Delhi High Court - Orders
Zydus Healthcare Limited vs Flipkart Internet Pvt Ltd & Ors on 27 September, 2023
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~41
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 674/2023, I.A. 18850/2023, I.A. 18851/2023, I.A.
18852/2023, I.A. 18853/2023, I.A. 18854/2023, I.A.
18855/2023 & I.A. 18856/2023
ZYDUS HEALTHCARE LIMITED ..... Plaintiff
Through: Mr. Chander M Lall, Sr. Adv.
with Mr. Luv Virmani, Ms. Aadya Chawla,
Mr. Utsav Mukherjee, Ms. Nandini, Ms.
Ananya Chug, Ms. Yashi Agarwal and Mr.
Abhinav Bhalla, Advs.
versus
FLIPKART INTERNET PVT LTD & ORS. ..... Defendants
Through: Mr. J. Sai Deepak, Mr. Ankur
Sangal, Mr. Ankit Arvind and Mr. Kiratraj
Sadana, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 27.09.2023
CS(COMM) 674/2023
1. The plaintiff is aggrieved by the sale, on the platform of Defendant 1 Flipkart Internet Pvt. Ltd., of counterfeit products of the plaintiff.
2. The plaintiff is a leading Indian Pharmaceutical Company, which had coined and adopted the mark "CUTICOLOR" in July 2016 for pharmaceutical preparations and cosmetic products. The plaintiff also possesses a registration of the wordmark "CUTICOLOR" in class 5, effective from 12 November 2017.
CS(COMM) 674/2023 Page 1 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:02
3. The plaintiff sells hair colour products under the trademark "CUTICOLOR".
4. The plaint alleges that counterfeit hair colour products, with the same mark "CUTICOLOR" and in a packing which is intended to mimic that of the plaintiff, are being sold by unknown defendants, giving identities of fake sellers, on the Flipkart platform of Defendant
1. Photographs of the plaintiff's products and the counterfeit products which are being sold over Flipkart are, thus, provided in para 15 of the plaint:
Plaintiff's Product Counterfeit Product, sold over Flipkart CS(COMM) 674/2023 Page 2 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:02 CS(COMM) 674/2023 Page 3 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03
5. It is further alleged in the plaint that complaints were received from various customers about the poor quality of the counterfeit "CUTICOLOR" products, the use of which is stated to have resulted in adverse allergic reactions.
6. The plaintiff sent an e-mail to Flipkart on 10 May 2023, requesting Flipkart to forthwith take down the impugned products.
The plaintiff also lodged a complaint with the Cyber Cell wing of the Delhi Police on 10 August 2023.
7. The plaintiff itself purchased some of the counterfeit products, through Flipkart. It is alleged that the invoices were issued in the name of non-existent persons, who were different from those who had purportedly put up the products for sale. Nonetheless, the entities in whose name the invoices were issued have been impleaded in the present suit as Defendants 2 to 6. Mr. Lall, learned Senior Counsel for the plaintiff submits, however, that the said defendants are merely dummies, as they are not genuine entities who are selling the products in question, and that issuance of formal summons to them is not likely to be fruitful.
8. The plaintiff has, in these circumstances, approached this Court by means of the present suit, to protect itself against the sale of counterfeit products over the platform of Defendant 1, Flipkart.
9. Let the plaint be registered as a suit.
CS(COMM) 674/2023 Page 4 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03
10. Issue summons in the suit.
11. Summons are accepted on behalf of Defendant 1 by Mr. Ankur Sangal.
12. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within 30 days with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.
13. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission and denial of the documents and marking of exhibits on 29 November 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
I.A. 18850/2023 [under Order XXXIX Rules 1 & 2, CPC]
14. This is an application by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.
15. Issue notice, returnable on 31 October 2023.
16. Notice is accepted on behalf of Defendant 1 by Mr. Ankur Sangal.
CS(COMM) 674/2023 Page 5 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03
17. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto within four weeks thereof.
18. The prayer clause in this application reads thus:
"70. In view of the facts and circumstances of the present case, the Plaintiff prays before this Hon'ble Court as under:
a) Pass an order of interim injunction restraining the Defendant No. 7, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 7 from manufacturing, selling, offering for sale, advertising and/or promoting and/ or using the trade mark 'CUTICOLOR' of the Plaintiff and/or any other mark/ label/ device that is deceptively similar/ infringing to the Plaintiff's trade mark 'CUTICOLOR';
b) Pass an order of interim injunction restraining the Defendant No. 7, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 7 from passing off the trade mark 'CUTICOLOR' of the Plaintiff or using any other mark/ label/ device that contains the trade mark 'CUTICOLOR' or using any such mark that may result in dilution, tarnishment and violation of common law rights of the Plaintiff in any manner whatsoever;
c) Pass an order of interim injunction restraining the Defendant No. 7, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 7 from manufacturing, selling, offering for sale, advertising and/or promoting and/ or using the trade dress/ product packaging of the Plaintiff's products sold under the brand name 'CUTICOLOR' and/ or using any trade dress/ product packaging which is infringing the copyright of the Plaintiff in the trade dress/ product packaging of its products sold under the brand name 'CUTICOLOR';
d) Pass an order of interim injunction directing the Defendant No. 1, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 1, to take down all CS(COMM) 674/2023 Page 6 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03 listings of counterfeit/ unauthorised products being sold under the Plaintiff's trade mark 'CUTICOLOR' on www.flipkart.com;
e) Pass an order of interim injunction restraining the Defendant No. 1, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 1, from aiding and abetting sellers who are selling counterfeit CUTICOLOR products and indulging in acts of trade mark infringement, copyright infringement, passing off of the Plaintiff's trade mark CUTICOLOR by selling counterfeit products on the Defendant No. 1's platform www.flipkart.com;
f) Pass an order of interim injunction restraining the Defendant No. 1, its principal officers, assignees, family members, servants and agents and all other persons claiming under the Defendant No. 1, from publishing listings of any sellers who offer to sell products under the Plaintiff's trade mark CUTICOLOR on the Defendant No. 1's platform www.flipkart.com, without the prior authorization of the Plaintiff;
g) Pass an order directing the Defendant No. 1 to provide the Plaintiff with the details of the Defendant No. 7 including name, address, phone no., email ID, GST, PAN, Bank account details, etc., and other such relevant details in its possession;
h) Pass an order of delivery up against the Defendant Nos. 1 and 7 of all the impugned / infringing material available with them;
i) Any other order which this Hon'ble Court may deem fit and proper in the light of the above facts be passed in favour of the Plaintiff and against the Defendant Nos. 1 and 7."
