The Delhi High Court and an Anti-Suit Injunction – Part II

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[Please read Part I of this two-part post for the summary of the judgment discussed herein]


I am unable to agree with the judgment of Delhi High Court on various counts. At the outset, this is an ex-parte proceeding. The evidentiary threshold, as held by the Supreme Court in Ramesh Chand Ardawatiya v. Anil Panjwani (AIR 2003 SC 2508), is as follows:

33. ………In the absence of denial of plaint averments the burden of proof on the plaintiff is not very heavy. A prima facie proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the evidence adduced, and would do well to frame the “points for determination” and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the defendant is absent the court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced by irrelevant or inadmissible evidence.

Strength of the Mark

Any word, abbreviation or acronym which has become ‘publici juris’ cannot be exclusively claimed by anyone. Applying this principle, I am of the view that the word mark “Hindustan” per se is a weak mark. By using the expression “word mark”, I am referring to the text “Hindustan” (and not to the typographic treatment of the text).

The Trademarks Act treats registered trademarks as prima facie valid. This should apply to the trademark taken as a whole (comprising of both the word mark and the label mark). The court should be cautious in examining the prima facie validity of the marks. As I see it, the judicial focus must be on “Hindustan” only which is per se a weak word mark (for Delhi High Court’s judgments, dealing with the tenability of the mark “Krishna”, see here and here).

Trademark Infringement

In a trademark infringement, the focus must be on evaluating the overall impression conveyed by marks. In Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, the Supreme Court laid down the criteria for deciding the question of deceptive similarity in case of passing off:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks.


In this fact situation, there is a domain name which cannot be accessed. The scope for an overall impression test is quite limited.  As for a finding of resemblances, the scope of the test is quite narrow. A finding of trademark infringement, on “Hindustan” alone, is counter-intuitive (please refer section 17 (effect of registration of parts of a mark) and section 29 (infringement of registered trademarks) of the Trade Marks Act).

Anti-Suit Injunction

The High Court relied on Supreme Court judgment in Modi Entertainment Network & Anr v. W.S.G. Cricket Pte Ltd. The relevant parts of the Supreme Court judgment are as follows:

(1) In exercising discretion to grant an anti-suit injunction the court must be satisfied of the following aspects : –

(a) the defendant, against whom injunction is sought, is amenable to the personal jurisdiction of the court;

(b) if the injunction is declined the ends of justice will be defeated and injustice will be perpetuated; and

(c) the principle of comity – respect for the court in which the commencement or continuance of action/proceeding is sought to be restrained – must be borne in mind;

(2) in a case where more forums than one are available, the Court in exercise of its discretion to grant anti-suit injunction will examine as to which is the appropriate forum (forum conveniens) having regard to the convenience of the parties and may grant anti-suit injunction in regard to proceedings which are oppressive or vexatious or in a forum non-conveniens;


Applying the “effects doctrine”, the High Court held that the defendant is amenable to the personal jurisdiction of the High Court (The High Court did not use the expression “effects doctrine”. But the reasoning is essentially the “effects doctrine”). That is a convincing legal position. But the Court went on to suggest that the plaintiff is not amenable to the jurisdiction of the US court. I do not agree with this since the “effects doctrine” can be invoked by the defendant as well to argue for the jurisdiction of the US court (i.e. the website of the plaintiff is available in US; and the plaintiff is alleging trademark infringement). My knowledge of US law is limited. As far as I understand, the defendant exercised a legal option which is available under the US system i.e. filing a declaratory suit of non-infringement. A declaratory suit is generally filed to address legal uncertainty. As I see it, the defendant is well-within its rights to file this suit in US.

When there are two jurisdictions – US and India, the court is required to get into a deeper analysis on the appropriate forum (as laid down by the Supreme Court in Modi Entertainment). But the judgment is silent on this aspect. It just stops short of stating that the plaintiff has not asserted its rights in US and therefore, it is not amenable to the jurisdiction of the US Court (para 44 of the judgment). As I stated earlier, the effects doctrine can be applied by the defendant as well to invoke the jurisdiction of the US court. Therefore, the argument that the plaintiff has not asserted its rights in the US is a weak argument. Further, as I stated earlier, this is a case involving a weak mark – “Hindustan”. Therefore, the grounds for issuing an ‘anti-suit injunction’ must be stronger and convincing.

