As readers may recall, while the in-built principle of Section 20 of the Civil Procedure Code (“CPC”) is that the place of institution of a suit should have a certain nexus with any one of defendant’s place of residence, place of business, place of work or where the cause of action has wholly or in part has arisen, the Copyright Act and Trademarks Act make a departure from this principle and give plaintiffs the liberty to sue even at plaintiff’s own places of business. One of the main concerns that had arisen with respect to the territorial jurisdiction in copyright and trademark infringement suits was that the Plaintiffs regularly indulged in forum shopping and attempted to circumscribe the jurisdiction in which they had to actually file the suit.

Factual matrix

Coming to the facts of the decision at hand (Federal Express Corporation v. Fedex Securities Limited and Ors.), Plaintiff runs multiple services, including transport, e-commerce and business services under the trademark “FEDEX”, and has its registered office in Memphis, USA. Defendant No.1 provides financial services to Indian corporate while the other two are subsidiaries of the first Defendant, providing similar services. By using marks, which are deceptively similar (including their websites,, to the Plaintiff’s mark, Plaintiff alleged that the Defendants were infringing its trademark and sought for mandatory injunctions against the Defendants.
Plaintiff sought to establish its right to invoke jurisdiction by stating that: 1) Defendants have serviced many of its clients in Delhi; thus, “carrying on business” in Delhi for the purpose of S.20 CPC, 2) Defendants’ services were offered and widely advertised through their websites, which was accessible all over India, including in Delhi, 3) offers made by the Defendants in their capacity as merchant bankers were published in dailies all over India, including in the Delhi editions of such newspapers and 4) Plaintiff has a branch office and a number officers in Delhi for the provisioning of its services.


]The learned Judge, Justice RK Gauba, begins his analysis by reproducing the ratio in IPRS v. Sanjay Dalia, 2015 10 SCC 161 (“IPRS”), as quoted in Piruz Khambatta & Anr. V. Rajmohan Rupaji Modi and Ors., 2016 SCC Online Del 6494.The key point he brings out from IPRS is that no Plaintiff can bring a suit at jurisdictions where its branch offices are situated even when the cause of action, in whole or in part, has arisen within its principal place of business. Further analysis proceeds on the basis of the above principle in IPRS and he goes on to examine if the Plaintiff, despite having its principal office in Mumbai, has made out a case for invoking the jurisdiction of the High Court in Delhi on the basis of the claim that part of the cause of action has arisen in Delhi. After relying on a number of precedents, the Judge points out that “insignificant or trivial part” of the cause of action having arisen in a place cannot be the decisive factor for invoking jurisdiction of a court in such place.