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11 July 2022
In a recent order passed by the High Court of Delhi in the matter of Puma SE v. Hi-Tec Point Technologies and Ors. [CS (Comm) 137/ 2021], the Hon’ble Single Judge, Pratibha M. Singh, while granting an injunction in favour of the plaintiffs Puma, also directed Google to remove the infringing mark ‘PUMA GUARD’ from its Play Store app, and has asked LinkedIn to remove the defendant’s profile from its website, as well.
Facts of the case
The plaintiff, Puma, was seeking protection of its mark ‘PUMA’, which was coined and adopted internationally in 1948.
The plaintiff’s brand ‘PUMA’ is one of the world’s leading sports brands, designing, developing, selling and marketing footwear, apparel and accessories.
The mark ‘PUMA’ has been used in India since the 1980s and is registered under several classes.
Defendant No. 1, Hi-Tech Point Technologies, started a global positioning system (GPS) service through electronic application by the name ‘PUMA GUARD’.
Defendant No. 2, Black Box GPS Technology, also launched a device with GPS tracking and anti-theft capabilities under the mark ‘PUMA’.
Defendant No. 1 filed an application for registration of the mark ‘PUMA THE VEHICLE GUARD’ in Class 9 on February 23, 2013, on a ‘proposed to be used’ basis.
On coming across this application, correspondence was entered into between the parties. However, the defendants refused to comply with the requisitions of the plaintiff.
Plaintiff also came across two domain names, www.pumaguard.in and www.pumaguard.com, where Defendant No. 2 was promoting and selling its GPS and anti-theft vehicle devices under the impugned mark.
Court’s observation
The court had, through its earlier order dated March 24, 2021, granted an ad interim injunction in favour of the plaintiffs. Vide the same order, a local commissioner was also appointed to visit the premises of Defendant No. 2 and prepare an inventory of the products with the impugned mark.
The present suit was being contested by Defendants No. 1 and 2, who had applied for the impugned mark and were using it online, while Defendants No. 3-6 were the Registrar of domain names as well as the web hosts of the websites with the impugned marks. The rest of the defendants (Defendants No. 7-11) were Twitter, Facebook, Google, Apple and LinkedIn, as the impugned products were being promoted, advertised and solicited for sale on the said social media handles, and the applications were available for downloads on the Google play store and Apple app store.
Despite orders being passed by the court, the defendant’s app continued to be available on the Google play store, and the defendant’s profile also continued to be operational on LinkedIn, while it was removed by the rest of the defendants from all other online portals and websites.
The court then noted that during the pendency of the suit, the plaintiff and Defendants No. 1 and 2 had arrived at a settlement and that an application under Order XXIII, Rule 3, of India’s Code of Civil Procedure was filed jointly by the parties. The defendants acknowledged the plaintiff’s rights in the mark ‘PUMA’ and stated that they had discontinued using the mark for their GPS tracking devices or any other similar products which might amount to infringement and passing off, according to the terms of the settlement.
In view of the same, the court stated that “The court has perused the terms of settlement. The same are lawful. There is no impediment in recording the settlement. The terms of settlement shall be binding on the parties and all other acting for and on their behalf. Accordingly, the suit is decreed against Defendant Nos.1 and 2 in terms of paragraphs 3(I) to 3(XII) and 4 as set out above. In addition, the suit is decreed in terms of paragraph 47 (a) to (c) of the Plaint. None of the other reliefs are pressed.”
Further, the Delhi High Court directed Google to remove the application PUMA GUARD from its Play Store while decreeing the said suit in favour of the plaintiffs in light of the settlement entered between the parties. Also, in order to give full effect to the injunction granted, the court additionally ordered that the LinkedIn profiles of Defendants No. 1 and 2 be removed.
The court added that: “In future, if there are any other URLs where the defendants’ products are being advertised, either on the internet or on any other social media platforms, the plaintiff is permitted to write to the defendants arrayed as [Defendants No. 7 to 11] in the present suit along with the copy of the order with a request for take down of the said URLs. If the said URLs are not taken down, the plaintiff is permitted to avail of its remedies in accordance with law.”
The domain names www.pumaguard.in and www.pumaguard.com were also ordered to be transferred to the plaintiff by the court.
Conclusion and Comments
In the above case, the plaintiff has made out a prima facie case. The balance of inconvenience also lied in the plaintiff’s favour and irreparable cause would also be caused to the plaintiff if the defendants were not restrained, thus the prima facie case as made out in favour of the plaintiffs. It was noted that the use of the impugned mark by the defendant was bound to cause incalculable loss of reputation and sales to the plaintiff. Thus, initially an ad interim injunction was granted in favour of the plaintiffs; later, however, the parties entered into a settlement. The suit was thus decreed in favour of the plaintiff pursuant to the settlement reached. Also, while decreeing the suit when the court found that two of the defendants still contained the infringing application/profile of the defendant, the court directed them to remove such infringing content at once.
However, a rather important noting of this judgment is that the court went on to add that in future, the plaintiff would have the right to get in touch with Defendants No. 7 to 11 if it comes across any other URLs, on the internet or other social media platforms, wherein the defendants’ products are being advertised or shown, along with a copy of the order asking them to take down the said URLs. The court has, through this order gone beyond the usual paradigm by giving the plaintiff an opportunity to approach the defendants (being Defendants No. 7 to 11 in the present suit) in future as well, in case of any breach or misuse of its mark online. Thus, in case the infringing products are being advertised online or through any social media handles, despite the injunction order, the plaintiff can write to the defendants requesting them to take down such URLs at once, in order to give the injunction order granted in favour of the plaintiffs full effect.
This is a rather significant direction of the court, as it will, in a way, create a sense of responsibility for all such online marketplaces and social media websites as well as web hosts and domain name registrars and providers and make them more vigilant while dealing with URLs who repeatedly put forth infringing products or applications or use domain names containing such infringing trademarks, while infringing well-known marks. This will also save the time and efforts of large companies having well-known brands such as Puma, and help them to keep repeat offenders at bay, as it gives the brand owners the opportunity to actually benefit from the injunction orders obtained.
Going forward, courts could take this as a cue and come up with different directions or orders so as to give full effect to the injunction orders granted by them, so that such injunction orders would indeed provide some kind of benefit and relief to the petitioner or brand owner, who suffered at the hands of the defendants due to their blatant misuse of its brand or trademarks.
