CASE STUDY ON INFRINGEMENT OF IP RIGHTS IN CONTEXT OF MOBILE APPS
As you are aware that due to COVID times and also on account of prevalent usage of mobile phones, our businesses are dependent on more or less mobile apps. Likewise is the case with the Intellectual Property Rights owner who is most likely the developer of mobile apps. So the question arises how to advise a client and also which remedial measure is to be prefered when it comes to conflicting and competitive apps being shown at various platforms such as Apple AppStore and Google PlayStore.
In this case study we are sharing a real time experience faced by an app owner who came as a client to us with the issues relating to multiple fake / pirated apps identical to their Trade Mark and icon on Google PlayStore.
For better prospective, the comparison of infringing logos vis-à-vis our client’s logo are represented as under:
We were faced with following two options to advise the client:
a) Either to institute a separate suit for seeking injunctive relief against each of the specific mobile app. This would result into filing of as many suits as there were infringing apps. To say the least about nearly 100 cases; or
b) To consider administrative remedies provided under the Information Technology (Intermediaries Guidelines) Rules, 2011 i.e. seeking removal of illicit content from intermediaries by virtue of issuing take down notices.
Ultimately, we decided to consider the administrative remedies. The provisions of Rule 3 sub rule 4 of the Information Technology (Intermediaries Guidelines) Rules, 2011 specifically require an intermediary to remove the violating / infringing content within the period of 36 hours from the date of issuance of any email or a take notice by the person or entity aggrieved to the respective intermediary. The applicability of said provisions on intermediaries was also upheld in the case of JAGRAN PRAKASHAN LIMITED Vs. TELEGRAM FZ LLC & ORS. [Cs(Comm) 146/2020] vide order dated 29.05.2020 by the Hon’ble Delhi Court.
For the sake of convenience of our readers we would like to apprise them about take down notice. A take down notice is a form of legal notice that sets forth the rights of the person or entity that is aggrieved alongwith the facts relating to how a particular infringing content is violative of the rights of the said person or entity. The ultimate goal of such notice is to bring it to the knowledge of an intermediary about presence of violative / infringing contents on their platform so as to enable them to take appropriate measures for removal of such content.
As a result we issued take down notices against more than 150 of such apps and out of which more than 100 odd apps were removed by Google PlayStore. By doing this we were able to save significant efforts, expenses and time of our client which would have otherwise resulted into a long drawn litigation. Therefore, contrary to the popular belief that a suit for infringement is the best remedy in the IPR cases, the case by case assessment is required as in online cases the remedy of take down notices is a highly effective remedial measure with respect to app removal.
So whenever you face app removal issues with respect to infringement of IP rights it is always advisable to go for take down notices first because there always exists a risk of non grant of interim injunctive relief and the fact that complete adjudication of the matter may take years which will further worsen off the situation. Moreover, if incase no interim relief is granted by the court then it may rather create some kind of special equities in favour of defendants as well.
Though civil and criminal remedies are predominantly considered as appropriate approach while dealing with IP infringement / passing off cases, the case by case assessment like illustrated above will make a substantial difference while seeking legal remedies.
Therefore, the ideal approach while dealing with fake / infringing apps is to first issue a take down notice and await the outcome of the same. Thereafter, if incase you are not remedied, then you may consider seeking an appropriate legal action.
Prepared collectively by Sushant Singh and Kunal Khanna Advocates