Delhi High Court

Banyan Tree Holdings Limited vs Mr. M. Murali Krishna Reddy & Anr. on 11 August, 2008

Author: S.Ravindra Bhat

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+                       CS (OS) 894/2008


                                   Date of decision : 11th August, 2008


Banyan Tree Holdings Limited                     ..... Plaintiff
                      Through : Mr. Neeraj Kishan Kaul, Sr. Advocate
                      (Shri Pravin Anand and Ms. Abhilasha Kumbhat,
                      Advocates with him)

                              versus


Mr. M. Murali Krishna Reddy & Anr.              .... Respondents
                         Through : None

CORAM:



Mr. Justice S. Ravindra Bhat

      1.    Whether reporters of local papers may be allowed to
            see the judgment?                                   Yes.

      2.    To be referred to the Reporter or not?                 Yes.

     3.      Whether the judgment should be
             reported in the Digest?                                Yes.


Mr. Justice S. Ravindra Bhat


1.    This order deals with the question whether this court can

entertain and try the present suit, and whether the cause of action, or

any part thereof, has arisen within the territorial jurisdiction of the


CS (OS) 894/2006                                                   Page 1
 court. The plaintiff prefers the present action seeking decree for

permanent injunction restraining the defendants from passing off and

diluting its trademark; it also seeks a decree for rendition of accounts

and damages.


2.    It is averred that the plaintiff is a publicly listed company having

its registered office at Singapore, and is a part of a group that is

extensively involved in the hospitality business, managing about 81

hotels, resorts and spas in various parts of the world. It is averred that

the plaintiff and its sister concerns have since the year 1994 adopted

and used the word mark 'Banyan Tree' and also the banyan tree

device, both of which were also used by its predecessor in interest. It is

also averred that due to the extensive and continuous use of the

marks in relation to its business, they have acquired secondary

meaning. The plaintiff also avers that it has advertised its services and

products through the print and electronic media, many of which have

substantial reach and circulation in India. The plaintiff also maintains

websites (www.banyantree.com; www.banyantreespa.com etc) since

the year 1996, which are accessible in India. Due to the plaintiff's

reputation and goodwill, it is submitted that the said marks have

become highly distinctive and have come to be associated with the

plaintiff and its sister concerns.


3.    Further, it is averred that the goodwill and reputation of the
 plaintiff's trademarks have spilled into India because of the large scale

travel of tourists from and into India, creating awareness about the

said marks, the publicity given by various magazines and journals and

the online presence on the Internet. It is also submitted that plaintiff,

from the year 2002 onwards, in collaboration with the Oberoi Group,

operates 15 spas across India. Though the plaintiff is the registered

proprietor of the marks in various countries, it does not hold any

registration for the said marks in India, but has sought registration.


4.    The plaintiff avers that in October 2006 it came to know that the

defendants, who are residents of Hyderabad, Andhra Pradesh, had

initiated work on a project under the name 'Banyan Tree Retreat'. It is

submitted that the word mark and the device adopted by the

defendants in relation to its retreat is deceptively similar to that of the

plaintiff. It is averred that the defendants have advertised their project

in their website www.makprojects.com/banyantree. It is alleged that

such use was meant to unlawfully appropriate the reputation and

goodwill of the plaintiff. It is alleged that since the defendants belong

to the same trade/industry, such adoption of the plaintiffs mark is

dishonest and is motivated to create deception among the public.

Therefore, the plaintiff seeks an ex parte interim injunction restraining

the defendants from using its marks.


5.    The plaintiff claims that this Court has the territorial jurisdiction


CS (OS) 894/2006                                                     Page 3
 to entertain the suit in the following manner:


      "30. This Hon'ble Court has the territorial jurisdiction to
      entertain the present suit under section 20 of the Code of
      Civil Procedure, 1908 since the Defendants solicit business
      through use of the impugned mark "BANYAN TREE
      RETREAT" and the Banyan Device in Delhi, The Plaintiff
      submits that the services of the Defendants are being
      offered to the customers in Delhi and hence the cause of
      action has arisen within the jurisdiction of this Hon'ble
      Court. Also, the brochure sent by the Defendants for the
      purpose of sale of the property to customers in Delhi
      depicts that they carry on business and work for gain in
      Delhi. Further, the defendants have presence in Delhi
      through      their      website      http://www.makprojects.
      Com/banyantree.htm, which is accessible in Delhi. It is
      pertinent to mention that the said website is not a passive
      website not only provides for contract information but also
      seeks feedback and inputs from its customers through an
      interactive web-page. The plaintiff further submits that the
      services of the Defendants are being offered to the
      customers in Delhi also because of the ubiquity,
      universality and utility of the features of the Internet and
      World Wide Web and hence the cause of action has arisen
      within the jurisdiction of this Hon'ble Court"

It can therefore, be gleaned from the above extract that the territorial

jurisdiction of this Court is sought be established on the following

grounds. Firstly, that the services of the defendant are being offered to

residents of Delhi and hence the cause of action has arisen within

Delhi. In this regard the plaintiffs have produced brochures sent by the

defendant for the purpose of sale of the property to customers in Delhi,

which the plaintiff claims is evidence of the fact that the defendants

carry on business within the territorial jurisdiction of the Court.

Secondly, that the defendants' website is accessible from anywhere in

India, is interactive in nature and not passive, providing contact
 details, feedback and inputs. Further, the plaintiff also relies on the

ubiquity, universality and the utility of the features of the defendant's

website on the Internet.

