Introduction
With the advancement of technology, it has become easier for consumers to access their desired products and solutions within a few clicks yet, this ease also brings some inherent limitations. There has been a growth of awareness regarding brand value of products among consumers while they make choices. However, with the advent of technology and growth of online marketing, it has become an immensely challenging task for the consumers to their preferred brand with many other products, matching, resembling the brand – verbally, phonetically, in design. The confusion primarily arises when consumers search for their preferred brand in a search engine, that displays multiple similar websites carrying the brand name and identical details. For instance, a user searching for “Nike official store” may encounter deceptively similar websites such as “N1ke” or “Niké” that mimic the branding and details of Nike, making it difficult to identify the genuine site.
This post argues that a strict application of the functus officio doctrine risks undermining effective trademark enforcement in the digital age.
The Procedural Wall: Reviving the Functus Officio Doctrine
Courts, vigilant to these practices of trademark infringement and passing off, have rendered decisions in the past and recent years to prevent such consumer confusion by ordering the domain name registrars to take down websites that could potentially lead to consumer confusion. This practice, is carried out by courts under Section 151 of the Code of Civil Procedure (CPC), 1908, that saves the inherent powers of civil courts to make orders necessary for the “ends of justice” or to prevent “abuse of the process of the court”. The present ruling in the case of Mahindra and Mahindra Limited & anr v. Diksha Sharma proprietor of Mahindra packers movers & ors, however challenges the notion by claiming that the role of courts would become “functus officio” after the delivery of judgement for them to use dynamic injunctions. The Court decreed trademark infringement reliefs against deceptive domain names using “Mahindra” but refused to allow post-judgment impleadment of new infringing websites, holding that once a judgment is passed the court becomes functus officio and cannot extend injunctions beyond the CPC framework. The Court reinforces this restrictive view by emphasizing that “Section 151 cannot be used to contradict the procedure laid down in CPC itself,” thereby rejecting any attempt to use inherent powers to bypass procedural finality.
The court referred to a variety of cases such as Dwaraka Das vs. State of M.P. & Anr., State Bank of India & Ors. vs. S.N. Goyal, and so on to contradict its own previous stance in cases concerning similar circumstances that required dynamic injunctions to restrict and regulate mirror sites that would potentially infringe the registered trademarks.
The court justified its stance through the concept of finality, noting that once a judgment is pronounced and signed, “the Court becomes functus officio,” thereby losing the authority to extend relief beyond the decree, once final decree is passed, any interim injunction will merge into the that. This ensures that disputes eventually end and prevents successful litigants from “reviving” suits indefinitely. It also looks into the limits of Section 151. As held in Arjun Singh v. Mohindra Kumar, inherent powers cannot be used to “cut across” the statutory framework where a complete scheme already exists. The court then goes to the doctrine of Separation of Powers, where the court correctly identified that it cannot “legislate” from the bench. If the current law is insufficient for the internet age, the remedy lies with the Legislature, not through “moulding relief” beyond the confines of the CPC.
Courts used dynamic injunctions to prevent mirror sites as a means to achieve justice under Section 151. Dynamic injunctions have emerged as a practical judicial response to online infringement. Unlike traditional injunctions, they address not just existing infringing websites, but future mirror sites, enable real-time enforcement without requiring fresh litigation, prevent defendants from circumventing orders through minor technical changes
Indian courts, particularly in cases like Utv Software Communication Ltd. And Ors vs 1337X.To and Universal City Studios Llc. & Ors. vs Mixdrop.Co & Ors, have recognized that without such flexibility, injunctions risk becoming ineffective. In this sense, dynamic injunctions are not an expansion of rights, but a necessary mechanism to enforce existing rights effectively.
Doctrinal Tension: The “Non-Exhaustive” Code vs. Procedural Integrity
With dynamic injunctions being the stance of courts in such cases, the present interpretation of the section singles out this judgement from previous ones that also dealt with similar circumstances, involving mirror websites that infringe trademarks and are controlled through dynamic injunctions in the cases of UTV Software Communication Ltd. V. 1337X.To and Ors, Universal City Studios LLC & Ors vs. Mixdrop.co & Ors. The judgement expressly disregard these precedents in volition by prioritising the inherent mechanism laid down in CPC, respecting the limits of courts power, while also preventing extra court authorities in determining the fate and effectuation of dynamic injunctions.
