Flipkart Internet Private ... vs Flipkartwinnerdraw.Com & Ors.
2019 Latest Caselaw 2333 Del

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*      IN THE HIGH COURT OF DELHI AT NEW DELHI
+      CS(COMM) 117/2019 & I.As. 3268/2019 AND 3270/2019

       FLIPKART INTERNET PRIVATE LIMITED          ..... Plaintiff
                     Through: Mr. Vaarish K. Salwani, Advocate with
                             Ms. Shilpa Gupta, Advocate.

                           versus

       FLIPKARTWINNERDRAW.COM & ORS.             ..... Defendants
                   Through: Mr. Azhar Qayum, Advocate for
                            defendant No.24.
                            Mr. Gaurav Rohilla, Advocate for
                            defendants No.26 and 27.

%                                       Date of Decision: 03rd May, 2019

       CORAM:
       HON'BLE MR. JUSTICE MANMOHAN

                               JUDGMENT

MANMOHAN,J (Oral)

1. Present suit has been filed for infringement of trademark, passing off etc. against the defendants. The prayer clause is reproduced hereinbelow:-

"42. In light of the foregoing, it is most respectfully prayed that this Hon'ble Court may be pleased to:

i. Pass an order and decree of permanent injunction restraining the Defendant Nos.1 to 16 (and such other websites/entities which are discovered during the course of the proceedings to have been engaging in infringing the Plaintiff's trademark rights), their owners, partners, proprietors, officers, servants, employees, and all others in

capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from using the mark "Flipkart" or any deceptive variant thereof which is identical and/or similar to the Plaintiff's trademark "Flipkart" in respect of domain name, lucky draw contest or any other manner thereby amounting to infringing of Plaintiff's trademark;

ii. Pass an order and decree of permanent injunction restraining the Defendant Nos.1 to 16 (and such other websites/entities which are discovered during the course of the proceedings to have been engaging in infringing the Plaintiff's trademark rights), their owners, partners, proprietors, officers, servants, employees, and all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, from using the mark "Flipkart" or any deceptive variant thereof which is identical and/or similar to the Plaintiff's trademark "Flipkart" in respect of domain name, lucky draw contest or any other manner thereby amounting to passing off the Plaintiff's services;

iii. Pass an order and decree directing the Defendant Nos.17 to 25, their directors, partners, proprietors, officers, affiliates, servants, employees, an all others in capacity of principal or agent acting for and on their behalf, or anyone claiming through, by or under it, to block access to the various websites identified by the Plaintiff in the instant suit at S.No.2 of the Documents or such other websites that may subsequently be notified by the Plaintiff to be infringing of its exclusive rights,

iv. Pass an order and decree directing the Defendant Nos.26 and 27 to issue a notification calling upon the various internet and telecom service providers registered under it to block access to the various websites identified by the Plaintiff in the instant suit at S.No.2 of the list of Documents or such other websites that may subsequently be notified by the Plaintiff to be infringing of its exclusive rights,

v. An order for damages of Rs.2,00,01,000/- to be paid by the Defendant Nos.1 to 16 (and such other websites/entities which are discovered during the course of the proceedings to have been engaging in infringing the Plaintiff's trademark rights), to the Plaintiff on account of their illegal and infringing activities and a decree for the said amount be passed in favour of the Plaintiff (the Plaintiff reserve their right to claim additional damages and amend the pleadings accordingly once the magnitude of the Defendants' illegal/infringing activities and the revenues earned by the Defendants' in pursuance to such illegal/infringing activities is ascertained upon discovery in the instant action);

vi. An order for rendition of accounts of profits illegally earned by the Defendant Nos.1 to 16, (and such other websites/entities which are discovered during the course of the proceedings to have been engaging in infringing the Plaintiff's exclusive rights), on account of their illegal registration of domain names containing the Plaintiff's trademark "Flipkart" and hosting the website with such domain name representing that the services/lucky draw contests are being offered by the Plaintiff;

vii. An order for costs in the present proceedings in favour of the Plaintiff."

2. Vide order dated 06th March, 2019, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

"Consequently, till further orders, the defendants No.1 to 16, their owners, partners, proprietors, officer, servants, employees, and all other in capacity of principal or agent acting for and on their behalf, are restrained from using the mark Flipkart or any deceptive variant thereof which is identical and/or similar to the

plaintiff's trademark Flipkart in respect of domain name, lucky draw contest or in any other manner.

The defendants No.17 to 25, their directors, owners, partners, proprietors, officers, affiliates, servants, employees and all others in capacity of principal or agent acting for and/or on their behalf or anyone claiming through, by or under it are directed to block access to the defendants No.1 to 16 websites.