6.    Mr. Neeraj Kishan Kaul, learned Senior Counsel appearing on

behalf of the plaintiffs relied upon the decision in India TV v. India

Broadcast Live, 2007 (35) PTC 177 (Del) to canvass the point that in

cases of interactive websites, this Court ought to exercise its

jurisdiction. He further placed reliance on Casio India Co. v. Ashita

Telesystems 2003 (27) PTC 265 to advance the proposition that the

access to the website is sufficient to vest this Court with jurisdiction.

Further reliance was placed on a decision of the District Court of the

Massachusetts,     United   States   reported   as   Hasbro   inc   v.   Clue

Computing, 994 F. Supp. 34.     Mr. Kaul drew the attention of this Court

to the affidavit of one Mr. DC Sharma, an independent investigator

deployed by the plaintiffs. In his affidavit Mr. Sharma deposed as to

how using the contacts provided on the defendants' websites, he

contacted the Deputy Manager of the defendants and solicited

information about the details of the 'Banyan Tree Retreat' project,

which was duly supplied by electronic mail.            He also drew the

attention of the Court to the brochures sent by the defendants to Mr.

DC Sharma. He argued that the website of the defendants, besides

providing other information, also gave contact details and included

feedback forms where customers could write comments and seek


CS (OS) 894/2006                                                         Page 5
 information. Counsel argued that in these circumstances, there was

sufficient material on record disclosing that a part of the cause of

action, as understood under Section 20, CPC, arose within the

jurisdiction of this court, though neither party resided or worked for

gain within the jurisdiction of the court.


7.    The plaintiff is basing its claims on a passing off action; thus, the

provision of Section 134(2) of the Trademarks Act, (which concerns

infringement actions) is not available to it. That section, like Section

62(2) of the Copyright Act, enables a plaintiff to sue the defendant in a

court, within whose jurisdiction it (the plaintiff) resides or works for

gain. The court has therefore to, focus on whether web hosting of the

kind allegedly indulged by the defendant, is sufficient to prima facie

infer that a part of the cause of action arises within jurisdiction of this

court. Before a detailed discussion of case law, it would be relevant to

extract Section 20 of CPC, which is as follows:

      "20. Other suits to be instituted where defendants reside or
      cause of action arises. Subject to the limitations aforesaid, every
      suit shall be instituted in Court within the local limits of whose
      jurisdiction--

      (a) the defendant, or each of the defendants where there are
      more than one, at the time of the commencement of the suit,
      actually and voluntarily resides, or carries on business, or
      personally works for gain; or

      (b) any of the defendants, where there are more than one, at
      the time of the commencement of the suit actually and
      voluntarily resides, or carries on business, or personally works
      for gain, provided that in such case either the leave of the Court
      is given, or the defendants who do not reside, or carry on
       business, or personally work for gain, as aforesaid, acquiesce in
      such institution; or

      (c)   the cause of action, wholly or in part, arises.

      ...

[Explanation].--A corporation shall be deemed to carry on business at its sole or principal office in [India] or, in respect of any cause of action arising at any place where it has also a subordinate office, at such place."

Decided cases in India

8. The first decided case, concerning exercise of jurisdiction, based

upon a defendant offering products or services on its web site, was

Casio India Co. Ltd. v. Ashita Tele Systems Pvt. Ltd., 2003 (27) PTC 265

(Del.). It was urged there that the circumstance of the defendant's web

site being capable of being accessed from Delhi, was sufficient to

invoke the territorial jurisdiction of this Court. The Court, through a

single judge (Sarin, J) in Casio relied on the judgment of the High Court

of Australia in Dow Jones and Co. Inc. v. Gutnic, (2002) HCA 56 which

ruled that due to the ubiquity, universality and utility of the features of

the Internet and Worldwide Web, any matter associated with it

possesses global jurisdiction. The court, in Casio, reasoned thus:

"From the foregoing judicial pronouncements, it would be seen that once access to the impugned domain name website, could be had from anywhere else, the jurisdiction in such matters cannot be confined to the territorial limits of the residence of the defendant. Further more in a passing off action it is not incumbent upon the plaintiff to prove any actual sale or any particular act of deception, mere likelihood of deception, whereby an average person is likely to be deceived or confused is sufficient to entertain an action for passing off. Therefore, it is not at all required to be proved that any actual deception took CS (OS) 894/2006 Page 7 place at Delhi. Accordingly the fact that the website of defendant No. 1 can be accessed from Delhi is sufficient to invoke the territorial jurisdiction of this Court in the light of the judicial principles enunciated in the above judgments. It is, accordingly, held that the objection with regard to the territorial jurisdiction is without merit and this Court can try and entertain the suit."

9. In India TV Independent News Service Pvt. Ltd. V. India Broadcast

Live Llc & Ors. 145 (2007) DLT 521 the court took a different approach.

It noticed the decision of a Federal District Court in Zippo Mfr. Co. v.

Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997), (hereafter

"Zippo") and other decisions in the United States, cited before it. The

court, speaking through another single judge, (Kaul, J) held that:

'44. As regards the exercise of personal jurisdiction in cases involving Internet activities, the position appears to be that mere 'passive' posting of a website does not give jurisdiction to the Court within whose jurisdiction, the complainant company is present. Thus, personal jurisdiction cannot be exercised over non-residents merely because their website is accessible within the jurisdiction of the Court. There has to be something more to indicate purposeful direction of activity to the forum state in a substantial way. In Cybersell Inc. case (supra) limited interactivity of the website restricted to received browser's name and expression of interest but not signing up for the services provided was not considered to be sufficient for the exercise of jurisdiction.

45. Insofar as the position in this country is concerned, there is no 'long arm' statute as such which deals with jurisdiction as regards non-resident defendants. Thus, it would have to be seen whether the defendant's activities have a sufficient connection with the forum state (India); whether the cause of action arises out of the defendant's activities within the forum and whether the exercise of jurisdiction would be reasonable.

