* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 5 th July, 2018 + CS(COMM) No.90/2017 EIH LTD. & ANR. Through:... Plaintiff Mr. Pravin Anand, Mr. Aditya Gupta and Mr. Utkarsh Srivastava, Advs. Versus SAHANA REALTY PVT. LTD. & ORS. Through: CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW...Defendants Mr. Rajiv Nayar, Sr. Adv. with Mr. Vinod Bhagat and Ms. Richa Singh, Advs. for D-1 to 4. Mr. Sudhir Chandra, Sr. Adv. with Ms. Nidhima Sareen and Ms. Rashmi Singh, Advs. for D-1 & 8. IA No.2804/2017 and IA No.5196/2017 (of the defendants no.2 to 4 and of the defendant no.8, both under Order VII Rule 10 of the Code of Civil Procedure, 1908) 1. The two plaintiffs, viz. EIH Ltd. and Oberoi Hotels Pvt. Ltd., instituted this suit for permanent injunction restraining infringement of trade mark, passing off, dilution and damages etc., against defendants no.1 to 7 viz. (i) Sahana Realty Pvt. Ltd., (ii) Vikas Oberoi, (iii) Oberoi Realty Ltd., (iv) Oberoi Construction Ltd., (v) Magic Homes India Pvt. Ltd., (vi) Smart Deal & Investment Pvt. Ltd., and, (vii) Shree Nath Estate, pleading that (a) the two plaintiffs belong to the Oberoi Group of Companies which operates 30 luxury hotels across six countries under the luxury brand CS(COMM) No.90/2017 Page 1 of 22
Oberoi and the 5-star brand Trident ; (b) the Oberoi Group is also engaged in flight catering, airport restaurants, hotel management training, serviced apartments, travel and tour services, car rentals and project management services; (c) defendants no.1 to 4 are real estate developers, based in Mumbai, engaged in construction projects primarily in residential sector; (d) defendant no.1, in collaboration with defendants no.2 to 4, is developing and promoting the impugned property under the marks THREE SIXTY WEST and OBEROI THREE SIXTY WEST ; (e) defendants no.5 to 7 are real estate brokers / agents who are advertising and offering for sale the defendants impugned property under the marks OBEROI THREE SIXTY WEST and THREE SIXTY WEST BY OBEROI and other such variants; (f) CS(OS) No.892/2005 earlier instituted by the plaintiffs in this Court against defendants no.2 to 4 and their associated companies was decreed pursuant to mutual settlement; (g) the plaintiffs are the registered proprietor of the word mark Oberoi ; (h) the plaintiffs have been using the marks threesixty o and threesixtyone for their restaurants which operate within the plaintiffs Oberoi Hotels and other allied services in the hospitality sector; and, (i) defendants use of the mark THREE SIXTY WEST for their hotel-cum-residential project infringes the plaintiffs statutory rights in the marks threesixty o and threesixtyone and use by the defendants of OBEROI in conjunction with THREE SIXTY infringes the plaintiffs rights in the trade mark OBEROI Relief, of permanent injunction restraining the defendants from using the impugned mark THREE SIXTY WEST, standalone and / or in conjunction with the trade mark OBEROI or any other trade mark CS(COMM) No.90/2017 Page 2 of 22
identical or deceptively similar to the trade marks threesixty o and threesixtyone, including as trade mark, trade name, is sought in the suit besides ancillary reliefs. 2. The plaintiff has invoked the territorial jurisdiction of this Court by pleading as under: 52. This Hon ble Court has the necessary territorial jurisdiction to try and entertain the present suit based on the following: a. Under Section 20(c) of the Code of Civil Procedure, 1908 since the cause of action has arisen within the territory of this Hon ble Court since the Plaintiffs consumers within the jurisdiction of this Hon ble Court have sent enquiries to the Plaintiffs regarding the association / connection / affiliation of the Defendants OBEROI THREE SIXTY project with the Plaintiffs, evidencing the consumer confusion that is being caused to consumers in Delhi owing to the Defendants infringing activities. Confusion amongst customers is an integral part of the cause of action in the present suit and the same has arisen within the territorial jurisdiction of this Hon ble Court. A copy of one such enquiry received through letter dated January 3, 2017 is being filed herewith. b. Under Section 20(c) of the Code of Civil Procedure since a substantial and integral part of the cause of action has arisen within the territorial jurisdiction of this Hon ble Court. The Plaintiffs restaurants under mark threesixty o and threesixtyone, being located in Delhi and in Gurgaon respectively have been providing services to customers within the territorial jurisdiction of this Hon ble Court since their inception over a decade ago. The focal point and the origin of the enormous and widespread reputation garnered by the Plaintiffs is in Delhi and the very foundation of the Plaintiffs rights in these trademarks, which forms an integral part of the cause of action in the CS(COMM) No.90/2017 Page 3 of 22
