Internet Listings Don’t Create Jurisdiction; Co‑Registration Bars Infringement: The Delhi High Court’s Roadmap for Online IP Suits and Composite Marks

Introduction

In Vikrant Chemico Industries Pvt Ltd v. Shri Gopal Engineering and Chemical Works Pvt Ltd & Ors (2025 DHC 7057), the Delhi High Court (Amit Bansal, J.) delivered a detailed decision at the intersection of territorial jurisdiction in the digital age and substantive trademark and copyright law in the disinfectants market. The dispute, rooted in a family-business history, centered on the plaintiff’s “DOCTOR BRAND PHENYLE” and “DOCTOR BRAND GERM TROLL” vis‑à‑vis the defendants’ “DOCTOR HAZEL’S BRAND PHENYL” and “CHEMIST BRAND GERM TROLL.” The plaintiff sought injunctions for infringement of trademark and copyright, passing off, rendition of accounts, damages, and delivery-up.

Key issues were (i) whether Delhi courts had territorial jurisdiction based on alleged sales and online presence (including an IndiaMART listing and a passive website); (ii) whether the defendants infringed the plaintiff’s marks and labels; (iii) whether passing off was made out; and (iv) associated remedies. Notably, both sides held registrations: the plaintiff for a composite device “DOCTOR BRAND PHENYLE,” and the defendants for the word mark “DOCTOR HAZEL’S,” with a disclaimer on “DOCTOR.”

Summary of the Judgment

• Territorial Jurisdiction: The Court held that Delhi lacked territorial jurisdiction. Mere accessibility of a passive website and a third-party aggregator (IndiaMART) listing—without evidence of a Delhi-targeted transaction—does not constitute part of the cause of action under Section 20(c) CPC. Statements given to a Local Commissioner outside his mandate could not establish jurisdiction; nor could a Delhi-executed assignment or filing of a trademark application (per Dhodha House).
• Trademark Infringement: Barred by Section 28(3) of the Trade Marks Act, 1999 because both parties were registered proprietors of their respective marks. The plaintiff’s device registration could not be dissected to claim exclusivity over the word “DOCTOR,” which the Court found to be common and laudatory for disinfectants; the defendants had also disclaimed “DOCTOR” in their registration.
• Passing Off and Copyright: The Court found the parties’ trade dress/packaging sufficiently distinct. The plaintiff’s own historical registrations and present use (admitted in cross-examination) reflected a blue‑white scheme, whereas defendants’ use was yellow/red/blue/green (for phenyle) and red‑white (for germ troll) since 2000. No misrepresentation or copying was proved. The term “GERM TROLL” was treated as descriptive and originally associated with a partnership later taken over by the defendants; plaintiff showed no title to it.
• Relief: The suit was returned for want of territorial jurisdiction. Nevertheless, following Order XIV Rule 2 CPC and citing Sathyanath v. Sarojamani (2022) 7 SCC 644, the Court also adjudicated all substantive issues, finding against the plaintiff on infringement, passing off, and copyright.

