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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 ..... of this Court to entertain the present suit, in view of the Division Bench judgment of this Court in Archie Comic Publications, Inc Vs. Purple Creation Pvt Ltd & Ors., 172 (2010) DLT 234 (DB), which follows the judgment of the Supreme Court in Dhodha House Vs. S.K. Maingi, 2006 (9) SCC 41- keeping in mind the fact that the plaintiff is a foreign company with no branch office in Delhi. A factual background as per the averments in the plaint is set out below. 3. The plaintiff is a foreign international integrated media and entertainment company having its registered office at 1241 East Main Street, Stamford, Connecticut 06902, USA. The plaint has been filed through its constituted attorney Mr. D. C. Sharma. 4. The plaintiff is principally engaged in the development, production and marketing of television programming, pay-per-view programming, live events and the licensing and sale of branded consumer products featuring its highly successful and well known World Wide Wrestling Entertainment (WWE) brand. The WWE scratch logo and WORLD WRESTLING ENTERTAINMENT are registered trademarks of the plaintiff worldwide, including in India. The plaintiff is also the copyright owner of pictoria ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... roduce the same herein- Section 134 - Suit for infringement, etc., to be instituted before District Court (1) No suit- (a) for the infringement of a registered trade mark; or (b) relating to any right in a registered trade mark; or (c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similarto the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit. (2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.--For the purposes of sub-section (2), "person" includes the registered proprietor and the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n to Madras for sale by a firm of commission agents who have an independent business of selling goods for others on commission, cannot be said to "carry on business" in Madras. So a firm in England, carrying on business in the name of A.B. & Co., which employs upon the usual terms a Bombay firm carrying on business in the name of C.D. & Co., to act as the English firm's commission agents in Bombay, does not "carry on business" in Bombay so as to render itself liable to be sued in Bombay. (2) The person acting as agent must be an agent in the strict sense of the term. The manager of a joint Hindu family is not an "agent" within the meaning of this condition. (3) To constitute "carrying on business" at a certain place, the essential part of the business must take place in that place. Therefore, a retail dealer who sells goods in the mufassil cannot be said to "carry on business" in Bombay merely because he has an agent in Bombay to import and purchase his stock for him. He cannot be said to carry on business in Bombay unless his agent made sales there on his behalf. A Calcutta firm that employs an agent at Amritsar who has no power to receive money or to enter into contracts, but o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... owed in Archie Comics (supra), wherein the appellant was a foreign company which had no place of work in India. The basis of the appellant's claim - that it carried on business in Delhi, was that its comics were imported into India and an invoice was issued by the appellant to one Variety Book Depot at Delhi. Relying on the aforesaid criteria laid down in Dhodha House (supra), the Court observed that Variety Book Store was not a special agent of the appellant, and the appellant had no control over the working of Variety Book Store. Therefore the appellant could not be said to be carrying on business in Delhi. 13. The first submission of Mr. Anand, learned counsel for the plaintiff is that the decisions in Archie Comics (supra) and Dhodha House (supra) do not take into account "new media" or web based business models. Learned counsel for the plaintiff submits that the decision in Archie Comics (supra) relies on the decision in Indian Performing Rights Society Ltd Vs. Sanjay Dalia and Anr., 155 (2008) DLT 164, which has been stayed by the Supreme Court and the same does not take into account internet based transactions. 14. Learned counsel submits that even though the plaintiff has ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... A and Section 65B in Copyright Act, 1957 providing for Protection of Technological Measures, and Rights Management Information respectively. Learned counsel also places reliance on various news articles exhibiting the growing trend in e-commerce based business models, and the growth of e-retailing. 18. Learned counsel next places reliance on Paragraph 16 of the decision of the Madras High Court in Wipro Limited Vs. Oushadha Chandrika Ayurvedic, in O.S.A Nos. 64 to 67 of 2008 decided on 29.02.2008 to submit that Section 134 of the Act is a special privilege conferred upon the proprietor of a registered trademark to institute a suit for infringement where he carries on business. Learned counsel submits that Section 134(2) begins with a non obstante clause and the very purpose of Section 134(2) of the Act having an overriding effect on provisions of the CPC, is to prevent rampant piracy/infringement. 19. Learned counsel submits that the issue whether the plaintiff "carries on business" within the jurisdiction of this Court-within the meaning of Section 134 (2) of the Trademarks Act, 1999 ('Act' hereinafter), is a mixed question of fact and law, and the court can adjudicate on the as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mination of issues, such as - when and where the contract is made, or whether the vendor carries on business at the place where the merchandise may be sold, or service may be offered, would not change and would be the same as apply to communications over telephone and fax (see Bhagwan Goverdhandas Kedia Vs. Girdharilal Parshottamdas & Co. AIR 1966 SC 543). In such cases, the plaintiff would have to show that it actually has business interest at the relevant place; a voice in what is done; a share in the gain or loss and some control thereover. For example, the plaintiff could show that it has an exclusive C&F operator in the forum State, or an exclusive dealer that stocks the goods or services of the plaintiff in the forum State - to be delivered or shipped as per a consumer's convenience. The plaintiff could show that it has a registered/branch office to address a consumer's dissatisfaction over the plaintiff's merchandise or services. The plaintiff can show that it has an exclusive tie up with an agent to manufacture the plaintiff's goods for a particular geography. In the present case, no essential part of the plaintiffs business is carried on at Delhi. In fact, the plaintiff ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s lends jurisdiction to such Court where such suit is filed ("the forum court") Answer: For the purposes of a passing off action, or an infringement action where the plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the plaintiff would have to show that the Defendant "purposefully availed" itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the plaintiff within the forum state..........." (emphasis supplied) 26. Therefore, the test in Banyan tree (supra) is with respect to the defendant's use of a website that results in injury to the plaintiff in the forum state, and not a test for the plaintiff's claim of jurisdiction based upon the "carrying on business" clause. This decision is founded upon the premise that a part of cause ..... X X X X Extracts X X X X X X X X Extracts X X X X
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