Delhi High Court
Eih Ltd. & Anr vs Sahana Realty Pvt. Ltd. & Ors on 5 July, 2018
Equivalent citations: AIRONLINE 2018 DEL 707
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 5th July, 2018
+ CS(COMM) No.90/2017
EIH LTD. & ANR. .... Plaintiff
Through: Mr. Pravin Anand, Mr. Aditya Gupta
and Mr. Utkarsh Srivastava, Advs.
Versus
SAHANA REALTY PVT. LTD. & ORS. ......Defendants
Through: Mr. Rajiv Nayar, Sr. Adv. with Mr.
Vinod Bhagat and Ms. Richa Singh,
Advs. for D-1 to 4.
Mr. Sudhir Chandra, Sr. Adv. with
Ms. Nidhima Sareen and Ms. Rashmi
Singh, Advs. for D-1 & 8.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.2804/2017 and IA No.5196/2017 (of the defendants no.2 to 4 and
of the defendant no.8, both under Order VII Rule 10 of the Code of
Civil Procedure, 1908)
1. The two plaintiffs, viz. EIH Ltd. and Oberoi Hotels Pvt. Ltd.,
instituted this suit for permanent injunction restraining infringement of
trade mark, passing off, dilution and damages etc., against defendants no.1
to 7 viz. (i) Sahana Realty Pvt. Ltd., (ii) Vikas Oberoi, (iii) Oberoi Realty
Ltd., (iv) Oberoi Construction Ltd., (v) Magic Homes India Pvt. Ltd., (vi)
Smart Deal & Investment Pvt. Ltd., and, (vii) Shree Nath Estate, pleading
that (a) the two plaintiffs belong to the 'Oberoi Group of Companies' which
operates 30 luxury hotels across six countries under the luxury brand
CS(COMM) No.90/2017 Page 1 of 22
'Oberoi' and the 5-star brand 'Trident'; (b) the 'Oberoi Group' is also
engaged in flight catering, airport restaurants, hotel management training,
serviced apartments, travel and tour services, car rentals and project
management services; (c) defendants no.1 to 4 are real estate developers,
based in Mumbai, engaged in construction projects primarily in residential
sector; (d) defendant no.1, in collaboration with defendants no.2 to 4, is
developing and promoting the impugned property under the marks
'THREE SIXTY WEST' and 'OBEROI THREE SIXTY WEST'; (e)
defendants no.5 to 7 are real estate brokers / agents who are advertising and
offering for sale the defendants' impugned property under the marks
'OBEROI THREE SIXTY WEST' and 'THREE SIXTY WEST BY
OBEROI' and other such variants; (f) CS(OS) No.892/2005 earlier
instituted by the plaintiffs in this Court against defendants no.2 to 4 and
their associated companies was decreed pursuant to mutual settlement; (g)
the plaintiffs are the registered proprietor of the word mark 'Oberoi'; (h) the
plaintiffs have been using the marks 'threesixtyo' and 'threesixtyone' for
their restaurants which operate within the plaintiffs' Oberoi Hotels and
other allied services in the hospitality sector; and, (i) defendants' use of the
mark 'THREE SIXTY WEST' for their hotel-cum-residential project
infringes the plaintiffs' statutory rights in the marks 'threesixtyo' and
'threesixtyone' and use by the defendants of 'OBEROI' in conjunction with
'THREE SIXTY' infringes the plaintiffs' rights in the trade mark
'OBEROI'
Relief, of permanent injunction restraining the defendants from using
the impugned mark 'THREE SIXTY WEST', standalone and / or in
conjunction with the trade mark 'OBEROI' or any other trade mark
CS(COMM) No.90/2017 Page 2 of 22
identical or deceptively similar to the trade marks 'threesixtyo' and
'threesixtyone', including as trade mark, trade name, is sought in the suit
besides ancillary reliefs.
2. The plaintiff has invoked the territorial jurisdiction of this Court by
pleading as under:
―52. This Hon'ble Court has the necessary territorial
jurisdiction to try and entertain the present suit based on the
following:
a. Under Section 20(c) of the Code of Civil Procedure, 1908
since the cause of action has arisen within the territory of
this Hon'ble Court since the Plaintiffs' consumers within
the jurisdiction of this Hon'ble Court have sent enquiries to
the Plaintiffs regarding the association / connection /
affiliation of the Defendants' OBEROI THREE SIXTY
project with the Plaintiffs, evidencing the consumer
confusion that is being caused to consumers in Delhi owing
to the Defendants' infringing activities. Confusion amongst
customers is an integral part of the cause of action in the
present suit and the same has arisen within the territorial
jurisdiction of this Hon'ble Court. A copy of one such
enquiry received through letter dated January 3, 2017 is
being filed herewith.
