The rapid growth of e-commerce platforms has revolutionized the way we shop and
conduct business. However, along with the benefits, this digital age has also
brought about challenges in protecting intellectual property rights (IPR).
E-commerce platforms provide a global marketplace where counterfeit products,
trademark infringement, copyright violations, and patent infringements thrive.
This article aims to explore the various forms of IPR infringement on e-commerce
platforms and analyse relevant case laws to understand the legal landscape
surrounding these issues.
Trademark infringement occurs when a third party uses a mark that is identical
or similar to a registered trademark in connection with goods or services
without permission from the trademark owner. E-commerce platforms often face
challenges in preventing the sale of counterfeit products bearing well-known
trademarks. The burden lies on the platforms to implement robust measures to
identify and remove infringing listings.Case Laws:
Tiffany v. eBay (2010) - In this case, the famous jewellery brand Tiffany sued eBay for contributory trademark infringement. Tiffany argued that eBay had failed to adequately monitor and prevent the sale of counterfeit Tiffany products on its platform. The court ruled in favor of eBay, stating that the platform had taken reasonable steps to combat infringement and could not be held liable for every instance of counterfeit goods sold.
Christian Louboutin v. Amazon (2021) - Christian Louboutin, known for its red-soled shoes, filed a lawsuit against Amazon for allowing the sale of counterfeit Louboutin products. The court held Amazon liable for trademark infringement, emphasizing that the company had not done enough to prevent the sale of counterfeit goods on its platform. This case highlighted the importance of e-commerce platforms taking proactive measures to combat trademark infringement.
Copyright infringement involves the unauthorized use of copyrighted works, such as images, text, music, or videos, without the owner's consent. E-commerce platforms face challenges in detecting and removing listings that infringe upon copyrighted content.
- Lenz v. Universal Music Corp. (2015) [iii]:
In this landmark case, Stephanie Lenz uploaded a video on YouTube featuring her toddler dancing to a Prince song. Universal Music Corp. sent a takedown notice to YouTube, claiming copyright infringement. Lenz sued Universal Music Corp. for misrepresentation under the Digital Millennium Copyright Act (DMCA). The court ruled in favour of Lenz, stating that copyright holders must consider fair use before issuing takedown notices. This case highlights the importance of striking a balance between copyright protection and the rights of content creators and users.
- Perfect 10 v. Google (2007) [iv]:
Perfect 10, a publisher of adult magazines, sued Google for copyright infringement due to Google's image search functionality. The court held that Google's thumbnail images constituted fair use and did not infringe on Perfect 10's copyrights. This case established that search engines and platforms may use copyrighted images under certain circumstances without seeking permission from the copyright owner.
Patent infringement occurs when a product or process is made, used, or sold
without the patent owner's permission. E-commerce platforms face challenges in
monitoring the sale of patented products and preventing the infringement of
patented methods or technologies.Case Law:
Legal remedies for the infringement of IPR rights of an e-commerce platform
- Soverain Software v. Newegg (2013) [v]Soverain Software sued Newegg, an
e-commerce platform, for patent infringement related to online shopping cart
technology. The court held that Soverain's patent claims were overly broad and
invalid. This case highlighted the importance of scrutinizing the validity and
scope of patent claims before alleging infringement.
- Civil Lawsuits:
The e-commerce platform can file a civil lawsuit against the infringing party seeking remedies such as injunctions, damages, and account suspensions. Civil litigation allows the platform to enforce its IPR rights and seek compensation for any losses incurred as a result of the infringement.
- Injunctive Relief:
Injunctive relief is a court order that restrains the infringing party from continuing their infringing activities. The e-commerce platform can seek preliminary or permanent injunctions to prevent further infringement and protect its IPR rights.
The platform can claim monetary damages for the losses suffered due to the infringement. Damages may include actual damages (e.g., lost profits, reputational harm) and, in certain cases, statutory damages (fixed amounts prescribed by law) or punitive damages (intended to punish the infringer).
- Account Suspension or Termination:
E-commerce platforms often have policies in place that allow them to suspend or terminate the accounts of sellers or users found to be engaging in IPR infringement. By taking such actions, the platform can prevent further infringement and maintain the integrity of its marketplace.
- Domain Name Disputes:
If the infringement involves the unauthorized use of a domain name similar to the e-commerce platform's trademark, the platform can initiate domain name dispute resolution proceedings, such as filing a complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This process aims to transfer or cancel the infringing domain name.
- Cooperation with Law Enforcement:
The e-commerce platform can collaborate with law enforcement agencies to combat IPR infringement. This may involve reporting the infringing activities to the relevant authorities, providing evidence, and assisting in investigations and legal proceedings.
- Customs Intervention:
E-commerce platforms can work with customs authorities to prevent the import or export of infringing goods. By providing information about counterfeit products and cooperating with customs, the platform can help stop the circulation of infringing goods in the marketplace.
It's important to consult with legal counsel experienced in intellectual
property and e-commerce law to determine the most appropriate legal remedies and
strategies based on the specific circumstances and jurisdiction involved. Laws
and procedures may vary from country to country, so understanding the applicable
legal framework is essential to protect the e-commerce platform's IPR rights
In India, the relevant sections of the law for addressing IPR infringement on
e-commerce platforms are primarily governed by the following statutes:
Trade Marks Act, 1999:
Section 29 - Deals with infringement of registered trademarks, prohibiting the
unauthorized use of identical or deceptively similar marks in connection with
goods or services.
