IndiaMart Intermesh Ltd. v. Puma SE

The Division Bench of the Delhi High Court recently set aside an impugned order restraining the appellant, IndiaMart Intermesh Ltd., from offering prospective sellers the option to use the mark PUMA as a search option in the drop-down menu displayed during the registration process on its platform.

By way of background, the respondent, Puma SE, had filed a suit seeking a permanent injunction to restrain the appellant, IndiaMart Intermesh Ltd., from using, facilitating, or offering the PUMA mark as a brand suggestion, keyword, or search term to third-parties on its website. The respondent also sought to restrain the appellant from using the PUMA mark in any manner that would amount to infringement or passing-off of its trade marks. Additionally, the respondent prayed that the appellant be directed to remove all counterfeit listings, and to refrain from displaying any product images bearing its trade marks without due diligence.

In the impugned order, the Single Judge had restrained the appellant from including the PUMA mark as a search option in the drop-down menu presented to sellers at the time of registration.

The Division Bench observed that the Single Judge had proceeded on the premise that the appellant functioned as an e-commerce platform facilitating direct purchase and sale of goods. The Bench clarified that the appellant is merely a facilitatory B2B listing platform that enables buyers to connect with sellers. 

The Bench further noted that sellers were not compelled to choose from the drop-down menu options and had the liberty to manually enter specific descriptions of their goods. Notwithstanding, the Bench emphasized that there was no dispute as to the appellant’s obligation to make reasonable efforts to ensure that sellers do not list any infringing or counterfeit products. Further, the Bench held that the mere availability of the option for a seller to select a brand name in the drop-down menu could not, prima facie, be construed as aiding or abetting infringement. Accordingly, the Bench was of the opinion that the appellant could not be restrained from enabling sellers to describe their products using brand names or trade marks on its B2B portal, provided that the appellant continued to exercise reasonable diligence in mitigating infringement.   

In light of the above, the Bench set aside the impugned order to the extent it barred the appellant from offering the PUMA mark as a search option in the drop-down menu. However, the Bench upheld the direction requiring the appellant to promptly remove all infringing listings featuring the PUMA mark.  

IndiaMart Intermesh Ltd. v. Puma SE [FAO(OS) (COMM) 6/2024, CM APPL. 2216 & 2219 of 2024]

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