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TMI Blog2013 (10) TMI 240X X X X Extracts X X X X X X X X Extracts X X X X ..... ograms in Delhi is also not sufficient to confer jurisdiction. Just as mere advertisement in a journal or paper is not sufficient to confer jurisdiction - Similarly, broadcast of the plaintiff’s programmes is insufficient to vest jurisdiction in this Court - Decided against petitioner. - CS (OS) 1801/2013 and I.A. Nos.14958-59/2013 - - - Dated:- 4-10-2013 - Vipin Sanghi,JJ. For the Petitioner : Mr. Pravin Anand, Ms. Urvashi Mittal, Mr. Gurpreet Singh Kahlon Ms. D. Neha Reddy, Advocates For the Respondent : Through JUDGMENT Vipin Sanghi, J. 1. This suit has been filed to seek permanent injunction restraining Infringement of Copyright, Infringement of Trademarks, Passing Off, Dilution, Rendition of Accounts, Damages and Delivery up etc by World Wrestling Entertainment Inc, a company incorporated under the laws of the State of Delaware, United States of America. The defendants are located in Mumbai and are not claimed to be carrying on business within the jurisdiction of this Court. The jurisdiction of this Court has been invoked by relying upon Section 134(2) of the Trademarks Act, 1999 and Section 62(2) of the Copyright Act, 1957. 2. In this background this ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at the defendants, who are Mumbai based, are engaged in the business of manufacture and sale of various forms of garments and apparel such as T-shirts, wrist bands, caps and other counterfeit goods and garments bearing the reproductions of the plaintiff s talents. The defendants, according to the plaintiff, are infringing the plaintiff s registered trademarks. The plaintiff alleges that the apparel sold by the defendants bears the images of WWE talents, and representations of the well known WWE characters are displayed very prominently on the defendant s products. 8. In Paragraph 32 of the plaint, the plaintiff claims jurisdiction of this court under Section 134(2) of the Trademarks Act, 1999 and Section 62(2) of the Copyright Act, 1957 by claiming that the plaintiff carries on business within the territorial jurisdiction of this Court in the following manner i. The plaintiff s programmes consisting of its various characters are broadcast at Delhi ii. The plaintiff s products such as its merchandising goods and books are available in Delhi iii. The plaintiff s goods and services are sold to consumers in Delhi through its websites which can be accessed in Delhi 9. Since ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , can lead to the conclusion that the plaintiff carries on business within the jurisdiction of this Court. 11. In Dhodha House (supra), the Supreme Court examined the expression carries on business in the context of Section 134(2) of the Act by observing as follows - 40.The expression 'carries on business' and the expression 'personally works for gain' connotes two different meanings. For the purpose of carrying on business only presence of a man at a place is not necessary. Such business may be carried at a place through an agent or a manager or through a servant. The owner may not event visit that place. The phrase 'carries on business" at a certain place would, therefore, mean having an interest in a business at that place, a voice in what is done, a share in the gain or loss and some control thereover. The expression is much wider than what the expression in normal parlance connotes, because of the ambit of a civil action within the meaning of section 9 of the Code. But it is necessary that the following three conditions should be satisfied, namely:- "(1) The agent must be a special agent who attends exclusively to the business of the principal and carries it on in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nch was not part of the cause of action and that the Kozhikode Court therefore had no jurisdiction. But when a company though incorporated outside India gets itself registered in India and does business in a place in India through its agent authorized to accept insurance proposals, and to pay claims, and to do other business incidental to the work of agency, the company carries on business at the place of business in India." [See Mulla on the Code of civil Procedure (Act V of 1908) - Fifteenth Edition - Volume I, Pages 246-247.] 41. A corporation in view of Explanation appended to Section 20 of the Code would be deemed to be carrying on business inter alia at a place where it has a subordinate office. Only because, its goods are being sold at a place would thus evidently not mean that it carries a business at that place. 