Delhi High Court: In an appeal filed by the appellant, i.e., IndiaMART Intermesh Ltd. assailing the judgment dated 3-1-2024, passed by Single Judge, the Division Judge Bench of Vibhu Bakhru* and Tara Vitasta Ganju, JJ., set aside the impugned order to the extent that it restrained IndiaMART from providing an option to use the ‘PUMA’ mark for the description of any goods as a search option in the drop-down menu presented to prospective sellers at the time of the registration on the IndiaMART platform. However, we sustain the direction that IndiaMART should forthwith take down all infringing listings containing the PUMA marks on the same being brought to its notice.
Background
The respondent, PUMA SE had filed the suit seeking a decree of permanent injunction restraining the a from using, facilitating, or offering to any third parties the trademark ‘PUMA’ as a brand suggestion/keyword/search term on its website or use the mark ‘PUMA’ in any manner which may amount to infringement of respondent’s registered trademarks and to restrain IndiaMART from passing off its goods and services as that of respondent. The respondent had also prayed for directions to be issued to IndiaMART to remove all listing for sale of its counterfeit products or uploading any product images of its trade marks without verification and due diligence.
In terms of the impugned judgment, the Single Judge had restrained the appellant from providing any of respondent’s registered trade mark including PUMA in respect of any goods as search option in the drop-down menu presented to prospective sellers at the time of their registration on their platform.
The controversy in the present case centres around the drop-down menu used by the appellant while registering sellers on its platform, IndiaMART. According to the respondent, the inclusion of PUMA as an option in the drop-down menu would amount to infringement of its trade mark, which was occasioned by the sellers listed on the platform displaying counterfeit products on the listing page.
Analysis, Law, and Decision
The Court noted that the Single Judge had proceeded on the basis that IndiaMART was an e-commerce site on which goods and services were bought and sold. However, the Court stated that this assumption was erroneous. IndiaMART was not an interactive website on which buyer could place purchase orders for supply by the supplier. It rendered listing services where buyers could get in touch with sellers and request for price and terms of supply online, which were transmitted electronically to the Seller. The Court stated that the negotiations and the transaction of sale and purchase of the products, was consummated between the purchaser and the seller directly and IndiaMART had no role to play in the said transaction.
The Court stated that in the present case, a seller could choose not to accept any of the options and type the specific description of its goods in the menu bar. It was not necessary for the seller to choose one of the options as provided by the IndiaMART in the drop-down menu. IndiaMART’s endeavour was merely to create sub-categories for the purpose of facilitating the search.
The Court stated that there was no dispute that the appellant was required to make “reasonable efforts” to cause sellers to not use, display or publish or transmit any information that infringed any patent, trade mark, copyright or other proprietary rights. The terms and conditions of use of IndiaMART expressly contained an agreement to the effect that users would not submit to the appellant for display on its website any content that contained fraudulent information or makes fraudulent offers that involve sale or attempted sale of counterfeit, stolen items or items whose sale or marketing is prohibited by applicable law, or otherwise promotes other illegal activities. Failure to adhere to the said user terms would entitle IndiaMART to terminate the User Agreement.
The Court stated that the fact that IndiaMART provided an option for a seller to choose the brand of its products specifically describing its goods could not, prima facie, be held to be a ground to hold that it aids and abets the infringer in displaying the counterfeit products of a particular brand. The Court stated that subject to IndiaMART making reasonable efforts, to cause users of IndiaMART not to host, display, upload or share any information that infringes the PUMA trade marks, IndiaMART was not required to be interdicted from providing options to identify the products/services by their brands/trade marks and operating its B2B portal, i.e. IndiaMART.
Thus, the Court set aside the impugned order to the extent that it restrained IndiaMART from providing an option to use the PUMA mark for the description of any goods as a search option in the drop-down menu presented to prospective sellers at the time of the registration on the IndiaMART platform. However, we sustain the direction that IndiaMART should forthwith take down all infringing listings containing the ‘PUMA’ marks on the same being brought to its notice.
[IndiaMART Intermesh Ltd. v. Puma SE, FAO(OS) (COMM) 6 of 2024, decided on 2-6-2024]
*Judgment authored by- Justice Vibhu Bakhru
Advocates who appeared in this case:
For the Appellant: Sandeep Sethi, Rajshekhar Rao, Senior Advocates with Sidharth Chopra, Nitin Sharma, Naman Tandon, Kuber Mahajan, Riya Kumar, Sumer Saeth and Harshil Wason, Advocates.
For the Respondent: Ranjan Narula, Shakti Priyan Nair and Parth Bajaj, Advocates.
