HT Media Limited granted injunction against illegal use of ‘SHINE’
Introduction
Intellectual property rights are the legal rights which provide protection to the creation of a person or enterprise developed by a brain or mind, and also provides the rights to the creativity of the author over the creation of his works. With the evolvement of technology and the internet, there has been an increase in informational goods and intellectual creations that have become potential candidates for protecting intellectual property rights. With this advancement, the domain of IP rights has also extended its applicability to the digital age, media and environment. The present case of HT Media Limited v Pooja Sharma and others[1], has involved a question of infringement of the trademarks, copyright, and other intellectual property rights.
Facts
The plaintiffs, namely HT Media Limited, have been engaged in media, radio, and the internet and are one of the major media houses in India. They have been the sole owners and operators of the domain name “www.shine.com,” a platform used by the users to take services and interact with one another for transactions. It is one of the most comprehensive career management websites, providing opportunities with jobs and helping the users for building capacity.
The disputes arose between the parties when the plaintiffs’ received complaints from their users, stating that the defendants had created rogue websites similarly with the same name, identity, and purposes. The fraudulent acts committed by the defendants are:
- The fraudulent use of the already registered trademarks of the plaintiffs and allegedly targeting the public by offering them jobs and other career-related services.
- They committed fraud on the public by misusing the users’ phone numbers.
- The domain name registrars, the defendants’ numbers 18 and 19, were responsible for copying the same domain name.
- The defendants have registered email services to disclose identity relevant information of the users.
The acts committed by the defendants aggrieved the plaintiffs. They filed a suit for permanent injunction and infringement under Section 29[2] of the Trademarks Act, 1999 and Section 51[3] of the Copyright Act, 1957. The plaintiffs claimed for damages on the illegal use and adoption of its trademarks’ SHINE’ as word and device marks and copyright of the website ‘www.shine.com,’ which has caused public deceit and trade by showing a false association between the plaintiff and the rogue defendants.
Issues
The issue between the parties concerns the trademark ‘SHINE’ and the copyrighted website ‘www.shine.com.’ The question of law before the Court is:
Whether the defendants are at fault for trademark infringement of ‘SHINE’ and the copyrighted website ‘www.shine.com’ under Section 29 of the Trademarks Act, 1999 and Section 51 of the Copyright Act, 1957?
Also read: The tussle with trademarks in the digital world
Order
The contentions of the plaintiffs:
- They are the owners of their registered trademarks and copyrighted websites. Hence, they must be accorded protection concerning statutory rights in their registered trademarks under Section 27[4] of the Trade Marks Act and its copyright in the website or domain name contents under Section 13[5] of the Copyright Act.
- The plaintiff is a registered proprietor of its trademarks, domain name, logo, trade dress, and the copyright-holder in the contents of the plaintiff’s website or domain name, and the violation of the rights by the defendants has established prima facie case by the plaintiffs.
- If the defendants are fraudulently using the trademarks and the copyrighted website, the plaintiffs will suffer irreparable harm and injury.
Justice Yogesh Khanna of the Hon’ble Delhi High Court considered the submissions made by the plaintiffs and has passed order against the defendants. The Court restrained the defendant nos. 1 to 8 from causing infringement to the plaintiffs’ already registered trademarks and copyrights and directed the defendants’ numbers 9 to 17 to block their access to the plaintiffs’ websites.
Also read: Dr. Reddys Dispute: DR REDDYS LABORATORIES LIMITED Vs. DR REDDY PATHLABS PRIVATE LIMITED
Conclusion
The final judgment relating to the dispute has still not been passed, and the parties have been asked to submit their replies. The Court has granted an injunction order in the plaintiff’s favor, in compliance with all the legal aspects of the Trademarks Act, 1999 and the Copyright Act, 1957.
[1] CS(COMM) 26/2022
[2] Infringement of registered trade marks
[3] When copyright infringed
[4] No action for infringement of unregistered trade mark
[5] Works in which copyright subsists
— Harmanpreet Kaur (Intern), Amity University, Kolkata
Disclaimer: This brief is intended to provide general guidance to the subject matter. It does not contain legal advice. For any specific advice/corrections, write to [email protected]
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