Introduction: This case revolves around the trademark dispute between Iconic IP Interests LLC, a U.S.-based licensor and proprietor of the "JOLLY RANCHER" brand, and M/s Shiv Textiles, an Indian entity using the mark "JOLLY RANGER LEGWEAR." The legal contention centers around alleged infringement, prior use, jurisdiction, and the cause of action.

The petitioner challenged the maintainability of the suit filed by the respondent before the Bhavnagar District Court, seeking rejection of the plaint under Order VII Rule 11 of the Code of Civil Procedure, 1908. The Gujarat High Court adjudicated the writ petition filed under Article 227 of the Constitution of India.

• Detailed Factual Background:
  • Iconic IP Interests LLC is a limited liability corporation incorporated in Delaware, USA. It operates as a licensing entity for intellectual property rights and is a subsidiary of Highlander Partners L.P., a U.S.-based private investment firm.
  • The petitioner owns the trademark "JOLLY RANCHER" and its variations, which are widely recognized in connection with confectionery and related goods.
  • Initially, the rights to the "JOLLY RANCHER" mark were held by Huhtamaki Finance B.V., which licensed them to Hershey Chocolate & Confectionery Corporation.
  • Subsequently, Huhtamaki transferred all rights to the petitioner, who continued the licensing agreement with Hershey.
  • In March 2023, the petitioner discovered that M/s Shiv Textiles had registered the trademark "JOLLY RANGER LEGWEAR" for jeans and pants in Class 25, claiming use since January 1, 2019.
  • A legal notice dated April 28, 2023, was issued by the petitioner demanding cessation of use.
  • The respondent replied on May 8, 2023, claiming that "JOLLY" is generic and that their adoption was honest and prior.
  • A further notice was issued on June 9, 2023, followed by a non-responsive conciliatory attempt by the petitioner on August 17, 2023.
     
• Detailed Procedural Background:
  • Shiv Textiles filed Commercial Trademark Suit No. 1 of 2023 before the 2nd Additional District Judge, Bhavnagar.
  • The petitioner filed CS (COMM) 870/2023 before the Delhi High Court, seeking injunction, damages, and trademark rectification under Section 57 of the Trade Marks Act, 1999.
  • An application No. 5970539 was filed on January 3, 2024, to register the "JOLLY RANCHER" mark in Class 25.
  • The petitioner filed an application under Order VII Rule 11 CPC for rejection of the plaint, which was dismissed on November 22, 2024.
  • A challenge was filed before the Gujarat High Court through Special Civil Application No. 1543 of 2025.
     
• Issues Involved in the Case:
  • Whether the suit filed by the respondent disclosed a cause of action within the territorial jurisdiction of the Bhavnagar court?
  • Whether the application under Order VII Rule 11 CPC was maintainable?
     
• Detailed Submission of Parties:
  • The petitioner argued that the respondent suppressed prior knowledge of the "JOLLY RANCHER" trademark.
  • The plaint failed to show any act by the petitioner in Bhavnagar that could form a cause of action.
  • The petitioner asserted that mere registration and listings on Amazon (USA) do not establish commercial activity in India.
  • Reliance was placed on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr., 2022 SCC OnLine Bom 7183.
  • The respondent argued that repeated notices created a recurring cause of action.
  • The respondent stated that Order VII Rule 11 must be determined only on the plaint and accompanying documents.
     
• Detailed Discussion on Judgments Cited:
  • Petitioner relied on Mudhit Madanlal Gupta v. Mazher Khan Farooqui & Anr. which held that suppression of facts and illusory causes of action justify plaint rejection.
  • The High Court cited Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780 for jurisdiction in internet-based trademark disputes.
  • It held that no commercial targeting of Indian consumers occurred via U.S.-based websites.
     
• Detailed Reasoning and Analysis of Judge:
  • The essential requirement for maintainability is the existence of a cause of action within jurisdiction.
  • Petitioner's activity was limited to foreign jurisdictions, and Amazon.com availability did not suffice for jurisdiction.
  • No credible evidence of commercial activity in India was found.
  • The burden to show harm or transactions in India lay on the respondent, which it failed to establish.
  • Respondent suppressed facts about petitioner's trademarks and notices.
  • Hershey was a necessary party; its absence affected maintainability.
  • The plaint did not disclose a cause of action under Order VII Rule 11(a) CPC and was liable to be rejected.
     
• Final Decision:
  • The Gujarat High Court allowed the writ petition and set aside the 2nd Additional District Judge's order dated November 22, 2024.
  • The plaint in Commercial Trademark Suit No. 1 of 2023 was rejected under Order VII Rule 11(a) of the CPC.
     
• Law Settled in This Case:
  • A foreign trademark proprietor cannot invoke Indian jurisdiction merely by sending legal notices or maintaining international website listings.
  • Suppression of material facts and non-joinder of necessary parties are valid grounds for rejection under Order VII Rule 11.
  • A suit must disclose a clear and real cause of action within jurisdiction to be maintainable.

Case Title: Iconic IP Interests LLC Vs Shiv Textiles: Date of Order: 09 May 2025: Case No.: R/Special Civil Application No. 1543 of 2025: Name of Court: High Court of Gujarat at Ahmedabad: Name of Judge: Hon'ble The Chief Justice Mrs. Justice Sunita Agarwal and Hon'ble Mr. Justice Pranav Trivedi

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: ajayamitabhsuman@gmail.com, Ph no: 9990389539