Present:
Sh. Ajay Amitabh with Sh. Pran Kishan, counsel for plaintiff.
Proxy counsel for defendant no.1.
Sh. Pankaj, counsel for defendant no.2.
Sh. Vipul Sharma, counsel for defendant no.3.
The
plaintiff is yet to provide its application U/o I Rule 10 CPC, it is assured to
provide the same today. In that eventuality reply will be filed on the next
date and arguments will be heard.
However,
there are two more applications viz one U/o I Rule 10 CPC by defendant no.3 and
another U/o I Rule 10 by defendant no.2. Both are heard in detail; list for
orders on 14.07.15. And then for reply arguments on application U/o I Rule 10
CPC of plaintiff on 23.07.15.
A
(Inder Jeet Singh)
ADJ02 (South), Saket
New Delhi /06.07.2015
TM No. 30/2013
23.07.2015
ORDER
{on defendant no. 3's application dated
11.07.2014 under order I Rule 10(2) CPC
(hereinafter referred as first application) AND
on defendant no. 2's application dated 02.08.2014 under order I Rule 10(2) CPC
(hereinafter referred as second application)}
Present:
Clerk for counsel for plaintiff.
None for defendant no. 1.
None for defendant no. 2.
None for defendant no. 3.
Arguments
on applications under order I Rule 10(2) CPC of defendants no. 2 and 3 were
heard on 06.07.2015, the same is scheduled for orders today. Bar has suspended
the work today.
XXXXXX
(Introduction) The plaintiff M/s.
Lacoste S.A, filed suit for permanent injunction,
under the provisions of the Trade Marks Act and Copyright Act, for restraining
the defendants from infringing intellectual property rights, as plaintiff is
registered proprietor of trade mark / label / domain name LACOSTE. Moreover,
the plaintiff adopted the trade mark LACOSTE as an essential and material part
of its email ID and domain name www.lacoste.com and www.shop.lacoste.com. Whereas the
defendant no. 1 Rediff.com India Limited is a registrant and owner of website www.shopping.rediff.com and it is engaging in displaying, selling, offering for sale,
supplying, soliciting and conducting trade through its website, of
apparel, perfumes, shoes,
bags, purses, accessories and plaintiff discovered that defendant no. 1 is
conducting its business without leave and license from plaintiff by infringing
the plaintiff's trademark. That is why, the suit to restrain it.
The
defendants no. 2 Network Solutions LLC is registrar of defendant no. 1's website
www.shopping.rediff.com. The defendant no. 3
Indian Computer Emergency Response Team (CERTIn) is an administrative body
constituted under the provisions of Information Technology Act, it has
authority to block the viewing of a website, which is in violation of any laws
for the tine being in force. The plaintiff seeks relief against the defendant
no. 2 to direct it to deregister the defendant's website and take down the
contents of the aforesaid website, which is infringing plaintiff's trademarks
and decree is sought against the defendant no. 3 to block the viewing the said
website of defendant for displaying or sale or delivery of products bearing the
plaintiff's trademarks.
The
defendants no. 1 and 3 filed their written statements, however, the defendant
no. 2 by way of separate application is seeking leave to file written
statement.
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2.1
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The defendant no. 3 in
its application / first application, requests
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to strike off the name of
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defendant no. 3. CERTIn
operates pursuant to
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delegated
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authority
and
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under the
Ministry of Communications and
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Information Technology, pursuant to notification
dated 27.10.2009 and it serve
as national agency for
incident response under section 70B of the Information Technology Act by
notification G.S.R. 181(E) dated 27.02.2003 and G.S.R. 529(E) dated 07.07.2003,
it is a single authority for issuing of instructions in context of blocking of
websites and procedure for blocking of websites, however, by another notification
G.S.R. 410(E) dated 17.05.2010, last two notifications have been rescinded.
Therefore, due to absence/ want of blocking power, the defendant no. 3 will not
be in a position to comply with any directions with regard to block viewing of
the impugned website. Otherwise, the defendant no. 3 will comply the directions
to be given by the Court but so far statutory requirements are concerned, the
defendant no. 3 has no such powers lies with CERTIn.
