‘John Doe’ order against Unidentified Defendant for infringement in India

Meaning of John Doe –

MEANING AND ORIGIN ‘John Doe’ has its origin in the reign of England’s King Edward III when the orders were used to refer to unidentifiable defendant. Oxford Dictionary defines John Doe as an “Anonymous Party”. In Canada, John Doe order were resorted to by owners of IPR in order to preserve evidence against unknown infringers by allowing the representatives of the Plaintiff to search and seize infringed products. Once identified the term John Doe is replaced with the name of the Defendant . It is an established concept in America, Australia and UK. In the matter of Billy Joel v. Various John Does  , a popular order which has been consistently relied upon by parties it has been inter­alia held: “Were the Injunction to be denied, Plaintiffs would be without any legal means to prevent what is clearly a blatant infringement of their valid property rights. While the proposed remedy is novel, that in itself should not weigh against its adoption by this Court. A court of equity is free to fashion whatever remedies will adequately protect the rights for the parties before it.

Example Case –

Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.

The brief facts of the case are that the petitioner is involved in the business of  B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.

In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.

Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.

The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]

COMPLEXITIES in John Doe –

Since the concept of granting John Doe order has evolved from judicial proactiveness it is tough to determine its precise limits. The procedure that needs to be followed in granting and executing these orders vary with regard to the cases in which it has been granted. The John Doe orders may thus lead to many complexities which may include the following.

• Improper implementation of orders: John Doe orders may be improperly implementedand may harm the rights of the legitimate third parties. In the Singham case , after obtaining the order the Plaintiff sent a list of file sharing sites to ISPs, asking them to stop them from pirating the movie. The ISPs, unable to prevent piracy, blocked entire file sharing websites. Consequently, many users who use these sites for legitimate purposes were unable to access the sites. It is pertinent to note thatin the case of IPRS v. Mr. Badal Dhar Chowdhry , the Court held that vague/ indefinite injunctions should not be issued.

• Jurisdiction of the defendants: When 100 John Does are named in a single case based solely on numerical internet protocol addresses. Many of them are outside the jurisdiction of theCourts. Thus, a question may arise whether the cause of action has arisen within the jurisdiction of the Courts.

• Joining different defendants in one suit: Another question to be considered in such cases is whether the defendants residing in different jurisdictions can be joined as defendants in the same suit. John Doe is still in its nascent stage in India and the concept will eventually evolve when more cases are brought before the Court. John Doe orders are always passed subject to the legitimate rights of the parties and do not affect the rights of legitimate license holders in any manner. However, the Bombay High Court, in the recent pasthas taken a view that such blanket orders cannot be passed unless the Plaintiff can show actual incidents of breach or acts which are likely to result in such a breach . Moreover the actual implementation of the orders is in itself a challenge for the Plaintiff. It is important for the judiciary to lay down the precise nature and limit of such orders so that they are effectively implemented and/or would aid in effective enforcement of the Orders.

Copyright Registration of an Art Work not Valid Evidence of User of Trade Mark- Delhi HC

The Delhi High Court has held that Copyright registration of an art work is irrelevant for the purpose of proving its use as Trade Mark.

The order was passed by a Single Judge Bench of Justice Suresh Kait in a challenge to the Intellectual Property Appellate Board’s (IPAB) order dismissing the Petitioner’s plea seeking registration of its trademark.

By way of background, M/s Khushi Ram Behari Lal (Export Division) was established in 1978 and carried on the business of processing, marketing and exporting of rice. The rice was sold under the trademark ‘TRAIN BRAND WITH DEVICE OF TRAIN’ (trademark).

In 1996, the Firm was taken over as a going concern by the Petitioner, M/s. Khushi Ram Behari Lal Ltd. Subsequently, the name of M/s. Khushi Ram Behari Lal Ltd. was changed to be M/s. KRBL Ltd. In order to acquire the statutory rights for the trademark, the Petitioner filed an application for its registration in class 30 of the IV Schedule of the then Trade & Merchandise Marks Act, 1958 before the Registrar of Trade Marks in 1993.

After the Trade Marks Registry advertised the concerned trademark in Trade Marks Journal, the Respondent filed a notice of opposition on the grounds that it was also engaged in the business of Rice under the Trade Mark “TRAIN” which was registered since 1983.

After considering the rival contentions of the parties, the Registrar dismissed Petitioner’s Form TM-16 and refused the application for registration of the said trademark.

Aggrieved by the rejection, the Petitioner approached the IPAB which ultimately dismissed the appeal on the ground that the Respondents had adopted and registered the trade mark prior in point of time. The IPAB relied upon the Copyright Registration of Respondent over the art work ‘Train’ to establish its usage by the Respondent and thus held that Petitioner’s registration plea was hit by Section 9, 11 and 18 of the Act of 1999.

Setting aside the IPAB order, the Delhi High Court noted that the IPAB had not only ignored the fact that Respondent’s registration was only for the word ‘TRAIN’ but it also ignored the fact that the Respondent tried to prove the use at the time of his registration by forged and fabricated documents.

After perusing the invoices issued by the Respondent to establish user of the trademark, the Court noted that the device of the TRAIN brand is not the same on all the invoices, apart from having various other discrepancies.

It also rejected the IPAB’s reliance on the Respondent’s copyright registration over the art work ‘Train’ for the purpose of proving use of the trademark (in question). Holding that Copyright registration is extraneous for proving its use as Trade mark, the Court held:

“On perusal of the documents on record, I have no hesitation to say that the learned Appellate Board has relied on the Copy Right Registration of respondent under No. A44877/84. The Copy Right Registration of the art work of “TRAIN” brand is extraneous for the purpose of proving the use subject Trade Mark“.

Furthermore, the Court stated that the IPAB also failed to appreciate that the said trademark registration had been in use by the Petitioner under registration for almost 22 years without any interruption. For all those years, the Court observed, there was no confusion and deception reported by the Respondent.

“The goods of the petitioner bearing the subject matter trade mark is highly demanded not only in the domestic but also in international market viz. Reyadh, Dubai, Jeddah, Dammam, Saudi Arabia etc. on account of their superior quality, on the other hand the respondent is admittedly a dealer/commission agent based in Amritsar.”, it said.

Thus, the IPAB ought to have appreciated the special circumstances existing in favour of the petitioner for exercise of their discretion under Section 12 of the Act, it held.

Observing that the registration of the impugned trademark fulfilled the requirement for registration as prescribed in Trade Marks Act, 1999, the Court held that the Petitioner was entitled to the benefit of Section 12 of the Act for concurrent registration.

It thus decreed,

“In view of above facts discussed and legal position, I hereby set aside the impugned order dated 18.05.2012 passed by the Appellate Board and consequently, the application for registration of the Trade Mark “TRAIN” under No. 609141 in Clause 30 shall be proceeded for registration of the Trade Mark “TRAIN” brand for basamati rice. The writ petition is disposed of in the aforesaid terms.”

The Petitioner was represented by Advocates Ajay Amitabh Suman, Pankaj Kumar, Kapil Kumarand Vinay Kumar Shukla.

The Respondent remained unrepresented.