IA No. 8139/2014
1. The present application has been filed by defendant no.2 – a Society registered under the Madhya Pradesh Societies Registration Act, 1973 – under Order VII Rule 11 of the Code of Civil Procedure, 1908, inter alia, praying that the above-captioned suit be rejected and/or the plaint be returned.
2. The applicant has established a school at Indore under the name of “Delhi International School”. The applicant asserts that it does not carry on any activity in Delhi and, therefore, no part of the cause of action has arisen in Delhi. The applicant further claims that the above-captioned suit is for infringement of certain trademarks which are unregistered and, therefore, this Court would have no jurisdiction to entertain the present suit.
3. The applicant further submits that although the plaintiff has registered the trademarks “DIS”and “DISKids”as described in the plaint in respect of the books, publication, magazine, in its favour, no evidence with regard to the use of the said trademarks is placed on record. Further, the applicant is neither using the said trademarks nor intend to do so in connection with its activities and, therefore, there is no cause of action against the applicant for infringement of a trademark under the Trademarks Act, 1999.
4. The applicant also claims to be a prior user of the tradename “Delhi International School, Indore”. Applicant further claims that it had applied for registration of the said tradename/trademarks prior to the applications filed by the plaintiff.
5. During the course of arguments, the applicant had also contended that the suit be dismissed as it is ex facie suffers from mis-joinder of parties and causes of action. It was pointed out that defendant nos. 1, 2 and 3 are independent schools promoted by separate societies/trusts which have no connection with each-other. Each of the said defendants has established a school under the name of Delhi International School and although there is similarity in the name of the school, there is no relation or connection between them.
6. The plaintiff alleges that the defendants are passing off their services and have infringed the plaintiff’s trademark. Although trade names used are similar, it is apparent that causes of action are entirely different and the defence available to each of the defendants are also not necessarily common.
7. It is well settled that the question whether a Court would have the jurisdiction to entertain a suit would have to be on demurrer, that is, solely on the basis of the plaint and the documents filed by the plaintiff and without examining the defence raised by the defendants.
8. It is, thus, necessary to refer to the plaint, to address the question whether the plaint discloses the cause of action, which – either in part or in whole – has arisen within the territorial limits of this court.
9. The plaintiff has filed the above-captioned suit for permanent injunction to restrain the defendants from infringement of its trademarks for passing off and for infringement of copyright.
10. The plaintiff is a society which was formed in the year 1997 with the object to establishing progressive schools and educational institutions in and outside Delhi. The plaintiff avers that in the year 2003, it started using the trademark/trade name, “Delhi International School”as well as “DIS Logo”in relation to the said schools established by the plaintiff and educational goods and services provided by the plaintiff.
11. In paragraph 4 of the plaint, the plaintiff has referred to various trademarks which are either registered in its name and/or are pending registration with the trademark authorities. Three of the four trademarks that are claimed to be registered are word marks, namely (i) “DIS”under registration No. 1208890 in Class-16; (ii) “DIS KIDS”under registration no. 1208889 in Class-16; and (iii) “DIS”under registration no. 1337019 in Class-41. In addition, the trademark “Delhi International Schools (Label)”is also registered under registration No. 1288909 in Class-41.
12. The plaintiff has, interalia, based its case on infringement and passing off three trademarks”: (i) “Delhi International School”which is a word mark and is referred to by the plaintiff as “Delhi International School”; (ii) “DIS Logo”;and (iii) “Delhi International School (Label)”which is registered under registration no. 1288909 and is reproduced above. Although this is also referred to by the plaintiff as “DIS Logo”, to avoid any confusion, this mark is hereafter referred as “Delhi International School (Label)”.
13. The trademark “Delhi International School (Label)”and "DIS logo" are reproduced below:-
14. The plaintiff also averred that it has a copyright in the artistic works relating to DIS Logo and has taken steps for obtaining that copyright registration in relation to the said word mark. The plaintiff has averred that it uses the domain to be www.dis.ac.in. The plaintiff has further averred that it spends large sum of money in advertisement and promoting its school, goods and services under its trademark, “Delhi International School”.
