Delhi High Court - Orders
Puma Se vs Indiamart Intermesh Ltd on 7 July, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed By:Devanshu
Signing Date:10.07.2022
18:09:11
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 607/2021
PUMA SE ..... Plaintiff
Through: Mr. Ranjan Narula, Mr. Shashi Pratap
Ojha & Ms. Deeksha Singh,
Advocates (M-9891584230)
versus
INDIAMART INTERMESH LTD ..... Defendant
Through: Mr. Rajshekhar Rao, Sr. Advocate
with Mr. Pulkit Gupta, Ms. Rhea
Dube, Ms. Aanchal Tikmani & Ms.
Sonal Sarda, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 07.07.2022 I.A. 10243/2022 (for delay)
1. This is an application for condonation of delay of 64 days in refiling of the application under Order XIII A CPC. For the reasons stated in the application, delay in refiling is condoned.
2. I.A. 10243/2022 is disposed of.
I.A. 10242/2022 (u/O XIIIA R 4 CPC)
3. Let the Plaintiff file reply within four weeks. Rejoinder be filed within two weeks thereafter.
CS(COMM) 607/2021 & I.A. 15564/2021 (u/O XXXIX R 1 & 2 CPC)
4. Submissions have been heard on behalf of ld. Counsels in part.
5. One of the issues that has been raised in the present suit, as captured in the previous order dated 17th May, 2022, is that the mark 'PUMA' is one CS(COMM) 607/2021 Page 1 of 3 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:11 of the words being made available for sellers and vendors on IndiaMart website for being chosen to advertise and sell their products. Mr. Narula, ld. Counsel, has pointed out from some listing extracts available on record that on IndiaMart website there are various products which are being sold as 'PUMA' branded products which are, in fact, not 'PUMA' products. It is pointed out by Mr. Narula, ld. Counsel, that in one listing on IndiaMart website 'ADIDAS' socks are being promoted and offered for sale as 'PUMA' socks by the vendor. He submits that misuse of the mark 'PUMA' by allowing it to be used through a drop down menu results not only in infringement but also in severe dilution of the Plaintiff's mark.
6. On the other hand, Mr. Rajshekhar Rao, ld. Senior Counsel appearing for the Defendant submits that there cannot be an injunction on genuine products being sold on the Defendant's website. The purpose of making available the word 'PUMA' in a drop down menu is to assist vendors and sellers, who wish to sell genuine products, in preparing their listings.
7. In the opinion of the Court, the matter requires detailed hearing. However, insofar as the products which are not manufactured and sold by 'PUMA' are concerned, the principle of exhaustion would not apply prima facie in such cases.
8. Mr. Narula, ld. Counsel, is directed to give a list of products which are manufactured / sold by the Plaintiff to ld. Counsel for the Defendant in order to enable ld. Counsel to take instructions as to whether in respect of products which are not manufactured or sold by PUMA, the option of 'PUMA' word being chosen from the drop down menu, by the vendor, can be deactivated. The ld. Counsel for the Defendant to revert on the next date in this regard.
CS(COMM) 607/2021 Page 2 of 3 Signature Not Verified Digitally Signed By:Devanshu Signing Date:10.07.2022 18:09:119. In the meantime, the Defendant shall also supply to the ld. Counsel for the Plaintiff a complete list of all vendors/sellers who have listings of 'PUMA' products on the Defendant's website along with their contact details and any other information which is available with the Defendant within a period of two weeks.
10. Let the written submissions on behalf of the Plaintiff be brought on record.
11. List on 16th September, 2022.
12. This shall be treated as a part-heard matter.
PRATHIBA M. SINGH, J.
JULY 7, 2022 Rahul/SK CS(COMM) 607/2021 Page 3 of 3