29 August, 2017
Januki Kumari J.B. Rana & Ors v. Ashok Kumar & Ors, CS(COMM)77/2017
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 rm based in Nepal and has various distributors in India as well as a liaising of ce 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 identi ed 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 unidenti ed, 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.
Shree Nath Heritage Liquor Pvt Ltd. & Ors. v Octaga Green Power & Sugar Co. Ltd. & Ors., CS(COMM) 681/2016
In a recent case, the Hon’ble Delhi High Court returned the plaint to the Plaintiffs seeking quia timet action for lack of territorial jurisdiction.
Plaintiffs, a British West Indies company and its licensee, a company with its registered of ce in Rajasthan, engaged in manufacturing and selling alcoholic beverages in the state of Rajasthan, had initiated the instant suit seeking permanent injunction restraining the defendants from infringement of their trademark and passing off their goods as that of the Plaintiffs’. While the Plaintiffs sought to invoke jurisdiction of Hon’ble Delhi High Court, based on the defendants’ website wherein the defendants had announced their plans to launch their product under the allegedly infringing mark throughout India, as well as similar publication in a newspaper quoting the defendants’ spokesperson, the defendants, having their registered of ces in Mumbai and carrying on their business only in the states of Maharashtra and Goa, objected to this court’s jurisdiction.
Considering that neither the plaintiffs nor the defendants have their registered of ce in Delhi, none of their products are sold within Delhi, and that neither of them had applied for license under the Excise Act to sell alcoholic beverage within the jurisdiction of this court, the Hon’ble Court observed that the plaintiffs had failed to prima facie show its presence/goodwill in Delhi or a strong possibility that the defendants are likely to infringe or pass off their trademark in Delhi. Accordingly, ruling that no part of cause of action has arising within the territorial jurisdiction of this court, the Hon’ble Court returned the plaint for ling in the court of appropriate jurisdiction.
For further information, please contact:
Vineet Aneja, Partner, Clasis Law
vineet.aneja@clasislaw.com