b. Under Section 20(c) of the Code of Civil Procedure since a
substantial and integral part of the cause of action has
arisen within the territorial jurisdiction of this Hon'ble
Court. The Plaintiffs' restaurants under mark threesixtyo
and threesixtyone, being located in Delhi and in Gurgaon
respectively have been providing services to customers
within the territorial jurisdiction of this Hon'ble Court
since their inception over a decade ago. The focal point
and the origin of the enormous and widespread reputation
garnered by the Plaintiffs is in Delhi and the very
foundation of the Plaintiffs' rights in these trademarks,
which forms an integral part of the cause of action in the
CS(COMM) No.90/2017 Page 3 of 22
present suit, is in Delhi. Further, the Plaintiff's trademark
registrations which are being infringed by the Defendants
in the present case were applied for, examined and granted
in Delhi by the Trademark office within Delhi. The
acquisition of reputation and goodwill and the registration
of the Plaintiff's trademarks both form an integral and
substantial part of the bundle of facts which give rise to the
cause of action in the present suit. This Hon'ble Court has
territorial jurisdiction on this ground alone, especially by
virtue of the decision of the Division Bench of this Hon'ble
Court in Music Broadcast Ltd. v. Axis Bank, FAO(OS)
No.65 of 2016.
c. Under the provisions of Section 134 (2) of the Trademarks
Act, 1999 as the Plaintiffs, being the registered proprietors
of the trademarks OBEROI, threesixtyo and threesixtyone,
are carrying on business within the territorial limits of this
Hon'ble Court under the marks Threesixtyo and
Threesixtyone through its principal place of business and
its corporate office at 7, Sham Nath Marg, New Delhi-
110054.
d. Under the provisions of Section 134(2) of the Trademarks
Act, 1999 as the Plaintiffs, being the registered proprietors
of the trademarks OBEROI, threesixtyo and threesixtyone
have their principal place of business and their main
corporate office within the territorial jurisdiction of this
Hon'ble Court.
e. Under Section 20 of the Code of Civil Procedure, 1908 as
the Defendants' hotel and residential project is being
marketed and publicized through highly interactive various
brokerage websites which can be accessed within the
territorial jurisdiction of this Hon'ble Court and through
which bookings can be made of the Defendants' hotel cum
residential property. These brokerage websites specifically
target customers in Delhi. Further, since the Defendants
have significant business interest in Delhi and are believed
to have customers/apartment owners in Delhi, it is verily
believed that the Defendants have promoted or have sent
CS(COMM) No.90/2017 Page 4 of 22
invitations to customers in Delhi with respect to their
impugned project. Thus, the cause of action arises within
the jurisdiction of this Hon'ble Court.
f. Under Section 20 of the Code of Civil Procedure, 1908 as
the Defendants' hotel cum residential project is bound to be
heavily advertised and promoted within New Delhi which
given the large number of travellers, including business
travellers, between New Delhi and Mumbai. The
Defendants' hotel cum residential project, once launched,
is bound to host large number of guests from New Delhi
who are bound to be confused owing to the Defendants' use
of the impugned marks. Thus a substantial part of the
cause of action has arisen and is bound to arise within the
territorial jurisdiction of this Hon'ble Court;‖
3. The suit was entertained and summons thereof ordered to be issued
vide order dated 3rd February, 2017, though no ex parte relief sought,
granted.
4. The counsel for the defendants no.1 to 4, on 9th February, 2017
informed that M/s Oasis Realty, a partnership of defendant no.1 and
defendant no.3, is the developer of the property, the mark with respect
whereto is the subject matter of the present suit and on the oral request of
the counsel for the plaintiffs, the said M/s Oasis Realty was impleaded as
defendant no.8 to the suit.
5. Pleadings have been completed and the defendants no.2 to 4 and the
defendant no.8 have filed these applications under Order VII Rule 10 of the
Code of Civil Procedure, 1908 (CPC) pleading that (i) defendants no.2 to 4
are conducting their construction business from Mumbai and have their
registered offices located at Mumbai; (ii) the plaintiffs own and operate
three five star hotels viz. The Oberoi and The Trident, at Nariman Point,
CS(COMM) No.90/2017 Page 5 of 22
Mumbai and The Trident at Bandra Kurla Complex, Mumbai; (iii) no cause
of action has arisen in New Delhi, within the territorial jurisdiction of this
Court and the plaintiffs have resorted to forum shopping by mentioning
their subordinate office located at Delhi; (iv) the registered office of both
the plaintiffs is at Kolkata; (v) the property bearing the name 'THREE
SIXTY WEST' is also located at Worli, Mumbai; (vi) the plaintiffs have
invoked the territorial jurisdiction of this Court on account of certain
enquiries received from plaintiffs' customers by the plaintiffs; the same,
apart from being doctored evidence, cannot create any jurisdiction in the
Court which otherwise has none; and, (vii) the defendant no.8 is also
conducting its construction business from Mumbai and has its registered
office at Mumbai.
