The Delhi High Court refused to grant permanent injunction on an intellectual property infringement suit filed by World Wrestling Entertainment by holding that the latter is not ‘carrying on business’ within the jurisdiction of the Court.
World Wrestling Entertainment alleged that the apparels sold by the defendants, who are based in western India, bore the images and representations of its well-known characters.
Relying on an earlier ruling by the Supreme Court of India interpreting ‘carrying on business’ as used in Section 134(2) of the Trademarks Act, the Court said, “Merely because a person has embarked upon an e-commerce business model, the tests which apply for determination 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.”
“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 there over. 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,” the Court added.
The Court observed, “If the plaintiff’s submission were to be accepted, it would mean that the plaintiff could file a suit at any place which provides internet access to the plaintiffs website, irrespective of the defendant’s location, only on account of the plaintiff’s website being accessible in that State. The insertion of Section 134(2) was with a view to enable the plaintiff to institute a suit where it has actual and substantial business interest so that an additional forum convenient to the plaintiff is available. If the intent of the legislature had been to vest jurisdiction solely on account of accessibility of plaintiff’s website at the place of suing, then the same would have been expressly provided for, especially keeping in mind plaintiff’s submissions that the legislature has recognized new media on account of various amendments.”