Government E Marketplace vs Unilex Consultants & Ors. on 18 April, 2022
1. This hearing has been done through hybrid mode.
CS (COMM) 205/2020 & I.As. 4967/2020, 4753-54/2021
2. The present suit has been filed by the Plaintiff - The Government E
Marketplace (hereinafter "GeM"), which is a National Public Procurement
portal and end to end online marketplace from where both Central and State
Government Ministries /Departments, CPSUs and SPSUs effect the
procurement of goods and services. The mark used by the Plaintiff is 'GeM'
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
3. The case of the Plaintiff in the present suit is that there are several
parties, who are either registering 'GeM' in respect of procurement of goods
and services as a domain name or using the term 'GeM' as a URL extension
of their usual websites. Some of the parties are providing services to enable
businesses to register on the 'GeM' portal. Therefore, the Plaintiff is
aggrieved by the fact that the Defendants seemed to be claiming to the
public at large, that they are associated with the Plaintiff, thereby
misrepresenting their status qua the Plaintiff and also adversely impacting
the Plaintiff's brand equity and goodwill. In the present case, the following
URLs have been impugned:
4. In the present suit, various persons who are using the objectionable
domain names/URL extensions have been impleaded as Defendant Nos.1 to
11. Defendant Nos.12 to 14 are registered by John Does, whose whereabouts
are not known. Defendant No.15 is the Ministry of Electronics and
Information Technology (hereinafter "MEITY"). Defendant Nos.16 to 18
are the Registrars of various domain names/URLs, wherein the
objectionable term 'GeM' has been used. Defendant No.19 is a company
where Defendant No.2 is a shareholder and director. Various orders have
been passed from time to time in this matter. A brief background of the
decrees passed against various Defendants is captured hereinbelow.
5. Initially, vide order dated 1st July, 2020, an ad interim injunction was
passed in this matter, directing suspension of the impugned domain names in
the following terms:
6. Thereafter, on 17th July, 2020, vide two applications being filed on
behalf Defendant Nos.9 & 10, the said Defendants agreed not to include the
URL extension 'gem.registration.html' or any other deceptively similar
URL extension, as part of their domain names. The said order reads as
under:
7. On 21st July, 2020, the initial injunction order dated 1st July, 2020 was
put in abeyance only qua Defendant Nos.9 & 10, in order to enable
Defendant Nos.9 & 10 to disactivate and disable the hyperlink/extension
URL i.e., 'gem.registration.html'. However, the interim order dated 1st July,
2020 qua the other Defendants was continued. It was thereafter, confirmed
on 27th July, 2020 that the extension URL/hyperlink has been
disabled/blocked by Defendant Nos.9 & 10. Accordingly, vide order dated
27th July, 2020, the decree qua Defendant Nos.9 & 10, was passed in the
following terms:
8. Thus, in respect of Defendant Nos.9 & 10, the suit was disposed of.
9. On the same date, Defendant No.1 undertook by I.A. No.6123/2020,
that even prior to the passing of the order dated 1st July, 2020, it had
permanently removed the extension URL
https://www.unilexcohsultants.com/registrations/GEM-Registrations/ and
the said position would continue in the future as well. Accordingly, the suit
was also decreed qua Defendant No.1, vide order dated 27th July, 2020 in
the following terms:
"19. Accordingly, the captioned application and
suit is disposed of qua defendant no. 1 with the
following directions:
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
(i) Defendant no. 1 will not use the extension
URL, which is set forth in paragraph 3 of the
captioned application or any other deceptively
similar extension URL as a part of its domain
name.
(ii) Furthermore, defendant no. 1 will not project
to the public at large that it is, in any way,
associated or connected with the plaintiff.
(iii) In view of the undertaking given by defendant
no. 1 to this Court, interim order dated
01.07.2020 shall stand vacated insofar as the said
defendant concerned.
(iv) A decree will be drawn up in the
aforementioned terms in respect of defendant no.
1."
10. Thereafter, on 24th August, 2020, qua Defendant No.6, the following
directions were issued:
"8. Thus, with the consent of Mr. Mehrotra, the
following directions are issued:
(i) Defendant no. 6 is permanently injuncted from
using the plaintiff's trademark or trade name i.e.
