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2022 Supreme(Del) 195
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Ani Media Pvt. Ltd. - Appellant
Versus
Vinay G David & Ors. - Respondents
CS (COMM) 703/2021 & I.As.17439/2021, 3676/2022
Decided On : 15-03-2022
Mr. Sidhant Kumar And Ms. Manyaa Chandhok, Advocates, for the Appellant, Mr. Neel Mason, Mr. Vihar Dang, Mr. Siddharth Vardhman, Ms. Devangiri Rai, Advocates, Mr. Mukul Rohatgi, Sr. Advocate, Mr. Tejas Karia, Mr. Ajit Warrier, Mr. Gauhar Mirza, Mr. Varun Pathak, Ms. Amee Rana, Mr. Thejesh R. & Mr. Sheniza Farid, Advocates, for the Respondent.
The central legal point established in the judgment is the protection of registered trademarks under the Trade Marks Act, 1999, and the prevention of infringement and misuse of trademarks in domain names and social media profiles.
Headnote:
Trademark Infringement - Protection of 'ANI' Trademark - The Trade Marks Act, 1999 - Section 29, Section 134 - The Information Technology Act, 2000 - Section 79 - The court restrained the defendants from using the 'ANI' mark and domain name 'www.aninewsindia.com' and directed Google LLC to de-index the website. Meta Platforms Inc. was directed to deactivate and suspend the Facebook page of Mr. Vinay G. David.
Fact of the Case:
The Plaintiff, ANI Media Pvt. Ltd., sought protection of its registered trademark 'ANI' against the Defendants who were using the mark in their domain name, website, and social media profiles. The Plaintiff claimed to be the prior adopter and registered owner of the 'ANI' mark in India since 2003.
Finding of the Court:
The Court found that the Defendants intended to misuse the Plaintiff's mark and that their services were identical to those offered by the Plaintiff. The Court proceeded ex parte against Defendant Nos. 1 and 2 and permanently injuncted them from using the 'ANI' mark or any derivatives, including on the internet and social media platforms.
Issues: The issues involved the infringement of the Plaintiff's trademark 'ANI' by the Defendants, the misuse of the mark in domain names and social media profiles, and the potential deception of internet users.
Ratio Decidendi: The Court's decision was based on the prior adoption and registration of the 'ANI' mark by the Plaintiff, the intention of the Defendants to misuse the mark, and the potential for deception of internet users. The Court also considered the non-appearance of Defendant Nos. 1 and 2 and the actions taken by Defendant No. 3 and Defendant No. 4.
Final Decision: The Court decreed in favor of the Plaintiff, permanently injuncting Defendant Nos. 1 and 2 from using the 'ANI' mark and related derivatives. The Court also directed Google LLC to de-index the Defendants' website and Meta Platforms Inc. to deactivate and suspend the Facebook page of Mr. Vinay G. David.
ORDER
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff seeking protection of the registered trademark - 'ANI' which was adopted by the Plaintiff in the year 1971. The Plaintiff is ANI Media Pvt. Ltd. The Defendants who are arrayed in the present suit are Defendant No.1-Mr. Vinay G. David and Defendant No.2-Mr. Sanjay Halder. Defendant No.3-PDR Ltd. is the Registrar of the domain name - www.aninewsindia.com. Defendant No.4 - Google LLC is the search engine and Defendant No.5 - Meta Platforms Inc. is the social media platform i.e., formally known as Facebook Inc. where the Defendant Nos. 1 and 2 have used the mark 'ANI' in their respective accounts.
3. The case of the Plaintiff is that it is a well-established multimedia news agency offering syndicated news feed with over 100 news bureaus in India, South Asia and across the globe under the name of 'Asia News International' and 'ANI'. The Plaintiff's case is that it is the prior adopter, user and registered owner of the ANI marks in India since at least 2003. To this end, the Plaintiff also states that it has been operating in the said business for over five decades since the year 1971. The international news agency Reuters is also stated to be a significant shareholder and business affiliate of the Plaintiff. Moreover, 'ANI', are also registered trademarks of the Plaintiff in various classes such as Class 16 and Class 38, as has been detailed in paragraph 2 of the plaint. The Plaintiff's mark ANI is also an integral part of the Plaintiff's registered domain names www.aniin.com and www.aninews.in since 1999 and 2010 and have been used uninterruptedly since then. The Plaintiff is also stated to have a vast digital presence with more than 6.3 million followers on its Twitter account.
4. The Plaintiffs right in the mark 'ANF is clearly established due to the prior adoption and registration by the Plaintiff. Defendant Nos. 1 and 2 seek to use the same identical mark in respect of news and media related services.
5. The Defendant launched a website by the name www, aninewsindia. com representing themselves as 'ANINEWSINDIA'. The said website is a news related website. The Defendants were thus using AM not merely as a mark but also as a domain name/website. This Court vide order dated 12th January, 2022 restrained Defendant Nos.l and 2 from using the Plaintiffs mark on the domain name and website as also on the Defendants' Facebook/social media profiles. Defendant No.3 was also directed to block the domain name 'www.aninewsindia.com' till further orders. Defendant No.4 was directed to de-index the website. Defendant No.5 had submitted that they had not received the paper book and the Court had directed the same to be supplied to Defendant No. 5. The relevant portion of the said order dated 12th January, 2022 is as under:
"13. In the circumstances, it is directed as follows:
(a) the Defendant Nos. 1 and 2 its partners or proprietors, officers, servants, agents and all persons acting by, through or under them from using or infringing or passing off, a mark which is identical or deceptively similar to the registered trademarks of the Plaintiff, in any manner whatsoever, till the final adjudication of the captioned Suit;
(b) the Defendant Nos. 1 and 2 its partners or proprietors, officers, servants, agents and all persons acting by, through or under them from using the Impugned Domain Name www.aninewsindia.com, in any manner whatsoever, till the final adjudication of the captioned Suit;
(c) the Defendant Nos. 1 and 2 from restrained from publishing or using in any manner any copyrighted content published by the Plaintiff on its registered domain names www.aninews.in, till the final adjudication of the captioned Suit;(d) Defendant No. 3 is to block the use of the Impugned Domain Name www.aninewsindia.com granted to Defendant No.2 till the final adjudication of the captioned Suit; and
(e) Defendant No.4 to immediately de-index, takedown, block and