2.2 Similarly, the
defendant no. 2 by way of its application / second application, requests to
delete the name of defendant no. 2 from the array of parties, since there are
allegations of online sale of infringing products against the defendant no. 1,
the defendant no. 2 has been added as a proforma party, as it is registrar of
domain name www.rediff.com. However, the defendant
no. 2 has been wrongly impleaded, there is no allegation of infringement
against the defendant no. 1 and relief sought against the defendant no. 2 is to
be directed to deregister the impugned website and take down the contents of
website. Since the defendant no. 2 merely registrar of domain name and it is
not responsible for the contents therein, the presence of defendant no. 2 is
not required, otherwise the defendant no. 2
undertakes to this Court,
it shall abide by the directions or orders passed by the Court.
2.3 Shri Vipul Sharma,
counsel for defendant no. 3 and Shri Pankaj, counsel for defendant no. 2,
argued in support of the application. The defendant no. 2 is deriving reasons
from the submissions of defendant no. 3.
The
defendant no. 3 relies upon the gazette notifications to demonstrate that
defendant no. 3 performs its functions within the set up of statutory
provisions of law and under delegated authority and there is no power to block
the impugned site, consequently, it is not a necessary party. Moreover, there
are certain parameters to be observed for blocking of the site, which were
demonstrated and existing under the provisions of guidelines/ notifications,
like interest of the sovereignty and integrity of the Indian security of the
State, friendly relations with the foreign States or public order or for
preventing incitement of the commission of any cognizable offences and none of
them covers the individual case, alike of the plaintiff, therefore, the
defendant no. 3 is not a necessary or proper party. Lastly, Ld. counsel for
defendant no. 3 relies upon various orders dated 23.07.2014 in M/s. Lacoste
S.A. vs. M/s. Ninty Nine Labels P. Ltd. (TM No. 310/2013), M/s. Tommy Hilfiger
Licencing LLC vs. M/s. Ninty Nine Labels P. Ltd. (TM No. 311/2013) and The Polo
Lauren Company vs. M/s. Ninty Nine Labels P. Ltd. (TM No. 312/2013), wherein
the name of CERTIn was deleted and in one of the case, even the plaintiff
therein, has consented to drop the name of CERT
In. On the same analogy there is no point by the
present plaintiff M/s.
Lacoste S.A. to keep the name of defendant no. 3
in the array of parties.
2.4 Ld. counsel for defendant
no. 2 also relies upon the decisions in various cases presented by the
defendant no. 3 that name of defendant no. 2 Network Solutions LLC was dropped
from the array of parties in those cases. Accordingly, the name of defendant
no. 2 is to be strike off as it would not serve any purpose nor there is any
possibility of decree against defendant no. 2, since the suit is based on
allegation between the plaintiff on one side and defendant no. 1 on the other
side.
3.
Whereas the plaintiff has juxtaposition reservations particularly after
having occasion to listen the submissions of defendant no. 3 and of defendant
no. 2, Ld. counsel for plaintiff requests that defendants 2 & 3 are proper
parties, if not, necessary parties, they cannot be relieved at this juncture
from the array of parties. Ld. counsel has gone through the pleading as well as
the notification of defendant no. 3 and material gathered/ data called from the
website that even in 2015, there were block orders or sites were blocked by the
defendant no. 3. At this stage, plain reading of plaint, is suffice to gather
the allegations against the defendant no. 2 and defendant no. 3, their status
is not disputed, therefore, their names are to be kept alive till disposal of
the suit. Further submissions of the plaintiff are based on the reasons given
in case law, the same are as follows :
(i)
Lalli
Enterprises vs. Dharam Chand & Sons, 100 (2002) DLT 20 – In a
suit for injunction under
the provisions of the Trade and Merchandise Act, 1958 question for territorial
jurisdiction was raised and it was held that the averments made in the plaint
are suffice to see the territorial jurisdiction and it may require evidence to
be lead to be determine the territorial jurisdiction.