15. Defendantno.1 is described as Delhi International School, P.O. Edayur, Valanchery, District-Malappuram and defendant no.3 is Delhi International School, Chandigarh Road, Near Chabbewal, Hoshiarpur, Punjab. The plaintiff has claimed that defendants have dishonestly adopted the trademark “Delhi International Schools”and “DIS Logo” having artistic features, get up layout, lettering style, in relation to impugned educational goods and educational services. Trademarks used by defendant no.3, defendant no. 1 and defendant no.2 are reproduced in the plaint and are set out below:-
16. The plaintiff has averred that the said trademarks are deceptively similar to the trademarks/labels/trade names “DIS International School”“DIS Logo”and “Delhi International School (Label)”as used by the plaintiff. The plaintiff has further averred that defendants are also using the domain names and email IDs as set out in paragraph 9 of the plaint.
17. The plaintiff has also produced some screen shots of the respective website of the defendant, which use the name “Delhi International School”. The plaintiff claims that the website of defendant no.3and defendant no.2 also indicate the use to the letters “DIS”.
18. The plaintiff has articulated its grievance in paragraph 35 of the plaint, which is reproduced below:-
“35. That by the impugned adoption and user of the impugned trademark/label/domain name/e-mail ids/logo “Delhi International School” & DIS Logo the defendants are:
(a). Infringing the registered trademark of the plaintiff under no.1208890 in class 16, 1208889 in class 16, 1337019 in class 41 and under no. 1288909 in class 41.
(b). Passing off and others to pass off the impugned school,
educational goods and educational services as that of the plaintiff. The defendants are thus thereby violating the plaintiff common law rights in the plaintiff said trademark/label/logo/trade name/domain name.
(c). Infringing the plaintiffs Copyright in the said trademark/label/trade name/logo/domain name by inter alia using, publishing, reproducing the impugned trademark/label and DIS Logo in plaintiffs common law rights therein.
(d). Not only that the defendants are further guilty of falsification and unfair and unethical trade practices.
19. The plaintiff avers that it is aggrieved by the activates of the defendants, which is described by the plaintiff as “impugned activities”.
20. In paragraph 39 of the plaint, the plaintiff has claimed that this Court has the jurisdiction to adjudicate the present suit. The said paragraph reproduced below:-
“39. That the Hon'ble Court has the territorial jurisdiction to try and adjudicate the present suit. The defendants are committing the impugned acts within the jurisdiction of this Hon'ble Court by conducting, soliciting, conducting their impugned activity under the impugned domain name/trademark/trade name/logo in relation to impugned school, educational goods and impugned services in Delhi besides other parts of the country. The impugned domain names of the defendants are interactive in nature and are also accessible in Delhi, through which the defendants are carrying out their afore mentioned impugned activities. The impugned activities of the infringement and passing off are also being committed on the parts of the defendants within the territorial jurisdiction of this Hon'ble Court. The plaintiff has tremendous goodwill and reputation in its said trade mark/label/trade name/logo in Delhi which is being tarnished by defendant impugned activities of the defendants in Delhi. The plaintiffs said proprietary rights are being prejudicially affected in Delhi due to the defendants impugned activities. The cause of action for filing the instant suit, either in whole or in part arose within the territorial jurisdiction of this Hon'ble Court. The plaintiff is based in Delhi and is carrying on its said school, educational goods and services under the said trademark/trade name/label/logo in Delhi. In view of the above it is submitted that this Hon'ble Court, as such, has the territorial jurisdiction to try and adjudicate the present suit by virtue of Section 62 (2) of the Indian Copyright Act 1957 and Section134 (2) of the Trade Marks Act 1999.”
21. It is apparent from the reading of the aforementioned paragraph that the plaintiff claims that this Court has the jurisdiction to try the suit on the basis that (i) defendants are conducting their activities under the domain name in Delhi besides other part of the country; (ii) that domain names of the defendants are interactive and are also accessible in Delhi; (iii) that the plaintiff has tremendous goodwill and reputation related to the trademarks in Delhi which is being adversely affected by the activities of the defendants in Delhi; and (iv) that the plaintiff is based in Delhi and is running an educational institution in Delhi, therefore, this Court would have territorial jurisdiction by virtue of Section 62(2) of the Indian Copyright Act, 1957 and Section 134(2) of the Trademarks Act, 1999.