present suit, is in Delhi. Further, the Plaintiff s trademark registrations which are being infringed by the Defendants in the present case were applied for, examined and granted in Delhi by the Trademark office within Delhi. The acquisition of reputation and goodwill and the registration of the Plaintiff s trademarks both form an integral and substantial part of the bundle of facts which give rise to the cause of action in the present suit. This Hon ble Court has territorial jurisdiction on this ground alone, especially by virtue of the decision of the Division Bench of this Hon ble Court in Music Broadcast Ltd. v. Axis Bank, FAO(OS) No.65 of 2016. c. Under the provisions of Section 134 (2) of the Trademarks Act, 1999 as the Plaintiffs, being the registered proprietors of the trademarks OBEROI, threesixty o and threesixtyone, are carrying on business within the territorial limits of this Hon ble Court under the marks Threesixty o and Threesixtyone through its principal place of business and its corporate office at 7, Sham Nath Marg, New Delhi- 110054. d. Under the provisions of Section 134(2) of the Trademarks Act, 1999 as the Plaintiffs, being the registered proprietors of the trademarks OBEROI, threesixty o and threesixtyone have their principal place of business and their main corporate office within the territorial jurisdiction of this Hon ble Court. e. Under Section 20 of the Code of Civil Procedure, 1908 as the Defendants hotel and residential project is being marketed and publicized through highly interactive various brokerage websites which can be accessed within the territorial jurisdiction of this Hon ble Court and through which bookings can be made of the Defendants hotel cum residential property. These brokerage websites specifically target customers in Delhi. Further, since the Defendants have significant business interest in Delhi and are believed to have customers/apartment owners in Delhi, it is verily believed that the Defendants have promoted or have sent CS(COMM) No.90/2017 Page 4 of 22
invitations to customers in Delhi with respect to their impugned project. Thus, the cause of action arises within the jurisdiction of this Hon ble Court. f. Under Section 20 of the Code of Civil Procedure, 1908 as the Defendants hotel cum residential project is bound to be heavily advertised and promoted within New Delhi which given the large number of travellers, including business travellers, between New Delhi and Mumbai. The Defendants hotel cum residential project, once launched, is bound to host large number of guests from New Delhi who are bound to be confused owing to the Defendants use of the impugned marks. Thus a substantial part of the cause of action has arisen and is bound to arise within the territorial jurisdiction of this Hon ble Court; 3. The suit was entertained and summons thereof ordered to be issued vide order dated 3 rd granted. February, 2017, though no ex parte relief sought, 4. The counsel for the defendants no.1 to 4, on 9 th February, 2017 informed that M/s Oasis Realty, a partnership of defendant no.1 and defendant no.3, is the developer of the property, the mark with respect whereto is the subject matter of the present suit and on the oral request of the counsel for the plaintiffs, the said M/s Oasis Realty was impleaded as defendant no.8 to the suit. 5. Pleadings have been completed and the defendants no.2 to 4 and the defendant no.8 have filed these applications under Order VII Rule 10 of the Code of Civil Procedure, 1908 (CPC) pleading that (i) defendants no.2 to 4 are conducting their construction business from Mumbai and have their registered offices located at Mumbai; (ii) the plaintiffs own and operate three five star hotels viz. The Oberoi and The Trident, at Nariman Point, CS(COMM) No.90/2017 Page 5 of 22
Mumbai and The Trident at Bandra Kurla Complex, Mumbai; (iii) no cause of action has arisen in New Delhi, within the territorial jurisdiction of this Court and the plaintiffs have resorted to forum shopping by mentioning their subordinate office located at Delhi; (iv) the registered office of both the plaintiffs is at Kolkata; (v) the property bearing the name THREE SIXTY WEST is also located at Worli, Mumbai; (vi) the plaintiffs have invoked the territorial jurisdiction of this Court on account of certain enquiries received from plaintiffs customers by the plaintiffs; the same, apart from being doctored evidence, cannot create any jurisdiction in the Court which otherwise has none; and, (vii) the defendant no.8 is also conducting its construction business from Mumbai and has its registered office at Mumbai. 6. The plaintiffs, in their reply to IA No.2804/2017, have pleaded that (a) for the purpose of an application under Order VII Rule 10 of the CPC, the averments in the plaint have to be believed to be correct and the plaintiffs are entitled to substantiate their averments with evidence at a subsequent stage; (b) the plaint in the present case discloses a valid cause of action; (c) the hotels of the plaintiffs at Mumbai are irrelevant, if part of the cause of action is shown in the plaint to have accrued within the territorial jurisdiction of this Court; (d) the plaintiffs, as dominus litus, are entitled to sue at any place where a part of cause of action has arisen; (e) since a part of cause of action has arisen within the territorial jurisdiction of this Court, the plaintiffs are entitled to invoke the territorial jurisdiction of this Court; (f) the defendants have advertised and promoted their building construction project in Delhi through highly interactive websites of prominent brokers which have businesses and customers in Delhi; (g) the apartments in the CS(COMM) No.90/2017 Page 6 of 22
