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INTRODUCTION

In a detailed judgment, the Delhi High Court in Vikrant Chemico Industries Pvt. Ltd. v. Shri Gopal Engineering and Chemical Works Pvt. Ltd. & Ors. (CS(COMM) 85/2018 & CRL.M.A. 4189/2020) examined key questions of territorial jurisdiction and intellectual property protection under the Trade Marks Act, 1999 and the Copyright Act, 1957.

The dispute revolved around the use of deceptively similar marks for cleaning and disinfectant products—specifically “DOCTOR BRAND PHENYLE” and “DOCTOR BRAND GERM TROLL” belonging to the plaintiff, and “DOCTOR HAZEL’S BRAND PHENYL” and “CHEMIST BRAND GERM TROLL” used by the defendants. The Court’s ruling is significant for its discussion on the extent of territorial jurisdiction, the protection of composite trademarks, and the limitations on monopolizing common trade terms such as “Doctor.”

FACTS OF THE CASE 

The plaintiff, Vikrant Chemico Industries Pvt. Ltd., was incorporated in 1972 and has been manufacturing cleaning products, particularly under the well-known mark “DOCTOR BRAND PHENYLE”, which dates back to 1963 when it was first adopted by Mr. J.B. Gupta. In 1973, the plaintiff also adopted another mark, “DOCTOR BRAND GERM TROLL”, for its disinfectant products.

In 1975, a partnership firm named M/s Shri Gopal Engineering and Chemical Works was formed, with Mr. J.B. Gupta and Mr. G.K. Gupta (Defendant No. 2) as partners. This firm registered the trademark “DOCTOR BRAND PHENYLE (device)” in Class 5 on November 8, 1985. Later, on November 18, 1996, the partnership firm assigned all rights, title, and goodwill in the “DOCTOR BRAND PHENYLE” mark to the plaintiff company.

In 2000, Shri Gopal Engineering and Chemical Works Pvt. Ltd. (Defendant No. 1) began selling “CHEMIST BRAND PHENYLE” and later, in 2014, launched products under “DOCTOR HAZEL’S BRAND PHENYL.”

The defendants acquired registration for the mark “DOCTOR HAZEL’S” (Reg. No. 1221775 in Class 5) through an assignment deed dated November 29, 2014, and launched “DOCTOR HAZEL’S BRAND PHENYL” on December 19, 2014. The plaintiff alleged that these marks were deceptively similar to its own and amounted to trademark infringement, copyright infringement, and passing off.

The suit was filed on August 25, 2015, before the Delhi High Court seeking a permanent injunction, damages, and other reliefs. On September 2, 2015, the Court issued summons and granted an ex parte ad interim injunction, restraining the defendants from using the marks “DOCTOR HAZEL’S BRAND PHENYL” and “CHEMIST BRAND GERM TROLL.” A Local Commissioner was appointed to inspect the defendants’ premises in Kanpur, Uttar Pradesh. Later, the injunction was modified, allowing the defendants to use the mark “CHEMIST BRAND GERM TROLL” pending final adjudication.

The issues framed by the Court included territorial jurisdiction, infringement of trademarks and copyright, passing off, and reliefs such as damages and delivery up of infringing goods. The Supreme Court, in February 2019, stayed a jurisdictional finding of the Division Bench and directed the High Court to dispose of the main suit within six months.

ARGUMENTS IN FAVOUR 

The plaintiff contended that the Delhi High Court had jurisdiction because the defendants’ goods were being sold and advertised in Delhi. It relied on the Local Commissioner’s report, which recorded a statement from a Delhi shopkeeper who claimed to have sold a few bottles of “DOCTOR HAZEL’S BRAND PHENYL.” The plaintiff also argued that the defendants’ products were listed on IndiaMart, an e-commerce platform accessible in Delhi, thereby constituting a commercial presence.

Regarding trademark infringement, the plaintiff asserted that it was the registered proprietor and prior user of the mark “DOCTOR BRAND PHENYLE” since 1963. The mark “DOCTOR HAZEL’S BRAND PHENYL”, according to the plaintiff, was deceptively similar and likely to mislead consumers. The word “DOCTOR” formed the essential and dominant part of its mark and was distinctive in the cleaning product industry.

The plaintiff also claimed copyright registration over its label for “DOCTOR BRAND PHENYLE.” It alleged that the defendants had copied the color combination, label design, and layout of the plaintiff’s packaging, thereby creating confusion among consumers.

ARGUMENTS AGAINST

The defendants, on the other hand, denied that the Delhi High Court had territorial jurisdiction, stating that they had no business operations or sales in Delhi. They described the Local Commissioner’s report as unreliable and based merely on hearsay. According to them, IndiaMart is only a listing portal and not a platform for direct online sales, meaning no commercial transaction in Delhi had been proved.

They further argued that the plaintiff’s registration was for a device mark—a label including the word “Doctor”—and not for the word “Doctor” itself. Hence, the plaintiff could not claim exclusive rights over the word “Doctor.” The defendants pointed out that their mark “DOCTOR HAZEL’S” included the additional distinctive element “Hazel’s,” clearly differentiating it from the plaintiff’s mark. Since both the plaintiff and the defendants were registered proprietors of their respective marks, no infringement action could be maintained under Section 28(3) of the Trade Marks Act, 1999, which prevents such actions between two registered owners.