46. I am in agreement with the proposition that the mere fact that a website is accessible in a particular place may not itself be sufficient for the Courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely 'passive' but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different. However, as noticed in the judgment in CyberSell Inc. case (supra), even where a website is interactive, the level of interactivity would be relevant and limited interactivity may also not be sufficient for a Court to exercise jurisdiction. In Panavision International LP case (supra), it was found that the registration of the plaintiff's mark as a domain name by the defendant had the effect of injuring the plaintiff in California and therefore the Court had jurisdiction. In CompuServe case (supra) again it was found that the defendant had contacted Ohio to sell his computer software on the plaintiffs Ohio based systems and sent his goods to Ohio further for their ultimate sale and thus those Courts had jurisdiction."

10. The court also considered, on the facts before it, that the

defendant had, in the written statement, claimed its global presence in

several countries, including India; its CEO's statement about targeting

the large Indian consumer base too was relied upon; the court

concluded that there was sufficient material to exercise jurisdiction.

11. Since Zippo, courts in the United States, particularly several

Federal Appellate Circuit Courts have re-visited the question of

jurisdiction. Significantly, in the United States, "long arm" statutes,

enabling exercise of jurisdiction, subject to Federal ("Commonwealth"

as described in States' Constitutions) "due process clause", exist. The

wide formulation in Zippo has since been narrowed down. It would be

useful to consider the post Zippo position on the subject, as far as

United States is concerned, as well as the position existing in the UK

and Canada.

CS (OS) 894/2006 Page 9 The position in United States

12. In Zippo the Court, followed "the totality of contacts" approach,

and enunciated what may be termed "the sliding scale" doctrine with

regard to exercise of jurisdiction over trademark infringement,

happening over the internet. The plaintiff, a well known manufacturer

of lighters, sued the defendant for infringing its trademark by using it

on its domain names in websites accessible from Pennsylvania,

whereas the defendant was actually a resident of California. The

defendant was an Internet news service provider, with whom a

customer could register online through an application, pay through

credit cards and was also through the Internet assigned password to

access the necessary newsgroup messages. The Court held:

"Nevertheless, our review of the available cases and materials reveals that the likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet. This sliding scale is consistent with well developed personal jurisdiction principles. At one end of the spectrum are situations where a defendant clearly does business over the Internet. If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, personal jurisdiction is proper. E.g. CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir.1996). At the opposite end are situations where a defendant has simply posted information on an Internet Web site which is accessible to users in foreign jurisdictions. A passive Web site that does little more than make information available to those who are interested in it is not grounds for the exercise personal jurisdiction. E.g. Bensusan Restaurant Corp., v. King, 937 F.Supp. 295 (S.D.N.Y.1996). The middle ground is occupied by interactive Web sites where a user can exchange information with the host computer. In these cases, the exercise of jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the Web site. E.g. Maritz, Inc. v. Cybergold, Inc., 947 F.Supp. 1328 (E.D.Mo.1996)."(emphasis supplied)

13. Relevant portions of the concerned "long arm statute" in

issue, concerning jurisdiction in such cases and considered by the

Court, read as follows:

"42 Pa.C.S. § 5322 (2008) § 5322. Bases of personal jurisdiction over persons outside this Commonwealth

(a) GENERAL RULE-- A tribunal of this Commonwealth may exercise personal jurisdiction over a person (or the personal representative of a deceased individual who would be subject to jurisdiction under this subsection if not deceased) who acts directly or by an agent, as to a cause of action or other matter arising from such person:

(1) Transacting any business in this Commonwealth. Without excluding other acts which may constitute transacting business in this Commonwealth, any of the following shall constitute transacting business for the purpose of this paragraph:

(i) The doing by any person in this Commonwealth of a series of similar acts for the purpose of thereby realizing pecuniary benefit or otherwise accomplishing an object.

(ii) The doing of a single act in this Commonwealth for the Purpose of thereby realizing pecuniary benefit or otherwise accomplishing an object with the intention of initiating a series of such acts.

(iii) The shipping of merchandise directly or indirectly into or through this Commonwealth.

(iv) The engaging in any business or profession within this Commonwealth, whether or not such business requires license or approval by any government unit of this Commonwealth.

CS (OS) 894/2006                                                   Page 11
       .....

(2) Contracting to supply services or things in this Commonwealth.

(b) EXERCISE OF FULL CONSTITUTIONAL POWER OVER NONRESIDENTS-- In addition to the provisions of subsection (a) the jurisdiction of the tribunals of this Commonwealth shall extend to all persons who are not within the scope of section 5301 (relating to persons) to the fullest extent allowed under the Constitution of the United States and may be based on the most minimum contact with this Commonwealth allowed under the Constitution of the United States."

14. Zippo has been one of the most cited judgments regarding

exercise of jurisdiction, when allegations that infringement has

occurred on the Internet. In Search Force v. Dataforce Int'l, 112 F.

