Doctor of Philosophy in Law

PROTECTION OF TRADE MARKS & DOMAIN NAMES IN INDIA AND ABROAD

ABSTRACT

of the

THESIS

SUBMITTED FOR THE WARD OF THE DEGREE OF Doctor of philosophy In Law

BY SYED MAHRUL HASAN

UNDER THE SUPERVISION OF PROF. (DR.) SALEEM AKHTAR DEAN

FACULTY OF LAW ALIGARH MUSLIM UNIVERSITY ALIGARH (INDIA) 2013 CERTIFICATE

This is to certify that Mr. Syed Mahrul Hasan research scholar Department of Law, Aligarh Muslim University, Aligarh has selected his topic of Ph.D. Thesis Entitled, “Protection of Trade Marks and Domain Names in India and Abroad”, on my advise.

I have made various suggestions while supervising his work and he has incorporated many of them. In view of this I deem this work fit for evaluation.

I wish him luck.

(PROF. (Dr.) SALEEM AKHTAR) Department of Law Aligarh Muslim University Aligarh

ABSTRACT

In an age of globalization, the world got shrunk and is considered as a single market, regarded as a single republic that has really started the process of concretising the idea of global governance which presented the stiffer competition from all corners of the world in any given field. Globalization - the 'big idea' of the late twentieth century - lacks precise definition. More than this, it is in danger of becoming, if it has not already become, the cliché of our times. Globalization can usefully be conceived as a process which embodies a transformation in the spatial organization of social relations and transactions, generating transcontinental or interregional flows and networks of activity, interaction and power. Nonetheless, the term globalization captures elements of a widespread perception that there is a broadening, deepening and speeding up of world-wide interconnectedness in all aspects of life, from the cultural to the criminal, the financial to the environmental. At issue appears to be 'a global shift'; that is, a world being moulded, by economic and technological forces, into a shared economic and political arena. Behind the rhetoric of globalization - rhetoric found in public as well as academic debate - laid three broad accounts of the nature and meaning of globalization today, referred to here as the hyper globalist, the sceptical, and the transformationalist views. At this juncture possession of intellectual property rights will give a better edge in the global play. The right to prevent others from using the ideas or information to their own commercial advantage is not easily delineated. Legal techniques of some sophistication are called for and this has until recently made intellectual property a somewhat esoteric specialist. But, particularly in industrial free-market economics, these intangible property rights are becoming increasingly valuable in the fight to secure and retain shares of a market.

1 and the each which can be accessed, reproduced, and distributed have become problems that must be seen in all of their complexity as well as the accompanying policy challenges. The Intellectual Property Right are increasingly becoming the physical assets in the digital age, though substantial time and effort may be required to achieve a workable balance between private rights and public interest in information. The technological changes bring challenges to the basic principles of Intellectual Property Right laws, Internet and the digital revolution poses complex problems for Intellectual Property Right laws and their protection. The three technological advances namely digitization of information, networking, and www. (world wide web) have turned the classical economics of the information upside down. An indication of the relative importance and complexity of the issues involved can be taken from a recent world intellectual property organization (WIPO) estimate that no Less than 90% of total investment in a multimedia product was expanded in dealing with intellectual property issue.

Broadly speaking, IPRs, are divided into two categories; firstly, patents, design, trademarks, domain names, trade secrets, geographical indications, plant varieties rights integrated circuits, which are known as industrial property, and secondly the copyright and related or neighbouring rights and collectively known as intellectual property. It is possible that one may be the owner of one or more rights separately or jointly. It is also interesting to note that all these rights are known as “Intellectual Property Rights”, each rights has its unique and different purpose, different laws protecting different intangible, assets viz. Patents for inventions, trademarks for brands, Designs for aesthetic designs, Copyrights for literary, dramatic, musical and artistic work to name of few.

A trademark can be word, a logo, a number, a letter, a slogan, a sound, a colour, or sometimes even “Service” identify the source of goods and/or services with which the trademark used. Trademarks can be owned or companies and should be registered at a governmental agency, which is usually referred to as the trader when a trademark is used in connection with service. It is sometime referred to as a “Service mark”. The registration symbol – the latter “R” in circle ® - may

2 not be used unless the trademark with which it is has been actually registered with the governmental agency alluded to above. It has four primary functions. The first is to signify that all goods bearing the trademark come from a single source. The second is to convey to the buying public a guarantee of quality. The consumer should know that from, purchase to purchase, the favourable characteristics of the goods bearing the trademark remain the same. The third is to allow one trade to distinguish his goods from those of his competitors. The fourth is to promote the goods. It is important to realize trademarks are property; just a buildings and machinery are property. They should therefore be treated with the same respect as these, more obvious, tenable form of the property. This type of property to which trademark is attributed is known as intellectual property. This term also encompasses patents, which protect inventions (useful advances), registered designs, which protect the shape or surface decoration of articles and copyright, which protect artistic or literacy works. Whilst a product may also be protected by some, or even all of these other property rights, it source and quality is always identified by its trademark.

In India, intellectual property falls in the Union list of the seventh schedule under the article 246 of the constitution, which has itemized same as patents, inventions and designs, copyright trademarks and merchandise marks” (Item 49). A trademark may consist of one or more distinguishable words, signs, letters, numbers, drawings or pictures, emblems, colours or combination of colours etc. The mark may also consist of a combination of one or more of the said elements. A trademark is a commercial asset intended for commercial use and the owner thereof gets a perpetual right to its exclusive use in relation to goods and services. In India the, Trade & Merchandise Marks Act of 1958 was replaced by the Trade Marks Act of 1999 read with T.M. Rules 2002 making drastic changes so as to conform to the international standards on the law and also to include within its fold service marks. The said Act provides for the registration of trade marks in relation to particular goods and services and provides for the action (civil as well as criminal) against infringement of such trademarks. The Act also contains

3 provisions to facilitate civil action for passing off, i.e. where an unregistered trademark is flouted.

The emergence of the internet or the onset of the ‘e’ or ‘electronic culture’ or “e-Culture” that has led to a radical metamorphosis in the manner a business can reach out to its customers. Information about a particular product or a reputed brand name is easily accessible through the powerful search engines available on the internet. While before the emergence of the e-culture, business entities had acquired intellectual property rights viz. Trade marks in their products through continuous promotion of the particular brand name by means of advertising through the media viz. The press, television, radio broadcasts and other means, the development of the internet has opened new vistas for a very effective brand promotion for the internet users who are in fact increasing leaps and bounds with the awareness of the electronic culture. It is not difficult to find cybercafés even I the remote areas of the country and computer with internet access is becoming more of a necessity than a luxury. This factor has also opened the Pandora’s Box on the aspect of intellectual rights in the domain names and their conflicts vis-a- vis the registered trademarks. A domain name means the address of a business entity on the internet or cyberspace or a references for having access to the business credentials of an ‘entity. Domain names are made available by the Registering Authorities on application. The importance of domain names on a similar footing with trademarks is now legally recognized.

However, there is a possibility that some innocuous entity has already registered the domain name using the established trademark and owing to the strict rules of the registering authorities not to allow the same domain name the company seeking the domain name in the name of its trademark has to contend itself with an identical domain name but not the exact name as its trademark. It has also been observed in all such cases that the innocuous entity seeks a hefty compensation from the company for transfer of the domain name and this practice has come to be known as ‘cybersquatting.

4 Importance of trademarks and domain names have increased with the globalization of business and expanded usage of the internet for commercial purpose. Domain names are used to identify one or more IP Addresses. For example, the domain name intel.com represents about a dozen IP addresses. Domain names are used in URLs to identify particular Web pages. For example, in the URL http://www.fordfoundation.org/index.html, the domain name is fordfoundation.org. Every domain names has a suffix which indicates top level domain (TLD) to which it belongs i.e. gov-Government agencies, edu- Educational institutions, org-Organizations, mil-Military, com-commercial business, net-Network organizations, ca-Canada, in-India as Internet is based on IP addresses, not on domain names whereas every Web Server requires a Doman Name System (DNS) server that translates domain names into IP addresses. Thus, The progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology and culture. The legal protection of new creations encourages the commitment of additional resources for further innovation. The promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being. However, the intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.

A trend of increased disputes over web address is gaining ground in India over the past few years as companies recognize the commercial potential on the Internet. As companies try to state their claims in cyberspace they often find their prime panels already in the hands of somebody else. The W1PO arbitration and mediation centre may order the respondent only to refrain from the use damages for the loss caused to the complainant law are being continuously amended to take care of the technological changes.

5 As per its reports, WIPO elected to limit its mandatory general administrates procedure for the resolution of domain name registration (cybersquatting) WIPO also recommended that the registration agreement contains a provision, for domain on an optional basis, in respect of any dispute in relation to the domain name and such arbitration takes place on live. When one is legitimately entitled to register a domain name, why should be penalized if he seeks to trade in it can be contended that a cybersquatting does not deal in any gods and hence, his activities are not likely to cause confusion in the minds of the public. Intellectual Property Law is being continuously amended to take care of the technological changes. But it still requires major amendments to deal with challenged posed by the internet and digital revolutions. This allows transactions signed electronically to be enforceable in a court of law. The Act provides legal framework for ecommerce, e-security and e-governance in India.

Object of the Study Basically the main object of this study is to examine the crucial instances of hurdles in the way of the trademarks and domain names user and the protection given to the trademarks and the domain name under present legislations in India and Abroad. Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks containing full application information on all registrations and renewals, which facilitates examination, search and potential opposition by third parties. The effects of the registration are, however, limited to the country concerned.

Research Methodology The methodology adopted by the researcher is purely doctrinal in nature. It involved in depth study of source materials, text review, case study and comparative study. The research is based on two types of material i.e., primary materials and secondary materials. Primary materials consist of the text of laws, declarations etc. on the issue. Secondary materials consist of books, articles, encyclopaedia, research papers, newspapers and magazines. The research also

6 includes study of case laws. Use of the internet was also made to gather important information relating to the subject of study. The research is analytical and descriptive in nature. Sources Primary and Secondary sources of information have been utilized in the writing of this research.

Mode of Citation A uniform mode of citation has been followed throughout the research work i.e. OSCOLA.

Review of the Literature A review of the literature was done by the researcher even before selecting the topic “Protection of Trademark and Domain Name in India and Abroad”. Once the topic was zeroed on, the review of the existing literature was done in detail. Lots of Articles, Journal report, Books, case law, paper submitted to a seminar or to a conference and web pages of different website were reviewed. They are as follows.

The Trade Marks Act, Act by Iyengrar, Universal law publication, VIth edition, 2011. The researcher examines in the Book provisions relating to trademark law in Indian and also provisions of TRIPs and Paris convention responsible for the enactment of the Trade Mark Act 1999.

An Introduction to Intellectual property Rights by J.P. Mishra, Central Law Publication, 2005. According to the author trademark is a kind of symbol that helps a user to make difference in between the goods or services of one enterprise from those of the competitors.

Intellectual Property Law by Bentley and Sherman, first Indian Reprint, 2003, Oxford University Press, New Delhi. The book provides legal protection of

7 trademarks. The researcher analyses the provisions of the trade mark act 1999 for the better protection of trademarks.

Intellectual Property Law, by P. Narayan, Eastern law house, publication VIth edition, the researcher examines the definition, meaning kinds and essentials of a trademark. It also analyses and evaluates that how trademark performs functions.

Intellectual Property Law by Meenu Paul, Allahabad law agency publication, the book provides basic rules of registration of trademark. The process whereby a trademark is entered on the register of the trademark is referred to as registration.

Law Relating to Intellectual Property by B.L. Wadehra universal law publication IV edition, 2007 examines special provisions relating to protection trademarks to international registration, effects of registration, duration and renewal of registration.

Intellectual Property by D. Bainbridge, Publication by Pearson Education (Singapore). The book provides law relating to passing off in action why passing off is necessary because already trademark given the protection to goods and services?

Intellectual Property by Cornish and llewelyn, Thomson, Sweet and Maxwell Publication, Vth edition 2005, The researcher examines the doctrine of passing off that it arises in three cases first when it is injured the claimants goodwill, secondly in misrepresentation and thirdly in damages.

Intellectual Property and the Internet by Ryder, Rodney, Lexis Nexis Butterworths, publication the researcher examines the working of internet technology and domain name system. It also analyses the doctrine of

8 cybersquatting and to curb this menace in the present legislation in India and abroad.

Protection of Domain Names in India and Abroad by Prof. Saleem Akhtar and Shweta Jain, published by Aligarh Muslim University Press, 2012 the researcher examines meaning of domain names registration and its protection under Trade Marks Act 1999.

Information Technology law and Practise, by Sharma Vakul Published by Universal Publication (2008), the researcher examines the meaning of cybersquatting. How can this problem solve in the present scenario.

Cyber laws by Justice Yatindra Singh, Universal publication Vth edition, 2012, the researcher analyses online infringement of trademarks with the tooks of cybersquatting, Metatags, Linking, Framing, Spamdexing, Spoofing.

Intellectual Property: Patents, Copyrights, Trade Marks and Allied Rights, by W.R. Cornish and D. Llewelyn, published by Thomson, Sweet and Maxell, VIth edition, 2008. The researcher Examines, much also continued to happen at the international and regional level to give IPR a growing significant worldwide.

Chapterization The present work namely’ Protection of Trade Marks & Domain Names in India and Abroad” has been broadly divided into fifth chapters. This work has been written primarily to acquaint the initiated as well as uninitiated about the concept of trademarks and domain names and analysis of the legal framework both in national and international context which gives protection to trademarks and domain names as an intellectual property rights.

The first chapter deals historical background of trademark law, important features of Trade Mark Act 1999, the meaning and legal definition, essentials of

9 trademarks and its functions etc. It also includes some new additions in the term of Trademarks.

Second chapter gives an introduction of internet and domain name system. It also includes meaning of domain name and its hierarchy, Social and economic value and globalization of domain name system.

Third chapter deals with the registration of Trademarks and domain names and its protection under the Indian legislation as well as abroad.

Fourth Chapter focuses on infringement of Trademark and the common law remedy the doctrine of passing off in action.

Fifth chapter discusses about the uniform domain name dispute resolution policy, cybersquatting and the role of WIPO. It also includes resolution of domain name dispute under FTDA, ACPA and UDRP.

The work ends with the conclusion, which recapitulates the nodal points of our discussion.

10 DECLARATION

It is hereby declared that present thesis entitled “Protection of Trade

Marks and Domain Names in India and Abroad” is an original work of

undersigned, no earlier work has been done on the same topic in this University and any other University in India in my best of knowledge.

SYED MAHRUL HASAN

ACKNOWLEDGEMENT

I bow to Almighty Allah, the all Powerful and Merciful. He fulfill my wishes and gave me strength to finish this work.

I navigate my deep sense of gratitude towards my mentor Prof. Saleem Akhtar, Dean, Faculty of Law, Aligarh Muslim University, Aligarh, who persuaded me to work on “Protection of Trade Marks and Domain Names in India and Abroad”. It was his savvy pilotage and constant inspiration coupled with amicability which enabled me to present this exiguous endeavour in its present visage.

I owe my profound gratitude to Prof. Mohd. Shabbir , Chairman, Faculty of Law, Aligarh Muslim University, Aligarh, for his sympathetic attitude, constant encouragement and for providing necessary facilities to complete this study.

I express my indebtedness to Prof. Akhlaq Ahmad, Prof. Iqbal Ali Khan, Prof. Faizan Mustafa, Ex Dean and Chairman Faculty of Law, Aligarh Muslim University, Aligarh, who provided me constructive suggestions.

I feel immense pleasure in recording my thanks and obeisance to Dr. Nafees Ahmad (Lecturer), Faculty of Law, Aligarh Muslim University, Aligarh, who always stood by me and groomed me to summage the new vistas of cognition.

I shall ever remain indebted to Dr. Javed Talib (Reader), Dr. Zaheeruddin (Reader), Dr. Shakeel Ahmad Samdhani (Reader), Mr. Zubair Ahmad Khan (Reader), Dr. Zafar Mehfooz Nomani (Reader), Dr.Mohammad Ashraf (Reader), Dr. Badar Alam (Lecturer), Dr. Iqbal Hadi Rizvi (Lecturer), Dr. Waseem Ahmad (Lecturer), Dr. K. Hashmat Ali Khan (Lecturer), Dr. Shakeel Ahmad (Lecturer), Dr. Tanzeem Fatima (Lecturer), Mr. Zakiddin Khairuwala (Advocate), Faculty of Law, Aligarh Muslim University, Aligarh, for their good wishes and encouragement.

I salute and venerate to my parents, for their love and benedictions from cradle to this day.

I register my juxtaposition with my wife Iram Hasan and beloved daughter for their love and affection.

I am grateful to my relatives and friends for their affability and civility.

I also express my thanks to the office member of Libraries of different University, who have rendered great assistance to me in process of the collection of material.

I mention Mr. Naeem Uddin for process my work in thesis form.

I feel heavily indebted to express my most sincere thanks to all those who have helped me in one way or the other in the completion of the academic endeavour.

Thanks.

SYED MAHRUL HASAN

CONTENTS

Page No. Acknowledgement Abbreviation List of cases INTRODUCTION 1-10 CHAPTER-I 11-55 TRADE MARK IN INDIA AND ABROAD  An Overview  Historical Perspective 1. English Trademark Law 2. American Trademark Law 3. Indian Trademark Law  Important Features of Trade Marks Act, 1999 1. Registration of Trade Marks for Goods and Services 2. Associated Goods and Services 3. New Categories of Trade Marks 4. Trade Mark Tending to Become Absolute  TRIPs and Paris Convention and Trade Mark Act, 1999 1. National Treatment Principle (a) Exclusion of the Reciprocity (b) Negative Treatment (c) Exception to the National Treatment Rule 2. The Right of Priority 3. Obligation on Member Countries (a) Use of Trade Marks (b) Concurrent Use of the Same Mark on the Similar Goods (c) Grace Period for the Payment of Renewal Fees (d) Independence of Trade Marks

i (e) Well Known Trade Marks (f) State Emblems Official Hall Marks and Emblems of International Organizations (g) Assignment of Trade Marks (h) Protection of Trade Marks Registered in one Country of the Union in Other Countries of the Union (i) Service Marks (j) Nature of the Goods to which a Trade Mark is Applied (k) Trade Names (l) Importation of Goods Bearing a Trade Mark or Name Unlawfully (m) Collective Marks (n) Appellations of Origin and Indications of Source  Legal Protection of Trade Marks  Meaning and Definition of Trade Mark  Identification of a Trade Mark  Trade Mark under TRIPS Agreement  Essential of a Trade Mark 1. Identify of Proprietor 2. Use 3. Trade Mark for Goods of Services 4. Use in Course of Trade 5. Connection between Goods and User 6. Competitive Goods or Services 7. Eight Key Characteristic in sec 9 (i) (b) 8. Registered Proprietor  Function of Trade Mark  Trade Mark as a Property 1. Ensure that the Trade Mark Stands from its Surrounding. 2. Use of Trade Mark in Association with a Generic Description of the Product

ii  Ownership of Trademark  Summation  Notes & References

CHAPTER-II 56-97 DOMAIN NAME IN INDIA AND ABROAD  An Overview  IP Address  Internet Naming Convention : Domain Name System (DNS) (1) Concept of Domain Name System (2) Domain Name Server (3) Domain Name Aliases  Meaning and Definition of Domain Name (1) Domain Name Space (2) Domain Name Syntax  Hierarchy of Domain Name System: Internet Domain Names  Classification of Internet Domain Names (1) Top – Level Domain (a) Generic TLDs (gTLD’s) (b) Country Domains (ccTLD’s) (2) Second Level Domains (3) Third Level Domains (4) Proposed Fourth and Fifth Level Domains  Value of Domain Names (1) Economic Value (2) Social Value  Globalization of Domain Name System  Summation  Notes & References

iii CHAPTER-III 98-144 REGISTRATION, ASSIGNMENT AND TRANSMISSION OF TRADE MARKS AND DOMAIN NAMES A. Trade Mark  An Overview  Registrar of Trade Mark  Basic Rules for Registration of Trade Marks  Registration of Trade Mark  Grounds for Refusal of Registrations (1) Absolute Grounds for Refusal (a) Trade Mark Devoid of Distinctive Character (b) Trade Mark Consist Exclusively of Marks (c) Customary Paradigms in Contemporary Semantics of Trade and Established Practices (d) Grounds Based on Public Policy and Public Interest (e) Grounds for Refusal Based on Shapes and Contours of Goods (2) Relative Grounds for Refusal (a) Similarity with Earlier Trade Marks for Similar Goods/Services (b) Similarity with Earlier Trade Marks (c) Later Mark Likely to be Prevented from Use (3) Honest and Concurrent Use (4) Name of Chemical Elements or International Non Proprietary Names not Remittable. (5) Names and Representations of Living Persons or Persons who Recently Died.  Judicial Response  Procedure for Registration  Appropriate Office of Registry

iv  Procedure by the Registrar (1) Ex Office Examination of Application (2) Opposition, Hearing and Evidence (3) Abandoning Tie Registration Application (4) Grant of Registration and Power of Central Govt. to Prohibit  Direction of Central Government  Renewal Process and Fee  Non Renewal and Restoration  Non Renewal and Registration of Similar Marks  Rights Conferred on Trade Mark on Applying for Registration  Assignment and Transmission of Trademark  Special Provisions Relating to Protection of Trademarks to International Registration under the Madrid Protocol. 1. International Application Originating from India 2. International Registration where India has been Designated 3. Effects of International Registration 4. Duration and Renewal of International Registration B. Domain Name  An Overview  Registration  Domain Name Structure and Naming in the .IN Domain  Domain Naming  Domain Registration  Problems in the Registration of Domain Name  Domain Name Registration in India  Summation  Notes & References

v CHAPTER-IV 145-222 INFRINGEMENT OF TRADE MARK AND DOCTRINE OF PASSING OFF IN ACTION: NEW DIMENSION AND DEVICES A. Infringement of Trade mark  An Overview  Enlargement of Infringement (1) Use on Similar Goods or Services (2) Repudiated and Registered Marks B. Passing Off  An Overview  Classical Trinity of Passing Off (1) Misrepresentation (2) Goodwill (3) Damage  Passing off Applied to Non Trading Activities  What should be Established in a Passing Off Action  Essential Characteristics of a Passing Off Action: Modern Formulation (1) Proof of Fraudulent Intent: Is there any Necessity (2) Passing Off to Goods: Limitations (3) Evidence of False Representation and Deception: Requirements (4) Plaintiff and Defendant: A Need not be in the Same Field (5) Prior Use: To be Established (6) Passing Off Action: Issues  New Dimension of Passing Off Action  Defense in Passing Off Action

vi  Relief in Suit for Passing Off and Infringement (1) Accounts of Profit (2) Damage (3) Injunction (a) Anton Pillor (b) Mareva Injunction (c) Interlocutory Injunction (d) Perpetual Injunction  Judicial Response  Summation  Notes & References

CHAPTER-V 223-350 UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY  An Overview  Background of Uniform Domain Name Dispute Resolution Policy  Uniform Domain Name Dispute Resolution Policy  The NSI Policy  Proposed Domain Name System  Internet Corporation for Assigned Names and Numbers (ICANN)  Uniform Dispute Resolution Policy: Its Viability  The (UDRP ) Processual Paradigms in Arbitration (1) .IN Registry (2) .IN Dispute Resolution Policy (3) Charter Eligibility Dispute Resolution Policy (4) .ASIA Charter Eligibility Requirements Policy (5) .cat Eligibility Requirements Dispute Resolution Policy

vii (6) Intellectual Property Defensive Registration Challenge Policy (7) Start-up Trade Mark Opposition Policy (8) Sunrise Challenge Policy (9) Inter Registrar Transfer Policy (10) .info Dispute Resolution Policy (11) .biz Dispute Resolution Policy (12) .name Dispute Resolution Policy (13) .pro Dispute Resolution Policy

 Protection of Domain Name: Global Efforts (1) British Law (2) United State Law (a) Lanham Act, 1946 (b) Federal Trademark Dilution Act (FTDA), 1995 (c) Anti Cyber Squatting Consumer Protection Act, 1999 (ACPA) (d) The Truth of Domain Name Act, 2003 (3) Indian Law (a) Protection Under Trade Mark Act, 1999 (b) Information Technology Act, 2000

 Non Judicial Dispute Resolution Policy under UDRP  Cyber Squatting : Role of WIPO (1) Cyber Squatting (2) Typo Squatting (3) Protest Website (4) Linking (5) Framing (6) Spamdexing (7) Spoofing (8) Metatag  Roll of WIPO

viii  WIPO Cybersquatting Statistics  Cumulative Judicial Treatment : Reflections in Action  Summation  Notes & References

CONCLUSION AND SUGGESTIONS 351-369 BIBLIOGRAPHY 370-375 WEBLIOGRAPHY 376-379

ix ABBREVIATIONS

AC Appeal Cases (U.K.)

AIR All India Reporter

Cr. L.R. Criminal Law Reporter ccTLD Country Code Top Level Domains

DST Department of Science & Technology.

DNS Domain Name System.

EC European Commission

ER English Reports (U.K.)

FR Federal Reports (U.S.A.)

FS Free Software

GATS General Agreement of Trade in Services.

GATT General Agreement on Tariff and Trade.

HLJ House of Lords Journal

HTML Hypertext Markup Language

Http Hypertext Transfer Protocol

IPRS Intellectual Property Rights

IPAB Intellectual Property Appellate Board

ICANN Internet Corporation for Assigned Names and Numbers

ILR Indian Law Reports

IP Intellectual Property IP address Internet Protocol Address

IT Act Information Technology Act, 2000

INDRP .IN Dispute Resolution Policy.

LQR Law Quarterly Review

LR Law Reports

NSP Network Service Provider

OSI Open Source Initiative

OSS Open Source Software

PC Privy Council

P2P Peer to Peer

RAC Regional Access Coding

SLD Second Level Domains

SCC Supreme Court Cases

SCJ Supreme Court Journal

SM Service Mark

TM Trade Mark

TM Act Trade Mark Act, 1999

TRIMS Trade Related Investment Measures

TLD Top Level Domain

TRIPS Agreement of Trade Related Aspects of Intellectual

Property Rights.

UDRP Uniform Dispute Resolution Policy UDNRP Uniform Domain Name Dispute Resolution Policy

UNCITRAL United Nations Commission on International Trade Law.

URL Uniform Resource Locator

WTO World Trade Organization

WIPO World Intellectual Property Organisation.

LIST OF CASES

1. Amritdhara Dahara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449. 2. Acqua Minerals Ltd. v. Pramod Borse., 2001 PTC 619 (Del) 3. Alitalia Linee Aeree Italiane, S.P.A. v. Casinoalitalia.com, 128 F. Supp. 2d 340 (E.D.V.a. 2001) 4. Apple Inc. v. Laksh Internet Solutions Private Limited NAF Case No. FA 0805001195659) 5. Arcelor Mittal v. Privacy Protect.org / Mr. Singh ([email protected]), Taj Pharmaceuticals Ltd., Taj Group of Companies, WIPO Case No. D2010-0899 6. Asian Paints (India) Ltd. v. Domain Admin., WIPO Case No. D20002- 0649 7. Atlas Copco v. Atlas Copcoiran.com, et all., 533F.Supp. 2d 610 (E.D.Va. 2008) 8. Aristo Pharmaceuticals Ltd. v. Wock Hardt Ltd. 2001 PTC 139 9. Allergan Inc. v. Milment Oftho Industries AIR 1998 Cal 261. 10. Apple Laboratories v. Boots Company 2004 (29) PTC 265 IPAB 11. Apple Computer v. Apple Leasing 1995 IPLR 63. 12. Artistic v. Rysta (1945) 62 RPC 65 (HL) 13. Arun Cosmetics v. Hindustan Lever Ltd. 1988 PTC 311. 14. BASF v. CEP (U.K.) 1996. 15. Bata India Ltd. v. Pyare Lal & Co., AIR 1985 All 242 16. Bennett Coleman & Co. Ltd. v. Steven S.Lalwani., CaseNo. D2000-0014, Adm. Panel Decision, WIPO 17. Bennett Coleman & Co. Ltd v. Long DistanceTelephone Co., Case No. D2000-0015,Adm. Panel Decision, WIPO 18. Bright Imperial Ltd. V. Domain Administrator, Foundation Private Whois INTEvraccddhb2fe, Case No. D2013-029 19. Blue Cross v. Blue Cross 15 IPLR 92 20. Beiersdorf A.G. v. Ajai Sukhwani 154 (2009) DLT 83 21. Borosil Glass Works Ltd. v. P.P. Batra (1996) 61 DLT 414

i 22. Bhawnesh Mohanlal Amin & Others v. Nirma Chemicals Work Ltd. & Others 2005 (8) SCJ 514, 2005 (7) SC 513. 23. Bio-Chem Pharmaceuticals Industries v. Astron Pharmaceuticals 2003 PTR 18. 24. British Ind. Corp. Ltd. v. Khariti Ram 2003 PTR 25. 25. British Steel Corporation London v. The Registrar of Trade Marks 1991 PTC 148 (SOSFT) UK. 26. Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises AIR 1999 P&H 231. 27. Banyan Tree Holding v. Musali Krishna Reddy 2010 (42) PTC 361 28. Bayer Aktengessell Schaft v. Ajay Jain 1997 PTC (17) 660. 29. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) PTC 300 (SC) 30. Card service International Inc. v. MC Gee, 42USPQ 2nd 1850 31. Castro; Ltd. v. Shriniwas Ganediwal., WIPO Case No. D2002-0881 32. Cash Converters Pvt. Ltd. v. Rui Zhang, Case No. D2013-0724 33. Clue Computing v. NSI, District Court, Boulder Country, Colorado., Case No. 96 CV 694, Division 5 34. Consim Info Pvt., Ltd. v. Google India Pvt. Ltd. and Ors, MIPR 2010 (3) 0067 35. Comp Examiner Agency, Inc., v. Juris, Inc., No. 96-0213-WMB, 1996, US Dist.LEXISn20259 (C.D. Cal April 26, 1996) 36. Cox & Kings India Ltd. v. Rakesh Sud., WIPO Case No. D2000-0411 37. CITICORP & Anr. v. Todi Investors & Anr., 2006 (33) PTC 631 (del) 38. Consorzio de Prosciutlo di Parma v. Marks and Spencer P/C (1991) RPC 351. 39. Coca-Cola v. Koke Co. (1929) 254 US 143 (145) 40. Coles v. Needs (1932) 50 RPC 379 (388) 41. County Sound Pic v. Ocean Sound Pic (1991) ESR 367. 42. Commissioner of Inland v. Muller &Co’s Margarine Ltd. (1901) AC 217 at 223.

ii 43. ColgatePalmolive & Co. v. Anchor Healt and Beauty Care Pvt. Ltd. 2003 (27) PTC 500 (Para 59) 44. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) PtC 300 SC 45. Castrol Ltd. v. A.K. Mehta 1997 PTR 76. 46. Cartier v. Ramesh Sawhney 19 IPLR 214 47. Central Camera v. Registrar (1980) IPLR 1 48. Christine Holden v. Johnson & Johanson (1990) IPLR 96 49. Campa Bewrages Ltd. v. Tripti Enterprises 1984 PTC 129. 50. Colgate Palmolive v. Balsara Hygine 1992 PTC 261 (Bom.) 51. Caterpillar Inc 100 NE v. Lorange 1999 PTC 570 Mad 52. Daimler Aktienqesselischaft v.Hyb Hindustan, AIR 1994 Del 259 53. Dr. Reddy’s Laboratories Ltd., v.Manu Kosuri., 2001 PTC 859 54. Dona Corp. Toledo, Ohio v. Spicer Auto Products 1983 PTC 333 Del. 55. Durga Dutt v. Navratana Pharmaceutical Laboratories AIR 1965 SC 980. 56. Engineering v. UBHI Enterprises AIR 1985 Del. 210 at 216. 57. Erven Warnink Besloten Venootschep v. J. Townend & Sons (Hull) Ltd. (1979) AC 731. 58. Experience Hendrix, L.L.C. V. Denny Hammerton and The Jimi Hendrix Fan Club., WIPO Case NO. D2000-0364 59. East African (1) Remedies Pvt.Ltd. v. Wallace Pharmaceuticals Ltd. AIR 2004 Del 74. 60. Eastman Photographic Material v. The Controller General Trade Marks (1898) AC 571. 61. Farina v. Silverlock (1856) 3WR 532 : 69ER 560. 62. Google Inc. v. Herit Shah., WIPO CaseNo. D2009-0405 63. Gupta Enterprises v. Gupta Enterprises AIR 1998 Del 23. 64. Gonek Institute of Education and Research v. Anjani Kumar Goenka AIR 2009 Del 139 : 2009 AIHC 824 NOC : 2009 (160) DLT 417 65. Hero Honda Motors v. Rao Tella., WIPO Case No. D2000-0365 66. Hornhy Ltd. v. Zamindra Engineering Co., AIR 1970 SC 1649 67. Himalya Drug Company v. Sumit 2006 (32) PTC 112 (Del) 68. Horliks Ltd. v. Bimal Khamrai 2003 (26) PTC 241 (Del.)

iii 69. Honda Motors Co. Ltd. v. Charanjit Singh 2003 (26) PTC 1 70. HP Bulmer Ltd. v. J. Bollinger SP (1978) RPC 79 at 93. 71. How Parbros v. Tiger Batm. Co. 20 IPLR 265. 72. Heartst Corp. v. Dalal Street Communication Ltd. 1996 PTC 126 at 129 (Col) 73. Himalaya Industries v. Rajasthan Asbestors Cement Co. 1990 PTC 201 (Del) 74. (India TV) Independent News v. India Broadcast Live 2007 (35) PTC 177 (Del). 75. Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fire Pharmaceuticals Ltd. AIR 1998 Mad. 347. 76. ICC Development (International) Ltd. v. Arvee Enterprises 2003 (26) PTC 245 (Del.) 77. Italia Fabric Application (1990) 27 RPC 493. 78. Indian Electricals Application (1945) 49 CHW 425. 79. Indian Express Online Media Private Ltd., The Indian Express Limited. v. Mr. Sanjeev Saluja., WIPO Case no. D2009-0352 80. Intermatic v. Toeppen., 947 F. Supp. 12227, 1240 (N.D. III, 1996) 81. Israel bar association v. Itai ram, WIPO Case NO. D2010-0003 82. ITC Ltd. v. Buy This Name, WIPO Case No. D2002-0007 83. Jay Leno v. Guadalupe Zambrano, WIPO Cae NO. D 2009-9570 84. Julia Fiona Roberts v. Russell Boyd., WIPO Case No. D2000-0120 85. Jamna Products Manufactures of Kanmaie Karaikudi-1 v. Aravind Laboratories 2003 (27) PTC 409 (Mad) (DB) 86. Jai Rajendra Impex v. Shambhu Nath2010 (3) CHN (Cal) 842. 87. Kishore Zarda Factory v. J.P. Tobacco House, AIR 1999 Del 32. 88. Kirloskar Proprietary Ltd. v. Kirloskar Dimensions Pvt. Ltd. 1997 PTC 1 89. Kala Niketan v. Kala Niketan AIR 1983 Del 161 90. Kamal Trading v. Gillette 1988 PTC 1 (Bom) 91. KT Pavanny v. K.T. Mathew AIR 1982 Ker 309 : 1982 Ker LT 399 : ILR (1982) 2 Ker 250. 92. Leather Cloth Co. v. American Leather Cloth Co. (1865) 11 HL Car 523.

iv 93. Lambert Pharmacal & Co.v. Bolton Chemical Corp. 219F 325 (327) SDNY 1915) 94. Laxmikant V. Pael v. Chetan bhai Shah 2002 (24) PTC 1 (SC) 95. Lockheed Martin Corpn. v. Network Solutions, Inc., 985 F. Supp.,949 (C.D.Cal. 1997) affd194F.3d980(9th Cir.,1999) 96. Mahindra & Mahindra Ltd v. Neoplanet Solutions, WIPO Case No. D2000-0248 97. Mattel Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q.,2d (BNA)1620 (S.D.N.Y 200) 98. M/s Senior Laboratories v. M/s Jagsonpal Pharmaceuticals Ltd. AIR 1999 Delhi 102. 99. Morsler v. Jacobs 66 III Ap. 571 (576) (1896) 100. Mawana Sugars Limited v. Panalink Infotech Limited, 2006 (32) PTC537 101. Microsoft Corp v.Amit Mehrotra, WIPO Case No. D2000-0053 102. Microsoft Corp. v. Microsof.com,.WIPO Case No. D2000-0548 103. Markawa Beasing Manufacturing Co. Ltd. v. Onkar Bearing Industries,1998 PTC (18) 300 104. Marble City Hospital & Research Centre Pvt. Ltd. v. City Hospital & Research Centre Pvt. Ltd. 2009 (NOC) 2326 (MP). 105. Marks & Spencer PLC v. One in a Million FSR 265 1988 (1977). 106. NIIT Ltd. v. Parthasarathy Venkatram., WIPO CaseNo. D2000-0497 107. Northland Insurance Co., v. Blaylock, 115F, Spp. 2d1108 (D.Minn.2000) 108. Newman v. Pinto (1887) 4 RPC 508 109. Newton Chambers & Co. Ltd. v. Neptune Water Proof Paper Co. Ltd. (1935) 52 RPC 399 110. Nestle India Limited v. Mood Hospitality Pvt. Limited; 2010 (42) PTC 514 (Del) 111. Old Navy (ITM) Inc. & Ors, GAP (ITM) Inc. & Ors and Banana Republic (ITM) Inc. and Ors. v. Deepa Surekha & Ors. MIPR 2007 (3) 0528. 112. Panavision International, L.P. v. Toeppen., 141 F.3d1316 (9th Cir.1998) 113. PETA v. Doughney., 113F, Supp. 2d915 (E.D.Va. 2000) 114. Parle Products v. J.P. & Co. AIR 1972 SC 1359.

v 115. Prabhu Shankar v. Anand Kumar Deepak Kumar 2002 (24) PTC 292 (Del) 116. Premier Tissues India Ltd. v. Rolia Tissues Industries and Anr. 2012 (50) PTC 206 (DEL) 117. Payton and Co. v. Shelling Lampard & Co. (1990) 17 RPC 48 118. Playboy Entrprises Inc. v. Bharat Malik 2001 PTC 328 (Del) 119. Peshawar Soap & Chemicals Ltd. v. Godraj Soap Ltd. 2001 PTC 1 (Del) 120. Prestonetts. Inl. v. Lory 264 us 359 (368) : Ct 350 (351), 68 L.Ed. 731 (924) 121. Perry v. Truefill (1842) 49 ER 749. 122. Pals Distilleries v. Dahisar Distilleries 1992 PTC 41 (Bom.) 123. Reddaway v. Bamham (1896) AC 199. 124. Rupa & Co. Ltd. v. Dawn Mills Co. Ltd. AIR 1998 Guj. 247. 125. Ravlon Inc. v. Sarita Manufacturing Co. 1997 PTC 394. 126. Reekitt and Colman v. Borden Inc. (1990) 1 W.L.R. 491 (H.L.) 127. Rajesh Chheda v. Shubham Plywood Park, Mumbai AIR 2010 (NOC) 774 (Bom) 128. Rediff Communication Ltd. v. Cyberbooth., AIR 2000 Bom 27 129. Rediff.com India Ltd v. DaniyalWaseem WIPO Case No. D2010-0346 130. SABMiller India Ltd. v. Som Distilleries & Breweries Ltd. 25th July, 2013. 131. Samsung Electronics. v. Kapil Wadhwa. (2012) 132. Sant Kumar Mehra v. Ram Lakhan 1999 PTC (19) 307 133. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202F.3d489 (2d Cir.2000) 134. Satyam Infoway Ltd. v.Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 135. Satyam Computer Service Limited v. Vasudeva Varma Gokharaju., WIPO Case No. D2000-0835 136. Sbicards.com v. Domain Active Property Ltd., WIPO Case No. D2005- 0271 137. Segis SPA v. Kwon Tong Wan, Case No. D2013-0725. 138. Shetland Times, Ltd. v. Jonathan Wills and Another.,197 SLT 669: (1997)FSR 604

vi 139. Sony Ericsson Mobile Communications AB v. Chen Shenglu, 206 (33) PTC 597 140. Schwepper Ltd. v. Wellingtons Ltd.(1984) FSR 210. 141. SIA Gems & Jewellery Pvt. Ltd. v. SIA Fashion AIR 2004 Bom 10. 142. Senor Laboratories Ltd. v. Jagsonpal Pharmaceuticals Ltd. AIR 1999 Del 102. 143. Sir Sal Agencies Pvt. Ltd. v. Chintala Rama Rao AIR 1998 AP 86. 144. S.B.L. Limited v. Himalaya Drug Co. AIR 1998 Del 126 145. SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd. AIR 2010 (NOC) 506 (Bom) 146. Shalimar Chemical Works Ltd. v.Surendra Oil & Dal Mills (2010) 8SCC 423. 147. Spalding & Bross. v. A.W. Gamage Ltd. (1915) 32 RPC 273 (H.L.) 148. Sarilla Perfumery v. Jure Perfect (1941) 58 R.P.C. 147 (C.A.H.L.) 149. S.M. Dyecham v. Cadbury India 2000 PTC SC 297. 150. Sales Affaires v.Daan Ltd. (1947) 64 RPC 103. 151. Sakalain Meghajee v. B.M. House (India) Ltd. 2002 (24) PTC 207 (Del.) 152. Sha Bros. v. Golden Harvest (1972) RPC 559. 153. Singer v.Loog (1881) 18 Chd. 395 at 412. 154. Talk City, Inc.v. Michael Robertson., WIPO Case No. D2000-0009 155. Tata Sons Ltd. v.Manu Kosuri & others.,2001 PTC 432 (Del) 156. Tata Sons Ltd v. Ramadasoft,. WIPO Case No. D-2000-1713 157. Tata Sons v. D&V Enterprises,. WIPO Case No. D2000-0479 158. Tata Sons Ltd. v. The Advance Information Technology Association, WIPO Case D2000-0049,Adm. Panel Decision, WIPO 159. Telstra Corp. Ltd. v. Indian Yellow Pages., WIPO Case No. D2002-0651 160. The Washington Post, et als. v. Total News, Inc., et als., Southern District of New York., Civil Action Numebr 97-1190 161. Time Incorporated v. Lokesh Shrivastava., 2005(30) PTC 3 (Del), 169 162. Times Internet Ltd. v. Belize Domain who is Service Ltd. & Others,. MIPR 2010 (3) 0204 163. The Leather Cloth Company v. The American Cloth Company 11 HL 538.

vii 164. Torrent Pharmaceuticals Ltd. v. Union of India AIR 1998 Guj. 181. 165. Time Warner Entertainment Company v. M.K. Das 1993 PTC 453. 166. Times Internet Ltd. v. Just Flowers 2007 (10) AD (Del) 302 167. The Gillette Company v.A.K. Stationary 2001 PTC (21) 513 (Del) 168. Uniliver PLC v. Vesco Laboratories AIR 2010 Guj. 8. 169. United Distillers v. Jagdish Joshi 2000 PTC 502 (Del). 170. Union of India & Ors. v. Malhotra Book Depot. MIPR 2013 (1) 246. 171. Vikram Stores v. S.N. Perfumery Works AIR 2008 Guj. 65. 172. Wal-Mart Stores Inc. v. Walsucks,. WIPO Case No. D2000-0477 173. World Wrestling Federation Entertainment, Inc. v. Michael Bosman., WIPO Case No. D99-0001 174. Whirlpool Corporation v. Registrar of Trade Marks. AIR 1999 SC 22 : 2008 AIHC 494 NOC : (2008) 2 Guj. LR 1255 175. Wounder Ltd. v. Antox India Pvt. Ltd. 1990 Suppl. SCC 727. 176. Yahoo Inc. V. Sanjay v. Shah 2006 (32) PTC 157. 177. Yahoo! Inc. v. Aakash Arora & Anr., 1999 PTC (19) 201 178. Zimmer Orthopedics Ltd. London v. Kith De Fair (1985) PTC 133 (Del)

viii

INTRODUCTION

Statement of Problem In an age of globalization, the world got shrunk and is considered as a single market, regarded as a single republic that has really started the process of concretising the idea of global governance which presented the stiffer competition from all corners of the world in any given field. Globalization - the 'big idea' of the late twentieth century - lacks precise definition. More than this, it is in danger of becoming, if it has not already become, the cliché of our times. Globalization can usefully be conceived as a process which embodies a transformation in the spatial organization of social relations and transactions, generating transcontinental or interregional flows and networks of activity, interaction and power. Nonetheless, the term globalization captures elements of a widespread perception that there is a broadening, deepening and speeding up of world-wide interconnectedness in all aspects of life, from the cultural to the criminal, the financial to the environmental. At issue appears to be 'a global shift'; that is, a world being moulded, by economic and technological forces, into a shared economic and political arena. Behind the rhetoric of globalization - rhetoric found in public as well as academic debate - laid three broad accounts of the nature and meaning of globalization today, referred to here as the hyper globalist, the sceptical, and the transformationalist views. At this juncture possession of intellectual property rights will give a better edge in the global play. The right to prevent others from using the ideas or information to their own commercial advantage is not easily delineated. Legal techniques of some sophistication are called for and this has until recently made intellectual property a somewhat esoteric specialist. But, particularly in industrial free-market economics, these intangible property rights are becoming increasingly valuable in the fight to secure and retain shares of a market.

The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886). Both treaties

1 are administered by the World Intellectual Property Organization (WIPO). Intellectual property is all about human creativity. Intellectual property rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation. These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions.In the sense recognition is given to novel intellectual work by intellectual property sights. These rights are an advantage for creators and investors for conceiving and executing innovative thoughts and ideas. The scope of IPR is expanding very fast globally and the person who creates new ideas seeks protection under the umbrella of IPRs. The Intellectual Property Right regime has served as a means to protect such investment. Protection of intellectual effort is an offshoot by product of the process of production of investment, through IP takes the centre stage. The impact of IPR has spread over every aspect of human life. It has got something in store for everyone ranging from philosophers, Ethicist, scientist, politicians, artists, lawmakers, entrepreneurs, economists students and common man. 1

Intellectual Property Right is considered as a reward for creative and skilful work in the execution of ideas. In fact it is more than a reward for conceiving and executing ideas.2 The term IP is covering patent industrial designs, copyright, trademarks confidential information geographical indications and domain names etc. Patents, designs and trademarks used to be considered as different kinds of industrial property. But when copyright and confidential information were included the term intellectual property, though a little high sounding, is a more appropriate description for this class of property. 3

2 as intellectual property. It is possible that one may be the owner of one or more rights separately or jointly. It is also interesting to note that all these rights are known as “Intellectual Property Rights”, each rights has its unique and different purpose, different laws protecting different intangible, assets viz. Patents for inventions, trademarks for brands, Designs for aesthetic designs, Copyrights for literary, dramatic, musical and artistic work to name of few.

3 development of the internet has opened new vistas for a very effective brand promotion for the internet users who are in fact increasing leaps and bounds with the awareness of the electronic culture. It is not difficult to find cybercafés even I the remote areas of the country and computer with internet access is becoming more of a necessity than a luxury. This factor has also opened the Pandora’s Box on the aspect of intellectual rights in the domain names and their conflicts vis-a- vis the registered trademarks. A domain name means the address of a business entity on the internet or cyberspace or a references for having access to the business credentials of an ‘entity. Domain names are made available by the Registering Authorities on application. The importance of domain names on a similar footing with trademarks is now legally recognized.

A conflict situation arises typically when a company having an established brand name and registered trade mark approaches the registering authority for registration of the domain name on the internet so as to guide its potential customers to the site where more details about its products and services can be provided. In all probability, the domain name chosen by such a company has to be its reputed brand name or the registered trademark for e.g. : Microsoft Inc. would definitely seek a domain name Microsoft.com or Cadbury’s Ltd. Would definitely seek the domain name cadbury’s.com because potential customers are familiar with the brand name viz. Microsoft or Cadbury’s.

and Abroad. Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks containing full application information on all registrations and renewals, which facilitates

5 examination, search and potential opposition by third parties. The effects of the registration are, however, limited to the country concerned.

Sources Primary and Secondary sources of information have been utilized in the writing of this research.

Mode of Citation A uniform mode of citation has been followed throughout the research work i.e. OSCOLA.

6 The Trade Marks Act, Act by Iyengrar, Universal law publication, VIth edition, 2011. The researcher examines in the Book provisions relating to trademark law in Indian and also provisions of TRIPs and Paris convention responsible for the enactment of the Trade Mark Act 1999.

Intellectual Property Law by Bentley and Sherman, first Indian Reprint, 2003, Oxford University Press, New Delhi. The book provides legal protection of trademarks. The researcher analyses the provisions of the trade mark act 1999 for the better protection of trademarks.

Intellectual Property by D. Bainbridge, Publication by Pearson Education (Singapore). The book provides law relating to passing off in action why passing

7 off is necessary because already trademark given the protection to goods and services?

8 Chapterization The present work namely’ Protection of Trade Marks & Domain Names in India and Abroad” has been broadly divided into fifth chapters. This work has been written primarily to acquaint the initiated as well as uninitiated about the concept of trademarks and domain names and analysis of the legal framework both in national and international context which gives protection to trademarks and domain names as an intellectual property rights.

The first chapter deals historical background of trademark law, important features of Trade Mark Act 1999, the meaning and legal definition, essentials of trademarks and its functions etc. It also includes some new additions in the term of Trademarks.

Second chapter gives an introduction of internet and domain name system. It also includes meaning of domain name and its hierarchy, Social and economic value and globalization of domain name system.

Third chapter deals with the registration of Trademarks and domain names and its protection under the Indian legislation as well as abroad.

Fourth Chapter focuses on infringement of Trademark and the common law remedy the doctrine of passing off in action.

Fifth chapter discusses about the uniform domain name dispute resolution policy, cybersquatting and the role of WIPO. It also includes resolution of domain name dispute under FTDA, ACPA and UDRP.

The work ends with the conclusion, which recapitulates the nodal points of our discussion.

9 Notes & References 1. Catherine Colstan, Principles of Intellectual Property Law,Cavendisk Publishing Limited, London, 1999, P.1 2. Holyoak and Torremans, Intellectual Property Law, London 198, 2nd Edition, p. 3. 3. P. Narayan, Intellectual property Law, Third Edition, p.1

CHAPTER I TRADE MARKS IN INDIA AND ABROAD

TRADE MARKS IN INDIA AND ABROAD An Overview

Intellectual Property Right is a genus and trademark is a species which comprises of a name, word, phrase logo, symbol, design, image, letters, numerals 3-d signs or a combination of these elements. It is also used as a service work. A trademark is a kind of symbol that helps a user or purchaser to make a difference between the goods or services of one enterprise from those of his competitors. By distinguishing its products or services, a proprietor gains goodwill and market share while the purchaser can confidently purchase the goods or services without deceive or confuse. Trademarks are at the centre of global business today.

There was no time when man did not possess rights and there was no time when these rights were free from invasion or piracy. These invasions or piracies were mostly influenced by greed and a desire to profit at another man’s expense and make easy money, though, occasionally these were innocent. Literary works, goods and merchandise manufactured and used under special names or marks of features and associated with certain traders, artistic works, patents, inventions, etc. were all the subject-matter of piracy. Goods were passed off as if they were the products of the real property which they were not. This led to the deception of the purchasing public and also of the proprietor of the trade-mark. Development of trade, printing, art, literary works, etc., during the last and the present century and the vastness piracies, which simultaneously developed in respect thereof, necessitated Protection Laws.1

Trademarks are, thus, the quality symbols which mailed the order of priority a consumer can have as regards purchasing things or availing of services. These marks are the product of the intellect of one

11 who produces them and applies to the trade in question. Therefore, it is a form of intellectual property that needs protection, if for nothing else then, for the simple reason that providing such protection will lure more and more people make an attempt to come out with quality goods or quality services for the welfare of the making. More so because once a trademark has been well recognized by the consumer in the market, the loss of it may spell disaster for the holder of the trade-mark; so can make an unauthorized use of the trademark by other.2

The term “brands” is generally used in the expression trademark in the business world to identify its goods and services from one another. They guarantee the source and the quality of the organization’s goods and services. They can be a powerful, commercial weapon against fair competition and powerful, legal weapon against the unfair competition. In the care of goods or services protected by a patent, they build up a trademark's reputation through sales and advertising, during the period of patent monopolies, can slow or, in some cases, even prevent the erosion of market share that usually follows the end of patents life. It is the aim of this chapter to explain the importance and value of trademarks to our business clients and colleagues. The chapter first examines what is trademark and the various types of trademarks, that is available to identify a particular product (service). Than its show how a new trademark should be chosen and cleared for an introduction to the market. Finally the legal remedies that are available to the owner of a trademark to prevent unfair or illegal competition will be considered.

Historical Perspective The Intellectual Property Right and its journey is as young as human civilisation itself. Although, trademark law has a long history of

12 more than two hundred years. This history of trademark law began in the 19th century by Europe and the U.S.

English Trade Mark Law England did not establish a comprehensive system for trademark protection until 1905. Prior to the Act of 1905, it was passed The Merchandise Marks Act on August 7, 1864 dealing provisions with deceptive indications after that in 1875 the Trade Mark Registration Act was also passed. Before passing a new Act in 1938, The Act of 1905 was amended in 1919 and 1937. In the act of 1919 the register was divided into two parts, Part A and Part B. The distinction is thus stated in Kerly’s book: “Registration I Part B conferred lower rights than registration in Part A, being only prima facie evidence that the proprietor has the exclusive right to the use of the trademark, even after seven year registration. Subject to certain restrictions, a mark which had for not less than two years been bona fide used in the United Kingdom as a Trade Mark, was entitled to registration in respect of the goods in connection with which it had been so used.3

The Act of 1938 consolidates the law on the subject, such as “associated trademarks” a defensive mark system, consent to use system and non claiming right system. According to Kerly’s book, “Law of Trade Marks”, “The Trade Marks Act 1938 which consolidates the law, consequently appears as a complicated piece of legislation abounding in cross-references provisions and exceptions”.

Alongside of the rights conferred by registration, the common law rights of action regarding passing off and actions by unregistered owners were left untouched. These rights were established in the case in Millington V. Fox, (1838) 3 My & Cr. 338, and other cases. These cases have laid down the conditions under which a right of property as

13 regards trade mark may be acquired, and the extent and manner to and in which protection will be given.

After the Act of 1938 there were many changes in the international field relating to intellectual property. Thus, the Trade Marks Act, 1994 was enacted in the United Kingdom to make new provisions for registered trademarks implementing Council Directive No. 89/104/EEC of 21 December, 1988, to approximate the laws of Member States relating to Trade Marks; to make provisions in connection with the Council regulations (EC) NO. 40/94 of 20 December, 1993 on the Community Trademarks; to give effect to the Madrid Protocol relating to the International Registration of Marks of 27 June, 1989 and to certain provisions of the Paris Convention of the Protection of Industrial Property of 20 March, 1883 as revised and amended and for other connected purposes.4

American Trademark Law American Trademark Law came with English trademark law. The Lanham Act was passed on July 5, 1946. This Act established a procedure for federal registration of trademarks, which may not be immoral deceptive or scandalous or falsely suggest a connection with persons, institution's beliefs or national symbols. Lanham Act was amended in 1975 to allow for attorney’s fees in exceptional cases. In 1984 congress passed the Trademark Counterfeiting Act which included new civil actions with awards of treble damages. After that Trademarks law Revision Act passed in 1988, the object behind it was to bring trademark law more in live with the international standard. The Lanham Act was amended by Dilution Act of 1996 to protect the interest of business. Lastly an Anti-Cyber Aquatting Consumer Protection Act 1999 came into existence. The introduction of this act basically meant that those who have rights to trade mark also have

14 rights to the associated domain name, so no body besides Coca Cola.com register the domain name Cokacola.com on the internet.

Indian Trademark Law The British Government of India passed the Trade Mark Act 1940. This Act was based on the T.M. Act 1938 of England which came into force on June 1, 1942. It was the first statute law on Trade Marks, for uniform and systematic registration of trademarks in India. Prior to the Act of 1940 trademark was governed by common law. The ownership of our trademark was obtained by registering it under the Indian Registration Act 1908. After independence, significant development took place in the field of business and trade. To meet with these challenges the Trade Mark and Merchandise Act 1958 was passed, which replaced the Trade Mark Act 1940.

India joined WTO and become a member in 1995; it was then obligatory on the Indian Government to bring the Indian law in consonance with TRIPS. Hence the Trade Marks Act passed in 1999, which came into force with effect from 15th September, 2003. The Trade Marks Act 1999 replaced the Trade Mark Act 1958. The Indian Trademark law is now fully compatible with the TRIPS Agreement.

That a comprehensive review of the existing law be made in view of developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, the need for simplification and harmonization of Trade Mark management systems and to give effect to important judicial decisions. The Trade Marks Act, 1999 proposed to incorporate to achieve above purposes, inter alia the following, namely–

15 a) Providing for registration of Trade Mark for services, in addition to goods; b) Registration of Trade Marks, which are imitation of well-known Trade Marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11; Consequently, the provisions for defensive registration of Trade Marks are proposed to be omitted- c) Amplification of factors to be considered in defining a well- known mark; d) Doing away with the system of maintaining the registration of Trade Marks in Part A and Part B with different legal rights, and to provide only a single register with the simplified procedure for registration and with equal rights; e) Simplifying the procedure for registration of the registered user and enlarging the scope of permitted use; f) Providing for registration of “Collective Marks” owned by associations etc; g) Providing an appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Court; h) Transferring the final authority relating to registration of certification of Trade Marks to the Register instead of the Central Government; i) Providing enhanced punishment for the offences relating to Trade Marks on par with the present copyright Act, 1957 to prevent the sale of spurious goods; j) Prohibiting use of someone else’s Trade Marks as part of corporate names, or name of business concern; k) Extension of application of the convention country to include countries which are member of group or union of countries and Inter-Governmental organisations; l) Incorporating other provisions, like amending the definition of “Trade Mark”, provisions for filling a single application for

16 registration in more than one class, increasing the period of registration in more than one class increasing the period of registration and renewal from 7 to 10 years, making Trade Mark offences cognizable, enlarging the jurisdiction of courts to bring the law in this respect on par with the copyright law, amplifying the power of the court to grant ex-parte injunction in certain cases and other related amendments to simplify and stem line the Trade Mark law and procedure. In view of the extensive amendments necessitated in the Trade and Merchandise Marks Act, 1958 the Government thought it fit to repeal and re-enact the said Act.

