Introduction
The Honorable High Court of Delhi in the case of Hari Ram and Son vs. Vivek Purwar and Anr. held that the judgment of the court of first instance rendered without appropriate territorial jurisdiction does not bind the parties. The High Court, while rejecting the plaintiff’s plea of appropriating jurisdiction in Delhi, held that “simply because, in the course of their business, the defendants in the lawsuit advertised their products in print as well as electronic media, which may spill over into traffic in Delhi (which also did not further proved by the plaintiffs in the present case), it cannot be said that the learned Magistrate Court of Delhi would have jurisdiction to hear the trade mark infringement and passing off action against the defendants in the action” .
Background
In this case, the underlying lawsuit was filed by the owners of M/s. Hari Ram and Sons (hereinafter referred to as the “plaintiffs”) alleging that Vivek Purwar & Anr. (hereinafter referred to as the “Defendants”) adopted their trademark “HARI RAM AND SONS & HR LOGO” for similar activities.
The cross-appeals in the Hon’ble High Court, Delhi were filed on the basis of the judgment of the Magistrate’s Court, in which it was ruled that the Magistrate’s Court had no territorial jurisdiction over the infringement action. However, since evidence had already been presented in the lawsuit, the trial court issued a permanent injunction in favor of the plaintiffs on the merits of the case.
The defendants were prejudiced because the trial court, having categorically held that it lacked territorial jurisdiction to try the action, could not have made an order in favor of the plaintiffs. On the other hand, the plaintiffs were prejudiced by the trial court’s conclusion on the question of the absence of territorial jurisdiction.
The plaintiffs in the cross-appeal argued that:
1) Respondents are “soliciting” the disputed mark within the territorial limits of Delhi, and this has not been denied by respondents in their written statement. Furthermore, the defendants had initially raised an objection before the trial court that it had no territorial jurisdiction and since this did not change the position before the trial court, it must be concluded that the court of first instance had territorial jurisdiction to hear the passing off case. and counterfeit.
2) The defendants had advertised and published the contested mark in major newspapers, magazines and on the channels located within the territorial boundaries of Delhi.
3) The defendants had applied for registration of their trademark with the Registrar of Trademarks in Delhi.
Defendants instead argued that:
1) They had categorically denied conducting business in Delhi and specifically mentioned that their business activities were confined to Prayagraj city. Furthermore, the plaintiffs could not produce any evidence to corroborate the business activities of the defendants in the territory of Delhi.
2) They had clearly stated in their written statement that the newspapers were broadcast only in the state of Uttar Pradesh and the TV channel also targeted viewers in the state of Uttar Pradesh only.
3) The jurisdiction of the Trademark Registry Offices of Uttar Pradesh has been fixed in Delhi and therefore the mere filing of an application would not confer on the Magistrate Court the required territorial jurisdiction.
Analysis and Findings
The Honorable Delhi High Court noted that
1) Plaintiffs’ contention that Respondents did not categorically deny the “solicitation” of the challenged mark within the territorial limits of Delhi was untenable. The High Court observed that on holistic reading of the written statements of the defendants, it could be noted that the business activities of the defendants are confined to the town of Prayagraj. Thus, the mere absence of the word “solicit” in the written submissions cannot lead to an inference of admission against the defendants. “It is well settled law that the written statement must be read as a whole and that the sentences cannot be read in isolation. »
2) Based on the additional plea filed by the defendants, it can be established that the advertisements in the print and electronic media were aimed at customers in the State of Uttar Pradesh. Thus, a mere advertisement that may have spilled over into circulation in Delhi (unsubstantiated) cannot give jurisdiction to the trial court to hear the action for passing off and infringement. “an advertisement cannot confer jurisdiction on a court located in Delhi, as the said advertisements were not directed at customers in Delhi.
3) Plaintiffs’ argument that Defendants applied for registration of their mark with the Registrar of Trademarks in Delhi would lead to the jurisdiction of the Magistrate’s Court, would have been a valid consideration at the preliminary stage of the examination of the jurisdiction of the Court. However, once the evidence has been processed and it has been noted that the defendants do not carry on or intend to carry on any business in Delhi, the mere filing of such an application with the Registrar of Trademarks would not confer jurisdiction at trial. court to hear the lawsuit.
The learned High Court has thus clarified that where there is no real threat of use by the defendants, the Court cannot be considered to have jurisdiction and it always depend on the facts and circumstances of the case to determine whether the Court has territorial jurisdiction to hear a case or not.
The learned High Court thus noted that the application may be returned at any time if the Court finds that it is not territorially competent to be presented before the court before which the action should have been brought. “Once the Court finds that it does not have territorial jurisdiction to hear or decide the lawsuit, it must refer the complaint to be brought in a court of competent jurisdiction. The conclusion that he then renders, although it must necessarily be so with regard to Ordinance XIV Rule 2 of the CPC, does not bind the parties; the same would be a nullity
Therefore, on the facts of the case, the learned High Court held that the trial court, having held that it had no territorial jurisdiction, could not have ruled on the action for applicants.. Accordingly, the complaint was returned to the plaintiffs and the trial court’s findings were reversed and found not to be binding on the parties.
Comment
The Honorable High Court has brought to light the importance of the circulation of the advertising material or the use of the infringing mark in that specific jurisdiction for a cause of action to arise. The decision highlights the factors to be considered in determining the appropriate territorial jurisdiction of a court in a passing off or infringement action.