Supp. 2d 771 (S.D. Ind. 2000), the Court, while dealing with

infringement of trademark on the Internet noted that the Fifth, Ninth,

and Tenth Circuits (US Federal appellate courts) had relied upon the

analytical framework set out in Zippo to determine the propriety of

exercising jurisdiction based on Internet activity. It observed that:

"Recent district court cases involving Internet activity and trademark infringement claims reinforce the notion that a defendant must avail itself of the forum state in a manner that is somehow more purposeful than an allegedly infringing domain name or use of an allegedly infringing mark on an interactive web site. See, e.g., Sports Auth. Mich., Inc. v. Justballs, Inc., 97 F. Supp. 2d 806, 811-12 (E.D. Mich. 2000) (finding personal jurisdiction where defendant operated a virtual store which he did not deny had resulted in sales to entities in the forum state); Euromarket Designs, Inc., 96 F. Supp. 2d at 838-39 (finding personal jurisdiction where defendant not only operated an online catalog from which purchases could be made, but also had additional non-Internet contacts with forum state); Uncle Sam's Safari Outfitters, Inc. v. Uncle Sam's Army Navy Outfitters- Manhattan, Inc., 96 F. Supp. 2d 919, 924-25 (E.D. Mo. 2000) (finding no personal jurisdiction where defendants' web site featured their retail (and allegedly infringing) name and allowed customers to view merchandise available for order by calling a toll-free telephone number listed on the site, but there was no evidence that anyone from the forum state had contacted the web site); Nissan Motor Co., Ltd. v. Nissan Computer Corp., 89 F. Supp. 2d 1154, 1159 (C.D. Cal. 2000) (finding personal jurisdiction where defendant not only used plaintiff's trademark as its domain name, but also had contracts with five companies in the forum state); JB Oxford Holdings, Inc. v. Net Trade, Inc., 76 F. Supp. 2d 1363, 1367-68 (S.D. Fla. 1999) (no personal jurisdiction where defendant had a pending application to do business in the forum state and three interactive web sites (but no indication that a forum resident ever interacted with the defendant on any site)); Rannoch, Inc. v. Rannoch Corp., 52 F. Supp. 2d 681, 686 (E.D. Va. 1999) (holding that exercising personal jurisdiction would exceed constitutional bounds where evidence of the defendant's "contacts" were a web site with the allegedly infringing trade name, a toll-free number, fax number, e-mail address, interactive comment form, hypertext links, interactive form for direct placement of classified ads with defendant, and no showing of how the defendant distinctly availed itself of the forum state differently than of all other states having residents with access to the site)."

15. The Zippo analysis has been modified and narrowed down in

subsequent judgments. Prominent is the Court of Appeal (3 rd Circuit) in

Toys 'R' US v. Step Two, 2003 US App. Lexis 1355. The case here

involved the use of a trademark Imaginerium by both the plaintiff and

the defendant in their respective websites. The plaintiff was a New

Jersey based corporation that manufactured and marketed toys. The

defendant was a Spanish corporation also engaged in the same CS (OS) 894/2006 Page 13 business. Both the entities had registered their respective websites

using the term 'imaginerium' since the mid nineties. The defendant did

not have any official presence in the United States but operated an

interactive website through which persons residing in New Jersey could

place orders and receive products. The customers could also join an

online club from which games and other content could be downloaded.

The plaintiff also gave evidence of at least two residents in New Jersey

having placed orders on the defendant's website and received the

products too. The Court found that both the transactions were

"orchestrated" by Toys. Even though the Court cited Zippo as the

seminal authority, it went on to state that a commercially interactive

website by itself was insufficient to establish jurisdiction, and that

there had to be evidence that the defendant purposefully availed

himself

"by directly targeting its web site to the state, knowingly interacting with the residents of the forum state via its web site, or through sufficient other related contacts"

which could be non-Internet related. The court concluded that personal

jurisdiction was lacking, firstly because there was no purposeful

availing of the goods or services, and secondly, applying the effects

test, the defendant did not knowingly seek to interact with U.S.

residents. The 'effects test' was propounded in Calder v. Jones, 465 US

783 (1984) (a case concerning a libel action), according to which

courts could exercise jurisdiction in cases where the acts were committed outside its jurisdiction, but were intentionally aimed at the

forum state and its effects were also felt in the forum state. The Court

observed:

"Since Zippo, several district court decisions from this Circuit have made explicit the requirement that the defendant intentionally interact with the forum state via the web site in order to show purposeful availment and, in turn, justify the exercise of specific personal jurisdiction. See, e.g., S. Morantz, Inc. v. Hang & Shine Ultrasonics, Inc., 79 F. Supp. 2d 537, 540 (E.D. Pa. 1999) (observing that "a web site targeted at a particular jurisdiction is likely to give rise to personal jurisdiction."). As another district court in this Circuit put it, "courts have repeatedly recognized that there must be 'something more' . . . to demonstrate that the defendant directed its activity towards the forum state." Desktop Technologies, Inc. v. Colorworks Reprod. & Design, 1999 U.S. Dist. LEXIS 1934, 1999 WL 98572, .....

the mere operation of a commercially interactive web site should not subject the operator to jurisdiction anywhere in the world. Rather, there must be evidence that the defendant "purposefully availed" itself of conducting activity in the forum state, by directly targeting its web site to the state, knowingly interacting with residents of the forum state via its web site, or through sufficient other related contacts."

(emphasis supplied)

16. In ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293 F.3d 707,

the Court of Appeals for the Fourth Circuit observed:

"Thus, adopting and adapting the Zippo model, we conclude that a State may, consistent with due process, exercise judicial power over a person outside of the State when that person (1) directs electronic activity into the State, (2) with the manifested intent of engaging in business or other interactions within the State, and (3) that activity creates, in a person within the State, a potential cause of action cognizable in the State's courts. Under this standard, a CS (OS) 894/2006 Page 15 person who simply places information on the Internet does not subject himself to jurisdiction in each State into which the electronic signal is transmitted and received. Such passive Internet activity does not generally include directing electronic activity into the State with the manifested intent of engaging business or other interactions in the State thus creating in a person within the State a potential cause of action cognizable in courts located in the State." (emphasis supplied)

17. The test evolved in Toys has been followed by various Courts of

Appeals in the United States including Wortham v. KarstadtQuelle AG

(In re Nazi Era Cases Against German Defendants Litig.), 153 Fed.

Appx. 819, 2005 U.S. App. LEXIS 22715 (3d Cir. N.J. 2005); Decker v.

