Delhi High Court Allows IndiaMart To Retain 'PUMA' Option In Drop-Down Menu With Conditions
Delhi High Court Allows IndiaMart To Retain 'PUMA' Option In Drop-Down Menu With Conditions
Introduction
The Delhi High Court has ruled on a trademark infringement dispute between Puma SE and IndiaMart Intermesh Limited. The Division Bench of the Delhi High Court overruled the earlier order given by a Single Bench and held that IndiaMart can continue using the wordmark "Puma" as an option in its drop-down and search menu for seller registration.
Factual Background
Puma SE filed a lawsuit against IndiaMart, alleging that counterfeit Puma products were being listed and sold on IndiaMart's platform by unauthorized sellers using product images with Puma's logo and form strip logo. Puma claimed that IndiaMart's software, which used the 'PUMA' logo in its drop-down menu and keyword suggestions during seller onboarding, amounted to trademark infringement and inducement of counterfeiting.
Procedural Background
The Single Judge bench initially granted an interim injunction in favor of Puma, holding that IndiaMart's use of the Puma mark in its drop-down menu and product images constituted trademark infringement. However, the Division Bench overturned this decision, allowing IndiaMart to continue offering trademark-based menu items and search terms, subject to obligations regarding takedown of infringing content.
Issues
1. Trademark Infringement: Whether IndiaMart's use of the Puma mark in its drop-down menu constitutes trademark infringement.
2. Safe Harbor Protection: Whether IndiaMart is entitled to safe harbor protection under Section 79(1) of the IT Act.
Contentions of Parties
Puma's Contentions: Puma argued that IndiaMart's use of the Puma mark in its drop-down menu and keyword suggestions during seller onboarding amounted to trademark infringement and inducement of counterfeiting.
IndiaMart's Contentions: IndiaMart asserted that the use of 'PUMA' in the seller interface did not constitute active promotion or recommendation and that it had complied with due diligence obligations under the IT Act.
Reasoning & Analysis
The Court held that IndiaMart's use of the Puma mark in its drop-down menu did not amount to trademark infringement, as it was intended to maintain search accuracy and prevent spelling inconsistencies. The Court also found no evidence to suggest that IndiaMart shared intent with infringing sellers or intentionally aided infringement.
Final Outcome
The Delhi High Court ruled that IndiaMart can continue using the "Puma" mark in its drop-down menu, provided it makes reasonable efforts to prevent hosting or displaying infringing content. The Court sustained the direction requiring IndiaMart to promptly take down infringing listings using the Puma mark once such listings are brought to its notice.
Implications
The Court's decision balances trademark protection with the practical realities of digital marketplaces, ensuring intermediaries are not overburdened with preemptive verification duties. The ruling emphasizes the importance of intermediaries' due diligence obligations and takedown mechanisms in preventing trademark infringement.
