No Physical Footprint, Real Legal Implications: Indian Trademark Law For Foreign Defendants


The Internet today has massively facilitated trade and business for people and companies across the globe by providing them a platform to ease the communication between the buyer and the seller.

However, this facilitation of trade and business raises pertinent questions as to the laws which would govern the disputes arising in this internet space as the litigants may or may not be physically present within the forum state.

Before a court of law can adjudicate upon a matter, it must decide a pertinent question as to jurisdiction for entertaining the lawsuit.

Section 20 of the Civil Procedure Code and Section 134 of the Trade Marks Act, 1999 provide the parameters for establishing a court’s territorial jurisdiction. However, there is an explicit departure from the standard principle of territorial jurisdiction when the case involves exercising jurisdiction on the basis of the internet or web presence of the alleged Infringers.

For an efficacious adjudication of the matter at hand it is important to walk through and rely on the various principles evolved as part of common law and statutory provision to establish personal jurisdiction and applicable standards for the entertainment of suit of the forum court where the alleged breach is based on the internet activity.


If no business is being run by the plaintiff within the court’s territorial jurisdiction and there is no long-arm statute, it is necessary to be shown by the plaintiff that there has been “purposeful availment” by the defendant of the forum court’s jurisdiction in order to persuade the forum court that it has jurisdiction to consider the case for passing off action to take place.

[Image Sources: Shutterstock]

Trademark Law

In order to do this, it must be proven beyond a reasonable doubt that the defendant intentionally targeted the forum state in order to cause harm to the plaintiff there and that the defendant used the website having the intention to use it for commercial advantage. Theories of Constitute Use and Injury Test may be used to analyse the same.

In the case of Tata Sons the court while relying on the India Tv case held that in order for Indian courts to exercise jurisdiction over overseas defendants in internet trademark infringement actions, “intent to target” is a mandatory prerequisite. Since the Defendants were not within jurisdiction of the court, the sought-after directions were not issued by the court to them.


According to Civil Procedure Code, 1908, Section 20 (hereafter referred to as “CPC”), a lawsuit may be filed in the court that has jurisdiction over:

If the defendant works for profit, has a place of residence, or engages in business or

Where the action’s primary causes, whether whole or in part, can be identified (Cause of Action). Section 134 of the Trade Marks Act, 1999 addresses the issue of territorial jurisdiction.

These provisions are only applicable in infringement cases; passing off cases are not addressed by them. Given that a website or mobile application’s content, goods, and services are accessible in all regions where the internet is accessible, the following two important questions must be addressed:

Where exactly can a plaintiff or defendant be said to “carry on business” in relation to an organisation or entity that has an online presence?

When it pertains to infringing goods and services provided or sold online, where specifically does the “cause of action” arise?


It was stated in Dhodha House v. S.K. Maingi that a man’s presence was not required for “carrying on business.” Aryans Plaza Services (P) Ltd. v. Millennium & Copthorne International Ltd. case established that service providers would be liable for any place where customers might make a basic reservation, including through websites run by other companies. This would hold true regardless of whether the reservation is carried out in a transaction.

Additionally, in the case of World Wrestling Entertainment Inc. v. Reshma Collection, more emphasis was placed on online transactions, specifically those that were an “essential part” of the business. It was noticed that the act of displaying products on a website is the same as inviting a consumer to make an offer.

It was concluded that the seller would be deemed to be conducting business at that place if they could conduct business at that location through a website, being equivalent to the seller having a shop there in person.


When considering the cause of action in the case of Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, where neither the plaintiff nor the defendant resided within the jurisdictional boundaries of the court, the jurisdiction under Section 20 CPC in an online context was thoroughly examined.  In this case, the court determined that simply being able to access or interact with a website in a particular location does not give local courts jurisdiction over that area.

It is mandatory for the plaintiff to show that there has been “Purposeful Availment” on the part of the defendant of the jurisdiction in the area where the lawsuit was filed. This included things like: Specific targeting of users there; Completion of business transactions with them; Injury to plaintiff’s operations, reputation, or goodwill there.

However, adjudication has diluted this standard over time. In the cases of Exxon Mobil Corp. v. Exoncorp (P) Ltd. as well as Sholay Media and Entertainment (P) Ltd. v. Yogesh Patel, the court determined that the mere use of a trade mark at an exhibition establishes jurisdiction. This is because the cause of action partially arises in all locations where such commercials and advertising are made since, in addition to actual sales, advertisements, and promotions also constitute infringement under the Intellectual Property Acts.

It was stated in the case of Burger King Corporation v. Techchand Shewakramani & Ors., that the place where the use of trademark occurs is the place of litigation under Section 20(c) of the Civil Procedure Code. A trademark may be used “upon” or “in relation to” goods in this manner. The Court clarified that the trademark need not always be attached to the goods or that there must be an actual sale for it to be used in commerce by citing Sections 29(4) to(7) and 56(1) and(2) of the Trademarks Act, 1999. The acts of marketing and promoting the mark, requesting franchisee inquiries from a territory, obtaining goods from a territory, producing or assembling goods , printing or packaging, and exporting goods from a territory are all considered uses of the mark within that territory.


In today’s age of globalization and fast-moving businesses, especially in the cyber space, it is important to keep up with the pace of internet and holistically decide the territorial limits of the forum court on a trade or business which is majorly present and functioning in the cyberspace. The gap between the fast-moving trade and business and the common law principles has to be filled by the reasonableness by which Courts adjudicate upon such matter.

It is evident from the above discussion that Indian courts can indeed entertain the present suit, regardless of the fact that such exercise of jurisdiction is to be based on internet or web-presence of such plaintiff and alleged infringers; making the given case an explicit departure from the general law as to territorial jurisdiction.

The present court therefore believes that the aforementioned applicable criteria for considering passing off lawsuits are all pertinent to the current case. This is based on the defendant using a plaintiff’s trademark on the defendant’s website or on trademark infringement or passing off where more than one litigant is a foreign entity with no physical presence.

Author: Kunal Vinayak, A Student at Symbiosis Law School Pune, in case of any queries please contact/write back to us via email or at Khurana & Khurana, Advocates and IP Attorney.


Jain, I.B., 2023. The Significance of Intellectual Property Rights in Cyber Law. European Economic Letters (EEL), 13(1), pp.161-167.

Ranjan, R., 2022. Trademark Infringement Issue in Cyberspace. Issue 6 Indian JL & Legal Rsch., 4, p.1.

Hörnle, J., 2021. Internet jurisdiction law and practice. Oxford University Press.

Chaudhary, G., 2021. IPR in Cyberspace. Law Essentials J., 2, p.331.

Holbrook, T.R., 2020. Is There a New Extraterritoriality in Intellectual Property?. Colum. JL & Arts, 44, p.457.

Senftleben, M., 2020. Intermediary Liability and Trademark Infringement: Proliferation of Filter Obligations in Civil Law Jurisdictions?.

Leave a Reply



  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010