The defendants further contended that “Doctor” was a generic and laudatory term, commonly used in trade for cleaning and disinfectant products. They highlighted that the Trade Marks Registry had itself disclaimed any exclusive rights to the word “Doctor” when granting registration to “DOCTOR HAZEL’S.”

They also denied allegations of passing off and copyright infringement, arguing that their packaging and label designs were entirely different, using yellow, red, blue, green, and white color schemes, unlike the plaintiff’s blue and white packaging. They had been using these trade dresses since 2000, long before the dispute arose. In relation to the mark “GERM TROLL,” the defendants maintained that it originally belonged to the partnership firm and had been transferred to them in 1994, meaning the plaintiff had no proprietary rights over it.

COURT’S DECISION

The Delhi High Court first examined the question of territorial jurisdiction and found that the plaintiff had failed to establish it. However, following Order XIV Rule 2 of the Code of Civil Procedure, 1908 and the Supreme Court’s ruling in Sathyanath v. Sarojamani (2022) 7 SCC 644, the Court also proceeded to adjudicate the case on its merits.

The Court held that there was no material evidence to show that the defendants had sold or marketed their products in Delhi. The plaintiff failed to produce invoices, bills, or other proof of transactions in Delhi. The Local Commissioner’s report was found to be inconclusive since the shopkeeper admitted that he did not have stock of the products at the time of inspection. The listing of the defendants’ products on IndiaMart did not amount to a commercial transaction because the website only enables business listings and not actual sales.

Under Section 134(2) of the Trademarks Act, 1999, a plaintiff can file a trademark suit in a place where it “carries on business.” However, the Court clarified that mere online visibility without proof of sales or business transactions does not meet this requirement. To support this finding, the Court referred to several precedents.

In Dhodha House v. S.K. Maingi (2006) 9 SCC 41, the Supreme Court held that the mere filing of a trademark application in a particular location does not confer jurisdiction; jurisdiction arises only from actual use of the mark. Similarly, in Banyan Tree Holding (P) Ltd. v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, the Delhi High Court ruled that a passive website that only provides information cannot create jurisdiction unless there is commercial interactivity. The Court also relied on Kohinoor Seed Fields India Pvt. Ltd. v. Veda Seed Sciences Pvt. Ltd., 2025 SCC OnLine Del 2404, which reaffirmed that the mere listing of products on a third-party platform like IndiaMart does not establish jurisdiction without evidence of a transaction. Consequently, the Court decided the issue of jurisdiction against the plaintiff.

Even while holding that it lacked territorial jurisdiction, the Court addressed the merits of the case. It found no infringement of trademark rights. Under Section 28(3) of the Trademarks Act, when two parties are registered proprietors of similar or identical marks, neither can sue the other for infringement. Section 17 of the same Act clarifies that registration of a composite mark does not grant exclusivity over individual elements that are common or non-distinctive in nature.

The Court cited Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738, where it was held that registration of a composite label does not provide monopoly over a common word such as “Vardhman.” Applying the same principle, the Court ruled that the word “Doctor” is descriptive, laudatory, and widely used in the cleaning product market. Since the plaintiff’s registration was for a device mark and not the word itself, it could not monopolize “Doctor.” Moreover, the defendant’s mark “DOCTOR HAZEL’S” was considered distinct when compared as a whole.

On the issues of passing off and copyright infringement, the Court found the competing labels and packaging to be visually and structurally distinct. The plaintiff’s label used a blue, white, and red color combination, while the defendants’ products used yellow, red, and white with a different layout and font style. The Court concluded that no average consumer would be deceived or confused between the two.

As for the “GERM TROLL” mark, the Court noted that it was descriptive in nature and had been used by the defendants since 2000, well before the plaintiff’s complaint. Therefore, the Court held that no case of passing off, or copyright infringement was made out.

Since the issues relating to infringement and passing off were decided against the plaintiff, the claims for ancillary reliefs such as damages, rendition of accounts, delivery up, and costs were also rejected. The objection to misjoinder was decided in favor of the plaintiff as the defendants had led no evidence on that issue.

Ultimately, the Court returned the plaint for lack of territorial jurisdiction and dismissed the plaintiff’s claims on the merits. It reaffirmed that jurisdiction cannot be created by mere online listings or passive websites without proof of actual sales or transactions. Common or laudatory words like “Doctor” cannot be monopolized by any trader, and registration of a composite label does not confer exclusive rights over individual components. Furthermore, when both parties hold trademark registrations, Section 28(3) bars infringement claims between them.

CONCLUSION 

This case highlights how courts attempt to balance the protection of genuine trademark rights with the prevention of monopolies over common trade expressions. It also clarifies that in the era of online listings and digital marketing; territorial jurisdiction must still be grounded in actual commercial activity rather than virtual presence alone. The decision serves as a reminder that while intellectual property rights are meant to protect innovation and goodwill, they cannot be stretched to claim exclusivity over terms or designs that are descriptive, generic, or shared within a trade.