Facts of the Case:
Havells India Limited, the Plaintiff, filed an application against Shanghai CET Electric and others (hereinafter together referred to as the Defendants) alleging them to be guilty of committing Contempt of Court for violating the orders passed by the Honourable Court dated – 10.01.2019 and 31.05.2019 (hereinafter the “1st order” and “2nd order”, respectively). The Court in its 1st order, after establishing a prima facie case having been made by the plaintiffs, passed an interim injunction order, restraining Defendants from using the trademark of the Plaintiff. The Defendants alleged that they had removed all the listings of the infringing trademarks, thus, no further proceedings should be conducted. However, the Plaintiff complained of invisible listings on the website of the Defendants used in the source code/meta-tag to which the Defendants stated that the Court did not extend the listing for the removal with the source code/meta-tag of the word “HAVELLS”. Hence, the Plaintiff filed the application of Contempt of Court against the Defendant for violating the order passed by the Court.
Issues raised:
- Whether the Defendants committed Contempt of Court.
- Whether the use of Trademarks in source Code/meta-tag amounts to infringement.
Law involved:
- S.12 of the Contempt of Courts Act, 1971
- S.29 of the Trademarks Act, 1999
Analysis:
The Plaintiffs relied on DRS Logistics (P) Ltd. And Ors. v. Google India Pvt. Ltd. & Ors., MANU/DE/2920/2021 and Makemytrip India Pvt. Ltd v. Booking.com B.V. and Ors. 2022 SCC OnLine Del 1227, which held that an invisible use of the trademark would constitute “use” within the meaning of the Trade Marks Act, 1999 and was a violation of the rights of the proprietor of that trade mark and liable to be injuncted by the Court. The Plaintiff submitted that the order of the Court dated 10.01.2019, therefore, extended to any invisible use of the Plaintiff’s trademark on the website of the Defendants and was not limited to the visible use of the trademark openly by any infringing listing.
On the other hand, the Defendants submitted that the order of the Court dated 10.01.2019 was limited in its scope and extent. The Defendants submitted that the present suit was filed with a specific prayer seeking an injunction against any meta-tagging that may have been done for the Plaintiffs’ infringing marks in the source code of the listings available on the Defendants’ websites. No such ad-interim protection was, granted in favour of the Plaintiff in the order of the Court dated 10.01.2019. They submitted that the Plaintiff could not extend the scope of the ad-interim order dated 10.01.2019 and the onus of finding such an invisible use of trade mark could not be placed on the Defendants.
The Court while referring to the Case of H.M. Ramaul vs. State of Himachal Pradesh and Ors., stated that it was settled law that a party could not be held guilty of having committed contempt of Court if the order was not clear or specific and a bona fide doubt could at least be attributed in the mind of the parties on the scope and ambit of the order. The present case signified the same on the part of the Defendants. However, at the same time, in view of the law settled by this Court in DRS Logistics (P) Ltd. and Makemytrip India Pvt. Ltd., clearly the Defendants should have, on their own and without insisting on any further clarification from the Court, proceeded to remove all listings from their websites which used the Plaintiff’s trademark as a meta-tag.
Conclusion:
The Court held that the Defendants could not be held guilty of Contempt of Court for violating the 1st and the 2nd Order passed by the Court. However, the Court also clarified that the Defendants were required to remove all the listings from their websites having meta-tag bearing the infringing trademarks of the Plaintiffs within 48 working hours of the same being brought to their notice, or dispute the infringement within the same period.
Citations: Havells India Limited. vs. Shanghai CET Electric Co. Ltd. & Ors., decided by The High Court of Delhi on 01st June, 2022, available at https://indiankanoon.org/doc/70094331/ (last visited on 06th June, 2022)
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