(ii)Ms. Susanne Lenatz vs. C.J.
International Hotels Limited, ILR (2007)
Supp. (2) Delhi 210 and Sundargarh Shramik Sangh vs. The Industrial Finance
Corporation of India Limited, 2005 (II) OLR 366 – While dealing with an
application u/o VII rule 11 CPC read with order I rule 10 (2) CPC, on the point
of proper or necessary party, it was held that presence of parties is necessary
for complete and final decisions of question involved in the suit, while
elobrating necessary party is one, without whom no order can be made
effectively and proper party is one in whose absence effective order can be
made but its presence is necessary for complete and final decision.
It
is concluded that the first and the second applications are liable to be
dismissed, since the same are without merits and the same has been filed to
delay the proceedings.
FINDINGS
4.1 The contentions of both
the sides are considered and assessed. During healthy arguments of parties,
both the parties sincerely concedes that there were two notifications and at
later point of time, the last two notifications were rescinded, however, in the
year 2009, section 69A was introduced vis a vis The Information Technology
(Procedure and Safeguards for Blocking for Access of Information by Public)
Rules, 2009 were framed, the relevant section 69A and rule 10 are being
reproduced hereunder:
Section
69A – Power to issue directions for blocking for public access of any
information through any computer
resource. (1) Where the Central Government or any of its officer specially
authorized by it in this behalf is satisfied that it is necessary or expedient
so to do,
in the interest of sovereignty and integrity of
India, security of the State, friendly relations with foreign States or public
order or for preventing incitement to the commission of any cognizable offence
relating to above, it may subject to the provisions of subsection(2) for
reasons to be recorded in writing, by order, direct any agency of the
Government or intermediary to block for access by the public or cause to be
blocked for access by the public any information generated, transmitted,
received, stored or hosted in any computer resource.
(2)
The procedure and
safeguards subject to which such blocking for access by the public may be
carried out, shall be such as may be prescribed.
Rule 10 Process of order of Court for blocking of information – In case of an
order from a competent Court in
India for blocking of any information or part thereof generated, transmitted,
received, stored or hosted in a computer resource, the Designated Officer
shall, immediately on receipt of certified copy of the Court order, submit it
to the Secretary, Department of Information Technology and initiate action
as directed by the Court. (underline supplied)
4.2 For the following
reasons, the first application and the second application are allowed :
(i)
What was existing once upon a time in the form of
notification, it is replaced by codified law in the form of section 69A of Act
2000 and procedure embodied in rule 10 of Rules 2009 in respect of blocking of
information.
(ii)
There are two type of modalities to be followed one
under the rules 2009, when there is a complaint, the Nodal officer deals it as
per rule 6 and the same is examined by the Committee and second is the process
of order of the court; the plaintiff had not made any request or complaint to
the Nodal officer, whereas the suit was filed in December 2013. So far process
of order of court is concerned, the matter is still subjudice in the court.
(iii)The substantial relief claimed in the prayer clause either with regard to injunction order, order for
rendition of account of profit or delivery of are against defendant no. 1, the
relief claimed against defendant no. 2 is to deregister the impugned website
and against defendant no. 3 is to the extent to block the view of the impugned
website, which are subject matter of the Act, 2000 and Rules 2009.
(iv)In paragraph 13 of orders dated
23.07.2014 (in TM no. 310/2013,
311/2013, 312/2013), placed on record by defendant no. 3, also shows that
there was no objection by the M/s. Lacoste SA to delete name of CERTIn and in
terms thereof the application was allowed and name of M/s. CERTIn was deleted
in three cases.
Accordingly,
both the applications stand disposed off and names of defendant no. 2 and
defendant no. 3 are deleted from the array of defendants. Let amended memo of
parties be filed.
List
on 09.11.2015 for arguments on
application u/o XXXIX Rules 1 & 2 CPC qua the plaintiff and defendant /
M/s. Rediff.com India Ltd.
(Inder Jeet Singh)
ADJ02 (South), Saket
New Delhi /23.07.2015