Section 2(1)(zb) - Defines what constitutes a trademark, including its
distinctive character, graphical representation, and capability of
distinguishing goods or services.
Section 101 - Provides for the remedies available in trademark infringement
cases, such as injunctions, damages, account of profits, and delivery up of
Copyright Act, 1957:
Section 51 - Defines acts of copyright infringement, including reproduction,
adaptation, distribution, public performance, and communication to the public
Section 14 - Specifies the exclusive rights of copyright owners, including the
right to reproduce, communicate to the public, and make adaptations of the work.
Section 55 - Deals with the remedies available in copyright infringement cases,
such as injunctions, damages, accounts of profits, and seizure of infringing
Patents Act, 1970:Section 48 -
Grants exclusive rights to patent holders, including the right to
prevent others from making, using, selling, or importing the patented invention
Section 104 -
Provides for the remedies available in patent infringement cases,
such as injunctions, damages, accounts of profits, and seizure or disposal of
It's important to consult the specific provisions and amendments of the relevant
statutes, as Indian IP laws are subject to periodic updates and amendments.
Additionally, case law plays a significant role in interpreting and applying
these provisions, so referring to relevant judicial precedents is also crucial
for a comprehensive understanding of IPR infringement remedies under Indian law.
Determining the appropriate court and jurisdiction for an IPR infringement case
involves considering several factors, including the nature of the dispute, the
territorial reach of the court, and the applicable laws. Here are some key
Territorial Jurisdiction:Determine the location of the defendant:
The court's jurisdiction is generally
determined based on the defendant's location or the place where the infringement
occurred. If the infringing party is located within a specific jurisdiction, the
court in that jurisdiction would typically have jurisdiction over the case.
Look for specific jurisdiction provisions:
Some jurisdictions have specific laws
or regulations that govern jurisdiction in IPR disputes. These provisions may
outline criteria such as the defendant's residence, place of business, or where
the infringement took place.
Subject Matter Jurisdiction:
Determine the type of IPR in question:
Different courts may have specialized jurisdiction over specific types of IPR,
such as patent courts or trademark courts. It is important to identify the
specific court that handles the type of IPR dispute you are involved in.
Assess monetary thresholds:
Some jurisdictions have monetary thresholds that determine the appropriate court
for a particular case. If the damages claimed exceed a certain threshold, the
case may need to be filed in a higher court with jurisdiction over larger
Choice of Forum:
Consider the forum selection clauses: In some situations, the parties may have
previously agreed to a forum selection clause in a contract or agreement that
determines which court has jurisdiction in case of a dispute. It is important to
review any relevant agreements to ascertain whether a specific court has already
Evaluate convenience and efficiency: Consider practical factors such as the
convenience of witnesses, availability of evidence, and the efficiency of the
court system in a particular jurisdiction. It may be advantageous to choose a
court that offers a fair and efficient resolution process.
Certainly! Here are a couple of case laws related to jurisdiction and court
selection in IPR infringement cases:
Bany[vi]an Tree Holding (P) Ltd. v. A. Murali Krishna Reddy & Anr. (2010):
In this case, the plaintiff, Banyan Tree Holding, filed a trademark infringement
suit against the defendants, who were based in Bangalore, India. The defendants
challenged the jurisdiction of the Delhi High Court, where the suit was filed.
The defendants argued that since the infringement took place in Bangalore, the
Delhi High Court lacked jurisdiction.
The Delhi High Court held that in cases of online infringement, the jurisdiction
could be established where the plaintiff's website was accessible or where the
cause of action arose. Since the plaintiff's website was accessible in Delhi and
the defendants' actions affected the plaintiff's business in Delhi, the Delhi
High Court maintained its jurisdiction.
Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. (2015)[vii]
In this case, the plaintiff, Carlsberg Breweries, filed a trademark infringement
suit against the defendant, Som Distilleries, based in Bangalore, India. The
defendant challenged the jurisdiction of the Delhi High Court, where the suit
was filed, arguing that the cause of action arose in Bangalore, and therefore,
the Delhi High Court lacked jurisdiction.
The Delhi High Court held that the cause of action arose not only at the place
where the infringing acts occurred but also where the consequences of such acts
were felt. The court stated that in cases of trademark infringement,
jurisdiction can be established where the plaintiff's goods were sold or the
plaintiff's reputation was affected. Since Carlsberg Breweries had a substantial
presence and reputation in Delhi, the court maintained its jurisdiction.
Infringement of IPR rights on an e-commerce platform is a serious concern that
requires legal remedies. E-commerce platforms can pursue civil lawsuits seeking
injunctions, damages, and account suspensions against infringing parties. Other
remedies include domain name dispute resolutions, cooperation with law
enforcement, and collaboration with customs authorities.
Determining the appropriate court and jurisdiction involves considering factors
like territorial and subject matter jurisdiction, choice of forum, and any
applicable forum selection clauses. Seeking legal advice is crucial to navigate
the specific laws and precedents. Protecting IPR rights on e-commerce platforms
is essential for maintaining the integrity of the platform and safeguarding the
rights of intellectual property owners.
- 2009 SCC OnLine Del 3780 : (2010) 42 PTC 361
- 2022 SCC OnLine Del 2966