defendants project under the impugned name/mark are not only being sold through invitation but also are for resale by several brokers; (h) owing to plaintiffs having received enquiries from potential customers at Delhi also, part of cause of action has accrued at Delhi; (i) the advertisements of the impugned property also disclose a hotel and restaurant as part of the property and the said hotel and restaurant, though located in Mumbai, is bound to receive many bookings and customers from Delhi; (j) the defendants THREE SIXTY WEST project is being marketed and advertised within the territorial jurisdiction of this Court; (k) the location of the property at Mumbai cannot be the only criteria for determining the territorial jurisdiction; and, (l) this Court has territorial jurisdiction, to decide the suit, under Section 134(2) of the Trademarks Act as well as under Section 20 of the CPC. 7. Notice may also be taken of the averments of the defendants no.2 to 4 in their written statement qua territorial jurisdiction as under: 2. At the outset, the Defendant Nos.2 to 4 submit that the Plaintiffs have instituted the present suit before this Hon ble Court which, as such, does not have the territorial jurisdiction to try and entertain the present suit. Defendant Nos.2 to 4 submit that this Hon ble Court has no territorial jurisdiction to try the present suit for infringement and passing off on account of the following facts:- (a) The cause of action for institution the present suit has arisen entirely in the city of Mumbai, which is outside the territorial jurisdiction of this Hon ble Court. (b) No part of the cause of action has arisen in the territorial jurisdiction of the Hon ble Delhi High Court. The Plaintiffs appear to have concealed the fact that they CS(COMM) No.90/2017 Page 7 of 22
have their office/s and huge commercial presence in the city of Mumbai, where the cause of action has arisen. The Plaintiffs own and operate three five-star hotels viz. The Oberoi and The Trident at Nariman Point, Mumbai, and The Trident at Bandra Kurla Complex, Mumbai, which fact has been concealed by them. The commercial presence of the Plaintiffs appear to be greater within the city of Mumbai as compared to Delhi or even Kolkata where they have only one Hotel. It appears that the Plaintiffs main business has been undertaken in the city of Mumbai where they have a large executive and managerial workforce. (c) The Defendants herein have not advertised their building construction project in Delhi. Knowledge and awareness of the Defendants building construction project THREE SIXTY WEST is only by invitation. (d) In view of the judgment reported in Indian Performing Rights Society Limited vs Sanjay Dalia and anr. reported in (2015) 10 SCC 161: AIR 2015 SC 3479, the present suit alleging infringement and passing off could not have been filed in the territorial jurisdiction of this Hon ble Court. 4. As mentioned in the cause title of the suit plaint, the Plaintiff Nos.1 and 2 are having their registered offices at Kolkata. The Defendant Nos.2 to 4 are carrying on their construction business at Mumbai and have their registered offices at Mumbai at the addresses mentioned in the cause title of the suit plaint. Infact all Defendants have their registered offices and / or are conducting their business from Mumbai. As neither the Plaintiffs nor any of the Defendants are having their registered office address at New Delhi or within the jurisdiction of this Hon ble Court, this Hon ble Court has no jurisdiction to try and entertain the present suit of the Plaintiffs. The Defendants submit that the Delhi office of the Plaintiff Nos.1 and 2, as mentioned in the cause title of the suit CS(COMM) No.90/2017 Page 8 of 22
plaint, is not the registered office address of the Plaintiffs. 5. The Defendant Nos.2 to 4 submit that the Plaintiffs have filed this present suit alleging acts of infringement and passing off committed by the Defendants by use of the words THREE SIXTY WEST as the name of their building project. Such building project bearing the title / name THREE SIXTY WEST is located in Worli, Mumbai. Thus the situs of the property which is the basis and the subject matter of the present dispute is located in Mumbai. Having regard to the provisions of Section 20 of the Code of Civil Procedure, 1908, the cause of action for the Plaintiffs present suit, being a building project constructed by the Defendants in Worli, Mumbai, named / titled THREE SIXTY WEST, has therefore not arisen within the territorial jurisdiction of this Hon ble Court. Such construction of their said building project is not undertaken by the Defendants at Delhi or at any place within the jurisdiction of this Hon ble Court. The entire cause of action to institute the present suit has arisen in Mumbai, where both the Plaintiffs and the Defendants have their respective offices and the cause of action has also arisen there. 