22. Mr Bansal, learned counsel appearing for the plaintiff submitted that the plaintiff had adopted the trade name “Delhi International School”in 2003 and has also registered the trademark “Delhi International School (Label)”in addition to the word marks DIS and DIS Kids. He submitted that the defendants are not prior user of the said trademarks. He further contended that the plaintiff was entitled to maintain the action of passing off against the defendants.
23. In regard to the contention that three defendants are separate and the suit is ex facie bad for mis-joinder of parties, Mr Bansal sought to contend that the cause of action was regard to its trade mark and was thus the same. He also contended that that would misjoinder of parties would not be a ground for dismissal of the plaint. He referred to an earlier decision of this Court in AruneshPunetha vs. Boston Scientific Corporation: MANU/DE/2980/2005 and on the strength of the said decision, contended that in cases of mis-joinder of causes of action of the parties, the Court could exercise its power under Order II Rule 6 of the CPC and direct that separate trials be conducted in respect of each causes of action. Mr Bansal was also pointedly asked to refer to the plaint to point out any of the activities which the plaintiff claims that the defendants have conducted in Delhi, and he fairly conceded that the plaint did not specifically disclose any such activity except that the domain names of the defendants were claimed to be interactive, and thus, it is claimed that the defendants were also conducting their activities in Delhi.
24. Mr Bansal also further stated that the plaintiff was entitled to maintain the infringement suit on the basis of the “Delhi International School (Label)”which was a registered trademark. He submitted that the words “Delhi International School”were a prominent part of the said label and the use of the trademark/trade name “Delhi International School”by the other defendants would also amount to infringement of the said trademark.
25. Mr Sinha, learned senior counsel appearing for defendant no. 2 contended that the suit was essentially for infringement of trademarks, however, the plaint did not disclose that any other registered trademark of the plaintiff was infringed in any manner. He further stated that the said suit was ex facie bad on account of mis-joinder of parties and, thus, was liable to be dismissed.
Reasoning and Conclusion
26. Before proceeding further, it would be relevant to refer to Order I Rule 3 and Order II Rule 3 of the CPC. The same are set out below:-
“3. Who may be joined as defendants
All persons may be joined in one suit as defendants where—
(a) any right to relief in respect of, or arising out of, the same act or transaction or series of acts or transactions is alleged to exist against such persons, whether jointly, severally or in the alternative; and
(b) if separate suits were brought against such persons, any common question of law or fact would arise.
3. Joinder of causes of action
(1) Save as otherwise provided, a plaintiff may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.
(2) Where causes of action are united, the jurisdiction of the Court as regards the suit shall depend on the amount or value of the aggregate subject-matters at the date of instituting the suit.”
27. It is apparent from the plain reading of Order I Rule 3 of the CPC that all persons may be joined in one suit as defendants where the right to relief arises out of the same acts or transactions which are alleged to exist against such persons and where if separate suits were brought, common question of fact or law would arise. Plainly, in the present case, the petitioner has separate causes of action against each of the defendants and the plaintiff’s relief does not arise from the same set of transactions or series of transactions. Further, common question of fact and law do not arise as the claims made by the plaintiff rest on each of the defendants using names or trademarks, which are alleged to be infringing the petitioner’s trademark. Further, the allegation of passing off would also have to be considered in the context of facts relating to the defendants separately.
28. In Iswar Bhai C. Patel & Bachu Bhai Patel v. Harihar Behera and Anr.: AIR 1999 SC 1341, the Court had noted that misjoinder can be of three types and a suit would be bad in misjoinder “if different causes of action are joined separately against different defendants”. In the present case, there can be little doubt that the suit filed by the plaintiff is bad for misjoinder.
29. In PremLalaNahata&Anr. v. Chandi Prasad Sikaria: (2007) 2 SCC 551, the Supreme Court had considered the issue regarding misjoinder. The relevant extract of the said decision are set out below:-
“11. Order 2 deals with frame of suits. It provides that every suit shall be framed as far as practicable so as to afford grounds for final decision upon the subjects in dispute and to prevent further litigation concerning them. It is also insisted that every suit shall include the whole of the claim that a plaintiff is entitled to make in respect of its subject-matter. There is a further provision that the plaintiff may unite in the same suit several causes of action against the same defendant and the plaintiffs having causes of action in which they are jointly interested against the same defendant, may unite such causes of action in the same suit. It provides that objection on the ground of misjoinder of causes of action should be taken at the earliest opportunity. It also enables the court, where it appears to the court that the joinder of causes of action may embarrass or delay the trial or otherwise cause inconvenience, to order separate trials or to make such other order as may be expedient in the interests of justice.