Treatment of Part B Registrations of 1958 Act in Trade Marks Act, 1999 As Parts A and B the Trade Marks register have been integrated into one Trade Marks belonging to Part B on the commencement of the 1999 Act have become equal to Part A Trade Marks. The Trade Marks which do not fulfil the strict requirement for Part A registration of the 1958 Act could obtain registration in Part B of the register. In addition to satisfying the definition of Trade Mark, the only condition for registration in Part B of the register was the capability of distinguishing the goods, the expression “distinctive character” in 1999 TM Act equated to the expressive capability of distinguishing in 1958 Act. In the 1999 Act the standard required for registration of all Trade Marks is capable of distinguishing which in lower than the requirements under the 1958 Act. The Protection extended in larger in terms of goods and services, The overall quality of protection of all Trade Marks enjoying protection under Trade Marks Act, 1999 is a bit lower in view of the amendments in erstwhile section-17 and insertion of section 30 (1)

17 Collective Marks-A New Category of Marks The collective mark is different from other Trade Marks as a collective mark distinguishes the goods or services of members of an association of persons from the goods or services of another. The association is registered as proprietor of the Trade Mark and the member who uses the marks can do so if they fulfil registrations which are filed together with the application. Regulations of the association are open to public inspection. Members using the registered marks are referred to an authorised user.5 Use by members, refused to as authorised users, is deemed to be the use by the proprietor. It is desired from the Trade Mark that it should possess such qualities which indicate that it is a collective mark. It should become clear and is not taken to be something other than a collective mark.6

Some Important Features of Trade Marks Act, 1999 The important and distinguishing features of the Trade Marks Act, 1999 are as follows-

(1) Registration of Trade Marks for Goods and Services These are no provision for the registration of service marks in India till Trade Marks Act, 1999, introduced it for the first time. Now Trade Marks Act, 1999 provides for registration and protection of Trade Marks in respect of both goods and services. The term ‘goods’ is defined to mean “Anything which is the subject of Trade or manufacture.”7

Services have been defined in section 2 (1) (j) which reads “Services” means service of any description which is made available to potential users and include the provisions of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit

18 funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.

This is quite comprehensive and an all-subsuming definition, service of every description which is made available may have Trade Mark. The definition goes on to effectively mention business industrial and commercial matters and by way of caution or to make matter explicit enumerates 20 types of services. The opening part of the definition does not require valuable consideration as necessary condition.

For the purpose of registration of Trade Marks goods were classified into 34 classes as set out in the Fourth Schedule to the Trade Marks Rules, 1958 and a Trade Mark could be registered in respect of any or all of the goods comprised in a prescribed class of goods. If registration of a mark was required for goods falling under two or more classes, separate applications were to be made for each class.

Now the Registrar has to classify goods and services under section 7 (1) in accordance with the international classification of goods and services. An alphabetic index has to be issued under section 8 of the 1999 Act. Section 157 authorizes the Central Government to determine the manner of publication of the alphabetic index of classification of goods and services.8

An application for registration of a Trade Mark can be made for goods or services comprised in more than one class, but the fee shall have to be paid for as many numbers of classes in which the goods or services fall.9

19 (2) Associated Goods and Services Section 2 (3) enacts a new provision. It indicates that the law shall recognize goods and services in an associated manner if the goods and services are provided by one business undertaking. The effect is that a Trade Mark may be used for goods as well as for services and when a Trade Mark is being used for goods by a proprietor who also makes provisions for services from the same business he would be entitled to spill over reputation of the Trade Mark for the purposes of services or vice versa. Section 2 (3) reads:

(3) For the purpose of this Act, goods and services are associated with each other if it is likely that these goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and descriptions of services.

A person who is providing services would not be able to appropriate a Trade Mark already used for goods by one of the services are associated with the goods. Similarly when a Trade Mark is already used for services it shall not be appropriated by another person seeking to sell goods under that Trade Mark. If the goods are associated with services that they can be sold or traded in, by the some business which handles the services? The declaration that the goods can be associated with services or vice versa, would give a proprietor of a Trade Mark a pre-emptive right in relation to associated goods or services as the case may be. The associated goods and services would also be covered in the expression “Similar” occurring is section 11 or section 29.

(3) New Categories of Trade Marks Trade Marks Act, 1999 has introduced distinct unequal categories of Trade Marks namely.

20 (i) Trade Marks; and (ii) Well-known Trade Marks, with different rights before the Registrar in registration or opposition proceedings. A third category is on those unregistered Trade Marks proposed for registration. The fourth category is of reputed Trade Marks which are infringed when unauthorized used on different goods or services under section 29 (4). This category would combine the second and third categories above.

(4) Trade Mark Tending to Become Absolute In India, and in other countries, there is no exclusive right to use of the Trade Mark in relation to all goods or services. The exclusive right in available on registration of a Trade Mark in respect of only those goods or services for which it is registered or used, including the right to restrain others from using a similar Trade Mark.10 To vindicate this right, there is a right of opposition to registration of new Trade Marks similar to the earlier registered Trade Mark. The Trade Marks Act, 1999 has enlarged this right of restoring to opposition, In 1958, Act the right of the opposition was in relation to some goods which are now being extended to similar goods or services in section 11 (1). If the earlier mark is a well-known Trade Mark, the right to oppose the registration extends when the Trade Mark is opposed even in relation to dissimilar goods or services.11 There is still further right in section 11 (3) to oppose registration of similar marks, in case the earlier Trade Mark is entitled to resort to copyright law or law of passing off. These laws are not concerned with goods or services or in other words they can be availed for dissimilar goods or services.

The enunciation of law in section 2 (3) also contributes to the Trade Marks becoming absolute for all goods or services. The goods and services are declared as associated when offered, provided or

21 traded by the same business. The Trade Mark rights may get expanded to an extent that a Trade Mark may become absolute for all goods or services or at least equal to well-known marks within India.

It appears that the basic tenant of Trade Mark law that the rights and goodwill of Trade Mark are only in relation to those goods or services on which the concerned Trade Mark is used, is in for change, to the situation that a Trade Mark shall enjoy rights for a whole range of goods or services. In any case now every Trade Mark has rights in relation to related, associated can cognate goods or services.

TRIPs and Paris Convention and Trade Mark Act, 1999 The Indian trade mark law laid down in Trade and Merchandise Marks Act, 1958, has been re-enacted on 30th December, 1999 as the Trade Marks Act, 1999 in order to comply with the obligations of the Paris Convention and TRIPs. The changes made in the law to make it compatible with the Paris Convention.

The provisions of the Paris Convention concerning the trademarks are discussed in three categories; 12

(1) National treatment and Indian trademarks law. (2) Right of priority and Indian trade mark law. (3) Obligations on member Countries - Rules detailing minimum standards of protection; requiring or permitting member countries to enact of protection following these rules and Indian trade mark law.

(1) National Treatment Principle Articles 2 and 3 of the Paris Convention contain the most important provisions of national treatment. National treatment means

22 that each country which is party to the Paris Convention must grant the same protection to nationals of the other countries as it grants to its own nationals. Article 3 of the Convention requires that national treatment must be granted even to nationals of non-member countries, provided such persons are domiciled or has an industrial or commercial establishment in a member country. The term “domiciled” does not require a domicile in the strict legal sense of the term. A mere residence, as distinct from a legal domicile, is sufficient.13

The trademarks of foreigners are not only to be protected, but are also not to be discriminated against in any way. Without the rule of national treatment, it would be very difficult to obtain adequate protection in foreign countries for trademarks.

The term “national” includes both natural persons and legal entities. The national treatment rule means that the national domestic law, it is then applied to the nationals of a particular member country, must also be applied to the nationals of the other member countries. The national treatment rule in Article 2 (1) excludes any Possibility of discrimination to the detriment of nationals of other member countries. Thus a member country gives protection to foreigners (nationals of another member country) equal to its own nationals.

(a) Exclusion of the Reciprocity Any requirement of reciprocity of protection is excluded. For example, Indian has trademark duration of ten years and another member country X has trademark duration of seven years. India will provide a trade mark duration of ten years to the nationals of X where as country X will provided seven years duration to the trade marks originating from or belonging to the nationals of India as X provides to nationals of X. Thus, the reciprocity requirements have to be structured

23 equivalent to what a member country provides to its own nationals or to the nationals of any other country. The reciprocity requirements cannot be used for curtailing the rights of nationals of other member country if the same is provided to its own nationals.

To comply with new developments and to deal with newer treaties or arrangements, Trade Marks Act, 1999 contains sections 154 and 155 which fulfil the demands and aspirations of the people in relation to trade mark laws. The method of reckoning the period in section 154(3) from earliest of applications is in line with the Paris Convention. The provisions in section 155 as to the reciprocity with the Paris Conventions.

(b) Negative Treatment Section 155 authorises the Central Government to specify the country(s) which do not accord the same rights to Indians as it/they accord to its/their own national. If a country is so specified by the Central Government, then no national of such country (s) can;

• Apply for registration, or • Be registered as the proprietor of a trade mark, or • Be registered as assignee of a trademark, or • Apply for registration or be registered as a registered user in Indian of any trade mark”.14

It appears that the nationals of such a country would be eligible to become proprietors of unregistered trade marks in India, as there is no express bar against the same.

(c) Exceptions to the National Treatment Rule Article 2(3) of Paris Convention reserves the national laws relating to judicial and administrative procedures, as well as to

24 jurisdiction and the requirements of representation. If national laws impose certain requirements of procedural nature or special conditions on foreigners for the above purposes, they can be imposed on the nationals of member countries also. An example of this is the requirement for foreigners to deposit a certain sum as security or bond for the costs of litigation. Another example is expressly stated; the requirement for foreigners to either designate or address for service or to appoint an agent in the country in which protection is requested. These are the most common special requirements imposed on foreigners and are permitted as an exception from the national treatment rule.15 In India only these requirements are applicable to foreigners in relation to trade marks. The registration procedure requires an address within India to be designated and security for costs can be asked.

(2) The Right of priority The right of priority contained in Article 4 of the Paris Convention means that the registration application for a trademark filed with an application in one of the member countries entitles the applicant (or its successor in title) to apply for protection of the trade mark in all or any of the other member countries within a period of six months. All such applications filed within six months are regarded as if they had been filed on the date of first application. These later applications enjoy a priority status with respect to any application relating to the same trade mark filed in the intervening period in member countries. They also enjoy a priority status with respect to all acts accomplished after that date which could destroy the rights of the applicant for Trade Mark registration16. Section 154 and 155 of the Trade Marks Act, 1999 17 are in conformity with and give effect to these requirements.

25 The effect of the right of priority is that the later application must be treated as it had been filed simultaneously at the time of the filing of the first application in any other member country. The basic advantage the right of priority offers to the applicant is that he is not required to present all applications at home and in foreign countries at the same time. The applicant has six months at his disposal to request protection and organised with due care the steps to be taken to secure protection in other member countries of interest to the applicant.

(3) Obligations on Member Countries The Convention does not unify the Trade Mark legislation of member countries. Each member country is free to regulate the Trade Marks in its territory except for the specific obligations which the member countries are required to follow; these obligations are discussed below:

(a) Use of Trade Marks Article 5C(2) of the Paris Convention permits the use of a Trade Mark in a different form in one of the countries, if such different form of the same Trade Mark does not alter the distinctive character of the Trade Mark. Such use shall not entail invalidation of the registration nor diminish the protection granted to the Mark. The Paris Convention allows for unessential differences between the forms of the mark as it is registered and as it is used. This is so for example, in cases of adaptation of translation of certain elements for such use18. The national authorities are to decide in actual practice as to the nature of the differences and whether they are permissible or not as per their own law.19 In other words the countries have the freedom to enact laws as to what should be treated as unessential difference or a substantial difference.

26 In India, section 4720 requires compulsory actual use of the Trade Marks, as otherwise it can be expunged on the motion of an aggrieved person. The cancellation of a Trade Mark can only take place if the period of 5 years or longer has elapsed from the date of actual entry of the Trade Mark in the register. Five years is considered a reasonable time as per the Trade literature of other countries. Thus the law has been in conformity with the clause (2) of Article 5C of the Paris Convention.

(b) Concurrent Use of the Same Mark on Similar Goods The possibility of the same mark being used for identical or similar goods by two or more establishments, considered as co- proprietors of the Trade Mark, is addressed by Article 5C(3)21. It is provided that such concurrent use will not impede the registration of the Trade Mark nor diminish the protection in any country of the Union. The Trade Mark may be registered for each of the concurrent users except where the said use results in misleading the public or is contrary to public interest. If the concurrent use misleads the public as to the origin or source of the goods sold under the same Trade Mark, it may not be registered. Further, if the quality of such goods covered by concurrent users differs to the point where it may be contrary to the public interest to allow the continuation of such inconsistency, national legislation may address the situation as is thought fit.22

In India, the provisions in sections 12, 28(3), 33 and 35 of 1999 Act23 deal with concurrent use and the provisions are justifiable under this Article. They provide the necessary safeguards as contemplated by Article 5C (3) of the Convention. Equally, section 9(2) or the remedy of passing off would not allow confusion in the market place even if there is a vested right to use the Trade Mark. Bajaj Electricals Ltd. v. Metal & Allied Products AIR 1988 Bom 167 Section 28(3) may be

27 taken as declaring the concurrent registered proprietors as co- proprietors.

(c) Grace Period for the Payment of Renewal Fees Article 5b is requires that period of grace be allowed for the payment of renewal fees. The Trade Mark registration and other rights can be maintained by renewal in perpetuity. A failure to renew the registration normally entails the lapse of the registration and in some cases the expiration of the right to the mark. The grace period provided is intended to diminish the risks of a Trade Mark being lost by an involuntary delay in the payment of fees.24 A grace period of at least six months for the payment of the renewal fees in envisaged. The countries are free to levy a surcharge when such fees are paid within the grace period can provide for a longer grace period.

During the grace period, the registration remains provisionally in force.25 If the payment of the renewal fees (and surcharge where appropriate), is not made during the grace period, the registration will lapse retrospectively as of the original date of expiration.

In Trade Marks Act, 1999, Section 25 has been provided for the conditions of payment of renewal of registration. The registrar is required to send a notice to the owner for payment of fees. There is no chance of any inadvertent delay on the part of the owner as stated by the WIPO as a justification. Section 25(4) confers discretion on the Registrar of Trade Marks. If he thinks it just to do so, he may allow the payment of renewal fee after the expiry of six months26 but within a period of one year and restore the mark. The Act does not mention the trade mark registration provisionally remaining in force for a period of six months as provided in the Paris Convention. But the effect is the same as section 26 deems registration, though lapsed for non-renewal, to be treated as continuing for a period of one year for the purposes of

28 registering another mark, which is similar to lapsed non-renewed mark, subject to the conditions in which the Registrar may exercise discretion.

(d) Independence of Trade Marks Article 6 establishes the important principle of the independence of Trade Marks filed or registered in the country of origin from those filed or registered in other member countries. Article 6(1) states the basic principle of national treatment to the filing and registration of the marks. Regardless of the origin of the Trade Mark, a country has to apply only its domestic legislation in determining the fate of the registration application made by national of any member country. Trade Marks are independently in different countries of the Paris Union. Article 6(2) makes provision for applications by applicants entitled to the benefits of the Convention. An application for the registration of a mark filed in any member country may not be refused on the ground that filing, registration, or renewal of the marks has not been affected in the country of origin. Similarly a registration may not be cancelled on the above grounds. Article 6(3) state that a mark duly registered in a member country should be regarded as independent of Trade Mark registered in other countries of the Union, as also the country of origin. Thus, a mark once registered will not be automatically affected by any decision taken with respect to similar registration for the same Trade Mark in other countries.

Christine Holden v. Johnson & Johnson (1990) IPLR 96 In India, the Act does not refer to any of the obligations imposed by the country of origin, and nor does it require home country registration of the Trade Mark for registration in India. The Act has a territorial jurisdiction. The registration of Trade Marks in India does not have any relation with registration of the same or similar Trade Marks in other countries.

(e) Well-Known Trade Marks Article 6b is, an important Article the Convention provides for the protection of well-known marks. It has also been referred to in Articles 16.2 and 16.3 of TRIPs. The subject of famous, well-known or reputed marks has made the law of Trade Mark quite involved.27 Deliberations have been taking place about the criteria to determine the well-known marks for which special additional protection was envisaged in the year 1925.28 After the application of TRIPs in developed countries in year 1996 and 2000 in developing countries, the possibility of applying well-known marks to different goods or different service is to be protected by member countries.

The following is the extent of protection under Article 6bis: Firstly, a member country should refuse the application for registration of a Trade Mark conflicting with a well known Trade Mark for identical or similar goods. Secondly, the member country must cancel the registration of a conflicting mark if registered. Thirdly, the member country must prohibit the use of the conflicting Trade Mark for making a request for which a period of more than 5 years has to be fixed. In India section 11(2), 27, 29(2) and 29(4) of the Trade Marks Act, 199929 are the enabling provisions which may be resorted to for protecting well-known marks which have now been defined in section 2 (l) (zg). Section 57 when read along with section 9(2), 11(2), 11(3), 11(10) and 33 provide removal/objection mechanism if the use of conflicting mark is likely to cause confusion not only in relation to same or similar goods but also in relation to different goods. For similar or different goods, relief could be given by courts alone under common law, but not statutory recognition is given to same in section 11(2), (3) and 29(4) of the Trade Marks Act, 1999.

30 Kamal Trading v. Gillette.30 An existing registered mark may be injected if a well-known mark prays for an injunction in India, provided its repute can be proved in India by the use or acts of advertising. If the objection is taken at the time of registration or, early enough, the court shall grant an injunction. In recent times, protection has been extended to such Trade Marks also which were not used in India- Blue Cross v. Blue Cross, 15 IPLR 92. While protecting such Trade Marks, the courts have not dwelt on the theory of their being well-known as such and have said that their protection is justified on the grounds that a Trade Mark has acquired goodwill, and a reputation. The registration or use of a confusingly similar Trade Mark would, in most cases, be prejudicial to the interests of the public would be misled by the use of a conflicting Trade Mark. The courts have gone further and protected reputed Trade Marks from being used on goods of a different description whereas Article 6bis provides for measures only for identical or similar goods. But TRIPs goes further.

(f) State Emblems, Official Hallmarks and Emblems of International Organizations The Article 6ter of the Paris Convention covers the following distinctive signs: armorial bearings, flags and other emblems, official signs and hallmarks indicating control and warranty, and any imitation of those signs from a heraldic point of view. It does not purport to create an industrial property in favour of these signs.31 Article 6ter obliges a member country, in certain circumstances, to refuse or invalidate the registration and to prohibit the use of the above as Trade Marks or as part of the Trade Marks, so as to restrict commercialization of the distinctive sings of member countries and certain international and inter-governmental organizations. If the State or Organizations concerned allow the use of their signs as Trade Marks, Article 6ter does not have any application.

31 Section 23 of the Trade Marks Act, 1999 has authorised the Central Government to issue general or specific directions in relation to the registration of Trade Marks.

(g) Assignment of Trade Marks Sometimes a Trade Mark is used by an enterprise in various countries and it is desired to make a transfer of the Trade Mark rights in one or more of those countries. Some nations allow an assignment of Trade Mark without a simultaneous or corresponding transfer of the enterprise to which the Trade Mark belongs. Others require the simultaneous or corresponding transfer of the enterprise. Article 6quater of the Paris Convention regulates the assignment of the Trade Mark.

Section 37 and 38 of the Trade Marks Act, 1999 allow the assignment of a registered Trade Mark with or without the goodwill of the business. Section 39 of the Trade Marks Act, 1999 permits the assignment of the unregistered mark without goodwill of the business.

The transfer of assignment of the Trade Mark rights in other countries with or without the transfer of the enterprise are not the concern of the Trade Marks Act, 1999 and are not required to be transferred for recognition of assignment of the Trade Mark in India. A member country may not regard the assignment of a Trade Mark as valid if the use of that Trade Mark by the assignee would be of such a nature as to mislead the public, particularly as regards important features of the trademarked goods. This freedom to avoid any confusion in the market place is in necessary and Section 40 and 41 of the T M Act, 1999 is directed toward this end.

32 (h) Protection of Trade Marks Registered in one Country of the Union in other Countries of the Union The Convention establishes a special rule for the benefit of the owner of Trade Marks registered in their country of origin in Article 6 quinquines of the Convention which provides for extra-territorial effects of the registration.

A Trade Mark which fulfils the required conditions must be accepted filing and protected in the other member countries. In the following cases the Trade Mark may not be protected even though it is accepted in the home country. First: Where the Trade Mark infringes rights of the third parties acquired in the country where protection is claimed. These rights can be other rights in Trade Marks already protected in the country concerned or other rights, such as the right to Trade name or a copyright.32 Second: When the Trade Mark is devoid of distinctive character, or is purely descriptive, or consists of a generic name (per Indian law). Third: Where the Trade Mark is contrary to morality or public order, as considered in the country (India) where protection is claimed. Fourth: If the registration of the Trade Mark (in India) would constitute an act of unfair competition, as Article 6 quinquines in subject to application of Article l Obis. Fifth: Where the Trademark is used by the owner in a form which is essentially different from that in which it has been registered in the country of origin.

The Indian Trade Mark law, without referring to the country of origin, presently accepts for registration all or any mark whether registered in the country of origin or not. All marks are permitted

33 registration subject to the requirements and prohibitions for registration laid down in the Trade Mark law.

(i) Service Marks A service mark is a sign used by enterprises offering services, for example, hotels, restaurants, airlines, tourist agencies, car rental agencies, employment agencies, laundries and cleaners, etc., in order to distinguish their services from those of the other enterprises.33 Full-fledged registration and protection of service marks has been introduced from the commencement of Trade Mark Act, 1999 in compliance with Article 15 of TRIPs.

(j) Nature of the Goods to which a Trade Mark is Applied Article 7 of the Convention stipulates that the nature of the goods to which a Trade Mark is to be applied shall, in no case, be an obstacle to the registration of the mark. The purpose of this rule is to make the protection of the Trade Mark independent of the question as to whether such goods may or may not be allowed to be sold in the country concerned. Thus the law should allow the registration as Trade Marks if the goods are to be disallowed. In this regard, Trade Marks Act, 1999 does not pose any obstacle in the registration of a Trade Mark. The Act is not at all concerned with features, quality or safety standards prescribed for the goods. The registration of the Trade Mark can be proceeded with, irrespective of the nature of goods or services. The explanation to section 9 of the Trade Marks Act, 1999 expressly incorporates this.

(k) Trade Names Article 8 of the Convention obliges the member countries to protect the Trade names. A Trade name is the name of the enterprise engaged in the sale of goods or services and may or may not own the Trade Mark. A Trade name may become known, even if it does not own

34 any Trade Mark. The protection is to be extended without any obligation of filing or registration trade names as required for Trade Marks. Article 8 also clarifies that a Trade name need not form part of a Trade Mark or vice-versa. In India, the courts steadfastly protect the trade names without any condition that the name is registered. If there is an attempt to appropriate the business reputation, an injunction is issued.34

(l) Importation of Goods Bearing a Trade Mark or Name Unlawfully Article 9 of the Paris Convention provides detailed rules in relation to seizure of goods which bear a Trade Mark or name unlawfully. Article 9(1) requires that the seizure of such goods, marked unlawfully, it is to be made in those countries where such Trade Mark or name is entitled to protection. There is some practical difficulty implementing Article 9(2) which requires seizure to be affected in the country where the unlawful affixation of the mark occurred. Section 140 of Trade Mark Act, 1999 seeks to address particularly the compliance with article 9 of the Convention.

(m) Collective Marks Article 7bis obliges a member country to accept for filing and to protect, in accordance with the particular conditions set by that country, collective marks belonging to “associations”. These will generally be associations of producers, manufacturers, distributors, sellers or other merchants of goods that are produced or manufactured in a certain country, region or locality, or that have other common characteristic. The Paris Convention does not cover collective marks of States or other public bodies. Collective marks have been introduced in the Trade Marks Act, 1999 for which provisions are to be found in section 61 to 68.

35 (n) Appellations of Origin and Indications of Source Appellations of origin and indications of source are matters sufficiently related to the Trade Marks they are dealt with by the Geographical Indications of Goods (Registration and Protection) Act, 1999. Unfair competition is also a detailed subject combining many branches of IP and other totality of circumstances related to IP.

Legal Protection of the Trademarks Before the statute on the trade marks came into effect, only the common law protection was available to a trade mark. If one’s trade mark was misrepresented by another trade the former could bring an action for deceit against the latter at the Common Law Courts. Later, when the court of Chancery- the Equity Court- came into being, it “used the action for ‘passing off’ to protect a trader who had developed a reputation or goodwill through the use of a particular sign or symbol.35 However, to avail of these remedies was not an easy task.

“In such action the plaintiff had to prove that his mark or name was so well established and for such a length of time that the use of the mark or name was associated by the consuming public with the plaintiff and with a particular quality. He had further to prove that by using his mark, the defendant would be able to pass off his goods as those of the plaintiff. Necessarily evidence had to be let in, of a large those of the plaintiff. Necessarily evidence had to be let in, of a large number of witnesses. The process of proof was complicated, tedious and costly.36

To make the matters worse for the plaintiff he had to go through all these ‘rituals’ of proof every time to prove a case of deceit or passing off against a defendant. To circumvent these difficulties the traders raised their demand for more effective and easily available

36 protection for their trademarks. A Select Committee of the House of Commons appointed in 1862 with a view to make proposals ‘recommended favourably as regards merchandise marks’ but ‘they did not endorse the proposal urged upon them for the establishment of a Register of Trade Marks and the creation of trademark rights by registration.37 This demand was met with by the Trade Marks Registration Act 1875. The object of the Act is thus stated in the Kerly’s Law of Trade Mark.38

“The object of the Act was twofold; it was directed to diminish the difficulty and cost of, or to remove altogether the necessity for, the proof of title by use and reputation; to secure the publication of marks which had been appropriated as trademarks; to define the rights of their proprietors, for the information of traders; and further to limit the classes of marks which should be capable of being so appropriated”. Thus, under the Act of 1875, registration of a trade mark for a particular class of goods became prima facie evidence of exclusive proprietary right of the owner of the trade mark. The first trademark registered under the Act in1876 was a red triangle used as the trademark for an alcoholic beverage. The mark still continues to be used.

However, it was not until the enactment of the Trade Marks Act, 1905 that the term “trademark” could find a definition in the statute. Also, its amended version known as the Trade Marks Act, 1919 divided the Register in two parts viz. Part A and Part B. Kerly remarks:

“Registration in Part B conferred lower rights than registration in Part A, being only prima facie evidence that the proprietor has the exclusive right to the use of the trade mark even after seven years of registration. Subject to certain restrictions, a mark which had for not

37 less than two years been bona fide used in the United Kingdom as a Trade Mark, was entitled to registration in respect of the goods in connection with which has been so used.39

The owners of valuable trade marks were not satisfied even with these improvements which had aimed at giving statutory shape to the common law rights of the trademark owners. They, therefore, demanded a greater monopoly right than what was achievable by the Act of 1919. This resulted in an amendment of the Act in 1937 and, soon thereafter, enactment of the Trade Marks Act, 1938. The Act, however, left untouched the common law rights of action regarding passing off and actions of unregistered owners.”40

Following the Mathys Departmental Committee’s recommendations in 1974 to admit service marks onto the register of trademarks, the same was implemented a decade later.41 These changes notwithstanding the demands were continued to be raised to simplify the law in order to bring it in time with international law and practice. ’As a result, twenty years after Mathys, basic changes have been introduced into United Kingdom law by the Trade Marks Act, 1994.42

Meaning and Definition of Trade Mark A trademark is a means of identification. It has a visual symbol in the form of the word, a device, or a label applied to articles of commerce with a view to indicate to the purchasing power that they are the goods manufactured or dealt by other persons. Trademark is a mark used a proposed to be used in relation to goods.43 it is not to registered trademarks but it must be a mark in relation to goods.44 We can say that in other words trademarks are visual representation attached to goods for the purpose of indicating their trader origin.

38 The legal concept of Trade Mark can be understood by referring to the definition of the Trade Mark in Section – 2 (1) (zb) The Trade Mark Act 1999. Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include: shape of goods, their packaging and combination of colours.

In relation to chapter XII (other than section 107) a registered Trade Mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of Trade between the goods or services, as the case may be, and some persons having the right as proprietor to use the mark.

In relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of Trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person and includes a certification Trade Mark or collective mark.

This definition is applicable to registered as well as unregistered Trade Marks. In the new definition of Trade Mark there are inserted more substantive requirements for being a Trade Mark than the definition of the 1958 Act. Some of the substantive requirements of registration are now found in the definition of Trade Mark, which were earlier read from the scheme of the Statute and common law. Section 2 (1)(zb) clearly states that: 1. Trade Mark must be a mark which includes a device, brand heading, label, ticket, name, signature word, letter, members shape of goods, packaging or combination of colours or any combination thereof : S2 (I) (m)

39 2. Trade Mark must be capable of being represented graphically. 3. It must be capable of distinguishing the goods or services or one person from those of others. 4. It may include shapes of goods, their packaging and combination of colour. 5. It must be used or proposed to be used in selection for goods or services. 6. Thus use must be or the purpose of indicating a connection in the course of Trade between the goods or services. And some persons having the rights as proprietor to use the mark. 7. The right to the proprietorship of a Trade Mark may be acquired by registration under the Act or by use in relation to particular goods or services. 8. The right of proprietorship acquired by registration is a statutory right which acquires no actual user but only an intention to use the mark. On the other hand the right acquired by actual user in relation to particular goods or services, is a common law right which attached to the goodwill of the business concerned.

Trade Marks under Trips Agreement Section 2 of Part I of TRIPs deals specifically with trademarks. The section spreads over seven Articles viz. Articles 15 to 21. Article 15 deals with protecting able subject-matter and defines a trademark as ‘any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings.45

Article 16 talks of rights conferred on the owner of a registered trade mark and states that [the owner of a registered trade mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar

40 signs for goods or services which are identical or similar to those in respect of which the trade mark is registered where such use would result in a likelihood of confusion.46

Most importantly, Article 16 (2) provides that Article 6b is of the Paris Convention (last revised in 1967 at Stockholm) shall apply mutatis mutandis to services relates to the well known marks. Likewise Article 16 (3) of TRIPs provides that the said Article 6b is “shall apply mutatis mutandis to goods or services which are not similar to those in respect of which a trade mark is registered, provided that use of that trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided also that the interests of the owner of the registered trademark are likely to be damaged by such use.47

In determining whether a trademark is well known, states Article 16 (2) of TRIPs, members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. 48

Article 17 provides that members may provide limited exceptions to the rights conferred by a trade mark; Article 18 that initial registration and each renewal of registration of a trademark shall be for a term of not less than seven years, and that the registration of a trade mark shall be renewable indefinitely; and Article 19 that where requirement of use is necessary to maintain registration in a member country, the registration may be cancelled only after an uninterrupted period of at least three years of non-use.49

TRIPs also provides that the use of a trade mark in the course of trade shall not be unjustifiably encumbered by special requirements

41 such as use with another trademark or use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings (Article 20). Members, stating Article 21, may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.50

Identification of a Trade Mark

A. Word or Words (Known or invented)

This is the primary source of trademark. The majority of the world’s most famous trademarks consist of one or more word marks being of the modern age, word marks may consist of known words, perhaps, gleaned from a dictionary, a book of Greek mythology or an astronomical publication. They may be missing-spelling of such known words or they may be invented words having either no meaning or perhaps a hidden meaning which only belongs apparent when the mark is attacked to the goods e.g. Birdseye Nike Coke Pursche Channel Orange Chevroles Pepsi Hoeverprozae prozae Kodak Rayban Lucosie Reebok Lego Relex Mar/boro Sony

42 B. Pictorial Device (Logo)

Pictorial device can be powerful means of product recognition particularly in case where language or lack of literacy may be concerned.

Esso Tiger

International Olympic Committee Five Rings

Kellogg’s Cockerel

Lioyds TSB Black Horse

Mercedes Benz Bonnet Star

Michelin Tyreman

Renault Diamond

Shell Shell

C. Letters and Numerals

One or two letters and/or numerals generally lack distinctiveness without use. With use, however, such marks may become distinctive. With widespread use, they can become world famous.

BP Petroleum product

4711 Perfumery

501 Jeans

57 Food Product

MTV Music broadcasting

43 No5 Perfumery

Q8 Petroleum Product

XXXX Alcoholic Beverages

D. Colour

Another means of product recognition, which if employed wisely, can minimize the amount of market share taken by generic competitors.

Heinz Turquoise Packing

Duracell Black and Gold Batteries

Esso Blue Parafud

Signal Red striped Toothpaste

Owens-coring Pink Fibre glass insulation

E. Shapes

As with colours, distinctive shape can inhibit the inroads made by generic competition.

Cointrean Liquer bottle

Dimple whisky Bottle

Jif Plastic Lemon

Toblerone Chocolate bar

Toilet-Duck Disinfectant

44 F. Slogans

Although the slogan tends to be used as a means of advertising a product, they may become so well known that they also identify the product.

Example

Orange The future bright, the future’s orange

Coca-coin It’s a real thing

Kellogg’s conflates The sunshine breakfast

Pedigree chum top breeders recommend it

Audi Vorsprung Durch Technique

British air ways The worlds’ Fabourite Airlines

Pepsi Yes Peyas hai baree G. Sounds and Smell

More exotic than the trademark listed above. However there is no reason, in principle, why a distinctive advertising jingle or a distinctive smell, associated with a product such as a disinfectant, should not qualify as a trademark.

Example

Direct line Jingle Direct licence Insurance

Air on a to string Hamlet Cigars

Flower Duct from Lakme British Airways

The clearance of a trademark for use and registration when choosing a new, distinctive trademark to be used in new product, the company and the individual making the choice should want to know the answer the fundamental question.

45 Am I free to use the trademark chosen for the product in view of earlier trademark that are either already in use or intended to use? Will I be able to register my trademark chosen on the elsewhere thereby increasing my level of protection against unfair competition? These questions are best answered by a professional trademark advisor, who is trained to compare the chosen trademark with potentially conflicting trademarks owned by another company/individual, to assess the commercial risk of bringing of the new mark into use and estimate the likelihood of successfully registering the mark.

Essential of a Trade Mark There are certain essentials which every Trade Mark posses to be a Trade Mark. These are – (1) Identity of Proprietor It is not necessary for the Trade Mark to identify to the proprietor or the permitted user or in other words the person who is applying for placing the mark on the goods. However, many a time labelling or trade description requirements make it necessary to state the name and address of the manufacturer, but it is not a condition emerging from the fact of being a Trade Mark.

(2) Use The mark should be used or proposed to be used in relation to goods and services. To be a Trade Mark, a prior use in relation to goods or services is not necessary. But the proposal to use has to be viewed in the context of making an application for registration of the Trade Mark.

46 A registration application gives a priority to the proposed mark against the subsequent use or proposal to use by another applicant after the date of application for registration by the first applicant.

(3) Trade Mark for Goods or Services The fundamental principle of the Trade Mark law throughout the world is that there is no Trade mark is vacumed; it is always in relation of goods or services, i.e. for some specific description of goods or services. Normally the rights have been available only in relation to the goods or services similar to the goods or services for which Trade Mark in either registered or in relation to which it is used. There rights have been inhumed from’ same’ goods or services to similar goods or services in India. The new species of well-known Trade Mark enjoy protection even for different goods or services because of international acceptance in Article-16 of TRIPs.

(4) Use in Course of Trade The mark must be used in the course of Trade i.e. when the goods or services are ordinarily offered for sale and purchase in the market. The presence of a market is sine qua non for operation of any Trade Mark rights or real validity of any advantages of the Trade Mark.51 In hospital world Trade Mark 1967 RPC 95, free distribution of the journal was not considered as use in the market as a Trade Mark. It also follows that to put a Trade Mark or your own collection or on goods being gifted by a person is not equivalent to putting a Trade Mark on goods.

(5) Connection Between Goods and User The mark must indicate a connection between goods or services on which it is used and the person who has the right to use that mark on their good and services. By applying the mark on the goods or services, the goods or services become distinctive of the proprietor on

47 the permitted user. In other word, the planning of the marks should make the goods or services distinctive so that they can be distinguished from other goods or services of the same description.

(6) Competitive Goods or Services The definition also brings to light two very important factors. It presupposes that there are competitive goods or services for the same description with which the above mark or the person does not have any connection. The compilation with other goods or services whether branded by any Trade Mark or Unbranded, has to be emphasized. The absence of competitive goods or services may pox serious problems to the proprietors of the Trade Mark as the Trade Mark may become a generic name or becomes identified as the product name, which further becomes a ground for removal of the Trade Mark from the register of the Trade Mark.52

(7) Eight Key Characteristics in Section 9 (1) (b) There is no bar on the Trade Mark that it should not include (i) Kind (ii) quality (iii) quantity (iv) Intended purpose (v) value (vi) geographic origin or (vii) time of production or rendering of service or (viii) other characteristics of goods or services. Seeing the registration requirements, if the Trade Mark is constituted exhaustive of these eight disabilities, it would not be registered. Any of the above eight characteristics may, in association with some other matter, comprise a valid Trade Mark.

(8) Registered Proprietor The term proprietor is not defined in Trade Marks, Act, 1999 and is not governed by the Act, as it defines only ‘registered proprietor’ in Section 2 (1) (v). The registered proprietor is the person for the time being entered in the register as the proprietor of a Trade Mark.

48 Function of Trade Mark A Trade mark performs three functions. (i) It identifies the product and its origin, (ii) It guarantees its unchanged quality; and (iii) It helps to advertise the product.

Primarily, Trade Mark gives an indication to the purchaser or possible purchaser as to the identity of the manufacturer or quality of goods, or source from which goods come, or the trade channels through which they pass on their way to the market. It tells the person who is about to buy that what is presented to him is either what he has all along known or the source with which he is acquainted or that it is what he has healed or before as coming from that similar source. It gives the purchaser a satisfactory assurance of the mark and quality of the article he is buying, the particular quality being not discernible by the eyes. It is with the implicit faith of the mark being genuine and promising a quality equal to that he previously found with a similar mark to that the purchaser makes his purchase. A Trade Mark may be used to indicate not only that the goods are of a particular maker put are also goods of that makers of a particular kind or quality. A trade may indicate his best quality by one Trade Mark, his second quality by another Trade Mark and so on.

Trade Mark as a Property Trade Marks are property, just like building and machinery. Everyone realizes that, through neglect building and machinery can become dilapidated or unusable. However, it is often forgotten that, through lack of use or misuse, a trademark can also lose value. In extreme cases of misuse, the trademark can become a more generic description of a product, with no commercial value at all. This could have a more divesting effect on a business than any natural disaster.

Set our below are some important do’s and don’ts of trademark usage provided they are followed in written documents and, where appropriate, in speech, the dooms day scenario set out above should be avoided.

(1) Ensure that the Trademark Stands Out from its Surroundings This can be achieved by employing at least one of the following simple techniques. 1. Write the first letter of each word in a trademark as a capital letter. 2. Write the whole trademark in a capital letter. 3. Use an unusual type fall, such as Italics, for the trademark. 4. Use bold colour lettering for trademark.

(2) Use of Trademark in Association with a Generic Description of the Product. This should ensure that the consuming publics are aware of the trademark nature of the trademark. In other words, that the trademark is not generic description of the goods. This is a particularly important rule for novel patented products that are sold for a long period without competition. It is important in such a case, to think of an appropriate generic description of the new product as it is think of a trademark for the product. If this is not done, there is a real danger, once the patent expires, that the trademark will be seen by the trade as the generic names if your doubts this consider the fate of cell phone, escalator and gramophone, all once well-known trademarks; but now generic names. Examples Solar System Chocolate bar Zeus Washing powder

50 Corker Wine bottle opener with the revolutionary, patented action.

Ownership of Trademark I place “SM” or “TM” or ® superscript after the trademark. “SM” may be used to identify both registered and unregistered service marks “TM” may be used to identify both registered and unregistered trademark, for goods. ® may only be used to identify registered trademarks (but may be used in relation to goods, and services). In a number of countries, it is a criminal offense, to identify an unregistered trademark with the symbol ® it follows that many companies which global marketing interests, use of “SM” and “TM” to identify their trademarks, both registered and unregistered. Thus from the above discussion it is clear that there is no right to the exclusive Ownership of a trademark apart from its use. Property in a trademark can be obtained by registration of the mark.

Summation Trademark has existed as long as the trade itself. It is defined under section 2(1) (zb) of the Trade Mark Act 1999. It means that a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those if others and may include shape of goods. Their packaging and combination of colours, a trademark is a commercial asset intended to be used commercially by businessmen. In business and economic matters move often the term “brands” is used for the expression trademark. However as and when legal issues are discussed in relation to brands the marketing men to use the term trademark.

A trademark as defined under the trademarks Act 1999, It should be capable of distinguishing the goods or service of one from another

51 and should be able to establish a connection or indication in the course of trade between the goods or services and the person claiming to have some right as proprietor for using the mark. Protection of trademark rights will definitely promote the development of new products and services with the immense growth in the scale of business. For the last several years, trademarks were the poor relation of the intellectual property family, undervalued and misused by much of the business community.

Now the time and attitudes have been changed. Trademark law in India is passing through a remarkable and progressive phase. After the entry into force of the TRIPS agreement, India has given effect to its different provisions through amending the existing trademark law or legislating new ones. The new Act expands the scope of the definition of “trademark” to include graphic representation, shape packaging and combination of colours and covers both goods and services.

52 Notes & References

1. T.R. Srinivasan Ivengrar, The Trade Marks Act, 4th edition, 2011, revised by Dr. H.K. Saharay, Universal Publication, page- 1 2. J.P. Mishra, A Introduction to Intellectual Property Rights, 2005, Central Law Publication, Page-176 3. Supra note 1, page 2-3 4. Ibid page-3. 5. Explanation to Section 68 TM Act 1999. 6. Section 62 of Trade Marks Act, 1999. 7. Section 2 (1) (j) of Trade Marks Act, 1999. 8. Rule 26 of Trade and Merchandise Marks Act, 1958. 9. Section – 18 (2) of Trade Marks Act, 1999. 10. Section-28. 11. Section 11 (2) 12. WIPO (International Bureau of). The Paris Convention for Protection of industrial Property, a paper presented to the National Workshop on Intellectual Property Teaching, Delhi October, 2125, 1991. Page 5 (WIPO/DEL/9/4bis). 13. Ibid, Para 25. 14. Section-155 of Trade Marks Act, 1999. 15. WIPO, WIPO/Del/91/4bis Para 24. 16. WIPO, Background Reading Material on Intellectual Property, Geneva, 1998 P.52. 17. Section 131 and 132 of Trade and Merchandise Marks Act, 1958. 18. WIPO, International Bureau of Op. cit, Para 79. 19. Ibid, Para 80. 20. Section 46 of the Trade and Merchandise Marks Act, 1958. 21. The Jargon of ‘some goods’ has been substituted with ‘similar goods or services’ in India in Section 11 and Section 29 or all other relevant provisions.

53 22. WIPO, Background Material, 1998, Para 81. 23. Section 33 is a totally new provisions. Section 12 (3), Section 28 (3) and in section 33 and 34 of Trade and Merchandies Marks, 1958. 24. WIPO, International Bureau of op. cit, Para 83. 25. Ibid, Para 85. 26. At the mark is not to be removed in first six months from the Register. 27. Frederick W. Mostert, Famous and well known Marks – An International Analysis. 28. Protection of well known Marks: Result of the study by the International Bureau and Prospects for improvement of the existing situation. Committee of experts on well known Marks 13-16 Nov., 1995, Earlier Work by AIPPI in response to Q 100 at Barcelona 1990. 29. Section 11 (a), 27 (2) and 32 of Trade and Merchandise Marks Act, 1958. 30. 1988 PTC 1 (Bom) Apple Computer v. Apple Leasing 1995 IPLR, 63. How Parbros V. Tiger Batm. Co. 20 IPLR 265. Cartier v. Ramesh Sawhney, 19 IPLR 214. N R Dongre v. Whirlpool 20 IPLR 211. 31. WIPO, IB, WIPO/Del/91/4bis, Para 97. 32. Section 11 (3) of Trade Marks Act, 1999. 33. Meaning of Service marks as elaborated by International Bureau. 34. Ashwani Kumar, Paper on Expansion of Passing off, circulated WIPO-DU Training Programme 22-26 April, 1996. 35. Bently and Sherman : Intellectual Property Law, Oxford University Press, New Delhi 2001, First Indian Reprint 2003, pp. 657.

54 36. T.R. Srinivasan Iyengar, “The Trade and Merchandise Marks

Act and Rules, 3rd Edition, 1989 revised by Yudhishthir, Law Book Co. Pvt. Ltd. Publication, pp. 1-2 37. Ibid, p.2 38. Eighth Edition, p. 5; quoted in Iyengar’s book on trademarks, op. cit., p.2 39. Quoted from his book ‘Law of Trade Marks’ I Iyengar’s book on Trade Mark : op. cit., p.3 40. See Section 2 of Trade Marks Act, 1938 of U.K. 41. W.R. Cornish, Intellectual Property, First Indian Reprint 2001, Universal Law Publication, p. 521. 42. Ibid. 43. Section 2 (v) (31) Trade Mark Act 1958. 44. KT Pavanny v/s K.T. Mathew, AIR 1982. Ker 309: 1982 ker LT 399: ILR (1982) 2 ker 250. 45 Daniel Gervais, The TRIPs Agreement-Drafting History and Analysis, Second Edition, 2003, Sweet and Maxwell, London Publication, p. 384. 46. Ibid., p. 385 47. Daniel Gervais op. cit., p. 385 48. Ibid. 49. Ibid. pp. 385-86 50. Ibid p. 386 51. Artistic v. Rysta (1945) 62 RPC 65 (HL) 52. Section-36 of Trade Marks Act, 1999.

CHAPTER II DOMAIN NAMES IN INDIA AND ABROAD

DOMAIN NAMES IN INDIA AND ABROAD

An Overview

The pace of technological innovation on the Internet is truly awesome. Moreover, it is developing exponentially, creating further innovations ever more quickly. It is an unstoppable force, the engine of a new emergent networked economy, as important as the invention of the steam engine to industrialization. The web is truly revolutionary: a disruptive technology. It has not only created a paradigm shift in thinking within the IT industry, it has unleashed economic changes few could have predicted. It would be no exaggeration to say that the Web is the future of computing.1

The history of the Internet can be traced to a US defence related research initiative in the mid-1960s leading to the development of the ARPA net (or Advanced Research Projects Agency network) following the successful launch of the first Soviet Sputnik in 1957.2

The internet was designed in part to provide a communications network that would work even if some of the sites were destroyed by nuclear attack. If the most direct route was not available, routers would direct traffic around the network via alternate routes.

ARPAnet began its existence as a network of a mere four computers. It was then split into a military network (MilNet) and a public network. Since that time, a large number of other additional networks have been attached to the original ARPAnet: BitNet, JANET, and so on. As it developed, the Internet slowly moved away from its defence-oriented childhood and became the plaything of academic researchers. However, it only took its first real steps towards adulthood

56 in the early 1990s when it commercial potential was recognized following the development of the World Wide Web.3

Roberts moved over to DARPA in 1966 and developed his plan for ARPANET. ARPANET was brought online in 1969 under a contract let by the renamed Advanced Research Projects Agency (ARPA) which initially connected four major computers at universities in the south western US (UCLA. Stanford Research Institute, UCSB, and the University of Utah). The contract was carried out by BBN of Cambridge, MA under Bob Kahn and went online in December 1969. By June 1970; MIT, Harvard, BBN, and Systems Development Corp (SDC) in Santa Monica, Cal. were added. By January 1971 Stanford, MIT's Lincoln Labs, Carnegie-Mellon, and Case-Western Reserve U were added. In months to come, NASA/Ames, Mitre, Burroughs, RAND, and the U of Illinois plugged in.

IP Address Every computer that provides a service on the Internet will have both a domain name and an IP address. IP addresses currently consist of four sets of numbers each between 1 and 255. An example of an IP address might be 162.134.7.36. IP addresses can be thought of as telephone numbers for computers on the Internet and they are allocated in the same way. When an individual decides to go on line he or she is allocated an IP address from a pool of addresses for the duration of that on-line session. IP addresses are split into what are known as classes A, B and C. A class A address gives an organisation access to over 16 million IP addresses. Class-A addresses are rarely allocated directly to organisations other than network service providers. Class B addresses give the organisation access to 65,500 IP addresses, while even very large organisation may only require 20,000. By applying for a class-B address block, the organisation will receive 65,500 addresses and never use 45, 5000 of them! The next generation of IP numbering

57 (IPv6), instead of being a 32-bit number will be a 128-bit number. This will allow for millions of new IP addresses but will also be far more efficient in its allocation of those numbers. A new version of the IP protocol will also offer additional functionality such as authentication, assurance of data integrity and confidentiality. The good news is that IPv6 is a superset of IPv4.In other words, the new version of IP will understand the old version. Thus, organisations can move to IPv6 when they are ready evolution not revolution.4

Each website is nothing but a set of information, programs and web pages stored on the some server across the Internet. This server would have an Internet Protocol (IP) address. For example, keying 64.233.161.99 takes us to the popular search engine, Google. However, it is difficult to remember the complicated numbers specially if we are to access a number of websites. A system was thus evolved linking each such number to a name. So, instead of typing 64.233.161.99, we can type http://www.google.co.in/ to get the same result. The way we have addresses for our homes and offices, the same way domain names are nothing but simple forms of addresses on the internet. These addresses enable users to locate websites on the net in an easy manner. Domain names correspond to various IP (internet Protocol) numbers of every computer having internet accessibility and are identified through a combination of numbers and for ease of identification, are allotted names. In other words a domain name is a "uniform source locator".

Internet-Naming Conventions: the Domain Name System (DNS) IP addresses are hard to remember and easy to type incorrectly. Thus the Domain Name System (DNS) was established because users prefer computer names to numbers. It is far easier to remember someone’s name than their telephone number. The system that converts

58 domain names into IP addresses is known as the domain name system. It is a database (i.e. an electronic list of domain names together with corresponding IP addresses) held on dedicated computers world-wide. It is constantly updated. Thus, if a user establishes a commercial web site selling motorcycles parts, called www.motorcycles.com, and decides to physically relocate the web site from one machine to another, all they have to do is ask their Internet Service Provider to update the relevant record on the DNS database on their behalf so that all traffic looking for www.motorcycles.com is redirected to the new location. There is no need to actually change the name of the site. This system offers commercial web site developers a great deal of flexibility: the files that make up any web site can be located anywhere in the world and can be moved according to need.5

As the internet has become ubiquitous, faster, and increasingly accessible to non-technical communities, social networking and collaborative services have grown rapidly, enabling people to communicate and share interests in many more ways. Sites like Facebook, Twitter, Linked – In, You Tube, Flicker and many more let people of all ages rapidly share their interests of the moment with others everywhere.

Given the limited supply of desirable domain names, disputes over the domain name were inevitable. The breakneck speed of the internet growth, has given rise to the development of a Internet Corporation for Assigned Names & Numbers (ICANN), a non-profit, private sector corporation based in Marina del Rey, California, USA assumed management of the domain name system from NSI. The main functions of ICANN are: (a) Sets rules for giving the numbered IP addresses/protocol parameters; (b) Adding new suffixes to the directory and

59 (c) Sets rules for arbitrating disputes over domain ownership. Realizing the severity of domain name dispute, ICANN on October 24, 1999 has approved Uniform Dispute Resolution Policy (there after called ‘UDRP’ in short) for quick and inexpensive settlement of disputes alternative to court proceedings, for the purpose of resolving domain name disputes in the light of UDRP, ICANN has approved four domain name dispute resolution service providers. These dispute resolution service providers were intended to supplement courts proceedings, not to replace them entirely. The policy was designed to achieve commonly accepted international standards to disputes all around the world. The designer of policy limited the scope of its authority in order to keep the policy in check while at the same time strengthening its foundation. So far as India is concerned .IN Domain Name Dispute Resolution Policy has been implemented and the dispute resolution mechanism are based on the internationally accepted UDRP as prescribed by ICANN and sets out the terms and conditions to resolve a dispute between the registrant and the complainant, arising out of the registration and use of the .In Internet Domain Name.6

The significance of the internet has augmented with the online business transactions in trade throughout the world, therefore, domain names are used as an alternative to the trademarks for the business, which has also predictably led to the emergence of the cyber squatting.

Dispute resolution providers are deciding cases of cyber squatting on the basis of Para 4 (a) and 4 (b) of the UDRP. The courts all around the world especially of USA and India have been forced to stretch established legal doctrine such as Trade Mark Dilution, Trade Mark infringement, unfair competition and passing off to address cases of cyber squatting. But the remedies available under the established legal doctrine have not significantly impeded the practice of cyber squatting.7

60 With increase in instances of cyber squatting, it become necessary to provide some legal remedy against cyber squatting. In USA, cyber squatting has turned into a nuisance. Therefore, USA has enacted a law known as Anti Cyber Squatting Consumer Protection Act 1999. This law expands the prior legal doctrines and provided new tools for deterring cyber squatting. But the Act does not solve all problems resulting from new commercial importance of Domain Name. Unlike US in India there is no law on this practice so the Indian courts decide cases on the basis of Trade Mark Act 1999. Threats from cyber squatters on the unfair use of reputed Trade Marks as Domain Names results into public confusion and the impairment of the economy.

(1) Concept of Domain Name System Although the internet has been around for over a decade, the concept of ‘Domain Name’ is still an enigma to many. To simplify it can be said that to access a website, one requires a web address. This web address comprises of domain names. As the number of Internet users increased, the importance of domain name also increased. People started identifying the domain name with its owner.

The use of domain names on the Internet relies on a system of servers called name servers-that translate the user-friendly domain names into the corresponding IP addresses. This system of addresses and names linked by name servers establishes the signposts in cyberspace and serves as the basic infrastructure supporting navigation across the Internet. It is called as the Domain Name System (DNS).8

For the first decade or so the Advanced Research Projects Agency Network (APRANET),9 the host10 table file (HOSTS. TXT) served as its directory. HOSTS.TXT provided the network address for each computer (host) on the APRANET, which could be looked up by using the host’s one word English language name, acronym or abbreviation.

61 The Network Information Centre (NIC) at the Stanford Research Institute managed the registration of hosts and the distribution of the information needed to keep the HOSTS.TXT file current. The list of host names and their mapping to and from network addresses was maintained in the frequently updated HOSTS.TXT file, which was copied to and stored in each computer connected to the APRANET. Thus, HOSTS.TXT 11 was introduced to: 1. Simplify the identification of computers on the ARPANET- Simple and familiar names are much easier for humans to remember than lengthy (I2-digit) numeric string; and 2. Provide stability when addresses changed- Since addresses in the ARPANET were a function of networks topology and routing, they often had to be changed when topology or routing12 changes. Names in the hosts table could remain unchanged even as addresses changes.

Though HOSTS.TXT was introduced to simplify and to provide stability, but because a copy of the host table was stored in every computer on the ARPANET, each time a new computer was added to the network or another update was made, the entire table had to be sent to every computer on the network for the change to be recognized.13 As increasing number of computers joined the ARPANET, the updating task became more and more burdensome and subject to error and failure and as a consequences several major problems developed from the use of the HOSTS.TXT file such as:

1. Failure to scale 2. Inadequate timeliness. 3. Susceptibility to failure. 4. Name Conflicts.

62 The emergence of above problems caused the Internet Engineering Task Force (IETF) to develop a new, distributed, method for managing the mapping of names and addresses. The IETF in 1983 introduced the concept of the Domain Name System (DNS) to make website more identifiable and easier to remember. It allowed for friendly naming of Internet addresses to easily locate computers, resource and websites online. Computers still use IP addresses to access information, but humans can use the domain name without understanding the computer language.14

Paul Mockapertris designed a system in 1984 to manage the domain names on the Internet, which is called Domain Name System or DNS.

Thus the Domain Name System (DNS) serves the central function of facilitating user’s ability to navigate the Internet. It does with the aid of two components: the domain name and its corresponding Internet Protocol (IP) number. A domain name is the human -friendly address of a computer that is usually in a form that is easy to remember or to identify, such as www.cstb.nas.edu. An IP number is the unique underlying numeric address, such as 128.128.128.128. Distributed databases contain the list of domain names and their corresponding address and perform the function of mapping the domain names to their IP numeric addresses for the purpose of directing requests to connect computers on the Internet. The DNS is structured in a hierarchical manner which allows for the decentralized administration of name to address mapping.15

From the above discussion the basic concept of DNS can only be understood. Actual working of domain name system can be defined through the working of domain name servers and domain name aliases.

63 (2) Domain Name Servers The Domain Name System (DNS) servers distribute the job of mapping domain names to IP addresses among servers allocated to each domain. Each second-level domain must have at least one domain name server responsible for maintenance of information about that domain and all subsidiary domains, and responds to queries about those domains from other computers on the Internet. For example, management of domain name information and queries for the Livinglnternet.com domain is handled by a specific DNS server that takes care of the load required.16 This distributed architecture was designed to enable the Internet to grow, where as the number of domains grew, the number of DNS servers can grow to keep pace with the load. At present there are 13 root name servers on the Internet which are distributed around the world.17

Today, everyone who registers a second-level domain name must at the same time designate two DNS servers to manage queries and return the current IP address for addresses in that domain. The primary domain name server is always consulted first, and the secondary domain name server is queried if the primary doesn’t answer, providing a backup and important support to overall Internet reliability.18

The application that underlies almost all DNS server software on the Internet is an open source program called BIND, currently maintained by the Internet Systems Consortium. When computer was added to the Internet, one of the initial setup tasks was to specify a default domain name server, usually maintained by local Internet Service Provider, and almost certainly a variant of the BIND server software. When computer tries to access a domain like “www.living internet. com”, the domain name system works like this:

64 • Computer asks default DNS server if it knows the IP address for www.livinginternet.com. If the DNS server has been asked that question recently, then it will have the answer stored in its local cache, and can answer immediately.

• Otherwise, DNS server queries the central zone files for the address of the primary domain name server for Iivinginternet.com, and is answered with something like “nsl .livinginternet.com”.

• DNS server will ask the Iivinginternet.com DNS server for the IP address ofwww.Iivinginternet.com, which will then look up the answer and send it back.

• DNS server will store the IP address returned in its local cache, and make the address available to the computer.

• Computer then contacts www.livinginternet.com with the standard Internet routing protocols by using the returned IP address.19

While the IP address assigned to a computer changes with the network reconfigurations or physical moves frequently but the major advantage of the network of domain name system servers is that domain names stay same. Thus the domain name servers can maintain transparency to take care of the mapping.

