Facts:
The following case pertains to the infringement of trademark. The plaintiff claims that it is a business registered under the laws of the State of Massachusetts in the United States of America that has been designing, manufacturing, marketing, and selling footwear there since 1906 under the names “NEW BALANCE,” “NB Device Mark,” and “N Device Mark.” The plaintiff contends that he has been using the mark “N” since 1970s and “NB” since 1986. His products are sold in around 120 countries, including India. The plaintiff had also incorporated subsidiary companies in India and also entered franchise agreements with leading companies and stores. The plaintiff submits that the defendant operates a website www.myshoeshop.in where it states that it sells first copy of the shoes. The selling is not just confined to the shoes of Plaintiffs Company but also of various other companies. This was not the first instance where such activity was being conducted by the defendant and protective orders had been sought previously by the plaintiff against the defendant in case of New Balance Athletics, Inc. v/s Ashok Kumar Trading as http://www.sastajoota.com & Ors and New Balance Athletics, Inc. v/s Ashok Kumar Trading as http://www.sastajoota.com & Ors.
Previous Protective orders:
In the aforesaid cases the contention put forward by the plaintiff states that defendants are using the domain names http://www.sastajoota.com and http://www.sastajoota.co.in to conduct their business, and without the plaintiff’s consent, they are selling shoes that bear the plaintiff’s trademark. The Plaintiffs believe that these are fraudulent or counterfeit goods. It is also submitted that the defendant’s bad intension is prima facie from the fact that the defendant had been injucted[1] from using the site URL www.sastajoota.com since the court was of the view, as is apparent from the order passed by Justice Navin Chawla, that the website’s contents, it appears, at least on the surface, that Defendant Nos. 1 and 2 are infringing not only the plaintiff’s trademark rights but also the rights of other well-known businesses. Therefore, it is required of the Defendant Nos. 3 to 5 to submit the names and addresses of the owners and registered users of the websites http://www.sastajoota.com and http://www.sastajoota.co.in. They are additionally instructed to restrict or delete the aforementioned website pending future directives. The Defendant Nos. 9 and 10 are also commanded to immediately give the required instructions for banning the aforementioned websites and all Internet Service licensees were hereby notified to take immediate necessary action for compliance of the court order dated 20th January, 2022 with respect to websites of defendant no. 1 & 2. The defendant again created the same business under the URL http://www.sasta joota.co.in, which was also injucted[2] as the court was of the opinion that the plaintiff had established a prima facie case for the granting of an injunction after carefully examining the claims stated in the plaint, reading the papers submitted with the plaint, and listening to the learned counsel for the plaintiff. Furthermore, the plaintiff prevails over defendant Nos. 1 and 2 in the balance of convenience. If the defendant nos. 1 and 2 are not prevented from continuing with their online portal by an ad-interim order, the plaintiff and the customers would suffer an irreparable harm.
Order in present case:
Having considered the contents of the plaint and documents filed the court was of the view that a prima facie case is established for the grant of injunctions as a huge loss would be caused to the plaintiff as well as the consumers if an ad-interim to restrain defendant from continuing with their web portal. Since defendants are violating the trademark rights of plaintiff and other companies the directions to de activate or block the website were made. Since the goods were offered not just online but also through mobile numbers. The defendant no. 4 and 5 are directed to provide details of subscriber of these telephone no’s along with KYC documents. Order to be complied within 2 days under Rule 3 Order XXXIX[3] .
Conclusion:
With the globalization and commercialization of the internet, the issues of trademark violation have become common in digital world as well. With the number of web portals coming up and online shopping becoming the new trend, a large number of entrepreneurs are coming up with their URL and are openly selling first copy of well-known brands. Mostly design of a product, logo , brand name are trademark protected, so selling the first copy of a product and using the same trademark as of plaintiff is infringement of their trademark. Such act amounts to counterfeiting as well as trademark infringement. Such products can only be sold with the permission of the trademark holder. Selling copy of branded items is banned in India and can be penalized with compensation and punishment.
[1]New Balance Athletics, Inc. v/s Ashok Kumar Trading as http://www.sastajoota.com & Ors, Dated 20th January, 2022
[2] New Balance Athletics, Inc. v/s Ashok Kumar Trading as http://www.sastajoota.com & Ors Dated 19th May, 2022, https://dot.gov.in/sites/default/files/letter%20to%20ISPs%2026-05-2022%20CS%20Comm%20339%20of%20_0.pdf?download=1
[3] https://www.aaptaxlaw.com/code-of-civil-procedure/order-xxxix-code-of-civil-procedure-rule-1-2-2a-3-3a-4-5-temporary-injunctions-order-39-of-cpc-1908-code-of-civil-procedure.html
DUCTUS EDGE 