Havells India Limited & Anr vs Shanghai Cet Electric Co. Ltd. & Ors on 1 June, 2022

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Delhi High Court - Orders

Havells India Limited & Anr vs Shanghai Cet Electric Co. Ltd. & Ors on 1 June, 2022

1. This application has been filed by the plaintiffs praying therein that the defendant nos.3 and 4 be held guilty of having committed contempt of Court for having violated the orders dated 10.01.2019 and 31.05.2019 passed by this Court, and be proceeded against for such contempt.

2. This Court vide its order dated 10.01.2019, after finding a prima facie case having been made by the plaintiffs, passed the following ad-interim order:

"Consequently, till further orders, the defendant nos.

3 and 4, their group companies, associates, promoters, directors, licensees, franchisees, their family members, officers, agents, distributors, servants or anyone who may be acting for and on their behalf are directed to immediately remove all Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 the listings of links bearing the infringing mark and/or and as enumerated in document mentioned at Serial No. 9 of the documents filed along with the plaint vide index dated 9th January, 2018. Further, in the event the plaintiffs intimate/inform the defendant nos. 3 and 4 of any other alleged illegal listing on their portal, requisite legal action of taking down shall be complied within 48 working hours."

3. The plaintiffs had thereafter filed an application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (in short, the „CPC‟), claiming breach of the ad-interim order dated 10.01.2019 by the defendant nos.3 and 4, being I.A. No. 8426 of 2019. In the said application, the plaintiffs asserted that in spite of a clear order of this Court dated 10.01.2019, directing the defendant nos. 3 and 4 to immediately remove all listing of „links‟ bearing the infringing mark/logo „HAVELLS‟ and/or (hereinafter referred to as the „infringing marks‟), and in spite of a written request by the plaintiffs, the defendant nos.3 and 4 have failed to do so. It was asserted that a complaint against 72 listings was made by the plaintiffs to the defendant nos.3 and 4 vide email dated 10.05.2019, out of which only 5 were removed by them by 15.05.2019. For the remaining 67 listings, the defendant nos.3 and 4 took a stand that the plaintiffs‟ registered infringing marks were not being used for the product listings. The plaintiffs, in the application, therefore, alleged as under:

"12. It was also stated in the email that all the other Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 67 illegal listings, appear in search result for the word "Havells" on Alibaba.com, and all of the said listings are in relation to products which are either identical or allied/ cognate to plaintiffs products and that, upon opening the source code/html code of the webpages of the respective illegal listings, it was discovered that all of the said 66 illegal listings clearly contain the word "HAVELLS" in the meta- tag/source code. As a result of this illicit meta- tagging, any search for Havells on Alibaba.com will also show product listings which may not explicitly contain the word "Havells" in the listing description, however appears in the respective source code on account of usage of the word "Havells" in a clandestine manner."

4. Clearly, the reading of the application shows that the plaintiffs asserted that all listings which include the use of source code/HTML/meta- tag bearing the infringing marks and/or the word „HAVELLS‟ was covered by the ad-interim order dated 10.01.2019 of this Court and were to be removed by the defendant nos.3 and 4.

5. The said application came to be listed before this Court on 31.05.2019, when the defendant nos.3 and 4 appeared and stated that they have removed all listings which included the infringing marks and/or the word „HAVELLS‟. Based on the said statement, no further proceeding was conducted on the application filed by the plaintiffs under Order XXXIX Rule 2A of the CPC and the same was disposed of.

6. The plaintiffs, thereafter, again complained of listings on the website of the defendant nos.3 and 4 which used the word „HAVELLS‟ as a meta- tag/source code. The defendant nos.3 and 4, however, vide their email dated 11.07.2019, contended that the order of this Court dated 10.01.2019 did not extend to the removal of listings with the source code/meta-tag of the word Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 „HAVELLS‟. The defendant nos.3 and 4 further took a stand that there was a specific prayer made for seeking removal of listing with meta tag/source code bearing the infringing marks of the plaintiffs in prayer (E) of I.A. No.271 of 2019 filed by the plaintiffs under Order XXXIX Rule 1 and 2 of the CPC, however, no order in terms of the said prayer was passed by this Court.

7. Faced with this stand, the plaintiffs filed an application, being I.A. No.10907 of 2019, praying therein for a judgment on admission under Order XII Rule 6 of the CPC. The said application is still pending adjudication before this Court.

8. The plaintiffs have thereafter filed the present application contending that the refusal of the defendant nos.3 and 4 to remove the listing from its website bearing the meta-tag/source code containing the infringing marks of the plaintiffs and/or the word „HAVELLS‟ is a violation of the orders of this Court dated 10.01.2019 and 31.05.2019.

