Archie Comic Publication Inc a Newyork based company own the Archie,"THE ARCHIES", "THE NEW ARCHIES", "LITTLE ARCHIES", "ARCHIES COMICS" etc. they are using the Archie since 1942 all over the world including India. Archies Comic publication Inc had applied for the registration of trademark “Archie and Heads “in class 16 (Paper, printed matter, bookbinding material, photographs, artists' materials etc.) and were using the said mark in India since 1979.
Purple Creation Pvt. Limited, is a Mumbai based firm using the trademark ‘ARCHIES and device’, 'PURPLE ARCHIE' and 'ARCHIES' since 2004, and applications filed in class 25 (Clothing, footwear, headgear) bearing application Nos. 597802, 846978, 1062578 and 1222947, has been published in trademark journal. Purple Creation is involved in the business of manufacturing and selling kids wear under the said trademark.
Archie Comic Publication Inc had filed a suit in Delhi High Court for permanent injunction, infringement of trademark, damages, etc. against the respondent claiming to be engaged in the field of printing matter, comics magazine, cartoon strips, story book etc.
Arguments by Appellant:
1. Archies comics were imported in to India and an invoice issued by appellant to Variety Book Depot, New Delhi dated 8th May, 1979, and so based on this claim appellant carries his business in Delhi since 1979.
2.Repondant had advertised their product under the trademark ”Archies” in news paper including Delhi edition and they have their website which can be accessible from anywhere in India including Delhi, thus they infringe the trademark.
3. According to the section 134 of the Trademarks Act, 1999 the appellant actually and voluntarily carries on business or personally work for gain at Delhi, it is entitled to institute a suit.
Arguments by Respondent:
1. Learned Judge did not have the territorial jurisdiction to entertain the said matter, and when the court has no jurisdiction over the subject matter of the suit, the order passed would be nullity. Neither consent nor waiver or acquiescence can confer jurisdiction upon a court otherwise incompetent to try the Suit.
Points on which decision relies:
1. Variety bookstore cannot be considered as the special agent of the appellant to satisfy the conditions of carries on business.
2. An advertisement by itself in journal or paper wouldn’t confer jurisdiction upon the court.
3. According to Section 134 of the Trademarks Act, 1999 the plaintiff can file a suit at the place where he “carries on business or personally work for gain”. In this case appellant does not have any registered office in India much less in Delhi.
4. Neither the appellant nor respondent carries his work or personally work for gain at Delhi.
The Decision: A division bench of Justice Mukta Gupta and Justice Vikramjit Sen, said that “this court has no territorial jurisdiction to entertain the plaint”. See the judgment in detail here. This decision was given on 10th September, 2010. Readers can see the earlier decision on the same case here. Even though the Archie have the prior use of trademark then also the decision was not in their favour. In this case the territorial jurisdiction played a vital role. The decision would have got a turning point if the New York based firm had any registered office in India or their arguments & evidence had made capable to satisfy the conditions of carries on business in India.