By Tulip De and Kiratraj Sadana
The High Court of Delhi in a recent order passed in the case of GS1 India v Barcodes SL & Ors., restrained the websites www.indiabarcodeshop.com and www.india-barcodes-store.com from infringing the Plaintiff’s registered certification mark.
Brief Background
The Plaintiff, GS1 India, is a society registered under the Societies Registration Act set up in 1996 by several industry bodies and statutory bodies like Bureau of Indian Standards (BIS), Federation of Indian Chambers of Commerce and Industry (FICCI), Associated Chambers of Commerce and Industry of India (ASSOCHAM) and Confederation of Indian Industry (CII). The Plaintiff holds a license from the global body namely GS1 which was set up by various countries coming together to maintain global standards as also database of the barcodes issued in compliance with the standard set up by GS1, the global body. The Plaintiff has been allocated the code ‘890’ which is further allocated along with ten other digits to various manufacturers, suppliers who want their products to be certified with a barcode to ascertain the country of origin as also the manufacturing, supplying units of the product. Once the Plaintiff allocates the bar code, the same is entered into the database of the global page of GS1 thereby giving it a uniqueness and also ensuring uniformity in the standards. The Plaintiff also has a certificate of registration for a trademark with a pictorial design and ‘890’ therein in class 35 for the business of certification.
Defendant no. 1, Barcodes SL, is the operator of two websites namely www.indiabarcodeshop.com and www.india-barcodes-store.com, through which it allocates barcode numbers starting with ‘890’. The Defendant nos. 2 and 3 are the domain registrars of the websites of the Defendant no. 1. The Defendant nos. 4 and 5 are the Department of Telecommunications and Ministry of Electronics and Information Technology. The Plaintiff also filed an interim application seeking leave of the Hon’ble Court to institute the suit without serving notice to the Defendant nos. 4 and 5, as mandated under Section 80 of Code of Civil Procedure, due to the urgent nature of the suit, which was allowed.
Plaintiff’s contentions and submissions
- It is the case of the Plaintiff that the Defendant no. 1 through its website is allocating barcode numbers starting with the numbers ‘890’ and such barcode by the Defendant no. 1 do not originate from the Plaintiff and are not compliant with the GS1 standards. Furthermore, such barcodes are not unique and cannot be verified against the GS1 global database.
- That the Defendant no. 1’s activities amount to infringement of the Plaintiff’s trademark in addition to being a violation of the common law rights of the Plaintiff, causing deception to the customers and public at large.
- The Plaintiff further placed on record complaints by customers of Defendant no. 1 who have been cheated by issuing fake and illegal bar codes starting with number ‘890’ to show that they have been validly issued by the Plaintiff.
Court’s Observation and Directions
The Hon’ble Ms. Justice Mukta Gupta, after considering the materials placed on record, was of the view that the Plaintiff has made out a prima facie case in its favor and irreparable loss would be suffered by not only the Plaintiff but other innocent customers as well. Therefore, an ad-interim injunction was granted in favour of the Plaintiff and against the Defendant no. 1 from infringing the Plaintiff’s certification mark.
Furthermore, Defendant nos. 2 and 3 were directed to block/suspend the domain name and website hosted as www.indiabarcodeshop.com and www.india-barcodes-store.com.
The Defendant nos. 4 and 5 were directed to issue directions to ISPs to temporarily block the impugned websites.
Subsequent Developments
On a subsequent hearing, the Plaintiff submitted before the Court that after the Defendant no. 3 took down the website through which Defendant no. 1 was illegally supplying bar codes and that the Defendant no. 1 formed a new website www.free-barcodes-shop.com under the entity ‘Acquia Inc.’ and it was registered with the ‘Public Domain Registry’. The Hon’ble High Court impleaded ‘Public Domain Registry’ and ‘Acquia Inc.’ as Defendant nos. 6 and 7 respectively.
The Court vide order dated June 26, 2020, directed the Defendant no. 6 to block/suspend the domain name and website www.free-barcodes-shops.com.
Conclusion
The Plaintiff in this case is an internationally recognised body, established to provide universally unique bar code numbers issued in compliance with the standard set up by GS1, the global body. The Defendants in this case not only infringed the proprietary right of the Plaintiff by infringing their registered trademark, but also duped general public into believing that there is an association between the Plaintiff and the Defendants.
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