Disclaimer: This has been reported after the availability of the order of the Court and not on media reports so as to give an accurate report to our readers.
Delhi High Court: In an appeal challenging Single Judge Bench’s order allowing an application under Order VII Rule 10, Civil Procedure Code, 1908 (CPC), whereby the plaint in a commercial suit seeking permanent injunction against infringement and passing off, was directed to be returned for presentation before the appropriate court, a Division Bench of C. Hari Shankar* and Om Prakash Shukla, JJ., set aside the impugned judgment and held that the suit was maintainable before the Delhi High Court. The Court held that in a trademark infringement suit —
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Registration of the mark within the territorial jurisdiction confers a statutory right whose violation forms part of the cause of action.
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Where the plea of infringement is founded on use beyond a permitted-use agreement, the execution of that agreement is a material fact constituting part of the cause of action.
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In the context of e-commerce, the availability of infringing goods for purchase on platforms accessible in the forum state gives rise to jurisdiction, irrespective of who uploaded the listing.
Factual Matrix
In the instant matter, the appellant is engaged in the business of developing, producing and marketing cotton hybrid seeds and is the registered proprietor of the trademarks “TADAAKHA” and “SADANAND” in Class 31, besides claiming common law rights in the mark “BASANT”. The appellant had, over the years, acquired substantial goodwill and reputation in respect of these marks in the agricultural seed market.
On 03-03-2014, the appellant entered into a non-exclusive co-marketing arrangement with the respondent, permitting the respondent to market and distribute specified cotton hybrid seeds manufactured by the appellant under the aforesaid trademarks. This arrangement was renewed from time to time, the last renewal being the Marketing Agreement dated 01-01-2022, valid till 31-12-2022. Under the agreement, the respondent expressly acknowledged the appellant’s ownership of the trademarks and undertook not to use them beyond the limited scope permitted thereunder.
In September—October 2022, the appellant decided not to renew the Marketing Agreement and communicated the same to the respondent and its distributors. Thereafter, the appellant came to know that the respondent was promoting and accepting advance bookings for cotton hybrid seeds for the ensuing Kharif season under the marks “VEDA TADAAKHA GOLD BG II”, “VEDA SADANAND GOLD BG II” and “VEDA BASANT GOLD BG II”, allegedly in respect of hybrids not produced by the appellant. According to the appellant, such use was outside the scope of the Marketing Agreement and amounted to infringement of its registered trademarks and passing off.
Consequently, the appellant instituted a commercial suit before the Delhi High Court seeking permanent injunction against infringement and passing off. The respondent contested the maintainability of the suit by filing an application under Order VII Rule 10 CPC and contended that no part of the cause of action had arisen within the territorial jurisdiction of the Delhi High Court.
The appellant pleaded that the cause of action arose in October 2022 when it learnt of the respondent’s infringing activities; the appellant’s registered office was situated in New Delhi and it ordinarily carried on business there; the asserted trade marks were registered with the Delhi Trade Marks Registry; and the infringing products were available on e-commerce platforms accessible in Delhi.
Single Judge’s impugned order
The Single Judge had held that the suit was not maintainable before the High Court on the following grounds —
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In view of Dhodha House v. S.K. Maingi, (2006) 9 SCC 41, registration of the trademarks in Delhi did not confer jurisdiction to the High Court.
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Marketing Agreement was not part of the cause of action for filing the suit.
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Listing on e-commerce platforms such as IndiaMart did not confer jurisdiction.
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Since the plaintiff (appellant herein) had subordinate offices where the cause of action arose, Delhi could not be invoked in view of Indian Performing Rights Society (IPRS) v. Sanjay Dalia, (2015) 10 SCC 16 and as explained in Ultra Home Construction v. Purushottam Kumar Chaubey, 2016 SCC OnLine Del 376.
Accepting the respondent’s objection, the Single Judge directed return of the plaint, leading to the present appeal before the Division Bench.
Moot Points
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Whether registration of the appellant’s trade marks in Delhi could, by itself, confer territorial jurisdiction?
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Whether the Marketing Agreement, executed in Delhi, constituted part of the cause of action for instituting the suit?
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Whether listing of the respondent’s products on IndiaMart or similar platforms gave rise to a cause of action within Delhi?
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Whether the appellant could invoke jurisdiction of the Delhi High Court solely on the basis of its principal office being located in Delhi, notwithstanding that the cause of action arose elsewhere?
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Whether the Single Judge was correct in holding that this Court does not have territorial jurisdiction to entertain the suit and, thereby, in allowing the respondent’s application under Order VII Rule 10 of the CPC?
Court’s Analysis
The Court reiterated that an application under Order VII Rule 10 is required to be decided “solely on the basis of the averments in the plaint, read with the documents filed therewith”, and no reliance can be placed on disputed facts or matters dehors the pleadings.
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Registration of trademarks and jurisdiction
The Court noted that the reliance placed by the Single Judge on Dhodha House (Supra), was misplaced. The Court noted that the appellant was not invoking jurisdiction of this Court on the basis that the application for registration for the asserted marks was filed within the jurisdiction of this Court but on the fact that the marks stood registered within the jurisdiction of the Court, i.e., “the registrations were granted by the Trade Mark Office at Delhi.”
The Court noted that by virtue of Section 28 of the Trade Marks Act, registration confers an exclusive right to use the mark and to seek remedies against infringement. The violation of that statutory right constitutes an integral part of the cause of action.
