Case BriefsHigh Courts

Delhi High Court: Pratibha M. Singh, J. while addressing a petition concerning the protection of the trademark ‘DA MILANO’, issued certain guidelines for the online intermediaries involved and held as follows:

“Role 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 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).

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, (2015) 5 SCC 1, “to mean that “any information received by the platforms would be by means of a Court order”.

In Shreya Singhal case, pertaining to Section 79 (3)(b), following was held which is relevant in respect to the present matter:

“Section 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.”

The facts in the present case are that the plaintiff who claims to be the owner of ‘DA MILANO’ 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 ‘DA MILANO’.

It has been further stated that, Defendants 1 to 4 are alleged infringers who have posted on “Facebook” and “Instagram” advertising and offering to sell products bearing the mark ‘DA MILANO’. Plaintiff while seeking a permanent injunction against infringers impleaded the stated online platforms to ensure that posts comprising the infringing marks are taken down.

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.

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.

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, (2015) 5 SCC 1, 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:

  • Plaintiff shall inform Instagram and Facebook whenever they came across use of the mark ‘DA MILANO’ either in word form, logo or in any other form on their platforms.
  • Once such information is received, as per Rule 3(4) of the 2011 Guidelines, the said posts shall be taken down, within the timelines prescribed.
  • If platforms have any doubt as to the violative or offending nature of posts, they shall intimate the plaintiff.
  • Upon any order being passed by a Court of competent jurisdiction, the same shall be intimidated to the platform, which shall abide by the said order.

Thus, the suit is decreed against Facebook and Instagram in the above terms. [Facebook Inc. v. Surinder Malik, 2019 SCC OnLine Del 9887, decided on 28-08-2019]

Case BriefsHigh Courts

Madhya Pradesh High Court: Prakash Shrivastava, J., dismissed the revision petition filed by the respondents under Section 115 CPC where they challenged the order of the Trial Court, whereby their application for rejection of plaint under Order 7 Rule 11 CPC was rejected.

The respondents had filed the suit for declaration and permanent injunction, wherein the petitioners had filed the application for rejection of plaint which has been dismissed by the impugned order. The petitioner argued that he was carrying his business on the suit property and earlier had filed a writ petition before the High Court. The Court issued directions relating to map and permission to construct Pakka shop and for non-compliance of the said contempt was also filed, therefore, the present suit was not maintainable and the trial court had committed an error in rejecting the application under Order 7 Rule 11 CPC.

The respondent submitted that post the passing of the order in Writ Petition and Contempt Petition, a lot of development has taken place and the order of the Trial Court does not suffer from any error.

The Court held that the plaint can be rejected under Order 7 Rule 11 CPC if the defendant is able to point out that any of the grounds which are mentioned in Rule 11 exists on the basis of the plaint averment. The petitioners could not point that there is any bar in entertaining the suit before the Trial Court. Merely on the basis of the order in the writ petition and in the contempt petition the plaint cannot be rejected on the ground that it does not disclose any cause of action, when otherwise in the plaint cause of action has been disclosed. The Trial court had rightly taken note of the fact that the materials on which the petitioners were placing reliance upon cannot be considered for rejection of plaint under Order 7 Rule 11 CPC. There was no illegality in the order passed by the Trial Court and the revision petition was found to be devoid of any merit and was dismissed. [Purshottam v. Murlidhar, 2019 SCC OnLine MP 2099, decided on 22-08-2019]

Case BriefsHigh Courts

Orissa High Court: Dr A.K. Rath J., quashed the order passed by Civil Judge (Junior Division) and order by Tahsildar due to fraudulent practices of the parties in a consolidation matter.

In the present case, a plot of land came into the purview of consolidation operation, wherein the Opposite Party 1 filed a consolidation revision before the Commissioner. The Commissioner had remanded the matter to the Consolidation Officer for effecting a compromise. The Opposite Party 2 had filed a compromise petition along with a trace map for partition and the Consolidation Officer had allotted 1/3rd of land to each in accordance with the trace map. The Opposite Party 2 had filed another application before the Tahsildar for the conversion of the agricultural land into a homestead.

Senior Advocate, Rajat Kumar Rath and Advocate, Sandipani Nayak representing the petitioners, submitted before the High Court that the trace map which was submitted by the Opposite Party 1 was a fraudulent copy. He put forth that the copy was forged and was an imaginary vertical sketch map; therefore the orders passed by the respective authorities were based on fabricated factual scenarios. The Senior Advocate also placed reliance on two apex court decisions which were discussed by the High Court in its order.