GeM/Govemment e-Marketplace in any manner
whatsoever including as a part of its Website or
domain name so that no impression, whatsoever is
created that it is, in any manner, associated with
the plaintiff.
(ii) Interim order dated 01.07.2020 shall stand
vacated qua defendant no. 6. Defendant no. 17 i.e.
the Registrar of the domain name of defendant no.
6 will act accordingly.
(iii) Defendant no. 6 will disable the extension
URL/hyperlink concerning the plaintiffs GeM
portal from its domain name i.e.
www.Legalbrothers.in.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
9. The suit qua defendant no. 6 is disposed of in
the aforementioned terms. A decree vis-a-vis
defendant no. 6 will be drawn-up accordingly."
11. On 2nd September, 2020, ld. Counsel for the Defendant No.2 made a
statement that it has no objection if the suit is decreed qua Defendant No.2.
Accordingly, an undertaking was recorded in terms of paragraphs 6 & 7 of
the affidavit dated 20th August, 2020 as under:
"4. It is in this context that defendant no. 2 has
made the following assertions in paragraph 6 & 7
of the affidavit dated 20.08.2020.
"6.I state that 1 do not wish to provide the service
of registration to the Government E-Marketplace
portal (or any related services through the
impugned URL/Extension
https://charteredmunshi.com/gem-registration
either currently or any time in the future. Thus, I
undertake, to not use the said URL/ Extension at
any time in the future.
7. I say that pursuant to the aforesaid removal of
the URL/Extension from the website of Chartered
Munshi, the claim of the Plaintiff against the
Defendant No.2 stands satisfied in its entirety.
Hence, I being named Defendant No.2 in the
present matter have no objection if a decree is
passed in the aforesaid terms by this Hon'ble
Court.""
12. Accordingly, a decree was passed on 10th September, 2020 against
Defendant No.2 and Defendant No.19-the company where Defendant No.2
is a director and shareholder, in terms of paragraphs 6 & 7 of the affidavit
extracted above. It was also directed as under:
"4. Accordingly, as prayed, a decree is passed
against defendant no. 2 in terms of paragraphs 6
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
and 7 of the affidavit dated 20.08.2020 filed by
him.
4.1 The decree shall bind, as indicated
hereinabove by Ms. Dutt, not only defendant no. 2
but also defendant no. 19 i.e. Draft Notion
Services Pvt. Ltd.
4.2 Since a direction has already been issued on
02.09.2020 that an affidavit will be filed, in that
regard, by defendant no. 19 i.e. Draft Notion
Services Pvt. Ltd., that direction, for the sake of
completion of record, shall also be complied with
by the said defendant.
4.3 The affidavit will be filed by defendant no. 19
i.e. Draft Notion Services Pvt. Ltd. within 10 days
from today. A copy of the same will be furnished
to Mr. Abhinav Sharma via e-mail.
5. A decree will be drawn-up qua defendant no. 2
in the aforementioned terms."
13. Defendant No.16 was also directed to lift the suspension qua
Defendant No.2's domain name in terms of the above order.
14. As per paragraph 8 of the said order dated 10th September, 2020, the
suit was decreed against Defendant No.11 as well. The same reads as under:
"8. The suit is decreed against defendant no. 11 in
terms of assertions made in paragraph 6 to 8 of
the affidavits dated 04.09.2020 filed by the
partners of defendant no. 11 i.e., Mr. Abhishek
Kumar and Mr. Surinder Kumar."
15. Thereafter, on 11th September, 2020, the suit was decreed qua
Defendant No.3. The relevant portion of the order is extracted herein below:
"5. To be noted, I.A. No. 8038/2020 has been
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
listed for the first time today. It is in this
application that the applicant/defendant no. 3 has
prayed that a decree be passed against him in
terms of the order dated 27.07.2020.
