GROUPON, INC vs. MOHAN RAO AND ANOTHER

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Judgment reserved on: 16.09.2013

% Judgment delivered on: 19-03-2014

+ CS(OS) 1346/2011

GROUPON, INC ..... Plaintiff
Through: Mr. Sanjay Jain, Sr. Advocate with
Mr. Ashish Marbaniang, Mr. Deepak
Gogia, Ms. Prabhsahay Kaur, Ms.
Noor Anand and Ms. Aastha Jain,
Advocates

versus

MOHAN RAO AND ANOTHER ..... Defendants
Through: Mr. Sudhir Chandra, Sr. Advocate
with Mr. J. Saideepak, Ms. Sneha Jain
and Ms. Julien George, Advocates

CORAM:
HON’BLE MR. JUSTICE VIPIN SANGHI

J U D G M E N T

VIPIN SANGHI, J.
I.A. Nos. 8969/2011 (u/o 39 Rules 1 & 2 CPC) & 10581/2011 (under
Order 39 Rule 4 CPC
1. These applications have been filed by the plaintiff under Order 39
Rule 1 & 2 of the Civil Procedure Code, 1908 (hereinafter “CPC”) against
defendant no.1 &2 praying for an order of ad-interim temporary injunction
CS(OS) 1346/2011 Page 1 of 24


pending hearing and final disposal of the suit and by the defendants under
Order 39, Rule 4, CPC praying for an order vacating the ex parte ad interim
injunction granted in favour of the plaintiff vide order dated 27.05.2011.
2. The plaintiff prays for an order restraining the defendants by
themselves, their partners, servants, agents, representatives and all those
acting in concert with them or claiming under or through them from using
the mark GROUPON and/or any deceptive variation thereof upon or in
relation to their business, products, services and /or as a part of their trade
name, website, web address, internet domain name, email address and from
in any manner passing off or attempting to pass off or causing, enabling or
assisting others to pass off their business, products and services as and for
the business, products and services of the plaintiff.
3. The plaintiff also seeks to restrain the defendants from indulging in
any activity which dilutes the distinctive character of the plaintiff‟s mark
GROUPON in addition to a temporary injunction directing the defendants to
transfer the domain name www.groupon.in in favour of the plaintiff pending
hearing and final disposal of the suit.
Plaintiff’s case and submissions:
4. The plaintiff, GROUPON Inc is a company organized under the laws
of State of Delaware, headquartered at Chicago, USA. The plaintiff‟s
predecessor in interest adopted the mark GROUPON in the year 2002.
Subsequently since 2008, the plaintiff has offered online audiences daily
discounts on products and services under the name and brand GROUPON
through the plaintiff‟s website www.groupon.com which features daily deals
on products and services in more than 40 countries.
CS(OS) 1346/2011 Page 2 of 24


5. Defendant no.1 is the director of defendant no. 2 Company
incorporated under the provisions of the Companies Act, 1956, having its
registered office at Bengaluru, Karnataka. The defendants through their
website www.groupon.in are engaged in an identical business of offering
discount coupons. The defendants hold a valid trademark registration in
India for the mark GROUPON in class 35 – which pertains to advertising,
sales promotion for others, business promotion for others, advertisement
through website, marketing, advertisement and business promotion by using
gift vouchers and coupons etc. Against the aforementioned registration in
favour of the defendants, the plaintiffs have already instituted cancellation
proceedings before the Intellectual Property Appellate Board (IPAB). The
defendants also own the domain names www.groupoff.com and
www.groupoff.in.
6. Vide order dated 27.05.2011, this Court issued summons in the suit
and passed an ex parte order restraining the defendants from using the mark
GROUPON and/or any deceptive variation thereof.
7. Mr. Sanjay Jain, learned senior counsel for the plaintiff submits that
the mark GROUPON is a coined word adopted by the plaintiff‟s predecessor
in interest as a combination of the words “group” and “coupon” in 2002. He
submits that in 2008, the plaintiff company – which was originally named
ThePoint.com Inc, announced the launch of GROUPON as a website using
the power of group purchasing to offer daily deals from the domain name
www.getyourgroupon.com registered by the plaintiff on 14.10.2008.
8. The case of the plaintiff is that on 10.03.2009, the plaintiff filed a
trademark application for the mark GROUPON in USA which was granted
CS(OS) 1346/2011 Page 3 of 24