The Advocate representing the Opposite Party 1, Bikram Rath submitted that they were constrained in filing for a permanent injunction due to the disturbed possession in the land by the Opposite Party 2.

The High Court, before delving into the matter, discussed the two apex court decision in order to distinguish between when proceedings shall be considered “collusive and fraudulent”. It stated that in Nagubai Ammal v. B. Shama Rao, AIR 1956 SC 593, the apex court had come to a decision that in “collusive proceedings the combat is a mere sham, in a fraudulent suit it is real and earnest.” Thus stating that in collusive proceedings the claim is fictitious in nature whereas, in a fraudulent suit, the claim is untrue. Placing reliance to another two Supreme Court decisions it stated that both in S.P. Chengalvaraya Naidu v. Jagannath, (1994) 1 SCC 1 and Badami v. Bhali, (2012) 11 SCC 574, the Apex Court had stated that a judgment obtained by fraudulent means should be treated with nullity notwithstanding the hierarchy of court, whether superior or inferior court passing the order/decree. It quoted Chief Justice Edward Coke of England, “Fraud avoids all judicial acts, ecclesiastical or temporal.”  The Court upon perusal of documents produced stated that it was evident that the diagram produced in the compromise petition was diametrically opposite to the consolidation case. Therefore, the court quashed both the orders passed by the Civil Judge and Tahsildar, stating that the Opposite party 1 had fraudulently induced the authorities for a favourable order and also provided an option for the Opposite Party 1 to make a fresh application for conversion of land.[Prafulla Kumar Nayak v. Khetramohan Nayak, 2019 SCC OnLine Ori 238, decided on 10-07-2019]

Case BriefsHigh Courts

Jammu and Kashmir High Court: A Bench of Sanjeev Kumar, J. dismissed a petition filed against the order of a Subordinate Civil Judge where the application of the petitioner seeking leave of the court to file additional pleas (replica) was cancelled.

The facts of the case are that a suit was filed by the petitioner for Permanent and Mandatory Injunction restraining the respondent from raising any construction illegally and unauthorizedly to the prejudice of the rights of the petitioner which was pending adjudication before the Subordinate Civil Judge. Respondent then filed his written statement in which he clearly refuted the contents of the plaint. The petitioner with a view to file additional pleading moved an application before the trial court for submitting additional pleadings (replica). The trial court did not find any substance in the application and rejected the same. The ground that was given for rejection was that the petitioner failed to demonstrate any new facts which had come in the written statement and which needed to be refuted or explained.

The Court held that no case was made out for the exercise of the power of superintendence of the Court vested by virtue of Section 104 of the J&K Constitution. The order fell in the realm of discretionary order and unless the discretion was demonstrated to have been exercised with material irregularity, and in ignorance of the settled legal principles it could not be made the subject matter of interference in supervisory jurisdiction. The Petition was thus dismissed. [Abdul Rashid Chalak v. State of J&K, 2018 SCC OnLine J&K 1039, decided on 24-12-2018]

Case BriefsHigh Courts

Orissa High Court: A Single Judge Bench of Dr A.K. Rath, J., allowed the petition which challenged the order of the trial court whereunder the application of the plaintiffs filed under Order 1 Rule 10 CPC to implead the wife of Defendant 1 was rejected.

The facts of the case were that the plaintiffs-petitioners had instituted the suit for permanent injunction and recovery of possession impleading the wife of the defendant as Defendant 2.

The contention of Mr A.P. Bose, Advocate for the petitioners, was that a part of the suit land had been alienated to the wife of the defendant. The said fact came to the knowledge of the plaintiffs after the written statement was filed. The hearing of the suit had not begun. The intervenor was a necessary party to the suit.

The counsel for defendants Mr S. Udgata, submitted that the written statement was filed in the year 2011. But then, the petition for impleadment was filed after a gap of five years. The intervenor was neither necessary nor proper party to the suit.

The Court relied on the case of Razia Begum v. Sahebzadi Anwar Begum, AIR 1958 SC 886, wherein the Apex Court had held that it is firmly established as a result of judicial decisions that in order that a person may be added as a party to a suit, he should have a direct interest in the subject matter of the litigation whether it raises questions relating to movable or immovable property. The suit scheduled land had been alienated to the wife of the defendant. In view of the same, the intervenor was a necessary party to the suit thus the petition was allowed. [Ramesh Chandra Sahoo v. Ranjit Kumar Singh, 2018 SCC OnLine Ori 436, decided on 19-12-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit in terms of granting a permanent injunction restraining the defendants from selling plaintiff’s counterfeit products.

