Delhi HC Returns 17 IP Suits, Says Mere Website Access Cannot Bring IP Cases To Delhi As Forum Non Conveniens Applies To Civil Suits

The Court considered seventeen commercial intellectual-property suits, principally alleging trade mark or copyright infringement and passing off.

In many suits, neither the plaintiff nor the defendants were located in Delhi.

Plaintiffs relied on grounds including online listings accessible in Delhi, alleged sales or deliveries there, the presence of investigators, branch offices, and claimed effects on their Delhi business.

The Court examined whether Delhi had territorial jurisdiction under Section 20 of the Code of Civil Procedure, 1908 (CPC), or under the additional forums provided by Section 134(2) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957.

The suits were considered together because they raised recurring questions about territorial jurisdiction in intellectual-property disputes, including online disputes.

The Court applied Sections 20(a)–(c) and 151 CPC and Order VII Rule 10 CPC, together with Section 134(2) of the Trade Marks Act and Section 62(2) of the Copyright Act.

Relying on Patel Roadways Ltd. v. Prasad Trading Co., Dhodha House v. S.K. Maingi, Indian Performing Rights Society v. Sanjay Dalia and Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey, it held that a corporation is ordinarily deemed to carry on business at its registered office; a subordinate office supports jurisdiction only where cause of action also arises there, and mere availability or sale of goods does not itself establish that a party carries on business.

For online infringement or passing off under Section 20(c), Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy requires specific targeting of the forum and, ordinarily, a commercially concluded transaction with a forum user resulting in injury there; accessibility alone is insufficient.

For passing off, Glen Raven Mills Inc. v. Vaspar Concepts Pvt. Ltd. and Indovax Pvt. Ltd. v. Merck Animal Health require, among other things, direct commercial-scale sales by the defendant to a distributor, wholesaler, or retailer in the forum; mere availability of goods is insufficient.

A quia timet claim requires a deliberate and imminent threatened activity presenting a strong possibility of infringement and substantial, potentially irreparable prejudice; regulatory permissions may be relevant to whether the threatened activity is real.

The Court held that the doctrine of forum non conveniens applies to civil suits: even where jurisdiction exists, the Court may decline to entertain a suit if the material, integral, and essential part of the cause of action lies in a more appropriate forum.

Finally, a meaningful reading of the plaint and supporting documents may expose clever drafting, unsupported assertions, or an illusory jurisdictional basis.

The Court rejected the proposition that a Delhi-accessible website, third-party marketplace listing, or isolated delivery automatically establishes jurisdiction.

It held that the Division Bench reasoning in World Wrestling Entertainment, Inc. v. Reshma Collection could not govern the meaning of “carries on business” after Dhodha House, Sanjay Dalia and Ultra Home, and that Tata Sons Pvt. Ltd. v. Hakunamatata Tata Founders did not displace Banyan Tree’s requirements for online claims.

It further held that investigator-arranged transactions ordinarily cannot be used to manufacture jurisdiction, and that delivery to a plaintiff’s carrier may be treated as delivery to the plaintiff under Section 39 of the Sale of Goods Act, 1930.

Applying these principles across the batch, the Court found that the Delhi links relied upon—such as online accessibility, unsupported claims of local sales, test purchases arranged by plaintiffs, and effects on a plaintiff’s Delhi business—did not establish the required jurisdictional connection or, where a limited connection was arguable, did not make Delhi the appropriate forum.

It ordered the plaints in all seventeen suits returned under Order VII Rule 10 read with Section 151 CPC, for presentation before an appropriate court if the plaintiffs so advised.

Pending applications were disposed of, with liberty to apply for directions under Order VII Rule 10A CPC.