6. It is the Plaintiff s case that they are the registered proprietor of the trade mark label THREESIXTY o used in relation to their restaurant. The Defendant Nos.2 to 4 do not offer any restaurant or hotel services as offered by the Plaintiffs. The Defendant Nos.2 to 4 are engaged in the construction business, which services are distinct and different from those offered by the Plaintiffs. There is thus no case for infringement of the Plaintiffs trade mark, as allegedly claimed by the Plaintiffs or at all. The Defendant Nos.2 to 4 submit that the Plaintiffs have no case on merits, whether on infringement or on passing off. Even assuming in the Plaintiff s favour, their best cause (if at all one has to consider) can atbest be for passing off. The Defendants have been informed and verily believe that the provisions of Section 134(2) of the CS(COMM) No.90/2017 Page 9 of 22
Trade Marks Act, 1999, do not apply to a case for passing off. The said provision only operates in the realm of infringement cases. Even further assuming in the Plaintiffs favour and believing their case on infringement to be true, even then, the cause of action to institute the present suit viz. the building construction project of the Defendants named THREE SIXTY WEST, is located in Mumbai. Consequently, the Plaintiffs suit cannot be filed in Delhi as the entire cause of action has arisen in Mumbai and no part thereof has arisen in Delhi or within the jurisdiction of this Hon ble Court. Therefore also, and even applying the provisions of Section 134(2) of the Trade Marks Act, 1999, the Plaintiffs suit cannot lie in Delhi nor within the jurisdiction of this Hon ble Court. 7. As further pleaded by the Plaintiffs, the cause of action to institute the present suit has arisen on account of certain enquiries received from Plaintiffs customers by the Plaintiffs which purport to evidence consumer confusion. The Defendants respectfully submit that the same apart from being evidence doctored and engineered by the Plaintiffs to suit their claims, cannot create any jurisdiction in a Court which, otherwise, has none. Reliance on the unreported judgment of the Hon ble Division Bench of this Court in Music Broadcast Ltd. Vs. Axis Bank, has no application for the facts therein are entirely different to the facts involved in the present case. The Defendants reiterate that the entire cause of action has arisen outside the jurisdiction of this Hon ble Court and at a place where both the Plaintiffs and the Defendants have present. The Defendants therefore submit with utmost respect that this Hon ble Court does not have the jurisdiction, territorial or otherwise, to entertain and try the present suit of the Plaintiffs. On this sole ground, that this Hon ble Court lacks the territorial jurisdiction to try and entertain the Plaintiff s suit, this Hon ble Court ought to dismiss the Plaintiffs suit in limine at the very threshold. CS(COMM) No.90/2017 Page 10 of 22
8. The plaintiffs, in their replication to the aforesaid written statement, qua territorial jurisdiction, have stated as under: 6. This Hon ble Court has territorial jurisdiction: a. The Defendants have incorrectly stated that the cause of action in the present suit has entirely arisen in the city of Mumbai. This contention is clearly contrary to the categorical averments made in the plaint. The plaint provides details of the substantial parts of the cause of action which have arisen within the territorial jurisdiction of this Hon ble Court. The Defendants have given no response whatsoever to the Plaintiffs averments which unequivocally show that a substantial part of the cause of action for the present suit has arisen within the territorial jurisdiction of this Hon ble Court. b. The Defendants have frivolously referred to the Defendants properties and the Plaintiffs hotels in the city of Mumbai. The Plaintiffs, being the dominus litus, are entitled to sue at any place where a part of the cause of action has arisen. Since a part of the cause of action of the present suit has arisen in New Delhi, the Plaintiffs are fully entitled to invoke the jurisdiction of this Hon ble Court. c. The Defendants have wrongly stated that they have not advertised their building construction project in Delhi and that knowledge and awareness of their project is only by invitation. The Defendants impugned project is being heavily advertised and promoted through highly interactive websites of prominent brokers, which have business and customers in Delhi. The Defendants project has also been advertised in national magazines and newspapers which have circulation in Delhi. The apartments in the Defendants impugned project are not only being sold through invitation; in fact, these properties are already up for resale by several brokers. d. The Defendants have also misleadingly only referred to their residential properties and have made no reference to CS(COMM) No.90/2017 Page 11 of 22
