Delhi High Court - Orders
Burda Media India Private Limited vs Media Bay Private Limited & Ors on 5 October, 2021
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 485/2021
BURDA MEDIA INDIA PRIVATE LIMITED ..... Plaintiff
Through Mr. Siddhesh Shirish Kotwal
and Ms Ana Upadhyay, Advs.
versus
MEDIA BAY PRIVATE LIMITED & ORS. ..... Defendants
Through Mr. Anmol Saxena, Adv.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 05.10.2021 I.A. 13013/2021 (Section XII-A of the Commercial Courts Act, 2015 read with Section 151 of the CPC)
1. For the reasons stated in this application, prayer for filing the suit without taking recourse to pre-institution mediation is granted.
2. The application is allowed.
I.A. 13012/2021 (Section 151 CPC)
3. This application seeks leave to file a lengthy synopsis and list of dates. For the reasons stated in the application, prayer is granted.
4. The application is allowed.
Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 1 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16I.A. 13011/2021 (Order XI Rule 1(4) CPC)
5. Subject to the right of the defendants to admit or deny the same, the plaintiff may file additional documents within a period of four weeks from today.
6. The application stands allowed to the aforesaid extent.
CS(COMM) 485/2021 and I.A. 13010/2021 (Order XXXIX Rules 1 and 2 CPC)
7. The plaintiff is the owner and the publisher of a magazine dealing with the matters relating to architecture and design, under the trademark/brand name "Architecture + Design", which has been in print since 1984. Mr. Siddhesh Shirish Kotwal, learned counsel for the plaintiff asserts that there is no other magazine, in print, dealing with the subject relating to architecture and design published in India.
8. The magazine was earlier owned by M/s. Media Trans Asia Private Limited, the magazine division of which was acquired by Exposure Media Marketing Pvt Ltd on 4th August, 2014. The present plaintiff is Exposure Media Marketing Private Limited which was rechristened on 11th July, 2018.
9. The plaintiff candidly acknowledges the fact that applications for registration of the mark "Architecture + Design" were filed on 15 th January, 2015, but were rejected under Section 9(1)(b) of the TradeMarks Act, 1999 ("the Act").
Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 2 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:1610. The plaint asserts that the aforesaid magazine "Architecture + Design" has been in circulation for over 35 years. The Magazine is said to portray modern trends in planning, building technology, research and development, project profiles and architecture and so on. It is asserted that the magazine has sold over 30,000,000 copies across the country, and that the total sales generated, for the magazine in the last seven years is to the tune of ₹ 11,18,79,355/-. The plaintiff provides its services through its Facebook and Instagram webpages as well as its website.
11. The plaintiff alleges poaching by Defendant No. 1, a company in which Defendant Nos. 3 to 6 who were earlier employees of the plaintiff, hold key positions of the plaintiff‟s clients, by making the clients believe the existence of an association between the Defendant No. 1 and the plaintiff.
12. The defendants circulate an online magazine under the brand name "The Architecture Design", and also operate a website www.thearchitecturedesign.com. It is alleged that Defendant Nos. 3 to 6 have capitalized on the data relating to the plaintiff‟s clients, sourced by them during the course of their employment with the plaintiff, to poach the said clients by making the clients believe the existence of an association between Defendant No. 1 and the plaintiff. In order to substantiate the plea of deception, alleged to be practised by the defendants, Mr. Kotwal, learned counsel for the plaintiff has invited my attention to two series of trail emails, one pertaining to M/s. Spacewood Office Solutions Pvt Ltd ("Spacewood"), and the other Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 3 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16 relating to Lodestar Media ("Lodestar").
13. The trail emails relating to Spacewood reveal that, on 16th December, 2020, Spacewood wrote to Defendant No. 1 stating that it was looking for a print media platform to publish and promote its products, in the form of articles and case studies, and had, for the said purpose, shortlisted "your magazine". The fact that Spacewood was looking for a print media platform, submits Mr. Kotwal, indicates that they desired to associate with the plaintiff and not with Defendant No. 1, as Defendant No. 1 has no print media platform. Instead of disabusing Spacewood in this regard, an internal email was sent within the organization of Defendant No. 1 to Sonali Roy, a former employee of the plaintiff, who had left the service of the plaintiff on 17 th November, 2020, in which reference was made to the "Inbound query from Spacewood", stating that "it was marked as your client in the master database". This, submits Mr. Kotwal, indicates that Defendant No. 1 was seeking to capitalize on the association between Sonali Roy and Spacewood, as an ex-employee of the plaintiff. Thereafter, points out Mr. Kotwal on 2nd February, 2021, Spacewood wrote to Sonali Roy at her former email id, when she was an employee of the plaintiff, which was „[email protected]‟, expressing its willingness to share content and calling upon Sonali Roy to share the space dimension and image resolution/pixel guidelines. This trail of emails, submits Mr. Kotwal indicates that Spacewood was being led into believing that the Defendant No. 1 and plaintiff were associated.
