- INTRODUCTION
In the age of the internet, where brands transcend territorial boundaries at the speed of a click, the questions "who owns the mark?" and "where can the battle be fought?" often become a blurry affair. Particularly in the case of enforcement, where jurisdiction is invoked on the basis of online activities, the question of territorial jurisdiction catches prime attention. In this context, the issue of territorial jurisdiction in case of online infringement has been discussed by the Indian courts on multiple occasions, most recently in the Delhi High Court's ("Court") decision in Vikrant Chemico Industries v. Shri Gopal Engineering and Chemical Works1 ("Vikrant Chemico Case").
- RELEVANT PROVISIONS OF LAW
While the substantive law of trade marks focuses primarily on proprietorship, registration, and infringement, the procedural hurdle of where a case may be filed often decides the fate of a suit even before the merits are considered. Section 20 of the Civil Procedure Code, 1908 broadly governs the subject of territorial jurisdiction in intellectual property disputes, allowing institution of a suit where the defendant resides or carries on business, or where the cause of action, in whole or in part, arises. This is supplemented by Section 134 of the Trade Marks Act, 1999, under which, a plaintiff in case of infringement may also file the suit where it resides, carries on business, or personally works for gain.
- JUDGMENT ANALYSIS ON THE ISSUE
The Vikrant Chemico Case addressed the issue of territorial jurisdiction being invoked on the basis of a website hosted by the defendant. While both parties were based out of Kanpur, India, the plaintiff filed the suit before the Delhi High Court, arguing that the cause of action arose in Delhi through the said website, which merely stated that the defendant's products were sold in Delhi as well. Although the plaintiff was successful in obtaining a temporary injunction in its favour in 2015, the Court, while deciding the matter on merits, returned the plaint for want of territorial jurisdiction. This dismissal underscores the "tighter version of the effects test"2 requiring plaintiffs to demonstrate territorial nexus in such intellectual property disputes.
Upon hearing both sides, the Court observed that the defendant's website did not enable sale and purchase of products and, hence, would be nothing more than a passive website. In fact, the claims on the said website pertaining to the defendant's products being available in Delhi did not relate to the brand/mark in question, but another brand/mark of the defendant. Relying on the Banyan Tree Case, the Court rejected the plaintiff's argument that mere accessibility of the defendants' website in Delhi was sufficient to invoke jurisdiction. The said case had laid down that jurisdiction cannot be invoked on the basis of mere hosting of a passive website - one that does not allow sale and purchase of products - and instead, required the plaintiff to produce evidence showing a commercial transaction entered into by the defendant with a user within the forum state. The Court also referred to the decision passed in Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393, where the plaint had been rejected on the issue of territorial jurisdiction as the plaintiff failed to support its argument that the goods were available for sale in the forum state, with documentary evidence.
The plaintiff also relied on the defendant's listing on IndiaMart, an online B2B platform, which is accessible in Delhi. It was argued that the allegedly infringing products were made available for sale on the said platform. In this regard, the Court clarified that IndiaMart, as a platform, does not facilitate sale and purchase of goods and hence, the mere listing of the defendant's products on the platform would also not confer jurisdiction in the Court. Referring to an earlier judgment of the Court3 where a similar argument was taken, the Court observed that there was no pleading or document produced to evidence that any order had been placed for the defendant's product through IndiaMart.
Another argument advanced by the plaintiff to tilt the issue of jurisdiction in its favour was that the cause of action arose in the forum state because the defendant's trade mark application had been filed with the Trade Mark Registry's office located in Delhi. Placing reliance on the apex court's decision in Dhodha House v. S.K. Maingi, 2006 (9) SCC 41 which held that cause of action arose only upon use of a trade mark and not its application for registration, the Court rejected this argument as well.
- RELEVANCE OF THE JUDGMENT
This decision, once again, discourages forum shopping and reinforces the principle that not all websites can create jurisdiction. It reaffirms that jurisdiction cannot be claimed as a matter of convenience or preference but must be under the settled law. Since the defendant's website was merely informational and not transactional in nature, it was considered "passive" and therefore insufficient to confer jurisdiction. This decision has also reiterated that documentary evidence showing a commercial transaction in the forum state, arising from the impugned website, is indispensable to invoke jurisdiction based on such website.
- CMS INDUSLAW VIEW
The principles echoed in this judgment act as guardrails, defining limits in a digital world where the internet constantly pushes the horizon outward. These guardrails become extremely relevant for the plaintiffs who must cautiously approach the competent courts, with adequate proof, as such procedural lapses can result in wasted time, resources and prolonged infringement; and equally valuable for defendants who can raise jurisdictional objections as a powerful defence to dispose of suits without having to get to the merits.
For brand owners, these principles underscore the importance of adopting a calibrated enforcement strategy. Given the impact the internet and e-commerce are having on businesses, instances of online infringement are increasing and evolving in complexity. Courts have also become very savvy in detecting forum shopping. It, therefore, becomes incumbent on brand owners to carefully evaluate where and how the infringing activity is happening, before deciding where to sue. Such practices not only mitigate the risk of dismissal on technical grounds but also strengthen the brand owner's overall enforcement strategy, creating a credible deterrent for potential infringers.
Footnotes
1. 2025:DHC:7057.
2. A test relied on by the Court in Banyan Tree Holding v. A Murali Krishna Reddy, 2010(42)PTC 361(Del) ("Banyan Tree Case"), which requires the plaintiff to show some commercial activity in the forum state, via the website in question, by which specific customers within the state were being targeted.
3. Kohinoor Seed Fields India Private Limited v. Veda Seed Sciences Private Limited, 2025 SCC OnLine Del 2404.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