45. The plaintiff was not a resident of Delhi. It has not been able to establish that it carries on any business at Delhi. For our purpose, the question as to whether the defendant had been selling its produce in Delhi or not is wholly irrelevant. It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lly targeting consumers in the forum state. Learned counsel submits that the website of the plaintiff is an interactive website which specifically offers for sale the products of the plaintiff to its clientele in Delhi and, therefore, the website satisfies the test as laid down in Banyan Tree (supra) to clothe this Court with jurisdiction. Learned counsel submits that in addition, the programmes of the plaintiff are broadcast here and its merchandise is also available for sale in Delhi. 16. Learned counsel submits that in recent years the Legislature has acknowledged that a change in laws needs to be brought about with the advancement of internet technology. Learned counsel submits that this is evident from the enactment of the Information Technology Act, 2000, wherein the Legislature recognizes new media. Learned counsel submits that even the Evidence Act was amended in the year 2000 with the insertion of Section 65A and Section 65B, which provide for evidence related to electronic records. Learned counsel further submits that the Delhi Courts Service of Processes by Courier, Fax and Electronic Mail Service (Civil proceedings) Rules, 2010 provides for Electronic Mail Service . ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or infringement, as long as the plaintiff voluntarily resides, carries on business or personally works for gain at such place. The said provision goes beyond the normal rules laid down in the C.P.C. for vesting jurisdiction in Courts. The test to be satisfied as regards the aspect of carrying on business has been laid down in Dhodha House (supra). The sum and substance of the criteria laid down in Dhodha House (supra) is that an essential part of the plaintiff s business, coupled with an element of control exercised by the plaintiff, must exist in such place where the plaintiff claims to be carrying on business either on its own or through an exclusive agent. 22. The aforementioned criteria will be equally applicable to a party that concludes transactions with its customers over the medium of internet as opposed to a physical retail space. Internet is another medium which provides audio-visual interactive facility for doing business. Merely because it is a more advanced or superior medium, it does not impinge on the determination of the issue whether the merchandiser is carrying on business at a particular place. Prior to the advent of e-commerce over the internet, and even now, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ount of various amendments. 24. In Intas Pharmaceuticals Ltd. v. Allergan Inc, 2006 (132) DLT 641 (DB), a Division Bench of this Court held that Section 134(2) does not whittle down the provisions of Section 20 of the CPC but provides an additional forum and a place for filing a suit in case of an infringement of a trademark. Therefore, if the plaintiff can satisfy the conditions laid down in Section 134(2), he may file a suit at such forum where he carries on business, but if the test as regards carries on business as laid down in Dhodha House (supra) is not satisfied, the plaintiff has to then take resort to the provisions of the CPC with regard to jurisdiction contained in Sections 15 to 20. 25. Reliance placed on Banyan Tree (supra) by learned counsel for plaintiff is misplaced in as much, as, the aforesaid judgment is in respect of a website of a defendant and not the plaintiff. The first observation of the court in Paragraph 58 of the aforesaid judgment is relevant and reads as follows - We summarise our findings on the questions referred for our opinion as under: Question (i): For the purposes of a passing off action, or an infringement action where the plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ues under Section 134(2) of the Act. 28. The next contention that the goods of the plaintiff are sold in Delhi and, therefore, this Court has jurisdiction, is negatived in view of the observation in Dhodha House (supra) wherein the Court observed that It is possible that the goods manufactured by the plaintiff are available in the market of Delhi or they are sold in Delhi but that by itself would not mean that the plaintiff carries on any business in Delhi. The broadcast of the plaintiff s programs in Delhi is also not sufficient to confer jurisdiction. Just as mere advertisement in a journal or paper is not sufficient to confer jurisdiction (See ONGC Vs. Utpal Kumar Basu, 1994 (4) SCC 711). Similarly, broadcast of the plaintiff s programmes is insufficient to vest jurisdiction in this Court. 29. The plaintiffs submission founded upon New Media has no merit. Wherever the legislature thought it necessary, it amended the laws to make provision for the New Media . The Parliament has not amended the Act, the Copyright Act, or the C.P.C even while amending other legislations, and enacting the I.T. Act, in the manner as contended by Mr. Anand. The new media , as aforesaid, does ..... X X X X Extracts X X X X X X X X Extracts X X X X
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