A BRIEF ANALYSIS OF THE CASE RAHUL MISHRA & ANR V JOHN DOE & ANR. -CS (COMM) 1194/2024 -24.12.2024 -HON’BLE J. AMIT BANSAL

Background of the case

Recently, the Delhi High Court issued a John Doe order to protect the copyright and trademark of renowned Indian fashion designer Rahul Mishra.
The plaintiff, a celebrated designer based in Delhi, creates unique, luxurious, and handcrafted apparel under his fashion label and holds trademark registrations in various classes in India and internationally, including for the trademark (his fashion label).’ The plaintiff also owns the copyright in his original works and the designs of the dresses under the Copyright Act, 1957. His artistic designs are executed through Plaintiff No. 2, his company, and the plaintiffs operate through flagship stores, multi-brand retail outlets, and the official website, www.rahulmishra.in, active since September 1, 2009. The images of the designer clothes on the website are original artistic works under Section 2(c) of the Copyright Act, 1957, granting the plaintiffs exclusive rights under Section 14 of the Act. The plaintiffs discovered that Defendant No. 1 replicated the entire form, look, pattern, style, cut, and arrangement of their products while using the plaintiffs’ tradename/trademark. This act misrepresents the defendant’s products as authentic creations of the plaintiff, misleading the public and selling counterfeit products at a fraction of the original price. The plaintiffs found that Defendant No. 1 used their trade name/trademark to copy the whole form, look, pattern, style, cut, and arrangement of their products. This act deceives the public and sells fake goods at a fraction of the original price by passing off the defendant’s goods as authentic plaintiff inventions.

Key issue

Whether Defendant’s actions constitute trademark infringement, copyright infringement, design piracy, passing off, unfair competition leading to dilution of the goodwill?

Plaintiff’s Contentions

According to the Plaintiff, Defendant No. 1 replicated every element, including the Plaintiff’s trademark, tradename, pattern, arrangement, and appearance. These copies were stolen from ramp displays, fashion news websites, and the plaintiffs’ official website. The unlawful use of Defendant No. 1’s trade name or trademark is a trademark infringement since it misleads the public and creates misunderstanding regarding the product’s place of origin. Design piracy and copyright violations result from the unapproved duplication of the design, including its distinctive elements. The defendant engages in unfair competition by offering the counterfeit good for sale at a far cheaper price, further undermining the plaintiff’s reputation and brand equity. Defendant No. 2, a Domain Name Registrar, is the owner of Defendant No. 1’s domain name. However, it is impossible to determine Defendant No. 1’s identity from the internet alone, therefore Mishra’s lawsuit is against ‘John Doe-unknown individuals.’

Court’s Analysis and Judgement

The court examined whether there was sufficient evidence to establish copying and consumer confusion, as well as whether the plaintiff had legitimate intellectual property rights over the purported trademark, copyright, and design. In the end, the plaintiffs’ prima facie case was deemed sufficient by the Court. Consequently, an ex-parte ad interim injunction—also known as a dynamic injunction—was issued by Justice Amit Bansal. The aforementioned order was a John Doe order to preserve Rahul’s original artistic work and his registered trademark because the Court was unaware of Defendant No. 1’s identity at the time. The Court was of the opinion that “The balance of convenience lies in favour of the plaintiffs and against the defendants. Irreparable injury shall be caused to the plaintiffs if the interim injunction is not granted. The Hon’ble Court directed that Defendant No. 1 and people acting on and for his behalf be restrained from “using, soliciting, manufacturing, selling, offering for sale, importing, exporting and advertising in any manner including on the internet and e-commerce platform, directly or indirectly dealing in goods impugned Tradename/mark as well as the device mark RAHUL MISHRA or impugned tradename/mark and device that is identical/deceptively similar to Plaintiff’s Tradename/mark “Rahul Mishra” as well as the device mark “/ RAHUL MISHRA.” Such acts of defendant no.1 constitute trademark infringement, copyright infringement, design piracy, passing off, unfair competition and leads to dilution of the goodwill and thus, is a clear attempt to ride upon the goodwill of the plaintiffs.

Conclusion

The court’s ruling demonstrates how rapidly intellectual property rights pertaining to counterfeit items and internet marketplaces that sell them are enforced. Additionally, it reaffirmed the courts’ dedication to defending creators’ rights to their original artistic creations and trademarks in the fashion and designer apparel industries. Furthermore, granting a dynamic injunction would enable the aforementioned injunction order to be extended and applied to the mirror websites as and when they are discovered, all without the need to file a fresh lawsuit.