9. The learned counsel for the plaintiffs, placing reliance on the judgments of this Court in DRS Logistics (P) Ltd. And Ors. v. Google India Pvt. Ltd. & Ors., MANU/DE/2920/2021 and Makemytrip India Pvt. Ltd v. Booking.com B.V. and Ors. 2022 SCC OnLine Del 1227, submits that an invisible use of the trademark would constitute „use‟ within the meaning of the Trade Marks Act, 1999 and is a violation of the rights of the proprietor of that trade mark and liable to be injuncted by this Court. He submits that the order of this Court dated 10.01.2019, therefore, extends to any invisible use of the trade mark of the plaintiffs on the website of the defendant nos.3 and 4, and was not limited to the actual use of the trade mark openly by any infringing listing.

Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17

10. On the other hand, the learned senior counsel for the defendant nos.3 and 4 submits that the order of this Court dated 10.01.2019 was limited in its scope and extent. He reiterates that I.A. No.271 of 2019 filed by the plaintiffs under Order XXXIX Rule 1 and 2 of the CPC had a specific prayer seeking injunction against any meta-tagging that may have been done for the plaintiffs‟ infringing marks in the source code of the listings available on the defendant nos.3 and 4‟s websites. No such ad-interim protection was, however, granted in favour of the plaintiffs in the order of this Court dated 10.01.2019. He submits that by way of the present application under Order XXXIX Rule 2A of the CPC, the plaintiffs cannot extend the scope of the ad-interim order dated 10.01.2019. He further submits that the onus of finding such an invisible use of trade mark cannot be placed on the defendant nos.3 and 4 and, therefore, in any event, no such injunction could have been extended or granted against the defendant nos.3 and 4 in the facts of the present case.

11. I have considered the submissions made by the learned counsels for the parties. The interim order dated 10.01.2019 clearly directed the defendant nos.3 and 4 to immediately remove all listing of „links‟ bearing the infringing marks of the plaintiffs. The defendant nos.3 and 4 were further directed to remove/take down all illegal listings on their portal, on the same being pointed out by the plaintiffs, within 48 working hours. The earlier request of the plaintiffs to remove all listings bearing the infringing trade mark of the plaintiffs as a meta-tag, though initially denied by the defendant nos.3 and 4, was acceded to by the defendant no. 3 and 4, on the plaintiffs filing an application under Order XXXIX Rule 2A of the CPC, being I.A. No.8426 of 2019.

Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17

12. At the same time, the defendant nos.3 and 4 continued to reiterate their stand that the interim order dated 10.01.2019 did not extend to the removal of listings bearing the infringing marks and/or the word „HAVELLS‟ of the plaintiffs as a source code/meta-tag. The said averment remains to be decided by this Court, though, it was raised in the form of an application being I.A. No.10907 of 2019.

13. It is settled law that a party cannot be held guilty of having committed contempt of Court if the order is not clear or specific and a bona fide doubt can at least be attributed in the mind of the parties on the scope and ambit of the order. [Ref: H.M. Ramaul v. State of Himachal Pradesh and Ors., AIR 1991 SC 1171]. The present case demonstrates the same on the part of the defendant nos.3 and 4.

14. However, at the same time, in view of the law settled by this Court in DRS Logistics (P) Ltd. (supra) and Makemytrip India Pvt. Ltd. (supra), clearly the defendant nos.3 and 4 should have, on their own and without insisting on any further clarification from the Court, proceeded to remove all listings from its websites which use the trade mark of the plaintiffs as a meta-tag.

15. In DRS Logistics (P) Ltd. (supra), this Court held as under:

"82. Mr. Lall is right in saying that Sections 2(2)(b) and 2(2)(c) have to be read in addition to Section 29(6), 29(7), 29(8) and 29(9). Having said that a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark.

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107. In so far as the reliance placed by Mr. Sethi on the judgment of the Australian Court in the case of Veda Advantage vs. Malouf Group Enterprises Pvt. Ltd. [2016] FCA 255 is concerned, he contended that keyword meta-tags are trademarked words embedded in the source code of a website by the creator, unlike the keywords used by Google in the AdWords Program, meta-tags are not entirely invisible. They can be located by someone who knows what to look for, whereas trademarked as keywords are invisible to the consumer; and they are not used as a trademark and their invisible use shall not amount to infringement, nor does a keyword denote connection in trade between the advertiser and the trademark owner. Keywords are also not being used to distinguish the service of one trader from another. Suffice to state, I have already in paragraph 88 above held that the effect of meta-tags and keywords is the same. I have also held above that even invisible use of a trademark would constitute "use" within the meaning of the provisions of the TM Act. That part, I have also held that the result of use of meta-tags and keywords is not different as both are instrumental for a search result to appear on the top of the search engine result page except that the sponsored links to the advertisers‟ web page is marked with the symbol denoting "Ad", which is followed by the URL. So, the keyword even assuming is invisible, the effect it has for advertising is that the traffic of the website of the trademark owner is diverted to that of the advertiser which shall have the effect of passing off of the goods and services of the trademark owner as that of the advertiser.

