November 16, 2022
Mr Mahboob Alam vs Flipkart
Introduction:
In a nutshell, the facts of the case are such that the Plaintiff is aggrieved by the fake/counterfeit products being sold on the platform of the Defendant No. 1 i.e Flipkart under the Trademark “SKYSPIRIT” which is owned by Mr. Mahboob Alam, Mr. Alam sought relief for infringement and passing off of his trademark which was used on counter feitbags of different size and features. The Plaintiff also sought Interim Injunction under Order 39 Rule (1) & (2) restraining defendants from selling counterfeit goods till disposal of the suit..
Plaintiff’s Stance:
The Plaintiff is in the business of creating, producing, and selling good quality bags directly under its registered trademark “SKYSPIRIT”. The Plaintiff has spent a huge amount on advertisement and has also made high amount revenues from online sales. It was further asserted that Flipkart Internet Private Limited had given him “Certificates of Achievement” for achieving “Gold Seller Status on the Flipkart Marketplace for exceptional performance.”, which proved that Flipkart Internet Private Limited appreciated the volume of sales that Mr. Alam produced and obtained for the premium quality/highly rated bags it offered under its registered trademarks. In addition, the plaintiff claims that Flipkart Internet Private Limited gave a “Master Planner” award because the plaintiff’s products never ran out of stock, which improved the overall consumer experience, the plaintiff alsoruns a website selling goods under its registered trademarks showcasing a sizable online presence. Plaintiff further stated that the Defendant No. 2 filed a rectification of its registered mark before the trademarks registry just to change the status of the trademark application from registered to unregistered so it can continue selling its counterfeit goods on the platform of Flipkart.
Question Before the Court:
The Plaintiff argued that the defendants no. 2 to 4 have set up fake listings by using the plaintiff’s registered trademark, “SKYSPRIT,” on Defendant No. 1’s platform and therefore are trying to sell their own fake/counterfeit items on the said listings with the plaintiff’s registered trademark in addition to mapping their fake products on the plaintiff’s product listings under its registered Trademarks. Even though the fake listings include the name of the plaintiff’s trademark, the goods sold or offered for sale under the said listings bear other trademarks, such as “fedra,” “Astro,” “Beston,” and “Beston Life,” but that their trademark, designs and further details are depicted in the same way as they are on the listings of the plaintiff. It was further stated that complaints of Mr Alam to Defendant No. 1 Flipkart were left unresolved. As a result, the plaintiff moved forward to the ad-interim, ex-parte urgent reliefs he requested in the present matter.
Observation:
The court carefully considered the arguments and read the accompanying application and the documents filed by the plaintiff, Shri Mahboob Alam. The Court was satisfied that the plaintiff has established a solid basis for granting exparte ad interim relief. The balance of convenience also lied in the favour of Plaintiff for the issuance of an interim order. The court was convinced that denying the plaintiff’s request for an ad-interim order to safeguard its IP rights would result in irreparable loss and harm to the business.
Conclusion
The court concluded that the defendant no. 2 to 4 should be restrained from listing/mapping under the name of “SKYSPIRIT” as it could be confusing for the consumer sand also violation of Mr. Alam’s Intellectual Property rights. They were further restricted from selling, offering to sell, marketing goods that are identical or similar to the goods of the plaintiff.
In this case plaintiff, Mr Mahboob Alam was represented by Shri Anshuman Upadhyay and Shri Naseem, who are an integral part of Markshield.
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October 31, 2022
Tibra Collection Vs. Flipkart Internet Private Limited
With the advent of e-commerce websites and its rising popularity among the public, it is quite frequent to witness scams by exploiting latch-on mechanisms on e-commerce websites. You may have observed several times that you order any product online and you get cheap-quality products under the brand of the same company. It is the result of latching on by unauthorised sellers. This also leads to customer dissatisfaction. This gives the third-party unauthorised sellers the liberty to list their products under the name of the reputed brands that are already market leaders of the existing segment on the e-commerce websites. Now, this practice is unjustified to the original sellers of the products and can result in the brand name getting infamous and losing reputation among the customers.