12. Thus, in a case where a plaint suffers from the defect of misjoinder of parties or misjoinder of causes of action either in terms of Order I Rule 1 and Order I Rule 3 on the one hand, or Order II Rule 3 on the other, the Code itself indicates that the perceived defect does not make the suit one barred by law or liable to rejection. This is clear from Rules 3A, 4 and 5 of Order I of the Code; and this is emphasised by Rule 9 of Order I of the Code which provides that no suit shall be defeated by reason of non-joinder or misjoinder of parties and the court may in either case deal with the matter in controversy so far as it regards the rights and interests of the parties actually before it. This is further emphasised by Rule 10 of Order I which enables the court in appropriate circumstances to substitute or add any person as a plaintiff in a suit....
15. It is well understood that procedure is the handmaid of justice and not its mistress. The Scheme of Order I and Order II clearly shows that the prescriptions therein are in the realm of procedure and not in the realm of substantive law or rights.That the Code considers objections regarding the frame of suit or joinder of parties only as procedural, is further clear from Section 99 of the Code which specifically provides that no decree shall be reversed in appeal on account of any misjoinder of parties or causes of action or non-joinder of parties unless a Court finds that the non-joinder is of a necessary party. This is on the same principle as of Section 21 of the Code which shows that even an objection to territorial jurisdiction of the Court in which the suit is instituted, could not be raised successfully for the first time in an appeal against the decree unless the appellant is also able to show consequent failure of justice. The Suits Valuation Act similarly indicates that absence of pecuniary jurisdiction in the Court that tried the cause without objection also stands on the same footing. The amendment to Section 24 of the Code in the year 1976 confers power on the Court even to transfer a suit filed in a Court having no jurisdiction, to a Court having jurisdiction to try it. In the context of these provisions with particular reference to the Rules in Order I and Order II of the Code, it is clear that an objection of misjoinder of plaintiffs or misjoinder of causes of action, is a procedural objection and it is not a bar to the entertaining of the suit or the trial and final disposal of the suit. The Court has the liberty even to treat the plaint in such a case as relating to two suits and try and dispose them off on that basis.
16. Order VII Rule 11(d) speaks of the suit being "barred by any law". According to the Black's Law Dictionary, bar means, a plea arresting a law suit or legal claim. It means as a verb, to prevent by legal objection. According to Ramanatha Aiyar's Law Lexicon, 'bar' is that which obstructs entry or egress; to exclude from consideration. It is therefore necessary to see whether a suit bad for misjoinder of parties or of causes of action is excluded from consideration or is barred entry for adjudication. As pointed out already, on the scheme of the Code, there is no such prohibition or a prevention at the entry of a suit defective for misjoinder of parties or of causes of action. The court is still competent to try and decide the suit, though the court may also be competent to tell the plaintiffs either to elect to proceed at the instance of one of the plaintiffs or to proceed with one of the causes of action. On the scheme of the Code of Civil Procedure, it cannot therefore be held that a suit barred for misjoinder of parties or of causes of action is barred by a law, here the Code. This may be contrasted with the failure to comply with Section 80 of the Code. In a case not covered by Sub-section (2) of Section 80, it is provided in Sub-section (1) of Section 80 that "no suit shall be instituted". This is therefore a bar to the institution of the suit and that is why courts have taken the view that in a case where notice under Section 80 of the Code is mandatory, if the averments in the plaint indicate the absence of a notice, the plaint is liable to be rejected. For, in that case, the entertaining of the suit would be barred by Section 80 of the Code. The same would be the position when a suit hit by Section 86 of the Code is filed without pleading the obtaining of consent of the Central Government if the suit is not for rent from a tenant. Not only are there no words of such import in Order I or Order II but on the other hand, Rule 9 of Order I, Rules 1 and 3 of Order I, and Rules 3 and 6 of Order II clearly suggest that it is open to the court to proceed with the suit notwithstanding the defect of misjoinder of parties or misjoinder of causes of action and if the suit results in a decision, the same could not be set aside in appeal, merely on that ground, in view of Section 99 of the Code, unless the conditions of Section 99 are satisfied. Therefore, by no stretch of imagination, can a suit bad for misjoinder of parties or misjoinder of causes of action be held to be barred by any law within the meaning of Order VII Rule 11(d) of the Code.
