MINI PUSHKARNA, J.

CS(COMM) 803/2024.

1. The present suit has been filed under Section 134 of the Trade Marks Act, 1999 and Sections 51 and 55 of the Copyrights Act, 1957 for permanent and mandatory injunction restraining passing off of trademark, infringement of copyright, delivery up, damages, rendition of accounts, etc.

2. As per the case canvassed on behalf of the plaintiffs, the plaintiffs are carrying on their business for the goods under their trademarks/labels “MAHARAJA”, "" and other MAHARAJA formative trademarks, including, but not limited to, "" (MODERN MAHARAJA), "" (MUKUT MAHARAJA), "" (METRO MAHARAJA) and “OMAHARAJA”.

3. It is further submitted that with respect to the rights of the plaintiffs in their art works in the said trademarks/ label, the plaintiffs" original artistic work has become distinctive, therefore, the plaintiffs are further protected under the Copyrights Act, 1957, as well.

4. It is submitted that plaintiffs in 2009, honestly and bonafidely adopted the said trademarks/labels “MAHARAJA”, "", and other MAHARAJA formative trademarks, including, but not limited to, "" (MODERN MAHARAJA), "" (MUKUT MAHARAJA), "" (METRO MAHARAJA) and the trademark “OMAHARAJA”.

5. The plaintiffs in order to fortify its rights in the said trademarks/labels under the statute, have filed various trademark applications, details of which, are as follows:

6. It is submitted that these applications of the plaintiffs have not attained registrations, owing to third party filing opposition proceedings, against the same.

7. It is submitted that plaintiffs are carrying on their business activities under the said trademarks/labels on the internet through its own interactive website, i.e., https://maharajamoldedfurniture.com, as well as through other websites, including, Amazon, Flipkart, etc.

8. It is submitted that defendant no.1, i.e., Flipkart Internet Pvt. Ltd., is one of the largest e-commerce platforms, operating in the country. It is submitted that the plaintiffs have many listings on the site of the defendant no.1, i.e., Flipkart. However, on account of the latching-on feature of Flipkart, other sellers have also latched-on to the listing of the plaintiffs.

9. The present suit has been filed because the plaintiffs are, in particular, aggrieved by the fact that on account of this latching-on feature on the listing of the plaintiff by the defendant no.1/Flipkart, other sellers, who are not selling the genuine “MAHARAJA” products of the plaintiffs, have latched-on to the listings of the plaintiff. In particular, learned counsel appearing for the plaintiffs, submits that defendant nos. 2 and 3 herein, are selling products, which are not genuine products of the plaintiffs, however, they have latched-on to the listings of the plaintiffs.

10. It is submitted that defendant nos. 2 and 3 are sellers on the platform of defendant no. 1, i.e., www.flipkart.com, who tag themselves as alternative sellers of the goods of the plaintiffs, in the very own product listing/display of the plaintiffs on www.flipkart.com, where they sell their products at further discounts.

11. It is submitted that when the defendant nos. 2 and 3 sell their products, the invoices, which are issued by them, are in the name of the plaintiffs, as if the products sold by defendant nos. 2 and 3, are the products of the plaintiffs.

12. Attention of this Court has been drawn to the Tax Invoices issued by defendant no.2, wherein, the trademark of the plaintiffs, i.e., MAHARAJA, has been used in the invoice. The Tax Invoice issued by AKS TRADING, defendant no. 2, as given the document folder, is reproduced as under:

13. Similarly, the Tax Invoice issued by Ns Marketing, defendant no.3 also shows that while selling its products by latching-on to the listing of the plaintiffs, the invoice is issued by using the trademark “MAHARAJA”. Thus, it is the contention of the plaintiffs, that defendant no.3 is also selling its products, as if, the same originate from the plaintiffs. The Tax Invoice issued by Ns Marketing, i.e., defendant no. 3, as given in the document folder, is reproduced as under:

14. This Court records the statement of the learned counsel appearing for the plaintiffs that defendant nos. 2 and 3, do not have a separate listing on Flipkart, but have latched on to the listing of the plaintiffs. Considering the submission made before this Court, this Court is of the view that the sale of the products by defendant nos. 2 and 3, to pass off their products, as those emanating from the plaintiffs, cannot be allowed.

15. Attention of this Court has been drawn to the listing of the plaintiffs, wherein, in the name of the seller, AKS TRADING, i.e., defendant no.2, is being reflected.

16. Printouts of the plaintiffs" listing as occurring on the Flipkart, are reproduced as under:

17. Attention of this Court has also been drawn to another listing of the plaintiffs, wherein, NS Marketing, i.e., defendant no. 3, has been shown as the seller. The screenshots of the same, are reproduced, as under:

18. The common law rights of the plaintiffs in the word mark MAHARAJA, have been recognized by Courts of Law. This Court notes that the plaintiffs, have filed a suit against a third party, being CS (COMM) 144/2021, which is pending in District Court, Saket, wherein, it has been alleged that the defendants therein, are guilty of passing off their goods, as those of the plaintiffs", under the deceptively similar trademark MAHARAJA/MAHARANA. Thus, the learned Trial Court restrained the defendants therein, from using the registered trademarks/labels by categorically holding that the plaintiffs herein were evidently the prior user of the mark MAHARAJA.

