Luxottica Group S.P.A. & Another v. M/S. Mify Solutions Pvt. Ltd. & Ors.
(2018) 254 DLT 472
In the High Court of Delhi
CS (Comm) 453/2016
Before Justice Prathiba M Singh
Decided on November 12, 2018

Relevancy of the case: Liability of an intermediary under Section 79

Statutes and Provisions Involved

• The Information Technology Act, 2000 (Section 2(1)(w), 79, 81)
• The Code of Civil Procedure, 1908 (Order XXXIX)

Relevant Facts of the Case

• The plaintiff company have the ownership rights to the ‘Oakley’ brand. Previously, the Luxottica Group had acquired the ownership of Oakley Inc.
• The defendant company is running a website at www.kaunsa.com.
• The plaintiff purchased an Oakley branded product from the website and found it counterfeit. Later, it filed a suit against the defendant on the alleged infringement of the trademark and copyright.
• Meanwhile, the court passed an interim order to restrain the defendant from using the brand name Oakley or any other similar name on the website.

Prominent Arguments by the Advocates

• The defendant’s counsel submitted that the website is performing the role of an intermediary. Moreover, they do not have a direct involvement in the sale. Further, it actively resolves the complaints related to the infringement of intellectual property rights.

Opinion of the Bench

• The invoice does not contain the name of the actual seller. Therefore, it appears that the defendant infringed copyright and trademark.
• Section 81 of the Information Technology Act, 2000 does not protect violators of the Trade Marks Act, 1999.
• The defendants have failed in fulfilling the requirements for claiming protection as an intermediary under Section 79.
• The defendant must enter into a contract with sellers and disclose their details on the website. However, it should take permission from the plaintiff before listing its products.
• In addition, the defendant must comply with the Information Technology (Intermediary Guidelines) Rules, 2011. In the absence of originality, the defendant should delist the products from their website.

Final Decision

• As a result, the court disposed of the suit and pending proceedings.