Defendants No.26 and 27 are directed to issue requisite Notifications calling upon the various internet and telecom service providers registered under it to block access to the defendants No.1 to 16 websites."

3. Since despite service none has entered appearance on behalf of the defendant Nos.1 to 16, they are proceeded ex parte.

4. Learned counsels for defendants Nos. 24, 26 and 27 state that they have complied with the interim order and have filed their compliance affidavit.

5. Today, learned counsel for the plaintiff states that he is confining his relief to prayer 42(i), (ii), (iii) and (iv) of the prayer clause to the suit. He prays that the suit be disposed of. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.

6. This Court is of the view that the present suit can be disposed of without any delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held as under:-

"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the

plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."

7. The learned counsel for the plaintiff states that plaintiff owns and operates a leading shopping portal through the website, www.flipkart.com, since 2007 and has also launched a mobile application - Flipkart in the year 2011. He states that the plaintiff carries on its business under the trademark by providing a market place through Flipkart online platforms to third parties to buy and sell products. He points out that the plaintiff online platforms offer for sale a large variety of products from almost 11,454 brands.

8. He states that the plaintiff is the proprietor of various FLIPKART trademarks in various Classes under the Trade Marks Act, 1999 and the same are valid and subsisting.

9. He contends that the plaintiff has been continuously and extensively using the trademark „Flipkart‟ since the year 2007 and has impeccable goodwill and reputation in the said trademark.

10. It is averred in the plaint that the plaintiff has hundred million registered users with 10 million daily page visits. It is also averred that the plaintiff has twenty one state of the art warehouses, hundred thousand sellers and eight million shipments per month. It is further averred that the expenditure incurred by the plaintiff on advertising and promotion of its „Flipkart‟ trademark in 2016-17 was Rs.7,211,184,598/- and the annual turnover generated by the plaintiff in 2016-17 was Rs.22,535,427,156/-.

11. Learned counsel for the plaintiff emphasizes that the plaintiff had adopted a unique and unusual font, get up, layout and colour combination

for the trademark and logo of its e-commerce website and mobile application, i.e. Flipkart and its various formative marks, thereby making it a highly distinctive trademark and logo.

12. Learned counsel for the plaintiff states that the plaintiff trademark „Flipkart‟ has been adjudged as a well known trademark by a learned Arbitrator under the .IN Dispute Resolution Policy (INRDP) on 3 rd March 2012 and the Hon‟ble Tribunal under the Singapore Domain Name Dispute Resolution Policy in Case No. SDRP 5 of 2015 decision dated 9 th October 2015 titled "Flipkart Internet Private Limited v Shashikala D."

13. Learned counsel for the plaintiff states that in the fourth week of January, 2019, it came to the plaintiff‟s knowledge that the defendants No.1 to 16 except defendant No.8 had incorporated the plaintiff‟s trademark „Flipkart‟ as part of their domain names.

14. He points out that the plaintiff, through its counsel issued a cease and desist/takedown notices to the defendant Nos.1 to 7 websites on 30th January, 2019 and to the defendant No. 8 website on 01st February, 2019. However, there was no response. The plaintiff through counsel also issued cease and desist/take down notices to defendant Nos.9 to 14 through WhatsApp on 06th February, 2019. However, there was no response to the same.

15. Learned counsel for the plaintiff states that defendant Nos. 1 to 16 are infringing the plaintiff‟s registered trademark „Flipkart‟ by having domain names containing „flipkart‟ and/or using such infringing websites to give false representation/impression to the innocent public that such websites emanates and/or are associated with the plaintiff. He further states that the websites in question are vehicles of infringement and their business model is designed and dedicated towards misrepresenting to the members of the

public that they are associated with the plaintiff and mislead them into not only providing their personal information including but not limited to their name, age, e-mail address, phone number etc. but also inducing them to part with their hard earned monies.

16. In the opinion of this Court, the defendant Nos. 1 to 16 have no real prospect of defending the claim, as they have neither entered appearance nor filed written statements. Further, the plaintiff is the registered owner of the trade mark in question.

17. In view of the above, the present suit is decreed in favour of the plaintiff in accordance with prayer 42(i), (ii), (iii) and (iv) of the present plaint along with actual costs. The costs shall amongst others include lawyers‟ fees as well as the amounts spent on purchasing the Court fees. The plaintiffs are given liberty to file on record the exact cost incurred by them in adjudication of the present suit, if not already filed. Registry is directed to prepare a decree sheet accordingly. With the aforesaid observations, present suit and pending application stand disposed of.

MANMOHAN, J MAY 03, 2019 js