The plaintiff—Giorgio Armani SpA—is an Italian company that owns various ARMANI marks that makes it one of the leading fashion brands worldwide. The defendants were in the business of organising exhibitions of various high-end designer products including those of the plaintiff. The plaintiff alleged that its products were being sold without authenticity cards or nay price tag and hence the defendant’s activities were likely to cause huge damage to plaintiff’s marks and business. It was also pleaded that since the products did not bear price tags, which could not have been the case if the products were original, they could be easily inferred as being counterfeit.

The High Court perused the record and held that the fact that the defendants were offering for sale products under the various ARMANI marks and holding exhibitions in respect thereof showed that they were well aware of the value of the said marks. Legal position was noted to be that under Sections 29 and 30 of the Trade Marks Act, 1999, causing infringement to a product would also constitute infringement. It was noted that the defendants neither argued nor pleaded that the products were genuine. The fact of missing price tags added credence to the plaintiff’s claim that the products were counterfeit. The activities of the defendant were held to be an infringement of plaintiff’s marks. Therefore, the suit was decreed in terms of granting permanent injunction against the defendants. [Giorgio Armani v. Yogesh Mordani,2018 SCC OnLine Del 12078, dated 03-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, J. decreed a suit for permanent injunction by invoking the provisions of Order 8 Rule 10 CPC.

The plaintiff was involved in broadcasting activities such as news reporting, producing TV shows and other media content in various parts of the world. It was submitted that its first presence in India could be traced back to 1994 and through various media including a YouTube channel, under the name CBS, it had acquired distinctiveness in the Indian market. In March 2017, the plaintiff came in across defendant’s YouTube channel CBN NEWS which was identical to plaintiff’s trademark. A cease and desist notice was served on the defendant but to no avail. Hence, the present suit was filed.

Before the High Court, the parties requested that they would like to settle the matter through mediation but no settlement could be arrived at. It was pertinently noted that the defendant failed to file a written statement. The plaintiff filed an application under Order 8 Rule 10 CPC. The Court referred to its earlier decision which discussed the scope of Order 8 Rule 10 CPC in commercial suits particularly under the new Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015. The rule had been inserted to expedite the process of justice. If the defendant fails to pursue his case or does so in a lackadaisical manner by not filing written statement, the Court should invoke provisions of Order 8 Rule 10 CPC and decree such cases. In the view of the Court, the instant was a suitable case to pass a decree in favour of plaintiff and against the defendant. Accordingly, a decree of permanent injunction as prayed for by the plaintiff was passed. [Christian Broadcasting Network Inc. v. CBN News (P) Ltd.,2018 SCC OnLine Del 11666, dated 30-08-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. decreed a suit for grant of a permanent injunction against the defendant for infringement of plaintiff ’s trademarks.

It was an admitted fact that the plaintiff was a registered owner of the trademarks SUMEET and SUMEET TRADITIONAL for their power operated kitchen mixies for domestic use. The mark was used by the mother of the director of plaintiff company since 1963. Registration of trademark under Class 7 of the Trade and Merchandise Marks Act, 1958 was granted in 1970 and assigned to the company in 1981. The defendant company was alleged to unauthorisedly sell identical mixies with same trademarks. The parties had earlier entered into an Agreement for Subcontract for manufacture of 2 specific models of mixies. Since the defendant was violating the Agreement by selling goods under the plaintiff’s trademark, the Agreement was terminated. Plaintiff submitted that the use of the said marks by the defendant post-termination of the Agreement was likely to cause confusion and deception amongst the purchasing public.

The High Court perused the record and on appreciation of evidence, the Court was of the view that the suit of the appellant deserved to be decreed. In the opinion of the Court, the triple identity test was satisfied. The test being —

  • Firstly, use of identical or deceptively similar trademark.
  • Secondly, use of trademark in relation to identical goods.
  • Lastly, use of trademark in relation to identical goods having identical trade channels (products sold via same trading channels).