the hotel and restaurant which is slated to form part of their property under the mark THREE SIXTY WEST. This hotel and restaurant, being located in Mumbai, is bound to receive many bookings and customers from Delhi. This fact, though specifically pleaded in the plaint, has not been responded to by the Defendants. e. The Defendants reference to the decision of Indian Performing Rights Society v Sanjay Dalia has no applicability to the present case since the Plaintiffs are not carrying on any business under the mark THREESIXTY o and THREESIXTYONE in the city of Mumbai. 9. The written statement of the defendant no.8 and replication thereto are on similar lines. 10. The counsel for the plaintiff and the senior counsel for the defendants no.2 to 4 and the senior counsel for the defendants no.1 and 8 were heard. The defendants no.5 to 7 were proceeded against ex parte vide order dated 9 th February, 2017. The defendant no.7 thereafter appeared and was permitted to file written statement and has pleaded that it is a small property dealer in Mumbai and is not the broker of the defendants no.1 to 4 and has never dealt with the project under the impugned name/mark. 11. The senior counsels for the defendants argued, that (i) the place of registration of the trade mark does not create jurisdiction; reliance was placed on Dhodha House Vs. S.K. Maingi AIR 2006 SC 730; (ii) relied on Indian Performing Rights Society Ltd. Vs. Sanjay Dalia (2015) 10 SCC 161 and Ultra Home Construction Pvt. Ltd. Vs. Purshottam Kumar Chaubey 2016 (65) PTC 469 to contend that jurisdiction under Section 134 of the Trade Marks Act at the place where the plaintiff carries on business, is subject to the rider that if the plaintiff also carries on business at the place CS(COMM) No.90/2017 Page 12 of 22
where cause of action has arisen, suit should be filed at that place and not at the place where only the plaintiff carries on business; (iii) reference was made to my judgment in Radico Khaitan Ltd. Vs. Nakshatra Distilleries & Breweries Ltd. (2017) 241 DLT 48 to contend that perception of threat at Delhi does not accrue cause of action in Delhi; and, (iv) that the websites, on which the impugned property at Mumbai is being marketed at Delhi, are not websites of the defendants; reliance was placed on Banyan Tree Holding (P) Ltd. Vs. A. Murali Krishna Reddy 2010 (42) PTC 361 (Del). 12. Per contra, the counsel for the plaintiffs argued that (a) the defendants have placed advertisement of the property under the impugned mark in newspapers having circulation at Delhi and attracting customers at Delhi and which accrues cause of action to the plaintiffs at Delhi; (b) invitations in respect of the property/project have also been issued by the defendants to customers in Delhi and which also accrues cause of action at Delhi; (c) a large number of such persons at Delhi are bound to avail of the services of the defendants at Mumbai; (d) the present suit is a continuation of CS(OS) No.892/2005 between the parties in which the defendants accepted the territorial jurisdiction of this Court and entered into amicable settlement with the plaintiffs; (e) the principal office need not always be the registered office; (f) the question, whether the principal place of business of the plaintiffs is at Delhi or not, as pleaded in the plaint, can be decided only at trial; (g) there cannot be a mini trial at the stage of Order VII Rule 10 of the CPC; reliance was placed on Merck Vs. Ethypharm 2010 (119) DRJ 452; (h) the plaintiffs restaurant Threesixty o is located in the hotel of the plaintiff at Delhi; no hotel of the plaintiffs anywhere outside Delhi is using the said mark; (i) reliance was placed on Music Broadcast CS(COMM) No.90/2017 Page 13 of 22
Limited v. Axis Bank 2016 SCC OnLine Del 4137 (DB) to contend that the place of registration of the mark also vests jurisdiction in the Court; (j) the websites of the defendants require the customers located in Delhi to provide their contact addresses and information so that the defendants may send invitations to them at Delhi; (k) reliance was placed on order dated 20 th February, 2017 of this Court in CS (COMM) 1680/2016 titled Vifor (International) Ltd. Vs. Suven Life Sciences Ltd. to contend that the place where the customer is approached, has territorial jurisdiction; and, (l) the defendants in their written statement have admitted sending invitations at Delhi. 13. The senior counsel for the defendants contended that the reliance by the counsel for the plaintiffs on Music Broadcast Limited supra is misconceived inasmuch as that was a case of compulsory license. It was further contended that the pleas, of cause of action having accrued at Delhi, are bald. 14. I have considered the rival contentions. 15. The plaintiffs have invoked the territorial jurisdiction of this Court invoking Section 20(c) of the CPC as well as Section 134(2) of the Trade Marks Act. 16. Section 134(2) supra entitles a plaintiff in a suit of the nature prescribed in Section 134(1) to, in addition to invoking the territorial jurisdiction of the Court within the local limits of whose jurisdiction the defendant resides or carries on business or personally works for gain or of the place where the cause of action wholly or in part arises, also invoke the territorial jurisdiction of the Court within the local limits of whose CS(COMM) No.90/2017 Page 14 of 22
