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BANYAN TREE HOLDINGS (P) LTD V. A MURALI KRISHNA REDDY,CS (OS) NO. 894/2008, DEL(DB)

BANYAN TREE HOLDINGS (P) LTD V. A MURALI KRISHNA REDDY,

CS (OS) NO. 894/2008, DEL(DB)

FACTS

  • The plaintiff adopted and used the word mark "Banyan Tree" in 1994, which had acquired secondary meaning through extensive use.
  • The plaintiff's website has been accessible in India since 1991 and has advertised products and services in the country.
  • In collaboration with The Oberoi Group, the plaintiff operates five spas across India. The plaintiff is a registered proprietor of the mark in different countries but does not hold any registration in India and has applied for it.
  • In October 2006, the defendants, who reside in Andhra Pradesh, initiated a project named Banyan Tree Retreat.
  • The defendants' use of the name "Banyan Tree Retreat" is argued to be deceptive and similar to the plaintiff's mark within the same trade/industry. The plaintiff sought an ex-parte interim injunction to restrain the defendants from using the mark.

 

ISSUES

  1. Does the court have territorial jurisdiction over the case based on Section 20 of the Code of Civil Procedure, 1908?
  2. Can the court exercise jurisdiction over the defendant based on the interactive nature of their website?
  3. Is the plaintiff entitled to an ex-parte interim injunction against the defendants for passing off?

 

CONTENTIONS

  • The plaintiff's counsel argued that the court has territorial jurisdiction under Section 20 of the Code of Civil Procedure, 1908, as the defendant's brochure shows business operations in Delhi and their website is interactive.
  • The plaintiff also relied on Section 62(2) of the Copyright Act, 1957, which allows the plaintiff to sue in a court within the jurisdiction where they reside or work for gain.
  • The plaintiff emphasized the doctrine of passing off to support their claim.

 

COURT REASONINGS

  • The court acknowledged that the mere accessibility of a website in a specific place does not automatically confer jurisdiction. It emphasized the necessity of examining the level of interactivity and the commercial activity conducted through the website.
  • The court referred to the US case of Zippo Manufacturing Co. v. Zippo Dot Com, Inc., which introduced the "sliding scale" test to determine the level of interactivity of a website. This test categorizes websites as interactive (where the user can exchange information with the host computer), passive (where information is merely posted), and those that fall somewhere in between.
  • Additionally, the court took guidance from the UK case of 1-800 Flowers Inc v. Phonenames, which addressed similar issues of jurisdiction in the context of internet-based businesses.
  • The court reasoned that an assessment of whether the website is interactive or passive and whether the defendants conducted business in the forum state is essential to determine jurisdiction. Since the defendants' website was argued to be interactive and they were purportedly conducting business in Delhi, these factors supported the plaintiff's claim for jurisdiction.

 

JUDGEMENT

  • The court determined that the issues of jurisdiction and the interactivity of the defendant's website warranted a more thorough examination. It concluded that a division bench should decide the case to provide an authoritative resolution.
  • Consequently, the bench ordered the transfer of the case to a division bench for a detailed and definitive judgment. The court did not grant the ex-parte interim injunction at this stage, emphasizing the need for a more comprehensive analysis by a higher bench.