Analysis

Precedents Cited and Their Influence

• Banyan Tree Holding v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780:
  The Division Bench’s “targeting” test was central. A passive website, without specific targeting and without demonstrated commercial transactions with forum-state customers, does not give rise to jurisdiction under Section 20(c) CPC. The Court applied this to hold that the defendants’ passive website—merely stating national availability for “Chemist” products—did not target Delhi or enable transactions.
• Indovax v. Merck Animal Health, 2017 SCC OnLine Del 9393:
  Reiterated that bald assertions that goods are “available in Delhi” are insufficient without documentary proof such as invoices. The Court leaned on this to fault the plaintiff’s absence of transaction-level evidence for Delhi.
• Kohinoor Seed Fields India Pvt Ltd v. Veda Seed Sciences Pvt Ltd, 2025 SCC OnLine Del 2404:
  A recent coordinate bench decision was relied on to clarify that third-party aggregator listings (like IndiaMART) do not, without more (including proof of interaction/order placed in Delhi and responsibility of the defendant for the listing), confer jurisdiction. This is the key e-commerce refinement in this case.
• Dhodha House v. S.K. Maingi, (2006) 9 SCC 41:
  Filing of a trademark application in Delhi, or execution of an assignment in Delhi, does not by itself constitute cause of action. The Court used this to negate the plaintiff’s jurisdictional reliance on the defendants’ TM application and assignment executed in Delhi.
• Sathyanath v. Sarojamani, (2022) 7 SCC 644:
  Cited to proceed with adjudicating all issues even though the plaint was ultimately returned for lack of territorial jurisdiction, invoking Order XIV Rule 2 CPC. This is a noteworthy procedural step—the findings are reasoned and intended to settle issues between the parties notwithstanding the jurisdictional outcome.
• VIP Industries v. Carlton Shoes, 2025 SCC OnLine Del 4620:
  Referenced for the principle that, where both parties hold registrations, Section 28(3) bars an infringement claim. The plaintiff should pursue rectification if it seeks to attack the defendant’s registration.
• Vardhman Buildtech Pvt Ltd v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738, and Vasundhra Jewellers Pvt Ltd v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 3370:
  These decisions underscore Section 17’s anti‑dissection principle: a composite (label/device) mark must be compared as a whole; a proprietor cannot claim exclusivity over unregistered or non‑distinctive parts of a composite label. The Court applied this to reject the plaintiff’s attempt to ring‑fence “DOCTOR” as the dominant element of its device.

Legal Reasoning

A. Territorial Jurisdiction in the Internet Era

• Passive Website: The defendants’ site referenced availability of “Chemist” products and provided contact details but did not enable online sales. Applying Banyan Tree, the Court held that mere accessibility in Delhi is insufficient without proof of specific targeting or transactions with Delhi customers.
• Aggregator Listings (IndiaMART): In line with Kohinoor Seed Fields (2025), the Court treated IndiaMART as a third‑party listing platform; absent proof that the defendant itself used it to transact with Delhi customers or that an actual Delhi order occurred, no jurisdiction could be founded. The plaintiff showed neither defendant‑initiated listing nor transaction-level evidence.
• Local Commissioner’s Statements: Responses given to a Local Commissioner beyond his seizure/inventory mandate and without supporting documents (like invoices) cannot establish jurisdiction. The Court rejected hearsay statements (“sold 2–3 bottles”) as insufficient; the shopkeeper was not examined and had no stock.
• Cause of Action at Filing: Jurisdiction must exist as on the date of the suit (25 August 2015). The plaintiff’s own initial focus on Kanpur (for commission) underscored the lack of Delhi evidence at that time.
• IP Office Linkages: Filing a TM application or executing an assignment in Delhi does not, by itself, create jurisdiction (Dhodha House). These formal acts are not “use” of a mark and do not generate a cause of action in passing off/infringement.

B. Infringement Bar Under Section 28(3): Co‑registered Marks

• The plaintiff owned a device registration for “DOCTOR BRAND PHENYLE”; the defendant owned a word registration for “DOCTOR HAZEL’S,” with a disclaimer over “DOCTOR.” Under Section 28(3), where both parties are registered proprietors, one cannot sue the other for infringement based on the registered mark—at least until the rival registration is removed via rectification. The plaintiff’s pending rectification against “DOCTOR HAZEL’S” did not change this bar.

C. Anti‑Dissection and Generic/Laudatory Elements

• Section 17 and Anti‑Dissection: The plaintiff’s registration was for a composite label. The Court refused to “carve out” “DOCTOR” as the dominant element. Comparison must be of the marks as a whole (Vardhman; Vasundhra Jewellers).
• “DOCTOR” as Generic/Laudatory in Class 5: Relying on evidence of multiple third‑party registrations and the Registrar’s disclaimer imposed on the defendant’s registration, the Court found “DOCTOR” to be common to the disinfectants/phenylic goods trade and laudatory (evoking health/safety). The plaintiff could not monopolize it, particularly when “BRAND” and “PHENYLE” are also generic.
• Distinguishing “DOCTOR HAZEL’S”: The addition of “HAZEL’S” rendered a clear difference in the word mark compared with the plaintiff’s device label “DOCTOR BRAND PHENYLE.” Viewed as a whole, there was no deceptive similarity.