17. Thus, when one considers Order VII Rule 11 of the Code with particular reference to Clause (d), it is difficult to say that a suit which is bad for misjoinder of parties or misjoinder of causes of action, is a suit barred by any law. A procedural objection to the impleading of parties or to the joinder of causes of action or the frame of the suit, could be successfully urged only as a procedural objection which may enable the Court either to permit the continuance of the suit as it is or to direct the plaintiff or plaintiffs to elect to proceed with a part of the suit or even to try the causes of action joined in the suit as separate suits.”
30. It is apparent from the above that the Supreme Court did not accept the contention that a suit which is bad for misjoinder of parties or misjoinder of causes of action would be barred by any law for the purposes of Order VII Rule 11 of the Code of Civil Procedure, 1908. It was clarified that in such a situation, the Court has a discretionary power to order separate trials of the claims in respect of two or more causes of action or for confining the suit to only some of the causes of action and excluding others or by ordering the plaintiff or the plaintiffs to elect which cause of action is to be proceeded with.
31. It was contended on behalf of the defendants that this Court would have no jurisdiction to try the cause of action in relation to passing off, as no part of that cause of action has arisen in the territorial jurisdiction of this Court. The defendants run their respective schools in different parts of the country and none of them have any persons in National Capital Territory of Delhi. The plaintiff has, essentially, claimed that the causes of action in regard to passing off is arise in Delhi on account of the allegation that the defendants have an interactive domain names through which the defendants are passing off within the territorial jurisdiction of this Court. The claim may be without merit. However, it is settled law that the question of jurisdiction must be decided on a demurer. In Exphar SA and Another v. Eupharma Laboratories Ltd. and Another: (2004) 3 SCC 688, the Supreme Court had observed as under had observed as under:-
“when an objection to jurisdiction is raised by way of demurrer and not at the trial, the objection must proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are true. The submission in order to succeed must show that granted those facts the court does not have jurisdiction as a matter of law. In rejecting a plaint on the ground of jurisdiction, the Division Bench should have taken the allegations contained in the plaint to be correct.”
32. In view of the above, although this Court can appreciate the averments made in the plaint as well as the defence raised by the defendants for forming the prima facie view, it would not be apposite to dismiss the plaint under Order VII Rule 11 of the CPC as being barred by law.
33. The question whether in the present case, separate trials are required to be conducted under Order III Rule 6 of the CPC or whether the plaintiff ought to be called upon to restrict the plaint to a single cause of action or to pass any other orders on account of misjoinder, is left open.
34. In view of the above, the present application is dismissed.
I.A. No. 8137/2014
35. This is an application filed by defendant no.2, inter alia, praying that the ex parte order dated 17.12.2013 passed in I.A. 20471/2013 be set aside.
36. By the order dated 17.12.2013, this Court had passed an ad interim order restraining the defendants from using the name “Delhi International School”and “DIS”logo and the domain name which is deceptively similar to the plaintiff’s domain name.
37. As noticed above, the applicant (defendant no.2) had established a school in Indore under the name of “Delhi International School”. It is stated that the applicant had applied for conversion of agricultural land for being used for educational purposes under the MP Land Revenue Act, 1959 and the same was allowed by the order dated 19.12.2003. It is stated that thereafter, the construction work was carried out and the applicant commenced running the school under the name of “Delhi International School”, Indore in the year 2004.It is stated that provisional affiliation was granted to the applicant on 02.02.2005 and there are 2,178 students studying from nursery to Class twelve in the school run by the applicant. The said school is also affiliated with the Central Board of Secondary Education. The applicant had also applied for registration of its Trade mark “Delhi International School”and the label with the name “Delhi International School”as its Tradename on 24.05.2004.
38. It is apparent from the averments that defendant no.1 has been running its school since several years prior to the plaintiff instituting the present plaint. The plaintiff is the registered proprietor of the trademark “Delhi International School”Label and “DIS”Logo; however, as noticed above, it does not have any registration with regard to the name “Delhi International School”as a word mark.