6. The plaintiffs, in their reply to IA No.2804/2017, have pleaded that
(a) for the purpose of an application under Order VII Rule 10 of the CPC,
the averments in the plaint have to be believed to be correct and the
plaintiffs are entitled to substantiate their averments with evidence at a
subsequent stage; (b) the plaint in the present case discloses a valid cause of
action; (c) the hotels of the plaintiffs at Mumbai are irrelevant, if part of the
cause of action is shown in the plaint to have accrued within the territorial
jurisdiction of this Court; (d) the plaintiffs, as dominus litus, are entitled to
sue at any place where a part of cause of action has arisen; (e) since a part
of cause of action has arisen within the territorial jurisdiction of this Court,
the plaintiffs are entitled to invoke the territorial jurisdiction of this Court;
(f) the defendants have advertised and promoted their building construction
project in Delhi through highly interactive websites of prominent brokers
which have businesses and customers in Delhi; (g) the apartments in the
CS(COMM) No.90/2017 Page 6 of 22
defendants' project under the impugned name/mark are not only being sold
through invitation but also are for resale by several brokers; (h) owing to
plaintiffs having received enquiries from potential customers at Delhi also,
part of cause of action has accrued at Delhi; (i) the advertisements of the
impugned property also disclose a hotel and restaurant as part of the
property and the said hotel and restaurant, though located in Mumbai, is
bound to receive many bookings and customers from Delhi; (j) the
defendants' 'THREE SIXTY WEST' project is being marketed and
advertised within the territorial jurisdiction of this Court; (k) the location of
the property at Mumbai cannot be the only criteria for determining the
territorial jurisdiction; and, (l) this Court has territorial jurisdiction, to
decide the suit, under Section 134(2) of the Trademarks Act as well as
under Section 20 of the CPC.
7. Notice may also be taken of the averments of the defendants no.2 to
4 in their written statement qua territorial jurisdiction as under:
―2. At the outset, the Defendant Nos.2 to 4 submit that the
Plaintiffs have instituted the present suit before this
Hon'ble Court which, as such, does not have the
territorial jurisdiction to try and entertain the present
suit. Defendant Nos.2 to 4 submit that this Hon'ble
Court has no territorial jurisdiction to try the present suit
for infringement and passing off on account of the
following facts:-
(a) The cause of action for institution the present suit has
arisen entirely in the city of Mumbai, which is outside the
territorial jurisdiction of this Hon'ble Court.
(b) No part of the cause of action has arisen in the territorial
jurisdiction of the Hon'ble Delhi High Court. The
Plaintiffs appear to have concealed the fact that they
CS(COMM) No.90/2017 Page 7 of 22
have their office/s and huge commercial presence in the
city of Mumbai, where the cause of action has arisen.
The Plaintiffs own and operate three five-star hotels viz.
The Oberoi and The Trident at Nariman Point, Mumbai,
and The Trident at Bandra Kurla Complex, Mumbai,
which fact has been concealed by them. The commercial
presence of the Plaintiffs appear to be greater within the
city of Mumbai as compared to Delhi or even Kolkata
where they have only one Hotel. It appears that the
Plaintiffs' main business has been undertaken in the city
of Mumbai where they have a large executive and
managerial workforce.
(c) The Defendants herein have not advertised their building
construction project in Delhi. Knowledge and awareness
of the Defendants' building construction project THREE
SIXTY WEST is only by invitation.
(d) In view of the judgment reported in Indian Performing
Rights Society Limited vs Sanjay Dalia and anr. reported
in (2015) 10 SCC 161: AIR 2015 SC 3479, the present
suit alleging infringement and passing off could not have
been filed in the territorial jurisdiction of this Hon'ble
Court.
4. As mentioned in the cause title of the suit plaint, the
Plaintiff Nos.1 and 2 are having their registered offices at
Kolkata. The Defendant Nos.2 to 4 are carrying on their
construction business at Mumbai and have their
registered offices at Mumbai at the addresses mentioned
in the cause title of the suit plaint. Infact all Defendants
have their registered offices and / or are conducting their
business from Mumbai. As neither the Plaintiffs nor any
of the Defendants are having their registered office
address at New Delhi or within the jurisdiction of this
Hon'ble Court, this Hon'ble Court has no jurisdiction to
try and entertain the present suit of the Plaintiffs. The
Defendants submit that the Delhi office of the Plaintiff
Nos.1 and 2, as mentioned in the cause title of the suit
CS(COMM) No.90/2017 Page 8 of 22
plaint, is not the registered office address of the
Plaintiffs.