5.1 The sum and substance of the assertions
made/by the applicant/defendant no. 3 is captured
in paragraphs 5 to 8 of the application. For the
sake of convenience, the same are extracted
herewith:
"5. It is respectfully submitted that Applicant's
website is presently disabled and thus, he could
not be able to have the access to disable the
hyperlink/ extension URL of the Plaintiffs
portal. Hence, this application seeking to
vacate the interim order dated 01.07.2020
against the Applicant/Defendant No. 3 so that
the Applicant/ Defendant No. 3 would be in
position to disable the hyperlink/extension
URL, i.e. www.complykart.com/GeM-
Registration at his own. It is humbly submitted
that once the Applicant disables/deactivate the
hyperlink/ extension URL of the Plaintiffs
portal, there remains no grievances to the
Plaintiff the Defendant No.16 i.e.
GoDaddy.com shall also have no role to play
qua the domain name of the Applicant/
Defendant No. 3.
undertake before his Hon'ble Court to disable
the hyper link/ extension URL from his domain
name i.e. "complykart.com", once the domain
of the Applicant is enabled, which is disabled
pursuant to directions by this Hon 'ble Court:
7. The Applicant/ Defendant No. 3 further
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
undertakes that after disabling the
hyperlink/extension URL, the
Applicant/Defendant No. 3 shall not include the
same or any other deceptively similar extension
URL/ hyperlink as part of his domain name and
shall not project in his domain/ website
representing any association with the Plaintiff.
The Applicant/ Defendant No. 3 has also filed a
separate affidavit to this effect.
8. That this Hon'ble Court by way of order
dated 27.07.2020 in the instant suit has been
pleased to pass decree against Defendant Nos.
9 and 10 whereby this Hon'ble Court has held:
"That being said, based on Mr. Rishi 's
statement, I am inclined to decree the suit
qua defendant nos. 9 and l 0. 6.1. It is
ordered accordingly.
7. Defendant nos. 9 and 10 are permanently
injuncted from using the plaintiffs trademark
or trade name i.e. GeM/Government e-
Marketplace in any manner whatsoever
including as a part of its website or domain
name so that no impression is created that
they are, in any manner, associated with the
plaintiff.
8. However, it is made clear that defendant
nos. 9 and 10 will be free to carry on the
business of enabling registration qua the
plaintiffs web portal for a fee or otherwise,
albeit without giving an impression that they
are, in any way, associated with or
connected with the plaintiff. 9. Thus, the
instant suit against defendant nos. 9 and 10
is disposed of in the aforementioned terms.
10. A decree will be drawn up accordingly.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
11. The captioned applications are,
consequently, disposed of. 12: I must also
record that the Registrar of the domain
names of defendant nos. 9 and I 0 i.e.
defendant no.16/GoDaddy.com LLC has
complied with the directions contained in
order dated 21.07.2020, which enabled the
said defendants to take steps to which
reference is made in the said order and in
the order passed today. 13. Thus, the interim
order dated 01.07.2020 shall stand vacated
qua defendant nos. 9 and 10."
5.2 Accordingly, issue notice in I.A. No.
8038/2020. Mr. Sharma accepts service on behalf
of the plaintiff.
5.3 Mr. Sharma says that he does not wish to file
a reply to IA. No. 8038/2020 as he would have no
objection if the suit is decreed in terms of the
averments made by applicant/defendant no. 3 in
paragraph nos. 6 to 8 of the said application.
6. Accordingly, interim order dated 01.07.2020
shall stand vacated qua the applicant/defendant
no. 3.
6.1 The applicant/defendant no. 3 is permanently
injuncted from using the plaintiffs trademark or
trade name i.e. GeM/Govemment e-Marketplace
in any manner whatsoever including as a part of
his website or domain name so that no impression
is created that he is, in any manner, associated
with the plaintiff.
6.3 It is, however, made clear that the
applicant/defendant no. 3 will be free to cany on
the business of enabling registration qua the
plaintiff's web portal for a fee or otherwise, albeit
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
without giving an impression that he is, in any
way, associated with or connected with the
plaintiff.
6.4 The Registrar of the domain name of
applicant/defendant no. 3 i.e. defendant no. 16
will lift the suspension placed on the said domain
name."
16. Thus, qua Defendant No.3, Defendant No.16 was directed to lift the
suspension of domain name.