From the evidence on record, according to the Court, it was apparent that despite termination of the Agreement, the defendant malafidely continued to affix plaintiff’s trademark on their product which amounted to infringement of the same. Accordingly, the suit was decreed in favour of the plaintiff with actual costs. [Sumeet Research and Holdings (P) Ltd. v. Sipra Appliances,2018 SCC OnLine Del 11341, dated 14-09-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit filed by the plaintiff against the defendant for permanent injunction from using its registered trademark PARAS.

The plaintiff was the registered proprietor of trademark PARAS. The trademark was adopted in 1987 in respect of milk and milk products. It was registered under provisions of Trademark Act, 1999 and Copyright Act, 1956. The defendant, on the other hand, adopted mark PARAS and PARAS GOLD for manufacturing, marketing and trading of fats, milk and dairy products, vanaspati and edible oil, etc. When the plaintiff acquired knowledge of the same, the present suit was filed.

The High Court, on an earlier occasion, had granted an ex-parte injunction against the defendant. In Court’s opinion, the word PARAS has acquired distinctiveness as being associated with the products and business of the plaintiff. The plaintiff’s mark is well known in the area of milk and milk products, and use of the same in respect of edible oils, fats, milk and other products used in the kitchen results in violation of plaintiff’s rights and constitutes passing off. Edible oil, fats, vanaspati oil, etc. are identical as also allied and cognate to milk and milk products. In such circumstances, the Court was of the view that the petitioner had made a case for grant of permanent injunction. Order was made accordingly. [VRS Foods Ltd. v. Prem Chand,  2018 SCC OnLine Del 11055, dated 30-08-2018]

Case BriefsHigh Courts

Punjab and Haryana High Court: A Single Judge Bench comprising of Amit Rawal, J., allowed a revision petition which was filed against the order whereby an application submitted under Section 8 of the Arbitration and Conciliation Act, 1996 for resolution of dispute was dismissed by the Trial Court.

The facts of the case are such that a suit was filed by respondent seeking permanent injunction on the property in question. In the suit, respondent was aggrieved by the fact that petitioner had cancelled an agreement for sale of property in furtherance of which respondent had already made payments. Petitioner contested the suit by filing an application under Section 8 of the Act stating any dispute which arises between the parties are to be taken to arbitration. This application was dismissed by the trial court as they found no agreement entered into between the parties. Hence, the petitioner approached the High Court.

The High Court was of the view that a stand-alone agreement, an application submitted by the respondent that contained terms and condition would be considered to suggest that the parties were willing to resolve the dispute by way of arbitration. The Court observed that the suit was not maintainable as the matter was to be resolved by way of arbitration by virtue of Section 8 of the Act. Therefore, the impugned order whereby application filed under Section 8 was dismissed was set aside.[IREO Grace Realtech (P) Ltd. v. Neeru Babbar,2018 SCC OnLine P&H 1205, decided on 01-06-2018]

Case BriefsSupreme Court

Supreme Court: In the matter relating to the executability of decree for permanent injunction against the legal representatives of judgment-debtor, the Bench of Arun Mishra and Amitava Roy, JJ said that normally personal action dies with person but this principle has application to limited kinds of causes of actions and hence, in view of the specific provisions contained in Section 50 CPC, such a decree can be executed against legal representative.

The Court noticed that If an injunction decree is capable of being enforced against a person other than the judgment-debtor by virtue of a statutory provision contained in Section 50 CPC, it can be executed equally against the son who inherits the estate of his father as well as against one who was joint with the father and brought on the record as his legal representative.

In the present case, the defendant in the original suit had sold 1.68 acres of land, though the land allotted to him on partition was only 1.58 acres. He had then tried to remove and destroy the wooden fence and made an effort to forcibly dispossess the plaintiff, the owner of the neighbouring property, thereby resulting into a permanent injunction. After his death, his heirs, in violation of the decree for permanent injunction, tried to forcibly dispossess the decree-holder from his property.

Taking note of the abovementioned facts, the Court said that the right which had been adjudicated in the suit in the present matter and the findings which have been recorded as basis for grant of injunction as to the disputed property which is heritable and partible would enure not only to the benefit of the legal heir of decree-holders but also would bind the legal representatives of the judgment-debtor. It is apparent from Section 50 CPC that when a judgment-debtor dies before the decree has been satisfied, it can be executed against legal representatives. Section 50 is not confined to a particular kind of decree. Decree for injunction can also be executed against legal representatives of the deceased judgment-debtor. [Prabhakara Adiga v. Gowri, 2017 SCC OnLine SC 153, decided on 20.02.2017]