{"id":219296,"date":"2019-09-09T13:29:15","date_gmt":"2019-09-09T07:59:15","guid":{"rendered":"https:\/\/www.scconline.com\/blog\/?p=219296"},"modified":"2019-09-11T12:56:29","modified_gmt":"2019-09-11T07:26:29","slug":"del-hc-facebook-instagram-directed-to-pull-down-posts-violating-trademark-da-milano-in-terms-of-it-intermediary-guidelines-rules-2011","status":"publish","type":"post","link":"https:\/\/www.scconline.com\/blog\/post\/2019\/09\/09\/del-hc-facebook-instagram-directed-to-pull-down-posts-violating-trademark-da-milano-in-terms-of-it-intermediary-guidelines-rules-2011\/","title":{"rendered":"Del HC | Facebook, Instagram directed to pull down posts violating trademark \u2018DA MILANO\u2019 in terms of IT (Intermediary Guidelines) Rules, 2011"},"content":{"rendered":"

Delhi High Court: <\/strong>Pratibha M. Singh, J. while addressing a petition concerning the protection of the trademark \u2018DA MILANO\u2019, issued certain guidelines for the online intermediaries involved and held as follows:<\/p>\n

\u201cRole of Facebook and Instagram, insofar as posts put up by concerned third parties is governed by the Information Technology (Intermediaries Guidelines) Rules, 2011. Considering the provisions of the stated guidelines, online platforms which claim to be intermediaries not performing any active role in the posting of such information by 3rd<\/sup> party alleged infringers, have a duty only to take down the posts which are brought to their notice by plaintiff in terms of Section 79(3).<\/em><\/p>\n

The above-mentioned guidelines along with Section 79(3) of the IT Act have been interpreted by a very significant Supreme Court case of Shreya Singhal v. Union of India, <\/em>(2015) 5 SCC 1<\/a>, \u201cto mean that “any information received by the platforms would be by means of a Court order\u201d.<\/p>\n

In Shreya Singhal case<\/em>, pertaining to Section 79 (3)(b), following was held which is relevant in respect to the present matter:<\/p>\n

\u201cSection 79(3)(b) has to be read down to mean that the intermediary upon receiving actual knowledge that a court order has been passed asking it to expeditiously remove or disable access to certain material must then fail to expeditiously remove or disable access to that material. This is for the reason that otherwise it would be very difficult for intermediaries like Google, Facebook, etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not.\u201d<\/strong><\/p>\n

The facts in the present case are that the plaintiff who claims to be the owner of \u2018DA MILANO\u2019 filed a suit against the Defendants 1 to 4 in respect to seek permanent injunction, restraining infringement of trademark and passing off and under Section 74 of IT Act, 2000 seeking protection of the trademark \u2018DA MILANO\u2019.<\/p>\n

It has been further stated that, Defendants 1 to 4 are alleged infringers who have posted on \u201cFacebook\u201d and \u201cInstagram\u201d advertising and offering to sell products bearing the mark \u2018DA MILANO\u2019. Plaintiff while seeking a permanent injunction against infringers impleaded the stated online platforms to ensure that posts comprising the infringing marks are taken down.<\/p>\n

Trial Court, had sought the personal appearance of Facebook and Instagram in the present matter. Therefore, the grievance was the direction of personal appearance of the representatives of Facebook and Instagram.<\/p>\n

Senior Counsel, Parag Tripathi, submitted that his clients are willing to comply with interim order which has already been passed and since the said defendants are not contesting the matter on merits against the plaintiff and are merely intermediaries; their personal presence is not required.<\/p>\n

High Court on perusal of the facts and the guidelines mentioned above along with relying on the Supreme Court case of Shreya Singhal v. Union of India, <\/em>(2015) 5 SCC 1<\/a>, agreed on the fact that the stated platforms are mere intermediaries and have no active role in the matter, which therefore demands no personal appearance. Further, the following directions were issued:<\/p>\n