In the matter of: Ultra Home Construction (P) Ltd. V/s Purshottam Kumar Chaubey & Ors, 227 (2016) DLT 320 (DB), the Hon’ble High Court of Delhi while interpreting Section 134 of the Trade Marks Act, 1999 and Section 62 (2) of the Copyright Act, 1957 observed that:

 

1. If the plaintiff has its principal office at place X and its branch office at place Y, but the cause of action has arisen at place Z, then the plaintiff has to institute a suit concerning trademark infringement and passing off before the court of competent jurisdiction at place X, and not at place Y or Z.
2. In Para 13 of the report it was observed that:

“… 13. It is evident from the above observations that the interpretation given to the expression “carries on business” in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134 (2) and 62 (2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134 (2) or section 62 (2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue [under the scheme of the provisions of sections 134 (2) and 62 (2)] at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. …”

That all the four situations enumerated in Para 13 of the report in the matter of Ultra Home (Supra) can be tabulated as under:

S. No.	Place of Plaintiff’s Principal Office (Sole Office in S. No. 1)	Place of Plaintiff’s Subordinate/ Branch Office	Place where cause of action arose	Place where Plaintiff can additionally sue under Section 134 (2) of the Trade Marks Act, 1999 and the Copyright Act, 1957
1.	A	—	C	A
2.	A	B	A	A
3.	A	B	B	B
4.	A	B	C	A

However, in the matter of: Burger King Corporation V/s Techchand Shewakramani & Ors, CS (COMM) 919/2016 & CC (COMM) 122/ 2017, High Court of Delhi, Date of Decision: 27.08.2018, Coram: Prathiba Singh, J., it was held that:

1. In trademark infringement suits, jurisdiction of court in terms of Section 20 of the Code of Civil Procedure, 1908 can be invoked, in addition to Section 134 of the Trade Marks Act, 1999.
2. Suit for trademark infringement and/or passing off can be brought before competent court having jurisdiction in terms of either of the following:
3. Where the plaintiff resides or carries on business;
4. Where the defendant resides or carries on business;
5. Where the cause of action arises.
6. In Para 18 of the report it was observed that:

“… Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.”

1. In a case involving trademark infringement, infringement happens when a person “uses in the course of trade” any mark without the owner’s consent. Thus, “use of a mark” by the defendant-infringer is the cause of action in a trademark infringement as well as in a passing off action which the plaintiff has against the defendant-infringer. If infringing use takes place in a territory and trademark infringement/ passing off suit is filed there, then the court of competent jurisdiction of that territory has the requisite territorial jurisdiction to entertain that suit. 
2. According to Section 2 (2) (c) of the Trade Marks Act, 1999 “use of a mark” in relation to goods could be either in any “physical or in any other relation” whatsoever to such goods. Thus, jurisdiction of a court in a trademark action, can be invoked where there is use upon or in relation to goods. The phrase “in relation to” has been interpreted to include advertising, promotion and/or publicity of the trademark by the infringer without the consent of the owner of the trademark. Therefore, in addition to actual sale of goods and providing of services, if a person/infringer advertises his/ her business under the mark in a territory, promotes his/her business under the mark in a territory, or for example: invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would all constitute infringing “use of mark”. Hence, when Section 20 of the Code of Civil Procedure, 1908 provides that a suit can be filed at any place where the cause of action arises, in a suit involving rights in a trademark, cause of action arises in each and every place where there is any infringing form of use of the trademark. The principles which apply to infringement actions to determine “use” equally apply to passing off actions.   
3. Subsequent events after the filing of the suit can be taken into consideration to hold that court has the requisite jurisdiction to entertain the suit as the concepts of trademark infringement and passing off are not fixed in time:
4. In the matter of: Laxmikant Patel V/s Chetanbhat Shah & Ors, AIR 2002 SC 275, it was observed that: 
5. A passing off action is not to be determined on the basis of the facts as they exist on the date of filing of the suit, but keeping in mind the future expansion of a business.
6. Plaintiff does not have to prove actual damage in order to succeed in an action for passing off; likelihood of damage is sufficient. 
7. The concepts of trademark infringement and passing off are not fixed in time; they are elastic in nature inasmuch as use of a mark is continuous and each and every use constitutes a fresh cause of action. Thus, in a suit where trademark infringement and passing off are complained of, basing the jurisdiction, only as per the date of the plaint is not a correct approach.

In the matter of: Exxon Mobil Corporation V/s Exoncorp (P) Ltd, CS (COMM) 111/ 2019, High Court of Delhi, Date of Decision: 16.07.2019, Coram: Prathiba M. Singh, following the ratio in the matter of Burger King Corporation (Supra), it was observed that:

“… 26. The nature of IT services is such that the same can be provided from any corner of the globe. The question is whether the impugned infringing mark is being used within the territorial jurisdiction of this Court. The above facts go to show that the Defendant is not limited in its business operations only to Chennai or to the state of Tamil Nadu, but it has been marketing its services to Indian and International customers. The Defendant has not only reached out through its website but through its YouTube channel, Twitter and other platforms. Thus, there is clear use of the mark within the territorial jurisdiction of this Court.

27. Under these facts and circumstances, the objection as to territorial jurisdiction is not maintainable and is liable to be rejected as the Defendant is clearly offering its services in Delhi and the cause of action, inter-alia, has arisen in Delhi.”

Upshot:

1. Thus, as per Ultra Home (Supra), if the plaintiff has its principal office at one place; its branch office at another and the cause of action arises at a third place then plaintiff can conveniently file a suit at the place where it has its principal office. But, as per Burger King Corporation (Supra), if the plaintiff has its principal office at one place; its branch office at another and the cause of action arises at a third place then plaintiff can file a suit at the place where the plaintiff resides or carries on business, or where the defendant resides or carries on business, or where the cause of action arises. 
2. That Burger King Corporation (Supra) is not in the teeth of Ultra Home (Supra), but it has rather filled the gap that Ultra Home (Supra) left by only concentrating on Section 134 of the Trade Marks Act, 1999 and Section 62 of the Copyright Act, 1957, and thereby giving no regard to Section 20 of the Code of Civil Procedure, 1908.