Delhi High Court Directs E-Commerce Platforms To Block Listing Of Counterfeit EBC Books

EBC is one of the leading publishers of legal textbooks, commentaries and law reports authored by legal luminaries. The counterfeit/pirated books under the names 'Eastern Book Company' and 'EBC' were sold by the defendants on Amazon and Flipkart websites.

The counterfeited books include 'C.K. Takwani's Civil Procedure, Limitation and Commercial Courts 9th Edition' and 'R.V. Kelkar's Criminal Procedure, 6th Edition'.

A single judge bench of Justice Sanjeev Narula noted that the counterfeit books are nearly identical to the original books except for minor differences.

Comparing the original and counterfeit books, the Court observed that the counterfeit books have prints of inferior quality and poor ink quality. The counterfeit books are scanned copies of the original books and have inverted and misprinted pages. Further, the bar code of ISBN is non-functional in counterfeit books and they do not have a hologram which is found at the bottom of the back cover of EBC books.

However, the Court stated that the 'inconsequential' differences between the original and counterfeited books may go unnoticed by the consumers.

It stated that the defendants have entirely copied the design and make of EBC's books. Given their identical nature, it stated that the consumers would be unable to identify the points of distinction when purchasing the books online.

“Consumers purchasing the infringing books through online modes will be unable to identify the points of distinction, which would typically manifest in physical copies of the books.”

Additionally, the Court remarked that the counterfeit books may contain incorrect or outdated information, which could damage EBC's reputation as a publisher.

“Further, given that these books do not originate from the Plaintiffs, they may also contain incorrect or outdated information, which could damage the Plaintiffs ' well-established reputation.”

With respect to trademark infringement, the Court noted that the defendants are prima facie using EBC's registered trademark. It observed that the trademark as well as copyright infringement of EBC's books could cause financial losses to EBC and also damage goodwill.

It stated that only EBC has the exclusive right to publish the textbooks and the defendants have no authority to reprint or publish the books without EBC's consent.

The Court thus held that EBC made a prima facie in its favour and that the balance of convenience lies with it.

The Court restrained the defendants from printing, selling and advertising books under EBCS's trademarks. Further, it restrained them from using any other books which may be identical or deceptively similar or contain the logo, packaging, and labels of EBC.

It directed Amazon and Flipkart to block the listings of counterfeit books on their websites. The Court stated that if EBC discovers any listings for infringing books, it can send the URLs to Amazon, which should then take down the said listings.

The Court also directed Amazon to provide the addresses of stores or warehouses of defendants where the counterfeit books are stored.

The Court further directed the Local Commissioners to visit the defendants' premises to ensure that no physical evidence is removed. It directed the Local Commissioners to conduct a search of the premises and to seize any infringing products found.

Case title: EBC Publishing (P) Ltd & Anr. vs. Parents Responsibility & Ors. (Cs(Comm) 434/2024) and EBC Publishing (P) Ltd & Anr. vs. Wave Choice Cover & Ors. (Cs(Comm) 436/2024)