmedal Electricals Pvt. Ltd. (Supra) and Suman Devi
and Anr. (Supra) were also the orders passed qua applications
moved u/o XXXIX rule 1 & 2 CPC.
35. Thus, barring Diamond Modular Pvt. Ltd. (Supra), the other
judgments were rendered at a preliminary stage. At this
juncture, it would be pertinent to produce the following
extract of Diamond Modular Pvt. Ltd. (Supra) : Digitally signed
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6.8 Apropos the aspect of jurisdiction, as noted above, Mr. Bansal
has drawn our attention to the series of correspondence of the
appellant's representative, situated within the jurisdiction of the
Saket District Court and the respondents, captured in the screenshots
contained in the paragraphs from the evidence of PW-1 extracted in para 4 supra. The said correspondence has gone un-rebutted, as it was proved by the representative of the appellant deposing as PW-1, and he was never subjected to cross-examination. 6.9 As such, the evidence on record indicates that the respondents agreed to supply goods to customers situated within the jurisdiction of the Saket District Court.
6.11 Moreover, even applying the law laid down by the Division Bench of this Court in World Wrestling Entertainment, Inc. v Reshma Collection6, as the appellant's website was interactive and could be accessed by any party within the jurisdiction of the Saket District Court, the suit must be held to have been competently instituted within the said jurisdiction.
36. A perusal of the above makes it abundantly explicit that the appellant had led evidence of one Sh. Piyush Gupta as PW-1, who deposed on oath that inter alia the defendants were operating via their websites which are interactive in nature and wherein impugned products were promoted and offered for sale. The witness also proved screenshots of various impugned products bearing impugned trademark of the plaintiff. The witness also proved screenshots of their operating websites. Significantly, para 27 of the affidavit, which is contained in para 4 of Diamond Modular Pvt. Ltd. (Supra), makes it explicit that the plaintiff had approached the defendants over Whatsapp, and the defendants had agreed to deliver impugned goods at an address in South Delhi. It is in this context that jurisdiction of South Delhi was made out.
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Further, a series of correspondences of appellant's representative situated within the jurisdiction of Saket District Court, and the respondents, captured in the screenshot, were also adduced in evidence.
37. However, in the present case barring a mere averment in the plaint, the plaintiff has been unable to establish, by leading cogent evidence that the websites were interactive in nature or that any transaction, even through not concluded, was entered into within the jurisdiction of South Delhi.
38. The plaintiff also did not lead any evidence to prove that the website of the plaintiff was one where a commercial transaction could be concluded so as to come within the ambit of the term 'carries on business' within the jurisdiction of this Court. Even the local commissioner's report filed on 08.03.2017 found that infringed goods were found in Hauz Khazi, which is also beyond the jurisdiction of this Court. Mere bland averments in the plaint cannot enure to the benefit of the plaintiff sans cogent proof, which ought to have been adduced by way of evidence, which admittedly has not been done so in the present case.
39. Accordingly, the issue no. 5 is decided against the plaintiff.
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vi. Issue no 6: Whether no cause of action accrue to the plaintiff to file the present suit?
vii. Issue no 7: Whether the plaintiff is entitled to rendition of accounts and damages?
viii. Issue no 8: Whether the defendant is entitled to damages?
40. Since the onus of proof qua the above issues was on the defendant, and the defendant was proceeded ex-parte, the said issues are decided against the defendant.
VI. RELIEF.
41. In view of the aforesaid finding given qua issue no. 5, whereby it has been held that this Court does not have the requisite jurisdiction, the plaint is hereby dismissed. No order as to costs.
42. Decree sheet be prepared accordingly.
43. File be consigned to record room after due compliance. Pronounced in the open Court Arul Digitally signed by Arul Varma on this 5th December, 2025.
Varma Date: 2025.12.05 17:58:19 +0530 (ARUL VARMA) DISTRICT JUDGE-02/SOUTH, SAKET COURTS/NEW DELHI TM 8/17 Page. 24 of 24 TENAX S.P.A. Vs KAPRI STONE PRODUCTS PVT. LTD.