in favour of the plaintiff on 22.09.09. On 07.06.2009, the plaintiff acquired
the domain name www.groupon.com from its predecessor, and began
operating the website from the aforesaid domain name. On 16.06.2009, the
plaintiff changed its corporate charter to officially reflect the corporate name
change to “GROUPON, INC.” on which date the defendants had not yet
commenced their business under the impugned mark. On 12.10.2009 – the
date on which the defendant no.2 was incorporated, the plaintiff already had
a subscriber base of 8,91,972 people – being prior user of the mark since
2008.
9. The plaintiff avers that in addition to www.groupon.com, it also owns
hundreds of other domain names which incorporate the mark GROUPON
and its formatives, including several country specific domain names such as
groupon.de, groupon.jp, groupon.sg, groupon.kr amongst others. In India,
the plaintiff is the registrant of the domain name www.groupon.co.in, which
was created on 22.09.2009.
10. Mr. Jain submits that the plaintiff‟s website www.groupon.com
receives significant traffic from India, and according to a data report by
COMSCORE, in the fourth quarter of 2010 alone, over 30000 visitors with
Indian IP addresses visited the plaintiff‟s website. It is submitted that owing
to the popularity of the plaintiff‟s website in India, the plaintiff also filed for
registration of the trademark GROUPON in India on 26.03.2010 which is
pending. The plaintiff submits that in January 2011, it acquired an Indian
website www.sosasta.com which was also in the business of offering online
discount coupons. On acquisition of www.sosasta.com, the plaintiff
immediately started using the mark GROUPON on the aforesaid website.
CS(OS) 1346/2011 Page 4 of 24


11. Mr. Jain submits on the basis of the above facts that the plaintiff has
been in the business of offering discount coupons under the mark
GROUPON since 2008. The plaintiff claims that in September 2010, the
plaintiff became aware that defendant no. 1 is the registrant of the domain
name www.groupon.in. The plaintiff immediately got in touch with
defendant no.1 for purchasing the domain name www.groupon.in vide email
dated 20.09.2010. Defendant no.1 responded to the plaintiff‟s email 4
months later on 20.01.2011, indicating that he was not interested in selling
the domain name www.groupon.in, but was open to pursuing business in
India with the plaintiff.
12. The plaintiff avers that, subsequently, the plaintiff and defendant no.1
had a teleconference during which the plaintiff was informed that the
defendant no.1 had a pending trademark application in India for the mark
GROUPON. On requesting further clarification from the defendant no.1 on
its trademark rights qua the mark GROUPON, the defendant no.1 informed
the plaintiff of all details relating to its trademark application on 31.01.2011,
and also asked the plaintiff to cease using the mark GROUPON on the
website of the plaintiff‟s Indian counterpart www.sosasta.com.
Subsequently, the defendant no.1 offered a proposal for sale of the domain
name www.groupon.in for USD 5 million which the plaintiff rejected. The
plaintiff submits that in March 2011, the defendant no.1 informed the
plaintiff that the mark GROUPON had been registered in favour of
defendant no.1.
13. The case of the plaintiff is that initially the defendants launched their
services under the domain name www.groupoff.com, which was intended to
CS(OS) 1346/2011 Page 5 of 24


be a play off of the plaintiff‟s mark GROUPON. Mr. Jain submits that the
defendants sought to begin operations from the website www.groupon.in
only in February 2011, after an article in Times Of India dated 16.01.2011
announced the entry of the plaintiff in India. He further submits that the
defendants were well aware of the plaintiff‟s mark, as the defendant no.1
was willing to enter into a business relationship with the plaintiff in India in
January, 2011. He submits that in the Time Warner Entertainment
Company, L.P Vs. A.K. Das , 1997 PTC 17 Del, this Court observed that the
trans-border reputation can be inferred, if the defendant seeks a common
venture with the plaintiff.
14. Mr. Jain further submits that the defendant no.1 was present in USA
in 2008, around the time when the plaintiff was at an advanced stage of
launching its services under the mark GROUPON. He submits that the
subsequent adoption of the impugned mark by the defendants is with a mala
fide intention to free ride on the plaintiff‟s reputation and popularity. He
submits that the mala fide intent of defendant no.1 is further fortified by the
fact that the defendant no.1 owns in excess of 100 domain names, some of
which incorporate the marks of various American Companies.
15. Mr. Jain submits that the plaintiff is the prior user of the mark
GROUPON since 2008. It was only on 12.09.2009 that the defendant no.1,
for the first time, sought to adopt the mark GROUPON by registering the
domain names www.groupon.in, www.grouponindia.com, www.groupoff.in
and www.groupoff.com – by which date, the plaintiff already had a
subscriber base of 6,27,051 people and had been operating under the mark
GROUPON for over a year.
CS(OS) 1346/2011 Page 6 of 24