Security, There is a range of good security practices built in to the design of the DNS, although versions of the BIND server software itself have periodically been found to be vulnerable, often through buffer overrun attacks. If anyone runs DNS server software, one should always make sure it is up-to-date with the latest version and patches. DNS server vulnerabilities typically affect the systems running the

65 servers, which are generally Internet Service Providers, and so are not direct threats to the home user.20 A major extension to security of the DNS was introduced in 1997 with the DNS Security (DNSSEC) standard described in RFC 2065, updated in 1999 with RFC 2535,21 which provided DNS servers with secure data integrity and system authentication through the use of public key cryptography digital signatures.

Resources. The following references provide additional information about DNS servers: 22

NSLOOKUP — provides reports on domain name servers.

BIND — the standard DNS server application, maintained by the Internet Software Consortium.

(3) Domain Name Aliases A domain alias is domain name or an alternate name of an Internet domain. It is just like the primary domain name. IP addresses and 10 decimal digits are sometimes used in place of domain names, usually in a web URL. This is a bad, error-prone idea for anything but the most transitory information, since the whole point of using a domain name is that it won’t change if the IP address does, so these types of numeric URL’s should not be used for long term. The two types of domain name aliases are described below: 23

IP addresses-Sometimes a web URL with the IP address specified instead of the domain name, as in the following: http://209.118.52.173/home/list/index.html

One can convert a domain name to an IP address by pinging it, as in ping “www.yahoo.com”, and reading the response provided. In this

66 case, one can convert an alias IP address to a domain name by doing an NSLOOKUP, although the mapping is not one-to-one - more than one domain may point at the same IP address.

10 digits-Sometimes one can see just a 10 digit number for a domain name, as in the following: http://3124567890/home/list/index.html The number 3124567890 is just the decimal representation of an IP address, usually represented by 32 binary bits divided into 4 sections and written for human consumption like 186.61.31.82.

The fastest way to find out the regular IP address of a domain specified with a decimal number is to ping that decimal number, which will then display the IP address in the ping response, whether or not it reaches the site. Mathematically, also a decimal IP can be converted to a regular IP with the following steps:

Hexadecimal-Convert the number into Hexadecimal by hand, with a calculator, or with the dec2hex functions in Excel. Truncate- Take the right-most eight hex digits. Decimal-Convert the digits in sets of two into the four decimal IP numbers, by converting each set of two hex digits into decimal by hand, with a calculator, or with the hex2dec function in Excel.24 Thus the domain name alias is the primary domain name or it is an alternate name of an internet domain.

Dimensions and Definition of Domain Name Domain names in simple term are addresses on the internet. They are usually closely associated with a particular service or product. E- mail is sent and web pages are found through the use of domain names. Therefore, without the domain name, a computer have no idea where to

67 look for a web page and e-mail routers would not be able to send e- mail. Domain names are the host names to identify the internet protocol (IP) resources such as websites. A domain name defines a realm of administrative autonomy, authority or control in the Internet. Domain Name System (DNS) has given rules and procedures by which domain names are assigned.

According to the Chambers 21 Century Dictionary, the word domain name means a territory owned or ruled by one person or Government. Webster’s defines it in different context as under:

• A field of action, thought, influence;

• Territory governed by a single rule or Government;

• Regional characterized by specific features;

• Law;

• Land to which their superior title and absolute ownership.

Thus, in common parlance any title or name or mark or brand or identity in any field of activity or a trade name over which a particular individual has the exclusive, prior and lone claim is the domain name or trade name for any kind of activity.25

So far as meaning of domain name is concerned, a domain name is a name-cum-address on the Internet, of any person or entity. A computer or device that is attached to the Internet has an address popularly known as Domain name.26 These names do not have any correspondence with the original numeric address. Individual Internet host computers use domain names as host identifiers, or host names. Host names are the leaf labels in the domain name system usually

68 without further subordinate domain name space. Host names appear as a component in Uniform Resource Locators (URL’s) for Internet resources such as websites (e.g., en.wikipedia.org).

The purpose of domain name is to provide easily recognizable and memorable names to numerically addressed Internet resources.

Card Service International Inc. vs. Mc Gee27 The honourable court held in this case that the domain name serve same function as the trademark. It is not a mere address or like finding number on the Internet, therefore, it is entitled to equal protection as trademark. It was further held that a domain name is more than a mere Internet address for it also identifies the Internet site to those who reach it, much like a person’s name identifies a particular person. To understand more about the concept of domain name it is necessary to know about domain name space and domain name syntax. These words are also associated with domain name. These are as follows.

(1) Domain Name Space The domain name space consists of a tree of domain names. Each node in the tree holds information associated with the domain name. The tree sub-divides into zones beginning at the root zone.

69 70 (2) Domain Name Syntax

A domain name consists of one or more parts, technically called labels that are conventionally concatenated, and delimited by dots, such as example.com. The right-most label conveys the top-level domain; for example, the domain name www.example.com belongs to the top-level domain.com.29

The hierarchy of domains descends from the right to the left label in the name; each label to the left specifies a subdivision, or sub domain of the domain to the right. For example: the label example specifies a node example.com as a sub domain of the .com domain, and www is a label to create www.example.com, a sub domain ofexample.com. This tree of labels may consist of 127 levels. Each label may contain 1 up to and including 63 octets. The empty label is reserved for the root node. The full domain name may not exceed a total length of 253 characters. In practice, some domain registries may have shorter limits.

A hostname is a domain name that has at least one associated IP address. For example, the domain names www.example.com and example.com are also hostnames, whereas the .com domain is not. However, other top-level domains, particularly country code top-level domains, may indeed have an IP address, and if so, they are also hostnames.

Hostnames impose restrictions on which characters may be used in the domain name. A valid hostname is also a valid domain name, but a valid domain name is not necessarily valid as a hostname.30

Thus, it can be said that domain name system is based on hierarchy.

71 Hierarchy of Domain Name System: Internet Domain Names

From the above discussion it can be said that the DNS naming syntax corresponds to the levels in the hierarchical tree. Each node in the tree has a name that identifies it’s relative to the node above it. The highest level, the “root node,” has the null name. In text it is written as a single dot (“.”) or simply implied (and thus not shown at all). Each node below the root is the root of another sub tree, a domain that can in turn be further divided into additional sub trees, called sub domains. Each sub domain is written in text to include its name and the sub domains above it in the applicable hierarchy.31

The DNS name of a computer is the name of its node or end point in the Domain Name System. Thus, frodo.csail.mit.edu would be the computer (or device) named “frodo” that is located within the csail.mit.edu sub domain of the mit.edu second-level domain within the. edu TLD. On the other hand, myownpersonalcomputer.com (without any further sub domains) could point directly to a particular computer.32

Applications, such as Web browsers and e-mail software, use domain names as part of the Uniform Resource Identifiers (URIs) or other references that incorporate information about the protocols required for communication with the desired information source.

Examples of URIs are http://www.national-academies.org and mail to: [email protected]. In the first example, “http” refers to the Hypertext Transfer Protocol (HTTP) used for communication with sites on the World Wide Web. In the second example, a particular user at the host identified by “example.com” is identified as the addressee for electronic mail.33

72 In terms of information technology, the Domain Name System is implemented through a series of name servers that are located at each of the nodes in the hierarchy. Each name server contains a table that indicates the locations of the name servers immediately below it in the hierarchy and the portion of the hierarchy for which it contains the final (authoritative) network addresses. Thus, the root name servers (at the top of the hierarchy) contain the locations of each of the name servers for the top-level domains. At any given node, such as .com or ibm.com, there are expected to be multiple (physical) name servers at different Internet Protocol (IP) addresses, each with identical information; the purpose of this redundancy is to share the workload to ensure adequate system performance.34

When a user wants to reach www.national-academies.org, his or her computer usually sends a message to a nearby name server (usually local or operated by the user’s Internet service provider), where software (called resolver), in conjunction with other name servers and resolvers, performs a series of queries to find the name server that is authoritative for www.national-academies.org. That server is then queried for the corresponding IP address (es) and returns the resulting address (es) to the user’s computer.

Thus the domain names were intended to provide a more suitable and efficient way of referring to Internet Protocol (IP) addresses and other information, using a simple taxonomy. Classification of Internet Domain Names

Domain Names are generally divided into three categories i.e.

1. Top level domain (TLD) name

2. Second level domain (SLD) name and

73 3. Third level domain.

Internet domain names are organized by their levels, with the higher levels on the right. For example, for the domain “mail.twenty.net” the top-level domain is “net”, the second-level domain is “twenty.net”, and the third-level domain is “www.twenty.net”. In December 2002, after a long debate, ICANN approved the following additional top-level Internet domains: .aero, .biz, .coop, .info, .museum, .name, and .pro. In October, 2004, ICANN approved the top-level domains .travel and .post. Periodically new top level domains continue to be approved.35

(1) Top-Level Domain (TLD)

The top-level domains (TLDs) are the highest level of domain names of the Internet. They form the DNS root zone of the hierarchical Domain Name System. Every domain name ends in a top-level or first- level domain label.

When the Domain Name System was created in the 1980s, the domain name space was divided into two main groups of domains. The country code top-level domains (ccTLD) were primarily based on the two-character territory codes of ISO-3166 country abbreviations. In addition, a group of seven generic top-level domains (gTLD) was implemented which represented a set of categories of names and multi- organizations. These were the domains GOV, EDU, COM, MIL, ORG, NET, and INT.36

During the growth of the Internet, it became desirable to create additional generic top-level domains. As of October 2009, there are 21 generic top-level domains and 250 two-letter country-code top-level domains.37 In addition, the ARPA domain serves technical purposes in

74 the infrastructure of the Domain Name System. During the 32nd International Public ICANN Meeting in Paris in 2008, ICANN started a new process of TLD naming policy to take a “significant step forward on the introduction of new generic top-level domains.” This program envisions the availability of many new or already proposed domains; as well a new application and implementation process38. Observers believed that the new rules could result in hundreds of new top-level domains to be registered. An annotated list of top-level domains in the root zone database is published at the IANA website at http://www.iana.org/domains/root/db/.

Thus top level domain name is divided into two categories, that is generic TLD and the country code TLD.

(a) GENERIC TLDs (gTLD’s)

They are used by a particulars class of organization. It describes the type of the organization that they represent. The generic ones currently in use include.39

Usage :

.bitnet Used for computers on the BITNET network.

.com Originally stood for “commercial” to indicate a site used for commercial purposes, but it has since become the most well-known top-level Internet domain, and is now used for any kind of site.

.int Used by “International” sites, usually NATO sites,

.edu Used for educational institutions like universities.

.gov Used for US Government sites,

75 .mil Used for US Military sites.

.net Originally intended for sites related to the Internet itself, but now used for a wide variety of sites.

.org Originally intended for non-commercial “organizations”, but now used for a wide variety of sites. Managed by the Internet Society.

Earlier there were only seven gTLDs(.com, .edu, .gov, .int, .mil, .net and .org). In 2001 seven more gTLDs have been introduced; these are .aero, .biz, .coop, .info, .museum, .name and .pro. They are as follows40

.aero: It is only intended for use of the members of the aviation community. Registration of a .aero domain name is done in 2 steps:

(a) Identification: A registrant can submit an application for a .aero domain name, the registrant must be recognized as a member of the aviation community and obtain an Aviation Membership ID from the Registry;

(b) Registration: once the registrant has obtained an Aviation Membership ID, the Registrant can obtain a .aero domain name from an accredited Registrar.

.biz: It is only intended for domain names that are or will be used primarily for a ‘bona fide business or commercial purpose’.

.coop: It is a sponsored gTLD for cooperatives. One has to abide by the .coop Charter.

info: It is an open gTLD without restrictions (anyone can register any domain name).

76 museum: It is a sponsored TLD for museums. One has to abide by the .museum charter.

.name: It is an open gTLD for registration of personal names or names of ficticious characters on the second level or on the second and third level (e.g. or or or . However, it permits only for personal names (described as the legal name or the name by which the person is commonly known) of an individual or of a fictional character provided applicant has a trademark in that name. Further, additional distinguishing^elements (e.g. numbers) permitted.

.pro: It is open for unsponsored TLD for qualified professionals meeting the registration restrictions. The second level will indicate individual professions (, , ). In an initial phase, domain name can only be registered by lawyers (.law.pro), medical doctors (.med.pro) and chartered accountants (.cpa.pro).

Because of the increased adoption of the World Wide Web, some commentators suggest that more new gTLDs should be introduced to allow broader use of names. Examples of such proposed gTLDs include “.firm”, “.bus”, or “.shop”.

Internet Corporation for Assigned Names and Numbers (ICANN), the authority responsible for the management of the top-level domain name system, undertook a policy review of the existing TLD framework in late 2005, which culminated in the decision in 2008 to open up registration of new gTLDs. After years of consultation, ICANN has released the proposed final version of the new gTLD program in the month of July, which is scheduled to be implemented in 2011.

77 The new gTLD program will allow applicants to register four kinds of names as TLDs:

• Generic word TLDs (eg, .web, .home)

• Corporate TLDs (eg, .apple, .sony)

• Community TLDs (eg, .redcross, .amnesty)

• Geographic TLDs (eg, .Sydney, .melbourne)

The ability to register a brand name as a TLD obviously presents potential from a marketing perspective and many top brand owners are in the process of weighing the benefits to actually getting involved in this new development-and not just defensively. Canon Inc., for e.g, has announced that it had “made the official decision” to acquire “.canon” when the application process finally opens. Registration of a new dot- BRAND gTLD has been approved with the thought that it will benefit trademark owners. In order to register a new gTLD the applicant will need to establish to ICANN’s satisfaction that the applicant has reputable standing and the technical and the financial capability to run the new gTLD. Although in terms of technical capability, it is likely that existing registry operators will offer services to manage gTLD on behalf of prospective applicants. The applicants will need to also describe the policies and procedures it will implement to prevent abusive registrations and other unlawful conduct under their new gTLD.41

Starting Jan. 12, 2012, ICANN will begin accepting applications for new gTLDs and ICANN will charge an$ 185,000 filing fee for each application for a new gTLD and ongoing subscription and transaction fees (estimated at U.S. $6,250 per year, plus U.S $20 per second-level domain registered or renewed), are likely to prevent abusive gTLD registration. Shortly after the closing date for applications, ICANN

78 will publish a list of the proposed gTLDs on its website for a 45 days “Public Comment” period. At the close of that period, there will be “Initial Evaluation” of all applications, during which ICANN will assess the merits of the application taking into account any public comments received.42

When the list of proposed gTLDs is published, brand owners will be entitle to file a formal objection against registration of a srTLD which is identical or confusingly similar to an existing Trademark. This “objection filling” period will close 2 weeks after the results of the Initial Evaluation are published. The gTLD application will then be referred for dispute resolution. It is unclear at the time how long the dispute resolution procedure will take.

Apart from this procedure, ICANN’s new gTLD program includes establishment of a “Trademark Clearinghouse”, which will serve as a centralized database of trademarks against which new gTLD operators will be required to assess all new domain names registered under their respective TLDs

New gTLD operators will then be required to provide one of two pre-launch rights protection mechanisms: 43

• a “pre-launch claim service”, under which trademark owners who have registered their trademarks with the Trademark Clearing house will be notified whenever an application tries to register a domain name identical to the trademark; or

• a “sunrise period”, which will allow trademark owners registered with the Trademark Clearing house an opportunity to register a domain name in the gTLD before the domain name become available for registration to the public.

79 The Trademark Clearing house will only accept nationally or internationally registered trademarks, or marks which have been recognized by a court.

Another gTLD which has been recently approved by ICANN is .XXX gTLD. This gTLD was created specifically for the online adult entertainment industry. Although it will afford trademark owners that do not operate in the adult entertainment industry an opportunity to defensively secure their trademarks in the .XXX space. There is a different procedure and time line for those in the adult entertainment industry and those who are existing trademark owners of the adult entertainment industry. Applicants within the adult entertainment industry will be eligible to apply for registration during a period known as Sunrise A (September 7, 2011-october 28, 2011). Those in the adult entertainment industry who do not apply for a .XXX domain during Sunrise A can later apply during the Landrush period (November 8, 2011 -November 25, 2011). 44

Entities that operate outside of the adult entertainment industry will be eligible to apply for a .XXX domain name during a period known as Sunrise B, which is the same time frame as Sunrise A. Those who are not members of the adult entertainment industry and who do not apply for a .XXX domain name during Sunrise B may apply during the General Availability Period (beginning on Dec 6, 2011) and will be granted a registration on a first-come, first-served basis. ICM Registry, the Florida-based company tapped to manage .XXX TLD. The introduction of new gTLDs raises two interrelated questions.

First, should trademark issues have an impact on the decision to introduce new gTLDs?

80 Second, what will be the trademark implications of additional gTLDs - will it help or hurt the situation?45

The ICANN board has asked the Domain Name Supporting Organization (DNSO) to evaluate these issues and develop recommendations regarding the introduction of new gTLDs. Seven proposals for the introduction of new gTLDs have been submitted to Working Group C of ICANN’s Domain Name Supporting Organization. As can be expected, different interest groups have lined up to support different proposals. According to an article in BNA Patent, Trademark and Copyright Daily, academics and those who represent the Internet community support Position Paper B. This proposal recommends the addition of 500 new gTLDs within three years. The trademark community however is backing Position Paper C - a “go slow” proposal. The proposal argues that new gTLDs should not be added until appropriate safeguards are in place. These safeguards include improved domain registration procedures, speedy and effective uniform dispute resolution procedures and adoption of a system of famous and well-known trademarks across all gTLDs. While a uniform dispute resolution procedure has been implemented, backers of Position Paper C indicate that it is too soon to assess the success of the UDRP. As to famous names, it is unclear whether the DNSO will be able to create consensus over what qualifies as a famous trademark, let alone determine what protections famous marks should be granted in a system with additional gTLDs. Once the safeguards are in place, this proposal suggests that new gTLDs could be introduced, but in a slow and controlled manner as part of a testbed. After the testbed phase, an evaluation period would ensue before introduction of any additional gTLDs.46

81 (b) COUNTRY DOMAINS (ccTLD’s)

As each country in the world has its own top-level Internet domain with a unique alphabetic designation. Country-code top-level domains (ccTLDs) were created based on the two-letter code set (e.g., .gh forGhanaor.au for Australia) in the ISO 3166-1 standard.

A few countries and example domains are shown below.47

Top Level Country Example Site

Domain

.ae United Arab Emirates http://www.uae.org.ae/

.at Austria http://www..austria.at/

.au Australia http://www.morning.com.au/

.bb Barbados http://www.barbados.gov.bb/

.bm Bermuda http://www.kbb.bm/

.br Brazil http://www.home.iis.com.br/

.ca Canada http://www..canoe.ca/

.ch Switzerland http://www.badminton.ch

.cl Chile http://www.santiago.cl/

.us United States http://www.co.maui.hi.us/

Organizations in each country are responsible for managing the top-level Internet domain, and then for allocating second-level domains within that domain to people and organizations with interests in that country. The Country Code Domain Name Supporting Organization (CCNSO) is a support organization of ICANN responsible for

82 developing consensus positions and recommending global policies relating to country-code top-level domains.

Currently there are 21 generic TLDs (such as.com, .org, .biz, .edu and .asia) and approximately 250 ccTLDs (such as ,au, .uk and .tv) each of which has its own eligibility requirements for registration of a domain name in that space. (2) Second-Level Domains

A second level domain (SLD) is a domain that is directly below a top level domain (TLD). For example, in example.com, example is the second level domain of the .com TLD. Second level domains commonly refer to the organization that registered the domain name with a domain name registrar. Some domain name registries introduce a second level hierarchy to a TLD that indicates the type of organization intended to register an SLD under it. For example, in the .uk .namespace a college or other academic institution would register under the .ac.uk ccSLD. while companies would register under .co.uk.48

Second-level domains are the addresses commonly used to host Internet applications like web hosting49 and email addressing. Excluding the top-level domain portion, second-level domain names can have up to 61 characters. For many years, characters were restricted to the 26 letters, 10 numbers, or the hyphen character, except the hyphen can’t be the first or last character. Under these conditions, there are 36 possibilities for the first and last character of the domain name, and 37 possibilities for the other 59 characters. Therefore, the total number of possible different second level domain names was.50

83 37^59 x 36 x 36=433,018,769,429,481,000,000,000,000,000,000, 000,000,000,000,000,000,000,000,000,000,000,000, 000, 000, 000, 000, 000,000,000,000,000.

From the above discussion it can be said that second level Domain (SLD) will be easily obtained.

(3) Third-Level Domains

Third-level Internet domain names are created by those that own second-level domains. Third-level domains can be used to set up individual domains for specific purposes, such as a domain for web access and one for mail, or a separate site for a special purpose:51

www.livinginternet.com

mail.livinginternet.com

rareorchids.livinginternet.com

Third level domains are written immediately to the left of a second-level domain.

(4) Proposed Fourth and Fifth Level Domains

There can be fourth and fifth-level domains, and so on, with virtually no limitation. An example of an operational domain name with four levels of domain labels is www.sos.state.oh.us. The www preceding the domains is the host name of the World-Wide Web server. Each label is separated by a full stop (dot), ‘sos’ is said to be a sub- domain of ’state.oh.us’, and ‘state’ a sub-domain of ‘oh.us’, etc. In general, sub domains are domains subordinate to their parent domain. An example of very deep levels of sub domain ordering is the IPv6

84 reverse resolution DNS zones, e.g., 1.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0. 0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.0.ip6.arpa, which is the reverse DNS resolution domain name for the IP address of a loop back interface, or the local host name. Three of four levels are usually sufficient for most purposes.52

The hierarchical DNS labels or components of domain names are separated in a fully qualified name by the full stop (dot, .).

Value of Domain Names Domain names have economic as well as social value now a days

(1) Economic Value

When the DNS was developed, there was probably little or no economic value associated with possession of a particular domain name, which could be obtained at no cost, although having a hierarchical naming system was judged to be valuable. A distinctive Internet culture had developed well before this time, led by the relatively small and homogeneous community of engineers and scientists who were its primary users. It placed high value on voluntary service, free access within the community, and consensus decision making. However, the growth of applications on the Internet for commerce, information, art, and entertainment attracted commercial, legal, governmental, and other communities whose values and processes differ from those of the early Internet culture. Their arrival led to the development of a vigorous market for domain names and of a variety of mechanisms to deal with fair allocation of the now economically valuable domain names. Not surprisingly, throughout these developments there has been a continuing tension between the

85 technical community and the public interest community about the proper goals and mechanisms for the allocation of domain names and the management of the DNS.53

As domain names have gained economic value, so, too, has the desire grown for opportunities to publicize those names (as part of Web site and e-mail addresses) to potential users of the corresponding Internet locations. Consequently, many search engines and other navigational services, which originally provided a single listing of search results in the order of estimated relevance to the user’s query, now also give prominent placement to those willing to pay for it. As noted above, the search engine industry faces a continuing challenge in finding the proper balance between the interests of the users of search engines and the advertisers on them, against the backdrop of the ever present possibility of government intervention.54

(2) Social Value

When the DNS was developed, there was a modest level of social, political, or cultural value associated with specific domain names. As the Internet grew in size and evolved in use, it became a primary medium for communication, commerce, information, art, and entertainment; accordingly, domain names assumed greater social, political, and cultural significance as the memorable designators of the Internet locations of political groups, cultural resources, and social activities. But as a result, the DNS became entangled in issues of privacy versus accountability, freedom of expression versus national legal restrictions, and the rights of producers of intellectual property versus those of its users.55

86 In the future, the Internet can be expected to be even more widely used for interpersonal communication, for the public expression of ideas, for access to information, for the development of virtual communities around common interests, and for the production and distribution of art and entertainment. It will be a major portion of the global social fabric, facilitating and controlling the flow of information, expression, art, and entertainment. Until or unless the DNS is replaced, the signs designating the location of information, art, entertainment, viewpoints, and services will continue to depend on domain names. For that reason, it will be essential to sustain the DNS as the reliable signposting infrastructure of the Internet, facilitating the Internet’s use as a medium of free expression openly communicated to all corners of the globe, while balancing that freedom of expression against privacy rights, property rights, cultural mores, and national laws. As a result of the Internet’s increased social value, the desire to navigate freely across it can also be expected to encounter legal, commercial, cultural, and political challenges.56

Globalization of Domain Name System

When the DNS was developed, the Internet’s geographic scope was limited primarily to North America, parts of Western Europe, and a few countries on the Pacific Rim. And it was operated by a loose confederation of bodies and individuals, primarily in the United States, most of whom had received substantial support from the U.S. government. As use of the Internet has spread beyond its initial sites to encompass every continent and region and almost all nations, the network has responded successfully.57 But internationalization has posed two specific challenges for the DNS.

87 However, the native languages of an increasing number of Internet users employ different character sets. Recently, following years of work, a means of enabling presentation of internationalized domain names (domain names encoding other character sets into ASCII characters) has been adopted. It should become an important facilitator of Internet access and use for those communities. And, second, although ICANN has international participation, its authority rests on a contract from the U.S. Department of Commerce, which is perceived by some as undercutting its legitimacy as a representative of the international community.58

As said above that the DNS is now moving toward presentation of non-ASCII scripts in domain names, Internet content in most important applications, including e-mail and the Web, has been internationalized for well over a decade. Most Internet navigation services have incorporated the capability to search in multiple languages. For example, in November 2004 the Google search engine supported searches in over 100 languages and dialects and provided a customized version of the search interface for 103 different nations. At the same time, the Yahoo! directory and search service offered portals customized for 32 national or language groups. Since the navigation services are provided by a variety of organizations in an open forum, they are less subject to concerns about the internationalization of their governance. However, as their importance as the principal means of access to the Internet grows, they may well come under pressure from those who believe that in one aspect of their service or another, they do not adequately take into account the concerns or interests of certain nations, ethnic groups, or linguistic communities.59

88 Thus Internet has become one of the most important tools of modern day communication, having the ability to create jobs, shorten product life cycles, avoid international communication barriers and transcend political and social boundaries.

Summation

The basic idea and concept regarding domain name is that it serves the same purpose online, which a trademark serves in the offline business transaction. It helps the customers to identify the source of goods or services provided by the owner of such goods and services. Therefore importance of domain names is promotion of business by way of advertising on the web and to maintain credibility of the business on the internet.

A domain name is known technically as a uniform resource locator. The domain name actually consists of a series of numbers that are used to identify a specific computers connected to the internet, this domain name is a name cum address in the internet. The original role of a domain name is to provide an address for computer on the internet. However, the domain name at the extreme right is called the top level domain (TLD) and any domain to the left of the top level domain and separated by a “.” (dot) is the second level domain (SLD). Whereas the hierarchical domain name system is organized into zones binging at the root zone. Thus it can be said that domain name system is based on hierarchy.

The domain name system has economic as well as social value. Internationalized domain names are web addresses in your own language. Recently following years of work, a means of enabling presentation of internationalized domain name has been adopted.

Where multinational companies are doing business in jurisdictions outside their home country, the courts of the countries

89 where business is being conducted will generally have jurisdiction, and each court will apply its own national law. This is a problem that has already been faced by multinationals in other legal contexts, but it becomes more complex because of the global scope of the Internet. A court in Malaysia may have jurisdiction over a German company because of the German company's factory in Malaysia, and the German company will take care to obey local law in its business affairs in Malaysia. However, if the German company is accused of violating Malaysian law based on something available on its Web site originating in Germany, the German company may not consider it fair that it must answer in Malaysia for activity that is perfectly legal in Germany.

90 Notes & References

1. Dr. Priya Ranjan Trivedi, Encyclopedia of Intellectual Property Rights, Volume four Trade Mark system, Law and Policy page 235.

2. Ibid page 235.

3. Ibid page 237.

4. Ibid page 237.

5. Ibid page 237.\

6. Prop Saleem Akhtar & Shweta Jain, Protection of domain name in India & abroad, printed at: Aligarh Muslim University Press P. 6-7.

7. Ibid page 7.

8. http:/www.nap.edu/openbook.php?record_id=l I258&page=19.(viewed on 8.11.2012)

9. The Internet grew out of the ARPANET project (funded by the Defense Advanced Research Projects Agency (DARPA), which was known as ARPA for a period of its history); for many years the ARPANET served as the core of the Internet.

10. A host is primary or controlling computer in a network.

11. Supra note 8, at page 40.

12. Routing refers to the way data flowed on the ARPANET. Data transmitted from point A to point B might have traversed many different paths, or routes, on the ARPANET. Note that the ARPANET, as the original network to employ the Internet

91 Protocol (IP), was often referred to as “the Internet,” although the term later formally encompassed the aggregate of interconnected IP-based networks.

13. Supra note 8, at page 41.

14. Ibid.

15. In other words, an Internet address is an identifier of an individual computer or group of computers (‘’subnet”). As part of the Internet Protocol, the communications format used on the Internet, Internet addresses are comprised of strings of digits delimited by periods. The delimited fields indicate the network, subnetwork, and local address, reading from left to right. A typical; Internet address might appear as “207.82.250.251” where “207'’ is the network, “82” and “250” refer to subnetworks, and “251” is the computer itself. This all-numeric form is known as the “IP address” or “IP number”. Human beings find these figures difficult to relate to, and hence the IP Address system has been overlaid with a more “user-friendly” system of “domain names”. The IP address mentioned earlier would be accessible by merely typing in httpy/www.hotmail.com as a URL or Universal Resource Locator and hitting return. This overlay allows Internet resources to be assigned a mnemonic designation that is more easily remembered. Internet applications have been designed to automatically look up the IP address corresponding to mnemonic designations; this is done through a facility called Domain Name System, which operates invisibly to the Internet user.

It is also important to note that since the DNS handles all of the routing functions by looking up the IP number, the domain name

92 is independent of the IP addresses and can be reassigned should the computer or subnetwork move(either physically or electronically) See, Kenneth Sutherlin Dueker, “Trademark Law Lost In Cyberspace: Trademark Protection For Internet Addresses”, 9 Harv.J.L.& Tech. 483(Summer 1996), at http://jolt.law.harvard. edu/high/articles/v9n2p483.html.

16. Signpost in cyber space; The Domain Name System & Internet Navigation (2005) . (viewed on 1.12.2012)

17. Ibid.

18. http://www.livinginternet.com/i/iw_dns_dns.html (viewed on 1.12.2012)

19. Ibid

20. Ibid

21. http://www.rfc-editor.org/rfc/rfc2535.txt (viewed on 2.12.2012)

22. Ibid

23. http://www.livinginternet.eom/i/iw_dns_alias.htm (viewed on 1.12.2012)

24. Ibid.

25. Mani’s K, “Legal Frame Works on Cyber Crimes”, 2008. Kamal Publishers, p-35.

26. From a technical standpoint, the domain name is a mnemonic term an Internet user uses to instruct a computer to obtain the Internet Protocol number of the desired website, the IP address

93 being the numeric address code needed to find and communicate with a computer anywhere in the world “hosting” a website. The use of a site name serves to enable the computer to locate the IP number of the site, to communicate with the site and enable the user to view the web pages.(See, Kamant Nandan , “Law Relating To Computers. Internet And E-Commerce- A Guide To Cyber Laws”, 2nd Ed, Universal Publishing House ,2004,pp-211- 212)

27. 42USPQ2nd 1850.

28. http://en.wikipedia.org/wiki/Domain_name (viewed on 10.12.2012)

29. Ibid.

30. Ibid.

31. http://www.ntchosting.com/dns (viewed on 10.12.2012)

32. Supra note 16

33. Ibid

34. Supra note 28.

35. www.icann.org/tlds (viewed on 10.12.2012)

36. http://www.support.psi.com/support/common/inet- serv/dns/hierarc.html.

37. “New gTLD Program,” ICANN, October 2000.

38. Ibid.

94 39. http://www.livinginternet.eom/i/iw_dns_name.html (viewed on 1.12.2012)

40. Sharma Vakul, “Information Technology- Law and Practice”. 2nd Ed, Universal Publication, 2008. pp-410.

41. Supra note 6. at Page 26.

42. Ibid at page 26-27.

43. Ibid at page 27.

44. Ibid at page 28.

45. Ibid.

46. Supra note 28.

47. Ibid.

48. http://en.\vikipedia.org/wiki/Second-level_domain. (viewed on 10.12.2012)

49. Vebhosting-Whenever you made a website it will be limited only into your computer. Like you need hard disk to store you files, images you need a web server to store your website and make it available to the world. Today’s there are many hosting company available that will host you website with full security and they will charge you certain money of it. Web hosting is one of the most essential things if you are going to start new website or self hosted wordpress blog. If you want to start a blog at blogger or wordpress.com you don’t need web hosting because blogger and wordpress.com host your files at their server for free. In you computer the data will be stored in the hard disk likewise the

95 data will be store in the web server in the hard disk. Therefore each upload of your file in the web space will be occupied like your hard disk stored with the numerous files. When other people try to access to your website, your file will be executive from the web server, therefore it consumes certain bandwidth.

Some Basic terms in Web hosting are -

Diskspace: Diskspace is the space that is being used to store your website or blog. Nowadays most of the webhosting offers you unlimited disk space. That means you can store as much as data in your hosting account. The amount of diskpace may vary from different hosting companies. The diskspace is measure in MB(mega byte) and GB (Giga byte) like on your hard disk spaces. Bandwidth: The amount of data that passes through your network at a given time is called bandwidth consumes by that website. Mostly bandwidth consumes by the website is measured monthly by various hosting company. Whenever you visit a website you are accessing bandwidth of that website because to view the website, the page that you are viewing should be first downloaded on your computer. For example if you are trying to access this page until the whole image text of this page doesn’t get downloaded on the computer you will be unable to view this website. Whenever the user interacts to your website the bandwidth of your website will be consumed. So how much bandwidth will be needed for your website or blog? Well the answer is simple it depends upon the traffic of your website. For example if you have 100 visitors per day on your website the normal bandwidth of your website will be depend upon what the user do with your website. If the user starts viewing video that is being uploaded on your server it will consume more bandwidth

96 if the user only interact with your website then the bandwidth will be small. If you have a large number of visitors in your website per day then you must need a good bandwidth. If the users are more than the capacity of the bandwidth of your web server, then the web server will be down therefore your visitors can’t access your website. Now a day’s most of the hosting companies offer unlimited bandwidth to the users but it doesn’t mean that it will be able to enhance all the large traffic towards your website. If your traffic is large enough you should move your blog or website towards dedicated server.

50. Supra note 28.

51. Ibid

52. Supra note 6. at page 33.

53. Supra Note 16.

54. Supra note 6. at page 34.

55. Supra note 16.

56. Supra note 16.

57. www.wikipedia.com (viewed on 10.12.2012)

58. Supra note 16.at page 36.

59. Ibid at page 36-37.

97 CHAPTER III REGISTRATION, ASSIGNMENT AND TRANSMISSION OF TRADE MARKS AND DOMAIN NAMES

REGISTRATION, ASSIGNMENT AND TRANSMISSION OF TRADE MARKS AND DOMAIN NAMES

A- Trade Mark

An Overview

Before the enactment of the Trade Mark Law, the trademark used to be called common law marks. However the common law mark could not be registered. Further the owner of a common law mark had to protect his mark against the acts of infringement or passing off by initiating common law proceedings. But such proceeding can be launched only when the mark had actually been used by an infringer. As a result, such proceeding used to be time taking, that led the necessity to bring a special legislation for smooth functioning.

It is not necessary that the trade mark is registered, it may be either registered or unregistered. The law provides legal remedies against infringement for both registered trademarks and unregistered trademarks. Registration of Trademarks is prima facie evidence of ownership, whereas in case non registration it has to be established by the way of prior use and passing off in action.

Registrar of Trade Mark Registrar of trademarks is defined in the section 3 of the Trade Marks Act, 1999. The Registrar of Trade Marks is the authority who is accountable for the registration of trademarks, along with the responsibility of settling opposition proceedings and rectification of the register. The registrar indeed is vested with a remarkable range of discretionary powers. Besides these he has powers of civil courts in any specified matters and residuary powers as well. He also has the power to review his own decision.

98 There is also a Joint Registrar, Deputy Registrar, Assistant Registrars and Examiners of trademarks and clerical staff to assist the Registrar.

Basic Rules for Registration of Trade Marks The purpose of the Trade Mark Act 1999, as stated in the preamble, is to provide for the registration and better protection of Trade Marks and to prevent the use of fraudulent marks. In consonance with this object the following fundamental principles of Trade Mark law are embodied in the various provisions of the Act.1 (a) According to section 9 since registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary for the class of words or symbols over which such monopoly right may be granted. Thus descriptive words, surnames and geographical names are not considered prime facie registrable. (b) According to section 9 registration of a Trade Mark should not interfere with the bona fide use by any person of his own name or that of his place of business, or the use of any bona fide description of the character or quality of the goods. (c) Section 34 of the Act provides that property rights in a Trade Mark acquired by use are superior to similar rights obtained by registration under the Act. It, therefore, follows that prior users of Trade Marks should be protected against any monopoly rights granted under the Statute. (d) According to section 11 there are obviously two main interests to be protected when a mark is presented for registration. There is first the interest of the public. A Trade Mark ought not to be registered if its use will be apt to mislead the public as to the

99 origin of the goods they are purchasing. There are also the interests of other traders who are entitled to object if the use of the Trade Mark proposed for registration will be calculated to enable the applicant’s goods to be passed off on the public as such other trader’s goods. Thus a mark which is similar to a mark already registered or used for similar goods will not be allowed registration. (e) Section 12 of the Act states that it may so happen that a trader honestly used a Trade Mark for a number of years although an identical or similar mark has been registered or used by another. It will obviously cause hardship to such a trader if he is deprived of the benefits of registration. There is therefore provision for registration of such marks subject to suitable conditions and limitations. (f) According to section 12 the life of a Trade Mark depends on its use; and continued non-use may lead to its eventual defeat. There is, therefore, no equitable or logical basis for the continuance of the protection afforded by registration where the mark is no longer is use for a sufficiently long period. This principle is recognized in the Act by providing for the removal of a mark from the register on the ground of non-use. (g) Sections 40- 45 provides that a Trade Mark is recognised as a form of property. The term “proprietor of a Trade Mark” is used in the definition of a Trade Mark and also in various other provisions of the Act. It should, therefore, be assignable and transmissible as in the case of other forms of property. Having regard to the peculiar nature of this property, the Act has taken care to impose various restrictions and conditions for the assignment or transmission of property rights in a Trade Mark, whether registered or unregistered. (h) According to sections 20 and 21granting the benefits of registration under the Statute is not only a matter of interest to

100 the applicant seeking registration, but is a matter is which the public is also interested. It is, therefore, necessary that any member of the public who wants to object to the registration should be permitted to do so. The Act accordingly provides for advertisement of the application and opposition thereto by any person. These principles are substantially the same in all countries administering Trade Mark law.

Registration of Trade Mark The process whereby a Trade Mark is entered on the register of the Trade Marks is referred to as registration. The Trade Mark Act, 1999 does not expressly list any requisites of registration. The requirements of registration and the definition of Trade Mark have converged. Instead of detailing requisites for registration. The Trade Mark Act, 1999 envisages a list of negative elements. The Trade Mark Act, 1999 does not define the categories of marks registerable or the requisites for the registration of a mark. It defines what marks are not registerable under two headings, namely absolute grounds for refusal section 9 and relative grounds for refusal under Section 11 of the Act and then proceed to state the circumstance in which they may be registered. The basic qualification of registeralibity of a mark is contained in the definition of Trade Mark itself, namely- (1) Capable of being represented graphically, and (2) Capable of distinguishing the goods or services of one person from those of others. The advantage of this scheme is that whatever is not prohibited from registration is registerable if it satisfies the above two requirements. This has enormously included the scope of registerable marks.

101 Grounds for Refusal of Registrations (1) Absolute Grounds for Refusal The following categories of trademarks shall not be registered under section 9.

(a) Trade Mark Devoid of Distinctive Character If a Trade Mark is devoid of distinctive character the same cannot be registered under section 9 (1) (a). The word ‘distinctive’ in the context of Trade Marks means distinguishing a person’s goods or services from similar goods or services of another or from such goods or services without a Trade Mark.

On the basis of the degree of distinctiveness present in the marks the Trade Marks were also divided into two categories i.e. Part A and Part B with different rights. The 1999 Act has integrated both types of distinctiveness and categories into one. Now registration can be granted in the presence of a lower degree of distinctiveness, which is referred to as distinctive character or capability of distinguishing naturally there is no objection to the presence of higher degree of distinctiveness.

The distinctive character can be both inherent or acquired when the Trade Marks ipso facto possesses certain features making it capable of distinguishing if is referred to as an inherent distinctive character in the Trade Mark. A Trade Mark may come to acquire distinctive character as a result of use other circumstances, is referred to as acquired a distinctive character. A Trade Mark which possesses acquired distinctive character can never be refused registration.

102 (b) Trade Marks Consist Exclusively of Marks As per section 9 (1) (b), the Trade Mark which consist exclusively of marks or indications which may serve in trade to designate they are (i) Kind (ii) Quality (iii) Quantity (iv) Intended purpose (v) Value (vi) Geographical origin or (vii) Time of production or rendering of services; or (viii) Other characteristics of goods or services shall not be registered as Trade Mark, Laudatory words such as perfection, good, excellent, fine and words of common usage may now be register able if they form act of a Trade Mark in combination with other material, and display ‘distinctive character’. The refusal of registration entails only, whereas Trade Mark is exclusively formed by any of these eight characteristics matters. If there is another matter in Trademark, which makes the Trade Mark a composite whole of non-distinctive and distinctive matter and the Trade Mark finally possesses a distinctive character, than the above disabilities do not operate as a prohibition for registration.

(c) Customary Paradigms in Contemporary Semantics of Trade and Established Practices Section 9 (1) (c) prohibits marks, indications, very common words, words common to trade or customary in the current language or in the established practices of trade from being registered as a Trade Mark. Two cases are covered: marks or indications which have become customary (a) in the current language, or (b) in the bona fide and established practice of trade. Trade Marks consisting exclusively of marks or indications which have been customary in the current

103 language or are used in the bona fide and established practice of trade, shall not be registered as Trade Marks. Very common words and indication which are required by other traders and such other marks which appear to be in the public domain shall not be registered. (d) Grounds Based on Public Policy and the Public Interest Section 9 (2) fulfils the proposition that all Trade Marks serve a double purpose of identification of the source and protection against confusion function for the benefit of consumers, Section 9 (2) reads as under-

A mark shall not be registered as a Trade Mark if (a) It is of such a nature as to deceive the public or cause confusion; (b) It contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizen of India; (c) It comprises or contains scandalous or obscene matter; (d) Its use is prohibited under the Emblems and Names (Prevention of Improper use) Act, 1950. Section 9 (2) (a) is double edged provisions and would come handy in favour of owners of the reputed Trade Mark (s) to successfully oppose the registration application in relation to similar Trade Marks sought to be registered on similar or even for different goods or services. The protection afforded to repute Trade Marks by refusing the registration application of others under section 11 of the 1958 Act had contributed to creating a legal environment in which there have been less chances of Traders attempting to imitate Trade Marks of others.

(e) Grounds for Refusal Based on Shapes and Contours of Goods The growth of design variations of shapes of goods has helped the marketing success of the products, which built a desire to protect

104 such shapes as a Trade Mark. In the Trade Marks Act, 1999, there is specific mention of possibility of the shape of goods as a mark. Shape Trade Marks are possible only for goods and they are not available for services. Shape Trade Marks are allowed registration for the first time in India from the commencement of the Trade Marks Act, 1999.

A Trade Mark consisting of shapes other than the three prohibited shapes shall be registered as a Trade Mark. In effect the permission to register the shape is somewhat like allowing registration of an industrial design as a Trade Mark.

Section 9 (3) prohibits registration of marks as Trade Marks if the marks consist exclusively of the shape of goods, which read as follows- Section 9 (3) a mark shall not be registered as a Trade Mark if it consists exclusively of: (a) The shape of goods which result from the nature of the goods themselves; or (b) The shape of goods which is necessary to obtain a technical result; or (c) The shape which gives substantial value to the goods.

(2) Relative Grounds for Refusal Section 11 (1) to (3) state the law of refusing registration of Trade Marks on the basis of likelihood of confusion or association with earlier Trade Marks including well-known Trade Marks.

(a) Similarity with Earlier Trade Marks – Similar Goods/ Services Section 11 (1) of the Trade Marks Act, 1999 enacts the basic principle of Trade Mark law that no Trade Mark shall be registered if it

105 is identical or similar to an earlier registered Trade Mark for similar goods or services. The requirements under section 11 (1) is a collar to the exclusive right extended to the registered Trade Marks and to protect the rights of the Traders in relation to the goods or services marketed by them under those Trade Marks.

Section 11 (1) (a) and (b) operative only if one of the two results are achieved (i) Likelihood confusion on the part of the public; or (ii) Likelihood of association with earlier Trademark. Likelihood of confusion with the earlier Trademark may arise, if there is a likelihood on the part of the public to associate the Trade Mark sought to be registered with ‘Earlier Trade Mark’. The likelihood of confusion resulting in refusal of registration in section 11 has to be based upon: (a) Identity of the Trade Mark with an earlier Trade Mark and similarity of goods or services covered by earlier Trade Mark; (b) Similarity of Trade Mark with earlier Trade Mark and their identity of similarity of goods or services covered by earlier Trade Mark. Section 11 (1) prohibits the registration, when the Trade Mark applied for being identical or is similar to an earlier Trade Mark and the goods or services on which later mark is sought to be used are similar to goods or services covered by the earlier Trade Mark. It follows that there can not be on the register simultaneously two or more registrations the same or nearly resembling marks, in the name of different proprietors in respect of similar goods or services.

Section 11 (1) states that a Trade Mark will not be registered if there exists a likelihood of confusion on the part of public. In British India Corp V. Kharaiti Ram2 where the petitioners were established manufacturers of shawls, blankets and they have been selling their

106 goods from 1 920 under the Trade name ‘DHARIWAL’ with the device of lamb written in a characteristic style. The petitioners got registration of the mark granted in its favour in 1955, The respondents' registration application describes their Trade Mark as DWM - DHARIWAL, for the same goods in the same class, which could be registered. They have been in fact been using a part of the same class, which could be registered. They have in fact been using a part of the proposed Trade Mark namely DHARIWAL, which is same as registered for the petitioner. By dropping the prefix ‘DWM’ from the Trade Mark in doing actual business an effect is being made by the respondents to device the general public. This cannot be said to be an honest intention. The possibility of confusion between the goods of the two manufacturers by virtue of their using the Trade Mark containing the same device and the same Trade Mark containing the same device and the same trademark is very real. The court held that the registration is justifiably refused.

(b) Similarity with Earlier Trade Marks Section 11 (2) prohibits registration of subsequent marks even for different goods or services if the earlier Trade Mark is a well- known Trade Mark in India. The protection to well-known marks for different goods is not absolute, it would be operative only if the later mark, without due cause-

• It taking unfair advantage of earlier Trade Mark?

• Is detrimental to the distinctive character of an earlier Trade Mark? Or-

• Is detrimental to the repute of earlier Trade Mark for applicability of section 11 (2)?, the following is also required-

(i) Earlier Trademark satisfies the definition of earlier Trade Mark given in the explanation to section 11 (4),

107 (ii) Earlier Trade Mark is registered in the name of different proprietors, irrespective of the goods or services for which it is registered,

(iii) Earlier Trade Mark is well-known in India. This last requisite would mean that the Trade Mark has to be well known as per the standards listed in section 2 (1) (zg) read with section 11 (6) to section 11 (9).

Section 11 (3) is a new path breaking provision and reads as follows- A Trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented. (a) By virtue of any law in particular and law of passing off protecting an unregistered Trade Mark used in the course of Trade, or (b) By virtue of law of copyright.

Section 11 (3) may be invoked by proprietor of earlier Trade Mark when the use of later Trade Mark would be prevented in India by virtue of (i) any law in particular the law of passing off protecting an unregistered Trade Mark or (ii) by Indian law of copyright. This type of phraseology or language appears to subsume or give sanction to the concept of trans boarder reputation which was evolved by Indian courts to protect reputed foreign marks whether registered or unregistered in India. The law of passing off protecting unregistered Trade Mark is also available to proprietors of registered marks. Protection by passing off may be claimed by registered marks when the similar later mark is liable to be prevented by virtue of the law of copyright, section 11 (3) has an application.

108 (3) Honest and Concurrent Use Under Section 12 the Registrar may permit the registration to more than one proprietor of the trademarks which are identical or similar, irrespective of an earlier registration in respect of one of them, on the ground of honest and concurrent use or other special circumstances.

In Gupta Enterprises V. Gupta Enterprises3 the court allowed registration of the trade mark “MBS” on the ground that there was no complaint from public in relation to the goods under the rival marks even after the user of mark for 25 years and there was nothing to suggest that the user of the trade mark was not innocent, honest and bona fide.

(4) Names of Chemical Elements or International Non- Proprietary Names not Remittable No word, which is commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a substance or preparation, or which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name, shall be registered as a trademark.4

(5) Names and Representations of Living Persons or Persons who Recently Died Where an application is made for the registration of a trademark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may

109 be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnished the registrar with such consent.5 Judicial Response There are various judicial decisions which are indeed helpful for clear and proper understanding to refuse registration on the absolute & relative grounds of a trade mark and reasons when the trade marks can be allowed for registration.

Apple Laboratories V. Boots Company6 In this case already registered trade mark was BRUFEN and trademark sought to be registered in the name of BRUFSRTE. Registration refused on the ground of likelihood of causing confusion or deceptive similarity.

British Steel Corporation London V. The Registrar of Trade Marks7 As mention earlier, distinctiveness is the primary Condition of a trade mark. The burden is on the applicant to prove distinctiveness or capability of being distinguished of the mark so as to claim monopoly of using the mark.

Eastman Photographic Material V. The Controller General Trade Marks.8 Solio word for photographic paper allowed for registration on the ground of invented world.

Illustrations : Words Found Invented Registration Allowed Flexgrip used in relation to pens & the other writing instrument.9

110 Matkewala used for items like roasted gram and roasted groundsnuts10

Colgate Palmolive Co. V. Balsara Hygine11 The registration of word Promise allowed on the ground that the word found non-descriptive.

Illustrations- Words Found Non-Descriptive Registration Allowed. Solar used for photographic apparatus, studio light etc.12 Stayfree used for sanitary napkins etc.13

Words Found Descriptive Registration Refused Fair and Lovely for cosmetics.14 Tripti For aerated water, juice and beverages.15

Surnames Registration allowed on the ground of distinctiveness and the user. Cadbury – For confectionery. Toefani- For cigarettes on the proof of extensive user.16 Surnames – Registration Refused Spicer – No evidence of distinctiveness.17 Zimmer – No evidence of distinctiveness.18 Geographical Names- Registration Allowed Italia – For motor cars.19 North Pole – On the ground of distinctiveness.20 Geographical Names – Registration Refused. India – For electric fans.21 Himalaya – No importance in respect of goods22

111 Procedure for Registration The foremost conditions during the registration process is the desire of the person to register the Trade Mark. Before seeking registration the person should either be the proprietor of the Trade Mark or the same must be proposed to be used by him in respect of goods or services. The surest means of acquiring effective Trade Mark right is to obtain registration and also use the mark on goods or in relation to services in India. The Procedure for registration of a Trade Mark is enumerated in sections- 18 to 23 of the Trade Marks Act, 1999.

112 Appropriate Office of Registry The application for registration of Trade Mark should be filed in the office of the appropriate Trade Marks registry. The head office and office of the appropriate Trade Marks registry. The head office and various branches of the Trade Marks registry exercise their functions within territorial limits which are defined by the Central Government through notification in the official gazette. The application for registration has to be filed in that office of the registry within whose territorial limits the principal place of business of the applicant is located. In the case of a joint application, the location of the applicant whose name is mentioned first in the application is to be taken into account for the purpose of jurisdiction.

An application for registration of a Trade Mark may be made for one or more particular goods included in one or more classes of goods or services. The class to which the goods or services belong is determined by the Registrar.

The goods or services on which the Trade Mark is used or is proposed to be used may belong to different classes as are classified by the Registrar in terms of section 7 (1). The Trade Mark Act, 1999 allows a single application to be made for registration of Trade Mark for goods or services falling in more than one class of goods or services. However the application fee shall be payable in respect of each such class of goods or services to which the goods or services belong.

An applicant makes an application for registration of Trade Mark still not used by him, this shall operate as a claim on the Trade Mark till the time applicant does not abandon his claim. If another person makes an application for similar Trade Mark than the claim of earlier applicant is superior and will be preferred.

113 A joint application may be filed, where the relations between one or more persons interested in a Trade Mark is such that none of them is entitled between oneself and the other or others of them to use the Trade Mark except (a) on behalf of both or all of them;, or (b) In relation to an article or service with which both or all of them connected in the course of trade. Such persons may be registered as joint proprietors of the trade mark.

Section 1 8 (3) of the TM Act, 1 999 states that the applicant for registration of a Trade Mark may or may not carry on business in India but an address for service in India must be declared.

If an applicant or an opponent in registration proceeding is not a resident of India or does not carry on business in India, the Registrar may require such a non-resident person to give security for the costs of proceedings. In case such non-resident party does not furnish the security, the application or opposition that had been established by the party would be treated as abandoned.

Section 133 provides for the applicant to obtain information by making an application in the prescribed form of the proposed Trade Mark is prima facie distinctive, before making an application for registration.

If a person wants to know whether the mark selected by him for registration resembles any Trade Mark already on record, he may make a request for search and obtain a search report from the registrar. If a favourable report is given and he makes an application for registration of the mark, the Registrar can still take objections. His search is not conclusive. If the Trade Mark resembles any mark which was not disclosed in the search report furnished to the applicant but was on record on the date of search the applicant is entitled to repayment of

114 the fee paid thereon giving notice of withdrawal of the application. Other conditions are practically same as applicable in advice on distinctiveness.

Section 47 (1) (a) of the Trade Marks Act, 1999 enables any aggrieved person to apply to the registrar or to the Appellate Board to take off a registered Trade Mark from the register the Trade Mark was registered without any bona fide intention on the part of the applicant to use the Trade Mark on goods or services stated in the application.

Procedure by the Registrar Upon receipt of an application for registration; the Registrar’s office undertakes what is described as an ex - officio examination.

(1) Ex-Officio Examination of Application It causes a search to be made amongst the registered Trade Marks and pending applications to ascertain whether there are on record, in respect of the same or similar goods or services or description of goods or services, any mark identical with or confusingly similar or which may show an association with the mark sought to be registered.

Section 18 (4) confers a discretion on the Registrar in relation to the registration application. In conformity with the previous provisions he may accept the application either absolutely or subject to such amendments, conditions or limitations as he may think fit. He is entitled to refuse the application, but only after recording in writing the grounds for refusal or for conditional acceptance and stating the material used by him.

After acceptance the application is advertised in the form in which it has been accepted in the Trade Mark journal [Section 20 (1)].

115 There are incidental powers vested in Registrar in Section 19 and 20 to withdraw the acceptance or very the acceptance or to advertise the application before acceptance if proviso to section 20 (1) applied. The advertisement before the acceptance of the application may be in the cases falling in Section 9 (1) or section 11 (1) and (2) or in other cases of exceptional circumstances.

(2) Opposition, Hearing and Evidence

Within three months of the advertisement or re-advertisement of

acceptance of an application for registration which is extendable by

one month by the Registrar, any person may [Section - 21 (1)] give notice in writing, of opposition to registration. The registrar requires to serve a copy of opposition notice to the applicant for registration. The applicant, in turn, must submit his counter statement of the ground on which the applicant relies within two months there from, otherwise it will be deemed that the registration application has been abandoned

[Section 21 (2)]. The copy of counter statement is required to be served on the opponents [Section 21 (3) of the TM Act, 1999]. All the evidences are required to be submitted [Section 21 (4)]. In the prescribed manner before the Registrar. The Registrar shall decide after hearing the parties and pass a speaking order stating all the reasons for imposing any conditions or limitations whether registration is to be permitted or not.23 The registration is to be permitted to take

into account any ground of objection even if that has not been relied on

by the opponents.24

116 (3) Abandoning Tie Registration Application If in the opinion of the Registrar, an application is in default in perusing an application filed under the law, the Registrar must give notice to the applicant to remedy the default within a specified time. The Registrar may treat the application as abandoned, unless the default is remedied within the time specified in the notice.

(4) Grant of Registration and Power of Central Government to Prohibit The Registration of Trade Mark is completed under section 23, before the grant of registration, either the registration application should not have been opposed or if it was opposed the opposition should have been decided in favour of the applicant. Moreover the Central Government should not have prohibited the legislation.25 If the above conditions are fulfilled, than the Trade Mark is entered in the register and the Registrar issues a certificate to that effect. The registration takes effect from the date of application and is valid for a duration of ten years.26 Which may be renewed simply by payment of renewal fee However for the purpose of removal from the register on the ground of non-use under section 47 (1) (b), the period of 5 years of non-use shall be reckoned from the date of its actual entry in the register. On registration of the Trade Marks, the Registrar is required to issue to the applicant a certificate of registration sealed with the seal of Trade Mark Registry.27

Direction of Central Government The Central Government may direct the Registrar not to register any particular Trade Mark (s). Trade Marks which are directed by the provisions as not to be registered are not accepted for registration. The power of Central Government can be exercised at any stage of registration application. The Central Government had also issued

117 notifications and direction of general applicability under this power prohibiting certain marks from registration.

Renewal Process and Fee A Trade Mark is registered from the date of registration application for a period of ten years and can be renewed from time to time. On the expiration of a period of ten years, the registered proprietor or an assignee can obtain a renewal on payment of prescribed fees by making an application in the prescribed manner and period. The Registrar has no discretion in the matter of renewal. The Trade Mark can be further renewed indefinitely by following the same procedure on each expiration of registration.28 For the benefit of Trade Mark owners, the Registrar is required to give notice for payment of fee stating date of expiration of Trade Mark so as to avoid inadvertent lapse or delay in making the application or payment of the renewal fee. If the payment is not made in stipulated time, the Registrar may remove the Trade Marks from the register. If the application is made within six months from the time of expiration with a fee and surcharge, the Registrar is mandated to renew the registration and is not to remove the mark from the registrar.

When the Trade Mark is removed for non-payment of fee, in spite of its removal it is deemed to be on the register for the limited purposes of registration of other marks. It means that an expired Trade Mark would continue to be earlier Trade Mark for the purpose of section 11 for a period of one year.

