McDonald’s Corporation and its Indian subsidiary McDonald’s India (“McDonald’s) approached the Delhi High Court 1 seeking an injunction against some unidentified imposters who were misusing McDonald’s names, registered trademarks, and the artistic work of the Golden Arches Logo. They were registering domain names incorporating the registered trademarks of McDonald's and operating fake websites, misleading the general public to apply for McDonald's franchise opportunities and collecting monies illegally for such franchisees.
McDonald’s stated that it is engaged in the business quick-service restaurants, which started in the United States of America in 1968. McDonald’s created its iconic Golden Arches logo and is using the same with its trademark "McDonald's". It came to India in 1993 and has registered the marks in India as well.
McDonald’s found that someone was pretending to be providing a McDonald’s restaurant franchisee. Thereafter, from the very same day, the existing franchisees of McDonald’s started receiving several emails on their official e-mail IDs, messages on LinkedIn profiles, calls, couriers at their official addresses, containing signed fake McDonald's franchise application forms, fake approval letters on the fabricated letterhead of McDonald's.
Aggrieved by the above, McDonald’s filed a complaint with the concerned police station requesting registration of an FIR and investigation into the fraudulent activities being carried out by misusing the trade name of McDonald's, its GSTIN, and registered address of its franchisee. It also claimed that a caution notice was issued in a leading newspaper.
Furthermore, McDonald’s also filed a complaint with the domain registrar for suspension of the impugned domain names such as mcdonaldfranchises.com. It stated that when one fake domain was suspended based on the complaint, several other mirror websites with minor variations in the domain names of blocked websites were created by the imposters to continue their fraudulent activities.
McDonald’s further claimed that no action was taken by the concerned police authorities despite the complaint resulting in McDonald’s filing a complaint at the Court of the Metropolitan Magistrate, Patiala House Courts, New Delhi seeking directions for registration of the FIR. McDonald’s also filed a similar complaint to the Principal Commissioner, GST, Delhi.
It stated that the whereabouts of these defendants are not known.Italso made the banks wherein accounts have been opened by imposters to siphon off the money received from the applicants, parties to the suit.
The Delhi High Court held that McDonald’s has made out a prima facie case and the balance of convenience is also in its favour. Furthermore, an irreparable loss would be caused to it if the injunction is not granted.
Hence the Court restrained the imposters from misusing McDonald's family of trademarks, registered address, GSTIN and their franchisee, domain names, websites, business paper, corporate stamps, etc. or any other similar business identification, in relation to their business and services to pass off or enable others to pass off their goods, services, and business as those of Mc Donald’s.
The banks which were made party to the suit, were also directed to immediately freeze the bank accounts of the imposters and also submit the identity of the account holder, KYC documents, identity-related documents, bank statements from the date of opening of the accounts till date.
The National Internet Exchange of India was directed to disclose the complete identity of the registrants of the domain names from their records i.e., their names, address, phone numbers, email Ids, billing and payment details and the like.