The case of Prime Comfort Products Private Limited vs. Lal Bahadur Trading as Sulakshmi Enterprises is a significant trademark dispute that brings forth critical issues related to territorial jurisdiction. The plaintiff, a registered trademark owner, sought relief against the defendant for infringement and passing off. The defendant, in response, challenged the jurisdiction of the Delhi High Court, arguing that no part of the cause of action arose in Delhi. The court was required to assess whether the plaintiff had established a prima facie case for jurisdiction and whether the defendant's arguments warranted the dismissal of the suit through a summary judgment.

Factual Background:
The plaintiff initially filed a suit for passing off, claiming that the defendant was using a deceptively similar mark. During the pendency of the suit, the plaintiff obtained registration for its trademark and subsequently amended the plaint to include a claim for infringement. The defendant was allegedly selling infringing products under the brand name “Refresh Springs,” which the plaintiff contended was confusingly similar to its registered trademarks. The plaintiff further asserted that the defendant’s online presence, including an interactive website, facilitated sales across India, including Delhi. The plaintiff also cited complaints from distributors who reported market confusion due to the similarity in branding.

The defendant countered that it had no business presence in Delhi and that the plaintiff had failed to provide any invoices or evidence of actual sales in Delhi. It argued that the accessibility of its website in Delhi did not automatically confer jurisdiction upon the Delhi High Court. The defendant relied on precedents that emphasized the need for concrete evidence demonstrating that the alleged infringing activities had a direct impact within the court’s territorial jurisdiction.

Procedural Background:
The defendant moved an application under Order XIIIA of the Commercial Courts Act, 2015, seeking summary judgment on the ground that the suit lacked merit due to jurisdictional deficiencies. The defendant contended that there was no material evidence to suggest that it was conducting business in Delhi. The plaintiff opposed this application, asserting that the defendant’s website was interactive and facilitated sales across India, including in Delhi. The court reserved its decision on September 7, 2018, and pronounced its judgment on September 14, 2018.

Issues Involved in the Case:
The primary issue in this case was whether the Delhi High Court had territorial jurisdiction to entertain the suit. The court had to determine whether the defendant’s online presence and alleged sale of goods in Delhi provided a sufficient basis for jurisdiction under Section 134(2) of the Trade Marks Act, 1999, and Section 20(c) of the Code of Civil Procedure. The court also had to decide whether the plaintiff had made a prima facie case for jurisdiction or whether the suit should be dismissed summarily.

Submission of Parties:
The plaintiff argued that its registered office was in Delhi and that it was carrying on business within the territorial limits of the court. It contended that under Section 134(2) of the Trade Marks Act, 1999, a trademark owner has the right to sue in the jurisdiction where it carries on business, irrespective of where the infringement occurs. The plaintiff also emphasized that the defendant’s website was accessible in Delhi and that the defendant had acknowledged nationwide sales in a trademark opposition proceeding. It relied on the Supreme Court's judgment in Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), which held that a plaintiff could sue at the place of its principal office.

The defendant maintained that the plaintiff had not provided any proof of sales in Delhi and that jurisdiction could not be established merely on the basis of an accessible website. It relied on the judgment in Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), which required a plaintiff to show that the defendant had engaged in commercial activity specifically targeting customers within the forum state. The defendant further cited Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), which held that in commercial suits, courts could dismiss claims summarily if the plaintiff lacked a real prospect of success.

Discussion on Judgments Cited:
In Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), the court held that a plaintiff with a registered office in a particular jurisdiction could sue for trademark infringement there, even if the cause of action arose elsewhere. The plaintiff relied on this ruling to justify filing the suit in Delhi.In Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), the court held that a plaintiff must show that a defendant had engaged in commercial transactions specifically targeting customers within the forum state. The defendant argued that this principle applied and that the plaintiff had failed to establish such targeting.In Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), the court emphasized that commercial suits could be dismissed summarily if the plaintiff had no real prospect of success. The defendant cited this ruling to argue that the plaintiff’s claim lacked merit and should be dismissed without trial.The court also examined M/s. RSPL Limited vs. Mukesh Sharma & Anr., FAO(OS) 145/2016, where it was held that a plaintiff must make a positive statement of fact regarding jurisdiction and that such statements must be taken as correct when considering an application under Order 7 Rule 10 CPC.

Reasoning and Analysis of the Judge:
Justice Yogesh Khanna reasoned that the plaintiff had its registered office in Delhi and was carrying on business within the jurisdiction. The court noted that Section 134(2) of the Trade Marks Act, 1999, granted jurisdiction to the court where the plaintiff carried on business, and that this provision was distinct from the general rules of jurisdiction under the CPC.The court observed that the defendant had itself stated in a trademark opposition proceeding that its products were widely sold across India. This, in the court’s view, was sufficient to establish a prima facie case for jurisdiction. The court distinguished Banyan Tree Holding by noting that in that case, the website was not interactive, whereas in the present case, the defendant’s website allowed users to place orders.The court also considered Ultra Home Construction and ruled that since the plaintiff had its registered office in Delhi, it was entitled to sue there. The court rejected the defendant’s reliance on Godfrey Phillips India Limited, holding that the plaintiff had a real prospect of succeeding and that the case warranted a full trial.

Final Decision:
The court dismissed the defendant’s application for summary judgment, holding that the Delhi High Court had jurisdiction to entertain the suit. The court ruled that the plaintiff had established a prima facie case for jurisdiction and that the matter should proceed to trial. The application was dismissed with no order as to costs.

Law Settled in This Case:
The case reaffirmed that under Section 134(2) of the Trade Marks Act, a plaintiff can sue for trademark infringement in the jurisdiction where it carries on business, irrespective of where the defendant operates.Trademark Jurisdiction can be based on the basis of Defendant's own admission in opposition proceeding claiming all India user. It also clarified that an interactive website capable of soliciting orders within a jurisdiction could be a valid ground for establishing territorial jurisdiction. The judgment reinforced that jurisdictional challenges must be assessed based on prima facie evidence rather than requiring conclusive proof at the preliminary stage.

Case Title: Prime Comfort Products Private Limited Vs. Lal Bahadur Trading as Sulakshmi Enterprises
Date of Order: September 14, 2018
Case No.: CS(COMM) 1606/2016
Court: High Court of Delhi
Judge: Hon'ble Mr. Justice Yogesh Khanna

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539