Non-Renewal and Restoration An application for restoration of Trade Mark may be filed before the Registrar. The registrar after six months and within one year from the expiration of registration, on receipt of an application and when

118 satisfied that it is just to do so, may restore the Trade Mark to the register and renew the registration of the Trade Mark for a period of ten years from the expiry of the registration. The Registrar has discretion not only in relation to the restoration of the trade mark but also as to imposing conditions or limitations while restoring the mark on the Resister.

Non-Renewal and Registration of Similar Marks If the Trade Mark is removed from the register for non-payment of the prescribed renewal fee, The Trade Mark is deemed to be on the register for a period of one year from the date of last expiration of the Trade Mark for the purpose of deciding other application. This disables similar Trade Marks from obtaining registration for that duration. During this waiting period of one year, the registration may be granted to the other applicant. (i) If the tribunal is satisfied that prior to its removal, the expired Trade Mark was not being used for a period of two years; and (ii) If a new similar Trade Mark is registered there is no likelihood of deception or confusion because of the previous use of such removed Trade Mark.29

Right Conferred on Trade Marks on Applying for Registration Certain rights vest by the mere fact of applying for registration of a Trade Mark.30 (1) It serves as evidence of the adoption and solution of Trade Mark of state goods or services. (2) It enjoys priority against identical or similar marks pending registration for same or similar goods or services, if similar mark is applied or used after the date of application. This

119 priority of six months is applicable in a-members of the Paris convention and the WTO countries. (3) Preservation of the filing date within six months Of priority period in all countries of the Paris convention and WTO which means that by making an application in one country, if the\ applicant chooses to make an application in the other countries, other application will be deemed to have been filed at the earliest date.

Rights Conferred on Trade Marks by Registration The registration of Trade Mark confers the following rights of the registered proprietor. (1) It confers on the registered proprietor the exclusive right to use of the Trade Mark in relation to the goods or services in respect of which the Trade Mark is registered. (2) If the Trade Mark consists of several matters, there is an exclusive right to the use of the Trade Mark taken as a whole. If the Trade Mark contains matter common to Trade or is not of a distinctive character there shall be no exclusive right in such part. (3) It entitles the registered proprietor to obtain relief in respect of infringement of Trade Mark in the manner provided by the Trade Mark Act 1999, when a similar mark is used on (a) same goods or services (b) similar goods or services (c) dissimilar goods or services. (4) Registration of a Trade Mark forbids every other person (except the registered or unregistered permitted user) to use or to obtain the registration of the same Trade mark or a confusingly similar mark in relation to the same goods or services or the same description of goods or services in relation to which the Trade Mark in registered.

120 (5) After registration of the Trade Mark for goods or services, there shall not be registered the same or confusingly similar Trade Mark not only for the same goods or services but also in respect of similar goods or services by virtue of section 11 (2) of Trade Mark, 1999. (6) Moreover, after registration of the Trade Mark for goods or services, there shall not be registered the same or confusingly similar Trade Mark even in respect of dissimilar goods or services by virtue of Section 11 (2) in case of well-known Trade Mark. (7) Registered Trade Mark shall not be used by any one use in business papers in advertising. Use incorporate advertising should not take under the advantage of the Trade Mark. Such advertising should not be contrary to honest practices in industrial or commercial matters. The adverting should not be detrimental to the distinctive character or reputation of the trade mark. (8) There is a right to restrict the import of goods or services marked with a Trade Mark similar to once’ Trade Mark. (9) There is a right to restrain use of the Trade Mark as Trade name or part of the Trade name of business concern dealing in the same goods or services. (10) The registered Trade Mark continues to enjoy all the rights which vest in an unregistered Trade Mark. By registering the proprietor of an unregistered Trade Mark is converted into proprietor of the registered mark. An application for registration may be based on a mark in use from prior to such application and such a Trade Mark is already vested with right at common law from the time the use of the mark was commenced. So getting a trademark registered is more beneficial. Here in TM Act, 1999 the object is to provide for registration and better protection

121 of trade marks for the prevention of the use of fraudulent marks and merchandise.

Assignment and Transmission of Trademark Section 37 to 45 deals with the assignment and transmission of a trade mark. Section 37 empowers the registered proprietor to assign the trademark and to give effectual receipts for any consideration for such assignment. For assignment and transmission to a registered or unregistered trade mark's goodwill of a business is not the matter of concern. A trademark can be assigned & transmitted with or without the good will of the business.31

There is the restriction on assignment or transmission of a trade mark under section 40 of the Trade Marks Act, 1999, where multiple exclusive rights would be created with more than one person to deceive or cause confusion. Provided that an assignment or transmission shall not be deemed to be invalid if the exclusive rights subsisting as a thereof in the person concerned respectively are having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise trade in, within India otherwise than export there from, or in relation to goods to be exported to the same market outside India or in relation to services for use at any place in India or any place outside India in relation to services available for acceptance in India.32

A trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law – (a) An exclusive right in one of the persons concerned, to the use of the trademark limited to use in relation to goods to be sold or otherwise traded in, in any place in India, or in relation to

122 services for use, or services available for acceptance in any place in India; and (b) An exclusive right at another of these persons concerned, to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to – (i) The same goods or services; or (ii) The same description of goods or services; or (iii) Services which are associated with those goods or goods of that description or goods which are associated with those services or services of that description,

Limited to use in relation to goods to be sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India Provided that in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trademark in exercise of the said rights would not be contrary to the public interest may approve the assignment or transmission, and an assignment or transmission so approved shall nor, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 40 if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the approval is or, in the case of a transmission, was made before that date.33

Where an assignment of a trade mark, whether registered or unregistered is made otherwise than in connection with the goodwill of the business in which the mark has been or is used, the assignment

123 shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any. Not exceeding three months in the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct. Explanation For the purposes of this section, an assignment of a trademark of the following description shall not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in which the mark is used, namely : (a) An assignment of a trademark in respect only of some of the goods or services for which the trade mark is registered accompanied by the transfer of the goodwill of the business concerned those goods or services only: or (b) An assignment of a trade mark which is used in relation to goods exported from India or in relation to services for use outside India if the assignment is accompanied by the transfer of the goodwill of the export business only.34 Assignment of Certification trademarks can only be done with the consent of the registrar under section 43 of the Trade Marks Act 1999. The associated trademarks shall be assignable and transmissible only as whole and not separately but will be treated as a separate trademark for all other purposes under section 44 of the act. (1) Where a person becomes entitled by assignment or transmission to a registered trademark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark I respect of the goods or services I respect of which the assignment or transmission has an effect, and shall cause

124 particulars of the assignment or transmission to be entered on the register: Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court. (2) Except for the purpose of an application before the Registrar under sub section (1) or an appeal from an order thereon, or an application under section 75 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the appellate Board or the court, as the case may be, otherwise directs.35

Special Provisions Relating to Protection of Trade Marks for International Registration under the Madrid Protocol The provisions of this Chapter shall apply to international applications and international registrations under the Madrid Protocol. Trade Marks Registry to deal with international applications. Notwithstanding anything contained in sub-section (3) of section 5, an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

(1) International Application Originating from India

(1) Where an application for the registration of a trade mark has been made under section 18 or a trade mark has been registered

125 under section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the Common Regulations for international registration of that trade mark. (2) A person holding an international registration may make an international application on the form prescribed by the Common Regulations for extension of the protection resulting from such registration to any other Contracting Party. (3) An international application under sub-section (1) or sub-section (2) shall designate the Contracting Parties where the protection resulting from the international registration is required. (4) The Registrar shall certify in the prescribed manner that the particulars appearing in the international application correspond to the particulars appearing, at the time of the certification, in the application under section 18 or the registration under section 23, and shall indicate the date and number of that application or the date and number of that registration as well as the date and number of the application from which that registration resulted, as the case may be, and shall within the prescribed period, forward the international application to the International Bureau for registration, also indicating the date of the international application. (5) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the application under section 18 or the registration under section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration shall cease to have effect:

126 Provided that where an appeal is made against the decision of registration and an action requesting for withdrawal of an application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting into withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration. (6) The Registrar shall, during the period of five years beginning with the date of the international registration, transmit to the International Bureau every information referred to in sub-section (5). (7) The Registrar shall notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be.

(2) International Registrations where India has been Designated

(1) The Registrar shall, after receipt of an advice from the International Bureau about any international registration where India has been designated, keeps a record of the particulars of that international registration in the prescribed manner. (2) Where, after recording the particulars of any international registration referred to in sub-section (1), the Registrar is satisfied that in the circumstances of the case the protection of trade mark in India should not be granted or such protection should be granted subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the international registration has been accepted, he may, after hearing the applicant if he so desires, refuse grant of protection and inform the International Bureau in the prescribed manner within eighteen months from

127 the date on which the advice referred to in sub-section (1) was received. (3) Where the Registrar finds nothing in the particulars of an international registration to refuse the grant of protection under sub-section (2), he shall within the prescribed period cause such international registration to be advertised in the prescribed manner. (4) The provisions of sections 9 to 21 (both inclusive), 63 and 74 shall apply mutatis mutandis in relation to an international registration as if such international registration was an application for registration of a trade mark under section 18. (5) When the protection of an international registration has not been opposed and the time for notice of opposition has expired, the Registrar shall within a period of eighteen months of the receipt of advice under sub-section (1) notify the International Bureau in its acceptance of extension of protection of the trade mark under such international registration and, in case the Registrar fails to notify the International Bureau, it shall be deemed that the protection has been extended to the trade mark. (6) Where a registered proprietor of a trade mark makes an international registration of that trade mark and designates India, the international registration from the date of the registration shall be deemed to replace the registration held in India without prejudice to any right acquired under such previously held registration and the Registrar shall, upon request by the applicant, make necessary entries in the register referred to in sub-section (1) of section 6. (7) A holder of international registration of a trade mark who designates India and who has not been extended protection in India shall have the same remedy which is available to any person making an application for the registration of a trade mark

128 under section 18 and which has not resulted in registration under section 23. (8) Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the related basic application or, as the case may be, the basic registration in a Contracting Party other than India has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting From such international registration in India shall cease to have effect.

(3) Effects of International Registration

(1) From the date of the international registration of a trade mark where India has been designated or the date of the recording in the register of the International Bureau about the extension of the protection resulting from an international registration of a trade mark of India, the protection of the trade mark in India shall be the same as if the trade mark had been registered in India. (2) The indication of classes of goods and services given by the applicant shall not bind the Registrar with regard to the determination of the scope of the protection of the trade mark.

(4) Duration and Renewal of International Registration

(1) The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period.

129 (2) Subject to payment of a surcharge prescribed by the rules, a grace period of six months shall be allowed for a renewal of the international registration.”

B- Domain Name An Overview A computer system firm in Cambridge Massachusetts had registered his first commercial Internet domain name (.com) under the name symbolics.com on 15 March 1985. By 1992 fewer then 15000 (.com) domains were registered. In December 2009 there were 192 million domain names, including 11.9 million online businesses and e- commerce sites, 4.3 million entertainment sites, 3.1 million finance related sites and 1.8 million sports sites.36

Thus from the above statistic it is clear that the demand for domain names has been increasing speciously with the advent of e- business, organizations had to cater to new marks and new philosophic, in the fulfilment of which the Internet is to play a profound role. As a result, the securing of an appropriate domain name and the protection of the company’s right to use it are aspects that every organization has to confront.37

As domain names now carry goodwill, reputation and high recall value. Further, by the representation of both name and address in the online context, a domain name can serve the classic trademark function of symbolizing a company’s recognition and goodwill in the marketplace. Domain names are therefore, relevant in e-business.38

The increasing demand for domain names led to the emergence of industry which provides services related to the transfer, assignment and registration of domain names and related services. The pressure for

130 new TLDs led to the conversion of some country codes to quasi- generic TLDs. Moreover in2001, ICANN introduced seven new domain name extension.

Thus it can be said that unlike country code top-level domain names, which are issued by the authorities in each country, generic top level domains are issued by the registrars, which are accredited by Internet Corporation for Assigned Names and Number (ICANN).39

From the above discussion, we can broadly summaries that the discovery of the importance of a domain name has ensured that organizations are willing to devote to the acquisition of these names, a considerable amount of money and time. This quest has led to the only to be expected conflicts over the registration of domain names. Numerous disputes have arisen where companies with similar names, or manufacturing the same types of products, have wanted to adopt similar or identical domain names.40

In the U.S., the Network Solutions Inc. (NSI)41 has registered domain names since 1992 under an agreement with the National Science Foundation and the U.S. Department of Commerce. In assigning a domain. NSI uses a multi-level system, including a Top Level Domain (“TLD”) such as <.com>, <.net> and <.org>,which are considered world wide “generic” TLDs, coupled with a Second Level Domain (“SLD”) requested by the party seeking the domain assignment. Elsewhere, a number of registration entities (called NICs {Network Information Centre} or registries), assign individual country TLDs using two character ISO country codes, such as <.in> for India, <.ca> for Canada or <.fr> for France, etc.42 Every nation uses its two letter identifier as the TLD. In many countries such as India, there are also second level domains that roughly parallel those inuse in the U.S.

131 Thus, <.co> in India corresponds to <.com> in the U.S. Typically, companies in the U.S. ignore the <.us> TLD and use <.com>, <.edu>, etc as their TLDs.43 Though overseas business has by passed country TLDs and have registered <.com> domain with NSI.

Growth of e-commerce has ensured that the most domain name disputes surround <.com> TLD.44 Another result of this global growth is that it is quite possible for a U.S. company to have the domain name , while there is also a separate and unrelated Indian user with and yet another user in France with and so on in every country all around the world.45

The most recent development has been the establishment of the Internet Corporation for Assigned Names and Numbers (ICANN) the non-profit corporation that was formed to assume responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management, and root server system management functions now performed under U.S. Government contract by the Internet Assigned Names Authority (IANA) and other entities.46

A domain name register is an organization or commercial entity, accredited by both ICANN and generic top-level domain registry (gTLD) and/or by a country code top-level domain (ccTLD) registry to sell CCTLDs; to manage the reservation of Internet domain names in accordance with the guidelines of the designated domain name registries and to offer such services to the public.

Registration The first step in acquiring the right to use a domain name is to contact (usually through a service provider) the administrator (authorized by the ICANN) of the desired TLD. If the identical

132 requested domain name is not already assigned, the name will be approved by the administrator. No proof of ownership or trademark registration is required to register.

When domain names are sought to be registered, they need not mirror the name of the applicant. Mere registration of a domain name does not ensure any trademark status. The requestor must ensure that it is not violating anyone else’s trademark.47

The maximum period of registration for a domain name is 10 years. Some registrars offer longer periods of up to 100 years, but such offers involve the registrar renewing the registration for their customer; the 100-year registration would not be in the official registration database.

Domain Name Structure and Naming in the .IN Domain As explained, the allocation of IP addresses and domain names worldwide is done centrally. There is a specific registration process involved. The Internet Assigned Numbers Authority (IANA) is the central Internet authority that allocates IP addresses and domain names through the Inter NIC. The allocations are done either directly by the Inter NIC or by regional registries to whom the registration and allocation functions have been delegated. The RIPENCC takes care of the allocations and registry in Europe and in the Asia Pacific region this is done by the APNIC.48 The Inter NIC takes care of all else. Country code domains are important for big companies as well who either want to register defensively (as did Amazon at www.amazon.co.in) or to try and establish a presence and an indigenous identify as well.

India has a top level domain <.in> as listed in the ISO-3166. The second level sub domains registered under the <.in> domain are

133 <.ernet> for the academic and research network, <.nic> for the government’s network, <.ac> for the academic community, <.co> for commercial organizations, <.net> for Internet Services Providers, <.res> for the research community, <.gov> for government offices and machinery, <.mil> for military organizations and <.org> for organizations which do not get covered under any of the above sub- domains.49

The <.in> domain administration is done by the National Centre for Software Technology (NCST), Mumbai which runs the Indian Domain Registration Service. This <.in> domain will be solely managed by the Domain Registrar until either the registration activity is delegated to sub domains or there are separate Domain Registrars for each (or a set) of domains.50

Domain Naming The third level sub domain provides the space for registering organization names or organization acronyms. Some typical patterns that can result are detailed below : ,.in-eg.oror . Each organization will register a domain as above. The organization can then plan its own sub domain hierarchy under the registered domain. For e.g., a commercial organization BUSINESSNAME registers a domain . The organization then subdivided the domain space under this registered domain based on division names resulting in domain names like. -Publicity Division -Finance Division. -Support Division. The hostnames will then be prefixed to these domain names to yield names like www.publicity.businessname.co.in.

134 For every registration made, an entry will be made in the DNS by NCST. A DNS server will be required to be run by every organization.51

Domain Registration Domain name registration requests are entertained by NCST only if the organization has a valid IP address or has applied for one. The domain may be registered electronically.52 The application form, on receipt, is circulated within a review group and the applicant will be contacted for clarifications/name clashes, if any. If there is none, then the applicant will be allocated the desired domain name and intimated. Domain names are generally registered on a first come first serve basis. Upon registration, the registrant is required to run a DNS server.53 the DNS entries are then made into the primary name-server (for <.in)domain) by NCST. A negligible fee is charged to cover the registration costs and the cost of providing the secondary name server service and the registration information services.

Regarding the trademark issue, when contacted via e-mail, the domain registrar at NCST stated that if the name of the brand is registered in India, then one could register a domain like, brand name.co.in>. As regards the concept names, one cannot go under the <.co.in> domain. They could go under the <.org.in> domain. However, when one is going for some such domain, one will need to give a declaration that if some company comes up with the same name as their brand name or company name, one will give back the domain name. This is only if the other company objects to the domain name holder holding the domain name.54

Thus, a domain name requires a strong, constant and instant protection under all the legal systems of the world, including India. This can be achieved either by adopting harmonisation of laws all over

135 the world or by jealously protecting the same in the municipal spheres by all the countries of the world.

Problems in the Registration of Domain Name The advent of domain name registration has initiated a new set of problems for the registered trade mark users/owners. Time is an important factor in the registration of a domain name and a policy of first come first serve basis is used for registering a name as a domain name. Keeping this in mind, many people registered well known domain names which resembled well-known trade mark/ names. Accordingly, they were granted/allotted a particular domain name.

Due to this policy a trend for Cyber Squatting evolved in which an unlicensed user registered a trademark as a domain name in order to pressure the bona fide trade mark owner/user and extort money or other benefits from such lawful trade mark owner/user. Since there was no connection between trade mark registration and domain name registration, such domain names did not come under objection at the time of registration. This loophole in the procedure further encouraged cyber squatters to demand exorbitant prices for selling these domain names to the registered trade mark owners/users who were desperate to protect their goodwill. Initially, the Courts too were not well equipped with knowledge in dealing with matters of cybersquatting in the absence of any law or regulation to that effect.

It is a general practice where companies desire to obtain such domain name which can be easily identified with their established trademarks. This helps the public to identify the company as there is no physical contact between the two of them. Domain names and trademarks are connected with each other. If a company or an individual register a domain name which is similar to or identical to

136 someone else’s trademark or domain name and then tries to sell the same for a profit. This is known as “Cybersquatting”.

Domain Name Registration in India In India, the registration under the ccTLDs is managed by National Centre for Software Technology (NCST).55 It has been doing this task since 1995. However, internet Management Group, a committee formed by the Government of India, oversees the Internet Domain Name registration activities in .in56 ccTLD. The committee consists of members representing, Bharat Sanchar Nigam Limited, Ministry of Information Technology, Videsh Sanchar Nigam Limited and NCST. The primary duty of the ccTLD manager is to manage and operate the .in ccTLD Registry in the interest of the global internet community. Before an applicant applies for the domain name with NCST, he must have a valid IP address or must have applied for one. The filled up applications forms are circulated within a review group to check for clashes. In case there are none, the domain name is allotted to the applicant. Upon registration of the domain name, the owner of the domain name is required to run a DNS server.

Summation Registration of a trademark is the best way to protect a mark. Trademark registration in India is regulated by the Trade Mark Act 1999. A trademark is registered for a period of 10 years, which can be renewed for another period of 10 years. If the mark has been expired one can apply for its re-registration. Therefore, a trademark is protected by the laws of a country where rich trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world. The purpose behind the registration is to provide better protection of trademark and to prevent the use of fraudulent marks.

137 Registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bon fide trading or business purposes, certain restriction are necessary on the class of words or symbols over which such monopoly right may be granted. Thus descriptive worlds surnames and geographical names are not considered prima facie registrable.

A domain name registrar is an organization or commercial entity, accredited by both ICANN and generic top-level domain registry (gTLD) to sell gTLDs and/or by a country code top-level domain (ccTLD) registry to sell ccTLDs; to manage the reservation of Internet domain names in accordance with the guidelines of the designated domain name registries and to offer such services to the public.

Domain registration information is maintained by the domain name registries, which contract with domain registrars to provide registration services to the public. An end user or the customer selects a registrar to provide the registration service, and that registrar becomes the designated registrar for the domain chosen by the user.

When the customer buys a domain, it connotes two things. Firstly, the name, i.e., www.***********.com and a certain space (2GB to unlimited) for his websites. The maximum period of registration for a domain name is 10 years. Some registrars offer longer periods of up to 100 years, but such offers involve the registrar renewing the registration for their customer, the 100-year registration would not be in the official registration database. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different

138 jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after.

139 Notes & References 1. P. Narayan, Intellectual Property Law, 3rd Edition (revised), 2004 Eastern Law House Publication, page 162. 2. 2000 PTC 171. 3. 1998 PTC (18) (Del) 300. 4. Sec. 13 Trade Mark Act 1999 5. Sec. 15 Trade Mark Act 1999 6. 2004 (29) PTC 265 IPAB 7. 1991 PTC 148 (SOSFT) UK 8. (1898) AC 571 9. The Gillette Company V. A.K. Stationary (2001) PTC (21) 513 (Del) 10. Sant Kumar Mehra V. Ram Lakhan (1999) PTC (19) 307 11. 1992 PTC 261 (Bom.) 12. Central Camera V. Registrar (1980) IPLR 1 13. Christine Holden V. Johnson & Johnson (1990) IPLR 96. 14. Aruna Cosmetics V. Hindustan Lever Ltd., (1988) PTC 311. 15. Campa Bewrages Ltd. V. Tripti Enterprises, 1984 PTC 129. 16. 1913/30 RPC 76. 17. Dona Corp. Toledo, Ohio V. Spicer Auto Products, 1983 PTC 333 Del. 18. Zimmer Orthopedics Ltd. London V. Kith De Fair, 1985 PTC 133 (Del.) 19. Italia Fabric Application, (1990) 27 RPC 493. 20. Pals Distilleries v. Dahisar Distilleries, 1992 PTC 41 (Bom.) 21. Indian Electricals Applicatioin, (1945) 49 CHW 425. 22. Himalaya Industries v. Rajasthan Asbestors Cement Co. 1990 PTC 201 (Del). 23. Section (21) (5) Trade Mark Act 1999. 24. Section 22 (5) Trade Mark Act 1999. 25. Section 23 Trade Mark Act 1999. 26. Section 25 Trade Mark Act 1999

140 27. Section 32 (2) Trade Mark Act 1999. 28. Section 25 (2) Trade Mark Act 1999. 29. Section 26 Trade Mark Act 1999. 30. Section 30 (2) Trade Mark Act 1999. 31. Section 38 & 39 Trademark Act 1999. 32. Section 40 Trade mark Act 1999. 33. Section 41 Trademark Act 1999. 34. Section 42 Trademark Act 1999. 35. Section 45 Trademark Act 1999. 36. Prof. Saleem Akhtar & Shweta Jain, Protection of Domain Names in India & Abroad, 2012, Printed at : Aligarh Muslim University Press, P. 37. 37. Domain names serve a variety of purposes, and will rapidly grow to form the fulcrum of a company’s visibility & marketing operations. A company will soon be remembered only through its internet address, rather than its geographical or telephonic addresses & numbers. Moreover, the protection of existing domain names puts forth new challenges to the policy maker in particular and the law more generally. See, Mitchell Zimmerman & Sally M. Abel, “Securing and protecting a Domain Name for your website : Trade Marks, Trade Names And Domain Names in cyberspace”, atc http:: www.fenwick.com/pub/domain.htm>. 38. Kamath Nandan, “Law Relating to Computers, Internet and e-

commerce-A guide to Cyber Laws”, 2nd Ed., Universal Law Publication, p 213. 39. Supra not 36, Page 37-38 40. To understand the true dimensions of the domain name conflict, one would have to compare the attribute of a domain name with a traditional trademark. In case of the former, only one owner can possess a particular domain name. In contrast, identical trademarks may be owned by numerous persons, so long as there is differentiation on the basis of geographical application or

141 through product differentiation. Two companies may use the same trade maker e.g. ABC, because they are completely in different line of business and there is little, if any, likelihood of confusion. Under the current Internet naming system, however, one of these companies will not be able to include its marks in its domain name, since their can be only one . See, Richard Baum and Robert Cumbow, “First Use : Key Test in Internet Domain Disputes”, Nat’1 L.J., Feb. 12, 1996, at p. C17 (Also see Majumdar Ankit and Kamath Nandan, “Name-Calling

in Cyberspace-Domain Names and The Law, 2nd Ed. P. 214). 41. Sally M. Albel, “Trademark Issues in Cyberspace : The Brave New frontier” at . The organization responsible for overall coordination and management of the domain name assignment system in the Internet Assigned Numbers Authority (“IANA”). This Address Number authority was created to assign unique address to each participating network. To provide technical oversight of architectural and taxonomic development on the Internet, the National Secience Foundation created the Network Information Center (“InterNIC”) in January 1993 contracting with three companies to run it : General Atomics. AT&T, and Network Solutions Inc, a wholly owned subsidiary of Science Applications International Corp. Network Solutions, following policies set by the IANA, provides registration of all network groups,AT&T provides directory services, and General Atomics overseas the information services. The InterNIC became functional in April 1993.

Thus, the Assigned Numbers Authority (IANA) is the overall authority for the IP Address, the Domain Names, and many other parameters, used in the Internet. The day-to-day responsibility for the assignment of IP Addresses, Autonoumous System

142 Numbers, and most top and second level Domain Names however, are handled by the Internet Registry (IR) and regional registries. (Also see Majumdar Ankit and Kamath Nandan,

“Name-Calling In Cyberspace-Domain Names and The Law, 2nd Ed, p. 214). 42. In most industrial countries outside the United States, there are voluntary and cooperative groups, supported mainly by the Internet service providers (ISPs) who collect fees for providing interconnection services to the networks operating in their respective countries. These cooperative groups assign domain names in their countries and coordinated their activities so that each domain name remains globally unique. 43. David W. Maher, “Trades on the Internet : Who‟s in Charge?At. (viewed on 03.10.2011) 44. There are number of reasons for this : firstly, it is one of the oldest in terms of original top level domain names : secondly, it is a naming system which might utilize only two names, such as , thus making the address easily and instantly recognizable. By contrast under one of the two country domains the same would be , thirdly. Its association with commercial organizations is also important I that it is attractive to a commercial entitiy seeking to set up a website; and finally, the name has international connotations. See, Charlotte Waelde, “Domain names and Trademarks : What‟s in a name?” Lilian Edwards & Charlotte Waelde (Eds.) Law and the Internet : Regulating Cyberspace, Hart Publishing, Oxford, 1997, pp. 7-46 (Also See Majumdar Ankit and Kamath Nandan, “Name-Calling in Cyberspace-Domain Names and The Law, 2dn Ed, p. 215). 45. Often, companies register domain names in multiple countries, esp. in countries where they operate. This ensures both visibility

143 and the prevention of domain name misappropriation and consequent trade mark implications. 46. Supranote41 p.216 47. Ibid. 48. Note the definition of Europe and the Asia Pacific in this context are not as per the existing political boundaries. 49. Supranote.41 p.218 50. Ibid. 51. Supra note 49, at pp. 218-219. 52. To register a domain, one may obtain the form electronically from URLs http://soochak.ncst.ernet.in or .This form is to be filled up and mailed to [email protected]. 53. At least a 64kbps leased data circuit. 54. Supra note 51 at p. 219. 55. NCST is an autonomous society, involving in Research & Development, under the administrative purview of Department of Information Technology, Ministry of Communication & Information Technology, Government of India. 56. It‟s Indian ccTLD, i.e. unique identity symbol of Indian Website.

144 CHAPTER IV INFRINGEMENT OF TRADE MARKS AND DOCTRINE OF PASSING OFF IN ACTION: NEW DIMENSION AND DEVICES

INFRINGEMENT OF TRADE MARKS AND DOCTRINE OF PASSING OFF IN ACTION: NEW DIMENSION AND DEVICES

A. Infringement of Trade Marks

An Overview

Infringement or passing off mostly occurs when another trader copies the essential features of the trademark but sell the goods in his own name in contrast to counterfeiting where the counterfeiter holds out that the goods and produced by the actual proprietor. Some elements of inconsequential nature are intentionally inserted in the Trade Marks, so as to plead the differences in faced with civil or criminal proceeding. If a mark confusingly similar to a registered Trade Marks used on similar goods or services, it constitutes infringement. If the Trade Mark offended against unregistered only an action for passing off is permissible. Infringement is a remedy based on violation of statutory laws whereas passing off is based on common law.

The common law has been kept intact by 1999 Act as was done in Act of 1958 and Act of 1940. The cruse of the dispute, both in infringement and passing off suit, is the determination of deceptive similarly of the offending marks. Infringement is complete if a Trade Mark similar to that of registered proprietor is used. The cases of passing off now subsume a lot of other considerations of reputation, dishonesty or fairness.

The 1999 Act makes it clear that the proceedings cannot be instituted for preventing infringement of unregistered Trade Mark or to collect damages thereof. {Section 27(1) of TM Act 1999}. The

145 nomenclature of infringement has been restricted only to the breach of the rights of the registered Trade Marks under section 27(1), the action of infringement lies only in respect of registered Trade Marks. If a mark similar to the registered Trade Mark, is sought to be used on the same goods or goods of the same description for which it is registered, it would constitute infringement. The right in relation to the same goods or services is available to all registered Trade Marks, irrespective of reputation enjoyed by such a registered Trade Mark.

In an infringement action, the court is required to decide whether the impugned mark of the defendant is identical with or “deceptively similar” to the registered Trade Mark. The mark is said to deceptively similar if the impugned mark so nearly resembles the registered mark that it is likely to deceive a customer on an ultimate consumer into mistaking it for the registered mark with which consumer is acquainted or cause confusion in that regard in him.

The infringement action is a statutory remedy available to the registered proprietor or to the registered user, based on statutory rights conferred by registration of a Trade Mark, subject to other restrictions laid down is action 30, 34, 35 of 1999 Act. An infringement action is available to the registered proprietor or registered user to enforce his exclusive right over Trade Mark in relation to the goods in respect of which it is registered. If at the time of registration of Trade Mark, certain limits or conditions have been imposed, then the exclusive right has to be evaluated within the terms of such registration. If an offending use of the Trade Mark fulfils following conditions, it squarely constitutes infringement. (1) The mark used by the person in either identical with or deceptively similar to registered Trade Mark; (2) The goods in respect of which it is used as specifically covered by the registration;

146 (3) The use made of the mark is in course of Trade in areas covered by the registration; (4) The use is in such manner as to render it likely to be taken as being used as a Trade Mark.

In Parle products V. J.P. & Co.1 The plaintiffs appellants are owners of registered Trade Mark “Gluco” and also a wrapper with its particular colour scheme, general get up and entire collection of words. This wrapper is known as “Parle’s Gluco Biscuits” and is of buff Colour and depicts a farmyard with a girl in centre earring a pail of water along with cows and hens around her in the background of a farmyard house and trees. The plaintiffs have acquired great reputation and good will among the members of the public. The defendants started selling and offering for sale biscuits in a wrapper which was deceptively similar to the registered Trade Mark and plaintiffs brought infringement suit.

The defendants claimed that there was a good deal of difference in the design of their wrapper from that of the plaintiffs and relied on features of their design which was dissimilar from those of the plaintiffs wrapper, The defendant’s wrapper contained the picture of a girl supporting with one hand a bundle of hay on her head and earring a sickle and a bundle of food in the other the cows and hens being unlike those of plaintiffs’ wrappers. There was also said to difference in the design of the buildings on the two wrappers and the words printed on the two wrappers was distinct and separate.

The Supreme Court observed that to decide the question of the plaintiffs' right to a Trade Mark has been infringed, the approach must be different than that which is there in an action for passing off goods of the defendants and for those of the plaintiff. The packets are practically of the same size, the colour scheme of the two wrappers is

147 almost the same; the design on both though not identical, bears such close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and earring something in the other with a cow or cows near her and hens or chickens in the background. In the background there is a farm house with a fence. The words “Gluco Biscuits” on one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone, who has a look at one of the packets in a day may easily mistake the other if shown on another day as being the same article which he had been seen before. If one was not careful enough to note the particular feature of the wrapper on the plaintiffs' goods he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. After all, an ordinary purchaser is not gifted with the powers of observation of a specialist. The court held that the defendants’ wrapper is deceptively similar to the plaintiffs’ registered Trade Mark. For infringement nothing more is to be proved.

In Durge Dutt V. Navratna Pharmaceutical Laboratories2 it was held that while an action for passing off in common law remedy being in substance an action for deceit i.e. a passing off by a person of his own goods as those of another, it is not the gist of an action for infringement. The action of infringement is a statutory remedy conferred on the registered proprietor of a registered Trade Mark for the vindication of his exclusive right to use of the Trade Mark is relation to those goods. The use by the defendant of the Trade Mark of the plaintiff is not essential in an action for passing off but is absolutely necessary in the case of an action for infringement.

The court had further said that the essential feature of the Trade Mark of the plaintiff has been adopted by the defendant, the fact that the get-up, packing and other writing on marks on the goods or on the

148 packets show marked differences or indicate a different trade origin would be immaterial. To distinguish between the two marks or one mark is deceptively similar to another, the broad and essential feature of the two marks is to be considered. It would be enough if the impugned mark bears such and overall similarity to the registered mark that it would be likely to mislead a person usually dealing with one to accept the other if offered to him. In S.M. Dyechem V. Cadbury India3 norms of ‘Essential Features’ for deciding deceptive similarity at the interlocutory stage got new light.

The plaintiff appellant has been using the Trade Mark PIKNIC from about 1989, in respect of potato chips, wafers, corn-pops, and rice flour preparations. The registered Trade consisted of a peculiar script of the word ‘PIKNIK’ in a curved fashion with the caricature of a little boy with a hit in between the words ‘K’ an ‘N’. The plaintiff found the defendant using a similar Trade Mark ‘PICNIC’ along with Cadbury’ for chocolates. The plaintiff filed the suit for temporary injunction. The defendant has applied of rectification of the register in relation to PIKNIK against plaintiff and also applied for registration of CADBURY PICNIC in 1999. It may be mentioned that the defendant Cadbury had earlier registered PICNIC in 1977 but the Trade Mark expired and was not renewed in India whereas the PICNIC continued to be registered in more than 100 countries. The defendant contended that the plaintiff cannot claim monopoly in the variation of ‘ordinary dictionary word picnic or misspelling thereof;

The court applied three tests - is there any special aspect of the common features of Trade Mark PIKNIC namely the peculiar script and the curve have not been copied. The second test is with the reference to the mode in which the parts are put together differently. That is to say whether the dissimilarity of the part or parts is enough to make the

149 whole thing dissimilar. The court said that absence of a peculiar script in the letters, the curve and absence of the caricature of the boy with a hat makes’ the whole thing looks dissimilar. The third test is whether when there are common elements, should one not pay regard to the parts which are not common, while at the same time disregarding the common parts? What in the first impression? The above three dissimilarities have to be given more importance than the phonetic similarity in the use of the word PICNIC FOR PIKNIK. The court said that the dissimilarities appear to be clear and more striking to the naked eye than any similarity between the marks and on the whole essential feature of two marks are different.

In Heartst Corp V. Dalal Street Communication Ltd.4 the court stated that in an action for infringement. a) Plaintiff must be the registered owner of the Trade Mark; b) The defendant must use a mark deceptively similar to the plaintiff’s mark; c) The use must be in relation to the goods in respect of which the plaintiff’s mark is registered; d) The use by the defendant must not be accidental but in the course of Trade;

In the present case the plaintiff had been publishing a monthly magazine since 1933 and selling the same in the name of the registered Trade Mark ‘Esquire’ since 1942. The plaintiff also owned the copyright in the script, get up and style in which the Trade Mark ‘Esquire’ is related. From Oct, 1994 the defendant started publishing a monthly magazine with the name ‘Esquare’.

The plaintiff field the suit to the effect that the defendant has infringed the plaintiffs Trade Mark and copyright of the Trade Mark ‘Esquire’. The defendants had adopted the name ‘E-square’ because the

150 magazine was published for Executives and Entrepreneurs and for free circulation for Citibank card members and remaining copies were to be sold in the open market. The mark of the plaintiff and that of the defendant are different alphabetically script wise and in letter-style. The clientele of the plaintiff exclusively consisted of men whereas the defendants’ clients were executives and Entrepreneurs of either sex. The name of the magazine Newspaper in India under the Press and Regulation of Books Act, 1867, The defendant had also applied for the rectification of the plaintiff’s mark. There was a very vast difference in the price of the magazine the plaintiffs’ magazine selling for Rs. 220/- each whereas the defendant did not sell the bulk and only sold limited copies at Rs. 127- per copy. There was as such according to the defendant, No possibility of deception or confusion.

The court remarked that the close resemblance being there, the inquiry is it the mark will deceive or not the question has to be approached from the point of view of an unwary purchaser of average intelligence and imperfect recollection. Secondly the goods to which the words are applied must be considered, and thirdly the nature and kind of customer who is likely to buy the goods must be kept in view. An injunction was issued to restrain the defendant from infringement of registered Trade Mark of the plaintiff.

Enlargement of Infringement (1) Use on Similar Gods or Services This is a new provision in section 29 (2). The infringement action now is complete when a mark is unauthorisedly used not only on the same goods or services but also on similar goods or services to those covered by registered Trade Mark. Section 29(2) provides three circumstances in which the infringement may take place if any of the two results takes place.

151 In case of following situations i) The use of the Trade Mark is unauthorized, ii) use of the mark is in course of trade, iii) (a) Offending mark is identical to the registered Trade Mark and goods or services are similar; or (b) Offending mark is similar to the registered Trade Mark and goods or services are identical or similar; or (c) Offending mark is similar to the registered Trade Mark and goods or services are identical. In this case there is a presumption of likelihood of confusion on the part of the public, or in other words the act of infringement is complete. The result should be any one of the following two, if any one of the above situation is applicable. i) Likelihood of confusion on the part of the public, or ii) The infringement mark is likely to hold out an association with the registered Trade Mark.

If the above two are fulfilled, such a use of the mark would be hit by the section 29 (2) and it will be an infringement of the mark, liable to be connected by injunction and other remedies.

Thus, in addition to causation of confusion, creation of an impression of association with registered Trade Mark would also constitute infringement. The new provisions in section 29 (2) would take the test of infringement nearer to the concept of trading on the reputation of another and also passing off. Trade Mark Act, 1999, if the offending mark is similar and used on similar goods or services, and produces the result of confusion or association with the registered Trade Mark in the part of the public, it would constitute infringement.

152 (2) Repudiated and Registered Marks Section 29 (4) relates to reputed Trade Marks, which are most often in ownership of nationals of developed countries. Now in section 29 (4) the use of a mark similar to a reputed registered Trade Mark for one set of goods or services on different goods or services would constitute infringement, if any of the events or results mentioned in section 29 (4) (c) occur. The right to restrain the use of the Trade Mark on different goods would be available only to such Trade Mark, which repute in India, In other words, if the use of offending mark may dilute the registered mark, the proprietor to registered Trade Mark can take steps that the similar offending mark cannot operate in India.

Section 29 (4) may seem as incorporating the following ingredients: If a person uses in the course of trade, a mark which is (a) Identical with or similar to the Trade Mark, registered, with reputation in India. (b) On different goods or services than covered by registration; such a use of the mark, infringes the registered Trade Mark if it is found that the offending mark- i) Without due cause takes unfair advantage of the distinctive character or reputation of registered Trade Mark;. ii) Without due cause is detrimental to the distinctive character or the repute of the registered Trade Mark. In other words if the offending mark dilutes the reputed registered Trade Mark, the same has been recognized as constituting infringement.

In Caterpillar Inc 100 NE V. Lorange5 plaintiff is proprietor of Trade Mark Caterpiller and CAT for heavy machinery, construction and agriculture industry equipment. From year 1996 they sell a wide range of garments, sweaters, Jackets, sunglasses sporting goods. The plaintiff had not introduced the Trade Marks in India on garments till

153 then but relied on transborder reputation emerging from its use of the Trade Marks in other countries.

In United Distillers V. Jagdish Joshi6 the plaintiff objected to the use of Johnnie Walker mark of the plaintiffs for scotch whiskey in a similar trade dress being used on Gutka. The packaging bears a distinctive trade dress featuring a label characterized by two tone colour combinations comprising of (i) Black and gold (ii) Red and gold and (iii) Blue and gold in respect of three types of whiskey. The center label is deliberately slanted containing a golden outline and there is standing figure and a bowler hatted man in the trade dress. The defendant usurped the device of striding figure and the slanting label in relation to their product ‘Gutka’ and the said labels are deceptively similar and copy the trade dress of the plaintiff.

B. Passing Off An Overview The law of passing off is a common law fort which can be used to protect the sight of an unregistered trademark. The law of passing off prevents one person from misrepresenting the goodwill and reputation of his business of another man. The principle behind it is that no man is entitled to represent his goods as being the goods of another man. An unregistered trademark can only be protected by an action for passing off.

There was no registered trademark system in the early days of evolution of trademarks law. The only remedies were in the form of action against passing off or injurious falsehood in case somebody else would make use of this trademark without the prior permission or consent of the owner.

154 Passing off was used to denote the act of a person to sell his goods as the goods of someone else i.e. selling one’s goods with a trade mark which was owned by somebody else. Likewise, when a person, during the course of trade, makes use of a false information which is likely to injure the reputation of someone else to whom such information is related; it is known as injurious falsehood. The passing off and injurious falsehood were the principles under tort law (which they, no doubt, still are) where the Court might provide the remedy to the aggrieved through an injunction and, if, needed, damages to the aggrieved (the plaintiff, that is) from the wrong-doer.7

In many ways, the law of passing off is a common law version of trademarks law although of older pedigree. Passing off protects the business goodwill and safeguards the public from deception by giving a right of action against anyone who tries to pass off his goods or services as those of someone else. One trader might try to ‘cash in’ on the goodwill and reputation of another trader by dressing up his goods in such a way that they look like those of that other trader. There is a large overlap between trademarks and passing off and it is not unusual for a legal action to involve both passing off and trademarks. The law of passing off is particularly useful if there is no registered mark to be infringed; perhaps a trader or manufacturer has used a mark for several years without registering it as a trade mark. The mark may fail to qualify for registration or the act complained of might fall outside the scope of trademarks - for example, if it relates to the format of an advertising campaign.8

The following example shows the application of passing off. A computer retailer has been operating for three years under the name of ‘Computer Equipment Sales’ and has a chain of stores in the South of England. The retailer has acquired a reputation for low prices and efficient service. Recently, another retailer has opened a store in the

155 South of England and uses the name of ‘Computer Equipment Sales and Service’. Neither name is registered as a trade mark; in fact the names would be refused registration because they are too descriptive of computer retailing generally and would make it difficult for other traders to describe their business activities. As there is a danger that people will be confused and might buy from the second retailer thinking that they are buying from the first, the first should be able to obtain an injunction preventing the second retailer from continuing to use the name he has chosen. If the first retailer has only been in business a short time before the second retailer opens his store then it is unlikely that anything can be done. This is because there has not been sufficient time to build up goodwill connected with the name and, hence, there is little danger that the public will be confused. Similarly, if the second trader’s store was in North Wales, it would be unlikely that the first trader’s business would be affected, unless his goodwill extends to that location, for example, because he advertises nationally.9

Section 2 of British Trade Marks Act, 1938 as also Section 20 of the Indian Trade Marks Act. 1940 contained such provisions and the same provisions have been retained by the British Act of 1994 [Section 2(2)] and the Indian Act of 1958 [Section 27(2)]. The Trade Marks Act, 1999 retains the same provision in its section 27(2) which reads: “Nothing in this Act shall be deemed to affect rights of action; against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”

The U.K. Trade Marks Act, 1994 provides in Section 2(2) “No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.”

156 The Leather Cloth Company v. The American Cloth Company10 Lord Kingsdown observed in this case that “the fundamental rule is that one man has no right to put off his goods for sale as the goods of a rival trader, and he cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.”

Spalding v. Gamage11 The House of Lords noted in this case that “the basis of the passing off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made.”

Reckitt and Colman v. Borden12 The House of Lords in a famous case held that the appellant’s use of a package similar to the defendant’s for selling lemon juice amounted to misrepresentation on the part of the appellant and declined to vacate the injunction ordered in favour of the defendant from the Subordinate Court.

Farina v. Silverlock (1856) 3WR 532: 69ER 560 The House of Lords Oliver of Aylmerton, quoting Lord Cranworth L.C. in this case said

“The law is perfectly clear, that anyone, who has adopted a particular mode of designating his particular manufacture, has a right to say, not that other persons shall not sell exactly the same article, better or worse, or an article looking exactly like it, but that they shall not sell it in such a way as to steal (so to call it) his trade mark, and make purchasers believe that it is the manufacture to which that trademark was originally applied.”

157 In Sarille Perfumery v. Jure Perfect13 where the plaintiff had a trademark and its essential feature was word ‘Jure’ written in a special style, the use of the words ‘Jure Hair Curler’ by the defendant on its products like setting lotion, lipstick, shampoo etc. was held to be an infringement of the trademark owned by and registered in the name of the plaintiff at the Court of Appeal. The House of Lords also, on appeal, upheld this decision.

In another case, it was held that there was no triable case either of passing off or infringement made out against the defendant where it had used the words “farming opus” for a directory of goods and services to the farmers, without knowing that there existed in the name of the plaintiff a registered trade mark “opus” in respect of several types of agro-chemicals. The Court felt that there was no likelihood of confusion since the use of the mark by the defendant was in relation to “a totally different class of goods”:14

The real test in case of infringement is that whether a not so cautious purchaser would accept one product from the other. The Supreme Court of India opined so when it observed that to establish a case of infringement the exact similarity of the two marks was not necessary and that “it would be enough if the impugned mark bears an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”15 Therefore, where the plaintiff used the trade mark ‘Enerjex’ for an Allopathic medicinal product and the defendant had adopted “Enerjase” as his trademark for Ayurvedic medicinal products, the Court held that there was no infringement of the plaintiff’s trademark.16

158 And, in Rupa & Co. Ltd. v. Dawn Mills Co. Ltd.17 the Court held that the use of the word ‘DON’ by the Rupa Company was prima facie an Infringement of the registered trademark ‘DAWN’ owned by the Dawn Mills ‘Ltd. The Court held that this was a fit case for grant of an injunction.

Thus the position at present is that if a mark confusingly similar to a registered trademarks used on similar goods or services, it constitutes infringements. While he owner of an unregistered trademark can only get protection under the law relating to passing off. The cases of passing off now subsome a lot of other consideration of reputation & dishonesty.

Classical Trinity of Passing Off No man is entitled to represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, device, or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate custome18 This principle also applies to business where no goods are involved. To put it shortly, it is an actionable wrong for any person to pass off his goods or business as and for the goods or business of another person by whatever means that result may be achieved. The law of passing off has been extended to professions and non-trading activities. In fact today it applies to many forms of unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person or group of persons. Fraudulent intention is not necessary to constitute passing off.19

The classical formulation of passing off is often referred with three elements for e.g. misrepresentation, Goodwill and damage As per

159 Kerly’s law of Trade Mark & Trade Names, the plaintiff in an action for passing off has to prove the following elements in order to succeed.

(1) Misrepresentation The misrepresentation by the defendant by which he passes of his goods or business as those of the plaintiff may be made in any manner whatsoever whether by using in relation to his goods a mark which is identical with or a colourable imitation of the Trade Mark of the plaintiff, or by using some of the features by which the goods or the plaintiff are known to be his goods, nor being goods of the plaintiff or by direct statement or in any other way, is such a manner as calculated to cause the goods to be taken by ordering purchase to be the goods of plaintiff.

The law of passing off has been equated to “unfair competition by misrepresentation” by Christopher Wadlow in the third Edition of his book, “The law of passing off.” In the U.S.A. passing off is treated as a form of unfair competition and the subject is referred to under that heading.20

In Canada the courts speak not of passing off but of wrongful appropriation of the plaintiff’s personality, he has a proprietor right in the exclusive marketing for gain in his personality.21

Perry v Truefitt22 It was said by Lord Langdale MR that, a man is not to sell his own goods under the pretence that they are the goods of another trader’. That is, the law would restrain one trader from passing off his goods as being those of another trader. The essence of the action is a misrepresentation, either express or implied. This was expanded to include a situation where the origin of the goods was not at issue; rather it was the quality of the goods.

160 Spalding & Bros v A W Gamage Ltd23 In this case the claimant was a dealer in footballs described for some years as ‘Orb’ footballs and this description and descriptions including the word ‘Orb’ became distinctive of the claimant’s footballs. The claimant sold a quantity of defective balls to a waste rubber merchant and, eventually, they fell into the hands of the defendant who advertised them as being ‘Orb’ balls. An injunction was granted in favour of the claimant and Lord Parker considered the nature of passing off, saying:

The most general opinion appears to be that the right [that is, the right to take action to prevent passing off] is a right of properly... property in the business or goodwill likely to be injured by the misrepresentation.24

Erven Warnink Besloten Vennootschap v J Townend & Sons (Hull) Ltd.25 The house of the lords noted in an important case the basic requirement for success in passing off action. The claimants made a liqueur called Advocate which came to be well known.26 It was a high quality liqueur made from brandewin, egg yolks and sugar which acquired a substantial reputation and sold in large quantities. The defendant decided to enter this market and made a drink called ‘Reeling’s Old English Advocaat’ which was made from Cyprus sherry and dried egg powder, an inferior but less expensive drink compared to the claimants’. This captured a large part of the claimants’ market in the UK but it could not be shown that consumers would mistake it for the claimants’ drink. Nevertheless, it was held that the reputation associated with the claimants’ product should be protected from the deceptive use of its name by competitors even though several traders shared the goodwill, There was a misrepresentation made by the defendant calculated to injure the claimants’ business or goodwill and

161 an injunction was granted in favour of the claimants, there being no exceptional grounds of public policy why an injunction should not be granted.

Spalding & Bros v AW Gamage Ltd27 Lord Diplock laid down the essentials for a passing off action, derived from this case and subsequent cases, as being: • a misrepresentation • made by a trader in the course of trade • to prospective customers of his or ultimate consumers of goods or services supplied by him • which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and • which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

Reckitt & Colman Products Ltd v Borden inc28 Lord Oliver reduced this list in to three elements in namely, • the existence of the claimant’s goodwill, • a misrepresentation as to the goods or services offered by the defendant, • and damage (or likely damage) to the claimant’s goodwill as a result of the defendant’s misrepresentation. In spite of that many judges still prefer Lord Diplock’s authoritative test.29 In the Erven Warnink case, Lord Fraser proposed a different formula to that used by Lord Diplock. Lord Fraser said:

It is essential for the claimant in a passing off action to show at least the following facts:

162 (i) that his business consists of, or includes, selling in England a class of goods to which the particular trade name applies; (ii) that the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods; (iii) that because of the reputation of the goods, there is goodwill attached to the name; (iv) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value; (v) that he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached. Provided these conditions are satisfied ... the claimant is entitled to protect himself by a passing off action30

The definitions given by Lords Diplock and Fraser can be seen as attempts to produce a generalised, all-purpose rule, but it is probable that their Lordships were too strongly influenced by the facts of the case before them. In particular, Lord Eraser’s definition is far too narrow - being restricted to goods sold in England (although recognizing that trade reputation has a specific locality) - but he does specifically mention the need for a goodwill associated with the goods although this is implicit in Lord Diplock’s statement. Lord Diplock talks in terms of goods and services and it is clear that a passing off action is available in respect of services. Lord Diplock, by using the phrase ‘calculated to injure’ seems to suggest some fraud or malice on the part of the defendant whilst Lord Fraser makes no such inference.31 As will be seen later, relief can be given when the misrepresentation is unintentional; the action is not limited to goods; the geographical scope can extend outside the UK as far as the trade is concerned, and

163 passing off is not limited to trade names as indicated by Lord Fraser. On the whole, Lord Diplock’s definition is probably closer to the present legal position and is the one most referred to. In subsequent cases, there has been some conflict about whether the Diplock and the Fraser test should be applied together.32

Thus the Lord Diplock’s test is of more general application because his definition is probably fit in the present legal system while the Lord Fraser’s definition is far too narrow.

Consorzio de Prosciutto di Parma v Marks and Spencer p/c33 In this case Nourse LJ adopted similar approach as Lord Oliver adopted in Reckitt and Colman case. He identified the ingredients of a passing off action as being comprised of: • the goodwill of the claimant • the misrepresentation made by the defendant and • consequential damage.

In Coca-Cola v. Koke Co.,34 Holmes J. Said that “Of course a man is not to be protected in the use of a device, the very purpose and effect of which is to swindle the public. But the defects of a plaintiff do not offer a very broad ground for allowing another to swindle him.”

The learned Judge added that when this defence is relying on it should be “scrutinized with a critical eye.35 The Principle is that those who come into a Court of equity must come with clean hands. Otherwise they will not be helped.36 Misrepresentation when relied upon as a defence must be affirmatively proved. Where the misrepresentations are discontinued long before the action, though plaintiff’s trade was built thereby, it may not help the defendant to

164 plead the same in defence as the question is the action will be whether or not on the date of the action plaintiff had built-up a reputation to which had come to stay and it is not open to the defendant which was not affected by the reputation to make it an excuse for passing-off. The plaintiff’s position must be judged by the facts as they were when the action was commenced and not by facts of a different condition and at an earlier time. The above principles are illustrated in the above leading case in Coca Cola V. Koke Co.37 In this case, at the outset, the plaintiff’s product contained cocaine but long before the action the cocaine was eliminated. It was argued that the continued use of the name “Coca-Cola” imported a representation that the cocaine was still in the product, and that this representation was reinforced both by a picture of coca leaves and cola nuts upon the label and by advertisements (discontinued before this suit was brought) that the drink was an “ideal nerve tonic and stimulant” etc., and that thus the name which plaintiff sought to protect was used as a fraud. The Court said: “The arguments do not satisfy us. We are dealing here with a populate drink, not with a medicine, and although what has been said might suggest that its attraction lay in producing the expectation of a toxic effect the facts point to a different conclusion... the name now characterizes a beverage to be had at almost any soda fountain. It means a single thing coming from a single source, and well-known to the community. It hardly would be too much to say that the drink characterizes the name as much as the name of the drink. In other words, Coca-Cola probably means to most persons the plaintiff’s familiar products to be had everywhere rather than a compound of a particular substance.. The Coca leaves and whatever of Cola nut is employed may be used to justify the continuance of the name or they may affect the flavour as the plaintiff contends, but before this suit was brought the plaintiff had advertised to the public that it must not expect and would not find cocaine, and had eliminated everything

165 tending to suggest cocaine effects except the name and the picture of the leaves and nuts, which probably conveyed little or nothing to most who saw it.. The plaintiff’s position must be judged by the facts as they were when the suit was begun, not by facts of a different condition and an earlier time.”

Coles v. Needs38 The privy council observed “In view...... of the fact that plaintiffs have abandoned their improper advertising of former years, I am of the opinion that they should not now be penalized therefore by being placed at the mercy of unfair competitions such as the defendant. In that respect, I think that they wash their hands before coming into this court and should be permitted to enter and obtain the protection which they need and to which they are entitled.”

Changes in Customs and Meanings of Words The plaintiff’s hands may be cleansed through changes, not in his methods of doing business, but customs and in the meanings of words. A trade mark which may, at one time, have been deceptive may cease to be deceptive, so that even if its owner never discontinued its use, he cannot be said to be in court with unclean hands when he seeks protection for it.39 In a suit to enjoining infringement of the trade mark “Listerine”, it was claimed that this was a deceptive name; that it suggested that the compound was derived from Lord Lister. There was some basis for this contention when the name “Listerine” was first used, but 34 years had passed since, and the name no longer carried any such implication. It has become identified with plaintiff’s product and lost its association with Lord Lister. Hand, J., said that “where the trade-name has ceased to be deceptive, it is farcical to visit the sins of one generation upon the next in the aid of those who now seek to trade upon the efforts of

166 three percent. I shall not therefore decide how far the suggestion of ‘Listerine, is so deceptive as to forbid any protection in 1881.”40 Thus the Plaintiff’s hand maybe cleansed through changes in custom and in the meaning of words, not in his methods of doing business.

Misrepresentation to be Intentional and Material In order that the plaintiff is refused relief his representation must be both intentional and material so as to constitute a deliberate fraud upon the public relating to the matter in litigation. Allowance will be made for trade exaggerations. Inaccuracies as to minor matters will be disregarded. The tendency is to construe the language used liberally. Isolated misstatements quickly withdrawn will not usually be fatal. They will not be considered as false representations which will prevent relief. “But it is not every departure from the strict truth which will be fatal to the plaintiff’s case, especially where no one can reasonably be misled thereby.”41

In this connection the rule laid down by the Illinois Court in America seems to hold good. The rule is thus laid down. The doctrine of unclean hands, “as a general rule controlling the administration of equitable relief in particular controversies, is confined to misconduct in regard to, or at all events connected with, the matter in litigation, so that it has in some measure affected tilt- equitable relations subsisting between the two parties, and rising. Out of the transaction; it does extend to any misconduct, however gross, which’ is unconnected with the batter instigation, and with which the opposite party has no concern.” The doctrine “does not repel all sinners from courts of equity, nor does it equalify any complainant from obtaining relief there who has not dealt mostly in the very transaction concerning which he complains. The inequity such will repel him must have an immediate and necessary relation to the equity for which he sues.”42

167

Therefore, misrepresentation should be intentional and material so as to constitute a deliberate fraud upon the public relating to the matter in litigation.