I am of the view that the courts must be extremely cautious in treading the path of ‘anti-suit injunction’ in a case involving foreign jurisdiction. The UK High Court, in Huawei v. Unwired Planet, held that it can decide on a global FRAND licence (covered here). The matter is now before the UK Supreme Court. Many legal scholars have already raised eyebrows on the jurisdiction of the UK High Court to make such a determination. The issue of jurisdiction is a sensitive issue and therefore, this path should be treaded cautiously. For instance, if a US court grants an ‘anti-suit injunction’ against a suit filed in India, how will the Indian court react to it? In the given case, how will the US Court react to the grant of ‘anti-suit injunction’ by the Delhi High Court?

The courts in Europe are increasingly becoming conscious of foreign jurisdictions which are being approached for grant of ‘anti-suit injunctions’. As a retaliation, the courts in Europe have started issuing ‘anti-anti-suit injunctions’. Recently, the International Commercial Chamber of the Paris Court of Appeal (ICCP-CA) granted ‘anti-anti-suit injunction’ in Lenovo et al. v. IPCom, RG 19/21426 (for a detailed summary, click here.) This is the second time in European Union’s history where an ‘anti-anti-suit injunction’ has been granted (the first one was granted by Munich Higher Regional Court).

The ICCP-CA, basing its reasoning on French national law and European law, inter alia held that the French courts are competent to issue ‘anti-anti-suit injunctions’ against corporations which initiate motions for ‘anti-suit injunctions’ from courts in foreign jurisdictions provided such ‘anti-suit injunction’ motions enjoy nexus with French jurisdiction.

As to understand the ‘anti-anti-suit injunction’, an understanding of the brief facts will be helpful. IPCom GmbH & Co. KG (IPCom) owns a portfolio of patents covering 2G, 3G and 4G standards. One among the patents is EP 1 841 268 B2 (EP 268) which is essential to the 3G standard. IPCom made an offer to license its patent portfolio (which includes EP 268) to the Lenovo group. The Lenovo group did not respond to the offer.

IPCom initiated patent infringement proceedings before the High Court of Justice in London. In response, the Lenovo group moved a motion for ‘anti-suit injunction’ before the District Court for the Northern District of California (US District Court) against the infringement proceedings in UK and any new infringement action. In retaliation, IPCom sought ‘anti-anti suit injunction’ from the courts in United Kingdom and France. The Paris Court of First Instance granted ‘anti-anti-suit injunction’ in favour of IPCom. The Lenovo group went in appeal to the Court of Appeal. The Court of Appeal inter alia reasoned that, if IPCom’s request for ‘anti-anti-suit injunction’ was rejected, IPCom would be deprived of its rights arising from the french part of the European patent.

These case laws evince the general sentiment of not willing to easily cede one’s jurisdiction. The courts are keen to protect and preserve their jurisdictions. Illustratively, in IPCom (discussed above), the French Court is keen to protect and preserve its jurisdiction over the french part of the European patent. This sentiment enjoys a close nexus with the concept of sovereignty and therefore, an ‘anti-suit injunction’ must be granted only after careful deliberation. It is not apposite for the Indian judiciary to get entangled in ‘anti-suit injunction’ and ‘anti-anti-suit injunction’ proceedings without convincing reasons.

Unfair Competition Law and UDRP

I am of the view that the remedy in a fact-situation like the instant one, lies in unfair competition law (and not trademark law). [For the uninitiated, unfair competition law and competition law are different. This fact situation is a classic case of unfair competition – as the defendant seems to be engaged in a deceptive business practice that is ostensibly causing economic harm to the plaintiff. The facts, as stated in the judgment, do indicate cybersquatting.] Though mandated by TRIPS, India does not have a robust unfair competition law framework. Therefore, the practical feasibility of this option is limited. Given this situation, the Uniform Domain Name Dispute Resolution Policy (UDRP) route is a tenable legal option (paragraph 4(a) and 4(b) of the UDRP Policy).

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2 thoughts on “The Delhi High Court and an Anti-Suit Injunction – Part II”

  1. Harshit Dixit

    Dear Mathews,
    I have read your post and I must say it is a well reasoned critique post. However, I have read the relevant order and nowhere found that “the High Court held that the defendant is amenable to the personal jurisdiction of the High Court” as stated in your above post.

    1. Mathews P. George

      Dear Harshit –

      “42. Traversing the law on the subject, as above, and looking to the facts of the case as set out by the Plaintiffs, this Court is of prima facie opinion that Court has personal jurisdiction over the Defendants.”

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