Banyan Tree Holdings Ltd. v. M. Murali Krishna Reddy & Anr
(2008) 38 PTC 288
In the High Court of Delhi
CS (OS) 894/2008
Before Justice S. Ravindra Bhat
Decided on August 11, 2008

Relevancy of the Case: Does the accessibility of a website at a particular location invite the local court’s jurisdiction in a passing-off claim?

Statutes and Provisions Involved

• The Code of Civil Procedure, 1908 (Section 20)
• The Trade Marks Act, 1999 (Section 134(2))
• The Copyright Act, 1957 (Section 62(2))
• The Information Technology Act, 2000 (Section 2(1)(j), 2 (1)(k), 11, 12, 13, 75)

Relevant Facts of the Case

• The plaintiff had adopted and used the word mark ‘Banyan Tree’ in 1994, which had acquired a secondary meaning due to its extensive usage.
• The plaintiff’s website has been accessible in India since 1991 and has advertised its products and services in the country.
• In collaboration with The Oberoi Group, the plaintiff operates 5 spas across India. Despite being a registered proprietor for the mark in different countries, it does not hold any registration in India but has sought them.
• In October 2006, the defendants, who reside in Andhra Pradesh, initiated a work named Banyan Tree Retreat.
• The name resembles the plaintiff’s mark and belongs to the same trade/industry. It is deceptive in nature. Therefore, the plaintiff sought an ex-parte interim injunction to restrain the defendants from using the mark.

Prominent Arguments by the Advocates

• The plaintiff’s counsel argued that the court has territorial jurisdiction on the grounds of Section 20 of the Code of Civil Procedure, 1908. The defendant’s brochure depicts the business to be in Delhi. Their website is interactive in nature and not passive. The plaintiff also relied on the doctrine of passing off.
• The plaintiff’s counsel also highlighted Section 62(2) of the Copyright Act, 1957, to sue the defendant in a court within whose jurisdiction the plaintiff resides or works for gain.

Opinion of the Bench

• The mere fact that a website is accessible to a specific place will not invite the court’s jurisdiction to a passing-off action. Factors like the level of interactivity and undertaking of commercial activity will also play an imperative role.
• The bench analysed the position in the US with the help of Zippo Manufacturing Co. v. Zippo Dot Com, Inc. Drawing inspiration from the UK, it referred to the case of 1-800 Flowers Inc v. Phonenames.
• The bench believed a division bench should decide this case and settle the issue with authority.

Final Decision

• The bench passed an order to transfer the case to a division bench.

Ritesh Karale, an undergraduate student at Maharashtra National Law University, Mumbai, and Yagyanseni Acharya, an undergraduate student at VIT School of Law, Chennai, prepared this case summary during their internship with The Cyber Blog India in January/February 2024.