16. Mr. Jain submits that defendant no. 1 filed a trademark application for
the mark GROUPON for the first time on 29.09.2009 in India, by which
time the mark of the plaintiff had already been registered in USA. He
submits that it is only on 26.02.2011 that the defendants sold their first
coupon through their website www.groupon.in, by which time the plaintiff
had already been operating under the mark GROUPON for over two years in
USA, and had been named as the fastest growing company by Forbes
magazine in an article dated 30.08.2010. Mr. Jain submits that by virtue of
prior use of the mark GROUPON, the plaintiff is entitled to the exclusive
use of the mark and the plaintiff will suffer irreparable loss if the defendants
are not restrained from passing off their services as those of the plaintiff.
17. Mr. Jain submits that by the time the defendants sought to sell their
first coupon on 26.02.2011, the plaintiff had already acquired considerable
amount of trans-border reputation in India, that had spilled over into India
on account of the plaintiff‟s coverage in various international magazines and
websites – such as Business Insider, mashable.com, techcrunch.com, Forbes
Magazine etc. Mr. Jain relies upon the decision of the Court in Jolen Inc.
Vs. Doctor & Company , 2002 (25) PTC 29 (Del), wherein this Court
observed that advertisements in newspapers travel beyond the country where
a party is engaged in business through overseas editions, or otherwise,
thereby disseminating information about the mark.
18. He submits that apart from coverage in international magazines, even
websites in India such as StartupDunia covered the plaintiff‟s business
model as early as on 15.09.2009. He further submits that the plaintiff was
covered by Times of India on 01.12.2010 citing speculation that Google was
CS(OS) 1346/2011 Page 7 of 24


close to buying the plaintiff company for $6 billion. He submits that the
aforesaid news was also covered in Hindustan Times on 05.12.2010. Mr.Jain
submits that the aforesaid demonstrates the reputation and credibility of the
plaintiff‟s business in India prior to the commencement of the defendants‟
business in February, 2011.
19. Mr. Jain submits that the fact that in the fourth quarter of 2010,
30,000 visitors with Indian IP addresses had visited the plaintiff‟s website
www.groupon.com. shows that Indian consumers were aware of the
plaintiff‟s website www.groupon.com even before the defendants sold their
first coupon on 26.02.2011 on their website www.groupon.in. He submits
that on account of prior use as well as trans-border reputation of the mark,
the plaintiff is entitled to seek a restraint against the defendants from
adopting the impugned mark. In support of this submission, Mr. Jain relies
on the decisions in N.R. Dongre v. Whirlpool Corporation , AIR 1995 Del
300 and Allergan Inc v. Milmet Oftho Industries , 1997 2 CAL LT .
Defendants’ case and submissions:
20. Per contra, Mr. Sudhir Chandra, learned senior counsel for the
defendants submits that the defendants are the prior users of the mark
GROUPON in India, as defendant no.1 registered the domain names
www.groupon.in and www.grouponindia.com on 12.09.2009, which is much
prior in time to when the mark GROUPON was adopted by the plaintiff in
India in 2011. Learned senior counsel submits that on 12.09.2009, no
trademark registration had been granted for the mark GROUPON anywhere
in the world.
CS(OS) 1346/2011 Page 8 of 24


21. Mr. Chandra submits that on 29.09.2009, the defendant no.1 applied
for registration of the mark GROUPON, which was registered in its favour
in March, 2011. Mr. Chandra submits that, therefore, the defendant no.1
became the statutory proprietor of the mark GROUPON under Section 28 of
the Act since 29.09.2009, which is much prior to the adoption of the mark
GROUPON by the plaintiffs in India in January, 2011. He submits that the
interim injunction dated 27.05.2011 granted by this Court in favour of the
plaintiff is restraining the defendants from exercising their statutory rights
qua the impugned mark and the balance of convenience is in favour of the
defendants, as the defendants possess statutory rights in the trademark
GROUPON.
22. Mr. Chandra submits that in addition to the aforesaid, defendant no.1
incorporated defendant no.2 Company, i.e. Value Net Ecommerce Pvt. Ltd.
on 12.10.2009, and also procured an office premises on lease from
26.10.2009. On 23.12.2009, the defendant no.2 entered into its first
Promotion Agreement with Star Hospitality Services – a Bangalore based
Company for distribution of Groupon coupons and promotion of services
offered by Star Hospitality in its restaurants.
23. Mr. Chandra submits that the aforesaid dates demonstrate that the
defendants were prior users of the mark GROUPON in India since
12.09.2009. He submits that the term “use” in Section 46(1) of the Act is
not confined to physical use of the mark, and encompasses within it the non-
physical use, such as, intention of registered proprietor to establish a market.
In support of this submission, Mr. Chandra places reliance on the decision of
CS(OS) 1346/2011 Page 9 of 24