Dyson, 165 Fed. Appx. 951, 2006 U.S. App. LEXIS 1272 (3d Cir. Pa.

2006) and Sathianathan v. Pac. Exch., Inc., 248 Fed. Appx. 345, 2007

U.S. App. LEXIS 22084 (3d Cir. N.J. 2007).

18. Thus, jurisdiction could be either general or specific, but in both

cases, even if the effects are experienced in the forum state, the

defendant must have knowingly and intentionally (expressed in the

judgment as "manifest intention") targeted the forum state, with

contacts either through the web (in which case the interactivity of the

website ought to be a relevant consideration) or through a non Internet

based activity.

The position in Canada

19. The Federal Court in Canada, in a recent decision, considered

and explored the law related to jurisdiction over the Internet. In

Desjean v. Intermix Media, [2006] F.C.J. No. 1754, the Court had to consider whether Intermix's bundling of intrusive spyware programmes

along with free downloadable software from the Internet, without the

express permission of the plaintiff amounted to violation of his rights.

Intermix pleaded that it was publicly traded Delaware Corporation with

its principal offices in Los Angeles, California and therefore, the action

could be brought only in the State of California. The Court while

discussing the thorny question of jurisdiction over entities not within

the territorial jurisdiction of the court chose to rely on the following

observation made by the Supreme Court of Canada in Morguard

Investments Ltd. v. De Savoye [1990] 3 SCR 1077:

"It seems to me that the approach of permitting suit where there is a real and substantial connection with the action provides a reasonable balance between the rights of the parties. It affords some protection against being pursued in jurisdictions having little or no connection with the transaction or the parties. In a world where even the most familiar things we buy and sell originate or are manufactured elsewhere, and where people are constantly moving from province to province, it is simply anachronistic to uphold a "power theory" or a single situs for torts or contracts for the proper exercise of jurisdiction."

After discussing at length, various Canadian precedents on the issues,

the Court summarized the following as the criteria employed by the

courts to assume jurisdiction:

"1. The connection between the forum and the plaintiff's claim;

2. The connection between the forum and the defendant;

3. Unfairness to the defendant in assuming jurisdiction;

4. Unfairness to the plaintiff in not assuming jurisdiction;

5. Involvement of other parties to the suit;

6. The court's willingness to recognize and enforce an CS (OS) 894/2006 Page 17 extra-provincial judgment rendered on the same jurisdictional basis;

7. Whether the case is interprovincial or international in nature; and

8. Comity and the standards of jurisdiction, recognition and enforcement prevailing elsewhere. "

20. Applying these factors to the before it, the court found that

Canadian courts lacked jurisdiction to entertain the action. It found that

Intermix did not have any offices in Canada although it had, in the

past, subsidized office space for contractors working on two websites

purchased by Intermix. Also, Intermix did not have any employees in

Canada but only had a contractual relationship with two independent

contractors in Canada that provided newsletter edition services.

Further, Intermix had in no way availed itself of Canadian laws, as it

did not transact any business in Canada through the Website at issue.

It had no bank accounts in Canada and did not pay taxes to either the

federal government or any provincial government nor was it registered

as doing business in any Canadian jurisdiction. Furthermore, Intermix

had no direct advertising, marketing or solicitation aimed at the

Canadian market. The Court went on to observe that it would be

manifestly unfair to subject the defendant to the jurisdiction of

Canadian courts since, it would result in a US based operator of a

website with no business assets and no physical presence in Canada

being sued there and in any other country from which a plaintiff might

chose to download its products. The Court observed that in order to

exercise jurisdiction, a "minimum contact" with the concerned territory would have to be shown. This could either be through the

exercise of general jurisdiction or through the exercise of specific

jurisdiction. That is, the defendant must have ongoing and real

contacts with the specific territory, independent of the plaintiff's

cause of action or must have purposefully directed activities to the

locale, which involves the examination of the interactivity of the

website. The Court then went on to hold that:

"The record in the present case does not allow me to come to the conclusion that the websites Intermix operates are interactive in nature. These websites do not allow users to communicate and exchange information with the sponsors of the site, or to order products online. But even if they could be characterized in such a way, I do not think Intermix could be found to have the level of interactivity with Canada that could justify a finding of minimum contact. The software that can be downloaded from Intermix's websites is free, there has been no targeting of Canada or of Canadian consumers in any specific way, there is no specific content for a Canadian audience, and Intermix has never purposely availed itself of Canada's laws."

The position in UK

21. In the United Kingdom the law in this regard is largely governed

by the decision in 1-800 Flowers Inc v. Phonenames [2002] FSR 12 CA.

There, use of the term '1-800' by the appellant, a United States based

corporation, in its website, was claimed as 'use in UK' for the purposes

of trademark registration. The defendant was a UK based phonebook

company and the plaintiff was engaged in the business of delivery of

flowers. Customers across the world could access the appellant's

CS (OS) 894/2006 Page 19 website which was hosted and maintained in the United States and

place orders for flowers. The appellant had no direct business presence

in UK and did not have any office. Neither could it place any conclusive

evidence of UK residents having placed orders on its website. Instead,

it argued that merely because its website was accessible from UK and

UK residents could place orders online, its use of the mark 1-800 on its

website amounted to use in United Kingdom. In the first appeal Jacob J

rejected the argument of the appellant and held that website owner

does not automatically 'put a tentacle onto the user's screen'. He held

that:

"So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law, publication on a website may well amount to a universal publication, but I am not concerned with that. But even if Mr. Hobbs were right in saying that website use amounted, for trade mark purposes, to use in omnipresent cyberspace, I cannot see how that would help here. If you access the applicant's site in the UK, you can order flowers. But the service of receiving and [transferring] (i.e. the service of the specification) is carried out wholly in New York. ......