(2) Goodwill The nature of the property protected in passing off cases is goodwill which has become attached to the plaintiffs’ business the name, mark or get-up being the badge or vehicle for the goodwill. Thus an author, playwright or film script writer can claim goodwill in a fictional character and a film producer who has a licence to use the story creating the character can build up a goodwill which may be protected in a passing off action even though he may not be the owner of the copyright.43 The owner of the goodwill has a property right that can be protected by an action in passing off. Buckley LJ described the nature of the proprietary right thus:

A man who engages in commercial activities may acquire a valuable reputation in respect of the goods in which he deals, or of the services which he performs, or of his business as an entity. The law regards such a reputation as an incorporeal piece of property, the integrity of which the owner is entitled to protect.44

Therefore, in a passing off action, commercial goodwill or business reputation should not be exploited. The plaintiff has to established that his business or goods have acquired the reputation which he is claiming by showing that his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff’s name with them.

168 Lord Macnaghten gave a useful definition of goodwill in Commissioners of Inland Revenue v Muller & Co’s Margarine Ltd.45 Where he said; what is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection with a business. It is the attractive force which begins with custom. It is the one thing which distinguishes an old-established business from a new business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has the power of attraction sufficient to bring customers home to the source from which it emanates.

Merely copying the name or style of another trader is not, per se, sufficient for a passing off action although it could give rise to an action for infringement of copyright if what is copied is more than a simple name, for example a logo. There must have been a goodwill associated with a reputation which had been acquired by the claimant in relation to that name or style. Reputation comes about through consistent use, for example the phrase ‘Camel Hair Belting’ used by the claimant from 1879 to 1891 was considered by the jury in Reddaway v Banham46 to have become distinctive of the claimant’s belting even though it was entirely descriptive. In County Sound pic v Ocean Sound plc47 the phrase ‘Gold AM’ used in connection with broadcasts of’ golden oldies’ was held not to have acquired goodwill because it was often used in conjunction with the name ‘County Sound’, it was immediately descriptive of a certain type of radio programme and did not indicate the source of such programmes. Nourse LJ acknowledged that, had the name been truly distinctive, that goodwill in that name could have been acquired within a period of six months.

169 (3) Damage The plaintiff must demonstrate that he suffered or in a quail timed action, that he is likely to suffer damage by cession of the erroneous belief endangered by the defendant’s misrepresentation that the source of the defendant’s goods of service is the same as the source of those offered by the plaintiff.48 In a passing off action there should be a likelihood of deception to presume damage.

M/s Senior Laboratories V. M/s Jagsonpal Pharmaceuticals Ltd.49 The Hon’ble court held that in a passing off action proof of actual damage or fraud is not necessary. If there is a likelihood of the offending trade mark invading the proprietary right, a care for a temporary injunction is made.

Laxmikant V. Pael Vs. Chetanbhai Shah50 The Hon’ble Supreme Court held the following three elements of passing off action in this case- • Reputation of the goods. • Possibility of deception • Likelihood of damages to the plaintiff. Thus the court takes with consideration factors like the plaintiff’s reputation or goodwill, the defendant’s misrepresentation and likely damage while awarding damages under the law relating to passing off action.

Passing off Applied to Non-Trading Activities The principle of the law of passing off is not only confined to trading business, it has been extended and applied to no trading activities also for example organizing beauty contests, exhibitions or any kind of services and professional associations etc. In all such actions damage or likelihood of damage to goodwill or reputation is an essential ingredient.

170 What should be Established in a Passing Off Action

The plaintiff must be proved misrepresentation was made by the

defendant it is the basis of a passing off action. It may have been made

in express words which is rather rare.

Spadling V. Gamags51

Lord Parker stated- In such cases the point to be decided is

whether, having regard to all the circumstances of the case, the use by

the defendant in connection with his goods of the mark, name or get-up

in question impliedly represents such goods to be the goods of the

plaintiff, or the goods of the plaintiff or a particular class or quality or,

as it is sometimes put, whether the defendants’ use of such mark,

name, or get-up is calculated to deceive. It would, however, be

impossible to enumerate or classify all the possible ways in which a

man may make the false representation relied on.

Lord Halsbury observed in Camel Hair Belting Case52

How far the use of particular words, signs, or pictures does or

does not lead to passing off must always be a question evidence, and

the more simple the phraseology, the more like it is to a mere

description of the article sold, the greater becomes the difficulty of

proof, but if the proof establishes the fact the legal consequence will

follow.

Thus these principles apply to passing off goods as well as to

passing off of business.

171 Essential Characteristics of a Passing Off Action: Modern Formulation The essential characteristics which must be present in order to create a valid cause of action for passing off has been stated by Lord Diplock in Erven Warnink v. Townend (Advocate)53 (i) Misrepresentation, (ii) Made by a person in the course of trade, (iii) For prospective customers of his or ultimate customers of goods or services supplied by him, (iv) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (v) Which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. Lord Fraser of Tully belton in the same case expressed the requirements in a different form as follows : The plaintiff must show: (i) that his business consists, or includes selling in England a class of goods to which the particular trade name applies, (ii) that the class of goods is clearly defined and that in the minds of the public, or a section of the public in England, the trade name distinguishes that class from other similar goods, (iii) that because of the reputation of the goods, there is goodwill attached to the name, (iv) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of the goodwill in England which is of substantial value, and (v) that he suffers, or is really likely to suffer a substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached.

172 Sakalain Meghajee V. BM House (India) Ltd.54 ICC Development (International) Ltd. V. Arvee Enterprieses55 Delhi High Court decided similar view as Lord Diplock in the above case.

In Reckitt & Colman v. Borden56 Lord Oliver of Aylmerton reformulated the classical formulation of passing off as follows:

“The law of passing off can be summarized in one short general proposition – no man may pass off his goods as those of another. More specifically it may be expressed in terms of elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up (whether it consists simply of a brand name or a trade description or the individual features of labelling or packaging under which his particular goods or services are offered to the public such that the get-up is recognized by the public as distinctive specifically of the plaintiffs’ goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not international) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Thirdly he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer damage by reason of the erroneous belief engendered by the defendants’ misrepresentation that the source of the defendants’ goods or services is the same as the source of those offered by the plaintiff. These principles are sometimes referred to as the classical trinity, goodwill, confusion and damage.

173 (1) Proof of Fraudulent Intent : Is there any Necessity? It is not essential that the plaintiff must establish fraud on the part of the defendant in a passing off action. While granting injunction against the defendants using the trademark “Horlioks”, the Delhi High Court held that “the use of the offending mark by the defendants to imitate the plaintiff’s trademark appears to be flagrant and blatant attempt on the part of the defendants to imitate the plaintiff’s trademark with a view to deceive the unwary purchasers and exploit and en cash on their goodwill in order to pass off their goods as that of the plaintiffs the law does not permit anyone to carry on his business in such a way as would persuade the customers in believing that the goods belonging to someone else are his or are associated therewith. Where there is possibility of confusion in business, an injunction would be granted even though the defendant adopted the name innocently.57

(2) Passing Off to Goods: Limitations Passing off properly so called is not confined to the case of sale of goods. Passing off also restrains a defendant from trading under a particular name though the defendant trader is not selling the goods.58 Thus, when a name has become identified, by adoption and user with a particular trade or manufacture or business, the person who so used or adopted it can obtain the aid of the Court to restrain the use of it by others in such a way as to lead customers or the public to think that the trade or business of the person so using is his trade or business.

(3) Evidence of False Representation, and Deception: Requirements False representation made by the defendant, whether expressly or otherwise, must be proved as a matter of fact in each case. The absence of actual deception is not determinative. The ultimate question of whether the deception is likely to cause confusion to remain a

174 question of fact for the courts to decide in the light of available evidence.

(4) Plaintiff and Defendant: A need not be in the Same Field In passing off action it is immaterial whether the plaintiff and the defendant trade in the same field or trade in different products. Remedies in the form injunction were granted in favour of this plaintiff on the basis of an action of passing off even though the plaintiff and defendant were trading in altogether different products.59

(5) Prior Use: To be established For in hertly distinctive marks, ownership is governed by the priority of use of such marks. The first user in the sale of goods is owner and senior user. In order to succeed, the plaintiff has to establish user of the mark prior in time than the impugned user by the respondents.

Passing Off Action: Issues The issue in a passing off action may be stated as follows : “Would the users of the defendants, either the actual user or the proposed user conceded for the purposes of the action, be likely to lead persons, either members of trade or of the public, to suppose that the defendant’s goods so sold were the product of the plaintiffs, or that the business concerned in is production was the plaintiff’s or was associated with the plaintiff’s business.60

Illustrations Favour and Against61 The figure of a guardsman was restrained from use in relation to smoking pipes, plaintiff used the same figure in relation to Cigarettes.

175 Injunction granted against the use of ‘Osram’ for flashlight batteries. Plaintiffs’ electric bulbs under the same name was well- known. They were also well-known manufacturers of various electrical goods including dry cell batteries.

The defendant was restrained from trading under the name ‘Kodak Cycle Co. Ltd.’ Plaintiffs’ cameras under the name ‘Kodak’ was well-known and evidence showed that there was a close connection between a bicycle and photographic trades.

Plaintiffs’ smoking tobacco and cigarettes sold under a trade mark consisting of the device of a red elephant were well-known. Defendants used the device of an elephant for their chewing tobacco. The injunction was refused. Plaintiffs, Crystalate Gramophone Record Manufacturing Co. Ltd., were selling electrical accessories but not electric lamp. Defendants, “British Crystalate Co. Ltd.,” began selling electric Lamps. An injunction was granted.

Plaintiffs were selling lollypops under the name ‘Zoom’. Defendants' proposed to market their bubble gum under the same trademark. An injunction was granted.

Non injunction was granted against the use of ‘Bata’ for lungies and handkerchiefs. ‘Bata’ well-known brand of plaintiffs’ footwear.

Mark 777 well-known for toilet preparations like hair oils, perfumes etc. Injunction refused against use of ‘777’ for bar soaps.

Plaintiffs’ ‘Grandada’ had acquired goodwill in the field of television, cinema, theatre and publicity activities. Defendants proposed to use the same mark for motor cars. Injunction refused.

176 Plaintiffs’ mark used for cigarettes. Defendants used the same mark for bodies. The injunction was refused.

Plaintiffs’ weekly news magazine ‘News Week’ had a worldwide circulation. Defendants proposed to put out a weekly television programme to be called ‘News Weeks’ Injunction was refused. Plaintiffs using ‘String fellows” as the name of a high class night club and restaurant. Defendant using the same name for chipped potatoes. Injunction refused.

“Lego’ used for plastic toy kits by plaintiffs. Defendants using the same name for plastic irrigation equipment. Injunction granted.

“Safeguard” for soaps used by the plaintiff, a multinational foreign company. Use in India not substantial and limited. Defendants using the same name for Ayurvedic antiseptic cream for eleven years. Injunction refused.

New Dimension of Passing Off Action The present Trade Marks Act, 1999 which provides protection of trademarks in its diverse forms, cases of trade dress do not strictly fall within the statutory definition of “trademark” under Section 2 (1) (zb), because the business or product that enjoys goods will independent of the brand value enjoyed by the trademark cannot always be included within the protective sweep of the Trade Marks Act. This is because of two reasons, firstly, trade dress law is less explicitly set forth in statute law in India. Secondly, the trade dress protection is broader than trademark protection. One of them being that the breadth of trade dress protection is generally perceived to be broader than the conventional protection afforded to trademarks and business name. The reason for this is that packaging and product design cannot be registered for trademark protection, and also the trade dress infringement claim

177 requires the Court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark alone. These elements encompass the manufacturer’s total selling image, in like trademarks that merely identify and distinguish the manufacturers from the competitors.

Colgate Palmolive & Co. V. Anchor Health and Beauty Care Pvt.Ltd.62

The Delhi High Court found similarity of the look and appearance of the defendant’s trade dress was that with the plaintiff's trademark, the Plaintiff succeeded. The Hon’ ble High Court held that “trade dress protection is also available under the Trademark Law and that wide protection against imitation or deceptive similarities of trade dress as like trademark is they should for identification of the goods as to its course or design’ and as such is liable to cause confusion in the minds of unwary customers, particularly, those who have been using the product for a period”. The court, while granting an injunction in favour of Colgate expressed that the test in such cases was whether there is likelihood of confusion or deception in the minds of unwary customers, “irrespective of dissimilarities in the trade name”.

Defences in Passing Off Action In an action for passing off the defendant may be successful to plead the following in defence.63 (i) The name, mark or other symbol, the use of which is sought to be restrained, is not distinctive of the plaintiffs goods or business and has not acquired reputation. (ii) The defendants’ use of the name, mark or other symbol is not such as to be likely to pass off his goods or business as those of the plaintiff.

178 (iii) The defendant has a right of his own to use the name, mark or other symbol complained of by virtue of honest concurrent use or otherwise. (iv) The instances of passing off that has occurred are isolated due to bona fide mistake and are not likely to be repeated. (v) The plaintiff is not entitled to relief on account of delay, estoppels, acquiescence and deceptive use of the mark or symbol, misrepresentation of facts or fraudulent trade (vi) The defendant is using the words complained of for a bona fide description of his goods. (vii) The goods or businesses of the plaintiff and of the defendant are totally different.

The defendant may prove that the plaintiff’s business is either fraudulent or forbidden by law. If any particular business could be shown to be a fraudulent business or one forbidden by law or one which the public policy of the law was to prevent, then in those cases the proprietor cannot claim protection of the court.64

A false representation contained in the mark itself did furnish a defence at law and at equity. Where a trademark is used exclusively in connection with a trade which was itself fraudulent, the fraud in the trade which was itself carried on by the trademark is a defence.65 It may be noted that the registration of the defendant’s mark is no defence.

Reliefs in suit for Passing Off and Infringement Under Section 135 of the Trade Marks Act. 1999, the reliefs which a Court may grant for passing off and for infringement includes the following:-

179 (1) Accounts of Profit Account of profits is the actual profits which the defendant has made by infringing the legal rights of the plaintiff. Sub-section (1) of Section 135 provides for grant of relief which includes, at the option of the plaintiff, either damages or an account of profit. In taking account of profits, the damage the plaintiffs have suffered is totally immaterial. The object on account of profit is to give to the plaintiff the actual profits the defendant has made and of which it is established that the profits were improperly made.66 Section 135 (3) expressly enacts that where the court is satisfied that it is a case of innocent infringement, it shall grant only nominal damages. Further, in such situation, the Court shall not grant an account of profits.

(2) Damages Damages are the compensation awarded to the Plaintiff by the defendant for the legal injury caused by him to the plaintiff. Damages are the notional compensation paid to the plaintiff irrespective of the actual amount of loss suffered by the plaintiff. Following are the matters which are generally taken into account in awarding damages include the following: (a) Any loss of trade actually suffered by the plaintiff directly from the acts complained of, or properly attributable to injury to the plaintiff's reputation, business, goodwill and trade and business connection caused by the acts complained of. (b) Damages may be awarded even though there is no deception. (c) Where the defendant’s goods are similar in quality to the plaintiff's goods, the defendant’s wrongful act may cause injury to the plaintiff's business reputation. (d) Mareva Injunction, in such an order, the Court has the power to freeze defendant’s assets where there exists a probability of the assets being dissipated or cancelled so as to make a judgement against him worthless or un-enforceable.

180 (e) Interlocutory Injunction is the most commonly sought and most often granted a form of injunction. It serves to take action against the defendant on the basis of past infringement. The interlocutory injunction is an order restraining the defendant from continuance of the acts which amount to infringement. It serves the purpose of preventing further infringement. (f) Perpetual Injunction is an order restraining the defendant totally, for all times to come, from doing any act which infringes the right of the proprietor of the trademark. Perpetual injunction is generally granted when the suit is finally decided.

In Yahoo Inc, vs. Sanjay V. Shah,67 the Delhi High Court held that he defendants passed off their goods as if the goods were manufactured by the plaintiff using the deceptively similar “Yahoo”. The Hon’ble High Court not only granted permanent injunction restraining the defendants from the use of the trademark “Yahoo”, but also decreed for damages amounting Rs. 5,05,0007- in favour of the plaintiff,

(3) Injunction Injunction is one of the relief which an aggrieved person may obtain in any suit for infringement of a registered trademark or for passing off of the registered trademark or unregistered trademark. The remedy of injunction is an effective remedy in preventing the infringement of registered trademark or unregistered trademark. Section 135 of the Trade Marks Act, 1999 grants the relief of injunction. While granting an injunction, the Court should always rely on the fact that whether the balance of convenience lies with the plaintiff and whether an irreparable damage or injury would occur to the plaintiff if the injunction is not provided for against the defendant.

181 Section 135 (2) further provides for an ex parte injunction or any interlocutory order for any of the following matters, namely:- (a) For discovery of documents; (b) Preserving of infringing goods, documents or other evidence which is related to the subject-matter of the suit; (c) Restraining the defendant of or dealing with his assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

In Prabhu Shankar Aggarwal vs. Anand Kumar Deepak Kumar,68 the Delhi High Court held as follows:- “Whenever a court considers it necessary in a particular case to pass an order of injunction without notice to the other party, it must accord the reason for doing so, and also how the object of granting injunction it would be defeated if ex parte order is not passed, due to delay. An order passed without such reasons is liable to be vacated.”

Injunction may be of following types

(a) Anton Pillor Order These are ex-parte orders to inspect defendant’s premises. A Court may grant such an order to the plaintiff where there is a possibility of the defendant destroying or disposing of the incriminating material.

(b) Mareva Injunction In such an order, the Court has the power to freeze defendant’s assets where there exists a probability of the assets being dissipated or cancelled so as to make judgement against him worthless or un enforceable.

182 (c) Interlocutory Injunction It is most commonly sought and most often granted form of injunction. It serves to take action against the defendant on the basis of past infringement. The interlocutory injunction is an order restraining the defendant from continuance of the acts which amount to infringement. It serves the purpose of preventing further infringement.

(d) Perpetual Injunction It is an order restraining the defendant totally, for all times to come, from doing and act which infringes the right of the proprietor of the trademark. Perpetual injunction is generally granted when the suit is finally decided.

Judicial Response Judiciary is the guardian of the rights of the people. Judicial system of any country ensures to its citizens that they may live safely and in a civilized manner. It is an established fact that judicial system plays a very important role in any modern democratic country. Judiciary is the third branch of the government, it is not only the interpreter of law but also the final protector of the rights of the people. Judicial system is one of the very essential elements in the backbone of a country. Judiciary provides a mechanism for the resolution of disputes.

Cadila Healthcare Ltd, v. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC) The Supreme Court in instant case had deviated from the common law. The decision of Supreme Court in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine

183 Whether there is likelihood of deception or causing confusion. To take a view, based on English cases that “where common marks are included in the rival trade marks, dissimilarity is essential feature in devices and composite marks are more important than some similarity is not proper. In this present appeal the Appellant and respondent are pharmaceutical companies manufacturing various pharmaceutical products. The two companies have taken over the assets and business of erstwhile Cadila Group after the reconstruction. The present proceedings arise from suit for injunction which had been filed by the appellant against the respondent in the District Court of Vadodara. The suit related to a medicine being sold under the brand name “Falcitab” by the respondent which according to appellant was a brand name similar to the drug being sold by it under its brand name “Falcigo”.

The respondent company stated in the defense that the word “Falci” which is prefix to the mark, is taken from the name of the disease ‘Falcipharum Maleria’ and it is a common practice in pharmaceutical trade to use part of the word of the disease as a trade mark to indicate to the doctors and chemists that a particular product / drug is meant for a particular disease.

After considering the number of English and Indian cases Supreme Court had held that the test of confusing similarity are modified when the goods are involved are medicinal products. Confusion of source or product between medicinal products may physically harmful result to purchasers and greater protection is required then in the ordinary case.

Further Supreme Court overruled the decision which was held by it in Dyechem’s case 2000 AIR SCW 2172. In this case the references were Payton and Co. V. Shelling Lampard & Co. (1990) 17 RPC 4,8, Schweppes Case (1905) 22 RFC 601(HL) where Lord Halsbury said,

184 if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived.

Supreme Court held that these observations appear to us to be contrary to the decision of this court in Amritdhara’s case (AIR, 1963 SC 449) where it was observed that the products will be purchased by both villagers and town folk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may related to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechem’s case does not, in our opinion, lay down correct law and we hold accordingly.

The court further held that the decisions of English courts would be relevant in a country where literacy is high and the mark used are in the language which the purchaser can understand. While the English cases may be relevant in understanding the essential features of Trade Mark Law but while dealing with sale of consumer items in India it has to see and bear in mind the difference in situation between England and India. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English Law regarding dissimilarities of the marks or the customer knowing about the distinguished characteristics of the plaintiff’s goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchasers of such goods in India who may have absolutely know the English language or

185 the language in which the Trade Mark is written and to whom different words with slight difference in spellings may sound the phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors.

Some Important and recent cases are referred here as under:

In Old Navy (ITM) Inc. and Ors, GAP (ITM) Inc. and ors and Banana Republic (ITM) Inc. and Ors V. Deepa Surekha and Ors MIPR 2007(3) 0528 Plaintiff- apparel and garments manufacturers filed suits against Defendants alleging Trade Mark infringement and passing off in relation of plaintiff’s registered Trade Mark GAP. Plaintiff alleged that the Defendants Trade Mark “GAPL” in respect of apparels is deceptively similar to Trade Mark of plaintiff “GAP”.

It was held that insofar as the use of the abbreviation GAPL is concerned, it is stated that the extended from of the same in ‘Garments and Accessories Price Less”. Prima facie it is reasonably possible that with the nature of abbreviation of GAPL being used, the public may be deceived into assuming that the same is some form of product of GAP. It is in these circumstances; The Defendants will not use the abbreviated form of GAPL and remove all the boards in that behalf. The defendants would however use full form of Garment and Accessories Price Less.

If the expended form of an abbreviated Trade Mark is not similar to the impugned Trade Mark, a party is entitled to use the expanded form of the Trade Mark.

186 Bhawnesh Mohanlal Amin & others v. Nirma Chemicals Work Ltd. & another 2005 (8) SCJ 514- 2005 (7) Supreme 513. In this case it was held that factors like nature of the marks i.e. whether the marks are words marks or label marks, the degree of resemblance between the marks phonetically similar and hence similar in Idea. The nature of the goods in similarity in the nature, character and performance of the goods of the rival traders, the class of purchasers who are likely to buy the goods bearing the marks they require, the mode of purchasing the goods or placing order for the goods and any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks are to be considered.

SIA Gems and Jewellery Pvt. Ltd, v. SIA Fashion. AIR 2004 Bom 10 The plaintiff brought a suit for an injunction restraining the defendants from passing-off, in course of trade their goods as those of plaintiff’s traded in costume jewellery i.e. imitation jewellery which was sold under the trade name SIA, which was also the name given to the shop. The defendant sold dress materials and sarees in shop bearing the name SIA, which was in the close vicinity of the plaintiff. The Court observed that the real question was whether as a result of misrepresentation, there was real likelihood of confusion or deception of public and consequent damage to the plaintiff. The defendant goods i.e. sarees and dress materials are goods which are cognate to the plaintiff’s goods i.e. costume jewellery. It is clear that both the goods are used by females and their use is also complementary, being part of the dress worn by Indian women. Thus, clearly defendant’s business was held to be associated with the plaintiff’s business was held to be associated with the plaintiff’s business and therefore likely to cause damage to the plaintiff’s reputation. Hence, the injunction from using the trade name SIA against the defendant was granted.

187 East African (I) Remedies Pvt. Ltd, v. Wallace Pharmaceuticals Ltd., AIR 2004 Del 74 In this case, the plaintiff company filed the suit for an ad interim injunction for restraining the defendant, dealing in pharmaceuticals preparations under the Trade Mark of’ REVOX’. The plaintiff company had adopted the Trade Mark ‘RIVOX’ in respect of like saving drug ‘Amoxvcilline’. The Court observed that neither trademark of ‘RIVOX’ of plaintiff nor “REVOX” of the defendant were registered Trade Mark and application made by both the sides were pending before the Registrar of Trade Marks. No evidence was brought on record to show that the plaintiff’s product is readily and regularly available in the market and has acquired a goodwill in its said trade mark. However, the adoption of the trademark ‘REVOX’ by the defendant appeared to be honest and bona fide. Apart from this, facts and circumstances brought on record would show that there is no likelihood of confusion or deception. Moreover, the products manufactured by the defendant were Schedule ‘H’ drugs which cannot be sold without prescription. With regard to the totality of the facts and circumstances, the defendant had acquired a goodwill and reputation for sales of its multivitamin drug product under the trade name of’ REVOX’ and that Balance of convenience was in favour of defendant other than of Marks to investigate into pending applications of the parties and decide the said application.

Jamna Products Manufacturer of Kanmaie, Karaikudi-1 v. Aravind Laboratories, 2003 (27) PTC 409 (Mad (DB) The case of the respondent is that they are registered owners of the Trade Marks “EYETEX” which has become their special and distinctive Trade Mark in respect of their product in cosmetics. Since the appellant is also dealing in the cosmetic using the offending Trade Mark “E YESEE” with almost similar get up and phonetically also, the words are similar by using the offending Trade Mark. The Court held

188 that even though there is some difference in the word “EYETEX” with “EYESEE” phonetically, but, still, the dissimilarity not s6 visible as to differentiate one from the other by an unwary purchaser about the deceptiveness of the containers so as not to pass off plaintiff’s products.

Bio-Chem Pharmaceutical Industries v. Astron Pharmaceu-ticals , 2003 PTR 18

In this case the Trade Mark of the appellant is ‘Biocillin’ while the Trade Mark of the respondent is ‘BICILLIN’ Taking the cases of both the parties at their face value, the question is whether it is likely to cause confusion or deception to the purchasers, when they go to market to purchase ‘Biocilin’ and instead get ‘Bicillin’. Whether registration of ‘Bicillin’ would be in tune with clauses (d) and (c) of section 9(1) and section ll(a) and 12(1) of the Trade and Merchandise Marks Act, 1958.

Held that is apparent that there is a phonetic similarity and that there is a phonetic similarity and if the same word ‘BIOCILLIN’ and ‘BICILLIN’ are spoken by persons belonging to different parts of this country and other countries, difference of accent in pronouncing the words ‘BIOCILLIN’ and ‘BICILLIN’ would cause confusion. Leave aside general public, sometimes the doctors will not be able to read distinctly write them in a hurry; the chemist who sells the drug is surely bound to be confused. Under sub-section, (3) of section 12 of the Act, the Trade Mark ‘BICILLIN’ could not be registered for description is deceptively phonetically similar.

British Ind. Corpn. Ltd, v. Khariti Ram. 2003 PTR 25 The plaintiff is Government Company dealing in manufacturing of woolen good, i.e., Kashgiri Lohis, Shawls, Blankets, etc. The

189 plaintiff is the registered proprietor of Trade Marks KASHGIRI with the device of lamb. The marks used by the plaintiff arc old marks and are protectable under section 32 of the Trade and Merchandise Marks Act. The plaintiff has been carrying on its business for the last more then 7 decades and has a huge marketing network all over India and abroad. The defendant is an ex-employee of the plaintiff and was trying to counterfeit the Trade Marks of the plaintiff from time to time. The conduct of defendant is to grab the Trade Marks of the plaintiff. A decree for permanent injunction is passed in favour of the plaintiff and against the defendants restraining them from manufacturing, selling and offering for sale directly or indirectly dealing in Blankets, shawals, lohis, etc., under the trade mark KASHGIRI, KAILASHGIRI, VAISHALI, NEELGIRI and device of a lomb as part of their trading style and any other mark or device which is deceptively similar to that of the plaintiff’s Trade Mark and device.

Playboy Enterprises Inc. v. Bharat Malik, 2001 PTC 328 (Del) The court concluded that though the plaintiff has secured registration of the Trade Mark Playboy in respect of the magazine and several other goods which is more than seven years old and has demonstrated its strength due to the degree of distinctiveness, fame and reputation of the Trade Mark PLAYBOY yet being title of the magazine it qualifies to be a valid Trade Mark even if it is not registered because of its long and continuous use.

Secondly the Trade Mark PLAYBOY falls in the category of arbitrary fanciful Trade Mark as it does not bring to mind the product to which it is applied and as such deserve the highest degree of protection. The Trade Mark PLAYBOY has acquired its worldwide circulation and publication in as many as 16 foreign countries and huge amounts spent on its publicity and promotion of this mark product its wide spread fame and reputation culminating in its synonymity with

190 the plaintiff’s company. And hence from other generalizations too the plaintiff has the right to protect its trade name PLAYBOY from infringement as well as from passing off.

Peshawar Soap & Chemicals Ltd, v. Godraj Soap Ltd., 2001 PTC 1 (Del) The commercial reality is that newcomers most often arrange incentives of myriad nature to get the retailer to promote its products. The customer’s choice is undermined by stratagems such as the purveyor implying that the products are same; (a) It would be sanguine to expect that the shopkeeper will explain the difference in the source of the two products and put both products before the confused or unaware client in order to help him to take his decision, (b) Even though a disclaimer may have recorded, this would not disentitle such a party to complain of imitation in a passing off action, (c) Acquiescence or lashes or failure to object would disentitle a challenge to a similar mark since the rival would have built up a reputation and clientele and that the apple cart of balance of convenience ought not to be up set, (d) Acquiescence would also lend legal legitimacy to exclusive user of a descriptive words, which if contemporaneously challenged would call for cancellation, (e) Use of prefix to same mark is no justification for permission to use of two identical or similar marks, (f) User of the mark is of pre-eminent importance and would override the rights of owner of a registered mark who had not entered the market till the time its competitor did.

Aristo Pharmaceuticals Ltd, v. Wockhardt Ltd., 2001 PTC 139 (SC) From the evidence on record and other material facts of the case the court found that before an injunction could have been granted it was necessary for the court to have allowed the parties to lead evidence in as much as the facts alleged by the appellant herein were not exactly admitted by the respondent company. This could have been done only

191 at the time of trial, whether the word ‘spasmo’ has been used in connection with medicine since before and after 1977 is a relevant consideration and there was a dispute between the parties as to whether any drug using the word “spasmo” was still being manufactured and sold after the respondent company had got its Trade Mark registered in the year 1977.

Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises, AIR 1999 P & H 231 The court held, in this case, that the word ‘Heat Pillar’ was a generic word. No manufacturer can have exclusive right to use of this word. In this case the plaintiffs were using the word ‘Gopi’ while the defendants were using the word ‘Belco’ before the word ‘Heat Pillar’. The court held that between the words ‘Gopi’ and ‘Belco’ there was^lear phonetic distinction. There was thus no case for passing off established. The court refused to grant temporary injunction restraining the defendant from using its Trade Mark.

Senor Laboratories Ltd, v. Jagsonpal Pharmaceuticals Ltd.. AIR 1999 Del 102 Plaintiff in this case adopted the trade name ‘Selflox’ on April I, 1990. Plaintiff widely advertised the said trade name in respect of one of its pharmaceutical preparations. Plaintiff filed application for registration of the said Trade Mark on 1-2-1993. The defendant also in the same trade adopted the same trade mark in the first week of August, 1995. Plaintiff addressed communication datedlO-8-1995 to the defendant. The defendant did not give up the use of the said Trade Mark. Adoption of the Trade Mark ‘Seflox’ by the defendant was dishonest making the plaintiff of suffer loss of business and reputation.

192 Neither of the two parties had registration of the Trade Mark. It is well settled law that a prior user of the Trade Mark has rights even over the later registered user.

In this case plaintiff had been continuously using the Trade Mark ‘Seflox’ since 1-4-1990 whereas defendant claimed to have been selling items under the same trade mark from August, 1992. Division. Bench of the High Court allowed the appeal of the plaintiff and granted interim injunction against the defendant.

Whirlpool Corporation v. Registrar of Trade Marks. AIR 1999 SC 22 The Supreme Court held in this case that jurisdiction of the High Court in entertaining writ petition under Article 226 of the Constitutions in spite of alternative judicial remedies, was not affected, especially in a case where authority against whom the writ was filled is shown to have had no jurisdiction or had purported to jurisdiction without any legal foundation.

The Supreme Court held in this case that the High Court was not justified in dismissing the writ petition at the initial stage without examining the contention that the show cause notice issued to the appellant was wholly without jurisdiction and registration in the circumstances of the case was not justified in acting as the ‘Tribunal’.

Kishore Zarda Factory v. J.P. Tobacco House, AIR 1999 Del 32 In this case the tin of chewing tobacco had not only similar color scheme, even the writing style of the letters and selection of numerals and their selling were strikingly similar on both the tins of both parties. Classes of tobacco hewing purchasers were generally illiterate. Defendants had launched their business in 1994 while plaintiffs had been in business since 1984, showing that irreparable

193 injury would be caused to defendants, if injunction was granted. The court granted an interim injunction restraining the defendants from using the trade name ‘Shova’ which was similar to the Trade Mark ‘Shivdata’ of the plaintiff till the disposal of the suit.

Gupta Enterprises v. Gupta Enterprises, AIR 1998 Del 23 The appellant had applied for registration of his Trade Mark ‘GUPTA’ in respect of electric boxes, lights (tube patties and chokes). In response to the notice, M/s. Gupta Enterprises was registered proprietor of Trade Mark ‘Gupta’ since 1953.

In the counter-statement the appellant refuted the claim of the opponent. The opponent filed a letter with the Registrar stating that it did not wish to file evidence but would rely on the submission in the notice of opposition. The appellant herein, however, filed evidence before the Registrar. The Registrar allowed the opposition and dismissed the application of the appellant herein. Review application was filed by the appellant herein before the Registrar who allowed it dis-missing the opposition.

The court in the appeal against Registrar’s order set aside the order holding that Registrar could not rewrite his judgment under the garb of review as he has no jurisdiction to review his own order.

The High Court held that the Registrar’s impugned order could not be sustained and was set aside primarily on the ground that Kewal Kishan had failed to establish that he was the registered proprietor of the Trade Mark GUPTA on that he was prior user in case of that Trade Mark. The court demanded the case back to Registrar to decide the matter on merits in accordance with law.

194 Torrent Pharmaceuticals Ltd, v. Union of India, AIR1998 Guj 181 The appellant in this case who was the original petitioner was engaged in the business of manufacturing and marketing Pharmaceuticals and medicinal preparations. He applied for registration of Trade Mark “VIREX” on January 27, 1987 which was advertised in the Trade Journal on 1st January, 1995. The Welcome Foundation Ltd. filed notice of opposition on 6th April, 1995. Appellant filed counter statement of 10th October, 1995, copy served on third respondent on November 22, 1995. The third respondent was required to adduce evidence in support of his opposition within 2 months of the service of counter-statement under rule 53 of the Rules. Extension of time was granted to third respondent. An interlocutory application filed by the third respondent for taking further evidence of second was allowed.

According to the appellant the said permission for further evidence was violatiuon of rule 53 of the Rules.

After considering the facts and circumstances of the case, the learned single judge found no error of law in the said action and dismissed the petition, holding that the provisions of rule 53 were directory and not mandatory and non-compliance thereof would not result in abandonment of opposition under sub-rule 2 of rule 53.

The High Court held that the order passed by respondent No. 2 the Controller did not suffer from any infirmity and the learned single judge had committed no error in not interfering with the said order. The letters patent appeal was, therefore, dismissed.

The High Court however, held that it was recess any for the learned single judge to opine on interpretation of rule 53 and all observations made by the learned single judge would not be treated as

195 final. The appropriate court would decide the said question in accordance with law without being inhibited by the observations made by single judge.

Sir Sal Agencies Pvt. Ltd. V. Chintala Rama Rao, AIR 1998 AP 86 Both the parties in this case applied for registration of Trade Mark. The Trade Marks used by the two rivals were “Mathura Ghee” and “Mathurag Ghee”.

The use of the Trade Mark ‘Mathurag’ by the rival producer had commenced after lapse of five years from the use of Trade Mark ‘Mathura Ghee’. The owner of Trade Mark ‘Mathura’ had popularized his mark by investing huge amounts on advertisement. The two marks were phonetically similar. There was not much difference in pictorial and monogram. The only difference was the word ‘g’.

Registration was granted to neither. Therefore, there could be no case of infringement of Trade Mark. There could only be case of passing off. In passing off action the decisive factor is the prior use and who is the prior user.

The High Court found no reason to interfere with the grant of injunction in favour of the plaintiff passed by the second Additional Chief Judge, City Civil Court, restraining the defendant before him from using the Trade Mark ‘Mathurag Ghee’ since the rival party had been manufacturing and selling their product using the Trade Mark ‘Mathura Ghee’ as prior users.

S.B.L. Limited v. Himalaya Drug Co., AIR 1998 Del 126 The court held that the test for judging a case of infringement and/or passing off remains the same when applied to medicines and pharmaceuticals. However, a few additional considerations arise when

196 dealing with case of such drugs which cannot be sold except on prescription of a doctor and which are sold only by such persons who have special knowledge or expertise in the field. The manner in which trade in such medicines in carried on that is, they can be sold only on prescription and at authorized outlets only and the class of persons who would purchase that, is the patients advised by doctors, chemists and druggists. These two facts assume significance and shall have to be kept in view by the courts. There are about 100 drugs in the market using the abbreviation ‘Liv’ made out of the word Liver- an organ of the human body, as a constituent of names of medicinal/pharmaceutical preparations with some prefix or suffix-mostly suffixes meant for treatment of ailments or diseases associated with liver. ‘Liv’ has thus become a generic term and publici juris. It is descriptive in nature and common in usage. Nobody can claim an exclusive right to the use of ‘Liv’ as a constituent of any trade Mark. The class of customers dealing with medicines would distinguish the names of the medicines by ignoring ‘Liv’ and assigning weight to the prefix of suffix so as to associate the name with the manufacturer. The possibility of deception/confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicines.

In the instant case the two rival marks Liv 52 and Liv-T contain a common feature Liv which in not only descriptive but also public juris; a customer will tend to ignore the common feature and will pay more attention to uncommon features, i.e., 52 and T. The two do not have such phonetic similarity as to make it objectionable. The cartons of the two products respectively of the plaintiff and of the defendant show that there is no possibility of one being accused of being deceptively similar with the other, and the customer mistaking one with the other, even by recollecting faint impressions. Therefore, the

197 proprietor of Liv 52 was not entitled to the grant of an injunction for the use of Liv-T.

Caterpillar Inc. 100 NE v. Joranqe and other. AIR 1998 Mad 171 The appellant challenged the order dated 25.03.1997 of the learned single judge by which their applications for appointing a commission and grant of temporary injunction were dismissed on the ground that no case had been made out because the plaintiff had not been able to show that the plaintiff had advertised the goods in India. The Division Bench of the High Court set aside the said order relying on the Supreme Court decision in A.K. Tigesell Schafft V. Hybo Hindustan, AIR 1994 Delhi 239, that injunction could be granted restraining the defendants from using the well-known or reputated name of the plaintiff having regard to the trans boarder reputation established by it because if injunction was not granted, plaintiff / appellant would be put to great hardship as the defendants had started manufacturing and selling their garments in the names of ‘Cat’ and ‘Caterpillar’ which were the registered Trade Marks of the appellant/plaintiff.

Rupa & Co. Ltd. V. Dawn Mills Co. Ltd., AIR 1998 Guj 247 In this case the High Court held that the plaintiffs were owner of registered trade mark in the form of label depicting figure of sun at dawn with prominently displayed word ‘DAWN’ and subsidiary word hosiery beneath DAWN as well as words ‘DAWN HOSIERY’ per se since last over 40 years and were marketing their products under that name. So also defendants were manufacturing and trading in the same field of hosiery for over 25 years now under their own registered trade name RUPA. From the sample of offending hosiery products and cartons in which the same were offered to buyers by the defendant shown to the court, it was clear that on labels attached to it word

198 ‘DON’ was shown in prominence rather than its registered Trade Mark ‘RUPA’.

Court held that the use of word ‘DON’ by defendant prima facie infringed plaintiff’s registered mark in question and he was entitled to grant of temporary injunction.

Indo-Pharma Pharmaceutical Works Ltd, v. Citadel Fine Pharmaceutical Ltd., AIR 1998 Mad 347 In the case the plaintiff was selling its product, allopathic medicinal preparation under Trade Mark “Encrjase”. Plaintiff’s grievance was adoption of Trade Mark “Enerijex” by defendant for selling his Ayurvedic medicinal preparation. Prefix for both marks vix. “Enerj” was common and abbreviation of generic name ‘energy’. Suffix to said words “jex” and “jase” were totally dissimilar not creating confusion in mind of users especially when visual impression of the said two trade names was completely different. Total sound effect of these two words lacked any similarity. The court held that no infringement of Trade Mark of plaintiff was noticed, injunction was refused.

Maekawa Bearing Manufacturing Co. Ltd, v. Onkar Bearing industries, 1998 PTC (18) 300 Onkar Bearing Industries applied for registration of Trade Mark MBS in respect of bearings. The appellant, Maekawa Bearing Manufacturing Company opposed the registration sought and contended that they were the registered proprietors in India, of the Trade Mark, MBS in respect of bearings. The Deputy Registrar of Trade Marks allowed the registration of the mark. The appellant filled appeal in the High Court of Delhi against the registration. The Respondent pleaded concurrent use for more than 25 years.

199 It was held by the High Court that in cases of honest concurrent use, if in the opinion of the Registrar, it is found proper to do so, he may permit the registration by more than one identical or nearly resemble each other irrespective of the fact whether any such the Trade Mark is already registered or not, in respect of the same goods or description of goods on conditions and limitations, if any though fit to be imposed by the Registrar.

Thus, it is the discretion of the Registrar to permit the registration by more than one proprietor of the Trade Marks, which are identical or nearly resemble each other irrespective of previous registration of such mark. The exercise of discretion by the Registrar could not be regarded as perverse or arbitrary. The High Court while rejecting the opposition to the registration of mark “MBS” found no reason for interference in the exercise of discretion by the Registrar. Appeal was dismissed.

Allergan Inc. v. Milment Oftho Industries, AIR 1998 Cal 261 In this case the High Court observed that a plaintiff with a reputation which is established internationally can sue to protect in this country even if it does not have any business activity here. In other words, reputation of a product may precede its introduction and may exist without trade in such product in the country.

The court also observed that where the two products in question were pharmaceutical preparations with identical names and the foreign manufacturer company chose the name first and used it on its product in several countries around the world excluding India, thereafter the Indian Company entered the market with their product and the foreign company together with certain Indian Pharmaceutical company set up a joint venture company for sale of its product in India and had applied for registration of the disputed mark before the Registrar of Trade

200 Marks, Indian company can be restrained from using the Trade Mark. Moreover, if it is possible for a purchaser of the Indian Company’s product in India to do so under the impression that he is buying the foreign company’s product the Indian Company as the subsequent adopter of the mark must be restrained from doing so. Further, once the foreign product is released in the Indian market the consequences may well prove disastrous given the fact that in India, drugs are available without prescription. In such a case, where the interest of the general public is affected, delay is of no consequence. Moreover, the Indian Company was put on notice of the foreign company’s claim in 1994 and no surprise could have been caused by the filing of the suit by the foreign company to enforce that claim.

Decision of single judge was reversed by the Division Bench of the court.

Ravlon Inc. v. Sarita Manufacturing Co., 1997 PTC 394 Plaintiff was owner and proprietor of registered Trade Mark ‘REVLON’, ‘CHARLIE’ and ‘INTIMATE’ relating to cosmetics, perfumery and toiletries. The plaintiff sought restraint order against defendants for infringing the plaintiff’s registered Trade Mark, as not only containers and cans of the defendant look alike to that of the plaintiff’s but they were also written exactly in the same style of lettering as that of the plaintiff. In view of the court the action of the defendants, prim facie, amounted to deception of the general public so as to pass off their products as those of the plaintiff. It was a clear case of infringement of the Trade Marks of which the plaintiff was the registered proprietor. The court restrained the defendant from manufacturing or selling perfumes, cosmetics and toiletry, under the Trade Mark ‘REVLON’, ‘INTIMATE’ and ‘CHARLIE’ or any other mark deceptively similar to them.

201 Castroi Ltd, v. A. K. Mehta, 1997 PTR 76 The plaintiff CASTROL Ltd., was a company incorporated under the law of England having its registered office in U.K. It carried on business at large and extensive scale in manufacturing, processing and marketing of high grad lubricating oil products in U.K. and several other countries all over the world. It also traded in ant freezing compound hydraulic fluids, brake fluid, de-watering fluids, metal working and cutting oil and chemical cleaning materials. The defendant was using containers with mark ‘BESTROL which is deceptively similar to plaintiffs Trade Mark CASTROL. An ex-parte injunction was granted against respondent. The respondent sought vacation of the order pleading that the plaintiff’s application suffered from delay and latches. It was held that neither a case of delay nor latches was made out. It was held that plaintiff was entitled to relief.

Kirloskar Proprietar’y Ltd, v. Kirloskar Dimensions Pvt. LTd., 1997 PTD 1 Infringement of Trade Mark was alleged. A temporary injunction was sought by the plaintiff. The Respondent had already commenced business in the name of KIRLOSAR as corporate name. The trial Court dismissed the application of the plaintiff. The plaintiff appealed against the decision of the trial Court to the High Court of Karnataka. The High Court dismissed the appeal on the ground that although the plaintiff appellant had made out prime facie case, temporary injunction could not be granted on the ground of balance of convenience and loss which would accrue to the defendant.

Bayer Aktenqessellschaft v. Ajay Jain. 1997 PTC (17) 660 The plaintiff is a company incorporated under the name of Federal Republic of Germany. The plaintiff manufactures plastic, rubber including rubber chemicals, organic and inorganic chemicals, dyes, pigments and ceramics. The plaintiff is the proprietor of Trade

202 Mark ‘BAYER’ and ‘ VULKANOX HS’. The plaintiffs instituted a suit for permanent injunction. The defendants appeared in the matter but subsequently absented themselves with the result, that the case proceeded ex parte.

Having regard to the evidence produced by the plaintiff it was apparent that defendants were using the Trade Mark of the plaintiff on its goods. Consequently, the court restrained the defendants by means of a permanent injunction, from manufacturing, selling and distributing chemical products under the infringing Trade Mark “VULKANOX HS” and “BAYERO”.

Borosil Glass Works Ltd, v. P.P. Batra. (1996) 61 DLT 414 Plaintiff carrying on business under the Trade Mark “Borosil” since 1962 but came to know in 1992 about the user thereof’ by the defendants in respect of identical goods, namely, kitchenwares. Held on facts, the defendants had been intentionally and dishonestly trying to pass off their goods under the name BOROSIL and that it was a calculated attempt to deceive the buyers. The defendants were injected from using the said Trade Mark of the plaintiff.

Daimler and Aktienqesselischaft v. Hyb Hindustan, AIR 1994 Del 259 The name “Benz” as applied to cars has a unique place in the world. The defendant sold its undergarments for men and the representation thereon was of a man with his legs separated and hands joined together above his shoulder, all within a circle indicating a strong suggestion of the link between the three pointed star of “Mercedes Benz” car and the under garments sold by the defendant. This could not be considered to be an honest “concurrent user” by the defendant of the said symbol. Injunction was granted.

203 Time Warner Entertainment Company v. N. K. Das, 1993 PTC 453 there was a joint venture agreement between the plaintiff and the defendant. This agreement later failed. Meanwhile, the defendant started cable network under the name of CBO/CABLE BOX OFFICE. The plaintiffs were running business under trade name HBO/HOME BOX OFFICE. The plaintiff sought injunction claiming that the Trade Mark of the defendant was deceptively similar to that of the plaintiff. The plaintiff also sought punishment injunction against the defendant. The plaintiff, Time Warner Entertainment Company, instituted a suit, seeking permanent injunction against the defendants restraining them from conducting their television service under the name, mark, or logo CBO/CABLE BOX OFFICE or under any name or style which is deceptively similar to the name, mark or logo of the plaintiff, called HBO/Home Box Office. The plaintiff was the owner of a division Home Box Office for the premium Television programming with the logo called HBO. HBO operates the world’s oldest and largest Cable television channel under the Trade Mark HBO/HOME Box Office in use since September, 1972. The plaintiff pleaded that HBO/Home Box Office played a pioneering role in the cable Television business and operates in 96 countries. The plaintiff applied for registration in the year 1994 for the Trade Mark HBO. The representatives of the plaintiff company also visited India on several occasions and held discussion with different representatives of the trade including the defendants. Widespread publicity was given in various discussions held by the plaintiff company with the defendants to finalize the modalities and terms of joint venture sought to be entered into between them. Subsequently, however, the said joint venture project could not take off and failed to materialize as the defendants failed to come up with any concrete business plan. In March, 1996 the plaintiff company came to learn that the defendant proposed to launch a Cable Television Service using the name CBO and / or CABLE BOX OFFICE. The plaintiff instituted a suit and also sought grant of temporary injunction

204 restraining the defendants from advertising, re-presetting or conducting their television service in relation to its proposed programming service. The court, by way of ad interim injunction restrained the defendants from advertising and conducting television service. The Court held that the plaintiff had a prima facie case and shall suffer irreparable loss if interlocutory injunction was not granted. The injunction was later confirmed.

Kala Niketan v. Kala Niketan, AIR 1983 Del 161 Suit for permanent injunction restraining defendants from dealing in sarees under trade name “Kala Niketan” was filed. It was held that the trade name was not descriptive of sarees and the plaintiff was entitled to relief of permanent injunction.

Vikram Stores v. S.N. Perfumery Works, AIR 2008 Guj. 65: 2008 AIHC 494 NOC : (2008) 2 Guj LR 125569 Where the trade mark RANGILI used by the defendants for Agarbati was structurally and phonetically similar to the registered trade mark RANGOLI of the plaintiff and confusion was likely to be created in the mind of the consumer of average intelligence who are purchasing Agarbati. There is a prima facie infringement of the trade mark and injunction would be granted restraining the defendants from using the mark RANGALI. Similar view was taken by the learned court in Variety Dry Fruit Stores V. Variety Agencies, AIR 2010 (NOC) 686 (AP)

Unilever PLC v. Vesco Laboratoreis, AIR 2010 Guj. 8.70 Suit for infringement of trade mark and passing-off action is not required to be filed only in District within whose jurisdiction the plaintiff resides or carries on business. Such suit is maintainable even in District Court having jurisdiction where cause of action as contemplated under section 20, C.P.C. had arisen.

205 SKOL Breweries Ltd. v. Som Distilleries and Breweries Ltd., AIR 2010 (NOC) 506 (BOm).71 Plaintiff claimed to be the owner of trade mark “HAYWARDS 5000” on the basis of deed of assignment executed in favour of plaintiff. Section 45 of the Trade Marks Act, 1999 does not confer title to the trade marks assigned or acquired by transmission. Thus, a suit by assignee for infringement pending application for registration is maintainable.

Shalimar Chemical Works Ltd. v. Surendra Oil & Dal Mills, (2010) 8 SCC 42372 Registration of trademark certificate is a prima facie evidence of validity of trade mark. It is necessary to allow opportunity to opposite party to rebut presumption of validity. Trial Court dismissed a suit against trade mark infringement on ground that only photocopy and not the original trade mark certificate of registration was produced. Single Judge of the High Court I appeal admitted the original certificate as additional evidence under Order XLI, rule 27 (1) (b), C.P.C. and held that the respondent defendant infringed the appellant-plaintiff’s trade mark. Opportunity to rebut validity of trademark certificate produced as additional evidence was not given to the respondent defendant. Thus, it was held by the Supreme Court that the Single Judge did not follow proper procedure. The matter was remanded to the Single Judge for fresh adjudication after giving opportunity to the respondent- defendant to lead evidence of rebuttal.

Rajesh Chheda v. Shubham Plywood Park, Mumbai AIR 2010 (NOC) 774 (Bom)73 Plaintiffs were carrying on business of plywood and were owners of registered trade mark “SHUBHAM” along with symbol of Swastik. Defendants were already doing business under the name and style of “SHUBHAM SANITARY & HARDWARE”. They subsequently

206 adopted the name SHUBHAM PLYWOOD PARK for plywood business. But defendants were not using logo “SHUBHAM” with swastika mark and not selling plywood by using trade mark of plaintiff on plywood. Thus, interim relief as claimed by plaintiff cannot be granted.

Jai Rajendra Impex v. Shambhu Nath, 2010 (3) CHN (Cal) 842.74 The defendant is the original assignee from one Sunlight Electrical which was using the word “TOOFAN” in Telugu language since 1976.Material produced before the court supported the contentions of the appellant. The word ‘TOOFAN” was registered as trade mark of the respondent. The burden of proof of prior use of the word “TOOFAN” by the assignor of the appellant was satisfactorily discharged by the appellant. Thus, the impugned order passed earlier by the single Bench of the High Court was vacated by the Division Bench of the High Court.

Goneka Institute of Education and Research v. Anjani Kumar Goenka AIR 2009 Del 139 : 2009 AIHC 824 NOC : 2009 (160) DLT 41775 Respondents have been running single school in Delhi since 1995 as “G.D. Goenka Public School”. It has earned in a span of five years distinctiveness with respect to its name in and around Delhi, but not throughout the country. Appellant I a different State starts school using “Goenka” as part of its name. It would not result in passing-off particularly when no material is placed on record that in one year the respondents user has spread so extensively throughout India that the respondents can prevent the appellant from using the surname “Goenka”. There is no deceptive similarity on account of using common surname “Goenka”. There are other educational institutions using name “Goenka” either per se or with other words which user already, existed prior to the respondents’ institution which was

207 established in 1994. Thus, it can not be said that the word “Goenka” has become distinctive so far as the respondents are concerned. Similar view was taken by the court in the case Jayanti Kumar Jain v. R.R. Electricals, AIR 2010 (NOC) 507 (Cal).

Marble City Hospital & Research Centre Pvt. Ltd. v. City Hospital and Research Centre Pvt. Ltd., AIR 2009 (NOC) 2326 (MP)76 Words “Marble City Hospital and Research Centre Pvt. Ltd.” and “City Hospital and Research Centre Pvt. Ltd.” Do not tally fully, but they are partly, substantially and phonetically identical. They can not be said to be absolutely distinct and different. Literate class may not be misled, but misleading of illiterate class can not be totally ruled out. Besides both hospitals are situated adjoining to each other at a common place. There can not be blanket restraint against user of land for hospital or user of words “City Hospital and Research Centre Pvt. Ltd.” Defendants would be entitled to use their trade name of “City Hospital and Research Centre Pvt. Ltd.” Only after inscribing in English or Hindi as case may be in bracket below its name everywhere on the name plates and at advertising places in bold block letter (DISTINCT FROM MARBLE CITY HOSPITAL AND RESEARCH CENTRE PVT. LTD.)

Nestle India Limited V. Mood Hospitality Pvt. Limited; 2010 (42) PTC 514 (Del)77 The Hon’ble High Court of Delhi Court has held that in case of interim relief/injunction test of prima facie case as traditionally understood has been replaced, at least in trade mark matters, by the test of comparative strengths of the rival cases. This is also in keeping with the requirements of the said Act inasmuch as it not only describes what amounts to infringement (see : Section 29) but it also makes provision for what does not amount to infringement (see : Section 30) Thus, apart from examining the case in the context of Section 29 of the said Act only from the stand point of the respondent/ plaintiff, it was also incumbent upon

208 the learned Single Judge to consider the relative or comparative strength of the appellant’s/defendant’s case both under Section 29 and Section 30 (2) (a) of the said Act.

SABMiller India Ltd. v. Som Distilleries & Breweries Ltd. 78 Friday, March 01, 2013 On February 19, 2009, the plaintiff applied for registration of its series trade mark "SABMiller India - SABMILLER INDIA" under the Trademarks Act, 1999 -Class 21 (glass bottles) and Class 32 (beers etc.). It also obtained registration for a design to be applied on its beer bottles under the Design Act, 2000 on 15th January 2010. Subsequently, the plaintiff introduced in India its beer bottles (bearing the registered design and also bearing SABMILLER INDIA). It is pertinent to note that the defendant used to sell and distribute beer by filling beer into recycled bottles and not into new bottles. The practice of using one’s own recycled bottle was a common trade practice.

Prior to its series trademarks being successfully registered, the plaintiff found that the defendant was manufacturing, selling and distributing beer in bottles having the plaintiff’s registered design as well as bearing the name SABMILLER INDIA. This lead the plaintiff to sue the defendant for design infringement and passing off. The suit was initiated before the District Court of MP and reached the High Court of MP as an appeal by the plaintiff. The High Court of MP, after extensively hearing the case, dismissed the plaintiff's appeal. Upon obtaining registration of its trademark (5 December 2012), the plaintiff filed a suit before the Bombay High Court for infringement of registered trademark “SABMiller India - SABMILLER INDIA”. On 18th December 2012 this court granted urgent ex parte ad-interim reliefs.

Issues before the Bombay High Court 1. Whether the present suit was barred by res judicata since the MP High Court had already decided on design infringement and passing off?

209 2. If the suit was not barred, then was infringement by the defendant satisfied under Section 29(2)(c) of the Trademarks Act (‘the Act’) and could this lead to the creation of a legal presumption of infringement as mandated by Section 29(3) of the Act? 3. Could the defendant’s contention that its inadvertent or accidental use of the plaintiff’s mark due to the practice of using recycled bottles, save the defendant? And could the fact that the defendant used other bottles which had labels bearing the defendant’s own name and mark, help the defendant? 4. Was the plaintiff guilty of suppression of facts in relation to its having used Kingfisher’s bottles in the past? 5. Would the exceptions under Section 30(1) and Section 30(2) of the Trademark Act, be applicable in the present case?

The court held that res judicata will not apply because the present case was in pursuance of a new cause of action. This was because after registration of its trademark, the plaintiff was entitled to sue for infringement and did not have to rely on passing off. Since infringement creates a new cause of action which is different from the cause of action before the MP High Court (i.e. passing off), res judicata does not apply.

The court also accepted the plaintiff’s contention on this point and was of the view that given the identity of the two marks and the goods, Section 29(2)(c) is satisfied and therefore the Court is mandated to presume that the defendant’s use of the impugned mark is likely to cause confusion on part of the public (Section 29(3)). The court also relied on the case Ruston & Hornsby Ltd. vs. Zamindara Engg. Co. to establish that in such cases no further inquiry was required to find out whether there was in fact any confusion.

The court rejected the defendant's contention on use of their own labels and held that this was no defence in an action of infringement. The only question was whether the defendant was using a mark which was the same as or which was a colourable imitation of the plaintiff's registered trade mark. This question being

210 confirmed in the present case, the court said that the presence or use of own labels will not help the defendant.

With regard to the defence under Sections 30 (1) the court held that such a defense would apply when the registered mark is used by a person only for identifying the goods of the registered proprietor (the court gives an example - In competitive advertisement to distinguish goods). In the present case, the court observes, the defendant is using the mark for its own products and is identifying its own goods with that of the mark. Therefore this defense does not apply. With regard to Section 30(2), the court says the exception is not applicable as the defendant is using the registered trademark as his own mark and not using it to show distinction in character or quality of his goods.