the Supreme Court in Hardie Trading Ltd. & Anr. Vs. Addisons Paint &
Chemicals Ltd ., AIR 2003 SC 3377.
24. Mr. Chandra submits that as per the plaintiff‟s own averment in the
plaint it had no use – actual or otherwise, of the mark GROUPON in India in
September 2009, when the defendants started using the mark. In this regard,
he refers to the averments contained in Para 5.2 of the plaint, in which states
that Indian consumers were aware of the plaintiff‟s website as 30000 visitors
with Indian IP addresses visited the plaintiff‟s website www.groupon.com in
the fourth quarter of 2010. In addition, it is pleaded that the plaintiff
acquired www.sosasta.com in January, 2011 in India which received huge
media attention. Mr. Chandra submits that it is only on 26.03.2010 that the
plaintiff applied for registration of the mark GROUPON in India and that
too on “proposed to be used” basis and, therefore, even as in March, 2010,
the plaintiff was not clear about its intention to extend its services to India.
25. Mr. Chandra submits that September, 2009 should be construed as a
“cutoff date”, and the plaintiff has failed to prove that the plaintiff‟s business
had strong goodwill and reputation in India prior to September, 2009, which
is when the defendants commenced their business under the mark
GROUPON. He submits that, therefore, as in September, 2009, the
defendants cannot be said to have been passing off their services as those of
the plaintiff, as the plaintiff did not enjoy any goodwill or reputation in
India.
26. Relying upon the decision of this Court in Sakalain Meghjee Vs. BM
House(India) Ltd., 2002 (24) PTC 207, Del, Mr. Chandra submits that in
order to establish trans-border reputation, the plaintiff must place on record
CS(OS) 1346/2011 Page 10 of 24


substantial evidence in the form of advertisements, journals, coverage in
magazines, brochures etc. which the plaintiff has failed to do. He submits
that merely because 30,000 visitors with Indian IP addresses visited the
plaintiff‟s website in the last quarter of 2010 is not, by itself, sufficient to
prove trans-border reputation of the plaintiff‟s mark in India in 2010. He
further submits that the aforesaid data is only for the fourth quarter of 2010
– a year after the defendants had adopted the mark.
27. Mr. Chandra submits that article dated 15.09.2009, relied upon by the
plaintiff, does not prove trans-border reputation as it is only a write up
seeking to educate people on the concept of group coupons. He relies on the
decision in M/s. Smithkline Beecham Plc. & Ors. Vs. M/s. Hindustan
Lever Limited & Ors ., 2000 PTC 83, wherein the Court observed that mere
publication of advertisement in a dental journal cannot establish trans border
reputation of the plaintiff‟s toothbrush under the trademark „ACQUA
FLEX‟.
28. Mr. Chandra submits that, of the documents placed on record by the
plaintiff to establish trans-border reputation of its mark, only four documents
pertain to India, each of which pertain to the period subsequent to
12.09.2009, i.e. the date on which the defendants started using the mark. He
submits that in the absence of any evidence of goodwill or reputation in
India, it cannot be presumed that the plaintiff‟s mark had achieved trans-
border reputation in 2009. He further submits that mere trans-border
reputation is not sufficient and the plaintiff must prove use of the mark in
India. He relies on Paragraph 27 of the decision of this Court in Roca
Sanitario S.A Vs. Naresh Kumar Gupta & Anr., 2010 (7) R.A.J. 634 (Del),
CS(OS) 1346/2011 Page 11 of 24