5. The Defendant Nos.2 to 4 submit that the Plaintiffs have
filed this present suit alleging acts of infringement and
passing off committed by the Defendants by use of the
words THREE SIXTY WEST as the name of their building
project. Such building project bearing the title / name
THREE SIXTY WEST is located in Worli, Mumbai. Thus
the situs of the property which is the basis and the subject
matter of the present dispute is located in Mumbai.
Having regard to the provisions of Section 20 of the Code
of Civil Procedure, 1908, the cause of action for the
Plaintiffs' present suit, being a building project
constructed by the Defendants in Worli, Mumbai, named /
titled THREE SIXTY WEST, has therefore not arisen
within the territorial jurisdiction of this Hon'ble Court.
Such construction of their said building project is not
undertaken by the Defendants at Delhi or at any place
within the jurisdiction of this Hon'ble Court. The entire
cause of action to institute the present suit has arisen in
Mumbai, where both the Plaintiffs and the Defendants
have their respective offices and the cause of action has
also arisen there.
6. It is the Plaintiff's case that they are the registered
proprietor of the trade mark label THREESIXTYo used in
relation to their restaurant. The Defendant Nos.2 to 4 do
not offer any restaurant or hotel services as offered by the
Plaintiffs. The Defendant Nos.2 to 4 are engaged in the
construction business, which services are distinct and
different from those offered by the Plaintiffs. There is
thus no case for infringement of the Plaintiffs' trade
mark, as allegedly claimed by the Plaintiffs or at all. The
Defendant Nos.2 to 4 submit that the Plaintiffs have no
case on merits, whether on infringement or on passing
off. Even assuming in the Plaintiff's favour, their best
cause (if at all one has to consider) can atbest be for
passing off. The Defendants have been informed and
verily believe that the provisions of Section 134(2) of the
CS(COMM) No.90/2017 Page 9 of 22
Trade Marks Act, 1999, do not apply to a case for
passing off. The said provision only operates in the
realm of infringement cases. Even further assuming in
the Plaintiffs' favour and believing their case on
infringement to be true, even then, the cause of action to
institute the present suit viz. the building construction
project of the Defendants named THREE SIXTY WEST, is
located in Mumbai. Consequently, the Plaintiffs suit
cannot be filed in Delhi as the entire cause of action has
arisen in Mumbai and no part thereof has arisen in Delhi
or within the jurisdiction of this Hon'ble Court.
Therefore also, and even applying the provisions of
Section 134(2) of the Trade Marks Act, 1999, the
Plaintiffs' suit cannot lie in Delhi nor within the
jurisdiction of this Hon'ble Court.
7. As further pleaded by the Plaintiffs, the cause of action to
institute the present suit has arisen on account of certain
enquiries received from Plaintiffs' customers by the
Plaintiffs which purport to evidence consumer confusion.
The Defendants respectfully submit that the same apart
from being evidence doctored and engineered by the
Plaintiffs to suit their claims, cannot create any
jurisdiction in a Court which, otherwise, has none.
Reliance on the unreported judgment of the Hon'ble
Division Bench of this Court in Music Broadcast Ltd. Vs.
Axis Bank, has no application for the facts therein are
entirely different to the facts involved in the present case.
The Defendants reiterate that the entire cause of action
has arisen outside the jurisdiction of this Hon'ble Court
and at a place where both the Plaintiffs and the
Defendants have present. The Defendants therefore
submit with utmost respect that this Hon'ble Court does
not have the jurisdiction, territorial or otherwise, to
entertain and try the present suit of the Plaintiffs. On this
sole ground, that this Hon'ble Court lacks the territorial
jurisdiction to try and entertain the Plaintiff's suit, this
Hon'ble Court ought to dismiss the Plaintiffs' suit in
limine at the very threshold."
CS(COMM) No.90/2017 Page 10 of 22
8. The plaintiffs, in their replication to the aforesaid written statement,
qua territorial jurisdiction, have stated as under:
―6. This Hon'ble Court has territorial jurisdiction:
a. The Defendants have incorrectly stated that the cause of
action in the present suit has entirely arisen in the city of
Mumbai. This contention is clearly contrary to the
categorical averments made in the plaint. The plaint
provides details of the substantial parts of the cause of
action which have arisen within the territorial jurisdiction
of this Hon'ble Court. The Defendants have given no
response whatsoever to the Plaintiffs' averments which
unequivocally show that a substantial part of the cause of
action for the present suit has arisen within the territorial
jurisdiction of this Hon'ble Court.
b. The Defendants have frivolously referred to the
Defendants' properties and the Plaintiffs' hotels in the city
of Mumbai. The Plaintiffs, being the dominus litus, are
entitled to sue at any place where a part of the cause of
action has arisen. Since a part of the cause of action of the
present suit has arisen in New Delhi, the Plaintiffs are
fully entitled to invoke the jurisdiction of this Hon'ble
Court.
