Authored By – Dr. Mohan Dewan & Advocate Tushar Shrikhande
“Forum shopping” is the informal name given to the practice adopted by some litigants to have their legal case heard in the Court thought most likely to provide a favourable judgment. This practice is prevalent in India and can lead to disastrous consequences as was demonstrated in a recent judgment by the Delhi High Court in the case of World Wrestling Entertainment Inc. vs. M/s. Reshma Collection & Ors. So why is Delhi usually selected? The most probable reason is the mistaken belief that Delhi is the centre of Intellectual Property Courts and litigation in India.
In a suit for trade mark and copyright infringement instituted by the World Wrestling Entertainment Inc. (“WWE”), the Delhi High Court recently ordered that the plaint be returned to the Plaintiff and the suit be presented at the appropriate Court. Referring to the principles of law relating to the place where a suit may be instituted, the Court denied that it had any territorial jurisdiction to try the present case.
The WWE, an American company, claimed that their trade mark/copyright was being infringed by the defendant who was located in Mumbai and was selling garments and apparel such as T- Shirts bearing trade marks of the Plaintiff. Under the Indian Trade Mark and Copyright law, a suit may be instituted where the Plaintiff resides, works for gain or carries on business. In the present case however, the WWE did not have a branch office in India. The WWE alleged that it was carrying on its business in Delhi since their goods (WWE merchandise) were being sold online by WWE and the website was accessible by people/customers in Delhi.
The Court however held that in order to be said that an entity carries on business in a particular place, the following conditions need to be met:
1. The entity must have an exclusive agent in that territory;
2. The person acting as an agent of the entity must be an agent in the strict sense of the term;
3. To constitute “carrying on business” at a certain place, the essential part of the business must take place in that place.
In the present case, no essential part of the plaintiffs business was carried on at Delhi. The plaintiff had not even pleaded to having any branch office or exclusive agent anywhere in India, let alone in Delhi. Thus, the court held that “merely because the website of the plaintiff is accessible in Delhi is not sufficient to clothe this Court with jurisdiction.” Accordingly the Court ordered that the Plaint be returned to the Plaintiff to be presented before a Court having jurisdiction.
Ideally, since WWE did not have a branch office/exclusive dealer in India, it should have instituted the suit at a place where the infringer was selling the infringing goods or where he resided, worked for gain or conducted his business. Thus, the suit might have proceeded properly had WWE instituted the suit at Mumbai.
Conclusion
Institute a suit for infringement of trademark only before a Court having territorial jurisdiction i.e. where you live, work for gain or carry on business or where the defendant resides or sells his wares.