wherein relying upon the decision in N.R Dongre (supra), the Court
observed that trans border reputation cannot be accepted as the sole criteria
for protection of a registered or unregistered trademark.
29. Mr. Chandra submits that as in September 2009, at best, the plaintiff
had presence in few cities in USA and, therefore, the defendants were well
within their right to adopt the mark GROUPON, since the plaintiff enjoyed
no trans-border reputation in India. He relies on the decision in Tata Sons
Vs. Manoj Dodia & Ors., 2011 (46) PTC 244 Del to submit that a trademark
which is well known in one country, need not necessarily be well known in
other countries – the controlling requirement being the reputation in the
local jurisdiction.
30. Mr. Chandra further relies on the decision in Trans Tyres India Pvt.
Ltd. Vs. Double Coin Holdings Ltd. & Anr. , 2012 (3) R.A.J. 81 (Del) to
submit that the Universality Doctrine, which posits that a mark signifies the
same source wherever the mark is used in the world, has been rejected by
Courts. He submits that prior use of a trademark in one dominion will not
ipso facto entitle its owner to claim exclusive trademark rights in another
dominion.
31. Mr. Chandra submits that the present suit filed by the plaintiff is mala
fide, as it was filed a day after the defendants filed a suit against the plaintiff
in Bangalore seeking to restrain the plaintiff from impinging on the statutory
rights of the defendants.
32. Mr. Chandra further submits that the plaintiff did not coin the term
GROUPON but merely acquired the website www.groupon.com from its
predecessor, who coined the same. He submits that the business model of
CS(OS) 1346/2011 Page 12 of 24


group discount vouchers is such that multiple GROUPON business‟s can
exist simultaneously the world over, as the nature of the business is
extremely local and territorial requiring business link ups with local entities.
He submits that for instance, in China, the domain names
www.groupon.com.cn and www.groupon.cn were registered even prior to
the plaintiff‟s registration on 24.09.2008 and, as on date of filing of the suit,
the Chinese domain name exists independently.
33. Mr. Chandra submits that merely because subsequently the plaintiff
may have become a bigger business worldwide, they cannot now seek to
usurp the rights of the defendants qua the mark GROUPON, as, on the date
on which the defendants adopted the impugned mark, they were well within
their rights to do so.
34. Mr. Chandra submits that the allegations of the plaintiff that
defendant no.1 is a cyber squatter are unsubstantiated and seek to create a
prejudice against the defendant no.1, who has put in considerable amount of
labour and investment into running his business of offering group discount
vouchers online.
Plaintiff’s submissions in rejoinder:
35. In rejoinder, Mr. Jain submits that the “cutoff date” for ascertainment
of – on when the plaintiff must establish trans-border reputation of its mark,
cannot be September, 2009 – when the defendants adopted the impugned
mark. He submits that the same would be the date on which the defendant
started using the impugned mark, and not the date of mere adoption of the
impugned mark by the defendants. In support of this submission, Mr. Jain
CS(OS) 1346/2011 Page 13 of 24


places reliance on the decision in Sun Pharamacueticals Vs. Emcure
Pharamaceuticals , 2012 (49) PTC 243 Bom.
36. Mr. Jain submits that the first use of the mark GROUPON by the
defendants was only in February, 2011, when the defendants commercially
activated the website www.groupon.in. He submits that the reliance by the
defendants on the Promotion Agreement with Star Hospitality dated
23.12.2009, will not suffice as use of the mark, as the defendants were not
operating from the website www.groupon.in till February 2011. He submits
that the acquisition of the domain names by the defendant no.1, and the
entering into Promotion Agreement dated 23.12.2009 are merely preparatory
steps to establish a business, and do not qualify as “use” of the mark. He
further submits that, at the earliest, the defendants can be said to have
established use of the mark in December 2010, when they sold their first
coupon from www.groupoff.com. Mr. Jain submits that the decision in
Hardie Trading (supra) relied upon by the defendants has been
distinguished in Pioneer Nuts And Bolts Pvt. Ltd., Vs. Goodwill
Enterprises , 2009 (163) DLT 209 (DB).
37. Mr. Jain submits that, therefore, it is sufficient for the plaintiff to
establish prior use and trans-border reputation of its mark prior to December
2010/February 2011, when the defendants started use of the impugned mark,
and not 2009 when the domain name was registered by the defendant no.1,
or when the defendant no.2 entered into its first agreement with Star
Hospitality.
38. Mr. Jain relies on the decision in Apple Computer Inc. Vs. Apple
Leasing & Industries , 1992 (1) Arb LR 93, to submit that prior international
CS(OS) 1346/2011 Page 14 of 24