jurisdiction the plaintiff actually and voluntarily resides or carries on business or personally works for gain. 17. I have, in Millennium & Copthorne International Ltd. Vs. Aryans Plaza Services Pvt. Ltd. 2018 SCC OnLine Del 8260, while rejecting an application under Order VII Rule 11 of the CPC on the ground of this Court not having territorial jurisdiction, held as under: 12. I have further enquired from the counsel for the defendants/applicants, as to how is it possible in business through such websites, to target viewers in any particular State or at any particular destination, as is the test laid down in Banyan Tree Holding (P) Limited supra. Per my understanding, an interactive website cannot be targeted to any particular city or State of India and would be identically accessible throughout, at least India, wherever the reach of internet is. In fact, I have been asking this question in several cases but have not got any reply thereto. 13. No answer is forthcoming from the counsel for the defendants/applicants either. 20. The counsel for the plaintiff has also referred to World Wrestling Entertainment, Inc. Vs. M/s. Reshma Collection 2014 SCC OnLine Del 2031 (DB) particularly to paras 2, 6, 8, 17, 18 and 22 to 25 thereof, where an order of return of plaint was set aside and it was inter alia held that with the advent of e- commerce, the expression carries on business at a certain place, has been impacted and is much wider than the other expressions used in Section 20 of the CPC. 23. The plaintiff has not only pleaded itself carrying on business within the territorial jurisdiction of this Court on account of it being possible to book services of the hotels and resorts of the plaintiff, though outside India, from Delhi but also pleaded the factum of the defendants carrying on business at Delhi. CS(COMM) No.90/2017 Page 15 of 22
24. In continuation of what was held by the Division Bench in World Wrestling Entertainment, Inc., I may state that the mode of booking/reserving rooms and other facilities particularly of dining therein, in hotels/resorts/spas, has changed over the years with maximum number of bookings/reservations being made through such third party websites, so much so that the rates available on the third party websites are also found to be considerably lower than the rates offered through traditional mode of agents or offices in major cities. Judicial notice can be taken of the fact that much of the volume of businesses of hotels is now through such third party websites, in comparison to the business through direct bookings and/or through travel agents. Thus, if the Courts at Delhi will have jurisdiction over subject matter of suit owing to defendants having interactive website accessible at Delhi and enabling defendants situated outside Delhi to carry on business at Delhi, I see no reason to hold that it will not be so where the defendants, instead of hosting its own interactive website, avails the service of third party websites to carry on business at Delhi. There is no rationale for carving out such a distinction. Certainly, making a booking/reservation, even if the same does not subsequently materialise, is part of carrying on business, inasmuch as the hotel which has taken the booking, even if has not received any payment, being unable to turn back a customer if shows up in pursuance to such booking... In any case, such acts of the defendants amount to specifically targeting the viewers at Delhi, within the meaning of Banyan Tree Holding (P) Ltd. supra. 25. I am thus unable to hold that this Court does not have territorial jurisdiction, for the plaint to be returned/rejected. 26. Before parting with this aspect, I may mention that the test evolved in Banyan Tree Holding (P) Ltd. supra, that the jurisdiction of the forum State does not get attracted merely on the basis of the interactivity of the website which is accessible in the forum State the nature of the activity permissible and whether it results in a commercial transaction has to be examined the plaintiff must necessarily plead and show prima facie that the specific targeting of the forum state resulted in an injury or harm to the plaintiff within the forum CS(COMM) No.90/2017 Page 16 of 22
