November 19,2018:

Recently, in the case of M/s Luxottica Group S.P.A. Vs Royal Enterprises & Anr., TM No. 101/18 an Ad-interim Ex-parte Injunction order was granted by the Hon’ble Patiala House Court, New Delhi restraining Snapdeal from selling counterfeit RAY-BAN sunglasses.

The e-commerce website while promising the sale of genuine products at a much lesser and discounted price than their next door retailers, in reality have been duping unwary customers into buying counterfeit/fake products, believing them to be originating from the authentic source.

The e-commerce website while promising the sale of genuine products at a much lesser and discounted price than their next door retailers, in reality have been duping unwary customers into buying counterfeit/fake products, believing them to be originating from the authentic source.

Facts of Case

Luxottica Group S.P.A., proprietor of the trademark RAY-BAN, instituted legal proceedings against Snapdeal.com and some of the sellers who were using the Snapdeal website to display and sell fake Ray-Ban sunglasses.

Such fake Ray-Ban Eyewear were sold at discounts up to as high as 70-90%, raising a prima facie presumption against the authenticity of such goods. Snapdeal was requested to take-down all the listings pertaining to fake Ray-Ban sunglasses through a legal notice which was served prior to the institution of the Court proceedings.

However, Snapdeal’s inability to comply with the take-down request constrained the brand owner to invoke judicial intervention in the matter.

Snapdeal is liable for Counterfeiting

The Hon’ble Court in the present matter, acknowledged the arguments of RAY-BAN that Snapdeal was not only providing a platform for conducting sale of goods but was actively involved in promoting/supporting sale of counterfeit products by promoting the same via sponsored ads on various social media platforms.

RAY-BAN has further argued that Snapdeal by having active/direct involvement in conducting sale of counterfeit Ray-Ban eyewear is in direct violation of Section 79 of Information Technology Act 2000. The Hon’ble Court after considering the arguments held that the plaintiff (Luxottica) has a strong prima facie case on merits and other ingredients and balance of convenience is in Plaintiff’s favor.

Court’s Ruling

The Court was convinced that a case was made out in favor of the Plaintiff (Luxottica) and awarded an Ad-Interim Ex-Parte Injunction order restraining not only the sellers (Defendants) on Snapdeal from listings of fake Ray-Ban eyewear on Snapdeal website, but also directed Snapdeal to remove/take-down all the listings of fake Ray-Ban eyewear sold on their website.

The Court even went a step ahead and directed the website to immediately eliminate all sponsored advertisements of Snapdeal in relation to fake Ray-Ban Eyewear on popular social networking websites like INSTAGRAM, FACEBOOK, etc. and further directed Snapdeal to device some sort of mechanism to stop the said postings of sites from selling the counterfeit/ spurious/ first copy material/ goods.

The Indian Courts have come a long a way to recognize the role of online intermediary and the exemption/ privilege conferred to it under Section 79 of Information Technology Act, 2000.

In some of the recent judicial pronouncements (Christian Louboutin Vs Darveys, L’Oreal Vs Brandworld, Skullcandy Vs Shri Shyam Telecom) the Delhi High Court has issued directions to various e-commerce websites and online marketplaces to operate with caution if they wish to enjoy the immunity provided to the intermediary.

The e-commerce platforms which actively conspire, abet, abide or endure commission of unlawful acts on the websites cannot go scot-free. Such pro-active judicial approach will assist the brands in fortifying their fight against the rampant counterfeiting on online marketplaces.

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