Ultimately the court held the defendant guilty of infringing the plaintiff’s trademark and confirmed the ad-interim order passed on 18 December 2012 until final disposal of the suit.

Samsung Electronics Vs. Kapil Wadhwa79 The Plaintiff (Samsung) filed a case against the defendants who were selling grey market printers of the plaintiff in the market and operating a website selling a varied range of genuine printers under the plaintiff's mark SAMSUNG at prices much lower than offered by the plaintiff. The plaintiff alleged that the defendants were guilty of infringement & passing off the goods by way of parallel imports.

The single Judge granted an interim injunction in favour of the plaintiff restraining the defendants from importing, exporting, distributing, selling, offering for sale, advertising, directly or indirectly dealing in the grey market ink cartridges/toners, or any other products of the plaintiff under the mark SAMSUNG or any mark as may be deceptively similar to the plaintiff's trademarks amounting to infringement of the plaintiff's registered trademarks.

211 The Defendants contended that they were importing and selling genuine SAMSUNG printers which had been purchased and imported through the legitimate channels thus disqualifying any infringement of the Plaintiff's products. Defendants claimed that the plaintiff failed to disclose that the Plaintiff was aware that the defendants were selling openly on its premises since 1998, parallel imported products that were not purchased from plaintiff. The plaintiff was prima facie able to demonstrate a case of infringement of the registered trade mark under section 29(1) and (6) of the Trademarks Act, 1999.

The court held that "any importer who is not a registered proprietor or permissive right holder, if imports the goods under the mark which is identical or similar to a trademark in relation to the goods in respect of which the trademark is registered so as to render the use of the mark likely to be taken as a trademark, then the said act of importation amounts to infringement." It was further held that Section 29(1) does not distinguish between persons either importing genuine goods or non genuine goods for the purposes of attracting the provisions of infringement.

The contention raised by the defendants that India follows the principle of international exhaustion was wrong as the court held that there is no mention of international market or international exhaustion in Section 30(3) & (4) or anywhere in the Trademarks Act,1999.

Once goods are acquired by a person from the registered proprietor within the same market, the registered proprietor cannot claim that there is an infringement of his trademark on the count that there is change of ownership by way of an assignment between the registered proprietor and some other person. However, this will not apply in favour of a person acquiring goods from a foreign market since the court's interpretation of the words "in the market" in sub section 30(3) is that it refers only to the domestic market.

212 Premier Tissues India Ltd. vs. Rolia Tissues Industries and Anr. 2012 (50) PTC 206(DEL.) 80

PREMIER Vs. PREMIUM for tissue paper products was held to be deceptively similar in the above mentioned, leading to an ad interim injunction in favour of the Plaintiff.

The plaintiff manufactures tissues under the registered trademark PREMIER and sold its products in boxes/cartons with peculiar artwork and design, over which it claimed to have copyright. The Defendant started manufacturing and selling tissues under the registered trademark of PREMIUM in the packing distinctly similar to that of the plaintiff's packing. The plaintiff filed the suit against the defendant for infringement of trademark and copyright, and passing off. The defendant by way of a counter-suit against the plaintiff claimed that the plaintiff infringed the Defendant's trademark PREMIUM as well as the copyright of the artistic work of its packing.

The court while passing the interim injunction in favour of the Plaintiff observed that since the Defendants claimed prior user of the trademark and the copyright in the artwork of the packing seeking the interim injunction against the Plaintiff, it became necessary for the Defendants to present clear and cogent evidence which could not be challenged at the prima facie stage. Inconsistent stand before the court and the trademark registry was also abhorred by the court. The court took the view that there was a prima facie case and balance of convenience in favour of the Plaintiff.

It has been held by the Court that solid evidence is the foundation of case for grant of interim injunction. The court held that both the marks PREMIER and PREMIUM are deceptively similar, and the Defendants could not have designed their packaging without having placed the packaging of the Plaintiff side by side.

213 Union of India & Ors. v. Malhotra Book Depot ( MIPR 2013 (1) 246 ) 81 The predecessors of the respondent, (which is stated to be a partnership firm of Mr. Satish Bala Malhotra, Ms. Monica Malhotra Khandari and Ms. Sonica Malhotra Kandhari) namely Shri Ashok Kumar Malhotra and late Shri Balbir Singh trading as M/s Malhotra Book Depot had applied for and were granted registration of the trademark 'MBD' in Class 16 for the goods "publications (printed) and books" vide Trademark Registration dated 23rd November, 1970. The said trademark was thereafter duly renewed from 23rd November 1977 to 23rd November, 1984. On the 1st April, 1992 the constitution of M/s Malhotra Book Depot was changed and a fresh partnership deed was executed between the new partners i.e. Shri Ashok Kumar Malhotra and Ms. Satish Bala Malhotra. On the demise of Shri Ashok Kumar Malhotra the constitution of the respondent M/s Malhotra Book Depot was again changed and a fresh partnership deed was executed between Ms. Satish Bala Malhotra, Ms. Monika Malhotra Kandhari and Ms. Sonica Malhotra Kandhari on 30th December, 2009. That in April, 2010 the respondent filed a suit for permanent injunction restraining infringement of the Trademark MBD and in connection with the said suit applied for certification for use in Legal Proceedings. However the application was returned by the Appellant No. 3 Registrar of Trademark as no records/details of the said trademark could be traced in the database of the Registrar in the consequent investigation by the respondent it was realized that the trademark had not been renewed after 23rd November, 1984.

The Division Bench in this matter was of the view that:

• A done without following the due process and had made presumptive statements and also in the Respondent's case the Form O-3 had not been issued as provided for in Rule 67. mark cannot be removed without following the due process as per the provisions of law and had been

• Under section 25 of the Trade and Merchandise Mark Act, 1958, the application for renewal of the registration could be made upon receipt of the Notice in the Form O-3.

214 • The Registrar could remove the Trademark from the Register and advertise the factum of removal in the Journal only after a Notice in Form O-3 has been issued. • That the said removal of registered trademark cannot be done without prior notice to the registered proprietor in the prescribed form. • Mere expiration of the registration by lapse of time and failure of the registered proprietor of the trademark to get the same renewed, by itself, does not lead to the conclusion that the same can be removed from the Register by the Registrar of Trademark without complying with the mandatory procedure prescribed in Section 25(3) of the Act read with Rule 67 of the Rules. Such removal without due procedure will itself be laconic and illegal.

• That the plea for the Registrar that the application for restoration and renewal of the mark was beyond the time prescribed in Section 25(4) and Rule 69 could not be accepted because the removal of the mark from the register was not in terms of Section 25(3) read with Rule 67 & 68.

• Since the mandatory Notice in Form O-3 had not been given prior to the removal of the mark, the application seeking its restoration and renewal could not be said to be barred by time.

In a recent case Nestle wins trademark battle for Kit Kat82 Swiss multinational Nestle won a protracted trademark dispute over its popular chocholate brand Kit Kat recently (22 April 2013). The Intellectual Property Appellate Board (IPAB) in Chennai ruled I favour of Nestle and dismissed an appeal by Kolkata based Kit Kat Food Products to use the same trademark.

In their order, Justice S. Usha and technical member V. Ravi said that Nestle’s rights have to be protected as it was the first in the world market to use the Kit Kat mark. This fact was not disputed by Swapan Kumar Ghosh of the Kolkata based company. Kit Kat is a popular chocolate covered wafer confection, launched in the 1930s by

215 Yorkshire confectionery manufacturer Rowntree, which is now owned by Nestle.

The dispute arose after the trademark registry in Kolkata refused to allow Nestle’s applications filed in 1987 to register the Kit Kat mark following Ghosh’s opposition. Against the order, Nestle filed an appeal in 2000 in the Calcutta high court, which was later transferred to IPAB.

Meanwhile, the trademark application filed in 1991 by the Kolkata company, which sells chanchur made from cereals and other snacks, was also rejected. Ghosh filed an appeal against the order at IPAB in 2005.

On April 22, the tribunal said there is no dispute about the use of the label by Nestle in India since 1987. The mark was in use since 1935 outside India and the company got it registered in1942. The Kolkata firm has admitted that it had adopted the mark only in 1991.

The marks are identical, the products are also similar and they are mainly bought by small children. When the class of customers is considered, which is the test to determine deceptive similarity, there is every possibility of confusion being caused by the user of the mark by Kit Kat Food Products,” said the tribunal.

The only reason that the Kolkata company gave for adopting Kit Kat was that it was derived from the word ‘chit chat’ because the items were snacks eaten while having a chat.

Summation It is aptly summed up that the passing off action is applied in unregistered trademark and in infringement of suit and passing off in both the cases the remedy will be same. An action for infringement is

216 dependent on the validity of the registration of the mark, it is a statutory right defined in sec. 27 (1) of Trade Mark Act 1999 and trademarks infringement is also a violation of property rights. In the case of infringement, it is not necessary to prove the reputation or goodwill of a trademark because the registration is a prime facie proof of ownership.

The law of passing off is the matter of the law of tort it is not defined in the trademark act 1999. But only provides the rules of procedure and the remedies available. A passing off action would lie where a misrepresentation is likely to be caused or wrong impression is created. In passing off it is necessary to prove that an ordinary person is likely to but goods in a belief that the goods are that of plan tiff lastly we can conclude that in the case of infringement it is the defendant’s act of using a mark identical with or deceptively similar to the registered trademark, the exclusive right to the use of which was conferred on the registered proprietor by the statute. While in case of passing off action it is the defendant’s wrongful act in passing off his goods or business as that of the plaintiff and thereby injuring the business or goodwill of the plaintiff.

217 Notes & References

1. AIR 1972 SC 1359 2. AIR 1965 SC 980 3. 2000 PTC 297 SC 4. 1996 PTC 126 at 129 (Col.) 5. 1999 PTC 570 Mad. 6. 2000 PTC 502 (Del) 7. J.P. Mishra, An Introduction to Intellectual Property Rights, 2005, Universal Law Publication, page, 198. 8. Dr. Priya Ranjan Trivedi, Encyclopaedia of Intellectual Property Rights, Volumes four, Trade Mark System, Law and Policy, page,6 9. Ibid Page 6-7. 10. 11 H.L. 538, quoted in Cornish : IP Cases and Materials, 1st Indian Reprint, 2004, Universal Law Publication, p. 421. 11. (1915) 32 RPC 273 (H.L.), quoted in Cornish : IP Cases and Materials, Ibid p. 423 12. (1990) 1 W.L.R. 491 (H.L.), Ibid. p. 453. 13. (1941) 58 R.P.C. 147 (C.A.H.L.), J.P. Mishra, An Introduction to Intellectual Property Rights, 2005, Universal Law Publication, page, 200. 14. BASF v. CEP (U.K.) (1996) Lexis Transcript, October, 25, 1995 (Knox J.) quoted in W.R. Cornish : I.P. Cases and Materials, 1st Indian Reprint, 2004, Universal Law Publication, p. 559. 15. Parle Products (P) Ltd. V.J.P.& Co. Mysore (AIR 1972 SC 1359). J.P. Mishra, An Introduction to Intellectual Property Rights, 2005, Universal Law Publication, page, 200. 16. Indo-Pharma Pharmaceutical Works Ltd. V. Citadel Fire Pharmaceuticals Ltd. (AIR 1998 Mad. 347). Ibid p. 201. 17. AIR 1998 Guj. 247. Ibid p. 201. 18. Singer V.Loog (1881) 18 Chd 395 at 412.

218 19. P. Narayanan, Intellectual property Law, III edition (revised), 2004, Eastern Law House Publication at page. 212-213. 20. See Nims on unfair competition.

21. Salmond & Hauston’s Law of Torts,18th Ed. P. 379; B.K. Engineering V.UBHI Enterprises. AIR 1985 Del. 210 at 216. 22. (1842) 49 ER749 David Bainbridge, Intellectual property 5th edition,1st Indian Reprint, 2004, Universal Law Publication, p. 641-642. 23. (1915) 84 LJ Ch. 449 David Bambridge, Intellectual Property, 5th edition, Ibid p. 642. 24. Ibid at 450. 25. (1979) AC 731. 26. The claimants were representative of the Dutch manufacturers of Advocate. 27. (1915) 84 LJ Ch. 449, Supra note 22 page 642. 28. (1990) I All ER 873. Ibid page 642. 29. See, for example, the judgments in Taittinger SA v Allbev Ltd.(1996) FSR 641. The simpler statement of passing off is, however, preferred by the same judges; see Consorzio de Prosciut to di Parma v. Marks and Spencer Plc (1991) RPC 351. 30. (1979) AC 731 at 755. 31. Lord Diplock later states that calculated to injure’ does not require actual intention to injure. It is more to do with whether injury is a reasonably foreseeable consequence. 32. See British Broadcasting Corp. V. Talbot Motor Co. Ltd.(1981) FSR 228; Bristol Conservatories Ltd. v. Conservatories Custom Built Ltd. (1989) RPC 455. In the former case, Lord Megarry VC suggested that the two tests may have been cumulative but, in the latter, it was held that they were not cumulative. In Pete Waterman Ltd. CBS UK Ltd.(1993) EMLR 27, Lord Browne- Wilkinson VC suggested that the Diplock and Fraser tests should be read together as the Diplock test focuses on the defendant’s

219 activities whereas the Fraser test concentrates on what the claimant has to show to succeed. 33. (1991) RPC 351. 34. (1929) 254 US 143 (145). 35. (1929) 254 US 145. 36. Leather Cloth Co. v. American Leather Cloth Co., (1865) 11 HL Cas 523 37. (1929) 254 US 143 (147.) 38. (1932) 50 RPC 379 (388)

39. Harry D Nim, p. 1231 C (4th Ed.) 40. Lambert Pharmacal & Co. v. Bolton Chemical Corpn., 219 F 325 (327) (SD NY 1915). T.R. Srinivas Iyengar, Revised by Dr. H.K. Saharay, The Trade Marks Act, 4th Edition, 2011, Universal Law Publication, p. 253. 41. Paul on Trade Marks, sections 212 (3150 (1903). 42. Mossler v. Jacobs. 66 III Ap. 571 (576) (1896) Supra Note 40, p. 253. 43. P. Narayanan, Intellectual Property Law, III edition, 2004, Eastern Law House Publication, at page 213, shaBros. V. Golden Harvest (1972) RPC 559. 44. HP Bulmer Ltd. V. J. Bollinger SP (1978) RPC 79 at 93. 45. (1901) AC 217, at223. 46. (1896) AC 199. D. Bainbridge, Intellectual Property III edition page 644. 47. (1991) FSR 367 Ibid. page 644. 48. Law of Trademarks and Geographical Indications, KC Kailasam,

Publication: Wadhwa Nagpur; 2nd Edition, 2005 page. 343. 49. AIR 1999 Delhi 102 50. 2002 (24) PTC 1 (SC) 51. (1915) 32 RPC 273 at 284 (HL) 52. (1896) 13 RPC 218 at 224 (HL)

220 53. (1980) RPC 31 at 93 (HL) 54. 2002 (24) PTC 207 (Del.) 55. 2003 (26)PTC 245 (Del.) 56. (1990) RPC 341 at 406 (HL) 57. Horliks Ltd. v. Bimal Khamrai (2003) 26 PTC 241 (Del.) 58. Sales Affaires VS. Daan Ltd. (1947) 64 RPC 103 59. Honda Motors Co. Ltd. Vs. Charanjit Singh, 2003 (26) PTC 1 60. Showering V. Bulmer, (1965) RPC 307 61. P. Narayanan, Intellectual Property Law, III Edition (Revised), 2004, Eastern Law House Publication, Page-221-222. 62. 2003 (27) PTC 500 (Para 59) 63. Supra Note 61 page-235. 64. Newman V. Pinto (1887) 4RPC 508, page 519 65. Newton Chambers & Co. Ltd..V. Neptune Water Proof Paper Co. Ltd. (1935) 52RPC 399 Page 406 66. Graham Vs. Plate, Seb. P. 208 67. 2006 (32) PTC 157 (Del.) 68. 2002 (24 (PTC 292 (Del.) 69. T.R. Srinivas Iyengar, Revised by Dr. H.K. Saharay, The Trade Marks Act, 4th Edition, 2011, Universal Law Publication, p. 273. 70. Ibid p. 434 71. Ibid p. 257 72. Ibid p. 297. 73. Ibid p. 272-273. 74. Ibid p. 471-472 75. Ibid p. 300. 76. Ibid p. 437. 77. http://www.mondaq.com/index/x/208840/Trademark/CYBER+S QUATTI+NG+LAWS+IN+INDIA. (viewed on 03-09-2013) 78. http://spicyipindia.blogspot.in/2013/03/bombay-high-court- decision-on-trademark.html. (viewed on 03-09-2013)

221 79. http://lobis.nic.in/dhc/MAN/judgement/18-02- 2012/MAN17022012IA77742011.pdf (viewed on 03-09-2013) 80. http://www.mondaq.com/india/x/212810/Trademark/ Intellectual+Property+Information+Technology+Laws+Septembe r+2012. (viewed on 03-09-2013) 81. Ibid. 82. Article by Sandhya Soman, Times of India, 24 April 2013.

222 CHAPTER V UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY An Overview With the development and advancement in technology the trades and businesses have also become technology oriented. In this new phenomenal growth a revolutionary change has occurred in the field of trades and businesses through the internet. Thus most businesses require its registration under a particular domain name and website. The internet revolution has introduced new dimensions in the field of Intellectual Property Rights. Threats from Cyber Squatter of unfair use of domain name’s indiscriminate copying of information from diverse web sites and unauthorized distribution of copyrighted material through the cyber space by digital pirates are challenges to be met by creators , owners, traders and enforces of Intellectual Property.

Background of Uniform Domain Name Dispute Resolution Policy The Uniform Domain Name Dispute Resolution Police (UDRP) was created to establish a uniform means of administering domain name conflicts. Domain name disputes have a number of characteristics that make traditional Court proceedings unsuitable for their resolution:

Firstly, the Internet being a global system, there is no settled rule as to where jurisdiction lies, so that a single case may involve several different municipal Courts asserting jurisdiction, with the result that a whole series of actions may have to be brought in relation to trademarks in different countries.

Secondly, a similar volume of court proceedings may be required if the same name has been registered in multiple ccTLDs. Thirdly, the speed at which an Internet site can he created, and the ease at which it can he reached, may make the need to resolve a dispute urgent.

223 Fourthly, the cost of registering a domain name is extremely low in comparison with the economic damage that it may cause, or the cost of litigation.1

Because of these factors, since 1995 there has been available an alternative, specially designed dispute resolution policy (DRP) for resolving domain name disputes [at least as regards generic TLDs (gTLDs)]2 that is intended to be time and cost efficient in comparison with Court proceedings. But over the time, there was a call for a new entity to manage the domain name system.3 In response to such concerns, ICANN was formed,4 and WIPO was entrusted with developing UDRP.

With the approval of other Member States of the United Nations, WIPO undertook this process, issuing its findings to ICANN in April 1999 in its report “The Management of Internet Names and Addresses: Intellectual Property Issues: Final Report of the WIPO Internet Domain Name Process”5 After a series of resolutions and conferences, ICANN adopted the Final Report and approved the UDRP6 and the accompanying Rules for the UDRP7 in October 1999.8 The UDRP improves upon the NSI policies in three significant respects:9

First, the domain name is not placed ‘on hold’ or affected in any way until the end of proceedings.10 Second, there is a far greater burden on complainants, who must show both that the registrant lacks any legitimate interests in the name, and is, using the registered name in bad faith.11

Third, the policy is wider in that it is applicable where the domain name is ‘confusingly similar’ to the relevant mark (and not just where it is identical), and applies to service marks as well as trademarks.12

Uniform Domain Name Dispute Resolution Policy (“UDRP”) The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online system for resolving complaints made by trademark owners about domain

224 names conflicting with their trademarks. It isn’t a court nor is it an arbitration, but the authority that established it in 1999 (ICANN) has the power to order the deletion or transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs. Domain holders agree to this procedure in their domain registration contracts.13

The UDRP Rules outline the process for filing a complaint (if you are a trademark owner) and for responding to a complaint (if you are the domain name holder). The Policy and the Rules also explain some of the basics of the proceedings, such as how to choose a Provider, how Panels make their decisions, how the parties are notified of the outcome, language to be used in the proceeding, the availability and effect of court proceedings, and the types of remedies available.14

The dispute resolution Panel is a body of rules which are developed for the purpose of dispute settlement in respect of domain names. The dispute resolution Panel does not apply laws of any particular country.

The validity of the UDRP is not easy to define, because UDRP is not an arbitration policy and it does not have any binding effect except on the register of the domain names. It is incorporated by reference in the agreement of the registrant with ICANN. It is required to include the terms of UDRP in the agreements with the registrants for the purpose of receiving ICANN accreditations. This means that the UDRP is a legally qualified specific contract term.15 UDRP procedure is a faster, cheaper, and easy alternative for challenging the domain name registration in courts of law as it takes a long time and the complex procedures grant relief to the plaintiff with delay which can result in damage to the business and goodwill of the plaintiff. The UDRP does not prohibit any trademark owner or a domain name holder from going to court before or during or after the UDRP proceedings. Complainant/Respondent is required to inform the

225 Panel if they have taken any court action so the Panel can decide as to whether to continue with the proceedings or to post-pone it.16

At present the Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing and co-ordinating the DNS to ensure that it continues to function effectively by overseeing the distribution of unique numeric IP addresses and domain names. A company or organisation, called registry under contract with ICANN manages TLDs. But they do not sell domain names to the public, that task is handled by other accredited companies, called registrars, who collect a fee for each name and pay a portion of it to the registry.17

As has been explained earlier, the administration and procedure for registration of domain names for generic TLDs is left to the private company, Network Solutions, Inc. (NSI). As the Internet grew in popularity and trademark owners began seeking to register their marks as domain names, it came to be realized that often, these names were already taken up by others. This could be due to deliberate misappropriation followed by what effectively amounted to extortion, or it could be due to a genuine conflict. In any case, these developments gave rise to a number of conflicts prompting the realization that effective dispute resolution policies would be required if these disputes are (a) to be prevented or (b) if inevitable, resolved amicably.

A number of proposals have been brought out, and some have been put into operation. As the party most affected by domain name disputes, NSI has been the most active in this regard. It would therefore be appropriate to first examine the NSI plan.18

The NSI Policy NSI began with an initial premise, namely, that domain names have no legal significance, but are merely addresses of various sites in cyberspace. Further. NSI denies that it, as a registry, has any duty to perform trademark searches or

226 arbitrate on domain name disputes.19 However, this premise was rendered inoperative due to several complaints that emerged from various trademark owners. Further, NSI itself began to be sued by these disputants. No doubt, these suits were of little financial concern to NSI, for they were usually parties to the principal dispute for merely procedural reasons.20 Yet, preferring to opt out of these cases, NSI instituted a domain name policy in 1995, which has had several subsequent revisions. The current policy was last revised in February 1998.

The highlights of the new policy can be summarised as follows: An applicant for a domain name must certify that to his knowledge, the name does not interfere or infringe rights of third parties. After this, once the name is given, it may be challenged by the holder of a trademark (US or foreign registered), provided that trademark has been registered prior to the domain name being used. On such challenge, the domain name holder is given 30 days to show either that his use of the domain name predates the trademark registration, or that he has his own trademark registration. If he fails to do so, the domain name goes into a hold status, pending the e-resolution of the dispute between the parties.21 By the February 1998 revision, however, NSI made one -important modification to this policy; it suggested that it may require “suspension, transfer or modifications to a domain name”. But in a number of cases, though NSI’s policy seemed tilted in favour of the trademark owners, when the owners of the domain name went to court against the 30 day letter issued by NSI. NSI agreed to scrap its policy, and in one case, where it did not, the judge signed an injunction preventing NSI from cutting off the domain name.22 It, therefore, emerged that if a domain name holder was not Violating anybody’s trademark, it would be possible to retain the domain name, even if NSI itself sided with the challenger.

Another important change made by the revisions was that it insisted that the domain name holder’s trademark registration should, in order to serve as a valid defence, be registered prior to the emergence of the domain name dispute. This eliminated the possibility of the domain name holder obtaining a registration

227 in a foreign country when the dispute emerged and using that as a method to defend its trademark violation.23

Criticism The NSI policy has been criticized on several grounds. The idea of putting a domain name on hold is said to lead to the possibility that the domain name owner may unjustifiably lose access to the domain name, as a result of which he may be put out of business. Thus, the policy may serve as a weapon in the hands of the trademark owners. The policy therefore seems to favour large corporations.24

The policy also enables trademark owners to obtain remedies in cases where they may have no remedy in the courts of law.25 The policy does not look at rights which a domain name holder may have, even if he does not have a trademark registration. These could include common law rights of usage.26

Proposed Domain Name Systems While several proposals have been put forward by various bodies, this paper restricts itself to a selected few27, in order to provide a broad outline of different ideas on this issue.

The International Ad-Hoc Committee (IAHC)28 has brought out a proposal to increase the number of gTLDs. In May 1997 members signed a Memorandum of Understanding on Generic Top Level Domain Space of the Internet Domain Name System (MOU). This MOU sets up an Internet self-governance system pursuant to the plan for increasing and administering generic top level domains. Seven new generic Top Level Domains are to be created, and more firms around the world are to be allowed to act as registrars. The new top level domains will be “.firm” for businesses or firms; “.store” for businesses offering goods to purchase; “.web” for entities with web activities; “.arts” for entities in the cultural and entertainment activities; “.rec” for recreation and entertainment activities; “.info”

228 for information services, and “.nom” for individual or personal nomenclature. Twenty eight new registrars will be established to deal with the administration under these top level domains, and each will also be able to register second level domains.

Further, all these names will be shared among different registries, and all applications will be publicly available. Applicants for domain names have to agree to on-line mediation and arbitration. Grounds for challenge, etc are also provided.

Criticism The IAHC model has, however, been subjected to scathing criticism on the ground that it is merely a stop gap arrangement and does not clarify the essentials of disputes over domain names. To merely provide more domain names has been to delay the inevitable flood of litigation for a few years, at best. What is required is a permanent solution that would ensure that no further disputes took place, and also that any other disputes would be resolved by well-developed and accepted principles. Further, this does not solve conflicts between holders of the same trademark in different countries or in different products.29

NSI critiques the 1AHC plan on a number of grounds, including the suggestion that it is too bureaucratic, and the dispute resolution mechanisms are unworkable. The NSI plan30, on the other hand, envisages an unlimited number of gTLDs, together with limited regulation. This proposal can also be critiqued on the ground that an unlimited number of gTLDs will require constant monitoring by trademark holders to ensure that there is no violation of trademarks by any of these domain names.

Yet another approach is to do away with the value of domain names by replacing them with a set of random numbers, as in the case telephone directories. This would minimize any trademark disputes involved in the DNS, while still maintaining the Internet’s basics. However, this policy is also subject to criticism on the ground that it nullified the huge investment already made in domain

229 “names” by companies. To counter this criticism, David Mahler and Robert Frank have offered a hybrid plan combining “personalized” and random domain names. A similar proposal is to differentiate domain names for different products by adopting the International Trademark Classification System, and providing different numbers for two identical domain names, if they represent different products. However, this system is useless when one considers trademark conflicts between different countries. Thus, most new approaches appear to prefer avoiding the trademark issue rather than tackling it and emerging with some permanent solutions to these problems. Most of the suggestions seem to be short term, and fail to address core issues.31

Internet Corporation for Assigned Names and Numbers (ICANN)32 An international Non Profit Corporation, Internet Corporation for Assigned Names and Numbers (ICANN) formed in 1998 is the internet’s naming system and technical coordinator, responsible for developing the policy for the internet’s unique identifiers and addresses. ICANN oversees the distribution of unique technical identifiers which are used in the Internet’s operations and also delegates Top-Level Domain names (such as .com, .info, etc) resulting in universal resolvability.

In order to register a domain name, one must first contact the ICANN authorized administrator of the desired TLD through a service provider. As long as the desired name has not been assigned to any prior applicant, the requested name will be approved without any requirement towards proof of ownership, trademark registration or any other form of evidence. However once a domain name has been registered in the above manner, the same does not ensure trademark status. A domain name is not itself a trademark. In order to attain trademark status various factors such as date of use, the distinctiveness of the domain name with respect to goods or services, the manner of use etc. will contribute after ensuring that no-one prior existing identical deceptively similar

230 trademark is being violated. ICANN has also provided guidelines for domain name registration, working towards bona fide registrations. Since ICANN is the international core of the internet, it is but practical that it provides a dispute resolution mechanism for domain name disputes in association with The World Intellectual Property Organization (WIPO). The World Intellectual Property Organization has numerous countries as signatories and international dispute resolution is a workable solution.

In general, the policy provides that registrars receiving complaints concerning the impact of domain names they have registered on trademarks or service marks will take no action until they receive instructions from the domain name holder or an order of a court, arbitrator, or other neutral decision maker deciding the parties dispute. There is an exception in the policy, however, for disputes involving domain names that are shown to have been registered in abusive attempts to profit from another’s trademark (i.e., cybersquatting 33 and cyber piracy and other “bad faith” registrations). In these cases of abusive registration, the complaining party can invoke a special administrative procedure to resolve the dispute. Under this procedure, neutral persons selected from panels established for that purpose would decide the dispute. The decision is made on the basis of the submissions of the documents by complainants and registrant/respondent. A panel’s decision must be published online, decided in less than 45 days, and is expected to cost around $ 1000 in fees. Parties to such dispute can also go to court to settle their dispute or to contest the outcome of the procedure. Every ICANN-accredited registrar has agreed to adhere to the dispute- resolution policies that ICANN adopts under its established consensus procedures.34

Government Advisory Committee (GAC)35 ICANN’s Organizational Structure includes a Governmental Advisory Committee (GAC) set up in 1999 accessible at gac.icann.org. The GAC has an open-ended membership driven policy, inviting nations the world over to partake in ICANN’s policymaking activities. It includes Government representatives,

231 public authorities, and several intergovernmental organizations. ICANN’s activities and policies are considered by the Governmental Advisory Committee (GAC), pertaining to special government interests and implications in matters involving an interaction between ICANN’s policies and national laws or international agreements. The GAC typically holds quarterly meetings in conjunction with ICANN meetings. Over 50 national governments, distinct economies, and multinational governmental organizations such as the ITU and the World Intellectual Property Organization (WIPO) currently attend the GAC on a regular basis.

India is a member country represented by Mr. N. Ravi Shankar of the Ministry of Communications & IT. Dr. Govind and Mr. Ranjan Kumar of the Department of Information Technology, Ministry of Communications & IT of the Government of India head the GAC Secretariat aims at increasing the influence of ICANN.

Uniform Dispute Resolution Policy: Its Viability 36 The international domain name regulatory authority called the Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) following the domain name case of Mcdonalds.com that came to light in 1994. The policy formulated thereafter provided for incorporation of terms and conditions in the registration agreement concerning disputes between the registrant and any party other than the registrar over the registration and the use of a registered Internet domain name. Under the UDRP, a person seeking to register a domain name is under an obligation to ensure that the domain name he seeks to register does not infringe or violate someone else’s rights.

Under Clause 3, the UDRP provides that ICANN will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances.37

232 (i) on receipt by ICANN of written or appropriate electronic instructions from the domain name registrant or his duly authorised agent; (ii) on receipt by ICANN from a Court or arbitral tribunal (of competent jurisdiction), requiring such action and/or (iii) on receipt by ICANN of a decision by an administrative panel requiring such action in any administrative proceeding to which the domain name registrant was a party and which was conducted under the UDRP.

Clause 4 of the UDRP deals with mandatory administrative proceedings and provides that a domain name registrant has to submit to such proceedings in the event a third party files a complaint (complainant) with a Provider against the domain name registrant alleging the following : (i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) The domain name registrant has no rights in the domain name; and (iii) The domain name has been registered in bad faith.

Rule 4(b) has listed by way of illustration the following four circumstances as evidence of registration and use of a domain name in bad faith”: 38 (i) circumstances indicating that the domain name registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the domain name registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or (iii) the domain name registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

233 (iv) by using the domain name, the domain name registrant has intentionally attempted to attract, for commercial gain. Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain name registrant’s website or location or of a product or service on the domain name registrant’s website or location.

The defences available to such a complaint have been particularized ‘without limitation’ in clause Rule 4(c) as follows 39 (i) before any notice to the domain name registrant of the dispute, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the domain name registrant (as an individual, business, or other organisation) has been commonly known by the domain name, even if the domain name registrant has acquired no trademark or service mark rights; or (iii) the domain name registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Rule 4 (k) of the UDRP, however, provides that an aggrieved party is not compelled to initiate proceedings only under the UDRP and that a domain name registrant or the complainant may, before or after the conclusion of any administrative proceedings, submit the dispute to a Court of competent jurisdiction.40

These rules indicate that the disputes may be broadly categorised as: (a) disputes between trademark owners and domain name owners and (b) between domain name owners inter se.

234 A prior registrant can protect its domain name against subsequent registrants. Confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defences available to a complaint are also substantially similar to those available to an action for passing off under trademark law.

The complainant must prove that each of these three elements mentioned in Clause 4(a) of UDRP are present to initiate the administrative proceedings.

Mechanism The following are the salient features of the mechanism of domain name dispute resolution under UDRP: 41 • Administrative proceedings are very expeditious. These proceedings are usually concluded within 2months; • The UDRP Rules of Procedure and the Supplemental Rules are very simple to understand and apply. There is no standard form of complaint or reply/response to be filed before the approved domain name dispute resolution provider. Paragraph 3 of the ICANN Rules of Procedure prescribes the information to be included in the complaint. Under Para 3 of the ICANN Rules, the complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names specified in the complaint is the same. Unless, the issues are complex, lawyers may not be necessary to represent the parties; • Proceedings are conducted online. Rule l3 of the Rules for UDRP stipulates that there shall be no in-person hearings (including hearings by teleconference, video conference, and web conference), unless the Panel determines, its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint; • The fees for dispute resolution under the UDRP are very nominal; • The dispute resolution mechanism does not seek to bypass legal remedies, rather gives due respect to the decision of the competent courts.

235 Thus we can conclude that the mechanism of the UDRP is judicious, fair, independent, equitable and competent to decide domain name disputes.

The Uniform Domain Name Dispute Resolution Policy: Processual Paradigms in Arbitration The Uniform Domain Name Dispute Resolution Policy (UDRP) and the UDRP Rules prescribe detailed procedures for appointing either a sole arbitrator or a three-member panel to conduct the inquiry. A panel is expected to issue its decision within 14 days of its appointment. If the panel rules in the complainant’s favour, the only remedy available is for the registrar to cancel the domain name registration or transfer it to the complainant. A registrar may automatically implement a UDRP panel decision after the 10 day period that it has “commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted” as required by the UDRP Rules. After notification, the registrar “will take no further action” until it receives “satisfactory” evidence of the resolution of the dispute, the dismissal or withdrawal of the lawsuit, or a court order that the registrant does “not have the right to continue using” the domain name.42

One of the major drawbacks of the UDRP system - as opposed to court proceedings which may go to the extent of awarding damages - is the fact that relief is limited to either getting the domain name struck off or transferred.43

(1) .IN Registry The National Internet exchange of India (NIXI) (http://www.nixi.in/) is a Government Company registered under section 25 of the Indian Companies Act, 1956. It has been set up to facilitate the exchange of domestic Internet traffic within the country by Internet service providers in India. NIXI has also been entrusted with the responsibility of the setting up of the .IN ccTLD Registry by the Government of India. The .INRegistry (http://www.registry.in/) has been created by NIXI. It functions as an autonomous body under NIXI with the primary

236 responsibility of maintaining the .DM ccTLD and ensuring its operational stability, reliability, and security.

.IN Registry does not carry out registration itself. Instead, it accredits registrars (for names of the registrars see http://www.registry.in/ accredited .registrars) to register .IN domain names. 44

(2) .IN Dispute Resolution Policy IN Registry has also come out with an .IN Dispute Resolution Policy (INDRP) (http://www.registry.rn/poHcies/dispute_resoiution/indrp) on the same lines as UDRP and has also framed INDRP Rules of Procedure (http://www.registry.in/ policies/ dispute_resolution/indrp_rules). However, it uses the \words Arbitrators in place of service providers used in UDRP.45

In India, anyone interested in registration of .IN domain name has been allowed to do so since early 2005. Registration is open to parties inside and outside of India without restriction and of late the scourge of cyber-squatting has seen on a steady rise especially after the expiry of the sunrise period in January 2005. With domain name prices falling to as low as Rs 200, squatiers seem to be on a domain buying spree. ‘IN’ is India’s top-level domain on the internet. Like .COM, .IN can be used for e-mail, web sites and other applications. But unlike other domains, .IN is a unique symbol of India and its role in the world. IN Registry is the official .IN registry. It was appointed by the Government of India to operate under the authority of the National Internet Exchange of India (NIXI).46

Under section 25 of the Indian Companies Act 1956 the Department of Information Technology (DIT) in association with the Internet Service Providers Association of India (ISPAI) has promoted the National Internet Exchange of India (NIXI) as a none profit company with the objective of facilitating improved internet services in the country. The aim of NIXI is to ensure that the internet traffic which originates within India and also has destination in India remains

237 within the country. And also NIXI aims is to improve traffic latency, reduced cost and better security.

.IN Domain Name Dispute Resolution Policy (‘Policy’) and the dispute resolution mechanism are based on the internationally accepted UDRP as prescribed by ICANN and sets out the terms and conditions to resolve a dispute between the registrant and the complainant, arising out of the registration and use of the .In Internet Domain Name.

Any person who considers that a registered domain name conflicts with his legitimate rights or interests may file a complaint to the .IN Registry on the following premises: • the registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; • the registrant has no rights or legitimate interests in respect of the domain name; and • the registrant’s domain name has been registered or is being used in bad faith.

The registrant is required to submit to a mandatory arbitration proceeding in the event of a complaint before the .IN Registry’ in accordance with the policy and rules framed there under. The remedies available to the complainant pursuant to any proceeding before an arbitrator shall be limited to requiring the cancellation of the registrant’s domain name or the transfer of the registrant’s domain name registration to the complainant.47

Domain Name Dispute-Suit-Principle Sony Ericsson Mobile Communications AB v. Chen Shenglu48 In this case complaint was made with respect to the registration of Domain Name www.sonyericsson.co.in by the respondent in bad faith and being identical to the complainant’s website / domain www.sonyericsson.com. The complainant is proprietor of the trademark and domain name incorporating the word Sony

238 Ericsson-The complainant also owned the domain name sonyericsson.cn in China where the respondent is based. The complainant, Sony Ericsson, also registered its domain name in more than 100 countries. The allegations of likelihood of confusion and deception were made. It was held that the domain name of the respondent was identical to the trademark and domain name of the Complainant. The registration of country level domain in India by the Respondent based in China found to be in bad faith to cause confusion to the Internet users and to make such users falsely believe that the disputed website is sponsored, endorsed or authorised by the complainant Respondent failed to show any right or legitimate interest in registering the disputed domain name. It was directed that the complainant is entitled to the transfer of the disputed domain name www.sonyericsson.co.in. NIXI decides cases, on the principles of the UDRP

The Supreme Court in the Satyam Infoway case held that the domain name has characteristic of a trademark and the suit to protect it is maintainable and injunction can be granted. The courts have been entertaining suit and have laid down the principles to grant injunction after taking into account UDRP and INDRP. They are as follows: 49

CIT1 Corp v. Todi Investors50 UDRP and INDRP are agreements between the Registrars and the domain name owners. It is a condition for obtaining a domain name. The domain name owner is bound by it but not a third party. In case the third party raises a dispute in a court then the Arbitration and Conciliation Act may not apply to the dispute between the two.

Beiersdorf A.G. v Ajai Sukhwani51 The object of UDRP is to provide cheap and speedy disposal of complaints regarding registration of Domain name. The decision of the administrative panel under the UDRP is not final; it is merely an administrative decision.

239 (India TV) Independent News v. India Broadcast Live52 In this case the court has held that Nevertheless a court while entertaining a suit by a third party—who does not avail the remedy of the UDRP or INDRP— may refuse to grant an injunction in view of section 41 (h) of the Specific Relief Act on the ground that equally efficacious relief can be obtained by invoking them. However, it will be a different matter if damages are also claimed. The Delhi High Court • Relief in a suit for passing off are wider than mere cancellation or transfer of a domain name; • In such a suit damages are also claimed that cannot be granted under UDRP or INDRP; and • The suit is the proper remedy instead of raising dispute under UDRP or INDRP.

Times Internet Ltd v. Belize Whois Service Ltd53 [Adobe Systems Incorporated v. Sh. Rohit Rathi, CS(OS) 1784/2007, decided on 30.5.2008; Time Incorporated v, Lokesh Srivastava, 2005 (30) PtC 3 (Del); Himalaya Drug Company v. Sumit, 2006 (32) PTC 112 (Del); and Times Internet Ltd, v. Just Flowers, 2007 (10) AD (Del) 302]. In such a suit punitive damages may be granted. The plaintiff will also be entitled to an injunction, where the defendant has obtained a domain name identical to the coined trademark of the plaintiff.

The principles as to when a court within whose jurisdiction plaintiff is not carrying on business: will have jurisdiction against an accessible website in a suit for passing off action has been discussed and explained in the decision of the Delhi High Court in Banyan Tree Holding v. Murali Krishna Reddy54. The court explained that: • The plaintiff would have to prima facie show that the nature of the defendant’s activity was with an intention to conclude a commercial transaction with the website user within the court’s jurisdiction and it resulted in an injury or harm to the plaintiff within the court’s jurisdiction;

240 • For the purposes of section 20(c) CC, the plaintiff will have to prima facie show that the said website specifically targeted at viewers within the court’s jurisdiction for commercial transactions. The plaintiff would have to plead this and produce material to show that some commercial transaction using the website was entered into by the defendant by a user of its website within the jurisdiction of the court resulting in an injury or harm to the plaintiff; • The commercial transaction entered into by the defendant with an internet user located within the jurisdiction of the court cannot possibly be a solitary trap transaction since that would not be an instance of ‘purposeful’ availment by the defendant. It would have to be a real commercial transaction that the Defendant has with someone not set up by the plaintiff itself; • If the only evidence is in the form of a series of trap transactions, they have to be shown as having been obtained using fair means. The plaintiff seeking to establish jurisdiction on the basis of such trap transactions would have to aver in the plaint, and also place along with it supporting material, to prima facie show that the trap transactions relied upon satisfy the above test.

(3) Charter Eligibility Dispute Resolution Policy 55 The Charter Eligibility Dispute Resolution Policy (CEDRP) is followed by the sponsored TLDs .aero, .coop, .museum, and .travel for challenges to registration of a domain name on the grounds that the registrant does not meet the eligibility requirements (set forth in the sponsored TLD charter) for registration of a domain name in the given TLD. Any person or entity may bring a challenge to a registered name under the CEDRP.

(4) .ASIA Charter Eligibility Requirements Policy 56 The .ASIA Charter Eligibility Requirements Policy (.ASIA CERP) applies to domain names registered in the .ASIA sponsored TLD. Registrations in .ASIA are restricted to members of the Pan-Asia and Asia-Pacific Internet community.

241 Challenges to a registration in .ASIA on the grounds that it does not meet the eligibility requirements are filed under the CERP. Further information can be found on the .ASIA website.

(5) .cat Eligibility Requirements Dispute Resolution Policy 57 The .cat Eligibility Requirements Dispute Resolution Policy (.cat ERDRP) applies to domain names registered in the sponsored TLD .cat. Registrations in .cat are restricted to members of the Catalan linguistic and cultural community. Challenges to a registration in .cat on the grounds that it does not meet the eligibility requirements are filed under the ERDRP. Further information can be found on the .cat website.

(6) Intellectual Property Defensive Registration Challenge Policy58 The Intellectual Property Defensive Registration Challenge Policy (IPDRCP) applies to intellectual property defensive registrations in the .pro TLD, which is restricted to use by certified practicing members of certain professions (currently the medical, legal, and accounting professions). An intellectual property defensive registration may be registered only by the owner of an eligible trademark or service mark registration. The IPDRCP provides an avenue for challenges to Intellectual Property Defensive Registrations concerning whether such registrant meets the Registration Qualifications. Any person or entity may initiate an IPDRCP proceeding by submitting a challenge in accordance with the rules.

(7) Start-Up Trade Mark Opposition Policy (STOP) 59 If there are two or more applications are filed for the same name, the registrar would on a particular day (suppose 26th to 30th September 2001) pool in all the applications and randomly choose the registrant. Thereafter, the aggrieved party may resort to the process called “STOP”.

242 Under this procedure, the domain name would be frozen for a month. The domain name dispute shall then be settled and decided. However, the burden of proving bad faith registration is not as heavy as under the UDRP.60

STOP is no longer available as a dispute resolution policy for .biz domain names. Disputes can be brought under the UDRP, RDRP or available courts of law. For more information, see the registry operator’s site.

(8) Sunrise Challenge Policy61 The Sunrise Challenge Policy (SCP) was applied only during the sunrise period for the .info TLD. Challenges under the Sunrise Challenge Policy were administered by the registry operator (Afilias). As the one hundred twenty (120) day sunrise period has closed, parties disputing the validity of a sunrise registration may utilize the UDRP or available courts of law.

(9) Inter-Registrar Transfer Policy 62 The Inter-Registrar Transfer Policy has been adopted by all ICANN- accredited registrars. All requests to transfer a domain name to a new registrar must be handled according to the procedures detailed in this policy, incorporating the Standardized Forms. Dispute proceedings arising from a registrar’s alleged failure to abide by this policy may be initiated by any ICANN-accredited registrar under the Transfer Dispute Resolution Policy.

(10) .info Dispute Resolution Policy 63 The .info domain implemented a Sunrise Registration Period (from July 25 to August 31, 2001), during which only trademark owners could register a domain name that was identical to the textual elements of their trademark, provided the trademark

Registration had national effect and was issued prior to October 2 2000 That period was followed by a Sunrise Challenge Period (from August 28 to December 26, 2001), during which such sunrise registrations could be challenged

243 under a Sunrise Challenge Policy (SCP), exclusively administered by the WIPO Centre. The Policy enabled any third party to apply for the cancellation or transfer of a domain name that had been registered in violation of the conditions of .info sunrise registration. The SCP intellectual property protection measure had one serious shortcoming, however, in the absence of any verification of intellectual property “rights upon application for domain name registration. This allowed Speculators to register info names, by providing false trademark registration information. As a result, the operator of the .info registry, Afilias decided to file SCP challenges to any sunrise registrations not independently challenged, in order to clear its database of potentially improper sunrise registrations.

(11) .biz Dispute Resolution Policy 64 The .biz domain implemented a period (from May 21 to August 6, 2001), during which trademark owners could file one or more “intellectual property claims” relating to an alphanumeric string, or name, identical to their marks, thereby enabling the registry to advise them if the same string was registered as a domain name during the start-up period. Upon notification by the .biz registry, trademark owners who had filed such a claim were given the opportunity to commence opposition proceedings under the Start-Up Trademark Opposition Policy (STOP) with any accredited dispute resolution service provider, requesting the transfer of the contested domain name. The .biz domain has been open to the general public for registrations since June 25, 2001 and, as above, the UDRP applies to all such registrations.

(12) .name Dispute Resolution Policy 65 The .name domain devised yet another mechanism to handle abusive registration practices in the initial stages of its operation. This mechanism enabled trademark owners to apply for a defensive registration in the preliminary phase (from August 15 to December 14, 2001), by reserving a given alphanumeric string or name in order to prevent the registration of domain names that included the string at the second or third, or both, levels. The registry also offers trademark

244 owners a Name Watch service that advises them of any .name registration that matches their trademarked name.

(13) .pro Dispute Resolution Policy 66 The .pro registry is not yet operational, but proposes to implement a “sunrise period” during which owners of trademarks registered prior to December 31, 2001, can register a name that corresponds to their mark, provided they meet the registration eligibility restrictions for .pro. During the “sunrise challenge period” any person will be able to submit a challenge against a sunrise domain name for non-compliance with these registration conditions. As above, when registrations open to the general public, the UDRP will apply to all .pro domain name registrations.

Protection of Domain Name: Global Efforts (1) British Law Recent IP disputes have led to the reconsideration of the applicable rules of jurisdiction and justifiably. These actions are needed to apply the Brussels Lugumo convention. The scope of application of this convention may be wider in the UK Courts than of those in Europe.

In UK one is a subject to the Civil Jurisdiction and Judgments Act, 1982, and the Private International Amendment Act, 1995, the common law on conflicts of law and the Supreme Court rules of practice. The statutes cited incorporated into UK law the Brussels Luguano convention of 1986, which affects the whole of Europe (non convention countries). Non-convention countries are also affected.

In relation to Civil Jurisdictions and Judgments Act, 1982, particular attention should be taken of the 1995 amendments, specifically section 10 and 11. Section 10 abolished the double action ability, rule, which allowed claims only where the tort would be actionable as a tort in the foreign jurisdiction. Section 11 was enacted to clarify the required test for jurisdiction for contract, and other tort and claims. The rules are as follows: for actions in tort, the jurisdiction in place of

245 the tort; for action in contract, the jurisdiction in place where there is the contact; for all other actions, the jurisdiction is the country with the most significant relationship with the occurance.67

The court have held that cybersquatting is violative of the rights protected under the trademarks law. 68 In Marks & Spencer PLC Vs One in a Million in the High Court of Justice, chancery Division, enjoined the activities of the two cyber dealers and their related companies, who had obtained and were offering for sale and ‘hire’, numerous domain names containing well known marks. In this group of cases, the Court enjoined “the threat of passing of” (a threat which would become and reality if in of tending domain names was sold and to use by a stranger to the trademark owner), issuing a warning to cyber squatters.

Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trademark of an unconnected commercial organization must expect to the find himself on the receiving and of an injunction to restrain the threat of passing off and the injunction will be in terms which will make the domain name commercially useless to the dealer.”

(2) United States Law To deal with the menace of cybersquatting U.S. has passed the Anti Cybersquatting Consumer Protection Act 1999. Prior to the Act of 1999 the judiciary relied on the Lanham Act and FTDA to decide the disputes between domain name registration and trademark owners.

(a) The Lanham Act (1946) It provides a trademark owner three, potential causes of action: • If his trademark has been registered on the Principal Federal Registry, he can claim that the registration, of a similar domain name would create a “likelihood of consumer confusion” in violation of section 32(1) - 15 USC S.I) 14(1).

246 • If his trademark has not been registered, he can claim that registration of a similar domain name would constitute unfair competition in violation of section 43(a)- 15 USCS. 1125(a). • Even if the defendant’s domain name does not create “consumer confusion,” the owner of a “famous” trademark can claim that the defendant’s behavior would “dilute” the power of his mark — i.e., lessen its “capacity ... to identify and distinguish goods and service- in violation of section 43(c) - 15 USC S. 1125(c).69

(b) Federal Trademark Dilution Act (FTDA) (1995) NS1 started distributing domain names as early as in 1994. It resulted in mayhem as the trademarks were being infringed with impunity. Initially, the domain name disputes were resolved under the NSI’s dispute resolution policy. Under the policy the owner of the federal trademark registration in the U.S or a registration in a foreign country may challenge the use of an identical second level domain by submitting the registration certificate to NSI, along with proof that the trademark owner has sent the domain holder written notice of the trademark owner’s claim that use and registration of the domain name violates the trademark owner’s legal rights.

This dispute resolution policy gave way to the application of ‘likelihood of confusion or deception’ analysis by the courts to adjudicate domain name disputes. An essential element of a trademark infringement action is that the plaintiff must prove that a defendant’s use of a particular name creates a likelihood of confusion, deception or mistake among an appreciable number of ordinary buyers as to the source or association between the two names.

Generally, courts all over the world have applied Trademark Laws in order to resolve domain name disputes. Normally the following factors are taken into account by the courts in case of an infringement and/or passing off action with respect to domain name dispute: Whether the domain name in dispute is70

247 i. Identical or deceptively similar with the already registered trademark; ii. Identical or deceptively similar to a mark that has acquired reputation in the market; iii. Deceptively similar to already existing domain name; iv. Adopted in a bad faith; v. Causing confusion or likely to cause confusion in the mind of the general public with respect to the real owner vi. Causing damage or likely to cause damage in terms of business and goodwill.

Card Service International Inc. v Me Gee71 It was the one of the earliest case on cybersquatting, where the US court held that the domain name serve the same function as a trademark and is not a mere address or like finding number on the Internet and therefore, it is entitled to equal protection as trademarks. The court further held that a domain name is more than a mere Internet address as it also identifies the Internet site to those who reach it, much like a person’s name identifies a particular person or more relevant to trademark disputes, company’s name identifies a specific company. In light of this observation the court granted the injunction as under Section 32 of the Lehman Act. The court further held that the Card service International’s customers who wish to take advantage of its Internet services offered by the company are likely to assume that “Cardservice.com”, belongs to Card service International although it’s not being true. These customers would instead reach Me Gee page when looking for “card services” and thereby many would assume that they have reached “Card service International” so there is a likelihood of confusion.

Comp Examiner Agency, Inc., v. Juris, Inc72 It was the first case in which a U.S court applied a traditional likelihood of confusion. In this case, juris, Inc., owner of a federal trademark registration of JURIS for its legal time and billing software products, had been forced to choose the domain jurisinc.com after learning its first choice, juris.com, had already been

248 assigned to The Comp Examiner Agency (“Comp Examiner”). When Juris, nc subsequently accused Comp Examiner of trademark infringement, Comp Examiner, which used the domain for the legal information website, filed an action seeking cancellation of Juris, Inc’s JURIS trademark registration on the ground of genericness; Juris, Inc. then counterclaimed for trademark infringement and dilution.

The court granted Juris, Inc. a preliminary injunction which not only precludes Comp Examiner from using the domain juris.com, but also from using “juris”’ juriscom.com or any confusingly similar variation for “the advertising, operation or maintenance of any Internet site or bulletin board service”.

Later, even NSI faced lawsuits alleging trademark infringements. In Lockheed Martin Corpn. v. Network Solutions, Inc73 In this case the issue was whether NSI violated federal trademark law by accepting registration of the Internet domain names that are identical or similar to Lockheed Martin Corporation’s (Lockheed) SKUNKWORKS service mark.

The court held that NSI’s had a limited role as a registrar of domain names. Also, it had no reason to know of potentially infringing uses by others. That is, contributory infringement doctrine does not impose upon NSI an affirmative duty to seek out potentially infringing uses of domain names by registrants.

Panavision International, L.P v Toeppen74 It was the most egregious case in the early days on cybersquatting and cyber piracy. The Appellate Court (Ninth Circuit) was asked to apply existing rules of personal jurisdiction to the actions that occurred, in part, in cyberspace. Further, it was to interpret the FTDA as it applies to the Internet.

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In the instant case, Panavision accused Dennis Toeppen of being a Cyber pirate who had stolen valuable trademarks and established them as his domain names on the Internet.

Panavision holds registered trademarks to the names Panavision and Panaflex in connection with motion picture camera equipment. Panavision promotes its trademarks through motion picture and television credits and other media advertising.

In December. 1995, Panavision attempted to register a website on the Internet with the domain name Panavision.com. It could not do that, however, because Toppen had already established a website using Panavision’s trademark as his domain names. Toeppen’s web page for this site displayed photographs of the City of Pana. Illinois.

Toeppen argued that his use of Panavisioivs trademarks simply as his domain names could not constitute a commercial use under the Act, Further, he contended that a domain name is simply an address to locate a web page. If a user were to type Panavision.com as a domain name, the computer screen would display Toeppen’s webpage with aerial views of Pana. Illinois. The screen would not provide any information about Panavision, other than a location window which displays the domain name. Toeppean argues that a user who types in Panavision.com but who sees no reference to the plaintiff Panavision on Toeppen’s web page is not likely to conclude the web page is related in any way to the plaintiff, Panavision.

The 9" circuit court held that “cybersquatting generally referred to an individual who register domain names identical to well-known marks in an attempt to resell it to the mark owner at a significant profit, whereas the term cyberpirates are those who register the same or confusingly similar domain name

250 in an attempt to lure traffic intended for the mark owner away to pirate’s web site. In the absence of legislative definition, these terms are interchangeable.

Further, the 9th Circuit Court found that Toeppen’s conduct diminished “the capacity of the Panavision marks to identify and distinguish Panavision’s goods and services on the Internet”. The Court justified its dilution arguments on grounds similar to an earlier case. Intermatic v. Toeppen,75 where it was held that the defendant diluted plaintiff's trademark by lessening Intermatie’s ability to “identify its goods and services by means of the Internet” and by using the Intermatic name on an unauthorized web page.

(c) The Ant cybersquatting Consumer Protection Act (1999) The first legislation which was enacted to curb the menace of cybersquatting came from the U.S Congress, in November 1999, with the name Anti-Cybersquatting Consumer Protection Act (ACPA). It amends the Trademark Act of 1946 to make domain name holders legally liable in a civil actions brought by trademark holders (including a personal name protected as a mark) any person who, with a bad faith intend to profit from the mark, registers, traffics in, orgies a domain name which, at the time of its registration, is 76 (1) identical or confusingly similar to a distinctive mark; (2) dilutive of a famous trademark; or (3) is a protected trademark, word, or name The Act also creates an in rem action against offending domain names-an important new option for trademark owners when federal courts do not have in personam jurisdiction over the domain name registrant. The Act further provides that:

(Section 3002) Specifies factors a court may consider in determining bad faith intent, but prohibits such a determination if the defendant believed, with reasonable grounds, that the use of the domain name was fair or otherwise lawful.

251 “A court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark,” if the domain name was “registered before, on or after the date of the enactment of this Act”.

(Section 3003) Applies to cybersquatting actions such trademark remedies in addition to injunctive relief as recovery of defendant’s profits, actual damages, and attorney’s fees and court costs. Provided for statutory damages in an amount of at least $1, 00 0 and up to $100,000 per domain name, as the court considers just.

(Section 3005) Shields a registrar, registry, or other registration authority from liability for damages for the registration or maintenance of a domain name for another, unless there is a showing of bad faith intent to profit from such registration or maintenance of the domain name.77

The judgments in Intermatic and Panavision have played an important role in the drafting of the Anti cybersquatting Consumer Prevention Act (ACPA). The Act was enacted to specifically target trademark infringement in cyberspace’’78 • The ACPA lists nine non-exclusive factors that courts may consider when determining whether the plaintiff has acted with bad faith intent: 79 (I) The trademark or other intellectual property rights of the person, if any, in the domain name; (II) The extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) The person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) The person’s bona fide non-commercial or fair use of the mark in a site accessible under the domain name; (V) The person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of

252 confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) The person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; (VII) The person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; (VIII) The person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and (IX) The extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous.

