Trademark law lets a plaintiff sue where it carries on business — a rare privilege, since ordinarily you sue where the defendant is. BookMyShow tried to stretch it to a city where it had no office at all, on the basis that customers there used its website. The court sent the plaint back.
The privilege, and its limit
Under Section 134(2) of the Trade Marks Act, 1999 — and its counterpart, Section 62 of the Copyright Act, 1957 — a plaintiff may sue for infringement in a district court within whose jurisdiction the plaintiff actually and voluntarily resides, carries on business, or personally works for gain.
Defendants routinely challenge jurisdiction, and in some cases the court itself declines to hear a matter where a more appropriate forum exists — the doctrine of forum non conveniens. This case is one where the Delhi High Court exercised that discretion, and in doing so clarified what “carries on business” means.
The facts
The plaintiff was a company registered under the Companies Act, 1956, situated in Mumbai. The defendants’ places of business were Gurgaon and Karnataka.
The plaintiff’s mark was bookmyshow.com; the impugned marks were bookmyoffer.com and bookmerashow.com. The plaintiff sued for a permanent injunction for trademark infringement.
The plaintiff had no office in Delhi — no principal office, head office, registered office, or even a branch office. It claimed the Delhi High Court could hear the matter because its services were availed by customers in Delhi, and framed the suit on the basis that it was carrying on business in Delhi.
The plaintiff’s argument
It relied on a Division Bench judgment of the Delhi High Court holding that where contracts and transactions between a plaintiff and its customers are concluded in Delhi, where offers are made by customers in Delhi, and where the money emanates from Delhi, the plaintiff could be considered to carry on business in Delhi to a certain extent.
That Bench had gone further, equating virtual presence with physical presence given advances in technology and new models of doing business over the internet: when a shop in the physical sense is replaced by a virtual shop, it cannot be said the plaintiff does not carry on business there.
Why it failed
The Single Judge held the Division Bench judgment inapplicable, for two reasons: it did not deal with internet transactions of a company registered under the Companies Act, and it left open whether a company with no office where its website is accessed can be said to carry on business there.
The critical distinction drawn was between natural persons and legal entities. The position of a natural person carrying on business is not the same as that of a company.
Relying on Patel Roadways Limited, Bombay v. Prasad Trading Company (1991) 4 SCC 270 and Indian Performing Rights Society Limited v. Sanjay Dalia (2015) 10 SCC 161, the judge held that read together, these require that a branch office, principal office or registered office must exist where the cause of action is said to have arisen, for the plaintiff to fall within “carries on business”.
The plaint was accordingly returned under Order VII Rule 10 of the Civil Procedure Code, for presentation before a competent forum.
Note: Sanjay Dalia is the governing authority here, and its purpose is worth stating plainly. Sections 134(2) and 62 were enacted to help plaintiffs who would otherwise have to litigate wherever a defendant chose to operate. The Supreme Court held they were not meant to let a plaintiff drag a defendant to a distant forum having no real connection with either party — which is precisely what was attempted here. The Delhi High Court’s Division Bench later set out the position systematically in Ultra Home Construction v. Purushottam Kumar Chaubey (2016), mapping the four situations in which a plaintiff may invoke the provision by reference to where its offices are and where the cause of action arose.
The strategic point
Trademark owners often choose their forum deliberately — because a particular bench handles more IP matters, or is perceived as receptive to rights holders. The Delhi High Court hears a large volume of IP work, which is likely why the suit was filed there.
And the notable thing is that the choice was available; it was simply pleaded the wrong way. The Delhi High Court would have had jurisdiction had the plaintiff filed on the ground that the defendants’ impugned activities were taking place in Delhi — that is, that the cause of action arose there — rather than on the ground that the plaintiff carried on business there.
That distinction is the practical lesson. Cause of action under Section 20 CPC and plaintiff’s place of business under Section 134(2) are separate routes to the same court, and the wrong one was chosen.
The takeaways
- Section 134(2) lets a plaintiff sue where it carries on business — an exception to the usual rule.
- For a company that means an office — registered, principal or branch.
- A website accessed in a city is not carrying on business there.
- Plead cause of action instead where the defendant’s activities occur in that forum.
Frequently asked questions
Where can a trademark owner file an infringement suit in India? Where the defendant resides or carries on business, where the cause of action arose, or — under Section 134(2) — where the plaintiff resides or carries on business.
Does having customers in a city mean I carry on business there? Not for a company — the court held that a registered, principal or branch office must exist in that place.
What did IPRS v. Sanjay Dalia decide? That Sections 134(2) and 62 were meant to assist plaintiffs, not to let them drag defendants to a distant forum unconnected with either party.
What happens if I file in the wrong forum? The plaint may be returned under Order VII Rule 10 CPC for presentation before a competent court, costing time and expense.
Legislation referred to
- The Trade Marks Act, 1999
- The Code of Civil Procedure, 1908