Addressing Infringing posts on Social media websites; An Indian perspective

The Indian information technology law, in conjunction with intellectual property rights, seeks to protect the rights of a trade mark owner by obligating online platforms and social media channels to remove infringing posts. This practice came into force in 2016 when the Supreme Court set a precedent with respect to the liability of online intermediaries in a legal dispute. The case of Shreya Singhal versus Union of India was a landmark decision which primarily upheld the fundamental right to speech and the liability of intermediary channels to take down a disputed post. However, the same principle has been successfully applied in online IP infringement cases as evident from the latest case illustrated below.

In a suit filed for permanent injunction, restraining infringement of the trade mark and passing off (Facebook Inc Surinder Malik & Ors and Instagram LLC v. Surinder Malik & Ors) seeking protection of the trademark ‘DA MILANO’, the Delhi High Court reiterated that, while online intermediaries like Facebook and Instagram may not perform an active role in the posting of infringing content, they would still be liable to pull down such content as and when it is brought to their notice.

The Plaintiff in the present matter claimed to be owner of the trade mark ‘DA MILANO’ and alleged that several third parties had put up posts on Facebook and Instagram which infringed his trade mark ‘DA MILANO’. In the said suit, Facebook and Instagram were impleaded as Defendant no. 5 and 6 so as to ensure that the infringing posts were taken down. The Plaintiff also sought personal appearance of Facebook and Instagram’s representatives. The matter was first heard by the Trial Court, which passed an order directing personal appearance of the representatives of Facebook and Instagram. Both the Defendants contested the said order. However, none of them contested their role as intermediaries. Both the Defendants stated that they are willing to comply with the court order directing them to take down the infringing post; hence, their personal appearance was not necessary.

The High Court took note of the pleadings and observed that the role of platforms like Facebook and Instagram, insofar as posts put up by third parties is concerned, is governed by the Information Technology (Intermediaries Guidelines) Rules of 2011. Considering the provisions of these Rules, platforms such as Facebook and Instagram, which claim to be intermediaries not performing any active role in the posting of such information by third party alleged infringers, have a duty to take down the posts which are brought to their notice by the Plaintiff in terms of Section 79(3), by following due diligence.

The Court directed to remove the posts which use the mark ‘DA MILANO’ in any form, when brought to the notice of the social media platforms. The platforms also agreed that if the mark is identical, they would be willing to take down the post once they are notified by the Plaintiff. Accordingly, the court passed the following directions against the said platforms i.e. Facebook and Instagram:

i) The Plaintiff shall inform Instagram and Facebook whenever they came across use of the mark ‘DA MILANO’ either in word form, logo form or in any other form on their platforms;

ii) Upon such information being received, the said posts shall be taken down;

iii) If the platforms have any doubt as to the violative or offending nature of the post (s), they shall intimate the Plaintiff, within the time prescribed, who shall avail of its remedies in accordance with law;

iv) Upon any order being passed by a Court of competent jurisdiction, the same shall be intimated to the platform, which shall abide by the said order.

Through this order, the Court reiterated that the right holders need to inform the intermediaries for any IP violation and once it is done then only this will constitute “actual knowledge” on the part of intermediaries. The intermediaries will be required to remove the post if the infringing mark is identical or highly similar to complainant’s mark. However, if the marks are deceptively similar, the intermediaries may ask the complainant to approach the appropriate court as the intermediaries cannot adjudicate on the issue of deceptive similarity and, once they are able to obtain successful order against such posts then only the post can be removed.

In conclusion, the case serves as a reminder of how online platforms may assist in safeguarding the rights of a trade mark holder. For the effective enforcement against trademark infringement on social media, the intermediaries must lay down their own guidelines which will enable the brand owners in making their strategy in removal of the infringing content.

Article by Omesh Puri and Ruchi Sarin.

Article was 1st published on Lexology.