State where the plaintiff is not located within the jurisdiction of the Court, the injurious effect on plaintiff s business, goodwill or reputation within the forum State as a result of defendant s website being in the forum State would have to be shown.to show that the injurious effect has been felt by the plaintiff it would have to be shown that viewers in the forum State were specifically targeted therefore the effects test would have to be applied in conjunction with the sliding scale test to determine if the forum Court has jurisdiction to try a suit concerning internet based disputes, was evolved after surveying the law as it had developed in different jurisdictions i.e. United States of America (USA), United Kingdom (UK) and Australia by adopting the essential principles developed as part of the common law in determining whether the forum Court has jurisdiction where the alleged breach is related to an activity on the internet. The effects test and the sliding scale test referred to, as per the judgment, were laid down for the first time in Calder Vs. Jones 465 U.S. 783 (1984) and in Zippo Mfg. Co. Vs. Zippo Dot Com, Inc., 952 F. Supp. 1119 respectively, to determine if the forum Court has jurisdiction. The effects test and the sliding scale test came to be evolved by the US Courts in interpretation of the Due Process clause in the 14 th Amendment to the United States Constitution permitting personal jurisdiction over a defendant in a state with which the defendant has certain minimum contacts. such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice, as held in Calder supra. Though judgments of the Courts in Canada, UK and Australia also were noticed but in the ultimate analysis, the judgments of the Courts of USA only were followed in Banyan Tree Holding (P) Ltd. supra. 27. However, the law relating to territorial jurisdiction in India is codified, generally for all suits, in Sections 15 to 20 of the Code of Civil Procedure, 1908 and for suits relating to trade marks, in the Trade Marks Act, 1999. Sections 19 and 20 of the CPC which would be applicable to suits for infringement of trade mark and compensation therefor, are as under: CS(COMM) No.90/2017 Page 17 of 22
19. Suits for compensation for wrongs to person or movables.-where a suit is for compensation for wrong done to the person or to movable property, if the wrong was done within the local limits of the jurisdiction of one Court and the defendant resides, or carries on business or personally works for gain, within the local limits of the jurisdiction of another Court, the suit may be instituted at the option of the plaintiff in either of the said Courts. 20. Other suits to be instituted where defendants reside or cause of action arises.- Subject to the limitations aforesaid, every suit shall be instituted in a Court within the local limits of whose jurisdiction (a) the defendant, or each of the defendants where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain; or (b) any of the defendants, where there are more than one, at the time of the commencement of the suit, actually and voluntarily resides, or carries on business, or personally works for gain, provided that in such case either the leave of the Court is given, or the defendants who do not reside, or carry on business, or personally work for gain, as aforesaid, acquiesce in such institution; or (c) the cause of action, wholly or in part, arises. A corporation shall be deemed to carry on business at its sole or principal office in [India] or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place. 28. Section 19, as aforesaid, permits a suit for compensation for wrong done to the person or to the movable property to be instituted either within the local limits of the jurisdiction of the Court where the wrong was done or within the local limits of the Court where the defendant resides or carries on business or CS(COMM) No.90/2017 Page 18 of 22
personally works for gain. Section 20 permits suits other than the suits to which Sections 16 to 19 apply, to be instituted, either where the defendant resides or carries on business or personally works for gain or where the cause of action wholly or in part arises. 29. It will thus be seen that all that a plaintiff in a suit for infringement of trade mark or for passing off and for ancillary reliefs including of compensation with respect thereto is required to plead and show to invoke the jurisdiction of any Court, is that wrong was done to it within the local limits of the jurisdiction of that Court and wherein the cause of action would axiomatically accrue to the plaintiff and/or that the cause of action, in whole or in part accrued within the jurisdiction of that Court. In view of the codified law of India, conferring territorial jurisdiction on a Court where wrong is done to plaintiff or where even a part of cause of action arises and it being indisputable that cause of action arises in a Court within whose jurisdiction confusion or deception essential for an infringement or passing off suit takes place or injury caused to the plaintiff and the plaintiff is also entitled under Section 19 supra to sue where wrong is done, all that the plaintiff is required to plead is these ingredients, howsoever miniscule they may be. Once the plaintiff has pleaded so, in my respectful opinion, there is no need to further test territorial jurisdiction applying the principles evolved by the US Courts in the context of their Due Process clause. 30. Section 134(2) of the Trade Marks Act further entitles a suit to be instituted, besides in the aforesaid Courts, also in Courts within the local limits of whose jurisdiction the plaintiff at the time of institution of the suit actually and voluntarily resides or carries on business or personally works for gain. Thus a suit as prescribed in Section 134(1) of the Act is permitted to be instituted, at the option of the plaintiff, besides in the Court where the wrong has been done or the cause of action has accrued or where the defendant resides or carries on business, also in the Courts where the plaintiff resides or carries on business, notwithstanding no wrong having been done or cause of action having been accrued in that Court and CS(COMM) No.90/2017 Page 19 of 22
