IPR Newsletter: WhiteHat Jr vs Pradeep Poonia-Dec 2020

The Delhi High Court in a recent defamation suit granted an ad-interim relief to ‘WhiteHat Jr’ against Pradeep Poonia for indulging in defamation, infringement of trademark and tarnishing the name of ‘WhiteHat Jr’. ‘WhiteHat Jr’ is a trademark of Whitehat Education Technology Private Limited, a start-up which teaches coding to children from the comfort of their houses helping them build games, animations, apps, etc (“Company”). It was founded by Karan Bajaj in 2018 and was later taken over by BYJU’s.

Karan Bajaj filed a defamation suit CS (Comm) 515/20201 before the High Court of Delhi against Pradeep Poonia, a YouTuber, a critic of the Company and the concept behind the platform promoted by the Company. Pradeep Poonia tweeted against the Company under the name ‘WhiteHat Sr’ and ‘WhiteHatPoonia’ and through his Youtube channel ‘WhiteHat Sr’. He was also accused of indulging in hacking into the internal business communications platform to access confidential information, including passwords of CEO and have put them on public domain by repeatedly live streaming such confidential information on his Youtube channel.

The High Court of Delhi based on this suit and the submissions made by the counsels on behalf of the Company and Pradeed Poonia passed an ad-interim injunction vide an order dated 23rd November 2020 against Pradeep Poonia restraining him from downloading and circulating any material with respect to ‘WhiteHat Jr’ and directed him to take down a list of tweets and Youtube videos from the internet. The Delhi High Court while passing the ad interim injunction against Pradeep Poonia stated the urgency for such retainment “…in case an ad interim injunction is not granted the plaintiffs would suffer an irreparable loss and the balance of convenience also lies in favour of the plaintiffs” ‘WhiteHat Jr’ had also filed another defamation suit before the High Court of Delhi CS(COMM) 518/20202 against Aniruddha Malpani, who was an IVF specialist and founder of the angel investment firm Malpani Ventures and has invested in several start-ups dealing in educational technology. The suit against Aniruddha Malpani included several tweets deemed as “derogatory imputations”. Based on the suit and the submissions made by the counsels on behalf of the Company and Aniruddha Malpani the High Court of Delhi passed an order stating “…a limited ad-interim injunction is required to be passed on the prima facie case shown by the plaintiff, resulting in an irreparable loss to the plaintiff, as also keeping in view the balance of convenience lying in favour of the plaintiff. Accordingly, an ad-interim injunction is granted in favour of the plaintiff and against the defendant, restraining the defendant from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the plaintiff, its management or the employees.”. The High Court of Delhi furthermore in its ad interim injunction directed Aniruddha Malpani to delete all its tweets listed in its order dated 24th November 2020.

Cyber Defamation and the Trademark Laws

In the present cases, ‘WhiteHatJr’ being a registered trademark was used by Pradeep Poonia for the purpose of criticising the Company on Twitter, YouTube and other social media platforms. According to Section 29(4) of the Trademarks Act, 1999 (“Act”) which deals with infringement “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, USES IN THE COURSE OF TRADE…”. The term ‘uses’ has been defined in Section 29(6) and the use of a trademark for criticism does not seem to fall under any of the clauses. It can be inferred from the phrase ‘USES IN THE COURSE OF TRADE’, that the application of Section 29(4) is limited to commercial usage. On the basis of posts of Pradeep Poonia’s on the social media, he was not indulged in promoting any other EdTech platforms, therefore there appeared to be no commercial activity or financial interest. Thus, the usage of the WhiteHatJr’s trademarks by Pradeep Poonia was noncommercial or any financial gain and it could not have been brought under the purview of Section 29(4). A similar submission was made by the counsel for Pradeep Poonia while arguing the suit before the High Court of Delhi. However, the High Court of Delhi stated its reasons for granting such an ad interim injunction on the basis of the prima facie case laid down by the Company in its suit and its submissions.

Importance of identification of Trademark Class

Trademark registration becomes inevitable for individuals and organizations who intend to protect and increase the goodwill of their business. A registered trademark enables the proprietor an exclusive right and ownership of trademark. Registering your trademark under a specific class prevents someone from registering the same or similar trademark within the same class. This stops someone from producing and selling the same products or services having the same/similar trademark as you. It does not prevent someone potentially registering a similar trademark in a different class(es), so it is always recommended to register trademarks in all the classes that are applicable and are relevant. When you file your trademark application, you must select the class of goods or services that your trademark will protect, and you must also identify the goods or services you provide. Your trademark will only protect the goods, services and class that you name in your application. Trademark classification serves two important functions and purpose:

(i) It provides a guideline for registering trademarks, and

(ii) it can help you identify potential trademark infringers.

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