17. Vide order dated 9th October, 2020, Defendant No.5 was proceeded
ex-parte. It was also recorded that though appearance had not been entered
on behalf of Defendant Nos.17 and 18, they were Domain Name Registrars
who had otherwise complied with the directions of the Court, so the only
contesting Defendant left was Defendant No.5. Accordingly, the Defendant
Nos.5, 12 to 14 were directed to be served by publication. On 9th October,
2020, Defendant Nos.4, 7 & 8 agreed to suffer a decree as well and they
were permitted to file applications/undertakings in this regard. Defendant
No.4 had submitted that it had filed the application and the same was likely
to come up for hearing. The said application being I.A.4753/2021 has now
been filed along with I.A.4754/2021 seeking condonation of delay of 81
days in removing objections and re-filing I.A.4753/2021. In the application
seeking vacation of injunction, Defendant No.4 has stated as under:
"That Defendant No. 4 only provided information on
GeM registration process, documents required for a
GeM registration, benefits of GeM registration etc., as
a description guide under the knowledge section of his
blog/website www.digitalsanjay.com for the benefit of
the readers who visited the above mentioned
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
blog/website. The said blog/ website has no payment
gateway and Defendant No. 4 has never made any
undue profits from the use of the Plaintiff's trade mark.
5. That Defendant No.4 has never claimed or used the
Plaintiff's mark and has no intention of doing so ever.
The Defendant No.4 has never claimed in its website or
to any clientele that it is duly authorized agent of
Plaintiff or sought to create any association with the
Plaintiff.
6. That the Defendant No. 4 has not indulged in any
sort of malpractice so as to deceive any person and has
no connection with any kind of monetary consideration
received from any person/customer as alleged by the
Plaintiff.
7. That the Defendant No. 4 has never undertaken and
will not undertake any such activity which may
remotely intend passing off of the Plaintiff's mark or
mislead anyone by portraying its website as that of the
Plaintiff's website.
8. That the Defendant No.4 further undertakes that it
will not include the extension URL
https://www.digitalsanjay.com/gemregistration-
government-e-mrketplace/ or any other deceptively
similar URL bearing the Plaintiff's trade mark as a
part of its domain names and further project to public
at large that Defendant No.4 is, in any way, associated
with the Plaintiff."
18. The prayers in the said application read as under:
"It is, therefore, most respectfully prayed that this
Hon'ble Court may graciously be pleased to:-
a) vacate the order dated 1st July, 2020 insofar as it
has directed the Registrar of the Defendant No. 4 i.e.
Defendant No. 16 to suspend domain services of the
answering Defendant;
b) pass such other order(s) or further order(s) as this
Hon'ble Court may deem fit and proper in the facts
and circumstances of the case; and
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
c) the Defendant No.4 has no objection if a decree is
passed in terms of this undertaking without the
imposition of any damages and/ or costs against
Defendant No. 4.
It is prayed accordingly."
19. Notice was issued in I.A.4753/2021 vide order dated 5th April, 2021.
However, none has appeared for Defendant No.4 since then. None appears
for Defendant No.4, 7 &8 today either. It is noticed however that, Defendant
No.8 in its replication has also taken a similar stand. The same reads as
under:
"5. That the humble applicant/ defendant no. 8
submits that the content on the web page of
www.prospectdigital.in referring about GEM on
the site was uploaded on 19,11.2019 and no
clientele walked in or consulted for registration on
GEM portal nor any fees been charged or
mentioned in the content nor claimed at any point
of time to be associated with plaintiff GEM by any
means.
6. That, the humble defendant no. 8 submits and
undertakes that since the injunction order the
domain used is been blocked by the registrar and
further had not been and will not claim to be
associated with the plaintiff/GEM and will make
necessary changes in the website depicting the
above. It further undertakes that they will not
include the extension URL
http://prospectdigital.in/gem-government-e-
marketplace-registrationconsultant or any other
deceptively similar URL as part of their domain
name.
7. That the humble answering defendant submits
that in the absence of any document or irregularity
reaching to the conclusion with regard to
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
misrepresentation, harm cause to goodwill, mark
created any confusion amongst public or deceptive
similar domain name is unjustifiable, hence the
injunction order passed on 01.07.2020 to be
discharged against the defendant no. 8.
