The plaintiff filed an infringement suit against the defendants from using any mark which is identical or deceptively similar to the plaintiff’s word and device mark “BEARDO”. The Court granted ex parte ad interim injunction dated 4 May 2021. The Court directed Amazon (the defendant No. 3) to remove the products of Defendants 1 and 2 from the “BEARDO STORE” webpage.
The defendants 1 and 2 did not appear and the Court granted a permanent injunction by judgment dated 14 February 2024. The Court awarded costs against the defendants 1 and 2.
The Court noted that the defendant 3 (Amazon) co-operated by ensuring no further misuse of “BEARDO” in their platform – Amazon store. Considering this fact, the Court did not impose costs upon defendant 3.
Further, “in the event any presence/listing of sale of goods is found using ‘BEARDO’ mark of the plaintiff, irrespective of class, category or nature of goods, on the defendant no. 3’s e-commerce platform”, the plaintiff can contact Amazon and its counsels. In this regard, the Court listed the concerned email ids of contact points. Upon receipt of information, the defendant 3 should take down listings within 72 hours.
Comments
This is a short order where the Court has not delved deep into the area of intermediary liability; plausibly because the plaintiff did not press the case against the intermediary. The Court directed Amazon to take steps to prevent the misuse of the mark by the defendants 1 and 2 – which Amazon complied with. The Court appeared to be satisfied with the steps taken by Amazon.
I had earlier taken a position regarding intermediary liability in Infiniti Retail Limited v. M/s. Croma. And there were critical comments including from Prof. Dev Ganjee. My take on intermediary liability continues to be as follows:
- Safe harbour provision is necessary; else intermediaries cannot operate.
- Intermediaries should, however, put in place minimum safeguards to preclude trademark infringement. One of the least steps it can take is to merely inform the concerned trademark owner of potential infringement – if the trademark owner has an online presence. For example, intermediaries should have an updated global list of well-known marks. They should run a random check for potential trademark infringement – for e.g., before hosting a website or a webpage. If there is any case of potential infringement, the system can inform the concerned trademark owner – provided the trademark owner has online presence. The matter then falls under the domain of the trademark owner. The trademark owner can decide whether to act or not. In the world of emerging technologies, this is not an impossible task for the intermediary. This is not a fool-proof mechanism. But something is better than nothing. (I mentioned some relevant case laws in the ‘Comments’ section of Infiniti Retail Limited v. M/s. Croma.)
- The principle of due diligence should be interpreted to include ex ante minimum due diligence.
So as to clarify, this case concerning “BEARDO” does not appear to be a case of well-known mark. As I see it, Amazon exercised due diligence in this matter.
