The Delhi High Court recently decreed a suit for passing off against defendants residing outside India, noting that they offer their services through apps and websites which are accessible from Delhi.
“The issue which arises for consideration is whether this Court has territorial jurisdiction to try the suit since the defendants are residing in United Arab Emirates and whether there is material to establish that the defendants are carrying on business from Delhi. Though the defendants are not residing in Delhi, however, the defendants are offering their fitness apps and bands through App Store, Google Play Store and e-commerce portals like www.amazon.in which can be accessed and operated from all over the country, including from Delhi. Thus, it can be said that the defendants are carrying on business or working for gain at Delhi and this Court has territorial jurisdiction to try and decide the present suit,” Justice Mukta Gupta observed.
The Court was hearing a suit filed by ICON Health and Fitness Inc, which is a company incorporated under the laws of the United States. IHFI is one of the world’s largest developers, manufacturers and marketers of fitness equipment including wearables, treadmills, elliptical trainers, stationary bicycles, weight machines and benches, and yoga and Pilates equipment.
The subject matter of the suit was IHFI’s trademark ifit/ iFIT, which it uses for fitness devices such as wearable and software applications for fitness devices. The suit was filed against defendants who were offering a fitness related App under the name ifit on the App Store and on the Google Play Store. The defendants were also offering fitness bands for sale under the name IFIT on e-commerce portals such as www.amazon.in.
The Court noted that the defendants were using a mark identical to that of the plaintiff for identical devices and software and for identical class of consumers. Further, the channels through which the defendants were offering their devices and software were also identical to those of the plaintiff.
Justice Gupta, therefore, opined that the impugned mark had been adopted “with the specific intent to mislead the public into believing that a connection exists between the plaintiff and the defendants.”
The Court further observed that IHFI enjoys trans-border reputation with respect to the trade mark IFIT, which is registered in various countries in the world. It then decreed the suit ex-parte in favor of IHFI, directing payment of costs of Rs. 1, 20, 000 as court fee and litigation expenses.