In the result, I do not think that the applicants have the requisite intention to use or in fact use the mark 800 FLOWERS."

22. The Court of Appeals too rejected the argument of the appellants

and Justice Jonathan Parker held that:

"In my judgment, however, the evidence in the instant case does not establish actual user of the mark by the Applicant in the UK, even to the "minimal" extent required (as illustrated byCHIPIE). In the first place, I reject as unreal the submission that a telephone call from the UK to the Applicant's US telephone number necessarily involves a use of the mark in the UK. Nor, in my judgment, is the evidence (such as it is) concerning the Applicant's internet website sufficient to justify the conclusion that accessing the website amounts to use of the mark at the point of access. In any event, the evidence does not disclose the extent to which the website has in fact been accessed from the UK. The Applicant has never had a place of business in the UK; the services which it provides are performed outside the UK; and, so far as the evidence goes, the only piece of advertising directed specifically at the UK is the one advertisement in the Independent newspaper to which I referred earlier."

Justice Buxton, in a concurring opinion too rejected the contention of

the appellant and held that:

"I would wish to approach these arguments, and particularly the last of them, with caution. There is something inherently unrealistic in saying that A "uses" his mark in the United Kingdom when all that he does is to place the mark on the internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A. By contrast, I can see that it might be more easily arguable that if A places on the internet a mark that is confusingly similar to a mark protected in another jurisdiction, he may do so at his peril that someone from that other jurisdiction may download it; though that approach conjured up in argument before us the potentially disturbing prospect that a shop in Arizona or Brazil that happens to bear the same name as a trademarked store in England or Australia will have to act with caution in answering telephone calls from those latter jurisdictions.

However that may be, the very idea of "use" within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use."

23. The above analysis of shows that recent trends abroad, post

Zippo (a Federal District court judgment) have diluted the CS (OS) 894/2006 Page 21 understanding about ubiquity of internet as a medium clothing courts

with a kind of "universal" jurisdiction. The current understanding, in

United States is that, even with the aid of "long arm" statutes, such as

existing in various states, the courts are slow at entertaining claims of

trademark infringement where defendants do not direct electronic

activity in the state concerned, with the manifested intent of engaging

in business or other interactions within the State. Interactivity of a web

site could be a criteria, but not the predominating one. Canadian

courts have independently reflected the same approach; the test

indicated by them (for assumption of jurisdiction by courts, based on

existence of websites, or some element of internet presence) is the

defendant's "ongoing and real contacts" with the specific territory,

independent of the plaintiff's cause of action; or the defendants must

have "purposefully" directed activities to the locale. In the United

Kingdom too, such web hosting of infringers' products or services, or

claims to "use" have been held insufficient to clothe territorial

jurisdiction, or by itself, constitute use as to amount to a cause of

action.

24. The question of defendant's activities, in relation to business

transacted through the Internet, has also been considered in the

contextual background of "trap orders" or "trap transactions" where

the plaintiff, potentially engages in a transaction, either itself, or

through someone else, on its behalf, to approach the court, and claim that it can exercise jurisdiction. The US courts' approach has been one

disfavouring such action- the decision in Toys said that the plaintiff

"orchestrated" the situation, and despite existence of a considerable

degree of interactivity of the defendants' website, refused to entertain

the claim, on the ground that it was insufficient to disclose that any

direct electronic activity in the state concerned, (of the defendant,

existed) with its manifest intent of engaging in business or other

interactions within the State.

25. As far as general principles of what constitutes cause of action

are concerned, the law is well settled. In Dabur India Limited v. KR

Industries, (2006) 33 PTC 348, a Division Bench of this Court held that

since the defendant was from Andhra Pradesh and since there was no

documentary evidence to show that the respondent was selling its

goods in Delhi, this Court did not have territorial jurisdiction. In Dhodha

House v. SK Maingi, (2006) 9 SCC 41; the Supreme Court, after noticing

the decision in ONGC v. Utpal Kumar Basu, (1994) 4 SCC 711, the

Court had categorically held that a mere advertisement in a journal or

paper by itself, will not confer jurisdiction on the Court. In that context

it also observed that cause of action will arise only when the infringing

goods are used not when an application for registration is made or

pending. This court's decision in Dabur (supra) has been recently

approved by the Supreme Court (See Dabur India v. KR Industries 2008

(37) PTC 332 (SC). In SectorTwenty-one Owners' Welfare Association

CS (OS) 894/2006 Page 23 v. Air Force Naval Housing Board, 65 (1997) DLT 81 (DB) it was held

that a trivial or insignificant part of the cause of action arising at a

particular place would not be enough to confer jurisdiction on the court

to entertain the lis. Citing a number of precedents it observed that the

emphasis had shifted from the residence or location of the person or

authority sought to be proceeded against, to the situs of the accrual of

the cause of action. In H.P. Horticulture Produce Marketing and

Processing Corpn. v. M.M Breweries, AIR 1981 P&H 117, in relation to

action for passing off, it was held that:

"In a case of present nature, the cause of action partly or wholly can arise in a given jurisdiction only if it is the defendant who is proved to have directly made sale of the goods under the impugned trademark (within a given court) not to an individual customer but to a distributor or a wholesaler or retailer and that such a sale should be at a commercial scale."