This case study is about Tibra collection, the plaintiff who was suffering from a similar problem. Tibra collection is a clothing brand that produces its clothing apparel for men and women and lists them for sale on the website of Amazon and defendant no 1 Flipkart. As the ethnic clothing and fashion culture boomed in the past years, Tibra collection made a lot of sales on the website of Flipkart by providing good quality products to the consumers and generated a total revenue of 2.96 crores which is a great milestone for any budding seller in the e-commerce space. Even Flipkart appreciated the sales generated under the brand by awarding it “Golden seller” status, highest seller tier on Flipkart. Tibra collection was enjoying a great number of sales and reputation because of its sky-rocketing business tactics and strategies to make an astonishing revenue in crores. Tibra collections also became a renowned brand in the online clothing and apparel segment not only that but the satisfying reviews were another major evidence that the customers were enjoying the products they received from the Tibra collection, everything was going smooth. The problem began when one day Tibra collection received a feedback email for one of the products, the email quoted the dissatisfaction of a customer associated with the product that he/she has bought from Tibra collection, Plaintiff asked for the product invoice from the customer. After checking through its records of delivery plaintiff came to know that the product which was being complained about by the customer was not delivered by it. Plaintiff was so confused about the wrong delivery of the product that took place under the trademark and brand name of “Tibra collection” as the invoice contained the name of the brand.
Here are some of the tips to remove hijackers on your Amazon and Flipkart listing to make sure that you don’t get caught up in similar scams.
After thorough research Plaintiff came to know about the false sellers that were listing their products under the name of Tibra collection, Plaintiff tried to raise its grievance to Flipkart, Defendant no 1 but the e-commerce giant didn’t take any action on it and completely ignored the issue as the Plaintiff had applied but not obtained a trademark certificate for the mark Tibra Collection. To secure the rights for its Trademark and the reputation of its brand name Tibra collection, the Plaintiff filed a lawsuit against Defendant no 1 for allowing third-party unauthorised sellers Defendant no 2, 3, 4, and 5 from unlawfully using the brand name of Plaintiff and listing similar products on Defendant no 1 website.
The Plaintiff was represented by Shri Anshuman Upadhyay and Shri Naseem Sheikh, of Mark Shield who highlighted the fact that the Defendant No 1 Flipkart has failed to address the issue appropriately as latching on allows the e-commerce giant to earn more commissions by creating unlawful competition as such counterfeiters sell their poor quality products cheaper than the market price thereby diverting consumer traffic on the portal of Flipkart.
The Saket court considered these arguments vital and came up to a conclusion that all the products that the defendants were listing on their website were counterfeits of plaintiff and ordered to restrain all the defendants from listing their products under the brand Tibra collection as such illegal use might result in irreparable damage which may cause to the brand Tibra collection.
October 3, 2022
Rekha Nath v. Flipkart Internet Private Limited
Rekha Nath v. Flipkart Internet Private Limited before Hon’ble Saket District Court, CS(COMM) 365/2022
The Plaintiff- Rekha Nath in the above case is a graphic designer/painter who deals in manufacturing and retailing of printed photos, decorative paintings and posters under the trademark “Rainbow arts”. The artistic designs include these paintings and posters that are usually created by hand or using a computer, which involves the consumption of a lot of time, effort, intellectual labour and skill and also requires artistic bent of mind. The goods that are designed and manufactured by Plaintiff are then offered for sale on the online retail market on Flipkart.
Plaintiff’s products quickly became well-known among customers on account of her high standards product quality, stunning illustrations, creative work, and reasonable rates. She consistently receives positive customer feedback, which attests to the high caliber of Plaintiff’s products. On the Flipkart online marketplace, Plaintiff sold 29,200 units of her goods. She was also awarded with ‘Certificates of Achievement’ by Flipkart.
The problem began to unfold when a few other sellers started latching on the Plaintiff’s trademark “Rainbow Arts” and copyright, began selling inferior versions of the same goods made or produced by the plaintiff under her own trademarks from the very same listing as first created by the Plaintiff on Flipkart. As soon as Plaintiff came to know about the violation of her registered trademark she immediately raised concern and confronted Flipkart which is the defendant no 1 in this matter to which Flipkart refused to address the plaintiff’s legitimate complaints.
The Plaintiff filed a suit against Flipkart for allowing others for unjustified use of her trademark “Rainbow Arts”. In this case Plaintiff-Rekha Nath was represented by Sh. Anshuman Upadhyay, Sh. Naseem and Sh. Prashant. Hon’ble Court also held that a prima facie case has been established in her favour. Her trademark and copyright are continuously and routinely violated by the defendants, so the balance of convenience is likewise in her favour. The defendants may inflict irreparable harm to the brand if they are permitted to act in the same way.
The suit at interim stage concluded that all the uncertified sellers who were listing their products under the name of “Rainbow arts” will be revoked from continuing this further and will be restrained from listing on Flipkart that is identical to the brand “Rainbow arts” to prevent any illegal use.
September 24, 2022
Vasundhra Jewellers Pvt Ltd v/s Kirat Vinodbhai Jadvani
Vasundhra Jewellers Pvt Ltd v/s Kirat Vinodbhai Jadvani & Anr CS (COMM) 363/2022
The Delhi High Court on 21 September 2022 decided not to grant an ad-interim injunction in favour of a jewellery store in Delhi, stating that an exclusive right to utilize the word “Vasundhra” could not be granted because it is a common and widely used name in India.
