The Delhi High Court clarified that just because a product is visible on a website in Delhi or a trademark is registered in Delhi, that alone does not give the Court jurisdiction. Actual proof of sales in Delhi is necessary.
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NEW DELHI: The Delhi High Court delivered an important judgment in a trademark dispute, making it clear that territorial jurisdiction cannot be claimed simply because a rival’s products are accessible online in Delhi or because a trademark assignment or registration happened in Delhi.
The Court held that real evidence of sales within Delhi is required before invoking its jurisdiction.
This ruling came in a case filed by Vikrant Chemico Industries against Shri Gopal Engineering and Chemical Works regarding competing “doctor” brand phenyl products.
Justice Amit Bansal observed,
“The website of the defendant is a passive website and mere accessibility of the said website within the jurisdiction of this Court would not amount to specific targeting of customers in Delhi. Filing or assignment of a trademark in Delhi would also not constitute cause of action.”
Vikrant Chemico, which started in 1972 and deals in personal care and chemical products, argued that it had exclusive rights in its marks “Doctor Brand Phenyle” and “Doctor Brand Germ Troll.”
It claimed that the defendants launched rival products under the names “Doctor Hazel’s Brand Phenyle” and “Chemist Brand Germ Troll,” which allegedly infringed its registered trademarks and copyrights and also amounted to passing off.
The plaintiff highlighted its registrations going back to 1985, continuous sales under the “Doctor Brand” label, and a 1999 copyright registration for its packaging artwork. It further argued that “Doctor” was the core element of its brand identity and accused the defendants of copying both its name and packaging style.
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The defendants, on the other hand, claimed that their use of the marks “Chemist” and “Doctor Hazel’s” was part of a long-standing family business arrangement, supported by a partnership deed and an assignment of rights executed in 1996.
They also emphasized that they were registered proprietors of the word mark “Doctor Hazel’s”, and that the term “Doctor” was a common descriptive word that no one could claim exclusively.
At the outset, the Court noted that both the plaintiff and defendants were Kanpur-based entities. It found no valid reason for the Delhi High Court to assume jurisdiction in this dispute.
Still, the Court went ahead to decide on the other legal questions, relying on Order XIV, Rule 2 of the Code of Civil Procedure (CPC) and the Supreme Court’s judgment in Sathyanath v. Sarojamani (2022), which direct courts to pronounce judgment on all issues raised.
On the substantive issues, Justice Bansal found that both parties were indeed registered proprietors — the plaintiff held the device mark “Doctor Brand Phenyle” and the defendants held the word mark “Doctor Hazel’s.”
The Court observed,
“In light of Section 28(3) of the Trade Marks Act, no infringement action can lie when both sides hold valid registrations. Such an action would only be maintainable once rectification of one of the registrations takes place.”
The plaintiff’s claim to exclusivity over the word “Doctor” was also rejected.
Justice Bansal clarified,
“The registration granted in favour of the plaintiff is for the composite device mark and not for the word ‘Doctor’. The addition of ‘Hazel’s’ makes the defendants’ mark distinguishable. Further, the word ‘Doctor’ is generic and laudatory, registered by several third parties in Class 5, and cannot be monopolised.”
On packaging and presentation, the Court further ruled out the chances of passing off or copyright violation. It noted that the packaging styles were distinct in terms of colour scheme, font, and overall appearance.
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Finally, since there was no basis for jurisdiction in Delhi, the Court decided to return the suit to the plaintiff.
- The plaintiff, Vikrant Chemico Industries, was represented by Advocates Saikrishna Rajagopal, Nitin Sharma, Sohrab Mann, Deepika Pokharia, and Abhinav Bhalla.
- The defendants, Shri Gopal Engineering and Chemical Works, were represented by Advocates Peeyoosh Kalra and Yashwant Singh Baghel.
CASE TITLE:
Vikrant Chemico Industries Pvt Ltd v. Shri Gopal Engineering and Chemical Works Pvt Ltd.
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