even where the defendant may not be the resident of or carrying on business within the jurisdiction of that Court. 31. The plaintiff in the present case as aforesaid has invoked the territorial jurisdiction of this Court by pleading that the defendants sell their services under the impugned mark all over India including in Delhi through third party websites which accept reservations to the hotels and resorts of the defendants from Delhi. It is further pleaded that the plaintiff's services are also widely availed by the customers in Delhi. Axiomatically, the wrong is pleaded as having been caused to the plaintiff at Delhi and cause of action is pleaded to have accrued at Delhi. 32. I have recently in Zenner International GMBH & Co. KG Vs. Anand Zenner Company Pvt. Ltd. 2018 SCC OnLine Del 7011, referring to Pratap Singh Vs. Bank of America 1976 SCC OnLine Bom 111 and Wipro Ltd. Vs. Oushadha Chandrika Ayurvedic India (P) Ltd. AIR 2008 Mad 165, held that a clear distinction is made in Section 20(c), of the CPC and in Section 134(2) of Trade Marks Act between carrying on business and personally working for gain ; while in latter, the legislative requirement is that defendant should personally work for gain, no such requirement is postulated in carrying on business it means that the defendant may carry on business himself or through an agent. It was yet further held that the word defendant in Section 20 of the CPC includes both natural or artificial persons and no distinction in law can be made between corporations that are incorporated in India and corporations that are incorporated outside India. It was further held that while there is a limitation regarding residence, there is no restriction with reference to carrying on business this is clear indication that the term carries on business is not confined to only principal place of business if the legislature intended to mean the principal place only, it would have suitably qualified the expression carries on business. Applying the said law, the plaintiff even though not having any office in Delhi would still be carrying on business in Delhi and would qualify to institute the suit in Delhi under Section 134 of the Trade Marks Act also. CS(COMM) No.90/2017 Page 20 of 22
33. There is thus no merit in the application. 34. Dismissed. 18. Applying the aforesaid to the present case, the applications but have to be dismissed. 19. The plaintiffs herein also have pleaded effect of the action of the defendants within the territorial jurisdiction of this Court and sale of the project at Delhi through third party websites. All the said pleas in the plaint if proved, would confer territorial jurisdiction on this Court and the plaintiffs cannot be ousted treating the averments in the plaint to be false. 20. Though there can be no estoppel against statute and no conferment of jurisdiction by consent but it cannot also be lost sight of that CS(OS) No.892/2005 was filed by the plaintiffs against the defendants for permanent injunction restraining the defendants, who then also were carrying on business at Mumbai, from carrying on the said business of real estate, construction, hotels, spas and / or any cognate or allied business under the name and style OBEROI, OBEROI SPAS and OBEROI GROUP and the plaintiffs in the plaint in the suit aforesaid also, invoked the jurisdiction of this Court on the basis of the plaintiffs carrying on business at Delhi and the cause of action having accrued at Delhi owing to the defendants having advertised under the impugned mark in the Times of India newspaper having circulation at Delhi. The plaintiffs and the defendants, during the pendency of the said suit, entered into an Agreement dated 27 th November, 2009 at Delhi whereunder the defendants agreed to use the mark OBEROI in respect of its real estate, construction and infrastructure business only in conjunction with the qualifier construction CS(COMM) No.90/2017 Page 21 of 22
or development or realty or words connoting real estate affairs. The defendants having entered into the Agreement in the earlier suit and in terms of which the earlier suit was decreed, at Delhi, do not inspire confidence while disputing the territorial jurisdiction of this Court upon this suit being filed by the plaintiffs. 21. For the aforesaid reasons, no merit is found in the applications. Dismissed. CS(COMM) No.90/2017 22. List on 18 th July, 2018. JULY 05, 2018 gsr.. RAJIV SAHAI ENDLAW, J. CS(COMM) No.90/2017 Page 22 of 22