Jurisdiction is an aspect of state sovereignty and refers to judicial, administrative and legislative competence. The term Jurisdiction in common legal parlance would mean the right to administer justice. It may be defined as the power or authority to hear and determine a cause to adjudicate and exercise any judicial power in relation to it. However, in the current era of digitalization, there exists an area where the concept of jurisdiction gets a bit tricky- the World Wide Web.
When an applicant approaches a court to institute a suit for trademark infringement or passing off, Indian law recognizes and gives three forms of jurisdiction to the courts; territorial, pecuniary and subject-matter jurisdiction. Now to determine which form of jurisdiction will be invoked, the “cause of action” is the basis of the decision. The cause of action of the particular suit determines whether a certain court has jurisdiction over a matter or not. The Code of Civil Procedure, 1908 provides the procedure for the filing of suits in competent courts. Furthermore, the procedure for filing suits on the matter of trademark infringement has also been given in the Trade marks Act 1999. Section 134(2) of the Trade Marks Act, 1999 provides for “additional forum” to the proprietor of a registered trade mark to institute a suit for infringement of in whose jurisdiction, the said proprietor actually and voluntarily resides or carries on business or works for gain, at the time of institution of suit.
The law surrounding jurisdiction has always been kept and interpreted in a straight-forward and clear manner; however, the law gets complicated when it comes to infringements done online. Due to these conflicts, the judiciary has shown high levels of dynamism in their approach and has widened the meaning for “the cause of action” by taking into consideration the growing relevance of e-commerce and including the use of the internet for valid and active business transactions as the situation of jurisdiction.
THE CASE
Two cases preceded the landmark Banyan tree judgement and they posed two completely different views about when a court has jurisdiction over online conflicts. In the case of Casio India Co. Limited v. Ashita Tele Systems Fvt. Limited[1]The Delhi High Court granted Casio an injunction against Ashita Tele Films from using Casio's name in their website as it was too similar to the Company’s official brand name and had a certain deceptive quality to it. The justification the court gave for invoking territorial jurisdiction was that the website could be accessed from Delhi. Secondly, in the case of Independent News Service Pvt. Limited v. India Broadcast Live Llc And Ors[2] the single judge bench held that there must be a level of interactiveness that a website must offer to a large base of consumers for it to fall under the jurisdiction of the court. These opposing views were clarified in the Banyan tree judgement.
The case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Anr[3] was a suit for passing off filed by the Plaintiff who was using the word mark 'Banyan Tree' since 1994 against the use of the word 'Banyan Tree Retreat' and advertisement of the same on the website www.makprojects.com/banyantree of the defendants. This website was accessible to the public residing in Delhi, hence the Delhi High Court was approached. The most striking peculiarity of the case was that neither of the parties were located within the territorial Jurisdiction of the Court. Since there was past jurisprudence on the matter put forth a conflicting view, the matter was referred to a division bench to settle it one and for all.
The court held that merely accessing a website in Delhi would not satisfy the exercise of jurisdiction by the Delhi court. Rather, it has to be shown that the defendant "purposefully availed" itself of such jurisdiction, by demonstrating that the use of the website was with intent to conclude a commercial transaction with the site user, and such use resulted in injury or harm to the plaintiff. Therefore, for the court to have jurisdiction over such matters, the applicant has to prove that the defendant expected a commercial transaction to take place on the website and this transaction was harmful to the plaintiff.
“Mere accessibility of the Defendants’ website in Delhi would not enable a court to exercise jurisdiction. A passive website, with no intention to specifically target audiences outside the State where the host of the website is located, cannot vest the forum court with jurisdiction. To such extent, the court has overruled the proposition in Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited 2003 (27) PTC 265 (Del).”
CURRENT SCENARIO: IMPLICATIONS OF THE JUDGEMENT
Undoubtedly the decision of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy and Anr have added a new chapter on the protection of trademarks in India. With development, e-commerce is gaining high amounts of relevance. Various start-ups in today’s day and age have just an online presence and carry out their operations and transactions on the web. The amplification of the ambit of the principle of 'cause of action' in decision of the Banyan Tree Holding Pvt Ltd would indisputably tighten the screw on the infringement of trade mark and passing off goods or services through the active use of internet in spite of not having a physical presence before the judicial forums.
The decision provided in the Banyan tree judgement has been upheld in various cases post 2009 and remains the current position of the Indian courts with regard to jurisdiction in online infringement matters. The opinion of the court, however, is still evolving and changing to include a wider interpretation to the judgement laid down in Banyan tree. In the very recent case of Exxon Mobil Corporation vs Exon Corp Pvt Ltd.[4] the court granted an injunction to the Plaintiff and restricted the Defendant from using the mark “EXON” which was very similar to the mark used by the Plaintiff. It was submitted that the mark ‘EXXON’ is a registered trademark in over 160 jurisdictions, including in India since 1967 by the Plaintiffs. The defendants claimed, among other arguments, that the court had no territorial jurisdiction to hear the matter.
While dealing with jurisdiction issues, the court noted that the Defendant’s website and links on social media platforms showed the Defendant’s claim of carrying on business throughout India. It was shown that the Defendant’s website provided for online payment to be made and contained banking terms, and an IFSC code for receiving payments. The court, while relying on the Banyan Tree judgement when it came to the “commercial transaction” aspect, further added that if a producer has intentionally made his business available in a particular country or geographical area, that court will have jurisdiction over the matter. The court held that since the Defendant has made services available by the use of various social media platforms with the Indian public as a consumer base, the Indian court would have territorial jurisdiction over the matter.
[1] 2003 (27) PTC 265 (Del) [2] 2007 (35) PTC 177 (Del.) [3] CS (OS) No. 894/2008 [4] CS (COMM) 111/2019
By- Vanshika Kundra
Comments