World Wrestling Entertainment Inc. v. M/s. Reshma Collection
Before the Hon’ble High Court of Delhi at New Delhi
FAO(OS) No. 506 of 2013
Date of Decision: 15.10.2014
Appellant filed a suit seeking permanent injunction restraining infringement of Copyright, Infringement of Trade Mark, Passing Off, Dilution, Rendition of Accounts, Damages, etc in respect of their Trade Marks ‘WWE Scratch Logo’ and ‘WORLD WRESTLING ENTERTAINMENT’.
The suit was dismissed by a Learned Single Judge of the Delhi High Court on the ground of want of jurisdiction. Summary of the decision of Learned Single judge dated 4th October, 2014 can be read here.
Against the said decision of the Learned Single Judge, the Appellant filed the present appeal taking the same grounds.
As per the Plaintiff, it ‘carries on business’ in Delhi because, according to it, its programmes are broadcast in Delhi; its merchandise and books are available for sale in Delhi; and its goods and services are sold to customers in Delhi through its website which can be accessed in Delhi over the internet.
The expression ‘carrying on business’ in 62(2) of the Copyright Act, 1957 and Section 134(2) of the Trade Marks Act, 1999 has to satisfy three conditions laid down in Dhodha House v. S.K. Maingi; (2006) 9 SCC 41.
(i) the agent must be a special agent who attends exclusively to the business of the principal and carries it on in the name of the principal and not as a general agent who does business for any one that pays him; (ii) the person acting as agent, must be an agent in the strict sense of the term and a manager of a Joint Hindu Family cannot be regarded as an agent within the meaning of this condition; and (iii) to constitute ‘carrying on business’ at a certain place, the essential part of the business must be performed at that place.
It is an admitted position that the Appellant has no agent in Delhi, thus those two conditions are clearly not fulfilled.
The question which then arises is whether the introduction and spread of e-commerce and business over the internet impacts the meaning of the expression ‘carries on business’ at a certain place. As per Dhodha House (supra), the third condition stipulated that to constitute ‘carrying on business’ at a certain place, the essential part of the business must take place there, it would be necessary to examine this aspect in the backdrop of business over the internet.
The Hon’ble Court relied on the classic Contract case of Bhagwan Goverdhandas Kedia v. Girdharilal Parshottamdas & Co.: AIR 1966 SC 543, to hold that the contracts and/or transactions entered into between the Appellant on the one hand and its customers are being concluded in Delhi, can it not be said that the essential part of the business of the Appellant, in so far as its transactions with customers in Delhi are concerned, takes place in Delhi? The offers are made by customers at Delhi. The offers are subject to confirmation/ acceptance of the Appellant through its website. The money would emanate or be paid from Delhi. Can it not then be considered that the appellant/ plaintiff is, to a certain extent, carrying on business at Delhi? In our view, it would be so.
The Appeal was thus allowed and the suit was restored.