8. That the humble defendant no. 8 had a prima
facie case on merit & is most likely to succeed
before the Hon'ble Court. The balance of
convenience also lies in Defendants favour. That no
prejudice will be caused to the plaintiff if its rights
are protected."
20. On 23rd March, 2021, CCP (O) 25/2020 was filed in view of the
conduct of the Defendant No.3 - Mr. Kamalesh Mishra. On the said date
Mr. R.K. Virmani, ld. Senior Counsel was appointed as amicus curiae in the
contempt petition.
21. The grievance of the Plaintiff in the present suit is that various
persons are using the GeM logo and the GeM mark. It is clear from the
perusal of the pleadings and documents on record that `GeM' is the name of
the portal which is used by the government for its procurement activities.
No person would be entitled to use the said mark or logo thereof in any
manner as to represent themselves as being connected with or affiliated to or
sponsored by the Plaintiff. However, some of the Defendants are persons,
who seem to be providing services and helping third party businesses to set
up their GeM accounts. This Court is clearly of the opinion that such
provision of services would not be contrary to law but showing an
affiliation, sponsorship or connection with the Plaintiff would be contrary to
law. A number of Defendants, as set out above, have suffered a decree in
this matter. The remaining Defendants are Defendant Nos.4, 5, 7 & 8. They
are stated to be using the term 'GeM' as an extension to their existing
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
domain names, which are also using the terms: 'gem-registration-
government-e-marketplace', 'gem-registration', 'gemgov.in', 'gem-
registration.html', 'gem-government-e-marketplace-registration-consultant'.
22. The use of such names or URLs is bound to give the impression to an
unknown person, as though the Defendant-persons/entities are connected
with the Plaintiff's GeM Portal. Thus, such persons cannot be allowed to use
the domain name 'gemgov.in' or the URL extensions with their existing
domain names, as specified above. However, if they wish to use the term
'GeM' for the purposes of mere information, or in order to describe the
Plaintiff's services/portal, they would be entitled to do so, without causing
any misrepresentation, as the same would be in consonance with Section 30
of the Trademarks Act, 1999 (hereinafter "Trademarks Act"). Section 30(2)
of the Trademarks Act reads as under:
"(2) A registered trade mark is not infringed where--
(a) the use in relation to goods or services indicates the
kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or
of rendering of services or other characteristics of
goods or services;
(b) a trade mark is registered subject to any conditions
or limitations, the use of the trade mark in any manner
in relation to goods to be sold or otherwise traded in,
in any place, or in relation to goods to be exported to
any market or in relation to services for use or
available or acceptance in any place or country
outside India or in any other circumstances, to which,
having regard to those conditions or limitations, the
registration does not extend;
(c) the use by a person of a trade mark--
(i) in relation to goods connected in the course of trade
with the proprietor or a registered user of the trade
mark if, as to those goods or a bulk or which they form
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
part, the registered proprietor or the registered user
conforming to the permitted use has applied the trade
mark and has not subsequently removed or obliterated
it, or has at any time expressly or impliedly consented
to the use of the trade mark; or
(ii) in relation to services to which the proprietor of
such mark or of a registered user conforming to the
permitted use has applied the mark, where the purpose
and effect of the use of the mark is to indicate, in
accordance with the fact, that those services have been
performed by the proprietor or a registered user of the
mark;
(d) the use of a trade mark by a person in relation to
goods adapted to form part of, or to be accessory to,
other goods or services in relation to which the trade
mark has been used without infringement of the right
given by registration under this Act or might for the
time being be so used, if the use of the trade mark is
reasonably necessary in order to indicate that the
goods or services are so adapted, and neither the
purpose nor the effect of the use of the trade mark is to
indicate, otherwise than in accordance with the fact, a
connection in the course of trade between any person
and the goods or services, as the case may be;
(e) the use of a registered trade mark, being one of two
or more trade marks registered under this Act which
are identical or nearly resemble each other, in exercise
of the right to the use of that trade mark given by
registration under this Act."
