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Trademark Infringement Causing Financial Loss To Unsuspecting Members Of The Public Must Be Restrained: Delhi HC

Shvena Neendoor ,
  22 June 2022       Share Bookmark

Court :
High Court of Delhi at New Delhi
Brief :

Citation :
CS(COMM) 364/2022

Case title:
Amazon Seller Services Private Limited & Anr. Vs. Amazonbuys.in & Ors.

Date of Order:
26.05.2022

Bench:
Hon'ble Ms. Justice Jyoti Singh

Parties:
Plaintiff- Amazon Seller Services Pvt. Ltd and Anr.
Defendant- Amazonbuys.in and Ors.

SUBJECT

The Delhi High Court granted an ex-parte ad interim injunction to Amazon Seller Services Private Limited by restraining multiple rogue websites from making use of its signature trademark ‘AMAZON’ to mislead the public.

IMPORTANT PROVISIONS

  • Order XXXIX Rule 1, Code of Civil Procedure, 1908- This rule elucidates the various cases in which a temporary injunction may be granted to a party.
  • Order XXXIX Rule 2, Code of Civil Procedure, 1908:Injunction to restrain repetition or continuance of breach-The Plaintiff may, at any time after the commencement of the suit, apply to the court for a temporary injunction to restrain the Defendant from committing the breach of contract or injury complained of, or any breach of contract or injury of a like kind arising out of the same contract or relating to the same property or right.
  • Section 151, Code of Civil Procedure: Saving of inherent powers of Court- No section in the Code can limit or affect the inherent power of the Court to make necessary for the ends of justice or to prevent abuse of the processes of the Court.
  • Section 2(c),Indian Copyright Act, 1957- The section defines what constitutes an “artistic work” as per the Copyright Act.
  • Section 2(o), Indian Copyright Act, 1957- The section defines what literary content, graphical user interface, arrangement, color schemes etc. could constitute a “literary work” as per the Copyright Act.
  • Section 13, the Indian Copyright Act, 1957- This section elaborates on the types of works in which a copyright can subsist.
  • Section 2(1)(zg), The Trade Marks Act, 1999- The section defines a “well-known trade mark”, regarding any goods or services as one which has become so substantial to the public that those goods or services which exhibit said mark would be likely to make a connection in the course of trade or rendering of services between those goods or services in relation to the original.
  • Section 11(6), The Trade Marks Act, 1999- The section states that the registrar shall, while determining whether a trade mark is a well-known trade mark, take into account multiple which he considers relevant for determining a trade mark as a well-known trade mark, which is elucidated in this section.

OVERVIEW

  • In the present case, the Plaintiff, Amazon Sellers Services Private Limited operates and manages the largest Indian online marketplace www.amazon.in wherein lakhs of third-party sellers and buyers interact and conduct transactions online. Its affiliate, the second Plaintiff in this case, owns both the ‘AMAZON’ trademark and the copyright of the ‘AMAZON’ logos which are artistic works under Section 2(c) of the Copyright Act, 1957.Plaintiff 2 has licensed its trademarks and copyrights to Plaintiff 1.
  • The Defendants in this case, amazonbuys.in and multiple other rogue platforms were alleged to have made use of the trademark ‘AMAZON’, including its logos to replicate the Plaintiffs’ businesses and redirect their activities to the rogue sites, causing financial loss to unsuspecting members of the general public.

ISSUES RAISED

  1. Whether the Defendants have committed trademark and copyright infringement against Amazon Sellers Services Pvt. Ltd. and its affiliate?
  2. Whether Amazon Sellers Pvt. Ltd. made out a prima facie case for an ex-parte ad interim injunction against the Defendants?

