The Delhi High Court has modified an earlier decision restraining Indiamart from listing the registered trademark "PUMA" in its drop-down menu for seller registration. The Division Bench, comprising Justice Vibhu Bakhru and Justice Tara Vitasta Ganju, allowed Indiamart to retain the "PUMA" option but emphasized its obligation to remove infringing listings once notified.
"Prima facie, we are unable to read any intent on the part of IIL to encourage listing of counterfeit Puma Products by offering the sellers an option to choose a specific description of their products/services by indicating the brand name associated with their product/services," the Court observed.
The court was hearing an appeal by Indiamart Intermesh Limited against a January 2024 order by a single judge, which had prohibited the platform from offering "PUMA" as a selectable brand name during seller onboarding. That order was passed in a trademark infringement suit filed by PUMA SE, alleging the availability of counterfeit goods under the "PUMA" mark on Indiamart's platform.
The Division Bench found no direct evidence of dishonest intent or active promotion of counterfeit products by Indiamart. Instead, it ruled that providing brand names in a drop-down list to standardize listings and avoid misspellings is a functional interface design and not a direct infringement of trademark rights.
However, the court upheld the part of the earlier order requiring Indiamart to remove listings that infringe the PUMA trademark once such listings are brought to its notice.
"In such circumstances, the safe harbour of Section 79(1) of the IT Act would not be available to Indiamart," the Court clarified, warning that failure to act on notified infringements would attract liability.
The court emphasized that Indiamart functions more like a "Yellow Pages Directory" than a traditional e-commerce platform. It acts as an intermediary connecting sellers and buyers without participating in the actual sale of goods. Therefore, its liability is limited unless it is proven that it actively supports or fails to act on counterfeiting when informed.
The judges also dismissed the single judge’s assumption that inclusion of brand names like "PUMA" in drop-down menus amounted to direct advertising or endorsement of counterfeit goods.
"The fact that Indiamart provides an option for a seller to choose the brand of its products specifically describing its goods cannot, prima facie, be held to be a ground to hold that it aids and abets the infringer in displaying the counterfeit products of a particular brand," the Bench noted.
In conclusion, while Indiamart can retain the "PUMA" option in its system for standardizing seller listings, it remains obligated to ensure swift removal of counterfeit products when notified, failing which it may lose the protection of intermediary status under the IT Act.
Title: INDIAMART INTERMESH LTD v. PUMA SE
