The Hon’ble Delhi High Court has, in a suit for permanent injunction filed by PUMA SE (“Plaintiff”) against business listing website, IndiaMART (“Defendant”), directed the latter to de-list all infringing listings, and cease use or facilitate use of the mark PUMA in any manner that would amount to passing off or infringement of the Plaintiff’s rights in the mark PUMA.
It was the Plaintiff’s case that the Defendant was allowing unauthorized sellers to list counterfeit and non-genuine products under the mark PUMA on its website. The Defendant, on the other hand, argued that, it is not “using” the mark PUMA in any manner, rather the persons/entities, at the time of registering with the Defendant select the PUMA from the dropdown list and then sell counterfeit PUMA products, and therefore, those persons/entities, are liable for passing off or infringement of the Plaintiff’s rights in the mark PUMA.
The Court rejected the Defendant’s contentions and ruled that the Defendant’s search functionality, which included “PUMA” as a dropdown option, constituted trade mark “use” under the Trade Marks Act, 1999. Additionally, the court considered the Defendant’s lack of proactive measures to prevent infringement as insufficient.
This judgment holds significant weight for online platforms, emphasizing their responsibility to actively combat trade mark infringement even for user-generated content. It also broadens the definition of “trade mark use” beyond direct use to encompass platform functionalities that facilitate infringement.
PUMA SE vs. INDIAMART INTERMESH LTD CS(COMM) 607/2021
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