c. The Defendants have wrongly stated that they have not
advertised their building construction project in Delhi and
that knowledge and awareness of their project is only by
invitation. The Defendants' impugned project is being
heavily advertised and promoted through highly
interactive websites of prominent brokers, which have
business and customers in Delhi. The Defendants' project
has also been advertised in national magazines and
newspapers which have circulation in Delhi. The
apartments in the Defendants' impugned project are not
only being sold through invitation; in fact, these properties
are already up for resale by several brokers.
d. The Defendants have also misleadingly only referred to
their residential properties and have made no reference to
CS(COMM) No.90/2017 Page 11 of 22
the hotel and restaurant which is slated to form part of
their property under the mark THREE SIXTY WEST. This
hotel and restaurant, being located in Mumbai, is bound to
receive many bookings and customers from Delhi. This
fact, though specifically pleaded in the plaint, has not been
responded to by the Defendants.
e. The Defendants' reference to the decision of Indian
Performing Rights Society v Sanjay Dalia has no
applicability to the present case since the Plaintiffs are not
carrying on any business under the mark THREESIXTYo
and THREESIXTYONE in the city of Mumbai.‖
9. The written statement of the defendant no.8 and replication thereto
are on similar lines.
10. The counsel for the plaintiff and the senior counsel for the defendants
no.2 to 4 and the senior counsel for the defendants no.1 and 8 were heard.
The defendants no.5 to 7 were proceeded against ex parte vide order dated
9th February, 2017. The defendant no.7 thereafter appeared and was
permitted to file written statement and has pleaded that it is a small property
dealer in Mumbai and is not the broker of the defendants no.1 to 4 and has
never dealt with the project under the impugned name/mark.
11. The senior counsels for the defendants argued, that (i) the place of
registration of the trade mark does not create jurisdiction; reliance was
placed on Dhodha House Vs. S.K. Maingi AIR 2006 SC 730; (ii) relied on
Indian Performing Rights Society Ltd. Vs. Sanjay Dalia (2015) 10 SCC
161 and Ultra Home Construction Pvt. Ltd. Vs. Purshottam Kumar
Chaubey 2016 (65) PTC 469 to contend that jurisdiction under Section 134
of the Trade Marks Act at the place where the plaintiff carries on business,
is subject to the rider that if the plaintiff also carries on business at the place
CS(COMM) No.90/2017 Page 12 of 22
where cause of action has arisen, suit should be filed at that place and not at
the place where only the plaintiff carries on business; (iii) reference was
made to my judgment in Radico Khaitan Ltd. Vs. Nakshatra Distilleries &
Breweries Ltd. (2017) 241 DLT 48 to contend that perception of threat at
Delhi does not accrue cause of action in Delhi; and, (iv) that the websites,
on which the impugned property at Mumbai is being marketed at Delhi, are
not websites of the defendants; reliance was placed on Banyan Tree
Holding (P) Ltd. Vs. A. Murali Krishna Reddy 2010 (42) PTC 361 (Del).
12. Per contra, the counsel for the plaintiffs argued that (a) the
defendants have placed advertisement of the property under the impugned
mark in newspapers having circulation at Delhi and attracting customers at
Delhi and which accrues cause of action to the plaintiffs at Delhi; (b)
invitations in respect of the property/project have also been issued by the
defendants to customers in Delhi and which also accrues cause of action at
Delhi; (c) a large number of such persons at Delhi are bound to avail of the
services of the defendants at Mumbai; (d) the present suit is a continuation
of CS(OS) No.892/2005 between the parties in which the defendants
accepted the territorial jurisdiction of this Court and entered into amicable
settlement with the plaintiffs; (e) the 'principal office' need not always be
the registered office; (f) the question, whether the principal place of
business of the plaintiffs is at Delhi or not, as pleaded in the plaint, can be
decided only at trial; (g) there cannot be a mini trial at the stage of Order
VII Rule 10 of the CPC; reliance was placed on Merck Vs. Ethypharm
2010 (119) DRJ 452; (h) the plaintiffs restaurant 'Threesixtyo' is located in
the hotel of the plaintiff at Delhi; no hotel of the plaintiffs anywhere outside
Delhi is using the said mark; (i) reliance was placed on Music Broadcast
CS(COMM) No.90/2017 Page 13 of 22
Limited v. Axis Bank 2016 SCC OnLine Del 4137 (DB) to contend that the
place of registration of the mark also vests jurisdiction in the Court; (j) the
websites of the defendants require the customers located in Delhi to provide
their contact addresses and information so that the defendants may send
invitations to them at Delhi; (k) reliance was placed on order dated 20th
February, 2017 of this Court in CS (COMM) 1680/2016 titled Vifor
(International) Ltd. Vs. Suven Life Sciences Ltd. to contend that the place
where the customer is approached, has territorial jurisdiction; and, (l) the
defendants in their written statement have admitted sending invitations at
Delhi.
