Bombay High Court: Ownership of Facebook Group is Not a Trademark Dispute

Bombay High Court: Ownership of Facebook Group is Not a Trademark Dispute

The Bombay High Court by its single judge Justice Nitin W Sambre has set aside Civil Court’s decision and held that the dispute over ownership of a Facebook Group is not a trademark dispute and the same cannot be decided by the Civil Court.

In the present case, the Appellant/Plaintiff- Himalayan Club had filed a suit against Kanwar B. Singh and others- Respondents in the Civil Court seeking declaration that the disputed Facebook Group is owned by it and it has the exclusive rights to manage the group. It sought mandatory injunction against one to the defendants directing them to hand over the control of the Facebook group to the club.

The appellant claimed that it had various publications and libraries. The respondent was a member of the management committee of the club and had the job of helping the club with the website, internet-based chat groups, and social media outreach. The Facebook group named- The Himalayan Club was created by him as part of his role in the club.

The appellant contended that the respondent, as a creator administrator of the group, started claiming that the Club has no connection with the Facebook group and usurped control of the group.

The Civil Court in its observation ruled that the Facebook Group is a trademark and hence it has no jurisdiction over the dispute as per Section 2(3A) of the Bombay Civil Court Act, 1948.

Hence, an appeal was filed by the appellant.

The High Court pursued Section 2(3A) of the Bombay City Civil Court Act, 1948, which defines an intellectual property dispute. Further, it pursued Section 3 of the Act which excludes Intellectual Property disputes from Civil Court’s jurisdiction.

The Counsel for the appellant submitted that Civil Court order is against the Order VII Rule 10 of the Code of Civil Procedure, 1908 (CPC). Further Section 3 of the Trademark Act was not applicable in this case as the dispute was not with respect to trademark.

Per contra, the Counsel for the respondent concurred with the Civil Court’s decision and contended that the appellant can always approach the Court having competent jurisdiction.

The High Court at the outset significantly noted the fact remains that the Facebook Group is no way claimed to be a registered trademark of the appellant of which the respondent No.1 allegedly infringed. Rather the appellant sought declaration that it was owner of the Facebook Group and based on the same, ancillary reliefs were claimed. The claiming of the relief was also based on the pleadings that the respondent No.1 by misusing his position was trying to change the situation viz. ownership of the Facebook Group by taking undue advantage his position as that of “moderator” of the Facebook Group.

The Judge discerned, “the Facebook Group which is claimed to be of the appellant is a website, internet based social media platform which provides for members to exchange views, ideas and to post experiences, messages, photographs etc. As such, it cannot be said that the Facebook platform is a trademark or a copyright.”

After pursuing the provisions of clause (m) of Sub-Section (1) of Section 2 of the Trademarks Act, 1999, which defines “mark”, the Court noted that the appellant was claiming to be a registered proprietor of the said mark “The Himalayan Club”.

In this background, the Court said that it cannot be said that the recovery and restoration of Facebook Group can be termed to be a dispute relating to trademark. Once the case of the appellant was based on the creation of Facebook Group under its instructions and authority, it cannot be said that the suit will fall in the category as has been observed, opined the judge.

The Court asserted that, “the conclusion drawn by the Court below that the dispute involved in the suit pertains to the intellectual property and as such, the Court has no jurisdiction to entertain the suit, cannot be accepted. The Court below has misguided itself thereby inferring that the ownership of Facebook Group amounts to trademark and as such, the dispute pertains to the intellectual property.”

In the background of aforesaid observation, the High Court was of the view that the Civil Court was having jurisdiction and was in error in recording a finding that the suit pertained to the claim of ownership of trademark and as such, was a suit pertaining to an intellectual property and had committed an error in invoking provisions of Clause (3A) of Section 2 of the Bombay City Civil Court Act, 1948.

Thus, the Court quashed the impugned order and accordingly, set aside.