This efficient facade faces its own inherent limitation. The Supreme Court in Manohar Lal Chopra v. Rai Bahadur Rao Seth Hiralal explicitly recognised that the CPC is not exhaustive and that courts may issue temporary injunctions in situations not covered by Order 39, but subject to the caveat that inherent power cannot be used to defeat express statutory provisions or the Code’s scheme. This foundational view supports a flexible, ends-of-justice-based use of inherent injunctions in appropriate cases. The decision frames inherent power as supplementing the Code, not replacing it, and cautions against bypassing express provisions.
Various later decisions in Calcutta and other High Courts such as Tata Chemicals Ltd. V. Kshitish Bardhan Chunilal Nath And Others, reiterate that the CPC’s non-exhaustive character allows the courts to grant injunctions in circumstances not strictly described in Order 39, while restating that such power must harmonize with statutory provisions and the judicial objective of preventing abuse.
In Nanasaheb v. Dattu, And Others, the court held that it possesed the power to grant injunction even in circumstances not covered by Order 39, such that the inherent powers can be utilised for issuing temporary injunctions but not to nullify statutory provision. This hence places a inherent restriction on the usage of CPC. Ahlawat discusses the procedural use of §151 and cautions against bypassing CrPC/CrPC-like procedures and other statutory rules. it therefore treats it as part of the broader jurisprudence that positions §151 as a safety-net rather than a substitute.
In sum, these judgements crystallize into a doctrinal tension. The modern approach consistently treats Section 151 CPC as a residuary, supplementary power that fills gaps and corrects abuses, but never to repeal or bypass express statutory remedies. These dynamic injunctions or mirror-site blocking schemes operate within this framework. They rely on §151 to implement practical relief while preserving the CPC’s core remedies and procedures, not by replacing them. By refusing to act, the court arguably allowed an “abuse of process” where infringers use technicalities to bypass a trademark’s protection.
It could be seen that the situation has arrived at a legal stalemate, where both are correct at some ends, also are not in a position to proceed further. This judgement hence unearthed a situation of uncertainty prevailing over cases that require dynamic injunctions in preventing an intellectual property infringement in this dynamic technical era.
Comparative Jurisdictional Analysis: Solving the Mirror-Site Menace
While the Delhi High Court feels “denuded of power” post-decree, courts in other jurisdictions view mirror-site movement as a continuing threat that justifies broad, future-reaching relief. The case of Sanrio, Inc. V. Yoon shows that courts abroad grant permanent injunctions precisely because defendants can “easily shift infringing activity to other domains”. This hence clearly highlights a jurisdictional lacuna that the global IP has already resolved with an intention to achieve ends of justice.
Metro-Goldwyn-Mayer Studios, Inc. V. Grokster, states that the “entire purpose of an injunction is to take away defendant’s discretion not to obey the law”. Chanel, Inc. V. Besumart.Com and the McGraw-Hill cases show that courts can order the transfer of infringing domains to the plaintiffs as a permanent remedy. Hence going as per a comparative jurisdictional analysis, the high court’s decision has come up with an inefficient framework to achieve ends of justice, by granting the ultimate discretion to the defendants to not obey the law and could potentially encourage the infringers to create mirror sites without any proscription.
The case of Capitol Records, LLC v. Crego, explicitly stated that When a ‘history of continuing infringement’ is present and ‘a significant threat of future infringement remains,’ a permanent injunction is appropriate.” The injunction can cover all works and future works.
Conclusion
Hence the court is correct in calling for legislative intervention that allows the judiciary to understand its role in preventing injustice with proper statutory control.
“Surely, no successful litigant can be expected to hold a decree and still be frustrated on account of non-implementation thereof” (para 28)
Any remedy in the form of an injunction, without dynamic injunctions would just serve as a paper tiger in this dynamic era. Justice Gedela chose procedural integrity over judicial activism in this case and his judgment serves as the ultimate evidence that the Information Technology Rules and the CPC are desperately out of sync with the speed of modern innovation and requires a radical overhaul to match the AI phase in protecting trademark infringement, hence requiring the intervention of legislators.
Authored by: Mr. Arul Murugan S
Mr. Arul Murugan S is a second-year law student at Tamil Nadu National Law University, with a keen interest in Intellectual Property Law, particularly trademark law and its intersection with technology.
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