In the case of New Balance Athletics Inc. v. Ashok Kumar Trading as www.myshoeshop.in, CS(COMM) 531/2022, decided on 03.08.2022, the Delhi High Court has directed all Internet service licensees to block the website www.myshoeshop.in, which was accused of selling ‘first copy’ of various popular footwear brands like New Balance, Adidas, Louis Vuitton and Nike at highly discounted prices.
New Balance Athletics Inc. (hereinafter referred to as “the Plaintiff”) a business registered under the laws of the State of Massachusetts in the United States of America (hereinafter referred to as “USA”), has been designing, manufacturing, marketing, and selling shoes under the mark “NEW BALANCE,” “NB Device Mark,” and “N Device Mark” brands.
The Plaintiff has a well-known and strong market presence since 1987, in more than 120 countries. On the contrary, Ashok Kumar, trading as www.myshoeshop.in (hereinafter referred to as “the Defendant”) is an online platform, that expressly states that the shoes being offered by it and listed on the website are “first copies”, i.e., duplicates as good as originals. Besides selling first copies of the shoes belonging to the Plaintiff, the Defendant also sells products of other well-known and reputed brands like Adidas, Louis Vuitton, Nike, etc. at steep discounts.
In the backdrop of the abovementioned factual matrix, the Plaintiff thus filed the present application for an interim injunction in order to restrain the Defendant from infringing upon the Plaintiff’s trademark by selling its copy on their website.
ISSUES BEFORE THE DELHI HIGH COURT
Whether the Defendant infringed upon the trademark of the Plaintiff by selling first copies of the original products?
Plaintiff claimed that orders of protection against similar actions were previously issued in the Plaintiff’s favour. In this regard, the Plaintiff brought to the attention the Orders passed by the Delhi High Court (hereinafter referred to as “High Court”) in the cases of PUMA SE and Ashok Kumar Trading as SastaJoota & Ors. CS(COMM) 383/2021 and New Balance Athletics Inc. and Ashok Kumar Trading as www.sastajoota.com & Ors., CS(COMM) 339/2022.
DECISION AND FININGS
The High Court was of the view that the Plaintiff has established a prima facie case for the grant of an injunction. Additionally, the High Court was of the opinion that the balance of convenience favours the Plaintiff. It was held that if the Defendant is not prevented from operating their web portal vide an ad-interim injunction, the Plaintiff and the consumers would suffer an irreparable harm.
The High Court also observed that, after reading the website’s contents, it appeared at the outset that the Defendant is not only infringing the Plaintiff’s trademark, but also those of other well-known brands.
As a result, the High Court instructed GoDaddy.com, LLC, the Defendant No. 2 herein, to provide the names and addresses of the owners and registered users of the website www.myshoeshop.in. The High Court additionally instructed to restrict or deactivate the aforementioned website till further orders.
The era of the Internet and the present digital world has brought about a lot of changes in the social and legal realities of people. The desire for big brands has become easily visible, if not accessible, to the people in general who can avail the products with a few clicks through their gadgets.
However, the said situation has also resulted in an overlap of interest of vendors who wish to make money through online platforms and thus infringement of Intellectual Property Rights is rampantly visible.
The present matter especially pertains to the infringement of trademarks of the Plaintiff where the Defendant started advertising and selling the products on its website, openly claiming the products to be the “first copy” of the original brands. The said act of the Defendant did infringe the trademark of the Plaintiff who retains the sole right to sell their products under their registered trademark. Thus, the Defendant was restrained from selling the said duplicate products and their website was blocked as directed by the High Court.
-Team AMLEGALS, assisted by Mr. Rishav Kumar (Intern)
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