Summary
This dispute involves Iconic IP Interests LLC’s “JOLLY RANCHER” mark and Shiv Textiles’ registration for “JOLLY RANGER LEGWEAR”. The Gujarat High Court found that no part of the cause of action arose in India, as the foreign-marked goods were only available on Amazon USA. The court therefore quashed the lower court’s order, and rejected the plaint.
In a recent ruling dated May 9, 2025, the High Court of Gujarat allowed a writ petition filed by Iconic IP Interests LLC, quashing an order of the trial court that had rejected an application under Order VII Rule 11 of the Code of Civil Procedure, 1908. The case involves a trademark dispute where M/S Shiv Textiles had sued Iconic IP Interests LLC for infringement, but the High Court held that no cause of action arose in India, as Iconic’s goods were sold through a U.S.-based website without targeting Indian consumers.
Background
Iconic IP Interests LLC (hereinafter “Iconic”), a Delaware-based limited liability corporation and subsidiary of Highlander Partners L.P., obtained registration over the trademark “JOLLY RANCHER” and its variations in India. Iconic then licensed these marks worldwide, including to Hershey Chocolate & Confectionery Corporation (hereinafter “Hershey”), for use in confectionery, clothing, and other products. Iconic holds valid registrations in India under Class 30, with use dating back decades globally, including in India.
M/S Shiv Textiles (hereinafter “Shiv Textiles”), an Indian entity, adopted the mark “JOLLY RANGER LEGWEAR” for jeans and pants in Class 25, obtaining registration No. 4075126 on February 2, 2019, based on claimed use from January 1, 2019. Iconic discovered this mark in March 2023 during a routine search of the Trade Marks Registry records. Following investigations, Iconic sent a cease-and-desist notice to Shiv Textiles on April 28, 2023, alleging infringement and demanding cessation of use. Shiv Textiles replied on May 8, 2023, asserting that “JOLLY” is a common term and that they had been honestly using the marks since 2019.
Iconic then sent further notices. Iconic claimed that instead of responding to the final notice, Shiv Textiles filed a Commercial Trade Mark Suit No. 1 of 2023 before the District Court at Bhavnagar on an unspecified date in 2023, seeking injunctions against Iconic for alleged infringement and passing off.
Iconic, along with Hershey, countered by filing a suit before the Delhi High Court (CS (COMM) 870/2023) for infringement and passing off, and a cancellation petition under Section 57 of the Trade Marks Act, 1999, against Shiv Textiles’ registration.
Iconic also applied for registration of “JOLLY RANCHER” in Class 25 on January 3, 2024. In the Bhavnagar suit, Iconic filed an application under Order VII Rule 11 CPC to reject the plaint, which the trial court dismissed on November 22, 2024, leading Iconic to file the present writ petition under Article 227 of the Constitution of India before the High Court of Gujarat.
Issues before the Court
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- Whether the plaint filed by Shiv Textiles disclosed a valid cause of action for trademark infringement under the Trade Marks Act, 1999, particularly in light of Iconic’s notices and registration application.
- Whether the suit was barred by law due to suppression of material facts, non-joinder of necessary parties (such as Hershey), and lack of territorial jurisdiction, warranting rejection under Order VII Rule 11 CPC.
- Whether Iconic’s use of the “JOLLY RANCHER” mark through a U.S.-based website constituted purposeful availment of Indian jurisdiction, giving rise to a cause of action in India.
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Iconic Arguments (pun intended)
Iconic contended that Shiv Textiles’ plaint failed to disclose a cause of action, as it lacked any specific act by Iconic causing harm in India, emphasizing that material facts necessary for a complete cause of action were absent. Iconic also argued that Shiv Textiles suppressed prior knowledge of Iconic’s statutory rights in “JOLLY RANCHER,” which were publicly accessible and predated Shiv Textiles’ 2019 adoption by decades, rendering the suit an abuse of process through clever drafting and illusory claims.
Iconic asserted that courts must scrutinize the suppression of adverse facts. Iconic maintained that its goods were not manufactured or sold in India, only available via a U.S.-registered Amazon website, without targeting Indian consumers, thus no cause of action arose under Indian jurisdiction as was sufficiently clarified in the case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy (2009 SCC OnLine Del 3780) on purposeful availment in online transactions.
Shiv Textile’s Arguments
Shiv Textiles argued that a cause of action arose from Iconic’s April 28, 2023, notice alleging infringement, which informed them of Iconic’s similar “JOLLY RANCHER” mark, and the subsequent notices sent by Iconic, which created a continuous threat.
Shiv Textiles contended that Iconic’s opposition to their Class 25 registration and ongoing use of the mark constituted recurring infringement, justifying the suit.
Court’s Observations and Analysis
The High Court observed that the core issue was whether Shiv Textiles’ plaint disclosed a cause of action for infringement, focusing solely on the plaint and documents as per settled law. The court noted that Iconic’s notices and registration application did not inherently create a cause of action for suit, especially when alternative remedies like opposition proceedings existed under the Trade Marks Act, 1999.
On the question of cause of action, the court found no evidence of Iconic manufacturing or selling goods in India; sales occurred via a U.S.-based Amazon website with a U.S.-registered mark, lacking purposeful targeting of Indian consumers.
Relying on the decision in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy (2009 SCC OnLine Del 3780), the court noted that for online transactions to confer jurisdiction, the defendant must enter real commercial deals specifically aimed at the forum’s users, causing harm. This criterion was not met here, as Shiv Textiles failed to prove targeted intent.
Conclusion
The High Court allowed the writ petition, quashing the trial court’s order dated November 22, 2024, and rejected Shiv Textiles’ plaint under Order VII Rule 11(a) of the Code of Civil Procedure, 1908, on grounds of no disclosed cause of action. No injunctions, damages, or costs were awarded in this proceeding, but the decision effectively terminated the Bhavnagar suit without prejudice to other ongoing matters, such as the Delhi High Court suit or cancellation petition.
Citation: Iconic IP Interests LLC v. M/S Shiv Textiles, R/Special Civil Application No. 1543 of 2025 (High Ct. of Gujarat May 9, 2025). Available on https://indiankanoon.org/doc/110378362/