108. Mr. Lall is right in stating that the keywords embedded in meta-tags are used in indexing of website, which is what keywords of Google AdWords Program are used for and in any case, Mr. Sethi has not been able to distinguish the precedents in the case of People Interactive (I) Pvt. Ltd. vs. Gaurav Jerry, MANU/MH/1087/2014 : MIPR 2014 (3) 101 and Mattel Inc. & Ors. vs. Jayant Agarwalla & Ors., MANU/DE/1378/2008 : 2008 (38) PTC (416) (Del). . Even on the facts, this case can be differentiated since in that case the advertiser was providing services which were ancillary to the trademark owner. In Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 other words, the trademark owner was providing financial services related to credit rating whereas the advertiser conducted a business assisting the consumers with poor credit rating and rectifying errors in the credit reports given by the proprietor of the trademark. Furthermore, it was stated that an ordinary and reasonable consumer in the context of Australia would not get confused between the organic search result and the sponsored search result, which appears within a yellow ad box. Even in that case the Court has stated in paragraphs 253 and 263 that certain words in the Adtext including the single word trademark of the owner which was visible, suffixed with generic words was likely to cause confusion. The definition of an average consumer in India has been well settled. For the reasons above, this judgment has no applicability in the facts of this case."

16. Following the above judgment, this Court in Makemytrip India Pvt. Ltd. (supra), held as under:

"26. The nature of use of a trademark as a keyword on the Google Ads Program deserves to be mentioned in the present context. The goodwill in a mark is created by the proprietor of the mark. The reason why the user may be searching for a particular mark is due to the investment made by the trademark owner in the said mark in promotion, advertisement, merchandising and other promotional activities. The user acquires knowledge of the mark due to the investment made by the proprietor and the popularity that the mark achieves. When a user, therefore, searches for a well-known mark or a mark, which he or she has heard about in the past, on a search engine, it is due to the goodwill and reputation which is associated with the mark. It has nothing to do either with the search engine or with the competitor. The distinctive character of the said mark is because of the use by the Plaintiff and the promotion which the Plaintiff does of its own trademark.

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32. This Court is of the opinion that the use of the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 mark „MakeMyTrip‟ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use under Sections 2(2)(b), 29(4)(c), 29(6)(d), 29(7) and 29(8)(a) of the Act. It is now well settled in India that use of a registered mark by competitors even as metatags would be infringement, though the same may be invisible to a user as held in DRS Logistics (Supra). The relevant paragraph reads as under:

"86. Having noted the above Judgments, it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietors' website to the advertisers'/infringers' website shall amount to use of mark for the purpose of Section 29, which includes Section 29(6) and 29(8), related to advertising."

33. Moreover, there is not much of a difference in the use of a mark in a metatag or a source code of a website which is not visible and in use of a mark as a keyword by Google Ads Program, inasmuch as the mark being used in a hidden manner does not take away the fact that it is, in fact, „use‟ of the mark as defined under Section 2(2)(b) of the Act in relation to those very services. Here again, it is pertinent to refer to the observations of the ld. Single judge in DRS Logistics (supra) who has held as under:

"90. It is important to note, that had the AdWords Program of Google not existed, the only option available to the infringer/ prospective advertiser in order to achieve the same result would have been to change their meta-tags (source coding) which has already been held to be "use" of trademark and as such infringement. This aspect also highlights the fact that the same result is sought to be achieved through different means."

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35. Defendant No.1 is using the mark of the Plaintiff, even though the same is not visible, for the purpose of advertising in an attempt to divert business from the Plaintiff‟s website to its own Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 website. The same is done by encashing on the goodwill of Plaintiff‟s mark „MakeMyTrip‟. In the prima facie opinion of the Court, this practice amounts to taking unfair advantage of the Plaintiff‟s mark and also falls foul of section 29(8) of the Act which is extracted below:

"(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark."

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47. Thus, the "invisible" use of a mark as a keyword can constitute passing off as a matter of principle. This, however, would not mean that the Plaintiff cannot be permitted to book its own trade mark as a keyword. The Plaintiff itself can surely use its trademark as a keyword on the Google Ads Program if it wishes to promote itself on the search engine."

17. In view of the above, while holding that the defendant nos.3 and 4 cannot be held guilty of being in contempt of Court or being in violation of the orders of this Court dated 10.01.2019 and31.05.2019, it is clarified and further directed that the defendant nos.3 and 4 shall henceforth remove all listings from its websites having the meta-tag bearing the infringing trade mark of the plaintiffs „HAVELLS‟ and/or immediately on being pointed out of such listing by the plaintiffs. The removal be done within 48 working hours of such request by the plaintiffs, unless the defendant nos.3 and 4 dispute the use of the infringing marks of the plaintiffs for such listing as a meta-tag or otherwise, within the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17 same time frame. The present order shall be read as an addition to the order dated 10.01.2019 passed in I.A. No.271 of 2019.

18. The application stands disposed of in the above terms. CS(COMM) 11/2019 & LA. Nos.8352-53/2022, 8385-86/2022 List for further proceedings/hearing on 22nd September, 2022.

NAVIN CHAWLA, J JUNE 1, 2022/Arya/AB Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:03.06.2022 14:06:17

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Delhi High Court - Orders