Sporty’s Farm L.L.C v. Sportsman’s Market, Inc. 80 This new enactment was first applied in the case. The case involved a dispute over the domain name “sportys.com” between two competing aviation supply corporations. Omega a mail order catalog company used to sell mainly scientific process measurement and control instruments. It registered the domain name “sportys.com” with NSI in 1995. Early the following year, Omega sold the domain name for $16,200 to another, newly formed subsidiary specializing in the sale of Christmas tree, and soon began advertising its Christmas trees on a sportys.com web page.

The defendant, Sportsman’s Market, a mail order catalog, company has been providing aviation equipment to pilots through its mail order catalogue since

253 the 1960s under the name “Sporty’s”. It subsequently sought to recover the “sportys.com” domain name from Sporty’s Farm.

The District Court granted an equitable injunction under the FTDA. On appeal the Second Circuit determined that Sporty’s Farm acted with “bad faith intent to profit” from the domain name “sportys.com” as articulated in the ACPA.

It observed that “Omega’s owners, (the Hcllauders), were fully aware that sporty’s was a very strong mark tor consumer of those products. It cannot be doubted, as the court found below, that Omega registered sportys.com for the primary purpose of keeping Sportsman’s from using that domain name. Several months later, and after this lawsuit was filed. Omega created another company in an unrelated business that received ‘:he name Sporty’s Farm so that it could (1) use the sportys.com domain name in some commercial fashion, (2) keep the name away from Sportsman’s and (3) protect itself in the event that Sportsman’s brought an infringement claim alleging that a “likelihood of confusion” had been created by Omega’s version of cybersquatting.

The case emphasizes that stopping egregious commercial misbehavior, like blocking a rival corporation from using its own mark, fall squarely within the purview of the ACPA.

ACPA and in rem Action In Alitalia-Lince Aeree Italiane, S.P.A v. Casinoalitalia.com81 Wherein the plaintiff, an Italian airline, has sued both the foreign registrant of an allegedly infringing domain name in personam and the domain name itself in rem .

Alitalia an Italy’s national airline,his founders coined the word Alitalia, which has been used by the airline since 1957. by combining the word Ali which in Italian means wings and d’ltalia which means Italian; the term Alitalia therefore literally means Italian wings.

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In addition Alitalia maintains a website for its airline business at www.alitalia.it and has registered the Internet domain names www.alitalia.com and www.alitalia.net. A search of the Internet for the word Alitalia however returns not only Alitalia’s website, but also an Internet site using the domain name “casinoalitalia.com”, which has no affiliation or connection whatsoever to Alitalia.

Defendant Technologia JPR. Inc.(JPR) had registered the domain name “casinoalilalia.com” with registrar NSI. JPR is an entity established under the laws of the Dominican Republic, and JPR’s NSI registration information lists JPR’s place of business (including administrative, technical and biling contacts) as located in Santo Domingo. Dominican Republic.

The plaintiff contended that it was evident from a visit to “casinoalitalia.com” that the website exists for the purpose of conducting the business of online gambling and on its home page the term Alitalia appeared. It claimed that the domina nme “casinoalitalia.com” and JPR’s unauthorized use of the term Alitalia created a false impression that Alitalia has been promoting the business of online gambling and / or any other enterprise pursued by defendants The plaintiff further claimed that since the word “casino” means brothel, so that a literal translation of “casinoalitalia” would mean Alitalia’s brothel. It argued that the consumers who were familiar with the Italian language would assume “casinoalitalia.com” as a brothel associated or affiliated with Alitalia. It contended that the \\cbsite “casinoalitalia.com” irreparably harms, tarnishes, and dilutes the goodwill, reputation and image of Alilalia mark.

The court concluded that JPR is subject to in personam jurisdiction in Virginia, and therefore, Alitalia cannot maintain its ACPA in rem cause of action against casinoalitalia.com.

255 A recent decision by the United States District Court for the District of Virginia held it had ‘In Rem Jurisdiction’ over domain name registrants that were located in a foreign country and had been accused of Cybersquatting in Virginia. Even though this was not a contested case and the plaintiff granted summary judgment, this decision is a great precedent for the interpretation of the US Anti- cybersquatting Act and US Courts” jurisdiction on foreign cybersqualters.

In the past few years ACPA has been put to varied uses: to block parody website PETA y. Doughney82 protect free speech Northland Insurance Co. v. Blaylock83 and bad faith registration Mattel Inc. v. Internet Dimensions, Inc84

It is therefore very much clear that ACPA requires “bad faith intent to profit”, whereas the FTDA requires a “commercial use in commerce” of the mark.

The Act has been severely criticized, on a number of grounds. For example, it is alleged that trademark holders are given more rights than they currently have under trademark law. Domain name holders could be liable for “tarnishing” or “disparaging” a trademark. The concepts of tarnishment and disparagement are unique to the small number of trademarks that qualify as “famous marks”. Yet, the Act expands these concepts to all trademarks. Another example: a domain name holder who has not actually set up a site using a registered domain name may be liable to a trademark holder if he offers to sell the domain name to the trademark holder, even if the offer is made in order to avoid costly litigation.85

Thus, it’s claimed, could have disastrous effects on free speech and privacy. Domain name registrants who want to remain anonymous, or even those who forget to update their registrations, may be held liable for “intentionally failing to maintain accurate contact information”. Domain name holders engaging in protected criticism or satire would not only risk having their names taken away, but, ironically, they could be held responsible for compensating trademark holders who are the brunt of their criticism. And trademark holders in the US would now,

256 after simple hearing, be able to take away domain name holders in other countries (holding them financially liable, as well), without actual notice being given to the domain name holders. Courts may award damages of as much as $100,000 per domain name registration, even in the absence of any lost profits or actual harm. Domain name holders have to file their own lawsuits to protect their interests, and in any event must affirmatively demonstrate good faith; use of the domain name for legal business interests, and otherwise proves they are not trademark pirates. Even then, these are only factors for the court to consider, not actual defences. These problems, it is suggested, are tantamount to “guilty until proven innocent”. Among the few mitigating factors domain name holders can defend themselves with, only non-infringing commercial interests or use are given at any weight.86

Another criticism is that the Act also sets up a system whereby US-based companies would be able to take away domain names-without notice-from foreign companies and individuals who can’t afford to travel to the US to defend themselves (assuming they even know about the action against them at all)

Finally, the Act simply fails to cater to the most difficult kind of dispute those between twins (i.e. disputes between parties equally entitled to a trademark). Until some resolution of these disputes is ensured, it is unlikely that legislation will serve any purpose.

To overcome the hardship which are in ACPA, the United States, enacted the Truth in Domain Names Act in 2003, in combination with the PROTECT Act of 2003, forbids the use of a misleading domain name with the intention of attracting Internet users into visiting Internet pornography sites.

The Truth in Domain Names Act follows the more general Ant cybersquatting Consumer Protection Act, aimed at preventing typo squatting and deceptive use of names and trademarks in domain names.

257 (d) The Truth of Domain Name Act (2003) Before the enactment of the Truth of Domain Name Act (TDNA) trademark owners had only civil remedies that they can only resort to in the event of typo squatting. According to Sec 3002 of the ACPA, which is now part of the Lanham Act, the trademark owner must establish two elements to win a case against a typo squatter. First, he must establish that the registrant has a domain name that is identical to or confusingly similar to his distinctive or famous trademark, or that dilutes the famous trademark. Second, he must establish bad faith intent to profit from the mark”. The court can order the cancellation of the domain name, as well as require the payment of damages to the plaintiff trademark owner from $ 1000 to $ 100.000 per domain name.87

The trademark owner can also resort to the UDRP adopted by ICANN, which became effective on December 1, 1999. The UDRP applies to .biz, .com, .info, .name, .net, and .org generic Top Level Domains (gTLDs). The UDRP provides relief for trademark holders, if they can provide mainly according to article 4 (a) of the Uniform Domain Name Policy, the following”88 (i) Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) The domain name registrant have no rights or legitimate interests in respect of the domain name; and (iii) The domain name has been registered and is being used in bad faith. The only relief that the UDRP offers to the trademark owner is to transfer or cancellation of disputed domain name and there are no monetary damages.

The TDNA was passed in 2003 and provides that “anyone who knowingly uses a misleading domain name in the internet, intending to lure a person into viewing obscene material can be fined/ and/or imprisoned. The purpose of the Act is to “prevent the use of a misleading domain name with the internet to deceive a person into viewing .obscenity on the internet”. Sec. 2252 B provides as follows.89 a) Whoever knowingly uses a misleading domain name with the intent to deceive a person into viewing obscenity on the internet shall be fined

258 under this title or imprisoned more than 2 years, or both” b) Whoever knowingly uses a misleading domain name with the intent to deceive a minor into viewing material that is harmful to minors on the internet shall be fined under this title or imprisoned not more than 4 years, or both.

Under the TDNA, it is a criminal offense to use a misleading Internet domain name to deceive a person into viewing pornography. Those who violate the Act are subject to a fine and/or up to two years in prison, while those who do so with the intent to deceive a minor are subject to a fine and/or up to four years in prison.

The TDNA was criticized on the ground that is not clear on certain issues and that may create problems. For example the TDNA does not define what is considered to be a “misleading domain name” Who can decide what is considered obscene and harmful to minors? The TDNA is silent on all of these issues.90

(3) Indian Law Indian Government has taken its first step in regulating the cybercrimes by legislating the IT Act 2000, the legal regime on Information Technology in India is still in its nascent stage. There exist numerous grey areas and loopholes in the Act which need to be looked into and also the accelerated pace of technological development has raised many unprecedented issues that do not find express solution in the existing Act. The issues relating to intellectual property rights on internet, cybersquatting, credit card frauds, data protection and privacy on the net need to be addressed. Following the footsteps of United States and EU which have adopted specific legislations for data protection and privacy, India Government is also in the process of formulating laws to tighten its legal regime over the issues relating to data protection and privacy to bolster its offshore credibility. The government has taken into account the modern ways of cybercrimes, violation of data protection norms and prepared the Draft Information Technology Amendment Act 2006 addressing issues relating to innovative cybercrimes, in order to bring a comprehensive legislation to protect the rights of the citizens. This

259 will go a long way in making Internet and cyber space safer, people friendly and commercially more viable.

Protection under Trade Mar Act 1999 Trademark is defined under section 2 (1) (zb) of the Trade marks Act 1999. It means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging & combination of colours. The purpose of the Trademark law is not to confer a monopoly on a right to use a specific word or symbol, instead it allows the first user to have some exclusive rights, which in effect exclude some other entities from adopting a similar work.91

A domain name is part of the address of the location of a site on the internet. For instance harrods.com is the domain name of the London department store, Harrods. While Trademark has been around for a long time, domain names are comparatively a recent phenomenon attracting public attention only since the rise in popularity of the internet. The legal interface between the domain name and the TM has been the subject of much analysis. When the potential for conflict between the two first arose, there was there was the potential for a wave of cross border litigation as TM owners and the Domain name holders battled for the control of the domain names.92

Disputes over ownership of the domain names have arisen for a number of reasons. The domain name has been considered as akin to a trademark. Therefore those who own the mark for the no-internet business wish to use the same name on the internet; it is seen as a valuable addition to the branding of goods or services or the business as a whole. Trademark law is territorial whereas the internet is global. Therefore, different business trading under the same mark in various parts of the world may have what they consider to be the same legitimate claim to a particular domain name, as no domain name can be identical therefore only one business house can have a particular name.93

260 In India, Trademark Act, 1999 provides protection to trademarks and service marks respectively. A closer perusal of the provisions of the Act and the judgments given by the courts in India reveals that the protection available under the act is stronger than internationally required and provided. Rule 2 of the Uniform Dispute Resolution Policy requires that applicant to determine that the domain name for which registration is sought, does not infringe or violates someone else’s rights. Thus, if the domain name, proposed to be registered, is in violation of another person’s “trademark rights”, it will violate Rule 2 of the Policy. In such a situation, the registrar is within his right to refuse to register the domain name. This shows that the domain name, though properly registered as per requirements of ICANN, it is still subject to the Trade Marks Act, 1999 if a person successfully proves that he has “right” flowing out of the Act. This point is further strengthened by reading Rule 2 along with Rule 4(k) of the Policy, which provides the parties have a right to agitate before a court of competent jurisdiction, irrespective of the declaration or decision to the contrary by the ICANN. Thus, a contrary decision of an Indian Court of competent jurisdiction will prevail over the decision of ICANN.

Rights and Liabilities The rights and liability to be adjudicated under the Trade Marks Act, 1999 can be sub-divided under the following groups.94 (a) Liability for infringement, and (b) Liability for passing off

(a) Liability for infringement A trademark on registration is provided with a strong protection under the Act. The Act allows the owner of a registered trademark to avail of the remedies for infringement and passing off. It must be noted that though the passing off remedy can be availed of irrespective of registration, the remedy of infringement can be availed of only if the trade mark is registered properly as per the provisions of the Act. Thus, a person holding a domain name violating a registered trademark can be held liable for infringement under the provisions of this Act.95

261 (b) Liability for passing off

The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words a man is not to sell his goods or services under the pretence that they are those of another person. Requirements for a passing off action to be successful: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or good will of another trader(in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or good will of the trader by whom the action is brought or ( in a quia timet action) will probably do so.

The Trademark’ is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiff’s right is against the conduct of the defendant, which leads to or is intended or calculated to lead to deception. It must be noted that the Trade and Merchandise Marks Act, 1958 (the “TM Act”) and the Information Technology Act, 2000 of India do not deal with domain name disputes. Indian Courts, therefore, apply the rules of “passing off with respect to such disputes.96

Passing off is a species of unfair trade competition by which one person seeks to profit from the reputation of another in a particular business or trade. A passing off action is a direct subject matter of the law of tort or common law of right i.e. case law. The T.M Act does not define passing off, but only provides the rules of procedure and the remedies available.97

262 Wounder Ltd. V. Antox India Pvt. Ltd.98 Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation, which other has established it himself in a particular trade or business. The action is regarded as an action for deceit.

Scope of Protection under Trade Mark Act, 1999 The Act covers the remedies peculiar to the Indian legal system as well as the well-known common law principles of passing off. At the same time it is in conformity with the recognized international principles and norms. Thus, the protection provided under the Act is more reliable and secure. The following provisions are relevant in this regard.99 (a) A trademark registered under the act has the backing of the infringement arid passing off remedies. An unregistered trade mark is not protected by the Act, except to the extent of availing of passing off remedy.100 The definition of the terms “marks” and “trademarks” is so widely given that it is conveniently covers domain name.101 It must be noted that a “mark” is used, rightly or wrongly, if it is used in printed or other visual Representation.102 It cannot be doubted that a domain name corresponding a mark is definitely used both in the printed form (electronic form) and by visual representation. Thus, the provisions of the Act can safely be invoked to fix the liability in those cases. (b) A passing off action is maintained in law even against the registered owner of the trade mark, particularly if the trademark has a trans-border reputation.103 This principle recognizes the mandate of protecting the well- known trademarks, as required by the TRIPS Agreement and the Trade Marks Act, 1999. Thus even if a domain name is registered in good faith and innocently, the passing off action is maintainable against the registrant. (c) The registration of domain name with the Registrars recognized and approved by the ICANN may not have the same consequences as

263 registration under the Trade Mark Act. 1999.104 For instance, a registration under the Act carries with it a presumption of validity.105 (d) The Act considers even an innocent infringement or passing off as a wrong against the right holder, unlike domain name where mala fides has to be proved. Thus, it does not matter whether the person offending the right does so fraudulently or otherwise .106 (e) The Act will have overriding effect over any other law, which is in conflict with it. Further, since it is in conformity with the TRIPS Agreement, it is equally in conformity with the well accepted international standards. !t must be noted that Rule 4(k) provides that the proceedings under the UDRP Policy would not prevent either 5the domain name owner/ registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution, either before proceeding under ICANN’s Policy or after such proceedings is concluded. This shows that there is a simultaneous and double protection available under the Act. (f) The provisions of the Act are in conformity with the TRIPS Agreement and WTO provisions. These provisions are mandatory in nature unlike the provisions of WIPO, which are persuasive and discretionary in nature.. The UDRP Policy is formulated under the provisions of WIPO; hence it is not binding on parties whose rights are flowing from the Act. The distinction is crucial since in case of conflict between the Policy and the Act, the later will prevail and will govern the rights of the parties falling within the ambit. (g) The Act allows the making of an “International application” resulting in automatic protection in designated countries mentioned in it.107 This gives a wider and stronger protection to the trade mark and makes its misappropriation harsh and punitive. (h) The procedure for registration under the Act is more safe and reliable, as it is not granted on first come first basis. The safeguards provided under the Act are properly followed and only thereafter a trademark is granted.

264 Thus, the right recognized under the Act is more reliable, strong and authentic.

108 Consim Info Pvt. Ltd. V/s. Google India Pvt. Ltd. and Ors This is the one of the recent case which shows that domain names are protected under Trade Mark Act, 1999. In this case the High court of Madras has held that the generic names not registrable under Section 9109 of the Trade Marks Act, but registered under Section 31 (2)110 cannot be held invalid as a protected trademark at the same instance they cannot enjoy exclusivity.

Information Technology Act, 2000 Indian passed the Information Technology Act. 2000 to deal with the emerging cyber issues. It aims to provide for the legal framework so that legal sanctity is accorded to all electronic records and transactions carried out by the means of electronic data interchange and other means of electronic communication (c-commerce). However, it does not deal with major issues like Cher squatting, Spamming, Cyber Stalking. Phishing etc. Though it was expected to deal with so.

For the effective regulation of a phenomenon. the legal regime for it must be abreast with the latest developments taking place in that field. which becomes difficult in the case of Information Technology as it has an accelerated pace of development and hence the statute requires constant updating.

The Indian Information Technology Act reaffirms India’s commitment towards building a knowledge based society and keeping in pace with the rest of the world by providing a legal framework within which such society can flourish. While the Indian Government has taken its first step in regulating the cybercrimes by legislating the IT Act 2000. The legal regime on information Technology in India is still in its nascent stage. There exist numerous grey areas and loopholes in the Act which need to be looked into and also the accelerated pace of technological development has raised many unprecedented issues that do not find

265 express solution in the existing Act. The issues relating to intellectual property rights on internet, spamming. cybersquatting, cyber stalking, credit card frauds, data protection and privacy on the net need to be addressed. Following the footsteps of United States and EU which have adopted specific legislations for da protection and privacy. India Government is also in the process of formulating laws to tighten its legal regime over the issues relating to data protection and privacy to bolster its offshore credibility. The government has taken into account the modern ways of cybercrimes, violation of data protection norms and prepared the Draft Information Technology Amendment Act 2006 addressing issues relating to electronic contracts, breach of confidentiality and privacy, child pornography. e-commerce frauds like Phishing, identity theft, sending offensive mails, in order to bring a comprehensive legislation to protect the rights of the citizens. This will go a long way in making Internet and cyber space safer, people friendly and commercially more viable.

Yahoo! Inc. v. Aakash Arora & Anr.111 This suit was filed by the plaintiff before the High Court of Delhi seeking a decree of permanent injunction restraining the defendant from operating any business or selling, offering for sale, advertising and in any manner dealing in any services or goods on the Internet under the domain name ‘YAHOOINDIA. COM’.

It was submitted that the plaintiff was the owner of the trademark ‘Yahoo!’ and domain name ‘YAHOO.COM which are well-known and have acquired a distinctive reputation and goodwill. It was submitted that a domain name adopted by the plaintiff is entitled to equal protection against passing off as in the case of a trademark. The plaintiff contended that it would not be unusual for someone looking for an authorized ‘Yahoo!’ site with India-specific content to type in ‘YAHOOINDIA.COM’ (which is defendant’s domain name) and thereby instead of reaching the Internet site of the plaintiff, such person would reach the Internet site of the defendants. Allegation of cybersquatting was also made.

266 The defendants, on the other hand, averred that the Indian Trade Marks Act related only to good and not services and there could not be any action of passing off as the services rendered both by the plaintiff and the defendants cannot be said to be goods within the Act. It was also contended that ‘Yahoo!’ is a general dictionary word. Further, defendants have been using a disclaimer and thus, there were no chances of any deception. The contention that the principle of unwary customer which is applicable in a case of infringement and passing off of the trademark would not be applicable since the Internet users are technically education and literate persons.

It came on record that ‘YAHOO.COM’ was registered in plaintiffs favour with Network Solution Inc since 18 Jan 1995. It also came on to record that the trademark ‘’Yahoo!’ and its variance is registered or pending registration in 69 countries across the globe, India is one of them.

After appreciation of evidence on record and the law on the subject, the Court held as under: (a) The present is not for an action for infringement of a registered trademark but an action for passing off. The principle underlying the act is that no man is entitled to carry on his business in such a way as to lead to believe that he is carrying on or has any connection with the business carried on by another man. After referring to decisions in Cardservice International Inc v. McGee and Marks & Spencer v. One-in-a-Million, the Court held that although the word ‘services’ may not find a place in the expression - used in Sections 27 and 29 of the Trade and Merchandise Marks Act, yet, services rendered have come to be recognized for an action of passing off. (b) There can be no two opinions that the two domain names ‘YAHOO.COM’ and ‘YAHOOINDIA.COM’ are almost similar except for use of the suffix ‘India’ in the latter. When both the domain names are considered, it is crystal clear that the two names being almost identical or similar in nature, there is every possibility of an Internet user being confused and deceived

267 in believing that both the domain names belong to one common source and connection, although the two belong to two different concerns. (c) On the ‘literate Internet consumer’ argument, it was held that the consumer might be an unsophisticated consumer of information and might find his way to the defendant’s websile providing for similar information, thereby creating confusion. (d) The “disclaimer’ contention was rejected on the ground that the defendant’s appropriation of plaintiffs mark as a domain name and home page address cannot adequately be remedied by a disclaimer. (e) Though ‘Yahoo’ is a dictionary word, yet, it has acquired uniqueness and distinctiveness and are associated with the business of the concerned company and such words have come to receive the maximum degree of protection by the courts.

Ad-interim injunction retraining the defendant from using the domain name ‘YAHOOINDIA.COM’ till the disposal of the suit was granted.

112 Ruston and Hornhy Ltd. v. Zamindara Engineering Co The decision in Yahoo case has been quite similar to the one given by the Supreme Court in the above mention case, where it was found that there was a striking similarity in between the two words “Ruston” and “Rustamlndia” and the fact that the word “India” was added to the respondent’s trade mark was inconsequential and would not make any difference and the appellant was entitled to succeed for the infringement of his trademark.

The Rediff case is considered as a landmark in the development of Indian Jurisprudence on domain names.

113 Rediff Communication Ltd. v. Cyberbooth In this case the plaintiffs filed a suit for a permanent injunction restraining the defendants from using the mark/ domain name “RADIFF” or any other similar

268 name so as to pass off or enable others to pass off their business or goods or services as for the business or goods or services of the plaintiffs. Further it was contended by the defendants that the manner of watching for information on the Internet is such that there is no likelihood of deception or confusion between www.rediff.com and www. radiff.com; that the users of the Internet can never connect to a website by mistake. Besides, the users of the website are person skilled in the use of computers and are educated people and thus there is no possibility of any confusion being made by an Internet user in the two names.

A. P. Shah, J. of Bombay High Court observed, “the Internet domain names are of importance and can be valuable corporate asset. A domain name is more than an Internet address and is entitled to the equal protection as a trade mark. With the advancement and progress in the technology, the services rendered in the Internet site have also come to be recognized and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by the other as his services”.

He concluded that “1 am prima facie satisfied that the only object in adopting the domain name “RADIFF” was to trade upon the reputation of the plaintiff's domain name.... Once the intention to deceive is established, the court will not make further enquiry about likelihood of confusion. If it is found that man’s object in doing that which he did was to deceive that he had an intention to deceive the court will be very much more ready to infer that his object has been achieved, if the facts tend to show that is the case and to say that his intention to deceive ripening into deceit gives ground for an injunction”.

On the basis of above observation the court gave the decision in favour of the plaintiff.

As the traditional approach suggests that distinctiveness is needed for registration of any sign as a trade mark. Distinctiveness may be either inherently

269 distinctive, or may acquire distinctiveness through a secondary meaning (in the market place).

114 Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri The plaintiff-company is the proprietor of the trademark ‘DR. REDDY’S’. The defendants had registered the domain name ‘DRREDDYSLAB.COM’. The webpage merely showed the caption ‘welcome to the future Website ofdrreddyslab.com’.

A suit was filed by the plaintiff-company praying for a permanent injunction restraining the defendants from using the trademark/domain name DRREDDYSLAB.COM since the same was identical or deceptively similar to the plaintiffs trade mark DR. REDDY’S.

The plaintiff-company was established in 1984 for research and development activity in the field of medicine and over 15 years, grew into a full integrated pharmaceutical organization. It was contended that DR. REDDY’S is always perceived as indicative of the source of the company and the trademark DR. REDDY’S is a personal name of the plaintiff company’s founder and its use as a trademark in relation to pharmaceuticals is completely arbitrary.

The plaintiffs also contended that the defendants are in the business of registering domain names in India and their purpose of existence appears to be to block well-known trademark and even names of well-known personalities on the Internet. Having once registered as domain names, the defendants offer them for sale for large amounts. The potential for confusion or deception being caused on account of the adoption of the impugned trademark/name by the defendants and the likelihood of damage to plaintiffs' company business, goodwill and reputation by the operation of a website under the impugned domain name with them is enormous and is aimed at diverting the business of plaintiff company and to earn easy, illegal and undeserved profit.

270 The defendants had chosen not to appear and contest. On the basis of the available materials on record, the Delhi High Court in March 2001 granted a permanent injunction against a cyber-squatter Manu Kosuri thereby restraining him from using the domain name drreddyslab.com or any other deceptively similar trade mark/ domain name for Internet related services which may lead to a dilution of the distinctiveness of the plaintiff's trade mark “Dr. Reddy’s”. The cyber squatter has also been directed to transfer the domain name “dereddyslab.com” to the plaintiff Dr. Reddy’s Laboriteries Ltd. The court held that a domain name is of vital importance in e-commerce. Though the registration of the trade mark “Dr Reddy’s” was still pending registration, the High Court used the common law relief of “passing off, where a person has a right over a mark/name through adoption, continuous and exclusive use.

115 Tata Sons Ltd. v. Manu Kosuri& Others This case involved the following domain names: jrdtata.com, ratantata.com, tatahoneywell.com, tatayodagawa.com, tatatele services.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestide.com and tatatimken.com. The plaintiff averred that the defendants had misappropriated the plaintiff's trademark TATA since a part of a series of domain names that had been registered by the defendants incorporating the well-known and famous trademark TATA.

The plaintiff contended that it has been the registered proprietor of TATA since 1917 in relation to various goods, in various classes. It further had trademarks registered in nine other countries in various classes. The plaintiffs case was that since its trademark and name TATA was already perceived as a household name due to the involvement of its companies in almost every form of business activity, a business under identical name would attract actual or potential customers’ attention and induce them to subscribe to the services of the defendants or to deal in some manner with the defendants operating under the domain names believing them to be licensed or authorized by the plaintiff to do the said business.

271 The defendants did not put in their appearance despite service. The Court, on the basis of the materials on record, found that the plaintiff has been able to prove the averments made in the plaint.

After discussing the decisions in Yahoo, Inc. (supra) and Red if Communications (supra), it was observed that it is now well settled law that with the advent of modern technology particularly that relating to cyberspace, domain name or Internet sites are entitled to protection as a trademark because they are more than a mere address. The rendering of Internet services h also entitled to protection in the same way as goods and services are, and trademark law applies to activities on the Internet. The suit was decreed was the defendants were restrained from using the above domain names.

116 Acqua Minerals Ltd. v. Pramod Borse This was a suit seeking a decree for permanent injunction restraining the defendants from using the mark BISLER1 and directing them to transfer the domain name BISLER1.COM to the plaintiff.

The plaintiff is the registered proprietor of the trademark BISLERI. The word has no dictionary meaning and is an Italian surname. Its reputation grew over the years as a result of enormous consumer confidence and trust in the mineral water and the mark BISLERI came to be associated exclusively with the plaintiff Plaintiff applied for registration of domain name BISLERI.COM but found that the defendants had already registered the same. It was contended that a person wanting to know more about their product will type BISLERI.COM but will be taken to the defendant’s website which has nothing to do with the plaintiffs' goods. Thus, constitutes a mischief of passing off by the defendants. The plaintiff referred to Paragraph 4(b)(i&ii) of the UDRP to project the element of ‘bad faith’.

272 The question which arose for consideration was whether the domain name registered with the Network Solutions, Inc. i.e., the Registering Authority has the same protection as the trade name or trademark registered under the Trade and Merchandise Marks Act, 1958.

With the advancement of Internet communication, the domain name has attained as much legal sanctity as a trade name. After discussing the meaning of ‘domain, it was held that the same principles and criteria are applicable for providing protection to the domain name either for action for infringement if such a name is registered under the Trade and Merchandise Marks Act or for a passing off action as are applicable in respect of trade mark or name.

The court also relied upon the ‘bad faith’ test under the UDRP. It found that the defendants had blocked user of the trade name BISLERI from getting the registration as a domain name and as such it has affected the trade and name of the plaintiff. It was obvious that the domain name ‘BISLERI’ was chosen by the defendants with mala fide and dishonest intention and as a blocking or squatting tactic.

It was also found that the defendants already had their own domain name, namely, [email protected]. It appeared that the only object of the ‘defendant in adopting BISLERI.COM was to earn huge money for transferring the said domain name in the name of the plaintiff knowing it well that they had no right either of the registration of the domain name or of any other domain name which consisted of the plaintiff's mark or copyright name.

The suit was thus decreed on the ground of bad faith registration.

117 Mawana Sugars Limited v. Panalink Infotech Limited. The complainant company has been in the sugar producing and marketing business under the trademarks MAWANA and MAWANA SUGARS for the past 55 years. The complainant registered its domain names through the

273 respondent, who illegally transferred the same to some third party during the pendency of the proceedings. It was held that it was a typical case of “Cyberflying”, which means a phenomenon where a registrant of a domain name, when named as a respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the Policy. Held that respondent failed to show any legitimate right in the domain names and transfer of the domain name without the consent of the complainant was an action in bad faith. It was held that the respondent was involved in “CYBERFLYING”.

Times Internet Ltd. v. Belize Domain Whois Service Ltd. & Others.118 In this case the domain name in dispute was “indiatimestravel.com”. The plaintiff alleged that the trademark and logo “Indiatimes” was coined by M/s Bennett Coleman & Co. Which runs numerous publications such as the Times of India, The Economic Times, Navbharat Times, Delhi Times and Bombay Times and with the passage of time the website “indiatimes.com” acquired an extensive reputation amongst the people and large number of persons started using its services and purchasing goods through it. It has also been alleged that the mark/name “indiatimes” has come to be associated exclusively with the plaintiff company and the mere mention of the word “indiatimes” signifies the services and products marketed by the plaintiff through its e-commerce website. The products marketed by this name/mark are known for the quality, authenticity and best prices/bargains. The trademark “travel.indiatimes.com” was also registered in the name of the plaintiff company w.e.f 7th June 2000. It is also offering extensive travel services and on clicking “http://travel.indiatimes.com” on the internet, the user is taken to the page “http://travel.indiatimes.com/ovt/ faces/ travellndex.jsp”, which is the travel services desk of the plaintiff on the internet. The same page can also be assessed by clicking on various links on the home page of “indiatimes.com” and this service is immensely popular, attracting large business. The plaintiff has also got the name “indiatimes.com” registered as a domain name with Network Solutions Inc. The plaintiff recently came to know that a domain name “India times travel .com” has got been registered by defendant. The defendant is trying to take advantage of the branding and promotional initiatives

274 of the plaintiff’s company in relation to the site “indiatimestravel.com”. The plaintiff also claimed that the domain name “indiatimestravel.com” is identical with the registered trademark of the defendant’s “travel. India times. com” and the web address “http://travel.indiatimes.com” belongs to the plaintiff company and is deceptively similar to the domain name of the plaintiffs company “indiatimes.com”. The domain name in issue, registered by the defendant is virtually a copy of the domain name “indiatimes.com”. Any user on the net who come across the domain name “indiatimestravel.com” is likely to get confused and believe that the said domain name belongs to the plaintiff company and this has been done by the defendant to earn huge money by using the plaintiff's domain name.

The plaintiff prayed for the injunction restraining the defendants from using or squatting from the trademark or domain name “indiatimestravel.com” or operating any business or selling, offering for sale, advertising and /or deal in any manner in services or goods using the trademark/domain name “indiatimestravel.com” or any other identical or deceptively similar name. An injunction has also been sought seeking directions for the transfer of the domain name “indiatimestravels.com” to the plaintiff.

The court held that, a domain name may have all the characteristics of T.M. and could find an action for passing off. Any attempt on the part of a person to enrich upon the good will generated by any other person needs to be curbed by the court whenever approached by the aggrieved party in this regard. Further the court was of the opinion that in the instant case, the domain name adopted registered by the defendant being identical to the coined Trademark of the plaintiff, it is a clear case of passing off and the defendant is not entitled to continue using the domain name.

Satyam Infoway Ltd. v. Sifynet Soloutions Pvt. Ltd.119 The aforesaid principle of law has now been cited with approval by the Hon’ble Apex Court in this case. The question before the court was whether the

275 use of the same or similar domain names might lead to a diversion of users, which could result from such users mistakenly accessing one domain name instead of another.

As per the facts of the case, the appellant which was incorporated in 1995 registered several domain names like vvww.sify.net, www.sifymall.com, www.sifyrealestate.com, etc in June 1999. The word “Sify” is a coined word, which the appellant claims to have invented by using elements of its corporate name, Satyam Infoway. The appellant claimed a wide reputation and good will in the name “Sify”. The respondent started carrying on business of internet marketing under the domain names, www.sifynet.net and www.siffynet.com from May 2001.

Coming to know about the use of the word “Sifry” as part of the respondent’s corporate and domain name, the appellant served notice on the respondent to cease and desist from either carrying on business in the name of Sifynet Solutions (P) Ltd or Sifynet Corporation and to transfer the domain names to the appellant. On the refusal of the respondent on the basis that the respondent was passing off its business and services by using the appellant’s business name and domain name.

The City Civil Court Judge allowed the application for a temporary injunction on the grounds that the appellant was the prior user of the trade name “Sify”, that it had earned good reputation in connection with the internet and computer services under the name “Sify”, that the respondent’s domain names were similar to the domain name of the appellant and that confusion would be caused in the mind of the general public by such deceptive similarity. It was also found that the balance of convenience was in favour of granting an injunction in favour of the appellant.

The respondent preferred an appeal before the High Court. It was held that the finding that the appellant had earned a reputation and goodwill in respect of

276 the domain name “Sify” was not based on a consideration of the necessary factors. It was observed by the High Court that there was no question of customers being misled or misguided or getting confused.

On the basis of above observations the Supreme Court concluded that “the respondent was seeking to cash in on the appellant’s reputation as a provider of service on the internet. In view of our findings albeit prima facie on the dishonest adoption of the appellant’s trade name by the respondent, the investment name of the appellant in connection with the trade name, and the public association of the trade name Sify with the appellant, the appellant is entitled to the relief it claims”

Thus, it is very much clear that with the advancement of technology and communication, domain names have attained as much legal sanctity, as trade names. The domain name is a valuable corporate asset and is entitled to equal protection as a trademark. The decisions in the aforesaid cases suggest that the basic principles of the trademark law apply to the Internet domain names.

From the above discussion it is quite clear that the courts in India granted, injunction as a relief for infringement and passing off action in domain name disputes. The courts were not concerned with liquidated damages because of the notion that it is difficult to quantify the loss which a person has suffered by the cybersquatting. But in recent years there has been a transition in the judicial trend in cases relating to cybersquatting.

The courts have extended remedial measures beyond the statutory provisions for compensating the loss caused to the person at the hands of cyber squatter.

Non Judicial Dispute Resolution Policy under UDRP Internet Corporation for Assigned Name and Numbers (ICANN) as successor of NS1 came out with its own version of dispute resolution policy, called ‘Uniform Domain Name Dispute Resolution Policy” on October 24, 1999.

277 It preceded the ACPA by a month. It is a comprehensive policy that covers domain name dispute areas, like trademark or service mark infringement. It has been able to create a basis for global uniformity in the resolution of domain name disputes.

All registrars in the .aero, .biz, .com. .coop, .info, .museum, .name, .net. .org and .mobi top level domains follow the UDRP. Under the policy, most types of trademark based domain name disputes must be resolved by agreement, court action or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain name (cybersquatting). Disputes alleged to address by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

To invoke the policy, a trademark owner should either (a) files a complaint in a court of proper jurisdiction against the domain name holder (or where appropriate an in rem action concerning the domain name) or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.120

As discussed earlier in the Policies section of this paper, it is quite clear that in UDRP much emphasis has been given to the bad faith registration.

UDRP: Registration in Bad faith The following circumstances, in particular but without limitation, provide evidence that a domain name has been registered and used in bad faith [Para 4(b)]: • Circumstances indicating that the respondent-registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

278 • The respondent-registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent- registrant has engaged in a pattern of such conduct; or • The respondent-registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor, or • By using the domain name, the respondent-registrant has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web-site or location or of a product or service on his (respondent’s) web-site or location.

Bennett Coleman & Co. Ltd v. Steven S. Lahvani121 and Bennett Coleman & Co. Ltd v. Long Distance Telephone Co.122 Bennett Coleman & Co. Ltd. a complaint filed with W1PO in January 2000, regarding the names and respectively. The complainant published in newspapers of Indian content named “The Economic Times,” which had an average daily circulation of 350,100, and “The Times of India,” which had a daily circulation of 2,522,488. The complainant had held the domain names, and since 1996, using them for the electronic publication of its respective newspapers. The respondent’s web sites used the domain names and redirected Internet users to the site which also provided India-related news and articles. While passing their decision in the matter, WIPO took cognizance of the following factors: 1. The newspapers of the complainant had a wide circulation both within and outside India. The newspaper websites would have added to their overall reputation, since Internet users around the world could access the sites. 2. The disputed domain names, having the same title as the hard-copy of the complainant’s newspapers, differed from the complainant’s domain name only by the incorporation of the definite article “the” at the beginning.

279 3. The respondent’s sites diverted the Internet users to another web-site and appeared to act as “postal addresses.” The necessary implication was that the domain names in contention were used to take advantage of the reputation of the complainant by misleading Internet users that the disputed sites were owned by the complainant. 4. Since the Internet is accessible world-wide, it could not be contended that the trade mark of the complainant was not registered in a particular country. 5. Even though the marks may not have been registered, the act of the respondent would amount to the tort of passing off, since it was the reputation of the complainant and not registration of the trademarks that was paramount to the complaint. Therefore, the WIPO panelists confirmed the presence of all three requirements as stated in Para 4(a), and transferred the domain names, and to Bennett Coleman & Co.Ltd.

Tata Sons Ltd. v. The Advance Information Technology Association.123 In this case, Tata Sons filed a complaint against AITA with WIPO for the illegal registration of the domain name The WIPO panellists held that “Tata” was a well-known name, linked to high quality products. The name “Tata” was a family name and had no dictionary meaning. Further, both AITA and Tata were based in the same city and AITA was bound to know of Tata’s reputation. Further, AITA had not activated the disputed domain name which indicated that AITA was merely hoarding the domain name. In this case the WIPO panellists held that even if the web-site were activated, the facts would lead them to believe that the registration was in bad faith. The domain name was, therefore, transferred by ICANN to Tata Sons based on the award granted by WIPO in favour of Tata Sons.

280 124 Hero Honda Motors v. Rao Telia On the basis of above case it can be said that non-activation of the disputed mark is also an indication of the mala fides of the respondent. Another dispute was the passive holding of a domain name’ indicated that its registration was in bad faith occurred. The complaint was filed with the WIPO by Hero Honda Motors and Honda’s joint venture company in India against Rao Telia, in relation to the domain name . A person based in the United States of America, who had registered the domain name for a website dedicated to fans of Honda. However. Mr. Telia had not activated the website. The WIPO panellists held that the domain name was identical to the trademark of the complainant, and the domain name was transferred to Hero Honda Motors.

NIIT Ltd. v. Parthasarathy Venkatram125 The domain name at issue before World Intellectual Property Organization Arbitration and Mediation Centre (the “WIPO Center”) was “myniit.com”. The Complainant’s business run under the mark “NIIT” has achieved a phenomenal growth ever since its inception and the Complainant also extensively advertised its business and goods under the mark “NIIT”. The panel held that the registration of the domain name “myniit.com” be transferred to the Complainant.

Mahindra & Mahindra Ltd v. Neoplanet Solutions 126 The impugned domain name is “mahindra, com” the complainant pleaded that they were the registered owners of the trademark mahindra and the name had been exclusively associated with motor vehicles. The respondent did not contest the case and the domain name was held to be registered and used in bad faith and it was transferred to the complainant. Similarly the complainants found success in other cases, like Microsoft Corp v, Amit Mehrotra,127 the domain name involved- “Microsoft.org”; 1TC Ltd. v. Buy This Name,128 the domain name involved “itcthreadneedle.com”; Castro; Ltd v. Shriniwas Ganediwa.129

281 The domain name involved “castrolindia.com”. In all such cases the Panel concluded that the respondent(s) had no legitimate interest in the confusingly similar domain names and that they have registered in bad faith.

Asian Paints (India) Ltd. v. Domain Admin.130 In this case, it was held by the sole panelist, Alan L.Limbury that registration of domain name “asianpaints.com” is identical and confusingly similar to complainants mark (and the domain name registered by it: “asianpaints.com”). It observed that “the respondent can have no plausible explanation for registering the disputed domain name and has no right or legitimate interests in it...... the omission of the letter “s” is a deliberate attempt to exploit user’s typographical errors when seeking the complainant’s website www.asianpaints.com. The absence of any legitimate interest in the disputed domain name and the lack of association with paint on the respondent's website demonstrate registration and use in bad faith. It directed that the domain name be transferred to the complainant.

Telstra Corp. Ltd. v. Indian Yellow Pages131 The respondent registered the disputed domain name andin June 1997. The complainant though Australia’s leading provider of telecommunications and information services, was also producing the Australian Yellow Pages business directories.

The complainant contended that it had Australian trademark registrations for YELLOW PAGES and by virtue of its Australia-wide trade in and around its yellow pages publications over the last decade; it acquired common law rights in the name of YELLOW PAGES in Australia. It further contended that to Australians the term YELLOW PAGES means the product of tjie complainant. Moreover there were features on the respondent’s website (e.g. Australian insignia and a picture of a Yellow Pages Directory), which would likely to lead people to believe that the site was a site of the complainant. It further argued that the

282 respondent had no rights or legitimate interests in respect of the domain name in question.

The respondent, on the other hand, contended that it has legitimate interests in respect of the domain names in question. It further contended that the complainant’s act amounts “to snatch the domains” and therefore constitutes Reverse Domain Name Hijacking (RDNH).132

The Panel [Sole Panelist- Tony Willoughby] observed that it has “no hesitation in finding that the Domain Names are confusingly similar to a trademark or service mark in which complainant has right.....at the time of registration of the Domain Name the respondent will have known, along with all other Internet service companies, that on-line versions of Yellow Page directories were an inevitable and natural progression from their printed equivalents”. It held that “the Domain Names were registered in bad faith and are being used in bad faith within the meaning of paragraph 4(a) (iii) and 4(b) (iv) of the policy”. It dismissed the allegation of RDNH and directed and, be transferred to the complainant.

It is significant to note that in all aforesaid cases, the panellist came to the conclusion that the respondents have no rights or .legitimate interests in respect of the Domain Names. The panels have taken cognizance to the complainant’s registered rights, giving credence to national trademark laws and practices.

It is significant to note that UDRP is a proactive dispute resolution mechanism, as it provides:

A domain name registrant may continue to use his or her domain name while the complaining party in the domain name is being determined before an ICANN-approved arbitration panel or a court of competent jurisdiction [UDRP Para7: Maintaining the Status Quo].

283

It permits the trademark owners to challenge the use of domain names that are confusingly similar to their trademarks. It goes beyond the Anti- cybersquatting Consumer Protection Act, which restricts the trademark owner to challenge the use of a domain name because it is dilutive of his or her famous mark.[ Compare UDRP Para4(a)(i) with 1515 U.S.C ssl 125(d)(l)(A) (ii)(lI)].

It applies not only to nationally registered trademarks but also to state and common law trademarks.

Proceedings under the UDRP are limited to domain name disputes in which the disputed domain name” has been registered and is being used in bad faith”. [UDRP Para4 (a) (iii)]. The UDRP is primarily targeted at cybersquatting. It does not apply if the domain name registrant has registered the disputed domain name in good faith.

The global expansion and acceptance of the UDRP is a testimony of its simplified procedure, easier accessibility and arbitral transparency. This online dispute settlement mechanism has also proved to be good ‘revenue model’ for the dispute resolution service providers.

Wal-Mart Stores Inc. v. Walsucks133 However the arbitrators are now exceeding the scope of the policy especially in cases of gripe sites. The clearest example of the erosion of the first element of the policy i.e. domain name is identical and confusingly similar to a trademark or service mark can be seen in this case. The panel ordered the respondent to transfer the name “walmartcanadasucks .com” to the complainant Wal-Martlnc. In the decision, the panel stated that although the site was unlikely to be confused as belonging to the corporation, it would however derive its business off of customers looking for the large retail manufacturer. However, it would be bad practice for an attorney to base a decision to file for arbitration based on this case since it has been highly criticized. Principal to the criticism is

284 the fact that the panel actually stated in their decision that it was unlikely there would be any confusion between the two sites.

Outside of the sucks cases, the first element of the Policy was woefully applied in Tata Sons v. D&V Enterprises,134 where the domain name “bodacious-tatas.com” was found to be confusingly similar to the trademark ‘TATA’. Although the panel was of the view that the inclusion of the word “bodacious” in the domain name registered by the Respondent, taken together with the addition of the letter ‘s” to TATA, could create a sufficient distinction, for trademark purposes, between the Complainant’s TM TATA, on the one hand, and the Respondent’s Domain Name on the other. Such a contention, however, is untenable in the view of the Panel, by virtue of the very high level of goodwill that both TATA and TATAS have acquired. Further, TATA, without any vestige of doubt, constitutes a famous (or, in international parlance, well known) mark - a subject to which the Panel will return.

For all the foregoing reasons, and after careful consideration of the submissions and evidence, the Panel decided that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has exclusive rights, and that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith. Pursuant to Paragraph 4(i) of the uniform policy therefore, the panel directed that the registration of the domain name be cancelled.

Cyber Squatting: Role of World Intellectual Property Organisation (WIPO) (1) Cyber Squatting Registration of domain name is purely passed on a first come – first served basis and made no checks to see if the applicant as any others were entitled to any rights in the name.

285

Cybersquatting is a crime against the laws and regulations of cyber law. It can be defined as registering, trafficking in, or using a domain name with bad- faith i.e. mala fide intent to make profit from the goodwill of a trademark belonging to someone else. The cyber squatter is an Internet user who has registered multiple domain names with the hope of selling them to the companies who own trademarks identical to those names.135

The term is derived from “squatting”, which is the act of occupying an abandoned or unoccupied space or building that the squatter does not own, rent or otherwise have permission to use. Cybersquatting however, is a bit different, in that the domain names that are being “squatted” are (sometimes but not always) being paid for through the registration process by the Cyber squatters. Cyber squatters usually ask for prices far greater than that at which they purchased it. Some cyber squatters put up derogatory or defamatory remarks about the person or company the domain is meant to represent in an effort to encourage the subject to buy the domain from them.136

Some enterprising persons registered the names or the trademarks of the well-known companies as domain names, with the sole intention of selling the names back to the companies when they finally woke up. Panasonic, tata, bennet & coleman and avon were among the “victims” of cybersquatting. This practice has reaped rich dividends for some who rushed madly to register TMs or names close to TMs and then demand high price to sell these domain names back to the interested companies. Since there is no connection between the trade mark registration and domain name registration. This lack of connection has been exploited maximum by the cyber squatters. The first come, first -served, nature of domain name is registered by someone with the sole purpose of selling it at a premium to a trade mark owner.137

Often, cyber squatters take such names and offer them for sale to the person or company who should rightfully have the domain under trademark laws.

286 They usually ask for a high price, much greater than the actual cost of the domain when it was available. Some cyber squatters put derogatory remarks on the registered domain about the person or company it is njeant to represent in an effort to encourage the subject in question to buy the domain.138

As the commercial function of the Internet has grown, more legal disputes have arisen because many private citizens and companies have rushed to get a spot in the “cyber world” in order to exploit the potential of on-line commerce.139

The existence of domains without specific requirements for the registration brought a policy of “first come, first served”. This has created many disputes with trade mark owners because, since the 1990s, many speculators have started to register domain names in order to resell them for a much higher price to trade mark owners and new businesses. Problems arose with trade mark owners because of their entitlements to IP rights make them feel ripped off by this new practice called “cybersquatting”.140

An example of cybersquatting of a famous name in India was of Arun Jaitly, General Secretary of the BJP and leader of opposition in Rajya Sabha. The Delhi High Court in CS (OS) 1745 of 2009 Arun Jaitly v. Network Solutions Pvt. Ltd. Passed an order on 4.7.2011 :

Directing to return of the domain name arunjaitly.com to him (Arun Jaitly); Restraining the defendants from using any derivative of his name; Awarding 5 lakhs punitive damages.

(2) Typo – Squatting Typo – Squatting is a form of cybersquatting which is also called URL hijacking.

287 Typo-squatting,’ is using a minor variation of its name to divert customers who mistype it. These practices are illegal. It is a kind of Domain name dispute.

Air France has a website www.airfrance.com. Alvaro Collazo, a ruguayan owner has another website www.arifrance. com, Air France raised a dispute that he was guilty of ‘Typo-squatting’. In July 2003, WIPO, a service provider under UDRP, held that the use by Collazo of a ‘typographical misspelling’ of the Air France trademark showed that he had registered his site in bad faith, to create confusion and make money by offering links to other commercial domains. Other ‘typosquat’ sites held illegal by a service provider include www.nasdasq.com, a corruption of the New York Stock Exchange’s nasdaq.com, and www.wallsreet journal.com, dropping only a Y from the name of the global business newspaper.141

(3) Protest Website Protest websites, as the name suggests, are those websites that point out some shortcoming about a service or product. They are typically formed by adding the words ‘sucks’ with the name of the service or product. This means that they use the name of that service and product as well. It is not their trademark.142

Wal-MartCanadaSucks.com and four similar domains were examples of such websites. A WIPO judge while deciding a dispute under UDRP in July, 2000 held them to be illegal and handed them over to Wal-Mart saying that they infringed Wal-Mart’s trademark and were an abusive registration. This case was soon followed by another that handed over a range of “sucks” website for UK companies, including FreeserveSucks.com, DixonsSucks.com, NatWestSucks.com and DirectLineSucks.com. These cases have since been used as the foundation for many subsequent domain disputes. However this may change in view of the decision of the US Court of Appeals in Bosley Medical Institute v. Kremer (The Bosley Cae) It was held that:143

288 Like the District Court, we agree with Kremer. We hold today that the non-commercial use of a trademark as the domain name of a website the subject of which is consumer commentary about the products and services represented by the mark does not constitute infringement under the Lanham Act.’

The decision of the Bosley case on this point, is in line with Justice Holmes’ observation in Prestonetts. Inl v. Lory, 264 US 359 368; 44 S, ct 350 (351), 68 L.Ed. 731 (924)

Trademark does not confer a right to prohibit the use of the word or words. It is not a copyright. ... A trademark only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his ,., When a’mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth’

In Indian context, this question has to be answered in the light of sections 28, 29 and 30 of the Trade Marks Act. These sections confer rights on registration of trade mark, explain when are they infringed, and prescribe limits on their rights. According to these sections, registered trade mark: • only provide exclusive right to use it in relation to goods or services; • is infringed only if it is used by any other person in course of trade in relation to goods or services; • is not infringed by its use to indicate, apart from others, the quality of goods or services. A similar view, as taken in the Bosley case, may be taken in our country too.144

(4) Linking Linking is a process whereby a user connects from one side of the internet to another site by clicking on a designated space on the initial site (hyperlink) which then connects the user to the other site. It is one of the most useful aspects for the internet users, because it permits users easily to navigate the internet

289 without needing repeatedly to type website addresses or search terms. There are three types of links to material on other sites:145 • Simple or “outline” links- when the link is clicked, the homepage of another site is shown on the accessor’s screen, enabling access to items included in that site; • Deep or “in-line” links- when the link is clicked, specific material on the other site is brought to accessor’s screen, bypassing the homepage of that site; • Embedded links- the link is embedded in the accessed site, so that material in another site is automatically incorporated into display on the user’s compute

Shetland Times, Ltd. v. Jonathan Wills and Another146

The first “linking” case, the issue presented in this case was whether the Shetland News’s (“News”) “deeplink” to embedded pages of the Shetland Times’s (“Times”) web site, through the use of Times’ web site’s news headlines, was an act of copyright infringement under British law. The matter settled on the day of trial, shortly after the court had issued a preliminary injunction precluding the deeplink. Although much discussed, this opinion lias proved to be of little legal signifigance, in part because of the extremely low evidentiary standard applied by the court.

A Danish court in July, 2002 has also granted an injunction in favour of the Danish Newspapers Publishers’ Association banning news feed service News booster from deep linking to newspaper stories. An appeal against the decision is pending.

A Brussells Court also held in 2007 that Google violated copyright, by publishing links to articles from Belgian Newspapers without permission.

290

(5) Framing Another issues that has emerged is framing, which allows a web page developer to build a frame or a border of text, or graphics on its own site and pull a webpage from another site into the frame or border, thus allowing it to offer the other site’s context within the frame on the developer’s own site. Framing creates significant legal issues because it enables operators to create a new page that may eliminate content advertising and even the site identifier from the framed page.147

The Washington Post, et als. v. Total News, Inc., et als., Southern District of New York.148 In this case, the Washington Post and other news services sought to preclude the defendant online news service from “framing” their web sites and web site’s content. The plaintiffs claimed that the act of “framing” infringed, diluted and misappropriated their copyrighted materials. The matter settled out of court with the defendant agreeing to remove its frame and the plaintiffs allowing access to their web sites by simple hypertext link.

(6) Spamdexing This word comes from a combination of spam and indexing. Here, either the company’s trademark is placed in the text of the web page instead of in the metatag, or placed in white print text so that it is technically part of the web page, but not visible to readers. Either way the option of the spamdexing is to cause search engines to find the web sites based on the popularity of the trade mark and thus give a website a higher “hit-rate” than it would normally have. This places it on the top of the list in a response to an internet search, and based on its position of likely option drives additional traffic to the sides.149

(7) Spoofing A web user which has an email-id sometimes may discover an unwanted message from some undesirable site for example some pornographic site, such mails are called spasm and now a days most of the websites provide for the filters

291 which automatically junk these mails. But sometimes these blocked sites with the help of this method where they use the name of some well-established web sites so that these mails can easily pass through the filters. The method is known as spoofing. Here one web site acquires the identity of another web site.150

(8) Metatag Information is retrieved on the Internet with the help of search engines they locate websites that match the user’s particular area of interest. It is done by typing a keyword query into the search engine, and the programme searches its database and returns a list of results. The results returned by search engine programmes are a list of hyperlinks related to Web pages. In finding out relevant Web pages, search engines make use of metatags. But before we discuss the legal complication in this regard, let’s understand what a meta-tag is.151

Meta means beyond the ordinary or usual and is sometimes used for anything which is about itself: metatags provide information about the contents on the Web page, rather than how the contents of that page should appear They are information about the information on the Web page. They are located within a specially designated portion of the HTML code, which generates the page and are hidden from normal view but are read by search engines.152

Metatag is the keyword embedded in a website’s HTML code as a means for internet search engines.153 categories the contents of the website. Metatags are not visible on the website itself (although they can be made visible together with the source code of this page). The more often a word appears in the hidden code, the higher a search engine will rank the site in its search result. In various jurisdictions, trademarks owners challenged the unauthorized use of their TMs as a metatag.154

Roll of the World Intellectual Property Organisation (WIPO) WIPO arbitration and Mediation centre was established in 1994. It has provided on alternative dispute resolution (ADR) options for the resolution of

292 international commercial disputes between private parties. Developed by leading experts in cross border dispute settlement, the arbitration, mediation and expert determination procedures provided by the WIPO centre are recognized as particularly appropriate for technology, entertainment and other disputes involving intellectual property.155

The Uniform Domain Name Dispute Resolution Policy (UDRP), which was proposed by WIPO in 1999 and has become accepted as an international standard for resolving domain name disputes outside the courts, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names, commonly known as cybersquatting. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and uses the domain name in bad faith. Disputes are decided by independent panellists drawn from the WIPO Centre’s global list of trademark specialists. The domain name registration in question is frozen (suspended) during the proceedings. After reviewing a case, panellists submit their decision within a period of 14 days. If a panellist’s decision to transfer a domain name is not challenged in a competent court within a period of ten business days, the registrar is legally bound to implement the panellist’s decision. The entire case normally takes no more than about two months.156

The WIPO Centre is the leading global provider of domain name dispute resolution services and provides a range of resources for users and the general public. An illustration of these resources is the freely available WIPO jurisprudential Overview, which provides a distillation of panel findings in the thousands of domain name cases filed with WIPO. Parties, counsel and others around the world use this unique WIPO tool to find their bearings in the growing cybersquatting jurisprudence.157

293 Recognizing the problems raised by clashes between domain name system and trademarks, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre has developed an online Internet based system for administering domain name disputes involving intellectual property. This Dispute Resolution Mechanism is unique in that it is designed to be used online both for document exchange and for filling of evidence. However, the original documentary evidence will still be needed to be filled in a physical form. The dispute resolution is simply signed and thus, providing an inexpensive and efficient service and does not in any way seek to take the place of national jurisdiction. A successful complainant’s remedy is limited to requiring the cancellation of the registrant’s domain name or the transfer of domain name registration to the complainant” 158 The procedure will be handled in the large part

online and is designed to take less than 45 days with a provision for the parties to go to court to resolve their disputes or contest the outcome of the procedure.