39. A plain reading of the order dated 17.12.2013 indicates that the said order was passed on an assumption that the petitioner was a registered proprietor of the name “Delhi International School”. It is pointed out by the defendants that the said assumption is incorrect as the plaintiff is not the registered proprietor of the said name.
40. It is also relevant to note that the plaintiff has filed a consolidated suit by joining several causes of action. The plaintiff alleges that infringement of its trademark by the three defendants and had also alleged that the defendants are passing off. Insofar as the plaintiff’s claim regarding infringement of trademark is concerned, it is seen that the plaintiff is not the registered proprietor of the name “Delhi International School”.
41. It is difficult to accept that any of its registered trademarks have been infringed by the use of the name “Delhi International School”.
42. Mr Bansal, learned counsel for the plaintiff had contended that the words “Delhi International School”are a prominent part of its label and, therefore, use of the said name would also amount to infringement of its trademark. Prima facie, this Court is not inclined to accept the aforesaid contention. The plain visual of the logo indicates that the words “Delhi International School”is not the prominent part of the said logo. The logo is a complex one with several features such as an open book, olive leaves, crown and a sash bearing the name “Delhi International School”.
43. It would be relevant to refer to Section 17 of the Trade Marks Act, 1999, which is set out below:-
“17. Effect of registration of parts of a mark.—
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark—
(a) contains any part—
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.”
44. It is apparent from the plain reading of Section 17(1) of the Trade Marks Act, 1999 that a registration of a trademark would confer on the proprietor exclusive right to use the trademark as a whole. Thus, the plaintiff can claim rights to use the Delhi International School label as well as the DIS logo but cannot claim the rights to use the words “Delhi International School”as its registered mark.
45. In addition to the above, the present suit is bad for misjoinder of defendants as well as the causes of action. The plaintiff has also premised the present suit on an allegation of passing off, however, there is no material placed on record, which would indicate that any of the defendants have succeeded in deceiving any person to believing that they are connected with the plaintiff or the schools run by them are affiliated with the plaintiff. The plaintiff has merely made a bald statement that the defendants are soliciting and conducting their activities in Delhi. This claim is also prima facie unsustainable. It is also relevant to note that a plain reading of the plaint indicates that the plaintiff has rested its case of passing off only on the basis that the domain names/website of defendants are interactive.
46. The nature of interaction, if any, that the websites offer would be material to determine the question of passing off within the territorial jurisdiction of this court. In Banyan Tree Holding (P) Limited v A Murali Krishna Reddy and Anr: 2010(42) PTC 361 (Del),the Division Bench of this Court has highlighted that extent of interactive site was also important and had observed as under:
“it is not enough merely to show that the website hosted by the Defendant is an interactive one. It would have to be shown that the nature of the activity indulged in by the defendant by the use of the website was with an intention to conclude a commercial transaction with the website user.”
47. In Cyber Sell Inc, an Arizona Corporation v Cyber sell Inc. a Florida Corporation: 130 F3d 414(1997),a case had arisen where the Arizona Corporation had put its commercial services on advertisement over the internet under the service mark “Cybercell”. Consequently, a Florida Corporation having the same name as above brought an infringement action against Arizona Corporation. The United States Court of appeals considered the aforesaid issue and observed as under:
Here, Cybersell FL has conducted no commercial activity over the Internet in Arizona. All that it did was post an essentially passive home page on the web, using the name "CyberSell," which Cybersell AZ was in the process of registering as a federal service mark. While there is no question that anyone, anywhere could access that home page and thereby learn about the services offered, we cannot see how from that fact alone it can be inferred that Cybersell FL deliberately directed its merchandising efforts towards Arizona residents.