26. In Gold Seal Engineering Products v. Hindustan Manufacturers,

AIR 1992 Bom. 144, it was held that a suit for passing off cannot be

filed in Bombay if the defendants carry on business in Calcutta and

that supply of goods to Delhi was on a commercial basis. In Gupta

Brothers Conduit Pipe Manufacturing Co. v. Anil Gupta, (2001) 24 PTC

159, this Court held that since neither plaintiff nor the defendants have

offices in Delhi and are not carrying on business in Delhi, the suit had

to be returned due to lack of jurisdiction. The court held, in Haryana

Milk Foods v. Chambel Diary Products, (2002) 25 PTC 156 that for the

purposes of ascertaining territorial jurisdiction the entire plaint has to be taken into consideration. In the case since the plaintiff could not

prove that defendant had a office in Delhi or carries on business in

Delhi, the Court held that it did not have territorial jurisdiction to

adjudicate the matter.

27. Cause of action, though not defined by the legislature, consists

of that bundle of facts which give cause to enforce the legal injury. In

ABC Laminart v. AP Agencies, (1989) 2 SCC 163, the Supreme Court

held that cause of action means that set of facts, which taken with the

law applicable to them, gives the plaintiff a right to claim relief against

the defendant. If that were so, the cause of action in a case of passing

off would arise only when the defendant uses the impugned

trademark. The object of action for passing off being to protect the

goodwill, the goodwill will get affected only when the defendant

markets his good under the impugned mark. Therefore, the mere

advertisement in the Trademarks Journal or preferring of application or

even the registration of a trademark at a particular place, will not and

cannot confer jurisdiction, since it cannot amount to cause of action in

relation to passing off.

28. In view of the above discussion, and the absence of any

legislative action conferring such "long arm" jurisdiction upon courts,

(of the kind noticed and relied on in Zippo and in other judgments by

the US Courts) the question which has to be settled authoritatively is

whether mere web presence, with or without any manifest intention to

CS (OS) 894/2006 Page 25 purposefully direct commercial presence in the court's jurisdiction,

entitles a court to entertain it, where the defendant lives outside the

territorial jurisdiction of the court, and carries on its activities for gain.

The question is of some significance, because Parliament intended that

"normal" rules of jurisdiction in civil matters should be somewhat

different in cases of copyright infringement, and trademark

infringement (See Section 134, Trademark Act, 1999 and Section 62(2)

defendant through action for infringement, wherever the plaintiff

resides or works for gain). Absence of any technology specific

amendment, in the opinion of this court, is a relevant criteria for

considering whether internet related activity - even if some degree of

interactivity of the website were to enable a court, nevertheless to

exercise jurisdiction, where the essential ingredients of Sections 62(2)

of the Copyright Act, and Section 134 of the Trademark Act, 1999 are

absent, and where otherwise the defendant resides and works for gain

outside jurisdiction of this court.

29. Although in India TV Independent News Service Pvt. Ltd. the

court has adopted a somewhat nuanced approach, at the same time, it

noticed the absence of long arm statutes or provisions, in Indian law.

That Parliament cannot be attributed lack of awareness of such

aspects is clear from provisions of the Information Technology Act,

2000. Sections 2(j) (k) and (l) contain definitions which are of the widest amplitude sufficient to accommodate the Internet and

subsequent technologies. Other provisions, particularly, Sections 11,

12 and 13, have some relevance; they read as follows:

"11. ATTRIBUTION OF ELECTRONIC RECORDS

An electronic record shall be attributed to the originator -

(a) if it was sent by the originator himself;

(b) by a person who had the authority to act on behalf of the originator in respect of that electronic record; or

(c) by an information system programmed by or on behalf of the originator to operate automatically.

12. ACKNOWLEDGEMENT OF RECEIPT

(1) Where the originator has not agreed with the addressee that the acknowledgment of receipt of electronic record be given in a particular form or by a particular method, an acknowledgment may be given by -

(a) any communication by the addressee, automated or otherwise; or

(b) any conduct of the addressee, sufficient to indicate to the originator that the electronic record has been received.

(2) Where the originator has stipulated that the electronic record shall be binding only on receipt of an acknowledgment of such electronic record by him, then unless acknowledgment has been so received, the electronic record shall be deemed to have been never sent by the originator.

(3) Where the originator has not stipulated that the electronic record shall be binding only on receipt of such acknowledgment, and the acknowledgment has not been received by the originator within the time specified or agreed or, if no time has been specified or agreed to within a reasonable time, then the originator may give notice to the addressee stating that no acknowledgment has been received by him and specifying a reasonable time by which the acknowledgment must be received by him and if no acknowledgment is received within the aforesaid time limit he may after giving notice to the addressee, treat the electronic record as though it has never been sent.

CS (OS) 894/2006                                                     Page 27
 13. TIME AND PLACE          OF    DESPATCH    AND    RECEIPT    OF
ELECTRONIC RECORD

(1) Save as otherwise agreed to between the originator and the addressee, the dispatch of an electronic record occurs when it enters a computer resource outside the control of the originator.

(2) Save as otherwise agreed between the originator and the addressee, the time of receipt of an electronic record shall be determined as follows, namely -

(a) if the addressee has designated a computer resource for the purpose of receiving electronic records

(i) receipt occurs at the time when the electronic record enters the designated computer resource; or

(ii) if the electronic record is sent to a computer resource of the addressee that is not the designated computer resource, receipt occurs at the time when the electronic record is retrieved by the addressee;

(b) if the addressee has not designated a computer resource along with specified timings, if any, receipt occurs when the electronic record enters the computer resource of the addressee.

(3) Save as otherwise agreed between the originator and the addressee, an electronic record is deemed to "be dispatched at the place where the originator has his place of business, and is deemed to be received at (he place where the addressee has his place of business.

(4) The provisions of sub-section (2) shall apply notwithstanding that the place where the computer resource is located may be different from the place where the electronic record is deemed to have been received under sub-section (3).

