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CM APPL. 38450/2019 (for exemption) in CM(M) 1263/2019 CM APPL. 38535/2019 (for exemption) in CM(M) 1267/2019

1. Allowed, subject to all just exceptions. Applications are disposed of. CM(M) 1263/2019 & CM APPL. 38449/2019 (for stay) CM(M) 1267/2019 & 38534/2019

2. The Plaintiff/Respondent - Mr. Surinder Malik (hereinafter „Plaintiff‟) had filed the suit for permanent injunction, restraining infringement of trademark and passing off, and under Section 74 of the Information Technology Act, 2000 (hereinafter, „IT Act‟) seeking protection of the trademark 'DA MILANO'. The Plaintiff claims to be the owner of the mark 'DA MILANO' in various forms including in label and logo forms. Defendants No.1 to 4 in the suit are alleged infringers who have put posts on the Facebook and Instagram platforms advertising and offering to sell products bearing the mark 'DA MILANO'. The Plaintiff sought a permanent injunction against the alleged infringers and impleaded Facebook Inc. and Instagram LLC as Defendants No.5 and 6 so as to ensure that the posts containing the infringing marks are taken down.

7. The Court has perused the pleadings and the documents on record. The role of these platforms i.e., Facebook and Instagram, insofar as posts put up by third parties concerned is governed by the Information Technology (Intermediaries Guidelines) Rules, 2011. Considering the provisions of the IT Act and Information Technology (Intermediaries Guidelines) Rules, 2011, platforms such as Facebook and Instagram, which claim to be intermediaries not performing any active role in the posting of such information by third party alleged infringers, have a duty only to take down the posts which are brought to their notice by the Plaintiff in terms of Section 79(3), by following due diligence. The said Section and the Guidelines thereunder have been interpreted by the Supreme Court in Shreya Singhal v Union of India (2015) 5 SCC 1 to mean that any information received by the platforms would be by means of a Court order. The relevant excerpt from the judgment reads as under:

8. Accordingly, the following directions are issued against the said platforms i.e. Facebook and Instagram:

i) The Plaintiff shall inform Instagram and Facebook whenever they came across use of the mark 'DA MILANO' either in word form, logo form or in any other form on their platforms;

ii) Upon such information being received, as per Rule 3(4) of the 2011 Guidelines, the said posts shall be taken down, within the timelines prescribed;

iii) If the platforms have any doubt as to the violative or offending nature of the post (s), they shall intimate the Plaintiff, within the time prescribed, who shall avail of its remedies in accordance with law;

iv) Upon any order being passed by a Court of competent jurisdiction, the same shall be intimated to the platform, which shall abide by the said order.

9. The suit is decreed against Facebook and Instagram in the above terms. Decree sheet be drawn by the Trial Court, against Facebook and Instagram. They are no longer required to appear before the Trial Court. If the platforms do not take down the offending posts after due information, the Plaintiff is permitted to move the trial court, if the suit is pending, alternatively, the Plaintiff may avail of its remedies as available in law.