Prompt action to prevent the sale of counterfeit products and the adverse impact of the latching-on feature on brand reputation and revenue.

JUDGMENT

Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.

I.A. 16259/2023 (for early hearing)

2. This is an application filed by the Plaintiff for early hearing of the application filed under Order XXXIX Rule 1 and 2 CPC.

3. Early hearing is allowed. Application is disposed of.

I.A. 16723/2022 (u/O XXXIX Rule 1 and 2 CPC)

4. The Plaintiff - Triology Solutions Pvt. Ltd. is the proprietor of the trademark `MUUCHSTAC' and its formations, and sells medicated and non-medicated cosmetic products on various online retail platforms such as Defendant No.1-Flipkart Internet Pvt. Ltd.

5. The Plaintiff has filed the present suit seeking protection of its registered mark `MUUCHSTAC' [IMG] bearing no. 3919768 in Class 3. The grievance of the Plaintiff in the present suit is that Defendant No. 2-Saira Bano is indulging in sale and manufacturing of counterfeiting products on the Flipkart platform, wrongly portraying itself as one of the 'more sellers' of Plaintiff's products. The allegation is that names portrayed as 'more sellers' on the website of Defendant No.1 of Plaintiff's goods keep changing and are not constant and Defendant No. 1 authorizes them to interfere with Plaintiff's product listings.

6. Vide order dated 31st October 2022, while noting that the larger issue of the feature `latching on' was pending consideration before the ld. Division, the Court observed as follows:

"25. Learned counsel further submits that insofar as relief of disabling the latching feature is concerned, the larger issue is pending before the Division Bench in FAO(OS)(COMM) 282/2022 and vide order dated 27.09.2022 the Division Bench has stayed the observations made by the learned Single Judge in paragraphs 17 to 20 of the impugned order therein. 26. In view of the fact that the larger issue of the feature of 'latching on' is pending consideration before the Division Bench, no relief can be granted to the Plaintiff at, this stage. However, it is open to the Plaintiff to inform Defendant No.1 of any infringing link and needless to state that looking to the fact that the products in question are cosmetic products, Defendant No.1 shall take prompt action to take down the links of all resellers appearing on the webpage relating to Plaintiff s products."

7. The above order of the ld. Single judge in this matter rejected the prayer for interim relief at that stage owing to the order dated 27th September, 2022, passed in FAO(OS) (COMM) 282/2022 titled Flipkart Internet Private Limited v. Akash Aggarwal & Anr. dealing with the issue of `latching on'. The ld. Division Bench had observed as follows:

"7. In so far as the respondent (plaintiff) is concerned, the appellant has undertaken, without prejudice to its rights and contentions, that it would take down the link of all resellers appearing on the webpage relating to the respondent's products. However, it is submitted that the impugned judgment has wide ranging observations, which are not limited to the respondent's (plaintiff) case alone. The impugned judgement effectively proscribes the appellant from using the feature of latching on or indicating "more sellers" in respect of seller of any goods.

8. Mr. Rajiv Nayyar, learned senior counsel appearing for the appellant has drawn the attention of this Court to Paragraphs 17,18,19 and 20 of the impugned order:

....

9. Mr. Nayyar submits that the observations, as set out above, effectively results in the appellant being restrained from using the feature of "latching on" on its site. He submits that the said feature per se does not infringe any law.

10. The assumption that the feature of "latching on" falls foul of the Trademarks Act, 1999 or amounts to passing off goods requires examination. Indisputably, it is permissible for the resellers of genuine products to also sell their products on the e-platform and the same would not infringe the Trademark Act.

11. Prima facie providing a link of another seller on the webpage of a particular seller,