Aniruddh Bhatia & Dr. Victor Vaibhav Tandon
IndiaMART Intermesh Ltd. v. Puma SE, 2025: DHC:4819-DB, decision by the Hon’ble Division Bench (“DB”), Delhi High Court
Key-Facts
- Dispute related to the infringement of “PUMA” trademark by being used in IndiaMART’s drop-down menu.
- Initially, the Ld. Single Judge (“SJ”) held that the provisioning of PUMA as one of the options in the drop-down menu on IndiaMART’s platform amounted to infringement of PUMA’s trademarks under S.29(1),(2) and (4) of the TM Act, 1999 and that IndiaMART cannot claim safe harbour protection under S.79(1) of the IT Act, 2000. Thus, the Ld. SJ restrained IndiaMART from using PUMA’s trademarks in its drop-down menu.
- IndiaMART appealed, asserting its role as an intermediary and contended that the drop-down menu was only to facilitate the sellers in selecting their products.
- The Hon’ble DB set aside the initial injunction passed by the Ld. SJ and reaffirmed IndiaMART’s entitlement to safe harbour under S.79. The Hon’ble DB allowed IndiaMART to retain the “PUMA” option in drop-down menu.
Key-Findings
- IndiaMART- An Intermediary
- IndiaMART is an intermediary under S.2(1)(w), IT Act.
- IndiaMART’s endeavour is merely to create sub-categories for facilitating search.
- IndiaMART prima-facie did not initiate, select, or modify content.
- IndiaMART did not use PUMA’s trademarks for its own goods, but for product-classification.
- Use of Trademarks in drop-down menus- Not Infringement
- Using PUMA’s mark in drop-down menus does not constitute trademark ‘use’ under S.29, TM Act.
- Such use falls under S.30(1), TM Act, as honest commercial use.
- IndiaMART is not aiding/abetting and has safe harbour protection
- IndiaMART renders listing services where buyers get in-touch with sellers and has no role in the said transaction.
- IndiaMART had no intent to promote/encourage counterfeit PUMA listings.
- IndiaMART providing an option for a seller to choose the brand of its products cannot be held to be aiding or abetting.
- Threshold for reasonable efforts by IndiaMART/Intermediaries
- Must make “reasonable-efforts” to cause sellers to not use/display/publish/transmit any information that infringes IP rights.
- Ensure that the sellers are aware of the requirement to not display counterfeit-products which must be a part of an express undertaking.
- IndiaMART’s failure to prevent a seller from relisting itself where the listing has been pulled down due to IP infringement, would fall foul of due-diligence requirement, unless such a seller fraudulently re-lists under a different name or particulars.
Key-practical implications
- Structural use of brand names (e.g.-in drop-down menus) does not, by itself, constitute trademark infringement.
- Safe harbour is not automatic; intermediaries must meet baseline duties in counterfeiting cases.
- Duties include prompt takedown of infringing listings upon Court order and/or credible notice.
- Failure to prevent relisting by the same seller after getting de-listed, may breach the protection granted under S.79, unless such a seller re-lists using different details.
- Intermediaries will retain safe harbour protection if they exercise due-diligence and do not participate or facilitate infringing acts.
- The Court has established a clear framework defining “responsible conduct” for intermediaries.
