Source: Delhi High Court 

Why in News? 

A bench of Justice Mini Pushkarna held that when the website marketing the goods of the defendant is accessible from Delhi, the jurisdiction of the Courts in Delhi exists.   

• The Delhi High Court held this in the case of Johnson & Johnson PTE Ltd v. Mr. Abbireddi Satish Kumar & Ors. (2025). 

What was the Background of Johnson & Johnson PTE Ltd v. Mr. Abbireddi Satish Kumar & Ors.  Case?   

• The plaintiff has filed a suit under Section 134(1) of the Trade Marks Act, 1999 (TMA), and Section 20(c) of the Code of Civil Procedure (CPC), seeking permanent and mandatory injunctions against the defendants for trademark infringement and passing off using a deceptively similar mark “ORSI” and similar packaging/trade dress. 
• The plaintiff company, established in 1974 and registered in Singapore, manufactures consumer healthcare products and acquired the ORS-L/ORSL brand from Jagdale Industries Limited through an Assignment Deed dated 7th November 2014. 
• Use of ORS-L/ORSL Marks: 
  • The ORS-L brand was first introduced in India in 2003 by Jagdale Industries Limited as an electrolyte drink in Orange flavor. 
  • ORS-L Lemon flavor has been in use since 2003, while ORS-L Orange and Apple flavors have been in use since 2005. 
  • The plaintiff rebranded from ORS-L to ORSL in 2013. 
  • The plaintiff holds registered trademarks for ORS-L and ORSL in multiple classes, including Classes 30, 31, 32, and 33. 
• Defendants’ Activities: 
  • Defendant No. 1 is the sole proprietor of M/s Sree International India, while Defendant Nos. 2 to 5 are partners in M/s Pure Tropic. 
  • The defendants are engaged in the business of energy and refreshment drinks. 
  • Defendant No. 1 is marketing products under the allegedly infringing mark “ORSI” using a similar trade dress and packaging. 
• Trademark Registration by Defendant: 
  • Defendant No. 1 obtained registration for the mark “ORSI” on 10th February, 2022, and applied for additional registrations in Class 32 in November 2022 on a “proposed to be used” basis. 
  • M/s Pure Tropic manufactures products bearing the impugned marks and operates the website www.juscoco.com. 
• Plaintiff’s Discovery and Cease-and-Desist Notices: 
  • In September 2022, the plaintiff discovered the defendants’ infringing products in India and sent a Cease-and-Desist notice on September 5, 2022, which could not be delivered to Defendant No. 1. 
  • A reminder letter was sent on September 20, 2022, but remained undelivered. 
• Further Investigations: 
  • In June 2023, the plaintiff found that Defendant No. 1 had filed a trademark application (No. 5525855) for the infringing mark, against which the plaintiff filed an opposition on June 13, 2023. 
  • Defendants attempted to evade detection by applying for trademark registrations under the names “ERSI FRUIT DRINK,” “ERSI FRUIT DRINK APPLE,” and “ERSI FRUIT DRINK ORANGE.” 
• Online Marketing and Sales: 
  • In September 2023, the plaintiff discovered that the defendants were marketing and selling their infringing products through the website which delivers across India, including Delhi. 
  • Defendants’ products were also listed on third-party platforms such as IndiaMart.

What were the Court’s Observations?  

• The Court held that the use of a mark has been defined in Section 2 (2) (c) of  TMA. 
• The above has been construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods. 
• Thus, offering the goods for sale or advertising the goods for sale, would be construed as use of the goods. 
• The Court observed that the plaintiff has averred and has been able to show that it has been successfully able to place order for the products of the defendants from within the territorial jurisdiction of this Court. 
• The Court therefore held that when the website marketing the goods of the defendant is accessible from Delhi, though the website has stopped the operations subsequently, and products may not have been ultimately delivered, the very fact that the website could be accessed in Delhi at the time of filing of suit would give the Courts in Delhi jurisdiction. 
• The same would thus constitute use in relation to goods, within the jurisdiction of Court at the time filing of the suit. 
• Further, the Court observed that when an application for rejection of plaint is made under Order VII Rule 11 of CPC the Court should only look at averments made in the plaint and decide if there is cause of action and territorial jurisdiction. 
• The Court thus, held that the defendant has not been able to establish any ground for rejection of plaint.

How is Jurisdiction Ascertained in Trademark Suits? 

• Section 28 and Section 29 of TMA provide for rights conferred by registration and infringement of registered trademark respectively. 
• Under Section 29 of TMA use of a mark could be in any form including use by offering goods/services for sale. 
• In the case of Burger King Corporation v. Techchand Shewakramani and Others (2018), the Court held that Section 20 of CPC provides that a suit could be filed in any place where the cause of action arises, in a suit involving rights in a trade mark, cause of action arises in each and every place where there is any form of use of the said mark. 
• Principles which apply to infringement, actions to determine “use” would equally apply to passing off actions. 

What Are the Cases on This Issue? 

• Shakti Fashion and Another v. Burberry Limited (2022) 
  • The Court held that the defendant is clearly advertising it’s goods in the website, India Mart. 
  • India Mart clearly permits enquiries for garments advertised on the website. 
  • The Court further held that this is a question of fact which would require evidence to be led. 
• Burger King Corporation v. Techchand Shewakramani and Others (2018) 
  • In both infringement and passing off action the cause of action arises when there is use of mark. 
  • If use takes place in a territory where the suit is filed that Court has jurisdiction to entertain the suit. When there is use of mark, there is cause of action to sue where the use takes place.