“The registration of the asserted mark is an indispensable part of the right to sue for infringement, and to succeed in the suit. If the defendant traverses the assertion of the plaintiff that the mark is registered, the plaintiff would have to prove the fact. The registration of the asserted mark is, therefore, in a way the sine qua non for maintaining an infringement action.”
The Court held that Single Judge erred in holding that the registration of the asserted trademarks of the appellant in Delhi did not constitute part of the cause of action to institute the suit has as the same was contrary to Section 28(1) of the Trade Marks Act.
The Court opined that the fact that the marks asserted by the appellant were registered within e Delhi High Court’s jurisdiction, was by itself a factor which entitled the appellants to institute the suit before the Court.
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Marketing Agreement and Cause of Action
The Court found the Single Judge’s finding that the Marketing Agreement did not form part of cause of action in the suit, as ‘fallacious’.
The Court noted that the plaint was premised on the assertion that the respondent’s use of the marks was beyond the scope of the permitted user arrangement within the meaning of Section 29 of the Trade Marks Act. The Court stated that the question whether the use was authorised or not, could be determined only with reference to the terms of the Marketing Agreement. The agreement, therefore, formed part of the bundle of essential facts on which the claim of infringement was founded.
“Once the Marketing Agreement and its covenants constitute a part of the cause of action on which the plaint is based, courts having jurisdiction over the place of execution of the Marketing Agreement would ipso facto have jurisdiction to adjudicate on the suit.”
The Court held that the Single Judge had failed to consider the assertions in the plaint, “which more than amply demonstrate that the Marketing Agreement, and its covenants, constitute an essential part of the cause of action on which the plaint is based.”
The Court stated that “this Court, being the Court within whose jurisdiction the Marketing Agreement was admittedly executed, would be possessed of territorial jurisdiction to entertain the suit and adjudicate on the lis.” The Court held that since the agreement had been executed at Delhi, the making of the contract furnished a part of the cause of action within the jurisdiction of the Court.
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E-commerce listings and alleged online availability
The Court noted that the plaint specifically averred that the impugned goods were available for purchase on IndiaMart and Kalgudi and that orders could be placed from Delhi. The Court asserted that at the stage of an application under Order VII Rule 10 CPC these assertions had to be accepted as correct.
The Court noted that the Single Judge was correct in its view that, as per law laid down in Banyan Tree Holding (P) Ltd. v. A Murali Krishna Reddy, 2009 SCC OnLine Del 3780, mere accessibility of the defendant’s website in territorial jurisdiction would not be sufficient for this Court to exercise jurisdiction and in addition to that the plaintiff had to show that some commercial transaction was concluded within the jurisdiction of this Court.
However, the Banyan Tree Holding (Supra) was subsequently diluted to an extent by the World Wide Wrestling Entertainment v. Reshma Collection, 2013 SCC OnLine Del 3987, that existence of a website over which a commercial transaction could be concluded was held to be as sufficient to amount to “carrying on a business” within the jurisdiction of the Court. The actual conclusion of a transaction was, therefore, no longer indispensable
Therefore, in the context of online commerce, the Court held that the situs of a sale extends to every place where a commercial transaction can be concluded. Once the goods bearing the impugned marks were offered for sale in a manner that enabled a purchaser in Delhi to place an order, the tort of infringement stood committed within the jurisdiction of this Court.
The Court also asserted that the question whether the listings were uploaded by the respondent or by a third party was irrelevant to the issue of territorial jurisdiction.
“Once the infringing goods were available for sale, the tort of infringement, which predicates use of the infringed mark, or a mark which is deceptively similar thereto, for trade, stood committed. The suit, seeking relief thereagainst, could be filed before every Court having territorial jurisdiction over the situs of sale of such goods.”
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Principal office v. subordinate office
The Court noted that the rule in Ultra Home Construction (Supra), founded on IPRS (Supra), applies where no part of the cause of action arises at the place of the principal office. In the present case, however, the substantial parts of the cause of action had arisen in Delhi, such as: registration of marks; execution of the Marketing Agreement and availability of the infringing goods for purchase online, therefore, the appellant’s right to institute the suit at the place of its principal office was not divested.
Court’s Decision
The Court set aside the impugned judgment returning the plaint and held that the suit was maintainable before the Delhi High Court. The Court directed that the suit itself stood restored before the Single Judge for further proceedings in accordance with law.
[Kohinoor Seed Fields India (P) Ltd. v. Veda Seed Sciences (P) Ltd., 2025 SCC OnLine Del 8727, Decided on 03-12-2025]
*Judgment by Justice C. Hari Shankar
Advocates who appeared in this case :
Mr. Saurav Agarwal, Mr. Shantanu Agarwal, Mr. Adarsh Ramanujan, Mr. Kapil Rustagi, Mr. Saurabh Seth, Ms. Chandreyee Maitra, Ms. Allaka M, Mr. Manas Arora, Mr. Raghav Thareja, Mr. Parth Singh and Mr. Ajay, Counsel for the Appellant
Mr. Raj Shekhar Rao, Sr. Adv. with Mr. Kapil Wadhwa, Ms. Sindoora, Ms. Vishakha Gupta, Mr. Wamic Wasim, Ms. Thithiksha Padmam and Mr. Anish Jandial, Counsel for the Respondent