In the matter of Swami Ramdev & Anr. v. Facebook, Inc. & Ors. [CS (OS) 27/2019], the Delhi High Court, vide its order dated October 23, 2019, issued an interim injunction directing Facebook, Google, YouTube, Twitter and others to take down defamatory content globally, pending final disposal of the suit. The order goes beyond the conventional form of ‘geo-blocking’, wherein removal of URLs is limited to particular geographic locations, and allows blocking of offending URLs on a global scale, giving the injunction international effect.  

The instant suit was filed by the Plaintiffs seeking removal of alleged defamatory online content based on the book “Godman to Tycoon: The Untold Story of Baba Ramdev”. The Plaintiffs had earlier obtained an injunction against publication, distribution and sale of the book without deletion of the offending portions, and now sought an injunction directing the Defendants to remove the offending URLs and weblinks from their platforms across the world.

Although the Defendants agreed to block the offending URLs and weblinks within India, the Plaintiffs contended that this would be ineffective as the URLs could still be accessed in India through VPNs and other online mechanisms. The Defendants countered that a global blocking order would be beyond the Court’s territorial jurisdiction. The Defendants further contended that each jurisdiction has its own unique laws, and a global injunction may make the Defendants liable for violating the freedom of speech in certain jurisdictions.

The Court interpreted section 79(3)(b) of the Information Technology Act, 2000, which provides that the intermediaries have a duty to “expeditiously remove or disable access” to the offending material “on that resource”. The Court interpreted “that resource” to mean a “computer resource” which “encompasses within itself a computer network” and held that “…if an information or data has been uploaded on a computer network, the platforms would be bound to remove it and disable it from that computer network completely”. The Court accordingly issued a global injunction, holding that “so long as the uploading from India led to the data or information residing in the network or being connected to the network, the same ought to be disabled or blocked globally. Any other interpretation of Section 79 would result in reducing the efficacy of the provision which equates the computer resource which initially created the information and the resource from where it is to be disabled or removed”.

In the matter of Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr.[W.P.(C) 3851/2019], the Delhi High Court, vide its judgment dated October 16, 2019, held that the Registrar of Trade Marks is obligated to record the grounds for refusal/conditional acceptance of a trademark application as well as the material used by him in arriving at his decision, and to communicate the same in writing to the Applicant, under Section 18(5) of the Trade Marks Act, 1999.

The instant Writ Petition had been filed as the Petitioner was aggrieved by the non-speaking orders passed by the Registrar of Trade Marks while refusing certain trademark applications. The Petitioner submitted that the Registrar had failed to comply with the statutory requirements of Section 18(5) by not communicating to the Applicant any grounds for refusal of the applications.

It was further submitted by the Petitioner that Rule 36 of the Trade Marks Rules, 2017, which provides that the Applicant may request the Registrar (within thirty days of receipt of the decision of refusal/conditional acceptance) to state in writing the grounds for the decision as well as the materials used therefor, is inconsistent with the mandatory provision of Section 18(5) of the Trade Marks Act, insofar as it provides for sending the copy of the order to the applicant without the grounds for the decision.

The Court perused the submissions of the Petitioner and observed that “…the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.” Allowing the instant writ petition, the Court further heldthat “the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

In the civil suit titled Amrish Agarwal v. M/S Venus Home Appliances Pvt. Ltd., [CM (M) 1059/2018] the Delhi High Court (Singh, J.) has, vide its order dated 2019.08.27, issued practice directions in relation to the documents that must be filed along with a plaint alleging trademark infringement. 

The Plaintiff filed a suit plaint alleging infringement of the mark ‘VENUS’. Alongwith the plaint, Plaintiff had only filed a copy of the trademark renewal certificate issued by the Trade Marks Registry. 

The Defendant, Amrish Agarwal, challenged the Trial Court’s order taking on record the Legal Proceedings Certificate (LPC) filed by the Plaintiff only at the final stage of arguments. The Trial Court order was after the conclusion of the evidence stage. 

The High Court observed that in a trademark infringement matter, the Trial Court ought to be able to see the mark right when the suit plaint is filed. The High Court further observed that while it is true that trademark registration is a matter of record and that the registration can be accessed by visiting the Trade Marks Registry’s website, in order for the Court to consider the registration, documentary evidence in the form of either the trademark registration along with the journal extracts or the LPC ought to be placed on record as a suit document along with the plaint itself. Seamless connectivity with the Trade Marks Registry for evidentiary purposes is clearly only aspirational for the Court system. 

The High Court permitted the LPC to be taken on record even at a belated stage in the interest of justice but made it subject to payment of R.50,000 as costs to the Defendant. The High Court did, however, make clear that the Plaintiff should have filed the trademark registration certificate at the initial stage itself.

The High Court further directed that  LPC of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc. must be filed along with the plaint in a trademark infringement matter. 