23. A Division Bench of this Court in Hawkins Cookers Limited v.
Murugan Enterprises, [RFA (OS) No.09/2008, dated 13th April, 2012], in
the context of trademarks being used for provision of identifiable goods, laid
down the principles of the manner of use of a trademark in a bonafide
manner while denoting the quality or characteristics of a particular good or
service. The relevant observations are as under:
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
"9. Sub-section (2) of Section 30, legislates on the
subject, when a registered trademark would not be
infringed, and of the various situations contemplated,
vide clause (d) of sub-section (2) of Section 30, is the
situation where the manufacturer of goods which form
part of or are an accessory to other goods for which a
trademark exists is entitled to indicate that the
accessory goods are adaptable to some other goods
and it is reasonably necessary to so indicate. In such a
situation, reference to the registered trademark of
another person would not be actionable.
10. Now, at the heart of the matter in dispute in the
instant appeal is: When would it be a case of the use of
the trademark being reasonably necessary in order to
indicate that the goods are so adapted?
11. The answer has to be found in the meaning of the
two words "reasonably necessary‟.
12. Of the various meanings of the word "necessary‟,
one meaning is "inherent in the situation‟. Of the
various meanings of the word "reasonable‟ one
meaning is "just‟.
13. Thus, the twin word "reasonably necessary" would
mean that inherent in the situation it would be just;
and in the context of Clause (d) of sub-section (2) of
Section 30 of the Act, it would mean that where the
goods which are claimed to be adaptable to some other
goods would entitle the manufacturers of the goods
which are adaptable to so indicate by reference to the
trademark of the other goods provided it is just to so
do and this would mean that the goods claimed to be
adaptable are specifically manufactured to be used as
a part of the other goods alone. This will not apply
where the goods are capable of adaptable use to all
goods manufactured by different manufacturers to
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
which they are adaptable. In said circumstance to
indicate on the goods that they are adaptable only to
the goods of only one manufacturer would be a clear
violation of the trademark of the said manufacturer
and Section 30 (2) (d) would not come into aid.
XXX
20...It also needs to be highlighted that it has escaped
the attention of the Learned Single Judge that while
writing /Suitable for Hawkins Pressure Cookers', the
Respondent has given undue prominence to the word
'Hawkins' by printing it in a distinct red colour and the
remaining words of the sentence are printed in black."
24. Pertinently, in McCarthy on Trademarks and Unfair Competition, 3
J. McCarthy on Trademarks §23.10, on nominative fair use, it is observed
as under:
"A use of another's trademark to identify, not the
defendant's goods or services, but the plaintiff's goods
or services, is not an infringement so long as there is
no likelihood of confusion. This can be dubbed a non-
confusing "nominative use" in that it names the real
owner of the mark...
XXX
In the New Kids case, the Ninth Circuit said that:
[W]here the defendant uses a trademark to
describe the plaintiff's product, rather than its
own, we hold that a commercial user is entitled to
a nominative fair use defense provided he meets
the following three requirements. First, the
product or services in question must be one not
readily identifiable without use of the trademark;
second, only so much of the mark or marks may
be used as is reasonably necessary to identify the
product or service; and third, the user must do
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
nothing that would, in conjunction with the
mark, suggest sponsorship or endorsement by
the trademark holder.
XXX
...That is, where the unauthorized use does not imply
sponsorship or endorsement, the trademark owner
cannot prevent the use.
...Also, a New Kids nominative fair use defense was
found where a former Playboy Playmate used the
Playboy marks to indicate her title on her personal
website and in the website metatags.
But where the junior user exceeds the three
requirements of "nominative fair use," infringement
will be found. For example, a court found that
defendant's book about the Godzilla fictional film
character exceeded a "legitimate referential purpose"
and created a likelihood of confusion as to sponsorship
or endorsement by the trademark owner. Similarly it
was held that an auto polish company could not claim
a nominative fair use when it made prominent use in
an advertisement of a PORSCHE auto."
25. Accordingly, it is the settled position that nominative fair use is
permissible in so far as the use is such that it does not depict sponsorship by
the trademark owner and the use is "reasonably necessary". Therefore, in the
present case, the following directions are passed:
(i) The suit is, accordingly, decreed to the effect that a permanent
injunction shall operate against Defendant Nos.4, 5, 7 & 8, i.e.,
that they would not use the mark 'GeM' or the 'GeM' logo,
either as part of a domain name or extension on their URL or as
a mark or name in a manner so as to create confusion/deception
in the mind of the public that they are affiliated with, sponsored
by or connected to the Plaintiff. This would, however, not
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
prevent the said Defendants from using the term 'GeM' to refer
to the Plaintiff and to refer to the services the Defendants are
providing with respect to the Plaintiff's GeM portal, as a means
of information to the general public in a descriptive manner.