use is to be looked into, irrespective of geographical boundaries He submits
that the plaintiff has been a prior user of the mark GROUPON since 2008 in
USA, which is prior to the launch of the defendants‟ website in India in
February, 2011 by which time the plaintiff had already been transacting
under the mark GROUPON for over two years
39. Mr. Jain submits that in the present case, advertisements in periodicals
or magazines are not necessary to claim reputation as internet is a medium
that allows consumers to transact business without limitations of
geographical locations. He relies on the decision in Yahoo, Inc Vs. Akash
Arora , 1999 PTC 19 (201) to submit that where services are rendered on the
internet, a strict view of infringement must be taken on account of its easy
access and reach by anyone from any corner of the globe.
40. Without prejudice to his earlier submission that the cutoff date should
be construed as February 2011, Mr. Jain submits that even if one were to
assume that the defendants commenced their business in December 2010
while operating from the website www.groupoff.com, the material on record
establishes that the plaintiff was already enjoying considerable amount of
goodwill and reputation, the world over, even as early as on 30.05.2009
when the plaintiff was covered by a website studying the “Economics of
Groupon”. He further submits that the plaintiff has been present on social
networking websites such as Facebook and Twitter since 2009, which are
accessed by lakhs of people the world over, irrespective of geographical
constraints and boundaries.
Discussion & Decision:
CS(OS) 1346/2011 Page 15 of 24


41. Having heard learned senior counsels for the parties and considered
the averments and documents, I am inclined to allow this application and
confirm the order of restraint against the defendants from using the mark
GROUPON. My reasons for the same are discussed herein below.
42. On 14.10.2008, the plaintiff launched the domain name
www.getyourgroupon.com and commenced the business of offering online
customers daily discount vouchers on products and services under the mark
GROUPON. On 10.03.2009, the plaintiff applied for registration of the mark
GROUPON in USA, claiming use since 21.10.2008. On 28.05.2009, the
mark GROUP-ONS, which was registered since 05.11.2007 in favour of one
Girlawhirl Incorporated was assigned in favour of the plaintiff.
Subsequently, on 07.06.2009, the plaintiff acquired the domain name
www.groupon.com from one Mr. Dan Winchester in UK, and began
operating its business under the mark GROUPON from www.groupon.com.
On 16.06.2009, the plaintiff changed its name from POINT INC to
GROUPON INC.
43. Till the aforementioned dates, the defendants were, undisputedly, not
in the business of offering online discount vouchers. It is only on 12.09.2009
that the defendant no.1 registered the impugned domain names. In fact,
defendant no.2 had not even been incorporated till 12.10.2009, by which
time the plaintiff had been offering services under the mark GROUPON for
one year. It is clearly discernible from the aforementioned dates that
globally speaking, the plaintiff is prior user of the mark GROUPON-
initially from the website www.getyourgroupon.com in October 2008, and
subsequently from the website www.groupon.com in June 2009.
CS(OS) 1346/2011 Page 16 of 24


44. The argument of Mr. Chandra that the plaintiff enjoyed no trans-
border reputation in India on 12.09.2009 i.e. the date on which the
defendants adopted the impugned mark, cannot be accepted.
45. In N.R. Dongre (supra), a Division Bench of this Court observed that
"The knowledge and awareness of a trade mark in respect of
the goods of a trader is not necessarily restricted only to the
people of the country where such goods are freely available but
the knowledge and awareness of the same reaches even the
shores of those countries where the goods have not been. When
a product is launched and hits the market in one country, the
cognizance of the same is also taken by the people in other
countries almost at the same time by getting acquainted with it
through advertisements in newspapers, magazines, television,
video films, cinemas etc; even though there may not be
availability of the product in those countries because of import
restrictions or other factors. In today's world it cannot be said
that a product and the trade mark under which it is sold
abroad, does not have a reputation or goodwill in countries
where it is not available. The knowledge and awareness of it
and its critical evaluation and appraisal travels beyond the
confines of the geographical area in which it is sold. This has
been made possible by development of communication
systems which transmit and disseminate the information as
soon as it is sent or beamed from one place to another.
Satellite Television is a major contributor of the information
explosion. Dissemination of knowledge of a trade mark in
respect of a product through advertisement in media amounts
to use of the trade mark whether or not the advertisement is
coupled with the actual existence of the product in the market."
(emphasis supplied)