13. The senior counsel for the defendants contended that the reliance by
the counsel for the plaintiffs on Music Broadcast Limited supra is
misconceived inasmuch as that was a case of compulsory license. It was
further contended that the pleas, of cause of action having accrued at Delhi,
are bald.
14. I have considered the rival contentions.
15. The plaintiffs have invoked the territorial jurisdiction of this Court
invoking Section 20(c) of the CPC as well as Section 134(2) of the Trade
Marks Act.
16. Section 134(2) supra entitles a plaintiff in a suit of the nature
prescribed in Section 134(1) to, in addition to invoking the territorial
jurisdiction of the Court within the local limits of whose jurisdiction the
defendant resides or carries on business or personally works for gain or of
the place where the cause of action wholly or in part arises, also invoke the
territorial jurisdiction of the Court within the local limits of whose
CS(COMM) No.90/2017 Page 14 of 22
jurisdiction the plaintiff actually and voluntarily resides or carries on
business or personally works for gain.
17. I have, in Millennium & Copthorne International Ltd. Vs. Aryans
Plaza Services Pvt. Ltd. 2018 SCC OnLine Del 8260, while rejecting an
application under Order VII Rule 11 of the CPC on the ground of this Court
not having territorial jurisdiction, held as under:
―12. I have further enquired from the counsel for the
defendants/applicants, as to how is it possible in business
through such websites, to target viewers in any particular State
or at any particular destination, as is the test laid down
in Banyan Tree Holding (P) Limited supra. Per my
understanding, an interactive website cannot be targeted to any
particular city or State of India and would be identically
accessible throughout, at least India, wherever the reach of
internet is. In fact, I have been asking this question in several
cases but have not got any reply thereto.
13. No answer is forthcoming from the counsel for the
defendants/applicants either.
20. The counsel for the plaintiff has also referred to World
Wrestling Entertainment, Inc. Vs. M/s. Reshma Collection
2014 SCC OnLine Del 2031 (DB) particularly to paras 2, 6, 8,
17, 18 and 22 to 25 thereof, where an order of return of plaint
was set aside and it was inter alia held that with the advent of e-
commerce, the expression ‗carries on business' at a certain
place, has been impacted and is much wider than the other
expressions used in Section 20 of the CPC.
23. The plaintiff has not only pleaded itself carrying on
business within the territorial jurisdiction of this Court on
account of it being possible to book services of the hotels and
resorts of the plaintiff, though outside India, from Delhi but also
pleaded the factum of the defendants carrying on business at
Delhi.
CS(COMM) No.90/2017 Page 15 of 22
24. In continuation of what was held by the Division Bench in
World Wrestling Entertainment, Inc., I may state that the mode
of booking/reserving rooms and other facilities particularly of
dining therein, in hotels/resorts/spas, has changed over the
years with maximum number of bookings/reservations being
made through such third party websites, so much so that the
rates available on the third party websites are also found to be
considerably lower than the rates offered through traditional
mode of agents or offices in major cities. Judicial notice can be
taken of the fact that much of the volume of businesses of hotels
is now through such third party websites, in comparison to the
business through direct bookings and/or through travel agents.
Thus, if the Courts at Delhi will have jurisdiction over subject
matter of suit owing to defendants having interactive website
accessible at Delhi and enabling defendants situated outside
Delhi to carry on business at Delhi, I see no reason to hold that
it will not be so where the defendants, instead of hosting its own
interactive website, avails the service of third party websites to
carry on business at Delhi. There is no rationale for carving
out such a distinction. Certainly, making a booking/reservation,
even if the same does not subsequently materialise, is part of
carrying on business, inasmuch as the hotel which has taken the
booking, even if has not received any payment, being unable to
turn back a customer if shows up in pursuance to such
booking..... In any case, such acts of the defendants amount to
specifically targeting the viewers at Delhi, within the meaning
of Banyan Tree Holding (P) Ltd. supra.
25. I am thus unable to hold that this Court does not have
territorial jurisdiction, for the plaint to be returned/rejected.
