The principle of international exhaustion allows lawful goods sourced internationally to be sold where the original trademark rights cannot create infringement claims in the jurisdiction of sale.

JUDGMENT

Jayant Nath, J.

IA No. 17397/2018

1. This application is filed by the plaintiff under Order 39 Rule 2A of CPC for taking appropriate action against defendant No.2.

2. The case of the plaintiff is that defendant No.2 is guilty of blatant and willful disobedience and violation of interim order passed by this court on 16.7.2018 and 22.11.2018.

Relevant part of the order dated 16.07.2018 reads as follows:

"IA No.9105/2018

This application is filed under Order 39 Rule 1 and 2 CPC seeking an interim injunction to restrain the defendants etc. from using the plaintiff's trademark including supplying, selling or offering any products, unless authorised by the plaintiff bearing the plaintiff's trademark through its website www.amazon.in. Other connected reliefs are also sought.

The plaintiff's case is that it is a worldwide manufacturer of goods using the plaintiff's trademark/brand `Beverely Hills Polo Club'. The details of the registration of the trademark of the plaintiff are given in para 18 of the plaint. It is pleaded that the plaintiff has emerged as a global lifestyle brand and apart from the registration of trademarks in India the brand has registrations all over the world. It is pleaded that the plaintiff has received information of widespread sale of counterfeit products on the website of the defendant No.1 in India sometimes in November 2017. There is sale of counterfeit products including apparel products, accessories, fragrance products, watches belts etc. It is pleaded that the plaintiff do not sell or offer for sale all their products on online sales platforms with exception to the sale of fragrance/perfumery products sold by plaintiff No.3 through an online sales distributor, namely, Cloudtail. The plaintiff on coming to know about the counterfeit products attempted to find out the name and contact details of the actual suppliers of these counterfeit products. However, it is pleaded that the customer care assistance module of defendant No.1 did not share the details of these counterfeit products. A cease and desist notice was issued on 13.12.2017 to defendant No.1 requesting defendant No.1 to take down the URLs and disclose the name and contact details of the suppliers of these counterfeit products. However, defendant No.1 refused to share the details including names and contacts of the manufacturer. However, they deleted the concerned URLs. Subsequently another notice has been sent by the plaintiff on 27.1.2018.

Plaintiff has made out a prima facie case. Balance of convenience is in favour of the plaintiff. The defendant shall remove forthwith from its platform any URLs which are pointed out by the plaintiff which are selling products in violation of the plaintiff's right.

Learned counsel for the plaintiff has also pointed out that what is happening is that if one of the URLs are removed a fresh link spring up on the website of defendant No.1 whereby the sale of counterfeit products continues unauthorisedly. Accordingly, keeping in view these facts and circumstances of the case a direction is passed to the defendants to give all details and information to the extent of such information is in its possession about the identity of the person who has uploaded the URLs which are advertising sale of counterfeit products using the trademark of the plaintiff illegally. The defendant shall also remove the URLs of the products listed at pages 1 to 10 of the documents filed by the plaintiff. Defendant will also give information about the URLs for which a communication has been sent to the defendant earlier also.

Reply be filed within four