Territorial Jurisdiction in Online Trademark Disputes

Trademark Dispute: Suman Devi and Another Vs. Rakesh Kumar Sharma

Case Overview

The case of Suman Devi and Another v. Rakesh Kumar Sharma, adjudicated by the High Court of Delhi, represents a significant judicial examination of trademark infringement and passing off in commercial disputes involving scientific and laboratory instruments.

Heard under First Appeal from Order (FAO) (Commercial) 189/2025, the case involves an appeal against an interlocutory order issued by the Commercial Court, which granted an injunction restraining the appellants from using a mark deceptively similar to the respondent’s registered trademark “LABTRONICS.” The matter touches upon issues of trademark similarity, territorial jurisdiction, and the scope of appellate interference in interlocutory orders.

Factual Background

Rakesh Kumar Sharma, the respondent, filed suit (CS (Comm) 410/2025) before the Commercial Court alleging that the appellants, Suman Devi and another, were infringing on his registered trademark “LABTRONICS” and passing off their goods as his own.

The respondent claimed to have coined the term “LABTRONICS” in 2001 for scientific instruments such as spectrophotometers, photometers, titrimeters, polarimeters, and microscopes. He held a valid wordmark registration in Class 9 from 5 March 2010. One of the appellants, a former employee, was allegedly using the mark “LABTRON INSTRUMENTS” for identical goods, prompting allegations of deliberate infringement.

The appellants denied phonetic or visual similarity and challenged the Commercial Court’s territorial jurisdiction, arguing that the respondent’s business had no connection to Delhi.

Procedural Background

In CS (Comm) 410/2025, the respondent sought an injunction under Order XXXIX Rules 1 and 2 of the CPC. On 2 June 2025, the Commercial Court granted an ex-parte ad-interim injunction, appointed local commissioners to inventory infringing goods, and found a prima facie case.

The appellants filed an appeal under Section 13 of the Commercial Courts Act and Order XLIII CPC before the Delhi High Court, arguing lack of similarity and improper jurisdiction. The matter was heard by Justices C. Hari Shankar and Om Prakash Shukla, and the oral judgment was delivered on 25 July 2025.

Core Dispute

Two core issues were involved:

1. Whether “LABTRON INSTRUMENTS” was deceptively similar to the registered trademark “LABTRONICS”, thereby constituting infringement and passing off.
2. Whether the Commercial Court in Delhi had territorial jurisdiction to entertain the suit.

The appellants argued for distinctiveness due to the added word “INSTRUMENTS” and absence of “ICS,” and denied any business connection to Delhi. The respondent contended phonetic and visual similarity, and cited online and distributor sales in Delhi to establish jurisdiction.

Judicial Discussion

The High Court cited key precedents:

• Banyan Tree Holdings: Initially set a stringent jurisdiction test for online transactions.
• World Wrestling Entertainment and Tata Sons Pvt. Ltd.: Relaxed the test, holding that interactive websites and distributor sales can establish jurisdiction.
• Midas Hygiene and Laxmikant V. Patel: Support injunctions in clear cases of infringement and passing off, even at the initial hearing stage.
• Wander Ltd. v. Antox India: Restricts appellate interference in interlocutory orders unless they are arbitrary or contrary to law.

Reasoning and Analysis

Justice C. Hari Shankar found the two marks deceptively similar. “LABTRONICS” was a coined term, deserving heightened protection. The suffix “ICS” and word “INSTRUMENTS” did not significantly distinguish the appellants’ mark.

The prior employment of one appellant with the respondent further indicated intent to exploit goodwill. The injunction was based on documents like trademark certificates, social media posts, and product photos.

Regarding jurisdiction, the court accepted that sales via distributors and interactive websites in Delhi constituted sufficient business activity to invoke jurisdiction under Section 20 CPC and Section 134 of the Trade Marks Act.

Final Judgment

On 25 July 2025, the High Court dismissed the appeal in FAO (COMM) 189/2025, upholding the Commercial Court’s 2 June 2025 order. The interim injunction and appointment of local commissioners remained in force, based on a strong prima facie case of infringement and passing off.

Law Settled in This Case

• Coined trademarks like “LABTRONICS” enjoy stronger protection.
• Minor differences in suffixes or descriptive words don’t negate deceptive similarity.
• Prior employment may support claims of intentional infringement.
• Territorial jurisdiction can arise from interactive online sales or local distributors.
• Appellate courts must not interfere with well-reasoned interlocutory injunctions.
• Injunctions are mandatory in cases of proven trademark infringement, even at the interim stage.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539