Cybersell FL did nothing to encourage people in Arizona to access its site, and there is no evidence that any part of its business (let alone a continuous part of its business) was sought or achieved in Arizona. To the contrary, it appears to be an operation where business was primarily generated by the personal contacts of one of its founders. While those contacts are not entirely local, they aren’t in Arizona either. No Arizonan except for Cybersell AZ "hit" Cybersell FL’s web site. There is no evidence that any Arizona resident signed up for Cybersell FL’s web construction services. It entered into no contracts in Arizona, made no sales in Arizona, received no telephone calls from Arizona, earned no income from Arizona, and sent no messages over the Internet to Arizona.The only message it received over the Internet from Arizona was from Cybersell AZ. Cybersell FL did not have an "800" number, let alone a toll-free number that also used the "Cybersell" name. The interactivity of its web page is limited to receiving the browser's name and address and an indication of interest - signing up for the service is not an option, nor did anyone from Arizona do so. No money changed hands on the Internet from (or through) Arizona. In short, Cybersell FL has done no act and has consummated no transaction, nor has it performed any act by which it purposefully availed itself of the privilege of conducting activities, in Arizona, thereby invoking the benefits and protections of Arizona law.
We therefore hold that Cybersell FL’s contacts are insufficient to establish "purposeful availment" CybersellAZ has thus failed to satisfy the first prong of our three-part test for specific jurisdiction. We decline to go further solely on the footing that Cybersell AZ has alleged trademark infringement over the Internet by Cybersell FL’s use of the registered name "Cybersell" on an essentially passive web page advertisement. Otherwise, every complaint arising out of alleged trademark infringement on the Internet would automatically result in personal jurisdiction wherever the plaintiff's principal place of business is located. That would n
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ot comport with traditional notions of what qualifies as purposeful activity invoking the benefits and protections of the forum state. See Peterson v. Kennedy, 771 F.2d 1244, 1262 (9th Cir.1985 (series of phone calls and letters to California physician regarding plaintiff's injuries insufficient to satisfy first prong of test).” 48. In the aforesaid case, a three pronged test was adopted by the Court to decide whether a district court may exercise specific jurisdiction over a non-resident defendant: “(i) The non-resident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections; (ii) The claim must be one which arises out of the results from the defendants forum-related activities; and (iii) exercise of jurisdiction must be reasonable.” 49. In view of the above, this Court is, prima facie, of the view that the defendants’ domain name/website, even if it is found to be interactive in some aspects, would not give rise to an action of passing off within the territorial limits of this Court as it is difficult to accept that the students living in Delhi would want to seek admissions in schools runs by the defendants in other parts of the country. This Court is prima facie of the view that the averments have been affirmed in the plaint only with the purpose of asserting that this Court has territorial jurisdiction to entertain the suit. 50. In M/s Allied Blenders and Distilleries Pvt. Ltd v. Prag Distilleries Pvt. Ltd. & Anr.:FAO (OS) No.49/2017,decided on 01.03.2017, the Division Bench of this Court had reiterated the principle that the question of jurisdiction must be considered on a demurer and accepting all averments made in the plaint be correct. However, the Division Bench had also observed that the Court could appreciate the averments for the purposes of forming a prima facie view. The relevant extract of the judgment is set out as under: “12. It must be clarified that the considerations with regard to territorial jurisdiction in the context of Order VII Rule 10 of the Code are entirely different from those in an application under Order XXXIX Rules 1 & 2 of the Code or when a finding is to be returned on the issue of territorial jurisdiction. Under Order VII Rule 10 of the Code, only the averments in the plaint are to be seen and that, too, on the assumption that they are correct. While considering an application under Order XXXIX Rules 1 & 2 of the Code, not only the averments in the plaint but also other material including the defendant’s reply and written statement are to be seen. For establishing the existence of a prime facie case (a condition precedent for an ad interim injunction order), the plaintiff would obviously have to demonstrate, albeit at a prima facie level, that the apprehension was reasonable and credible. Here, a mere averment in the plaint would not do. And, the assumption that the averments in the plaint are correct would also not be available. Where the issue of jurisdiction is to be decided at the trial, the standard of proof would be even higher.” 51. In view of the above, the application is allowed and the ad interim order dated 17.12.2013 is vacated. 52. Accordingly, I.A. 1495/2014 filed by defendant no.3 under Order XXXIX Rule 4 of the CPC seeking vacation of the interim stay granted by the order dated 17.12.2013 does not survive; and the plaintiff’s application (I.A. 20471/2014), filed under Order XXXIX Rule 1 and 2 read with Section 151 of the CPC seeking interim injunction against the defendants, also stands disposed of in view of the above. CS (COMM) 698/2018 53. List on 04.04.2019.