D. Passing Off and Trade Dress

• Plaintiff’s Own Packaging History: The plaintiff’s prior registration and copyright materials—and an admission in cross‑examination—showed use of a blue‑white label for “DOCTOR BRAND PHENYLE.” The defendants’ phenyle packaging (since 2000) predominantly used yellow/red/blue/green; their “GERM TROLL” packaging was red‑white. The visual layouts, color schemes, fonts, and overall get‑up differed materially.
• Market Commonalities: The Court noted “BRAND PHENYLE” language and certain color/imagery trends are common in the segment (e.g., ant/insect motifs), reducing the scope for one trader to claim exclusivity over such common trade dress features absent secondary meaning proof—which the plaintiff did not establish.
• Misrepresentation and Damage: The plaintiff’s evidence did not show the defendants’ presentation would lead to misrepresentation as to trade origin or cause confusion among the relevant public; nor did it show that the defendants sought to pass their goods off as those of the plaintiff.

E. Copyright in Labels

• Original Artistic Work: While the plaintiff held copyright registration for a label, infringement requires substantial similarity/copying of protectable expression. The Court found the defendants’ labels/bottles visually and compositionally different and in long prior use. The plaintiff’s current label did not match what it alleged the defendants copied.
• Functional/Generic Elements: Common industry elements (colors, insects, product depictions, descriptive terms) are weak protectable elements; overlap in such elements does not, without more, prove copying of a copyright‑protected label.

F. Ownership and Character of “GERM TROLL”

• Chain of Title: The term “GERM TROLL” was adopted by the partnership firm (Shri Gopal Engineering and Chemical Works). The firm was later taken over by the defendant company. The plaintiff produced no document transferring “GERM TROLL” to it. On this footing alone, proprietary assertion faltered.
• Descriptive Character: The Court treated “GERM TROLL” as descriptive (“trolling”/“searching” for germs), a laudatory suggestion of efficacy. That made exclusivity harder to claim, absent clear proof of acquired distinctiveness, which was not provided.

Impact

• Internet‑Age Jurisdictional Proof Standard:
  • Plaintiffs must plead and prove forum‑specific online transactions or clear “targeting” to the forum (e.g., Delhi) to invoke Section 20(c) CPC. Mere web accessibility, generic national statements, or aggregator listings are insufficient.
  • Aggregator/Marketplace Listings: Unless the defendant is shown to have placed the listing, engaged with Delhi customers, or completed Delhi sales through the platform, jurisdiction will fail. Evidence such as order records, shipping invoices, payment confirmations, and communications is key.
  • Local Commissioners’ Reports: These are not a substitute for jurisdictional proof. Hearsay statements to a commissioner beyond his mandate are unsafe to rely on; contemporaneous invoices and examination of shopkeepers are critical.
  • IP Office Formalities: TM filings or assignments in Delhi do not confer jurisdiction for infringement/passing off claims without proof of “use” leading to a cause of action in Delhi.
• Substantive Trade Mark Law:
  • Co‑registered Marks: Section 28(3) will increasingly be a litigation filter—IP owners must consider rectification along with or before infringement claims.
  • Anti‑Dissection Discipline: Plaintiffs relying on composite labels cannot selectively monopolize a non‑distinctive element (“DOCTOR”) without a separate word mark registration and proof of distinctive character. Courts will insist on a whole‑mark comparison.
  • Generic/Laudatory Marks: Disclaimers and third‑party registry data are influential in showing that a term (like “DOCTOR” for disinfectants) is common to trade. Brand strategy must factor the limited enforceability of such terms.
• Passing Off and Trade Dress:
  • Plaintiffs must align their pleaded trade dress with their actual historic and current use; sudden shifts to mirror a rival’s get‑up can undermine credibility and relief.
  • In categories with strong industry conventions (colors, icons), courts will demand clear evidence of secondary meaning to claim exclusivity over those elements.
• Procedural Nuance:
  • The Court proceeded to decide all issues while returning the plaint for lack of territorial jurisdiction, referencing Order XIV Rule 2 and Sathyanath. Practically, these findings are likely to be persuasive, guiding the parties in any re‑filed proceedings before a competent court.