In case the LPC is not available at the time of filing of the suit and the Plaintiff is seeking urgent orders of injunction then the Plaintiff must furnish a copy of the trade mark registration certificates, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. The Plaintiff should also make an averment in the suit plaint pleading that the LPC has been applied for. Additionally, specific averments that there are no disclaimers imposed on the mark and that the mark stands renewed, must also be made. Any licences and assignments for the mark must also be specifically pleaded.

Further, the LPC must be filed prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side.

The High Court also observed that as registration of trademarks is easily verifiable from the public records, parties should not be allowed to deny the factum of registration unless they have sufficient cause to do so. 

The High Court directed the Registrar General of the Court to communicate this order to the District judges, particularly the judicial officers of the Commercial Courts as well as to the Trade Marks Registry.  

The High Court has also directed the Registry to ensure that when one applies for LPC, the same is to be issued without delay and in any case within a period of 30 days. It is to be noted that the Trade Marks Act, 1999 and the Trade Marks Rules, 2017 do not specify a time limit within which the LPC is to be issued by the Registry. This judgement therefore fills a lacuna until an amendment of the statutes takes place.

In the matter of Flipkart Internet Private Limited v. Somasundaram Ramkumar [C.S.No.848 of 2017], the Madras High Court in its Order dated September 13, 2019, granted a permanent injunction in favour of the Plaintiff, restraining the Defendant from using the trademark FLIPPINGKART.

The Plaintiff is an e-commerce company operating through the website www.flipkart.com. The Plaintiff is the registered proprietor of the trademarks FLIPKART, FLIPCART and FLIPKART.COM in classes 02, 03, 05, 06, 07, 10, 12, 14, 15, 16, 18, 20, 21, 26, 35, 38, 41, 42 & 45. The Plaintiff also claims ownership of copyright in the artistic works as set out below –

It was the Plaintiff’s case that that Defendant had unauthorizedly registered a website www.FlippingKart.com in May 2017 to encash upon the reputation and goodwill earned by the Plaintiff amongst the general public in its prior registered trademark “FLIPKART”, and with the intent of passing off its goods and services as that of the Plaintiff. Further, the Defendant also filed an application for registration of the trademark FLIPPINGKART in CLASS 38.  The Plaintiff alleged that the Defendant’s usage of the FLIPPINGKART amounted to infringement and passing off if its trademark FLIPKART.  

In its ex-parte judgement, the Court was of the view that “the Defendant had adopted the registered trademark of the Plaintiff only with a mala fide intention to spoil the immense goodwill and reputation earned by the Plaintiff among the consumers/general public and therefore, the same would not only amounts to infringement of the Plaintiff’s registered trademark, “FLIPKART”, but also it would amounts to passing off their goods or business or services as those of Plaintiff.”  The court also allowed the Plaintiff’s prayer to declare its trademark FLIPKART as a well-known trade mark.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

In the matter of The Chartered Institute of Taxation vs. Institute of Chartered Tax Advisers of India Ltd. [CS(COMM) No. 448/2019], the Delhi High Court vide its order dated August 22, 2019, dismissed The Chartered Institute of Taxation’s (hereinafter ‘CIT’) plaint seeking permanent injunction, damages and declaration for groundless threats under Section 142 of Trade Marks Act, 1999. The relief was sought against, inter alia,the Defendant’s opposition against CIT’s trademark application, allegedly filed on frivolous, misleading and concocted grounds. The Court held that the Defendant could not be injuncted from filing oppositions, as that would impede the Defendant’s access to justice.

CIT is a professional body based in the UK that offers two renowned professional taxation qualifications viz. “Advanced Diploma in International Taxation” (hereinafter ‘ADIT’) and “Chartered Tax Adviser” (hereinafter ‘CTA’). The Defendant, viz. the Institute of Chartered Tax Advisers of India Ltd. (hereinafter ‘ICTAIL’) owns registrations for the marks ‘CTA (Logo)’ and ‘CHARTERED TAX ADVISER’ in India. On the basis of these marks, ICTAIL had opposed CIT’s application for the mark ADIT in class 41.

In the opposition, ICTAIL also alleged (inter alia) that the Plaintiff’s use of the mark ADIT would amount to passing off and infringement of ICTAIL’s device mark for CTA. CIT argued that in view of the evident dissimilarity between the marks, ICTAIL’s opposition was baseless and meritless, thereby constituting a “groundless threat” under Section 142.

The Court, while dismissing the plaint, held that “that anyone having a right that is a legally protected interest and complaining of its infringement and seeking relief through Court, must have an uninhindered, uninterrupted access to law Courts and that Courts ordinarily will not impede access to Courts”. The Court also clarified that Section 142 provides a remedy against mischievous acts by means of circulars, advertisements or otherwise, threatening a person with an action for infringement of trademarks. It was held that “…oppositions filed in statutory proceedings cannot be equated with circulars or advertisement…The intent of the legislature in drafting Section 142…appears to be, to provide remedy against a person, who without instituting legal proceedings, metes out threats of legal proceedings…The Scheme of the Section is, that adjudication of rights asserted should be through legal proceedings and not in public arena”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.