The Delhi High Court in the instant matter gave a wide interpretation as to what constitutes “use of a trade mark”. Court has held that in a trade mark action, use of mark includes not just actual physical use of the mark but also its use for inviting franchisee queries from a particular territory and the court in that territory would have the jurisdiction to try and entertain such suit.
The Delhi High Court in the matter of Burger King Corporation Vs. Techchand Shewakramani [CS(COMM) 919/2016 & CC(COMM) 122/2017], decided on 27.08.2018 held that in a trademark infringement suits, the jurisdiction of the Court can be invoked under Section 20 of the Code of Civil Procedure (CPC), 1908 in addition to Section 134 under the Trade Marks (TM) Act, 1999.
The issue in hand was that the Plaintiff entered into numerous agreements and contracts with various parties within the territory of New Delhi in furtherance of the imminent launch of its Burger King franchisee outlet in New Delhi. The Plaintiff also had a strong apprehension that the defendants will expand their operations under the impugned trading style/trade mark of Burger King Restaurants in New Delhi.
The defendants sought rejection of the plaint on the ground of lack of cause of action and lack of territorial jurisdiction as they claimed that the defendants were based out of Mumbai.
The High Court while deciding the present case held that in a case involving trade mark infringement, infringement happens when a person “uses in the course of trade” any mark without the owner’s consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, a cause of action arises to sue where the usage of that mark takes place.
Thus, when Section 20 of the CPC provides that a suit could be filed in any place where the cause of action arises, in a suit involving rights in a trademark cause of action would arise in each and every place where there is any form of use of the said mark.
Thereby, while considering the documents on record and the fact that the defendants have used the mark by:
rejected the claim of the defendants and held that the Delhi High Court had the jurisdiction try and entertain the instant suit.