ARGUMENTS ADVANCED BY THE APPELLANT

  • It was submitted that Plaintiff1 is the authorized user and licensee of the registered trademarks whose proprietor is Plaintiff 2 and has been extensively using ‘AMAZON’ for every mode of correspondence since its inception.The Plaintiffs are the bona fide prior adopters,continuous and uninterrupted users and registered proprietors of the Amazon trademarks both globally and in India.
  • It was argued that since the Plaintiffs’ marks have achieved a status of well-known marks as per Sections 2(1)(zg), 11(6) and 11(7) of the Trade Marks Act, 1999, the Plaintiffs should be able to enjoy both statutory rights under the Trade Marks Act, 1999 and also common law rights arising from the goodwill and reputation associated with their Marks. Hence, the Plaintiffs’ Marks must be entitled to protection against any kind of misappropriation.
  • Therefore, the Plaintiffs submitted that the unauthorized use of the Plaintiffs’ Marks or any other deceptive variant thereof, with respect to any goods or services whatsoever, must constitute an infringement of the Plaintiffs’ statutory and common law rights.
  • Furthermore, the logos in question constitute an original artistic work within the definition of Section 2(c) of the Copyright Act, 1957 and is consequently entitled to copyright protection under Section 13 of the Copyright Act, 1957.
  • The Plaintiffs argued that Defendants 1 to 3 are the Rogue Defendants who engaged in a pre-planned conspiracy to defraud the public by unauthorizedly and illegally using the Plaintiffs’ Marks, either on their websites and social media pages or as part of the domain name registered by them and they blatantly reproduced the Plaintiffs’ Website Content as well as adopted a look and feel identical to the Plaintiffs’ website ‘www.amazon.in’.
  • It was averred that the Defendants did soto swindle money from the general public on the pretext that such monies were being collected as part of the registration process for setting upan ‘Amazon Easy Store’ in the name of the Plaintiffs.
  • It was further argued that there was a huge likelihood that the actual and potential victims would be further induced into believing that the Rogue Defendants have a connection or association with the Plaintiffs and that the aforesaid fraudulent activity was being perpetuated by the Plaintiffs, thereby tarnishing their reputation.
  • Furthermore, the Plaintiffs submitted that due to the nature of the Internet, the Rogue domains are accessible globally, including within India, which falls within the territorial jurisdiction of the Court. Hence, any such use by the Rogue Defendants must amount to infringement of the exclusive rights owned by the Plaintiffs within the purview of the Trademarks Act, 1999.
  • The Plaintiffs further submitted that the Defendants grossly misrepresented to the public, a connection or affiliation with the Plaintiffs. The degree of misrepresentation was so high that the website of Defendant 1 provided Plaintiff 1’s address as its own.
  • Finally, it was argued that the activities of the Rogue Defendants would undoubtedly result in the diminishing of the distinctiveness of Plaintiffs’ Marks from serving their basic purpose. Hence, the Rogue Defendants’ above mentioned activities have led to a dilution by blurring as well as tarnishing of reputation.

ARGUMENTS ADVANCED BY THE RESPONDENT

  • The Defendants submitted that there was only one account with respect to which details were being sought by the Plaintiffs and iterated that the Defendants would comply with whatever directions were passed by the Court in this regard.

JUDGEMENT ANALYSIS

  • The court perused multiple documents on record including the home page of the Plaintiffs highlighting their website by the Rogue Defendants; the website of the Rogue Defendants using the address of the Plaintiffs; screenshots of the emails received from one of the complainants and the actual money deposited by the said complainant; registration form, legal notice issued by the complainant to the Plaintiffs and much more when coming to their decision.
  • The court was of the view that the Plaintiffs did indeed make out a prima facie case for the grant of an ex-partead-interim injunction.
  • The court stated that the balance of convenience would lie in favor of the Plaintiffs and they were likely to suffer irreparable harm in case the injunction was not granted. Furthermore, the court agrees that the activities of the RogueDefendants were leading to a financial loss to the innocent and unsuspecting members of the public.
  • Accordingly, the court directed the Defendants to refrain from using the Plaintiffs’ trademarks or any other deceptively similar mark, directly or indirectly, and to refrain from using Plaintiffs’ copyright-protected artistic works.
  • They were further ordered to suspend their fake accounts, freeze the bank accounts collecting money fraudulently, and block access to the infringing websites.

CONCLUSION

The court granted the ex-parte ad interim injunction to the plaintiffs on account of them making out a prima facie case of infringement into their trademark and copyrights. It also directed both the Ministry of Department of Telecommunications and the Ministry of Electronics and Information Technology to issue notifications directing internet and telecom service providers to block access to the Rogue Defendants’ domains as identified by the Plaintiffs in the plaint. It held that activities leading to a financial loss to the innocent and unsuspecting members of the public must be restrained.

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