Metro Shoes Ltd. v. Tolexo Online Pvt. Ltd.
In the High Court of Bombay
NM 359/2016
Before Justice G S Patel
Decided on December 05, 2016

Relevancy of the case: Notice of motion against a website displaying products with infringing mark “Metro”

Statutes and Provisions Involved

• The Information Technology Act, 2000 (Section 2(w), 79)
• Trade Marks Act, 1999 (Section 27, 29(2), 135)

Relevant Facts of the Case

• The products having the plaintiff’s copyrighted mark were available on the defendant’s website.
• The vendors and buyers sold and purchased items through the website.

Prominent Arguments by the Advocates

• The defendant’s counsel argued that their website acted only as an intermediary and that they only facilitated the commercial transactions. Further, they were unable to control or police the portal and therefore would not be able to provide an undertaking to take down all the products with the plaintiff’s mark. However, the contact details of the vendor who placed the products or the marks would be provided to the plaintiff’s advocate within seven working days if someone demanded the same.

Opinion of the Bench

• The court directed the defendant to provide a list of all the vendors who were selling products with the said marks to the plaintiff’s advocate within two weeks of the present order.
• In future, the defendants were to provide vendor details on demand to the plaintiff’s advocate so that the plaintiff may obtain suitable orders against the vendor directly and the defendants carried no liability for actual use or deployment of the mark.

Final Decision

• Notice of Motion disposed of.