Delhi High Court: In a suit filed by Eastern Book Company (‘EBC’), seeking urgent interim relief against sale of counterfeit copies of its books, and ex-parte appointment of Local Commissioners, Sanjeev Narula, J. restrained the defendants from manufacturing, publishing, offering for sale, advertising, using, exporting, printing, directly or indirectly selling or dealing in products, including, but not limited to books under the trade marks ‘EBC’ and ‘Eastern Book Company’.
Further, the Court appointed Local Commissioners (‘Commissioners’) to enter the premises of book houses or any other locations, along with a representative of EBC and their counsel, and seize the counterfeit materials.
Background:
EBC is the leading publisher of legal textbooks, commentaries, and law reports authored by legal luminaries, under the trade marks ‘Eastern Book Company’ and ‘EBC’. This case was concerned with the violation of EBC’s intellectual property rights through the sale of pirated/counterfeit books sold under its mark/name by various book houses, namely, Wave Choice Cover, Lawbook hub, Top Book, Fancy Shopping World, Book House, Turning point, Manika Creation, Devi Enterprises, Parents Responsibility, Simra Collection, Renu Devi, Chapter One Publication, Rajesh Ranjan Pandey, Shivam Kumar, Books 123, Suman, Bookestan, on the e-commerce platforms operated by Amazon, and Flipkart and Snapdeal.
In February 2024, EBC started receiving multiple consumer complaints concerning the quality of the publications purchased through Amazon, Flipkart and Snapdeal. Further, enquiries revealed that certain book houses are manufacturing and selling pirated versions of their textbooks through the e-commerce platforms.
Analysis and Decision:
The Court noted that the books sold by EBC are uniquely identified by the hologram stickers affixed on the covers of the book and the International Standard Book Number and International Standard Serial Number issued for publications and serial publications, respectively. EBC has also developed a website ‘www.ebcwebstore.com’ for the sole purpose of sale of books.
The Court further noted that the trade marks, and their formative variants are registered in favour of EBC in classes 09, 16, 35, 41, and 42. In addition to their trade mark rights, EBC also asserts exclusive ownership of the copyright over the literary works entailed in the books published by them.
The Court said that the counterfeit versions offered by the book houses are nearly identical to the original books, except for minor differences that may go unnoticed by the consumers.
The Court also considered some of the major differences between the original and counterfeit books and took note of the search results of ‘EBC books’ on Snapdeal, Amazon and Flipkart and the images of the counterfeit books.
The Court said that EBC has the exclusive right to publish the afore-mentioned textbooks, and the book houses have no authority to either publish or reprint the same without EBC’s consent. Further, the Court said that, as these books do not originate from EBC, they may also contain incorrect or outdated information, which could damage EBC’s well-established reputation. After noting that the book houses have entirely replicated the make and design of the EBC’s books , the Court said that the consumers purchasing the infringing books through online modes will be unable to identify the points of distinction, which would typically manifest in physical copies of the books.
The Court noted that the book houses are also prima facie using EBC’s registered trade marks on their products without EBC’s approval, resulting in infringement of their trade marks, and remarked that “these activities can possibly cause financial losses to EBC and damage their reputation and goodwill. Thus, it is a clear case of trade mark and copyright infringement”.
Thus, the Court was convinced that EBC has fulfilled all the three conditions for the grant of an ex-parte injunction, which are:
- prima facie case;
- an irreparable loss in case an ex-parte ad-interim injunction is not granted;
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balance of convenience lies in EBC’s favour
The Court gave the following directions:
- The book houses restrained from manufacturing, publishing, offering for sale, advertising, using, exporting, printing, directly or indirectly selling or dealing in products, including, but not limited to books under the trade marks ‘EBC’ and ‘Eastern Book Company’ or any other work which may be identical to, or deceptively similar with, or derived from, or be an imitation of EBC’s registered trade marks or their trade dress/ label/ logo/ packaging/ get-up or be a colourable imitation and/ or a substantial reproduction of ‘EBC’ and ‘Eastern Book Company’ labels/ packaging/ logos that may amount to infringement and passing off of EBC’s registered trade marks and copyright.
- Amazon, Flipkart and Snapdeal directed to block the listings of counterfeit/ infringing products published by the book houses on their e-commerce portals that infringe EBC’s trade marks and copyright.
- In case EBC discovers any other listings of counterfeit books, it was directed to identify the URLs and share the same with Amazon, Flipkart and Snapdeal, who were further directed to takedown/ block the listings, in accordance with law.
- In the event Amazon, Flipkart and Snapdeal were to conclude that the listings supplied by EBC are not identical to the content that has been injuncted they shall inform EBC of the same, within a period of one week from the date of receipt of the request, where after EBC shall be free to take recourse to appropriate measures available under law.
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Amazon, Flipkart and Snapdeal directed to provide the addresses/ location of premises/ stores/ warehouses/ godowns of the book houses where the impugned counterfeit products are stored, to EBC, within one week from the date of this order.
The Court further noted that Snapdeal, Amazon and Flipkart are likely to have copies of the counterfeit/ pirated books in their warehouses, which would be shipped to the customers to ensure a faster delivery of the products purchased from their website.
Thus, the Court directed the e-commerce platforms to make a full disclosure regarding the source of counterfeit versions of the books published by EBC which are in their possession and surrender the counterfeit copies of the books to EBC. The Court also restrained them from releasing any payments from such sale to the book houses.
Concerning the appointment of the Commissioners, the Court said that to preserve the evidence of infringement, it is necessary that Commissioners are appointed to visit the premises of the book houses. Thus, the Court appointed the Commissioners and permitted them along with a representative of EBC and their counsel, to enter upon the premises of the book houses mentioned above or any other location/ premises.
The Court directed the Commissioners to conduct a search at the book houses and seize the infringing products bearing EBC’s registered trade marks or containing contents identical or deceptively similar to EBC’s books, books without hologram, packaging, labels, printing material and other material that reflect infringement of copyright and trade mark.
The Court further directed that after seizing the infringing materials, the same should be inventoried, sealed, and signed by the Commissioners, in the presence of the parties, and released on superdari to EBC on their undertaking to produce the same, as and when further directions are issued in this regard. The Commissioners were permitted to make copies of the books of accounts including ledgers, cash registers, stock registers. invoices. books, etc. insofar as they pertain to the infringing products. Further, the Commissioners were permitted to undertake/arrange for photography/videography of the execution of the commission.
Furthermore, the Court permitted the Commissioners to break open the locks if the premises are found to be locked. The SHO of the local police station was directed to render all assistance and protection to the Commissioners, if and when sought.
Lastly, the Commissioners were directed to file their reports within four weeks from the date of execution of the commission.
IAs in which directions were issued.
[EBC Publishing Pvt. Ltd. v. Parents Responsibility, 2024 SCC OnLine Del 5675, decided on: 24-05-2024]
[EBC Publishing Pvt. Ltd. v. Wave Choice Cover, 2024 SCC OnLine Del 5677, decided on: 24-05-2024]
[EBC Publishing Pvt. Ltd. v. Book House, 2024 SCC OnLine Del 5676, decided on: 24-05-2024]
Advocates who appeared in this case :
For the plaintiffs: Jayant Mehta, Senior Advocate, Samar Singh Kachwaha, Raghvendra Mohan Bajaj, Garima Bajaj, Kanav Agarwal, Agnish Aditya, Kumar Karan, Shagun Agarwal, Shivansh Dwivedi, Dushyant Kishan Kaul, Advocates