19. Mr. J. Sai Deepak, learned Counsel appearing on behalf of Defendant 1 submits, apropos the prayers in this application, that
(i) prayers (a) to (c) are not addressed against Defendant 1,
(ii) prayer (e), which alleges aiding and abetting by Defendant 1 of the sellers who are selling the counterfeit products, is categorically denied, and CS(COMM) 674/2023 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03
(iii) apropos the remaining prayers, Defendant 1 is agreeable to grant of prayers (d) and (g), subject to the requirement of taking down listings of counterfeit products being conditional on the plaintiff informing Defendant 1 of the said listings.
20. Mr. Sai Deepak submits that, insofar as the listings contained at page 238 to 247 of the documents filed with the plaint are concerned, his client would forthwith take down the said listings. However, with respect to any future listings, Mr. Sai Deepak submits that the plaintiff should, in the first instance, be directed to inform Defendant 1 of the said listings as the task of determining whether a particular listed product is counterfeit or non-counterfeit cannot be cast on Defendant
1. He relies, for this purpose, on certain provisions of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (hereinafter "the Intermediary Rules"). Mr. Lall, even while contesting Flipkart's status as an intermediary, or its entitlement to claim safe harbour under Section 79 of the Information Technology Act, also, in the alternative places reliance on certain other provisions of the Intermediary Rules. These are aspects which would need a more detailed discussion and which would be examined by and by.
21. For the present, the following interim directions are issued:
(i) Defendants 2 to 7, or any other persons or entities who may have put up the infringing listings enlisted at pages 238 to 247 of the documents filed with the plaint, are directed forthwith to take down the said listings.
(ii) Defendant 1 is also directed to take steps to ensure that CS(COMM) 674/2023 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03 the said 55 listings enlisted from pages 238 to 247 are forthwith taken down.
(iii) In the event of any future listing which is, according to the plaintiff, infringing, Defendant 1 would, on the plaintiff informing it, on the email ID [email protected], of the said listing, take down the listing within 24 hours of being so informed. The plaintiff would be obligated to file monthly affidavits before the Court, intimating the Court of the said listings. Lately affidavits be filed on the last working day of every month. The affidavits would be accompanied by copies of the e-mails addressed in that regard to Defendant 1.
(iv) Defendant 1 will also be directed to file monthly compliance affidavits with respect to any allegedly infringing listings to which its attention may have been drawn by the plaintiff during the previous month.
(v) Defendant 1 is also directed to provide, to the plaintiff, the names, addresses, phone numbers, email IDs, GST, PAN and bank account details and other details in its possession relating to the persons who have posted the 55 URLs enlisted from pages 238 to 247, as well as of any future counterfeiting URLs. The said details would also be placed on record by way of an affidavit by Defendant 1 before this Court.
(vi) In case any grievance is raised by any seller to Defendant 1, the said grievance may also be placed before this Court after forwarding a copy thereof to the plaintiff.
CS(COMM) 674/2023 Page 9 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03
(vii) Defendant 1 shall also place on record details of any products which are still available with it in store, relating to the aforenoted 55 listings by way of affidavit.
I.A. 18851/2023 [under Section 151 of the CPC]
22. Subject to the plaintiff filing legible copies of any dim or illegible documents or translated copies on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
23. The application is disposed of.
I.A. 18852/2023 [under Order XI Rule 1(4) of the CPC]
24. By this application, the plaintiff seeks permission to file additional documents.
25. The plaintiff is permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act, 2015 within 30 days from today.
26. The application stands disposed of accordingly.
I.A. 18853/2023 [under Section 12A of the Commercial Courts Act, 2015]
27. In view of the judgment of the Division Bench of this Court in CS(COMM) 674/2023 Page 10 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03 Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd1, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
28. The application stands allowed accordingly.
I.A. 18854/2023 [seeking permission to file court fees within two weeks from filing of the present suit]
29. Two weeks' time is granted to the plaintiff to pay deficient court fees, if any.
I.A. 18855/2023 [under Section 151 of the CPC]
30. For the reasons stated in the application, the exemption is granted for the present.
31. The application is disposed of.
I.A. 18856/2023 [under Section 151 of the CPC]
32. For the reasons stated in the application, the plaintiff is exempted from serving advance notice on Defendants 2 to 6.
33. This application stands allowed accordingly.
C.HARI SHANKAR, J SEPTEMBER 27, 2023 ar 1 2022 SCC OnLine Del 3529 CS(COMM) 674/2023 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 01/10/2023 at 21:11:03