ICICI Bank Ltd. vs Chuandong XU and Another

Sanjiv Khanna, J.

I.A. Nos. 15422-23/08

Exemption allowed, subject to all just exceptions and on the condition that the plaintiff will file typed copy of dim documents and English translation of documents within four weeks. The plaintiff will also file original documents/certified copies as and when directed by this Court.

CS(OS) No. 2606/08

Counsel for the plaintiff has drawn my attention to Chapter 23 in Private International Law by Paras Diwan. He has also drawn my attention to Judgment of a Division Bench of Allahabad High Court in Gaekwar Baroda State Railway Vs. Sheik Habib Ullah , wherein it has been observed that jurisdiction of a Court to entertain a suit against a foreigner or a person outside its territorial jurisdiction depends upon the local law/municipal law. Counsel for the plaintiff, in this context, relies upon Section 134(2) of the Trade Marks Act, 1999 and states that the Courts where the plaintiff carries on business have jurisdiction to entertain a suit for infringement. It is therefore submitted that this Court has jurisdiction to decide the present suit. Let the plaint be registered as a suit.

Issue summons to the defendants on the plaintiff taking steps within seven days by all modes prescribed under Order V, Rule 9 of the Code of Civil Procedure, 1908, for 26th February, 2009.

I.A. Nos. 15421/08

Issue notice in terms of the above order to the defendants for 26th February, 2009.

Counsel for the plaintiff relies upon decision of this Court in CS(OS) No. 1164/2001 titled Beiersdorf A.G. v. Ajay Sukhwani and Anr., decided on 14th November, 2208 and states that the plaintiffs have international presence and their goodwill extends all over the world. The details of total turnover, net profit etc. have been mentioned in the plaint. It is submitted that in case ex-parte stay is not granted, the plaintiff''s reputation and goodwill will suffer irreparable harm in India as well as all over the world. It is submitted that the adoption of the plaintiff''s mark by the defendants has created confusion. It is also submitted that that the reasoning given by administrative tribunal under WIPO does not take into account extensive transborder goodwill and reputation of the plaintiff and therefore needs to be protected. It is however pointed out that ICICI is a coined word and not a dictionary word and the adoption by the defendant No.1 is deliberate and intentional.

Counsel for the plaintiff further states that English translation of the website www.icicigroup.com is available and therefore confusion exists and is imminent.

In view of the averments made in the plaint and application, I feel that the plaintiff has been able to make out a case for grant of ex-parte injunction. Accordingly, defendant No.1 is restrained from using/operating the website www.icicigroup.com in English language or translated version in English language and is also restrained from transferring, alienating or selling the said website to any third party.

This interim order will continue till the next date of hearing. Defendant No.2 will ensure compliance of this Order. Compliance of Order XXXIX Rule 3 will be made within 5 days.

Dasti.