26. Before parting with this aspect, I may mention that the test
evolved in Banyan Tree Holding (P) Ltd. supra, that ―the
jurisdiction of the forum State does not get attracted merely on
the basis of the interactivity of the website which is accessible in
the forum State......the nature of the activity permissible and
whether it results in a commercial transaction has to be
examined......the plaintiff must necessarily plead and show
prima facie that the specific targeting of the forum state resulted
in an injury or harm to the plaintiff within the forum
CS(COMM) No.90/2017 Page 16 of 22
State......where the plaintiff is not located within the jurisdiction
of the Court, the injurious effect on plaintiff's business, goodwill
or reputation within the forum State as a result of defendant's
website being in the forum State would have to be shown....to
show that the injurious effect has been felt by the plaintiff it
would have to be shown that viewers in the forum State were
specifically targeted...therefore the ―effects‖ test would have to
be applied in conjunction with the ―sliding scale‖ test to
determine if the forum Court has jurisdiction to try a suit
concerning internet based disputes‖, was evolved after
surveying the law as it had developed in different jurisdictions
i.e. United States of America (USA), United Kingdom (UK) and
Australia by adopting the essential principles developed as part
of the common law in determining whether the forum Court has
jurisdiction where the alleged breach is related to an activity on
the internet. The ‗effects' test and the ‗sliding scale' test
referred to, as per the judgment, were laid down for the first
time in Calder Vs. Jones 465 U.S. 783 (1984) and in Zippo
Mfg. Co. Vs. Zippo Dot Com, Inc., 952 F. Supp. 1119
respectively, to determine if the forum Court has jurisdiction.
The ‗effects' test and the ‗sliding scale' test came to be evolved
by the US Courts in interpretation of the ‗Due Process' clause
in the 14th Amendment to the United States Constitution
permitting personal jurisdiction over a defendant in a state with
which the defendant has certain minimum contacts .... such that
the maintenance of the suit does not offend traditional notions of
fair play and substantial justice, as held in Calder supra.
Though judgments of the Courts in Canada, UK and Australia
also were noticed but in the ultimate analysis, the judgments of
the Courts of USA only were followed in Banyan Tree Holding
(P) Ltd. supra.
27. However, the law relating to territorial jurisdiction in
India is codified, generally for all suits, in Sections 15 to 20 of
the Code of Civil Procedure, 1908 and for suits relating to trade
marks, in the Trade Marks Act, 1999. Sections 19 and 20 of the
CPC which would be applicable to suits for infringement of
trade mark and compensation therefor, are as under:
CS(COMM) No.90/2017 Page 17 of 22
"19. Suits for compensation for wrongs to person or
movables.-Where a suit is for compensation for wrong
done to the person or to movable property, if the wrong
was done within the local limits of the jurisdiction of one
Court and the defendant resides, or carries on business or
personally works for gain, within the local limits of the
jurisdiction of another Court, the suit may be instituted at
the option of the plaintiff in either of the said Courts.
20. Other suits to be instituted where defendants
reside or cause of action arises.- Subject to the
limitations aforesaid, every suit shall be instituted in a
Court within the local limits of whose jurisdiction--
(a) the defendant, or each of the defendants where
there are more than one, at the time of the
commencement of the suit, actually and
voluntarily resides, or carries on business, or
personally works for gain; or
(b) any of the defendants, where there are more than
one, at the time of the commencement of the suit,
actually and voluntarily resides, or carries on
business, or personally works for gain, provided
that in such case either the leave of the Court is
given, or the defendants who do not reside, or
carry on business, or personally work for gain, as
aforesaid, acquiesce in such institution; or
(c) the cause of action, wholly or in part, arises.
A corporation shall be deemed to carry on business at its
sole or principal office in [India] or, in respect of any
cause of action arising at any place where it has also a
subordinate office, at such place.‖
28. Section 19, as aforesaid, permits a suit for compensation
for wrong done to the person or to the movable property to be
instituted either within the local limits of the jurisdiction of the
Court where the wrong was done or within the local limits of the
Court where the defendant resides or carries on business or
CS(COMM) No.90/2017 Page 18 of 22
personally works for gain. Section 20 permits suits other than
the suits to which Sections 16 to 19 apply, to be instituted, either
where the defendant resides or carries on business or
personally works for gain or where the cause of action wholly
or in part arises.
29. It will thus be seen that all that a plaintiff in a suit for
infringement of trade mark or for passing off and for ancillary
reliefs including of compensation with respect thereto is
required to plead and show to invoke the jurisdiction of any
Court, is that wrong was done to it within the local limits of the
jurisdiction of that Court and wherein the cause of action would
axiomatically accrue to the plaintiff and/or that the cause of
action, in whole or in part accrued within the jurisdiction of that
Court. In view of the codified law of India, conferring
territorial jurisdiction on a Court where wrong is done to
plaintiff or where even a part of cause of action arises and it
being indisputable that cause of action arises in a Court within
whose jurisdiction confusion or deception essential for an
infringement or passing off suit takes place or injury caused to
the plaintiff and the plaintiff is also entitled under Section 19
supra to sue where wrong is done, all that the plaintiff is
required to plead is these ingredients, howsoever miniscule they
may be. Once the plaintiff has pleaded so, in my respectful
opinion, there is no need to further test territorial jurisdiction
applying the principles evolved by the US Courts in the context
of their ‗Due Process' clause.
