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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Tata Sky Limited – Appellant
Versus
Linkedin Corporation & Ors. – Respondents
CS (COMM) 81 of 2020 and I.A. 2393 of 2020, 17615 of 2021
Decided On : 07-07-2023
Trademark Infringement - Dynamic Injunction - The court directed the defendant to take action against fake profiles using the plaintiff's trademark 'TATA SKY' on their platform and issued directions for the implementation of a dynamic injunction to address the proliferation of fake profiles.
Fact of the Case:
The Plaintiff filed a suit seeking a permanent injunction against the Defendants for allowing unauthorized use of the Plaintiff's trademark 'TATA SKY' on the platform, including fake profiles and unauthorized retail sellers.
Finding of the Court:
The Court directed the defendant to take action against fake profiles and issued directions for the implementation of a dynamic injunction to address the proliferation of fake profiles. The Plaintiff's name change was also approved by the Court.
Issues: Unauthorized use of trademark, fake profiles, and unauthorized retail sellers on the defendant's platform.
Ratio Decidendi: The Court considered the recurring nature of the grievance and the burden on the Plaintiff to file a fresh suit/application each time fake profiles emerged or resurfaced. The Court relied on the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 and directed the defendant to implement a dynamic injunction.
Final Decision: The Court disposed of the case and directed the defendant to take action against fake profiles using the plaintiff's trademark and issued directions for the implementation of a dynamic injunction. The Plaintiff's name change was also approved by the Court.
Well settled law, as reflected in the provided legal document, recognizes the importance of addressing recurring issues related to the unauthorized use and infringement of trademarks, especially in digital platforms. It emphasizes that courts are increasingly inclined to implement dynamic or flexible injunctive relief mechanisms, such as a "dynamic injunction," to effectively curb the proliferation of fake profiles or infringing content that repeatedly re-emerge.
The law also underscores the significance of leveraging existing regulatory frameworks, such as the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, which establish procedures for grievance redressal through designated Grievance Officers and appellate mechanisms. Courts are supportive of requiring digital platforms to publish details of their grievance redressal processes and to cooperate in taking timely action against infringing profiles or content.
Furthermore, it is well established that when infringement issues are recurring and pose ongoing burdens, courts may direct platforms to set up mechanisms or adhere to prescribed procedures to address grievances efficiently, avoiding the need for repeated litigation. This approach aims to balance the rights of trademark owners with the responsibilities of intermediaries under applicable regulations.
In summary, the law favors proactive, transparent, and mechanism-based responses by digital platforms to infringement issues, with courts endorsing the use of dynamic injunctions and regulatory compliance to prevent repeated violations and to facilitate effective enforcement of intellectual property rights.
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff-Tata Play Limited seeking a decree of permanent injunction restraining the Defendants from allowing any user on their platform from using the Plaintiff's trademark `TATA SKY'.
3. Firstly, it has been averred by the Plaintiff that numerous individuals who are not employees of the Plaintiff have created profiles on the platform of Defendant No. 1-LinkedIn, falsely indicating themselves to be employees of the Plaintiff. Secondly, the Plaint avers that certain Defendants are unlawfully using the name `TATA SKY' in their profile descriptions on the platform without any authorization, license, or permission from the plaintiff.
4. Specifically, the Plaint avers that Defendant Nos. 7 and 44, despite not being official retail sellers of the Plaintiff's product, they have portrayed themselves as retailers of the plaintiff on their profiles.
5. The Court had, vide order dated 26th April, 2023, directed that the Plaintiff is free to approach the Grievance Officer of the Defendant No. 1 giving the list of all fake profiles so that the appropriate action may be taken.
6. Vide order dated 26th April 2023 it was directed as follows:
"4. Mr. Tanmaya Mehta, counsel for Tata Sky, states that the above grievance is recurring and thus, the Court should consider putting a mechanism in place so that Tata Sky is not burdened to file a fresh suit/application each time fake profiles emerge or re-surface on Linkedin. Mr. Mehta suggests issuance of a dynamic injunction. Mr. Abhishek Singh, counsel for Linkedin relies upon the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (further amended vide notification dated 28th October, 2022) and states that Grievance Officer(s) of Linkedin are in place. He further states that a Grievance Appellate Committee is also available for adjudication of appeals arising from the decision of the Grievance Officer. Thus, Plaintiff presently has the legal remedy for redressal of their grievance.
5. Mr. Mehta, on instructions, states that after the injunction order, several more fake/infringing profiles have cropped up on Linkedln, which create unauthorized association with Tata Sky by using their registered trademark(s).
6. In view of the above, it is considered appropriate to direct Tata Sky to approach the Grievance Officer of Defendant No. 1 giving a list of such fake/infringing profiles so that an action can be taken by Defendant No. 1, in terms of the extant rules/notifications noted above.
7. Disposed of."
7. It is submitted by ld. Counsel for the parties that the Plaintiff had approached the Grievance Officer and requisite action has been taken.
8. Ld. Counsel for the Plaintiff submits that a dynamic injunction ought to be granted in this case. Clearly the proliferation of various fake profiles would make it extremely difficult to the Plaintiff to approach the Court on every occasion. Thus, in order to dispose of the suit with an effective framework in place for the Plaintiff the following directions are issued:
(1) Defendant No. 1-LinkedIn shall place on record the details of the Grievance Officers and the Rules applicable to persons creating LinkedIn profiles, as per LinkedIn's own policy.
(2) In addition, Linkedin shall also place on record the SoP, if any, followed by the Grievance Officers whenever a grievance is received under Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 (`2021 Rules').
(3) If the Plaintiff has any outstanding issue or suggestions in respect of manner in which the grievances are addressed by the Defendant No. 1-Linkedin, the Plaintiff may also place its own note on record.
(4) In addition, it is made clear that the details of the Grievance Officers in terms of 2021 Rules including the physical and email address shall be published openly for the public access on the website o
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