Plaintiffs, engaged in manufacture and sale of sports shoes and footwear under the trademark GOLDSTAR initiated infringement proceedings claimed ex-parte injunction against the defendants. Plaintiff is a partnership firm based in Nepal and has various distributors in India as well as a liaising office in New Delhi, whereas the defendant No. 1 is unknown person (John Doe) and defendant No. 2, an entity known only by a name, allegedly carries on business in Meerut, i.e. outside the territorial jurisdiction of this court.
Given that neither the plaintiffs are carrying on their business in India (rather are exporters) nor the defendants are allegedly infringing the trademark within the territorial jurisdiction of the Hon'ble Delhi High Court, the court rightly identified the issue of territorial jurisdiction involved in the instant case. Furthermore, the Hon'ble Court, after discussing the genesis of John Doe orders rightly pointed out that the exercise of court's discretionary powers in granting such John Doe orders depends on the facts and circumstances of each case. Considering that both the defendants in the present case were unidentified, the Hon'ble Court observed that issuing a John Doe order would be like issuing a blank civil search warrant against unknown/unnamed infringers and thereby allowing the plaintiffs to enter any premises, any shop in search of the counterfeit articles, either personally or through court commissioners. Accordingly, denying the grant of ex-parte injunction against unknown defendants, the Hon'ble court opined that, in such instances of wide scale infringement, the Plaintiffs are not rendered remediless but always have the option of availing remedy by way of criminal complaints against unknown infringers, an offence made cognizable under Section 115 of the Trade Marks Act, 1999.
This update is authored by Clasis Law, Clyde & Co's associated firm in India
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