The court stated this observation in a ruling regarding a trademark infringement and passing off suit filed by Vasundhra Jewellers which was established on 28.10.1999 and has a showroom in Pitampura. The business that owns the showroom has filed a lawsuit against a Gujarati businessman who manufactures and sells clothing under the name “Vasundhra Fashion” and has been requesting an injunction barring him from utilizing a mark that is confusingly identical to its trademark, “Vasundhra”
The plaintiff has registered its device trademarks only and hence Justice Navin Chawla pointed out that each of them is a “device mark” which means that the word “Vasundhra” is not protected by the such registrations. According to the court, Section 17 of the Trade Marks Act states that if a mark includes multiple elements, its registration must therefore confer on the owner exclusive right for the trademark that is used as a whole and not for the utilization of a portion of trademark so registered. It further stated that neither the plaintiff nor the defendant would be able to assert any exclusivity rights over the term “Vasundhra.”
The bench added that although the plaintiff’s and defendant’s items aren’t the same, they can be considered to be remotely related to each other. If compared overall, the two marks may sound the same, yet they are visually distinct because the plaintiff’s mark includes the letter “V” and the word “Vasundhra,” whereas the defendant’s mark includes an image of a leaf and the word “Vasundhra Fashion.”
Additionally, defendant number 1, in this case, claims to have two manufacturing facilities, 4 storage facilities, and 7 offline stores, whereas the plaintiff only has one store in Delhi. The court stated that its products are also available on the internet at Meesho and Flipkart, in which the plaintiff isn’t really present. The court took note of the defendant’s argument that his goods are intended for people from lower social classes who really are looking for less expensive clothing, whereas the plaintiff’s goods are said to be intended for those from higher social classes.
The court stated, “The plaintiff is engaged in the business of selling jewellery, and while its profit margin may appear to be immense, it might not, at this stage, be enough to presume that the trademark has acquired such goodwill and reputation that it can be associated only with the plaintiff and also for other goods.”
The plaintiff has not been able to establish a presumptive case for the granting of a prohibitory injunction, according to the court, even as registration and usage of the plaintiff’s mark is a device of its own.
Regarding the parties’ turnover, the court added, “Simply because the plaintiff deals in jewellery items-which by their very nature are much more expensive—resulting in a higher turnover for the plaintiff, would not give the plaintiff a better right over an otherwise widely used name in India.
Vasundhra Jewellers previously argued that it had spent a significant amount of money and time developing the brand identity and had hired Prachi Desai and Shweta Tewari, two well-known Indian celebrities as a part of their brand development.
According to the plaintiff’s application filed with the court, “the goods of the plaintiff have been frequently displayed at different fashion meetings, most recently in March 2022 in the ‘FDCI X Lakme Fashion Week’, where actress Ms Jahnvi Kapoor served as the show-stopper for fashion designer Punit Balana and decided to wear jewellery from the plaintiff.
Through his attorney, the plaintiff Kirat Vinodbhai Jadvani claimed that 80% of his business was not only B2B but also limited to the State of Gujarat. Additionally, it was argued that the plaintiff cannot assert any exclusivity rights over the name “Vasundhra,” which is widely used throughout India, specifically in the state of Gujarat.
An appeal with title as Vasundhra Jewellers Pvt. Ltd. V/s Kirat Vinodbhai Jadvani & Anr. (FAO(OS) (COMM) 287/2022) against the order of Single Judge was filed before the Division Bench of Delhi High Court by the Plaintiff. However, the Appellate court was not inclined to interfere with the Judgment and dismissed the appeal.
Mark Shield was pleased to assist defendant – Kirat Vinodbhai Jadvani to present his case before the Hon’ble High court of Delhi, with the combined efforts of Advocates Mr. Anshuman Upadhyay, Mr. Naseem and Mr. Prashant.
The plaintiff- Vasundhra Jewellers Pvt. Ltd. was represented by Mr. Sagar Chandra, Mr. Prateek Kumar, Ms. Shubhie Wahi, Ms. Sanya Kapoor, Mr. Parrek & Ms. Aarushi Jain, Advs.
August 8, 2022
Akash Agarwal v Flipkart Internet Private Limited, CS (COMM) 492 of 2022, decided on 02-08-2022.
Akash Agarwal v Flipkart Internet Private Limited, CS (COMM) 492 of 2022, decided on 02-08-2022
The Delhi High Court recently ruled that e-commerce platform Flipkart’s feature allowing third-party merchants to ‘latch on’ to a more successful brand’s name is nothing more than ‘riding piggyback’ and constitutes passing off. As a result, it asked Flipkart to stop such function for the Plaintiff’s listings created under his brand.