The decree shall be drawn up in the above terms qua Defendant
Nos.4, 5, 7 & 8.
(ii) Insofar as the Registrars of Domain Names are concerned,
being Defendant Nos.16 to 18, the concerned Registrars shall
(a) suspend/lock the domain names, which contain the term
'GeM' 'e-GeM' as listed in the amended memo of parties in
this plaint, or if the term 'GeM' is in the domain name itself;
and
(b) lock the URLs, to the extent that any URL extension uses
'e-GeM', 'government e-marketplace' and such other
references which are objectionable. This Court notes that on
previous occasions also it has been submitted that the Registrar
cannot block or delete the URL and only the party can do the
same itself. Therefore, in so far as Defendant Nos.4,5,7 & 8 are
concerned, the Registrars shall suspend/lock the domain names
of Defendant Nos.4, 5, 7 & 8. However, if the said Defendants
are willing to delete the said extensions, the suspension shall be
revoked and the said Defendants would be permitted to delete
the said objectionable URLs. Upon the objectionable URLs
being removed or deleted, Defendant Nos.4, 5, 7 & 8 are
permitted to use their own domain names, which are in no way
connected to the Plaintiff. The decree sheet be drawn in the
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
above terms qua the Defendant Nos.16 to 18.
(iii) Insofar as Defendant Nos.12 to 14 are concerned, they are John
Does and they are using 'gem-registration.org', 'apkpure.com'
& 'gems-portal-registration.ezzus.com'. Accordingly, the said
extensions/domain names shall be suspended/locked on the
same terms as set out in point (ii) above. Insofar as Defendant
No.13 is concerned, a perusal of the website's screenshot shows
that the said Defendant is also using the logo 'GeM government
e Marketplace' and 'GeM Seller' on the website 'apkpure.com',
as also the extension 'in.gov.gem'. Accordingly, in respect of
Defendants 12-14, decree in terms of the order at point (i) and
(ii) above is passed.
(iv) All the Registrars of Domain Names are directed to give effect
to this order within two weeks. Decree sheet be drawn up in the
above terms.
CCP (O) 25/2020
26. Insofar as the present contempt petition is concerned, it is noticed that
Defendant No.3 has already suffered a decree vide order dated 11th
September, 2020. A perusal of the email shows that some intemperate and
objectionable language has been used by the Defendant No.3. However, Mr.
Virmani, ld. Amicus Curiae, submits that in one email the language is
objectionable, however, thereafter, Defendant No.3 has appeared to have
mended his conduct and has also suffered a decree. Considering that this
was during the pandemic period, he submits that no action be taken and the
contempt be disposed of.
27. Considering the submissions made and after perusal of the emails, this
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:25.04.2022
23:49:40
Court notices that the said Defendant No.3 has written an email dated 8th
July, 2020 wherein Defendant No.3 has made certain allegations, both
against the counsels and has also not treated the order of the Court with
deference.
28. Considering the conduct of Defendant No.3 and thereafter, it suffering
a decree dated 11th September, 2020, the Court refrains from passing any
orders. However, Defendant No.3 is however given a warning to ensure that
any Court order which is passed is fully respected and given effect to and no
intemperate language is used against counsels in the future. It is made clear
that if there is any repetition of objectionable conduct by Defendant No.3,
strict action would be liable to be taken.
29. Copy of this order be served upon Defendant No.3 through ld.
Counsel appearing for Defendant No.3, Mr. Rajiv Dalal, as also through the
SHO, PS, Janak Puri, so as to ensure that the present order is served upon
Defendant No.3, for compliance.
30. With these observations, the present suit is decreed. All pending
applications are disposed of in the above terms.
PRATHIBA M. SINGH
JUDGE
APRIL 18, 2022/dk/ms
