Vikas Mishra, Advocate, Delhi High Court & Supreme Court of India, Associate Intellectual Property Laws Division, Vaish Associates Advocates, New Delhi, India
Jurisdiction is an aspect of state sovereignty and refers to judicial, administrative and legislative competence. The term Jurisdiction in common legal parlance would mean the right to administer justice. It may be defined as the power or authority to hear and determine a cause to adjudicate and exercise any judicial power in relation to it.
The scope of this article is to expound the jurisdictional powers of the courts in matters where the cause of action lies in the "World Wide Web".
In order to invoke jurisdiction of a court to institute a suit for trade mark infringement and/or passing off, the Indian law recognizes three settled criterion i.e.,
- Territorial jurisdiction,
- Pecuniary jurisdiction and
- Subject-matter jurisdiction.
In determining all the above, it is the cause of action which plays a pivotal-role. It is the subject of the cause of action which determines whether a court has jurisdiction over such subject matter and it is the pecuniary value of the suit which establishes the presence or absence of competence in a court. Every suit presupposes the existence of a cause of action and in majority of cases, it is the place where the cause of action arises and which determines the jurisdiction of the Court.
The statutory provisions for institution of suits for infringement of Trade Mark and/ or passing off are provided under Code of Civil Procedure, 1908 and the Trade Marks Act, 1999. However, Section 20 of Code of Civil Procedure, 1908 is the fundamental law which governs the procedure and law to institute any suit in a competent court of law.
It shall be not out of place to mention here that the Trade Marks Act, 1999 provides for a special provision for proprietor of a registered trade mark to institute a suit for infringement of a trade mark. Section 134(2) of the Trade Marks Act, 1999 provides for additional forum to the proprietor of a registered trade mark to institute a suit for infringement of trade mark in whose jurisdiction, the said proprietor actually and voluntarily resides or carries on business or works for gain, at the time of institution of suit.
The internet is a paradox. It is a worldwide entity whose nature cannot be easily or simply defined. In this era of e-commerce, the Indian courts addressing the importance of World Wide Web in commercial transaction has broadened the ambit of the principle 'cause of action' by including the use of an active website for commercial transaction as the situs of jurisdiction.
The Indian judiciary has through a thorough understanding of the evolving law, demonstrated what is required of Indian legislation- dynamism and an open mind to incorporate certain changes that may be necessary considering the changing trend of cases globally.
Over the years, several parameters have been developed by various courts to determine jurisdiction over Internet related matters.
In keeping with its liberal approach to issues of jurisdiction in infringement and/or passing off cases, the High Court of Delhi in the first case of its kind, Casio India Co. Limited v. Ashita Tele Systems Fvt. Limited1 passed an injunction against the defendant from using the website www.casioindia.com on the basis of the fact that the website of Defendant can be accessed from Delhi, which is sufficient to invoke the territorial jurisdiction of this Court.
In the above case the Court further held the said website/ domain name to be similar/deceptively similar to the registered trade mark "Casio" and website/ domain name of the Plaintiff i.e. CasioIndiaCompany.com, CasioIndia.org, CasioIndia.net as well as CasioIndia.info, CasioIndia.Biz and CasioIndiaCo.
Moving ahead on the same subject, a different approach was adopted by another learned single Judge of Delhi High Court in (India TV) Independent News Service Pvt. Limited v. India Broadcast Live Llc And Ors.2
Adjudicating the suit of passing off action initiated by the Plaintiff to injunct the Defendants from using the domain name www.indiatvlive.com, wherein the defendants were neither residing nor carrying on business within the territorial jurisdiction of the court of the learned Single Judge held the following:-
"46. I am in agreement with the proposition that the mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely 'passive' but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different."
The Court also stated that where the website was an interactive one, as opposed to one merely conveying information (static website) and where the target audience and a large consumer base of the website was located, the court could exercise jurisdiction over the matter, irrespective of the location of the defendant. The level of interactivity of the website was held to be of vital importance. Court further held that the website "indiatvlive.com" of Defendant is not wholly of a 'passive' character. It has a specific section for subscription to its services and the options (provided on the website itself) for the countries whose residents can subscribe to the services including India. The services provided by Defendant can thus be subscribed to and availed of in Delhi i.e. within the jurisdiction of this Court. It was also held that "the Defendant is carrying on activities within the jurisdiction of this Court; has a sufficient contact with the jurisdiction of the court and the claim of the Plaintiff has arisen as a consequence of the activities of Defendant within the jurisdiction of this Court".
The decisions in the Casio and India TV matters are quite disparate, with the former stating that mere access to a website would suffice and the latter stating that commercial transactions at a particular location and the level of interactivity of a website are vital for exercising jurisdiction. Predictably, the law in this regard is quite uncertain. As a result, in the matter of Banyan Tree Holdings, the single bench of the Delhi High Court made a reference to the division bench to clarify the law in this regard.
The case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Anr3 was a suit for passing off filed by the Plaintiff who was using the word mark 'Banyan Tree' since 1994 and websites namely www.banyantree.com and www.banayantreespa.com since 1996 against the use of the word 'Banyan Tree Retreat' and advertisement of the same on the website www.makprojects.com/banyantree of the defendants. The said suit was filed on the basis of website http://www.makprojects.com/banyantree.htm of the Defendants which was also accessible in Delhi. The most striking peculiarity of the case was that neither of the parties were located within the territorial Jurisdiction of the Court.
In view of the conflicting decisions on the question whether accessibility of a website in a particular place may itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website? and since the Court found the Single Judge Bench decisions of both Casio as well as India TV disparate in its reasoning, Hon'ble Justice S.Ravindra Bhat of Delhi High Court, in the hope to find an answer to this issue referred the same to the Division Bench.
Clearing the air of speculations, the Division bench of the Delhi High Court settled the law on the subject of exercising jurisdiction on the accessibility of a website in case of suit for passing off and/or infringement of a trade mark.
The court held that merely accessing a website in Delhi would not satisfy the exercise of jurisdiction by the Delhi court. Rather, it has to be shown that the defendant "purposefully availed" itself of such jurisdiction, by demonstrating that the use of the website was with intent to conclude a commercial transaction with the site user, and such use resulted in injury or harm to the plaintiff. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state. The Hon'ble Court further went on to say that the Plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus" or "interactive", was specifically targeted at viewers in the forum state for commercial transactions."
Undoubtedly the decision of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Anr has added a new chapter on the protection of trade mark in India. In 21st century the use of Internet is not limited to e-mailing, surfing, browsing, etc. It is increasingly used by commercial organizations to promote themselves and their products and services. It is also interactively used to buy and sell products. The amplification of the ambit of the principle of 'cause of action' in decision of the Banyan Tree Holding Pvt Ltd would indisputably tighten the screw on the infringement of trade mark and passing off goods or services through the active use of internet in spite of not having a physical presence before the judicial forums.
1. 2003 (27) PTC 265 (Del)
2. 2007 (35) PTC 177 (Del.)
3. CS (OS) No. 894/2008
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