Latching on is a procedure that allows third-party sellers to include multiple goods from a certain brand in their own listings, along with images of those products. This is achievable by visiting the Flipkart website and selecting the ‘Opportunities’ option under the ‘Listings’ page.
According to Justice Prathiba Singh, the feature amounts to unfairly getting the benefit of the goodwill that lives in the more popular brand or firm, and is a method of cashing in on their reputation.
‘‘This Court is satisfied that such a feature cannot be allowed to be used or offered, to the detriment of the owner of the brand or the person who has created the original product. Consent and authorization of the brand owner and the listing owner would be required before such conduct by any seller ispermitted,’’the decision stated.
The Learned Judge noted that the introduction of e-commerce has introduced new aspects to Intellectual Property (IP) Rights and that a passing off action, which was previously limited to items with identical logos, markings, names, and labels in the real world, has now taken on a fresh dimension in this matter.
However these platforms provide a large window and some elements, such as the ‘latch on’ feature, might cause injury, according to the Court.
“Flipkart’s ‘latch on’ function allows you to latch onto multiple merchants. A feature like this cannot be utilized to harm a brand. Flipkart has given other parties access to these. As a result, Flipkart must refrain from latching onto the plaintiff’s items in order to allow third-party participants to profit from their goodwill and reputation… Flipkart must disable the ‘Latching On’ function”the Court ordered.
Mr. Akash Aggarwal is the sole owner of a firm operating under the mark/name ‘V Tradition,’ which is involved in the business of selling women’s clothes on different retail e-commerce sites, including ‘Amazon’, ‘Meesho’ and ‘Myntra’ as well as that of Defendant No.1 – Flipkart.
Plaintiff claims that he utilizes the mark/name ‘V Tradition’ on all clothing, he manufactures and sells. Plaintiff claims that he began producing and selling his items under the mark/name ‘V Tradition’ on the e-commerce platform Flipkart.
He claims to have gotten more than 2.5 lakh orders from Flipkart alone, with 1.41 crore clicks. Plaintiff’s items bearing the trademark ‘V Tradition’ have sold about Rs.18 crores on Flipkart alone. According to Plaintiff, Plaintiff’s items have over 82,000 user reviews on Flipkart. Plaintiff’s goods listings on Flipkart conspicuously display the mark ‘V Tradition’ on all of his products. Plaintiff claims to have spent a significant amount of money on the manufacture of clothing for women, as well as on hiring women models to wear Plaintiff’s garments and whose images are used to showcase and promote Plaintiff’s wares on e-commerce platforms such as Flipkart.
Plaintiff’s accusation on Flipkart in the current claim is that the said platform encourages and allows third-party merchants to use the technique of ‘latching on’ and utilize the mark ‘V Tradition’ along with images of plaintiff’s products on the aforementioned platform. As a result, various third-party merchants that are unrelated to Plaintiff are able to depict ‘V Tradition’ and capitalize on the popularity of Plaintiff’s products and designs. Such third-party vendors additionally misappropriate Plaintiff’s images for his own items offered under the ‘V Tradition’ label.
As a result, Plaintiff has launched this claim to prevent Flipkart from allowing third-party merchants to ‘hang on to his brand and merchandise’. The suit requests that Flipkart refrain from allowing any individual or entity to represent itself and/or operate its business on the website of Defendant No. 1 as ‘more sellers’ of goods offered for sale by Plaintiff on his own product listings on the official site of Defendant No. 1-Flipkart under the Plaintiff’s trademarks and from allowing unauthorized sellers to use the pictures of the Plaintiff’s product listings and name.
Mr. Nayar, Senior Advocate for Defendant No.1 – Flipkart, contends that the mark ‘V Tradition’ used by Plaintiff is not registered; hence, Flipkart has no way of knowing whether the mark is protected or not. Without prejudice to the foregoing, he submitted under instructions that, according to Plaintiff, there are known to be 45 third-party vendors that have already begun exploiting Plaintiff’s trademark ‘V Tradition’ product descriptions and similar images. Flipkart would remove the aforementioned listings within 48 hours of receiving the URLs for the same.
Mark Shield was pleased to assist Plaintiff- Akash Aggarwal for representing his case before Hon’bleHigh Court of Delhi with combined efforts of Mr. Anshuman Upadhyay, Mr. Naseem and Mr. Prashant, Advocates.
Defendant No.1 –Flipkart was represented by Mr. Rajiv Nayyar, Sr. Advocate with Ms. Manjra, Mr. Sidharth Chopra, Ms. Shilpa Gupta, Ms. Surabhi Pande and Mr. Kuber, Advocates.
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