(5) For the purposes of this section -

(a) if the originator or the addressee has more than one place of business, the principal place of business, shall be the place of business;

(b) if the originator or the addressee does not have a place of business, his usual place of residence shall be deemed to be the place of business;

30. Social advances, and changes in technology are not a new

phenomenon. Transactions; even contracts, pre-Internet, could be

negotiated and formalized with the aid of technology - before the era

of facsimile (FAX), it was first, through telephone, then, telex and so

on. These changes in technologies, were not used as platforms to

redefine standards for determining territorial jurisdiction. Similarly, the

advent of electronic media (first, radios, then the television and now,

satellite television and satellite radio) enhanced the capacity of those

offering goods, products and services to reach a wider audience.

Introduction of new technology, therefore, by itself is not a contributing

factor to redefine standards for determining territorial jurisdiction.

31. Cyberworld is a virtual world; it has an existence independent of

material reality. The hosting of a web portal or website, is, in a sense,

akin to opening a showroom or a shop. Though difficulties may be

experienced by trademark owners at tackling with infringement and

passing off of their marks, in such cases nevertheless, a one-

dimensional approach to territorial jurisdiction, based on universal

accessibility of a particular web site cannot, in the opinion of the court,

be justified to assume jurisdiction, as is suggested in Casio. The ruling

in India TV Independent News marks a shift from Casio; nevertheless it

lacks in explanation as to why a particular approach commended itself

to the court, sans any legislative activity, or long arm statutes of the

kind prevalent elsewhere. The resultant position is unsatisfactory, as

CS (OS) 894/2006 Page 29 both judgments were by single judges, and do not spel out clear

standards which are to guide subsequent case. This leaves later

benches of co-ordinate strength to prefer either the casio ordained

wider rule, or prefer a narrower route, suggested in India TV

Independent News.

32. In this case, the averments in the suit show that the plaintiff

does not operate within the jurisdiction of the court; the action is not

for trademark infringement. The defendant's "residence" i.e registered

office is not in the territorial jurisdiction of the court. It does not also

have any branch or other offices in Delhi. The slender thread relied on

by the plaintiff is the web site of the defendant, and the "trap

transaction" whereby a brochure was ordered by it, from the

defendant, and received in New Delhi. The web site, screen shots of

which have been reproduced, reveals that the defendant has disclosed

its activities; it contains web pages eliciting a feedback, and link to an

"E-Brochure". The defendant's e-mail identification also figures in the

web site; it further discloses that the defendant has "banyan tree"

retreats in Hyderabad, at three locales. The layout plan of those

retreats has been shown. However, the interactivity is confined to a

feedback dialog form; the defendant does not have any application

form, which can be used by a potential customer. Even the brochure

produced by the plaintiff, along with the documents, mentions the

booking amount as Rs. Ten lakhs, for a unit. The payment plan, which is apparently linked with the construction of the unit, has been shown,

but, significantly enough, without details of amounts. An overall

reading of the brochure does not enable the potential customer to

know the cost of the unit which he would like to book; he would have

to interact further with the defendant, as the solitary instance relied on

by the plaintiff, in the affidavit, suggests.

33. In the light of the above developments, particularly the disparate

reasoning in Casio and India TV Independent News neither of which

have taken into consideration factors such as special changes in the

law concerning trademark and copyright violation, where jurisdiction

has been differently provided for (which do not include any factor

relating to internet based activity); absence of any long arm statutes,

of the kind existing elsewhere in the world, and provisions of the

Information Technology Act, 2000, this court is of the opinion that the

issue of territorial jurisdiction in cases concerning trademark and

authoritatively by a Division Bench. This is of some importance,

because whenever Parliament wanted to redefine the issue of

jurisdiction, it did so, in terms of Section 134(2) of the Trade marks Act,

1999 and 62(2) of the Copyright Act, 1957- in both instances omitting

to provide for internet related amendments. Similarly, Parliament

prescribed, with specificity, in Sections 11, 12 and 13 of the IT Act,

2000 about origination and receipt of electronic records; it also

CS (OS) 894/2006 Page 31 provided for international or universal jurisdiction, of Indian courts, by

Section 75 of the IT Act. The court is of the opinion that these

questions need to be considered and settled authoritatively, by a

Division Bench. This is essential both to resolve the conflict in the

approaches indicated by the two decisions of the court, as also decide

whether assumption of such jurisdiction is feasible or justified, having

regard to the existing state of law. Also, in the event the court

concludes that internet based activity or behavior can in some

circumstances, clothe this court with jurisdiction, it would be

appropriate to indicate standards which can be applied with some

constancy. The following questions are accordingly referred for

consideration of, and decision, by a Division Bench:

(1) Whether this court can entertain the present suit, having regard

to the averments and documents, in the context of special provisions

in to the Trademark and Copyrights Act, which do not provide for

exercise of jurisdiction based on internet or web-presence of such

alleged infringers, even while making explicit departure from the

general law as to territorial jurisdiction;

(2) Whether the court can entertain the present suit, in the absence

of a long arm statute, having regard to the existing state of law,

particularly Section 20, CPC, and the impact, if, any of the Information

Technology Act, 2000 on it;

(3) Applicable standards for entertaining a suit, based on use of a

trademark by a defendant, on its web site, or infringement or passing

off of the plaintiff's trademark, in such web site and the relevant

criteria to entertain such suits;

(4) Applicable standards and criteria where the plaintiff relies

exclusively on "trap orders" or transactions, in relation to passing off,

or trademark infringement cases, as constituting "use" or cause of

action, as the case may be.

34. The Registry is directed to place this order, and the files before

the Hon'ble Chief Justice, for constitution of an appropriate bench, to

answer the above reference. Ordered accordingly.




DATED:11th AUGUST,2008.                         (S. RAVINDRA BHAT)

                                                    JUDGE




CS (OS) 894/2006                                                  Page 33