In trademark infringement cases, courts cannot grant broad injunctions without identifying specific infringing domains; reliefs must target clearly defined trademarks as per Sections 28(1) and 29 of the Trade Marks Act.

JUDGMENT

Prathiba M. Singh, J. (Oral)--The present suit has been filed seeking permanent injunction restraining the infringement of trademarks, passing off, unfair trade practices, damages, rendition of accounts and other reliefs. The Plaintiff is the registered proprietor of the trademarks `SNAPDEAL'/'SNAP DEAL' and its formative marks. Defendant Nos. 1 to 32 are Domain Name Registrars (hereinafter, "DNRs") engaged in the business of creation, registration and sale of domains to the Registrants. Defendant No.33 is the Department of Telecommunications (hereinafter, "DoT") and Defendant No.34 is the National Internet Exchange of India (NIXI). It is the case of the Plaintiff that the said DNRs have registered various domain names containing the Plaintiff's registered trademark `SNAPDEAL'.

2. In the present suit, one of the reliefs prayed for in the application being I.A. 5407/2021 under Order XXXIX Rules 1 & 2 was that the Defendant Nos.1 to 32 ought not to offer any domain names which incorporate the Plaintiff's mark `SNAPDEAL'. The same is set out below:

"(a) An order for temporary injunction restraining the Defendant Nos. 1-32 and all others acting through them or on their behalf from suspending all registrations listed in Document A and to reveal the name and contact particulars of the registrants of the same, and from offering any domain names which incorporate the Plaintiff's SNAPDEAL trademarks listed in paragraph 10 of the plaint thus amounting to infringement of the Plaintiff's registered trademark, passing off and unfair competition,;

3. A detailed judgment on 18th April, 2022 has been passed by the Predecessor Bench on the application being I.A. 5407/2021 seeking interim injunction, wherein the Court has held that such a wide order, without identifying the specific domain names, cannot be granted and for every domain name specific relief has to be sought by the Plaintiff after identifying the domain name. The relevant observations from the judgment dated 18th April, 2022 are extracted below:

"12. The basic case that the plaint seeks to make out is that such rogue websites keep mushrooming, and that it is impracticable for the plaintiff to approach this Court repeatedly on coming to know of such websites. In each case, it is submitted that, there are hundreds of websites which are found to be registered under domain names that infringe the plaintiff's registered "SNAPDEAL" marks.

13. It is submitted that Defendants 1 to 32 have not only registered infringing domain names containing the "SNAPDEAL" thread, but are also continuing to offer, to persons who log on to their websites, similarly infringing domain names.

14. The plaint further alleges that, in violation of Clause 3.3.1 of the agreement which every DNR has to execute with the ICANN, as well as Clauses 4.3, 4.4.3 and 6.1 of the policy of the NIXI with whom the DNRs are required to be registered and whose policy is binding on them, Defendants 1 to 32 are masking the identity of the domain name registrants and offering privacy services, which is entirely illegal.

XXX

93. Having held as above, the plaintiff's case faces a serious hurdle, when it comes to the reliefs sought in the plaint. The plaint is styled as a quia timet action. "Quia timet", etymologically, means "since he fears". P. Ramanatha Aiyar's Advanced Law Lexicon observes, in respect of the expression quia timet, thus: "Before any injury has occurred; a suit can be filled to restrain an anticipated wrong or tort, and the Court is satisfied, it may issue a quia timet injunction"