46. I may only observe, that the aforesaid observations were made by the
Court, even when the Court was not considering the impact of internet on
the trans-border proliferation of a trademark. In the present case, the mark
CS(OS) 1346/2011 Page 17 of 24


of the plaintiff is used to offer services primarily over the internet. The
reasoning adopted by the Court in N.R. Dongre (supra) would, therefore,
apply with even greater force in a case like the present.
47. The plaintiff‟s services under the mark GROUPON have been
featured by international magazines and websites even prior to 12.09.2009.
On 30.05.2009, the plaintiff was featured on www.evanmiller.org in an
article titled “ Golden Footballs and the Economics of Groupon ” elaborating
on the business model of the plaintiff. Article dated 10.06.2009 on
www.associatedcontent.com stated that “ the newest money-saving wave to
sweep the U.S is the groupon ”. The CEO of the plaintiff, Mr. Andrew
Mason was interviewed on Fox News on 06.08.2009. The plaintiff was also
featured in an online article dated 08.09.2009 titled “ Designing Promotions
in the Internet Age: Groupon’s Five Key Lessons for All Companies ” which
stated how the plaintiff started its business in November 2008 and has
6,75,000 existing subscribers. The article goes on to discuss that the
plaintiff‟s subscribers are growing @ 40-50% per month.
48. The aforesaid publicity and coverage is prior to 12.09.2009.
Therefore, even if this Court were to accept the submission of Mr. Chandra
that 12.09.2009 must be treated as the cutoff date for the plaintiff to
establish prior reputation and goodwill of the mark in India, it is evident
from the aforesaid discussion that the plaintiff has placed sufficient material
on record to prima facie establish prior use as well as trans border reputation
of the mark as on12.09.2009.
49. Furthermore, by the time the defendants sold their first coupon on
www.groupon.in in February 2011, the plaintiff had already been offering
CS(OS) 1346/2011 Page 18 of 24


services under the mark GROUPON for over two years. I may note that the
Promotion Agreement dated 23.12.2009 between the defendant no.2 and
Star Hospitality, relied upon by the defendants, to establish use of impugned
mark by the defendants in 2009, mentions the sale of group coupons
“ through its upcoming website ”. Therefore, even as on 23.09.2009, the
defendants had not commenced their operations under the impugned mark,
by which time the plaintiff had already been covered by an Indian blog titled
StartupDunia on 15.09.2009. The said blog suggested the idea of a
“groupon clone” for Indian cities. Furthermore, another web article dated
11.12.2009 referred to a similar start up business in India by the name of
MyDala as a “groupon clone”. In my view, a similar business in India being
labeled as a “groupon clone” is evidence enough of the plaintiff‟s
popularity and goodwill in India.
50. The submission of the defendants that the term “use” must be widely
construed in light of the decision in Hardie Trading (supra) is misplaced.
The decision in Hardie Trading (supra) was rendered in the case of
rectification proceeding and, therefore, has no application to the facts of the
present case. The decisions in Sakalain Meghjee (supra), Smithkline
Beecham (supra) and Tata Sons (supra) also have no application to the facts
of the present case, as the plaintiff has put enough material on record to
prima facie establish goodwill of its mark in India. In Trans Tyres (supra),
the Court held that prior use of a trademark in one dominion would not ipso
facto entitle its owner to claim exclusive trademark rights in another
dominion. In the present case, the plaintiff is not seeking protection only
account of prior use in USA. As already discussed hereinabove, the plaintiff
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has prima facie established that in addition to prior use, its goodwill had
spilled over into India prior to the defendants‟ adoption of the trade mark in
question.
51. One cannot lose sight of the fact that the plaintiff offers its services on
cyber space, and not through physical products. In the era of internet
technology, the dissemination of information is instant as it is not
constrained by territorial boundaries. Furthermore, the presence of social
networking websites have made it possible for an organization to advertise
its services and products online thereby reaching thousands of people world
over instantaneously, as opposed to conventional modes of advertising
through journals and magazines. The decision in Roca Sanitario (supra)
relied upon by the defendants was not rendered in a case dealing with an
internet business and, thus, is of no avail to the defendants.
52. The Court in Roca Sanitario (supra) observed that trans-border
reputation cannot be the sole criterion. In the instant case, the plaintiff has
provided data by COMSCORE, which reveals that in the last quarter of
2010, i.e. before the defendants actually sold their first coupon, the plaintiff
website had received 30,000 visitors with Indian IP addresses. Prima facie ,
this establishes that Indian consumers were aware of the plaintiff‟s mark and
the services in respect of which it was used, and may have even availed of
services on the plaintiff‟s website, as Indians who travel abroad can
purchase coupons on the plaintiff‟s website in respect of services being
offered in the local territory they may be visiting. Furthermore, nothing
prevents Indian consumers from buying coupons on the plaintiff‟s website
and gifting them to their near and dear ones who reside in the local territory
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where the services are be being offered. In fact, the recent trend of online
business‟s is to cater to such people who order a product or services from
one part of the globe, but request for it to be delivered/ rendered to an
entirely different part of the globe.
53. In Caesar Park Hotels & Resorts Vs. Western Hospitality Services ,
AIR 1999 Mad 396, in an action for passing off, the court observed:

(emphasis supplied)
54. It is also pertinent to note that group purchasing is the nucleus of the
plaintiff‟s business model, as a discount voucher can be obtained by a
customer only if a certain minimum number of people sign up for the deal.
Therefore, it is in the customer‟s best interest to publicize a deal so that a
minimum number of people are aware of the deal and sign up for it thereby
making it possible for the customer to avail the discount. This motivates the
interested customers to popularize and disseminate information about the
service offered by the service provider. The proliferation of the mark of any
such service provider is, therefore, rapid and widespread.
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55. Furthermore, the business of the plaintiff is run exclusively from its
domain name www.groupon.com, and country specific variations thereof –
such as groupon.jp, groupon.sg, groupon.kr amongst others thereby making
the domain name a business identifier for the plaintiff. In Yahoo.com Vs.
Akash Arora , 1999 II AD(Delhi)229, the Court observed that
“With the advancement and progress in technology, services
rendered in the Internet has also come to be recognised and
accepted and are being given protection so as to protect such
provider of service from passing off the services rendered by
others as that of the Plaintiff. As a matter of fact in a matter
where services rendered through the domain name in the
Internet, a very alert vigil is necessary and a strict view is to
be taken for its easy access and reach by anyone from any
corner of the globe. There can be no two opinions that the two
marks/domain names 'Yahoo!' of the plaintiff and 'Yahooindia'
of the defendant are almost similar except for use of the suffix
'India' in the latter. The degree of the similarity of the marks
usually is vitally important and significant in an action for
passing off for in such a case there is every possibility and
likelihood of confusion and deception being caused. When both
the domain names are considered, it is crystal clear that the
two names being almost identical or similar in nature, there is
every possibility of an Internet user being confused and
deceived in believing that both the domain names belong to one
common source and connection, although the two belong to two
different concerns.”
(emphasis supplied)
56. The decision in Yahoo (supra) squarely applies to the facts of the
present case. An average consumer with imperfect recollection is bound to
associate the domain names of the defendants as those belonging to the
plaintiff, thereby believing that the services being offered by the defendant
under the impugned mark are those of the plaintiff. Furthermore, the
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plaintiff is known to operate from country specific domain names such as
www.groupon.sg in Singapore, www.groupon.ca in Canada,
www.groupon.kr in Korea, www.groupon.jp in Japan amongst others.
Therefore there is an extremely high likelihood that the website of the
defendants www.groupon.in will be misconstrued to be the plaintiff‟s
website in India.
57. At the prima facie stage, this Court does not wish to delve into the
merits of whether the impugned mark and domain names were adopted by
the defendants with a mala fide intention as that is an aspect requiring
consideration of evidence, which is yet to be led. Suffice to say, as observed
in Laxmikant V. Patel Vs. Chetanbhai Shah & Anr ., 2002 (3) SCC 65, in a
passing off action, the plaintiff must prove a prima facie case, availability of
balance of convenience in his favour, and his suffering an irreparable injury
in the absence of grant of injunction. Relying on the observations by
Christopher Wadlow in “Law of Passing Off” (1995 Edition, at p.3.06), the
Court further observed that the defendant's state of mind is wholly irrelevant
to the existence of the cause of action for passing off, though proof of fraud
may materially assist the plaintiff in establishing probability of deception.
58. I may also observe that as laid down in Laxmikant V. Patel (supra),
besides the aforemtioned factors, this Court is also to consider the way in
which the business may be carried on in the future, and where the
probability of confusion exists, an injunction must be granted.
59. In view of the aforesaid discussion, I am satisfied that the plaintiff has
proved a prima facie case and balance of convenience in his favour on
account of prior use and trans border reputation of its mark. This Court also
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feels that there is a high degree of likelihood of the plaintiff suffering
irreparable injury given the vast existing subscriber base of the plaintiff
which may be confused into associating the services offered by the
defendants to be those offered by the plaintiff.
60. Accordingly, the plaintiff‟s application under Order 39, Rule 1 & 2
CPC is allowed and order dated 27.05.2011 is confirmed till the final
disposal of the suit. The defendants‟ application under Order 39, Rule 4 is
dismissed.

(VIPIN SANGHI)
JUDGE
MARCH 19, 2014

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