19. Against the restraint order, appeal bearing no. FAO (COMM) 125/2023, was filed before this Court, which came to be listed before a Division Bench of this Court.

20. The Division Bench, by its judgment dated 31st May, 2024, passed in FAO (COMM) 125/2023, recognised the rights of the plaintiffs herein, as prior user of the mark “MAHARAJA”. The relevant paragraphs of the judgment dated 31st May, 2024, passed by the Division Bench, in the case of Rajendra Vardichand Jagetia & Anr. Versus Modern Mold Plast Pvt. Ltd., FAO (COMM) 125/2023, are reproduced, as hereunder:

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2.2 The Respondent has been using the trademark "MAHARAJA" in relation to goods under Class - 20 since the year 2009 and has obtained several registrations for the "MAHARAJA" mark including "MAHARAJA" (device); "MODERN MAHARAJA" (device); "MUKUT MAHARAJA" (device); "METRO MAHARAJA" (device) and "OMAHARAJA" (word). The Respondent has filed the Oppositions and Rectification petitions against the trademarks of the Appellants in 2019 and thereafter.

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6.1 At the outset, it is apposite to reproduce the marks which form the subject matter of the dispute.

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7.1 The learned Commercial Court found that even prior to the commencement of the business by the Appellants, the reputation of the Respondent was established by showing sufficient sales. The Court also found that the Appellants had purchased the goods of the Respondent in the year 2017. Thus, the Respondent being a prior user coupled with the fact of adoption of identical and deceptively similar marks by the Appellants, would evidence a prima facie case of passing off. We find no infirmity with this finding of the learned Commercial Court.

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21. Thus, the common law rights of the plaintiffs in the word mark "MAHARAJA", have been recognised, by this Court.

22. Accordingly, this Court is of the considered view that sale by defendant nos. 2 and 3, by latching-on to the listings of the plaintiffs, and selling their products, as emanating from the plaintiffs, cannot be allowed. The feature of latching-on cannot be used to either sell counterfeit products, or to mislead the gullible public into purchasing products, as emanating from a particular source, when they do not so originate from the said source.

23. Accordingly, in view of the above, this Court is of the view that defendant no.1, i.e., Flipkart, ought to extend its "brand gating" feature, as per the Flipkart Policies, to the listings of the plaintiff.

24. Learned counsel appearing for the plaintiffs submits that he shall be satisfied in case the defendant no.1, i.e., Flipkart, extends the "brand gating" feature, as per the Flipkart Policies, to its listings on the Flipkart, so that third parties do not sell any products, which do not emanate from the plaintiffs, and which amounts to latching on.

25. This Court notes that vide order dated 28th August, 2023 passed in CS (COMM) 709/2022, this Court had passed an order with respect to latchingon, in the following manner:

“xxx xxx xxx

13. Considering the stand of Flipkart today, the application for interim injunction is disposed of taking on record the statement on behalf of the Defendant No.1-Flipkart that it would not permit any latching-on of unauthorized sellers on the Plaintiff’s listings. Whenever any seller seeks to sell Plaintiff’s products on Flipkart using the latching-on feature, Flipkart would examine the matter at its own level. If any ambiguity or doubt arises, it would be free to seek a confirmation from the plaintiff.

14. The above position shall enure in respect of all sellers who may seek to latch onto the plaintiff’s listings. Thus, latching-on, insofar as the Plaintiff’s products are concerned, would not be permitted by Flipkart on its platform by any sellers or resellers. If any latching-on is noticed by the Plaintiff, Flipkart shall be immediately notified. Upon receiving any notification, Flipkart shall take steps to disable the latching-on feature immediately.

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(Emphasis Supplied)."

26. Accordingly, it is directed that the plaintiffs shall provide their Flipkart Serial Nos. (FSNs) to learned counsel appearing for defendant no.1, i.e., Flipkart. Upon receipt of the FSNs from the plaintiffs, the defendant no.1, i.e., Flipkart, would take steps to not permit any latching-on of unauthorized sellers on the plaintiffs" listings. Whenever any seller seeks to sell the plaintiffs" products on Flipkart using the latching-on feature, Flipkart would examine the matter, at its own level. If any ambiguity arises, it would be free to seek a confirmation from the plaintiffs, in case they want the said products to be sold.

27. It is further directed that the said position shall enure in respect of all the sellers, who may seek to latch on to the plaintiffs" listing. If any latching-on is noticed by the plaintiffs, Flipkart shall be immediately notified. Upon receiving any notification from the plaintiffs, Flipkart shall take steps to disable the latching-on feature, as expeditiously as possible.

28. Learned counsel appearing for the plaintiffs, expresses his satisfaction over the directions passed by this Court, and submits on instructions, that he does not press for any other relief in the present matter.

29. Accordingly, in terms of the aforesaid, the present suit is disposed of, along with the pending applications.