30. Section 134(2) of the Trade Marks Act further entitles a
suit to be instituted, besides in the aforesaid Courts, also in
Courts within the local limits of whose jurisdiction the plaintiff
at the time of institution of the suit actually and voluntarily
resides or carries on business or personally works for gain.
Thus a suit as prescribed in Section 134(1) of the Act is
permitted to be instituted, at the option of the plaintiff, besides
in the Court where the wrong has been done or the cause of
action has accrued or where the defendant resides or carries on
business, also in the Courts where the plaintiff resides or
carries on business, notwithstanding no wrong having been
done or cause of action having been accrued in that Court and
CS(COMM) No.90/2017 Page 19 of 22
even where the defendant may not be the resident of or carrying
on business within the jurisdiction of that Court.
31. The plaintiff in the present case as aforesaid has invoked
the territorial jurisdiction of this Court by pleading that the
defendants sell their services under the impugned mark all over
India including in Delhi through third party websites which
accept reservations to the hotels and resorts of the defendants
from Delhi. It is further pleaded that the plaintiff's services are
also widely availed by the customers in Delhi. Axiomatically,
the wrong is pleaded as having been caused to the plaintiff at
Delhi and cause of action is pleaded to have accrued at Delhi.
32. I have recently in Zenner International GMBH & Co. KG
Vs. Anand Zenner Company Pvt. Ltd. 2018 SCC OnLine Del
7011, referring to Pratap Singh Vs. Bank of America 1976
SCC OnLine Bom 111 and Wipro Ltd. Vs. Oushadha
Chandrika Ayurvedic India (P) Ltd. AIR 2008 Mad 165, held
that a clear distinction is made in Section 20(c), of the CPC and
in Section 134(2) of Trade Marks Act between ‗carrying on
business' and ‗personally working for gain'; while in latter, the
legislative requirement is that defendant should personally work
for gain, no such requirement is postulated in ‗carrying on
business' - it means that the defendant may ‗carry on business'
himself or through an agent. It was yet further held that the
word ‗defendant' in Section 20 of the CPC includes both natural
or artificial persons and no distinction in law can be made
between corporations that are incorporated in India and
corporations that are incorporated outside India. It was further
held that while there is a limitation regarding residence, there is
no restriction with reference to ‗carrying on business' - this is
clear indication that the term ‗carries on business' is not
confined to only principal place of business - if the legislature
intended to mean the principal place only, it would have
suitably qualified the expression ‗carries on business'. Applying
the said law, the plaintiff even though not having any office in
Delhi would still be carrying on business in Delhi and would
qualify to institute the suit in Delhi under Section 134 of the
Trade Marks Act also.
CS(COMM) No.90/2017 Page 20 of 22
33. There is thus no merit in the application.
34. Dismissed.‖
18. Applying the aforesaid to the present case, the applications but have
to be dismissed.
19. The plaintiffs herein also have pleaded effect of the action of the
defendants within the territorial jurisdiction of this Court and sale of the
project at Delhi through third party websites. All the said pleas in the plaint
if proved, would confer territorial jurisdiction on this Court and the
plaintiffs cannot be ousted treating the averments in the plaint to be false.
20. Though there can be no estoppel against statute and no conferment of
jurisdiction by consent but it cannot also be lost sight of that CS(OS)
No.892/2005 was filed by the plaintiffs against the defendants for
permanent injunction restraining the defendants, who then also were
carrying on business at Mumbai, from carrying on the said business of real
estate, construction, hotels, spas and / or any cognate or allied business
under the name and style 'OBEROI', 'OBEROI SPAS' and 'OBEROI
GROUP' and the plaintiffs in the plaint in the suit aforesaid also, invoked
the jurisdiction of this Court on the basis of the plaintiffs carrying on
business at Delhi and the cause of action having accrued at Delhi owing to
the defendants having advertised under the impugned mark in the 'Times of
India' newspaper having circulation at Delhi. The plaintiffs and the
defendants, during the pendency of the said suit, entered into an Agreement
dated 27th November, 2009 at Delhi whereunder the defendants agreed to
use the mark 'OBEROI' in respect of its real estate, construction and
infrastructure business only in conjunction with the qualifier 'construction'
CS(COMM) No.90/2017 Page 21 of 22
or 'development' or 'realty' or words connoting real estate affairs. The
defendants having entered into the Agreement in the earlier suit and in
terms of which the earlier suit was decreed, at Delhi, do not inspire
confidence while disputing the territorial jurisdiction of this Court upon this
suit being filed by the plaintiffs.
21. For the aforesaid reasons, no merit is found in the applications.
Dismissed.
CS(COMM) No.90/2017
22. List on 18th July, 2018.
RAJIV SAHAI ENDLAW, J.
JULY 05, 2018 'gsr'..
CS(COMM) No.90/2017 Page 22 of 22