Yonker Skates Pvt Ltd vs I - Bots & Anr
2018 Latest Caselaw 352 Del

$~32
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
+    CS(COMM) 683/2016
     YONKER SKATES PVT LTD                        ..... Plaintiff
                    Through: Mr. D.K. Yadav, Adv.
                            Versus
     I - BOTS & ANR                               ..... Defendants
                    Through: Mr. Abhishek Malhotra & Mr.
                               Utkarsh, Advs. for D-2.
     CORAM:
     HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
                    ORDER

% 15.01.2018

IA No.603/2018 (of the defendant no.2 under Section 151 CPC for modification of order dated 11th December, 2017)

1. Vide order dated 11th December, 2017, a decree was passed in favour

of plaintiff and (i) against the defendant no.1 I-BOTS, of permanent

injunction restraining infringement of trade mark and passing off and of

recovery of damages and costs, and, (ii) against the defendant no.2 Flipkart

Internet Pvt. Ltd., of permanent injunction restraining the defendant no.2

from selling the skates or allowing sale on its portal of skates for the purpose

of sports with the trade mark „YONKER‟, and, (iii) of mandatory injunction

directing the defendant no.2 to, within one month therefrom, furnish to the

plaintiff all the particulars in its power and possession of the person/s selling

the skates under the name „YONKER‟ on its portal.

2. The defendant no.2 seeks modification of the aforesaid order pleading

(a) that the defendant no.2 falls within the definition of „intermediary‟ under

Section 2(1)(w) of the Information Technology Act, 2000 (IT Act); (b) that

Section 79 of the IT Act exempts an intermediary from any liability for any

third party information, data or communication link made available or

hosted by it; (c) that the limited obligation imposed on an intermediary is to

exercise due diligence in terms of Rule 3 of Information Technology

(Intermediary Guidelines) Rules, 2011; (d) that the defendant no.2 imposes

an embargo on its users from uploading content in which they do not possess

the relevant rights and at the same time gives content owners the option of

notifying the defendant no.2 in the event it is found by the user that any

content hosted on the website is without licence or of infringing nature; (e)

that the decree for permanent injunction against the defendant no.2 has the

effect of defeating the „safe harbour‟ provisions of Section 79 of the IT Act.

Modification of the order dated 11th December, 2017 is sought to the effect

that upon the plaintiff notifying the defendant no.2 of specific URL(s) where

goods under the mark „YONKER‟ of the plaintiff are being sold / made

available, the defendant no.2, within 48 hours thereof will remove the list of

the goods under the mark „YONKER‟.

3. The counsel for the plaintiff appears on advance notice and

considering the nature of the application, need to call for reply thereon is not

felt and the counsels have been heard.

4. The counsel for the applicant / defendant no.2 has argued, (i) that it is

not possible for the defendant no.2 to control listing on its portal of goods

i.e. skates for the purpose of sports with the trade mark „YONKER‟ and it

should be the plaintiff who should be vigilant and if finds anyone selling

goods under the mark „YONKER‟ on the portal of the defendant no.2,

should notify the defendant no.2 of the same and whereupon the defendant

no.2 will prohibit transactions in respect of the said goods. Reliance is

placed on my judgment in Kent RO Systems Ltd. Vs. Amit Kotak (2017)

240 DLT 3 and on paras no.117 and 118 of Shreya Singhal Vs. Union of

India AIR 2015 SC 1523.

5. The order dated 11th December, 2017 was made in the presence of the

counsel for the applicant / defendant no.2. The only contention of the

applicant / defendant no.2 on 11th December, 2017 was that the defendant

no.2, as an intermediary, could not be made liable for any damages. Rather,

it was stated that the applicant / defendant no.2 was willing to abide by the

orders of the Court including of disclosing to the plaintiff the particulars of

the persons selling the impugned goods on the portal of the applicant /

defendant no.2. Moreover, the decree as passed on 11 th December, 2017

against the defendant no.2 was passed in the presence of the counsel for the

defendant no.2 and without any objection from him to the order / decree

being passed. I have thus enquired from the counsel for the applicant /

defendant no.2, whether not the order dated 11th December, 2017 is in the

nature of a consent order insofar as against the applicant / defendant no.2

and what is the entitlement of the applicant / defendant no.2 to seek

modification thereof.

6. The only explanation of the counsel for the applicant / defendant no.2

is that a junior colleague from his office who was not fully aware of the

legal position had appeared on 11th December, 2017.

7. The contention of the counsel for the plaintiff in Kent RO Systems

Ltd. supra was that once a complaint is lodged with an intermediary (eBay

India Pvt. Ltd. in that case) with respect to the offending product of one of

the sellers / retailers, the intermediary on its own, before hosting a product

of any other seller / retailer, should verify whether the same also infringes

the rights of the plaintiff and that an intermediary is required to device a

mechanism to, before hosting any product for sale on its system / website,

verify whether the same infringes the intellectual property rights of any

other person.

8. The aforesaid contention was not accepted and the suit, insofar as

against eBay India Pvt. Ltd., was disposed of by binding the defendant no.2

eBay India Pvt. Ltd. to its statement that it will immediately on receipt of

complaint from the plaintiff, remove the offending products from its website

/ portal. However as a post script to the judgment, mention was made of

Sabu Mathew George Vs. Union of India (2018) 3 SCC 229 referring to the

principle / doctrine of "auto block" and directing Google India, Microsoft

Corporation (I) Pvt. Ltd. and Yahoo India to constitute an „In House Expert

Body‟ to detect violation, on their respective platforms, of the provisions of

The Pre-conception and Pre-natal Diagnostic Techniques (Prohibition of Sex

Selection) Act, 1994.

9. I have in furtherance to above enquired from the counsel for the

applicant / defendant no.2 as to why it is not possible for the applicant /

defendant no.2, as an intermediary, to also introduce „auto block‟ on its

platform so as to block uploading of skates for the purpose of sports under

the name „YONKER‟ or under any other name or mark deceptively similar

thereto.

10. The counsel for the applicant / defendant no.2 again referred to the

elaborate reasons given by me in Kent RO Systems Ltd. supra to contend

that the same is not envisaged by the IT Act and the Regulations made

thereunder. It was further contended that to the same effect are paras no.117

and 118 of Shreya Singhal supra.

11. Though I have delayed the release of this order being of the opinion

that if a direction as issued by the Supreme Court in the case of Sabu

Mathew George supra can be issued, so can such a direction be issued to

applicant / defendant no.2 also but my further research has not disclosed any

other development in law or in technology on the said aspect till now and

thus it is deemed appropriate to stand by what was held by me in Kent RO

Systems Ltd. supra.

12. Accordingly, the application is disposed of by modifying the decree

dated 11th December, 2017, insofar as against applicant / defendant no.2

Flipkart Internet Pvt. Ltd., as under:

"against the defendant no.2 Flipkart Internet Pvt. Ltd., of

mandatory injunction directing the defendant no.2 to from time

to time, on receipt of intimation from the plaintiff, of the

defendants or anyone else selling skates for the purpose of

sports on the portal of the defendant no.2 with the trade mark

„YONKER‟, in accordance with law, stop such sales and of

mandatory injunction directing the defendant no.2 to, within

one month of today, furnish to the plaintiff all the particulars

in its power and possession of the person/s selling the skates

for the purpose of sports under the name „YONKER‟ on its

portal"

13. The application is disposed of.

RAJIV SAHAI ENDLAW, J JANUARY 15, 2018 „gsr‟..

(Corrected & released on 30th May, 2018)