Complex Concepts Simplified

• Section 20(c) CPC (Cause of Action): A court can hear a case if any part of the cause of action happened within its territorial reach. In online disputes, you must show defendant targeted customers in the forum and transacted there—not just that a website is visible.
• Passive vs. Interactive Websites:
  • Passive: Displays information, no e‑commerce functionality. Generally insufficient to found jurisdiction.
  • Interactive/Transactional: Enables ordering, payment, shipping. Can create jurisdiction if specifically targeted to the forum and used to transact there.
• Aggregator Platforms (e.g., IndiaMART): Listings by third parties, without evidence that the defendant used the platform to transact with forum customers, won’t confer jurisdiction.
• Section 28(3) Trade Marks Act: If both parties are registered proprietors of their respective marks, one cannot sue the other for infringement. The remedy is to file rectification to remove the rival’s registration.
• Device/Label vs. Word Mark:
  A device/label registration protects the mark as a whole (logo, layout, colors, words together). A word mark protects the word itself, across stylizations. The plaintiff had a device mark; the defendant had a word mark (with disclaimer on “DOCTOR”).
• Anti‑Dissection (Section 17):
  Courts compare composite marks as a whole. A plaintiff cannot isolate a non‑distinctive component (like a generic word) and claim exclusivity unless separately registered and distinctive.
• Disclaimers:
  TM registrations can include disclaimers that the proprietor does not claim exclusive rights over certain words. This signals generic/common usage and reduces the scope of exclusivity.
• Passing Off:
  A common law action requiring (1) goodwill, (2) misrepresentation likely to confuse customers, and (3) damage. Visual and conceptual similarity of trade dress and overall get‑up are assessed; generic features weaken the claim.
• Return of Plaint vs. Dismissal:
  If a court lacks territorial jurisdiction, it should return the plaint (Order VII Rule 10 CPC) for presentation to the proper court, rather than dismissing it on merits. Here, the Court returned the plaint but, invoking Order XIV Rule 2, also addressed all issues with detailed reasoning.

Conclusion

This judgment consolidates and advances two important strands of Indian IP and procedural law. First, on territorial jurisdiction in internet‑era disputes, it reiterates and sharpens the “targeting plus transaction” threshold: passive websites and aggregator listings, without proof of defendant‑driven Delhi transactions, do not create a cause of action in Delhi. Jurisdiction must be grounded in concrete, forum‑specific commerce. Hearsay from Local Commission proceedings, or mere IP formalities in Delhi, will not suffice.

Second, on substantive trademark and copyright law, the Court underscores the statutory bar to infringement suits where both parties hold registrations (Section 28(3)), the imperative to compare composite marks as a whole (Section 17), and the limited protectability of generic or laudatory terms like “DOCTOR” for disinfectants. The Court’s careful trade dress comparison—against the plaintiff’s own historical and current use—also exemplifies the evidentiary rigor expected in passing off and copyright claims.

Practically, the decision will deter forum shopping based on online visibility alone and push plaintiffs to build robust transaction‑level records and clear chains of title. Strategically, brand owners using industry‑common terms should pursue distinct, protectable elements (or separate word mark registrations where defensible) and be prepared to prove acquired distinctiveness. On both jurisdiction and substance, the judgment supplies a clear, structured roadmap likely to influence IP litigation and e‑commerce suits across Indian courts.

Key Takeaways

• Mere aggregator listings (IndiaMART) and passive websites do not confer territorial jurisdiction; show actual forum‑specific transactions and targeting.
• Filing/assignment of a trademark in Delhi is not a substitute for “use” generating cause of action in Delhi.
• Co‑registered marks: Infringement is barred under Section 28(3); consider rectification first.
• Composite mark owners cannot monopolize non‑distinctive parts; whole‑mark comparison governs.
• “DOCTOR” is treated as common/laudatory for disinfectants; claims of exclusivity face a high bar.
• Passing off/copyright claims require alignment with actual historical use and proof of copying or misrepresentation, not just overlap in common industry elements.
• Courts may, in appropriate cases, decide merits even while returning the plaint for want of jurisdiction, offering persuasive guidance for re‑presentation before the proper forum.