14. Similar confusion, points out Mr. Kotwal, exists in the case of Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 4 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16 Lodestar, which on 13th January, 2021, wrote to an employee of Defendant No. 1, seeking the rates for insertions in his print magazine, believing Defendant No. 1 to be associated with the plaintiff. Without informing Lodestar that there was no such association, Mr. Kotwal submits that Defendant No. 1 led on Lodestar into believing the existence of association, by responding to the said email. Thereafter, Lodestar wrote to the plaintiff on 2nd February, 2021, seeking to know what had happened to the earlier emails exchanged between Lodestar and the employee of Defendant No. 1.
15. Mr. Kotwal has also drawn my attention to the Instagram pages of the plaintiff and defendant at pages 124 and 125, 126 and 127 and 128 and 129, amongst others. These pages, he points out, indicates that images, which were put up by the plaintiff on its Instagram webpages were within a few days, replicated by Defendant No. 1 on its Instagram webpages, obviously, in order to indicate an association between Defendant No. 1 and the plaintiff.
16. To a specific query posed in this regard, Mr. Anmol Saxena, learned counsel for Defendant No. 1 submits that, as per his instructions, the images on the plaintiff‟s Instagram webpage were not copyrighted and there is no bar on the defendants in using the same images.
17. I deem it appropriate to reproduce, in this context, images of the plaintiff‟s and defendants Instagram webpages.
Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 5 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16Images of Plaintiff's Instagram Images of Defendants' Instagram webpage webpage Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 6 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16
18. Perhaps more than any of the other contentions, the manner in which the defendants have chosen to blatantly copy the images, which were being used by the plaintiff on its Instagram webpages, within a few days of the plaintiff using the said images, indicates that there is apparently a conscious intention to represent an association between Defendant No. 1 and the plaintiff.
19. A, prima facie case of Defendant No. 1 passing off its services as those of the plaintiff, therefore, in my view, exists, justifying the grant of an ad interim injunction.
20. Issue summons in the suit to the defendants, returnable on 6 th December, 2021 before the Joint Registrar for completion of pleadings, admission and denial of documents and marking of exhibits.
21. Summons are accepted on behalf of the defendants by Mr. Anmol Saxena.
Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 7 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:1622. Written statement, if any, be filed within a period of four weeks accompanied by affidavit of admission and denial of the documents filed by the plaintiff with advance copy to learned counsel for the plaintiff, who may file replication thereto, if any, within a period of two weeks thereof accompanied by affidavit of admission and denial of the documents filed by the defendants.
23. Issue notice in IA 13010/2021 to the defendants, returnable on 16th December, 2021. Notice is accepted on behalf of the defendants by Mr. Anmol Saxena.
24. Response to this application, if any, be filed within a period of four weeks from today with advance copy to learned counsel for the plaintiff, who may file rejoinder thereto, if any, before the next date of hearing.
25. The prayer clause in this application reads as under:
"In the light of all the facts and circumstances as set out above, it is respectfully prayed that this Hon'ble Court may be graciously pleased to grant the following reliefs:
a. Pass an Order of ad interim injunction against the Defendants, their subsidiaries, servants, agents, assigns, licensees, associates or otherwise from publishing online and offline, printing, advertising online and offline, offering services online and offline, directly or indirectly dealing in any business under the trade mark of the Plaintiff "Architecture + Design"
and its variations, the Impugned Mark, "the Architecture Design" and or any Trade Mark/ Trade Name which is identical or deceptively similar or so Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 8 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16 resembles the Plaintiffs‟ Trade Mark and its variations as is likely to deceive or cause confusion as amounts to passing off;
b. Any such other further orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
26. Till the next date of hearing, there shall be ad interim order in terms of prayer „a‟ in this application.
C.HARI SHANKAR, J OCTOBER 5, 2021 r.bararia Signature Not Verified Digitally Signed CS(COMM) 485/2021 Page 9 of 9 By:SUNIL SINGH NEGI Signing Date:06.10.2021 21:54:16