Cybersquatting is the most crucial type of domain dispute prevalent around the world. The world today acknowledges the accomplishment of WIPO online dispute resolution system. It has extended to thousands of Internet users easily accessible and reliable means of dispute resolution and delivered substantial justice in a very short span of time. WIPO has resolved number of domain name disputes online.

The WIPO Cybersquatting Statistics In 2013 trademark holders filed a record 1025 cybersquatting cases covering 2759 internet domain names with the WIPO centre under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). According to the latest World Intellectual Property Organisation (WIPO) Domain Name Dispute Resolution Statistics there has been a much percentage of decrease over the record established in 2012.

294 Number of Cases per year 159

Year Number of Cases 1999 1 2000 1857 2001 1557 2002 1207 2003 1100 2004 1176 2005 1456 2006 1824 2007 2156 2008 2329 2009 2107 2010 2696 2011 2764 2012 2884 2013 1025 Total 26139

3500

3000 2884 2764 2696

2500 2329

2156 2107 2000 1857 1824

1557 1456 1500

1207 1176 1100 1025 1000

500

1 0 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013

295

Number of Domain Names by Year160

Year Number of Cases 1999 1 2000 3760 2001 2465 2002 2042 2003 1774 2004 2599 2005 3312 2006 2806 2007 3545 2008 3958 2009 4685 2010 4367 2011 4780 2012 5080 2013 2759

6000

5080

5000 4685 4780 4367

3958 4000 3760 3545 3312

2806 2759 3000 2599 2465 2042

2000 1774

1000

1 0 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013

296 Nubmer of Domain Names by Year161 Average Number of Domain Names Year Per Case 1999 1 2000 2.02 2001 1.58 2002 1.69 2003 1.61 2004 2.21 2005 2.27 2006 1.54 2007 1.64 2008 1.7 2009 2.22 2010 1.62 2011 1.73 2012 1.76 2013 2.69

3.0

2.69

2.5 2.27 2.21 2.22

2.02 2.0 1.76 1.69 1.70 1.73 1.61 1.64 1.62 1.58 1.54 1.5

1.00 1.0

0.5

0.0 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013

297 Area of Complaint Activity162 Industry and Commerce (Decided Cases by percentage)

Category Percentage of Cases Retail 12.06 Banking and Finance 9.24 Biotechnology and Pharmaceuticals 8.9 Fashion 8.43 Other 8.27 Internet and IT 7.95 Food, Beverages and Restaurants 5.97 Entertainment 5.04 Media and Publishing 4.94 Hotels and Travel 4.82 Electronics 4.36 Automobiles 3.99 Heavy Industry and Machinery 3.95 Telecom 3.55 Transportation 3.04 Sports 1.98 Insurance 1.87 Luxury Items 1.64

298

12.06 12

10 9.24 8.9 8.43 8.27 7.95 8

5.97 6 5.04 4.94 4.82 4.36 3.99 3.95 4 3.55 3.04

1.98 1.87 2 1.64

0 Other Retail Sports Fashion Telecom Insurance Electronics Automobiles Luxury Items Entertainment Machinery Transportation Internet and IT Restaurants Pharmaceuticals Hotels and Travel Biotechnology and Heavy Industryand Banking and Finance Media and Publishing Media Food, Beverages and

299 Geographical Distribution of Parties in WIPO Cases in 2013: Top 25 163 S.No. Complainant No.of Cases S.No. Respondent No.of Cases 1 U.S.A. 10059 1 U.S.A. 9080 2 France 2864 2 China 2275 3 United Kingdom 2074 3 United Kingdom 2061 4 Germany 1542 4 Spain 1059 5 Switzerland 1400 5 Canada 995 6 Spain 1011 6 Australia 852 7 Italy 967 7 Republic of Korea 802 8 Denmark 838 8 France 801 9 Netherlands 675 9 Netherlands 644 10 Sweden 487 10 India 461 11 Canada 465 11 turkey 401 12 Australia 428 12 Germany 396 Russian 13 Turkey 298 13 394 Federation 14 Brazil 290 14 Switzerland 356 15 India 262 15 Panama 342 16 Japan 238 16 Italy 309 17 Mexico 217 17 Bahamas 262 18 Austia 208 18 Mexico 243 19 Liechtenstein 182 19 Japan 187 20 Finland 128 20 Brazil 168 21 Belgium 117 21 Sweeden 155 22 Ireland 110 22 Indonesia 148 Republic of Saint Kitls & 23 107 23 141 Korea Nevis 24 China 98 24 Thailand 136 25 Luxembourg 89 25 Ukraine 132

300 Sample of WIPO Domain Name Cases164 Area Sample Cases American Automobile Association, Aston Martin, Audi, Bentley, BMW, Cadillac, Chevrolet, Corvette, Ferrari, Ford, Automobiles General Motors, Honda, Michelin, Porsche, Volkswagen, Volvo ANZ Bank, Banco Bac San Jose, Barclays, Comerica, Credit Agricole, Credit Mutuel, Denizbank, Deutsche Bank, Intesa Banking and Sanpaolo, KPMG, MasterCard, Merrill Lynch, Raiffeisen, Finance Royal Bank of Scotland, Banco Santander, Standard & Poor's, Tesco Finance, VISA Bayer, Boehringer Ingelheim, Eli Lilly, F. Hoffman-La Biotechnology Roche, Ferring, Genentech, Merck & Co, Mundipharma, and Novo Nordisk, Pfizer, Sanofi-Aventis, Schering, Walgreen Pharmaceuticals Company, Zambon American Council on Education, Brandeis University, Educational Testing Service, Institute Tecnologico y de Education Estudios Superiores de Occidente, Santa Fe University of Art and Design, Tufts University, University of Georgia, University of Vermont Apple, Canon, Dyson, Electrolux, Elkj0p, Epson, General Electronics Electric, IBM, Osram, Panavision, Research in Motion, Samsung, Siemens Ana Rosa, Avid Life, Columbia Pictures, Deezer, Entertainment DreamWorks Animation, iTunes, Marion Brando, MTV, Ubisoft, Viacom, Virgin Entertainment Aldo, Belstaff, Bikkembergs, Cerruti, Dr. Martens, Eric Fashion Bompard, Karen Millen, Lacoste, Lush, Missoni, Monsoon, Paul Frank, Pepe Jeans, Peuterey, Vans

301 Food, Aria Foods, Barilla, Betty Cracker, California Milk Processor Beverages and Board, Coca-Cola, KFC, Lavazza, McDonald's, Nestle, Restaurants PepsiCo, Red Bull, Remy Martin, Wagamama, Yoplait Areva, BHP Billiton, Caterpillar, ENEL, Gazprom, General Electric, Gestamp, Grundfos, Mahindra, Palfinger, Petrobras, Heavy Industry PLC Construction, Qualival, Saudi Arabian Oil Company, and Machinery Schindler, Statoil, Suncor Energy, Tata Group, Tractor Supply Company Accor, AISA Cruises, Excellence Resorts, Expedia, Four Seasons, Holiday Inn, Hyatt, Ibis, Inter-Continental. La Hotels and Quinta, Marriott, NH Hotels, Novotel, Scandic, Sebel Hotel, Travel Sheraton, Six Continents Hotels, Sofitel, Starwood, Swissotel, Westin Allianz, Allstate, AXA, Caja de Seguros Reunidos, GEICO, Insurance Jackson Life Insurance, Mapfre Autodesk, Citrix, Facebook, Frostwire, Google, Hewlett Internet and IT Packard, IBM, Intel, Microsoft, Rediff.com, SAP, Skype, Tumblr, WhatsApp, Yahoo!, YouTube Armani, Bottega Veneta, Burberry, Chanel, Christian Dior Couture, Davidoff, DKNY, Doice & Gabbana, Etro, Fendi, Luxury Items Frey Wille, Goyard, Gucci, Hermes, Hugo Boss, J. Choo, Marc Orian, Moncler, Prada, Richemont, Rolex, Salvatore Ferragamo, Swarovski, Zegna Advance Magazine Publishers, Arnoldo Mondadori Editore, CBS, ESPN, GQ Magazine, Grazia, Hemmings Motor News, Media and Jorge Luis Borges, Kemosabe Entertainment, Lagardere, Publishing Marvel Characters, MBC, McGraw-Hill Companies, NBC, Oxford University Press, Time Out, Vogue

ALDI, Auchan, Bandai, Barra Shopping, Calzedonia, Conforama, Retail Costco, Fnac, Galeries Lafayette, IKEA, Leclerc, LEGO, Mattel, Palacio de Hierro, Shaw Industries, Wal-Mart

302 Beachbody, Brunswick Bowling, Campagnolo, Cobra Golf, England's Premier League, Glascow 2014, Juventus Football Sports Club, NCAA, Oakley, Paris Saint-Germain Football, PGA Tour, Saint Andrews Links Atea Danmark, BT Espana, Claro, Deutsche Telekom. KPN, Telecom Mobsat, Motorola, O2, Telefonica Brasil, Telstra, Turkcell, Verizon, Vivo AIDA Cruises, Air France, Budget, Delta Air Lines, DHL, Transportation EasyJet, Electo-Motive Diesel, Hertz, Lan Airlines, Lufthansa, Monarch Airlines, SNCF, Virgin

Allied Barton Security, Coppertone, DHL, Duracell, Gillette, Others La Tour Eiffel, L'Oreal, Philip Morris, Procter & Gamble, Public Storage, Revlon, The Body Shop, Valero, Zippo

Cumulative Judicial Treatment: Reflections in Actions Judiciary happens to be one of the most important organs in any modern democratic countries. It is not only the interpreter of law but also the guardian of rights of the people. It is an established fact that judiciary is the third organ of the government in any democratic country. It is the final protector and interpreter fundamental rights of the people. Judiciary has been playing the vital role for the important reflection in the field of intellectual property, particularly the trademarks and domain names etc. The law relating to trademark is not very common in India. So the litigation relating to internet is not very common in India.

303 that legal sanctity is accorded to all electronic records and transactions carried out by the means of electronic data interchange and other means of electronic communication (e-commerce). However, it does not deal with major issues like Cybersquatting, Spamming, and Cyber Stalking. Phishing etc., though it was expected to deal with so.

A trend of increased disputes over web address is gaining ground in India over the past few years as companies recognize the commercial potential on the Internet. As companies try to state their claims in cyberspace they often find their prime panels already in the hands of somebody else. The W1PO arbitration and mediation center may order the respondent only to refrain from the use damages for the loss caused to the complainant law are being continuously amended to take care of the technological changes.

As per its reports, WIPO elected to limit its mandatory general administrates procedure for the resolution of domain name registration (cybersquatting) WIPO also recommended that the registration agreement contains a provision, for domain on an optional basis, in respect of any dispute in relation to the domain name and such arbitration takes place on live. When one is legitimately entitled to register a domain name, why should be penalized if he seeks to trade in it can be contended that a cybersquatting does not deal in any gods and hence, his activities are not likely to cause confusion in the minds of the public. Intellectual Property Law is being continuously amended to take care of the technological changes. But it still requires major amendments to deal with challenged posed by the internet and digital revolutions. This allows transactions signed electronically to be enforceable in a court of law. The Act provides legal framework for ecommerce, e-security and e-governance in India.

304 domain names, commonly known as cybersquatting. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and uses the domain name in bad faith.

World Wrestling Federation Entertainment, Inc. v. Michael Bosnian165 The first cybersquatting case under the WIPO was decided on January 14, 2000. The US based World Wrestling Federation (WWF) brought a suit against a California resident who registered the domain name worldwrestlingfederation.com and offered to sell it to WWF at a huge dividend a few days later. The WWF alleged that the domain name in question was registered in bad faith by the registrant in violation of WWF’s trademark.

It was held that the domain name registered by the respondent was ‘identical or confusingly similar’ to the trademark of WWF and the respondent had no legitimate rights or interests in the domain name. Therefore the respondent was ordered to transfer the registration of the domain name to the complainant, WWF.

Some of the cases decided by the WIPO Arbitration and Mediation Centre are discussed below-

Tata Sons Ltd v. Ramadasoft.166 In this case the domain names in issues were:- (i)“tatapowerco.com”, (ii)“tatahydro.com”, (iii)“tatawestside.com”, (iv) “tatahoneywell.com”, (v)“tatayodogawa.com”, (vi)“tatateleservices. com”, (vii) “tatassl.com”, (viii) “tatatimken.com”, (ix) “jrdtata.com” and (x)“ratantata.com”, registered with Network Solutions Inc., United States of America.

The complainant alleged that the complainant is the exclusive owner of the trademark/name and the domain names in issue, registered by the respondent are

305 the corporate names of companies promoted by TATA, thereby misappropriating illegally and without authority the trade mark TATA which is the exclusive property of the complainant. The respondent has also registered the domain names “jrdtata.com” and “ratantata.com”, which are the persona! name of the complainant. The unlawful adoption of the impugned domain names by the respondent would result in the dilution of the complainants trade mark TATA.

The WIPO Panel concluded that the Respondent owns the domain names: (i)“tatapowerco.com”, (ii)“tatahydro.com”, (iii)“tatawestside.com”, (iv) “tatahoneywell.com”, (v)“tatayodogawa.com”, (vi) “tatateleservices. com”, (vii) “tatassl.com”, (viii) “tatatimken.com”, (ix) “jrdtata.com”, (x)“ratantata.com”.

These domain names are confusingly similar to the Complainant’s trademark TATA, and the Respondent has no rights or legitimate interests in respect of the domain names, and he has registered and used the domain names in bad faith. The Panel directed the respondent to transfer the domain names in issue to the complainant.

Sbicards.com v. Domain Active Property Ltd.167 Sbicards.com was ordered by the World Intellectual Property Organization to be transferred to the Indian Company from an Australian entity, which hijacked the domain name hoping to later sell it for a hefty sum to the State Bank of India subsidiary. The panel accepted SBI Card counsel’s argument that “the Australian company was in the business of buying and selling domain name through its website.

Talk City, Inc. v. Michael Robertson.168

The complainant had registered the trademark ‘Talkcity’ in the US since April, 1996. It was engaged in providing services such as online facilities for real time interaction with other computer users concerning topics of general interest and was also providing an online bulletin board in the area of consumer education

306 and business. The complainant also owned the domain names ‘talkcity.net’, ‘talkcity.org’, ‘imagestalkcity.com’ ‘images-talkcity.net’ and ‘images-talkcity.org’. In October 1997, one Michael Robertson, CEO of MP3 registered the domain name ‘talk-city.com’. During this period he also registered various other domain names such as ‘metacrawler.net’, ‘winzip.com’ and ‘fourll.com’. Talk City filed a complaint against the respondent Michael Robertson for illegally registering the domain name ‘taik-eity.eom’. The respondent failed to reply within the prescribed period of 20 days. However, on receipt of a notification of default and appointment of an arbitration panellist, the respondent replied immediately. It was contended on behalf of the respondent that an attempt had been made to resolve the dispute amicably by offering to transfer the domain name to the complainant, who had refused the offer unless it was reimbursed towards the fees and costs incurred. It was submitted that Talk City had initiated the proceedings in bad faith. This was followed by another e-mail communication with the WIPO Centre in which it was submitted on behalf of the respondent that the proceedings may be terminated since they had taken steps to transfer the domain name and it was also submitted that the failure to respond to the notice within the stipulated period of 20 days was due to some inadvertent confusion. The arbitration panel set aside the first delayed response by the respondent since he had not certified it to be complete and accurate. Although the arbitration panel had the discretion to accommodate a late-filed response, the WIPO’s arbitration award stated that as the respondent had failed to submit a substantive answer in a timely manner, the panel accepted the allegations as correct. The Panel finds that Mr, Robertson owns a domain name (talk-city.com) identical or confusingly similar to Talk City’s trademark (TALK CITY), has no rights or legitimate interests in respect of the domain name, and registered and used the domain name in bad faith. These three factors entitle Talk City to an order transferring the domain name from Mr. Robertson to Talk City. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the domain name talk-city.com be transferred to complainant.

307

Experience Hendrix, L.L.C. v. Denny Hammerton and The Jimi Hendrix Fan Club169 The estate of Jimi Hendrix brought an action under UDRP against the domain name registrant of ‘jimihendrix.com’. The said domain had been registered in the name of the Jimi Hendrix Fan Club. It was found by the arbitration panel that the domain name registrant had also taken a number of other celebrity and “vanity” domains such as ‘elvispresley.com, ‘jethrotull.com’ and the like. The said domain name owner had offered to sell the ‘jimihendrix.com’ domain for US$1 million. The arbitration panel considered whether the domain registrant had any legitimate right to use the name, such as because it was his name or because he had a legitimate business purpose, or was it that the only purpose was to sell the domain to the estate or deprive the estate from using the domain. The panel found that “The Jimi Hendrix Fan Club” was not registered in the state of Florida (where the respondent resided) and that the web site was not a true fan club site but was used merely for the purpose of selling domains. If the site was being operated by a legitimate fan club, the question of fair use and bad faith would have been much cloudier and in such circumstances, having a fan club might have been deemed a legitimate use. The estate of Jimi Hendrix was the owner of the registered trade mark “Jimi Hendrix” as well as certain design marks, although none of these registrations were for categories that included web-site usage. Another issue which was considered by the panel, was whether ‘jimihendrix.com’ was confusingly similar to ‘jimihendrix’, the latter being the estate’s trade mark. The panel noted that the second-level domain, i.e. the ‘jimihendrix’ portion, was identical and similar to the registered and common law trademarks belonging to the complainant. The domain name in issue was registered and was being used in bad faith and was ordered to be transferred to the complainant.

Satyam Computer Service Limited v. Vasudeva Varma Gokharaju170 The complainant is an information technology giant. Its trademark application for the word SATYAM and the corporate logo was pending in India.

308 The complainant submitted that the respondent had registered the disputed domain name “satyam.org” in 1999 and “satyam.net” in the year 1998 and till date the respondent had not activated its website. He contended malafide intention on behalf of the respondent. But the respondent contended that he was a devotee of Lord Satyanarayana and the mane “satyam” was its short form and wished to disseminate messages of truth and teachings of the gurus. The panellist came to the conclusion that the said domain names were registered and used in bad faith and hence they were transferred to the complainant.

Google Inc. v. Merit Shah171 In 2009, Internet software company Google inc. won a cybersquatting case against an Indian teenager who had registered a domain name googblog.com. The domain name, Google contended, was confusingly similar to its trademark. Experts felt that complaints regarding cybersquatting were on the rise and organizations such as the World Intellectual Property Organization (WIPO) were being approached by trademark holders to resolve such disputes. On May 15, 2009, the World Intellectual Property Organization (WIPO) ordered an Indian teenager, Herit Shah, who had been using the domain name ‘googblog.com’, to transfer the rights of the domain to Google Inc (Google).

Microsoft Corp. v. Microsof.com.172 In this case the panel found that “microsof.com” was confusingly similar to the trademark “Microsoft” and ordered the respondent to transfer the name.

Rediff.com India Ltd v. Daniyal Waseem.173 In this case the domain name in issue was “rediffpk.com”. The complainant Rediff.com alleged that Daniyal Waseem of Quetta in Pakistan was using the domain name ‘rediffpk.com’ and the disputed Internet site was identical in part and confusingly similar as a whole to the ‘Rediff trademark, for which it has rights.

309 To restrain Daniyal for using the trademark, the Rediff.com approached a Geneva-based World Intellectual Property Organization (WIPO) in March 2010.

The complainant submitted before the WIPO Arbitration and Mediation panel that the name REDIFF. COM is an invented word and was adopted in 1996 by the complainant. The complainant has registered the trademark REDIFF. COM and other REDIFF prefix mark such as REDIFF MAIL and REDIFF BOL on a worldwide basis, including in the United States of America and India. Most of the Complainant’s services apply REDIFF as part of their product or service trade names such as Rediff Mail, Rediff Bol, Rediff News, Rediff Matchmaker, Rediff Shopping, Rediffishare, Rediff Connexions, Rediff P4c Classifieds, Rediff Q&A and Rediff Astrology.

‘The Complainant has, in the past, succeeded in restraining other parties from using the REDIFF trade mark and other confusingly similar marks in relation to different or similar services, by obtaining injunctive relief in India. The Complainant has also succeeded in several proceedings under the Policy in relation to other domain names which were confusingly similar to the REDIFF trade mark.

The WIPO panel found that the Rediff.com.pk was confusingly similar to Rediff.com India Ltd’s trademark, noting; “In this Complaint, the disputed domain name wholly incorporates the REDIFF trade mark. The additional letters “pk’” do not appear to distract a reasonable person’s overall perception or impression of the distinctive feature of the disputed domain name, being REDIFF.”

After finding that Rediff.com.pk was confusingly similar, the panel went on to note that the domain name was registered in bad faith;

“This Panel is convinced that the REDIFF trade mark was calculatively selected by the Respondent to form the disputed domain name in order to disrupt

310 the Complainant’s on-going business, to extract some form of direct or indirect commercial gain or to otherwise ride on the established goodwill of the Complainant.”

The WIPO Arbitration and Mediation Centre in the light of above findings ordered that the domain name “rediffpk.com” to be transferred to the complainant, well-known Internet portal Rediff.com India from its cyber squatter owner Daniyal Waseem of Quetta in Pakistan.

Israel bar association v. Itai Pam. 174 In this case the complainant was an independent Israeli statutory entity established under the Bar association and proprietor of the domain names and . it was alleged by the complainant that Domain Name registered in favor of the respondent amounts to infringement and demanded inter alia transfer of the Domain Name. Complainant contended that it has common law trade mark rights in the name “The Israel bar” arising from long and extensive use of that name since the foundation of the complainant and respondent’s Domain Name was calculated to deceive and to tarnish the name of the complainant. Accordingly, the issue to be decided by the Panel was whether the respondent has legitimate interests in respect of the Domain Name registered by him. The panel opined that the Domain Name is identical and similar to a trade mark in which the complainant has common law rights and has made out a persuasive case. The complainant’s name has been in continuous use in Israel for nearly 50 years. The respondent is an educated Israeli citizen and might be expected to have known of the Complainant. “Israel bar” is, on its face, an unusual combination of words to select for a domain name unless it was to be used to refer to the Complainant or, perhaps a particular Israeli drinking establishment. It is well-established that to demonstrate rights or legitimate interests for the purposes of paragraph 4 (a) (ii) of the UDRP policy complainant has to show that they have been commonly known by the domain name, once the complainant has made out a prima facie case, it is for the respondent to answer that case. The rationale behind this policy is that whether or

311 not the respondent has rights or legitimate interests in a question, which the respondent is best-placed to answer. Therefore, as per the provisions of the Paragraph 4(i) of the UDRP Policy and 15175 of the Rules, the Panel orders that the domain name , be transferred to the Complainant.

Jay Leno v. Guadalupe Zambrano.176 In this case the disputed domain name is registered with GoDaddy.com, Inc. Complaint was filed with the WIPO Arbitration and Mediation Center. The Complainant alleged that, he is a successful and well- known comedian, entertainer, and television personality, is claiming common law trademark rights in his personal name, Jay Leno. The Complainant perhaps is best known for his comedic career of more than thirty (30) years, and as the host of the popular late night television talk show The Tonight Show with Jay Leno for more than seventeen (17) years, from 1992 until May 2009. The Complainant began appearing in various television shows in the mid-1970s, and prior to becoming the host of The Tonight Show in 1992 he also served as the permanent guest host of the show starting in 1987,. and made frequent appearances as a guest on the show. It has been announced by the complainant that he will host a prime time talk show on NBC beginning in the fall of 2009, reportedly to be called The Jay Leno Show.

The Respondent registered the disputed domain name on September 28, 2004. The Respondent uses the disputed domain name to redirect Internet visitors to a commercial website from which Respondent promotes his real estate services.

The WIPO Panel was of the view that Jay Leno, the American stand-up comedian and television host. Obviously, he has rights over this domain name, as long as he had a 30-year career in entertainment, being the host of the highly popular show, “The Tonight Show”.

On the other shore is the respondent, represented by Guadalupe Zambrano who said Jay Leno “has no right to the disputed domain name or to any other

312 domain name incorporating “Jay Leno”, because the Complainant has transferred any trademark rights in the JAY LENO name and mark to his employer, the National Broadcasting Corporation, which is owned by General Electric Company (“GE”). As proof of this the Respondent maintains that a WHOIS search shows that the domain names jayleno.com and jaylenosgarage.com are owned by GE.” Moreover, the respondent stated that he registered the domain name before NBC decided to call Jay Leno’s show, “The Jay Leno Show”.

Even though the respondent had some good arguments. Jay Leno proved all the three elements of Para 4(a) of the UDRP policy to obtain the domain name. Therefore, the Panel ordered the domain name thejaylenoshow.com to be transferred to Jay Leno.

Arcelor Mittal v. Privacy Protect.org/ Mr.singh (tajgroup@ avipl.com), Taj Pharmaceuticals Ltd., Taj Group of Companies.177 In this case the domain names in dispute were, , , and all registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomain Registry.com.

The complaint was filed with the WIPO Arbitration and Mediation Centre. The complainant an owner of a registered mark for ARCELOR and operates a website at www.arcelormittal.com. The complainant alleged the disputed domain names are identical or confusingly similar to its registered mark. The complainant says that the term “arcelor” is known only in relation to the complainant. It has no meaning in English or in any other language. A google search of the word “Arcelor” displays several results, all related to the complainant. The complainant alleged that the respondent has registered and used the disputed domain names in bad faith and respondent’s websites use logos similar to the complainant’s. The complainant contended that the respondent has intentionally attempted to create a likelihood of confusion with the complainant. On the other hand the respondent states that it has not violated the UDRP and refers to its registration as a company

313 under the Indian Companies Act, 1956. The respondent suggests that it is operating ‘’with the permission with here government officially”. The address stated at the end of the response, while the same as that listed in the respondent’s website is different to that listed for the respondent in the WHOIS details of the disputed domain names. The respondent also states that “as far as name ‘Arcelor’ is concerned it means the god”.

The Panel finds that the disputed domain names are confusingly similar to that mark. The panellist found that the defendant Taj Group of Companies (a Mumbai based firm) was in violation of the federal ACPA and infringing on Arcelor Mittal’s trade mark for its conduct in registering and use of the following domain names Error! Hyperlink reference not valid..com, www. arcelorshemicals.net, www.arcelorlaboratories.com, www.arcelorlabs.com.

Furthermore, Panelist Barker found that the domains were registered in bad faith and that each of the five disputed domains was either in part identical or confusingly similar to ‘ARCELOR’ trademarks. Consequently WIPO on the basis of its above findings, the five disputed domains should be turned over to Arcelor Mittal.

Indian Express Online Media Private Ltd.., The Indian Express Limited, v. Mr. Sanjeev Saluja.178 In this case the disputed domain name was registered with GoDaddy.com,Inc. The complainant alleged that he has registered rights in the trade mark INDIAN EXPRESS in respect of newspapers, journals, magazines, books and other literary works. The INDIAN EXPRESS was registered as a trademark and both the complainants are owners of many domain names incorporating the world “Indian Express”, including , , , , and . As the Indian Express Online Media Private Ltd (Complainant No.l) and The Indian Express Limited (Complainant No.2) belong to one of India’s premier media and publishing

314 groups, the “Indian Express Group” and are publishers of several newspapers and magazines in English and other regional languages, both the complainants therefore claim a common interest in the disputed domain name .

The complainants in Feb 2009 discovered that the respondent had without their consent, registered and has been using the disputed domain name. The complainant alleged that the respondent not willing to transfer disputed domain name unless the complainants were prepared to pay for it.

The Panel finds that the respondent has registered and used the disputed domain name in bad faith under Para 4 (b) (iv) of the Policy as respondent registered the domain name and used it to attract Internet users to the respondent’s website for commercial gain, by creating a likelihood of confusion with the complainant's trade mark. The respondent was clearly aware of the complainant’s trademark and reputation in the area of news publication service.

The WIPO Panel on the basis of its above finding and in accordance with Para (i) of the policy and 15 of the Rules, the Panel orders that the domain name be transferred to the complainants.

179 Cox & Kings India Ltd. v. Rakesh Sud In this case Cox and Kings(C&K), a travel agency, discovered that some of their advertising lines had been registered as domain names. C&K filed a complaint before the WIPO’s Domain Name Dispute Resolution Centre for contesting the registration of domain names ‘duniyadekho.com’ and ‘addmoretoyourworld. com’. It was submitted by C&K. that the respondent had registered several other popular baselines as domain names, which include Videocon’s ‘Bring home the leader’, Pepsi’s ‘Yeh dil maange more’, BPL’s ‘Believe in the Best’ and Thumbs Up’s ‘Taste the thunder’.

315 WIPO’s Panellist held that in so far as ‘Duniya dekho’ was concerned, it was not a mere advertisement but services under the said expression was also available to consumers. It was noticed that there was evidence that ‘Duniya dekho’ packages elicit tremendous response from the public. ‘Duniya dekho’ satisfies the conditions stipulated in ICANN’s UDRP. The complainant was found to be having trademark rights in “Duniya dekho’. However, the expression ‘Add more to your world’ was held to be a mere advertising expression as the travel agency provide sufficient evidence to establish a service mark right in such an expression. The domain name ‘addtoyourworld.com’ was thus not transferred to C&K.

Julia Fiona Roberts v. Russell Boyd.180 The complainant Julia Roberts, i.e. the famous actress, the respondent had registered the domain ‘juliaroberts.com’. The respondent was also the owner of many other domains using the names of celebrities and he had put the said domain up for auction.

The complainant did not have a registered U.S trade mark. An issue arose as to whether she had common law trademark rights because her name had acquired a “secondary meaning”. Secondary meaning is a legal term which implies that although a name (whether a personal name or a product or service name) or a design is not a registered mark, the public has come to associate that name or design with a particular person or company or goods or services. This term is usually applied in circumstances where the mark or the claimed rights have been in use for a period of time and have been widely disseminated and used in such a way so as to create this reference in the minds of the public. If the claimant establishes this ‘secondary meaning’, the issue then is whether the use by another in a particular context would be likely to cause confusion in the minds of the public that the particular use is related to the owner of the secondary meaning. In this case, the issue was whether- when someone hears the name ‘Julia Roberts’ or logs onto a website called ‘juliaroberts.com’, such a logger identifies that name

316 or site with the actress, and whether the use by the respondent of a domain with that name would be likely to confuse the public into believing that the actress was somehow related to this domain in issue. The WIPO Adm. The panel held that Julia Roberts possessed the requisite secondary meaning in her name. It was found by the panel that there was identification in the minds of the public between the domain name and the actress. It was therefore concluded that she possessed trademark rights in her name although she had no register mark.

The next issue was whether the domain registrant had any legitimate rights to the name for the purposes of the site or whether the site was put up and fell within the scope of “fair use”. The panel noted that there was nothing on the site that initially related to the actress (i.e., it was not a fan site or anything of that nature), nor did the site otherwise fall within the category of “fair use”. There have been other cases where the same theory as Ms. Roberts, but did not prevail because the site owner had the same name as that of the celebrity and / or was using the site for legitimate purposes related to the domain name owner’s business or the. like. In this case, however, the panel found that the domain name was established solely for the purpose of selling it to the actress or others and that the ‘respondent had established a ‘pattern of conduct’ by registering many other such domains and as such, the conduct of the respondent constitutes the requisite bad faith. The panel ordered for the transfer of the domain name in issue to the complainant.

From the above two cases it can be said that the cybersquatting is no longer restricted to companies names or trademarks. Cyber squatters have extended their tentacles to even advertisement jingles and celebrities names. Cyber squatters after filching company names or brands have now started squatting on popular advertising baselines and popular Hollywood & Bollywood celebrities and politicians (like Amitabh Bachhan, Sonia Gandhi, Sushmita Sen and Gul Panag etc).

317 Bright Imperial Ltd. v. Domain Administrator, Fundacion Private Whois / INTEvraccddhb2fe Case No. D2013-0292181 The Complainant is the owner of the REDTUBE trademark and has submitted evidence of its rights in a large portfolio of registered trademarks including the following: in Australia trademark REDTUBE, registration number 1228767, registered on March 10, 2008, for services in classes 38, 41 and 42; Community Trade Mark REDTUBE, registration number 007408297, filed on November 19, 2008 and registered on February 4, 2013, in classes 28, 35, 42; in the United States trademark REDTUBE, registration number 3843119 registered on August 31, 2010, for goods and services in international classes 10, 28, 41 and 45; and also in the United States trademark REDTUBE, registration number 3884412, registered on November 30, 2010, for goods and services in international classes 9, 35, 38, 41 and 42.

A number of the trademarks registrations relied upon by the Complainant appear to be registered in the name of a third party, Jaeger & Polacek, GMBH that the Complainant state is its predecessor in interest. These include the Hong Kong registered trademark REDTUBE, registration number 301305017 registered on March 17, 2009, for goods and services in classes 9, 35, 38, 41 and 42; International Trademark registration number 1003812 registered on April 22, 2009, for goods and services in classes 9, 35, 38, 41 and 42; in Mexico, trademark registration number 1177204 registered on August 31, 2010; in New Zealand trademark registration number 803428, registered on October 2009; in Norway trademark registration number 253860 registered on December 9, 2009; in Singapore trademark registration number T0902260E registered on August 27, 2009; and in Switzerland trademark registration number 589771, registered on August 3, 2009.

The Complainant is also the owner of the domain name that resolves to a commercial website operated by the Complainant to provide adult video content.

318 As no Response or other communication has been received from the Respondent, there is no information available about the Respondent except for that provided in the Complaint and the publicly-available WhoIs. The disputed domain name was registered on April 12, 2011, and also resolves to a website with adult content.

The Complainant relies on its rights in its portfolio of registered trademarks including those listed above, and submits that the earliest of the above listed trademarks was registered three years prior to the registration of the disputed domain name. The Complainant also relies on its rights at common law through extensive use of the REDTUBE trademark on the Internet.

The Complainant submits that it and its predecessor in interest in the REDTUBE mark have been providing high quality adult entertainment videos in interstate and international commerce since at least July 2006, and has submitted evidence of use of the REDTUBE mark on the Internet since August 2007.

The Complainant claims to have thereby acquired common law trademark rights in the REDTUBE trademark in a number of countries, including but not limited to, the United States, the United Kingdom of Great Britain and Northern Ireland, Canada and Australia by virtue of: (i) the Complainant’s use of the REDTUBE mark to identify to products and services in interstate and worldwide commerce; (ii) the Complainant’s investment in publicising and advertising its products under the REDTUBE mark and creating an exclusive association between the REDTUBE mark and the Complainant’s products; and (iii) the association on the part of the public of the REDTUBE mark with products and services developed and marketed by the Complainant.

The Complainant submits that the extent of the reputation relied upon can be illustrated by the fact that there were 644,712,255 visits to its website in the seven month period from August 8, 2007, to March 21, 2008. This amounted to approximately 2,720,305 visits per day. Since the month of March 2008, the

319 website to which the domain name resolves has continued to gain in popularity, and there were over 9 billion visits to the website between April 1, 2008, and June 22, 2011, amounting to approximately 8,059,536 visits per day. In about July 2009, the Complainant’s website at the domain name was ranked as the 63rd most popular website overall on the Internet, and the third most popular adult website. The Complainant submits that in the month of March 2011, which it notes was just one month prior to the date on which the disputed domain name was registered, the Complainant’s “www.redtube.com” website was receiving average traffic of more than 8 million visits per day. In support of these assertions the Complainant has provided a copy of the Google analytics pages and Alexa pages for the website to which the domain name resolves. The Complainant has also presented copies of articles from newspapers and magazines referring to its services under the REDTUBE mark which range in dates from February 7, 2008, to September 7, 2011, as evidence of the notoriety that it has achieved in the use of its mark on a global scale.

The Complainant submits that its REDTUBE trademark is inherently distinctive particularly in the context of the goods and services with which the mark is used.

The Complainant argues that the disputed domain name is confusingly similar to its REDTUBE trademark as it incorporates the Complainant’s REDTUBE trademark in its entirety, adding only the generic term for the Complainant services “porn” to the end of the mark. The Complainant submits that the addition of the generic word “porn” to the trademark is immaterial, particularly as the additional word relates to the Complainant’s goods and services.

In support of this argument the Complainant refers to previous decisions under the Policy and argues that a number of panels have decided that a domain name is identical or confusingly similar to a trademark for the purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar

320 approximation, regardless of the other terms in the domain name”. Wal-Mart Stores Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662. UDRP panels have also determined that, “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark.” Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240. Furthermore the Complainant argues that the addition of generic terms to a domain name has little effect on a determination of confusing similarity between the domain name and the trademark relied upon. Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The Complainant further argues that the mere addition of a generic or descriptive term generally does not exclude the likelihood of confusion. PRL USA Holdings, Inc. v Spiral Matrix, WIPO Case No. D2006-0189.

Specifically addressing its REDTUBE mark, the Complainant further submits that UDRP panels, have already found a number of Internet domain names registered by third parties, specifically incorporating the REDTUBE trademark in combination with additional generic or descriptive lettering or numbers, as in the present case, to be confusingly similar to the Complainant’s mark. The Complainant cites the decisions of the panels in Bright Imperial Ltd. V. Domain Admin, PrivacyProtect.org/Private Registration, WIPO Case No. D2010- 1078 (finding the domain name to be confusingly similar to the REDTUBE trademark); Bright Imperial Ltd. v. Senja Dumpin, WIPO Case No. D2009-1619 (finding the domain name to be confusingly similar to the REDTUBE trademark); Bright Imperial Ltd. v. Ho Nim, WIPO Case No. D2010-0321 (finding the domain name to be confusingly similar to the REDTUBE trademark); and Bright Imperial Ltd. v. PROXHOST International, Herr Carlos Torres, WIPO Case No. D2012-1816 (finding the domain name to be confusingly similar to the REDTUBE trademark).

321 The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name; that the Respondent has not received a license or permission from the Complainant to use the REDTUBE trademark in any way or to register any domain name incorporating the mark. The Complainant submits that its own exclusive rights to the REDTUBE mark under the Policy are clearly established by virtue of the Complainant's trademark registrations for REDTUBE and its common law trademark rights. The Complainant cites Sydney Markets Limited v. Nick Raids trading as Shell Information Systems, WIPO Case No. D2001-0932 (domain name transferred where complainant had Australian trademark registrations); and Tuxedos By Rose v. Hector Nunez, NAF Claim No. 95248 (domain name transferred to complainant where complainant had common law trademark rights).

The Complainant argues that there is no indication from the publicly- available WhoIs database record for that the Respondent is commonly known by the name or mark REDTUBE or ”Redtubeporn” and, thus, the Respondent has no rights or legitimate interests in the disputed domain name on that basis.

The Complainant states that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. Instead, as explained in more detail below, the Respondent is generating revenue by using the disputed domain name as the address of a website, which targets the same class of consumers as the Complainant, to post videos and advertisements that direct visitors to the websites of Complainant's competitors. Such use is commercial and cannot be classified as legitimate, as it causes Complainant economic harm and gives economic benefit to the Respondent and Complainant's competitors. The Complainant cites Oly Holigan, L.P. v. Damir Kruzicevic, NAF Claim No. 97353 (respondent's use of domain name for a portal site which redirected consumers to commercial web sites did not demonstrate legitimate non-commercial rights or fair use).

322 The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant states that upon learning of the Respondent's registration and use of the disputed domain name, and in an effort to resolve this matter amicably, the Complainant sent a letter to the Respondent on November 8, 2011, by email to the address listed in the WhoIs database, requesting the immediate deactivation of the website to which the disputed domain name resolved, and further requesting that the Respondent transfer to the Complainant the disputed domain name and any others domains it owned containing the REDTUBE trademark. The Complainant received no response.

On October 23, 2012, the Complainant sent a follow-up letter reiterating its demands. The Complainant again received no response, and a further reminder was sent on November 8, 2012, which also met with no response. On January 24, 2013, in a final effort before filing this Complaint, the Complainant sent an email to the Respondent's company requesting the Respondent's cooperation with regard to the disputed domain name. As of the date of the Complaint, the Complainant had not received any response to its efforts to reach Respondent. The Complainant has annexed copies of the correspondence to the Complaint.

The Complainant has submitted printouts from the website to which the disputed domain name resolved as of February 5, 2013, attached as an exhibit the Complaint. On the website at the disputed domain name, the Respondent is displaying prominent advertisements of Complainant's competitors in vertical banners on the right side of the webpage. The Complainant states that if a user clicks on the advertisements, they are immediately directed to a competitor's website. The Complainant submits that the Respondent acquired and uses the disputed domain name to target the same class of consumers and users of Complainant's products and services. The Complainant submits that on information and belief, the Respondent receives revenues from the advertisements that appear on the website at the disputed domain name and pay-per-click revenue from directing consumers to the websites of Complainant's competitors by to free riding on the Complainant's reputation and goodwill in the REDTUBE mark. The

323 Complainant submits that the Respondent is therefore making use of the disputed domain name with intent for commercial gain and to misleadingly divert consumers and dilute the REDTUBE trademark. Specifically the Respondent is using the disputed domain name as the address of a competing website on which embedded videos from “www.videosz.com”, one of the Complainant's competitors.

The Complainant submits that the disputed domain name was registered in order to create an impression of association between the disputed domain name and the Complainant. Because the Complainant’s own website at the domain name is, and has been, one of the most trafficked adult websites in the world, the Respondent must have been aware of the Complainant's REDTUBE mark at the time it registered the disputed domain name on April 12, 2011. Furthermore, because the Complainant’s website was, and is, one of the top adult sites in the world, anyone operating in the adult industry (including the Respondent) would undoubtedly be aware of its mark and domain name. The Respondent's registration of the disputed domain name that includes the Complainant's famous trademark and domain name, for services in the same industry, was plainly calculated to misappropriate and trade off of the goodwill developed by Complainant in the REDTUBE mark. As such, the Respondent's registration and use of the disputed domain name, with actual knowledge of Complainant's trademark for REDTUBE, is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551 ("Actual or constructive knowledge of the Complainant's rights in the Trademarks is a factor supporting bad faith.").

Furthermore, the Complainant argues that any routine Internet search would have revealed the Complainant's website at the domain name and its REDTUBE mark. Accordingly, there is no doubt that the Respondent either knew, or should have known, of the Complainant's prominent use of the REDTUBE mark. Ticketmaster Online-CitySearch, Inc. v. Alex Vlasov, NAF Claim No. 94739 (complainant's widespread use of its mark raises the

324 inference that respondent had actual or at least constructive notice of complainant's prior use of the mark); Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (respondent either knew or should have known of complainant's trademark rights since complainant was a well known online company and respondent was an operation in the domain name area). Further, a trademark search on the date of registration of the disputed domain name would have revealed the REDTUBE registered trademark in a number of countries around the world, owned by Complainant or its predecessor-in-interest. Failure to heed such constructive notice is evidence of bad faith. Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 (respondent had a duty to check on the availability of complainant's trademark and failure to do so was evidence of bad faith).

The Complainant submits that it has no control over the nature and quality of any goods or services marketed or provided via the disputed domain name or any other activities that the Respondent may engage in with respect to the domain name. The Complainant submits that in the circumstances the Respondent's activity has no doubt deceived, and will certainly continue to deceive, Internet users; that the Respondent's activity has diluted and diminished the valuable goodwill associated with Complainant's REDTUBE mark; and any illegal activity occurring at website to which the disputed domain name resolves may tarnish the REDTUBE mark.

The Complainant finally submits that the Respondent's bad faith registration and use of the disputed domain name is demonstrated by each of the following: (a) the Respondent's registration and use of the disputed domain name to redirect and divert Internet users to third-party web sites in exchange for advertising revenues; (b) the Respondent's registration and use of the disputed domain name after having actual and constructive notice of Complainant's rights in the REDTUBE mark; and (c) the Respondent's lack of any rights or legitimate interests in the disputed domain name. The Respondent did not reply to the Complainant’s contentions.

325 The Complainant has furnished sufficient evidence of its rights in the REDTUBE trademark and service mark both through the above-mentioned trademark registrations and at common law through extensive use of the mark in the provision of adult website content since at least 2007.This Panel accepts the Complainant’s arguments that the disputed domain name is confusingly similar to the trademark REDTUBE in which the Complainant has rights. The disputed domain name is composed of four elements viz. the words “red”, “tube”, and “porn” and the gTLD “.org” extension. The Complainant’s trademark is distinctive and is composed of the words “red” and “tube” in combination. It is well established under the Policy that the gTLD “.org” extension may be disregarded for the purpose of the comparison under this element of the Policy.

The Panel finds that the additional word “porn” does not distinguish the domain name from the Complainants mark. Taken in combination the words “red” and “tube” constitute a distinctive trademark and are the dominant element of the disputed domain name because the word “porn” is generic and descriptive. In the present context the element “porn” is not only descriptive of the content on the Respondent’s website, to which the disputed domain name resolves, but is also descriptive of the business in which the Complainant has acquired a significant goodwill.

This Panel finds therefore that the disputed domain name is confusingly similar to the Complainant’s trademark and the Complainant has therefore succeeded in the first element, paragraph 4(a)(i) of the Policy.

The Panel finds that the Complainant has made out a prima facie case the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has provided evidence that it is the owner of the REDTUBE mark and has acquired a substantial reputation, around the world, in the trademark through its website to which its domain name resolves. The Complainant’s website has received billions of visitors and is ranked among the

326 most popular websites in the world. The Complainant has asserted that it has not granted any rights or licence to the Respondent to use its trademark or any mark or domain name similar to its trademark. Furthermore on the evidence available the Respondent is not known by the disputed domain name or any similar name. The Respondent is making a commercial use of the disputed domain name, but not a legitimate non-commercial use as it is taking advantage of the Complainant’s trademark and reputation and such use cannot be considered fair or legitimate.

It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interest in the domain name the burden of production shifts to the respondent. In the present case as there has been no Response filed and no other communications from the Respondent. Therefore the Panel finds that the Respondent has failed to discharge the burden and the Complainant is entitled to succeed in the second element, paragraph 4(a)(ii) of the Policy.

On the evidence before this Panel the Complainant has acquired a substantial reputation in the REDTUBE mark in the provision of adult content materials over the Internet. This Panel accepts the Complainant’s argument that it is unlikely that the Respondent was not aware of the REDTUBE mark and the Complainant’s associated reputation when the disputed domain name was registered. In fact, the adoption of the combination of the Complainant’s REDTUBE trademark and the word “porn” as a domain name indicates that not only was the Respondent aware of the Complainant’s reputation, but that the disputed domain name was chosen because of its similarity with the Complainant’s trademark, website address and domain name. This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith order to take predatory advantage of the Complainant’s reputation.

327 Furthermore on the evidence before this Panel, it appears that by maintaining the website to which the disputed domain name resolves the Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant's REDTUBE mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on that web site. In the circumstances, this Panel finds that the disputed domain name was registered and is being used in bad faith and having succeeded therefore in the third and final element in paragraph 4 of the Policy, the Complainant is entitled to succeed in this Complainant. For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.

Cash Converters Pty Ltd. v. Rui Zhang Case No. D2013-0724182 The Complainant is an Australian company that operates pawn broking outlets. It owns six Australian trademarks, two United Kingdom trademarks and five United States of America (US) trademarks containing the terms “cash converters” in capital letters, either in a specific font or plain block letters, alone or in combination with graphic elements. The various marks designate products and services in international classes 9, 35, 36, 38, 39 and 42. The earliest trademark was filed on May 16, 1989 in Australia, and the marks have all apparently been duly renewed and are currently in effect according to the printouts from the databases of the corresponding trademark offices that were submitted by the Complainant.

The Complainant’s marks include the following:

• UK registration No. 1 463 232 cash converters of May 2, 1991; • Australian registration No. 610 704 cash converters ca$h converters of august 31, 1993; • Us registration No. 1 991 782 cash converters of June 20, 1994;

328 • Australian registration No. 806 655 cash converters of September 10, 1999.

All of the trademarks were filed before the disputed domain name was registered on October 7, 2010.The Complainant also claims trade name rights in the terms “cash converters” and owns various domain names with the terms “cash converters”. The evidence shows that the website that appears at “www.wwwcashconverters.com” contains links to websites offering loans, fast cash, emergency cash, cash for diamonds, loan deals, quick cash and small loans.

The Complainant asserts that the registered CASH CONVERTERS trademarks are distinctive since the words “cash converters” do not constitute a common phrase, have no dictionary meaning, and the marks have acquired secondary meaning as a combination of terms referring to the Complainant and its business in Australia. The Respondent has no relationship with the Complainant and has no permission from the Complainant to use any of Complainant’s trademarks, nor is it commonly known by the disputed domain name.

The Complainant asserts that the Respondent’s registration and use of the disputed domain name violates the Complainant’s rights in the registered CASH CONVERTERS trademarks, and that the disputed domain name is used by the Respondent solely to attract Internet users by creating a likelihood of confusion. In this context, the Complainant argues that is identical or confusingly similar to the CASH CONVERTERS trademarks, and that the only difference between the Complainant’s trademarks and the disputed domain name is the use of the letters “www”. The Complainant offers further detailed analysis in support of its case and points to previous UDRP decisions that have ordered the transfer of other domain names filed by the Respondent (four cases) or ordered the transfer of domain names with the terms “cash converters” from other respondents to the Complainant (four cases out of ten brought by the Complainant). The Respondent did not reply to the Complainant’s contentions.

329 The disputed domain name incorporates the words “cash converters” of the

CASH CONVERTERS trademarks. The verbal element alone of the CASH CONVERTERS trademarks is composed of two words that together are strongly evocative of and may even seem descriptive for financial services such as pawn broker services. However, the terms “cash converters” are not a common expression or a combination of words in accordance with ordinary rules of grammar that together describe a pawn broker, nor is there any evidence before the Panel (i) that this combination of words had become a descriptive phrase in common or professional parlance in any of the three countries where the Complainant filed its marks before those marks were filed, or (ii) that this combination has become a generic phrase for pawn brokers since then.

The Complainant indicates that previous UDRP panels have also found that the marks are or have become sufficiently distinctive to be protected. The Panel finds that the trademarks are distinctive or have become distinctive for the products and services covered by the marks for the purposes of the present dispute.

The disputed domain name only differs from the CASH CONVERTERS trademarks in details that do not diminish the risk of confusion resulting from the similarity to the trademarks in which the Complainant has rights. Specifically, and in line with the UDRP cases cited by Complainant, the mere addition of the letters “www” to the terms “cash converters” is not sufficient to dispel the confusing similarity between the CASH CONVERTERS marks and the disputed domain name. When viewed in light of Respondent’s prior UDRP cases as respondent, it appears that the use of the letters “www” may in fact have been intended to achieve this result. The Panel is satisfied that the disputed domain name is confusingly similar to the

Complainant’s CASH CONVERTERS trademarks for the purposes of the Policy.

The Respondent has chosen not to reply to the Complaint and the Panel has found that the Complainant has made a prima facie case that the Respondent

330 lacks rights or legitimate interests and has found no indication in the evidence that the Respondent claims or could have claimed rights or legitimate interests of its own in the terms “Cash Converters”. To the contrary, the Respondent’s track record as respondent in previous UDRP cases indicates that it has repeatedly filed third party marks as domain names with typographical errors or in combination with non distinctive terms. Since the Respondent has no permission from the owner of the CASH CONVERTERS marks, its use of the disputed domain name is without rights or legitimate interests. The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Respondent’s use of a webpage with links to various pawn brokerage and loan operators for small loans for individual borrowers, which are services competing with those of the Complainant, indicate that the Respondent registered and is using the disputed domain name in bad faith.

In view of the above, the Panel also finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as per paragraph 4(b) (iv) of the Policy. For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Segis SPA v. Kwon Tong Wan Case No. D2013-0725183 The Complainant is an Italian company and a worldwide leader in the design and production of innovative, quality seating products for the contract furniture industry. It owns a large number of registered trademarks that include the term “Segis” alone, and that incorporate the term “Segis” with other elements. The Complainant also owns the following trademark and domain name registrations:

331 Int’l Mark: Country: Reg. No.: Reg. Date: Class: March 21, SEGIS Italy 801251 20 1997 SEGIS International 861669 July 1, 2005 20 SEGIS DELIGHT May 15, China G929310 20 MULTIPLA 2007 SEGIS DELIGHT United States of March 11, 3,395,175 20 MULTIPLA America 2008 SEGIS DELIGHT European August 29, 005573365 20 MULTIPLA Community 2008 Domain Name: The Respondent is a college graduate in Republic of Korea. The disputed domain name was created on August 23, 2005.

The Complainant contends that it owns rights in the SEGIS mark and that the disputed domain name is identical to its mark. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant contends that (i) it has not consented to the use of the SEGIS mark; (ii) it has not authorized the use of the SEGIS mark in a domain name; and (iii) there is no connection between it and the Respondent. The Complainant further contends that the Respondent has not made any use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; is not commonly known by the disputed

332 domain name; and is not making legitimate non-commercial or fair use of the disputed domain name.

Finally, the Complainant contends that the Respondent has registered and uses the disputed domain name in bad faith on the grounds that he was presumably aware of the registration of the Complainant’s SEGIS trademark for various reasons. First, because the Complainant’s trademark registration in Italy preceded the initial registration date of the disputed domain name. Second, the Complainant’s International registration covering the Republic of Korea preceded the renewal registration dates of the disputed domain name. Finally, the Complainant contends that the Respondent presumably conducted research in order to come up with the name “segis” because that term is not a common word nor does it have a common meaning. The Complainant also contends that the Respondent registered and uses the disputed domain name in bad faith on the grounds that the Respondent has not used the disputed domain name to resolve to an active website. For these reasons, the Complainant requests that the disputed domain name be transferred.

The Respondent claims that the disputed domain name was coined by himself and his friends who were planning to operate a website. Specifically, the Respondent claims that the disputed domain name is an acronym for “Se Eun Geographic Information System.” According to the Respondent, the name “Se Eun” is his girlfriend’s first name.

The Respondent claims that the plan he and his friends had to use the disputed domain name to resolve to a website in connection with their prospective business was delayed for several years due to an extended illness suffered by the Respondent. Recently, however, the Respondent has recommenced plans to start a business using the disputed domain name.

The Panel has noted communications from the Complainant and the Respondent regarding the language of the proceedings. According to the Rules,

333 the language of the registration agreement should be the language of the proceedings, unless there is an agreement between the parties for a different language to be the language of the proceedings or if the panel determines otherwise in accordance with paragraph 11 of the Rules. In such a case a complainant should typically provide satisfactory evidence of an agreement between the complainant and the respondent to the effect that the proceedings should be in the language other than that of the registration agreement, translate the Complaint into the language of the registration agreement, or submit a request for the proceedings to be in a language other than that of the registration agreement with further evidence as to the reasons for this. The panel has discretion to decide on the language of the proceedings.

In this case, the Panel finds that English should be the language of the proceedings for the following reasons: • The disputed domain name consists exclusively of a word written in English. • The Respondent has sufficient knowledge of English to be able to understand the nature of these proceedings. This is evident from (1) the exchange of correspondence in English between the Complainant and the Respondent regarding the possible transfer of the disputed domain name; and (2) the fact that the website under the disputed domain name is in English. • The Complainant would incur considerable further expense and inconvenience in retaining the services of a translator. The Panel finds that in the circumstances of this case this amounts to sufficient evidence of the Respondent having command of English necessary to be able to understand the nature of these proceedings. Consequently, the Panel finds that it is appropriate to issue the Decision in English. In the present case, the Panel finds that the Complainant has established that the Complainant owns rights in the SEGIS mark.

334 First, the SEGIS mark was used by the Complainant since at least March 21, 1997, the date on which the said trademark was registered in Italy and the goods claimed by said registration are directly related to its core business. Second, the Complainant owns various other registrations for the SEGIS mark in multiple jurisdictions throughout the world, including an international registration covering the Republic of Korea. Finally, the sole word consisting of the disputed domain name “segis” is identical to the SEGIS mark owned by the Complainant. Accordingly, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s SEGIS mark, and therefore concludes that the Complainant has satisfied is burden of proof under paragraph 4(a)(i) of the Policy. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name: • The respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or • The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or • The respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights and legitimate interests, non- exhaustively, by producing proof under paragraphs 4(c) (i)-(iii) of the Policy. The Respondent did not make any direct claim of a right or legitimate interest in the disputed domain name,.

335 First, the Respondent merely stated how he and his friends came to create the name “segis” in connection with a domain name that was planned to resolve to a website for their future business. However, the Respondent did not provide any evidence on the record that the “segis” name was created under such circumstances. He could have provided, for example, notarized statements from his friends and/or from his girlfriend attesting to the facts he claimed, and yet he did not. He could have explained the activities and undertakings that he and his friends had commenced in order to move forward with starting their prospective business, he could have explained the nature and purpose of the prospective business, he could have explained the significance of the name “Geographic Information System,” etc., and yet he did none of them. Given these circumstances, there can be no reasonable conclusion but to find that the Respondent was not planning to engage in a bona fide offering of goods/services under the disputed domain name, and was not otherwise planning to engage in legitimate business activities.

Second, as to paragraph 4(c) (ii) of the Policy, the Respondent in his Response to the Complaint does not assert that he is commonly known by the disputed domain name and there is no evidence in the record to indicate such. Finally, as to paragraph 4(c) (iii) of the Policy, the Complainant has claimed that the disputed domain name does not resolve to an active website, and in fact, the only content in the website is the statement “This domain is renewed every year automatically.” The Respondent did not dispute this claim. Accordingly, this Panel is of the position that the Respondent is not engaged in the activity set forth in this paragraph 4(c) (iii) of the Policy.

For these reasons, the Panel finds that the Respondent is not found to have a right or legitimate interest in the disputed domain name, as this concept is understood to mean pursuant to paragraph 4(c) of the Policy. Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

336 • circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or • you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or • you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or • by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The Complainant raises a number of previous UDRP decisions to support its arguments that the Respondent registered the disputed domain name in bad faith and that it is being used in bad faith. In the first argument, the Complainant claims that the Respondent had a duty to check and to ensure that its domain name would not infringe upon another’s mark at the time it sought registration and at each time the registration is renewed. Although the Complainant does not affirmatively state that the Respondent failed to meet its duty to check, the Complainant appears to be taking the position that had such check(s) been conducted, the Respondent would have known about the Complainant and its SEGIS mark, and that the registration of the disputed domain name would infringe its mark. Some UDRP panels have indeed found that in certain circumstances there may be an affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others, for example, through an

337 Internet search on the domain name through Google or Yahoo!. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0), paragraph 3.4. However, even if we assume arguendo, that the foregoing is the Complainant’s line of argument, the Panel is un-persuaded, largely because there is nothing in the record to support the claim that the Respondent failed to meet its duties/obligations in connection with the proper registration of the disputed domain name, let alone a failure that would rise to the level of bad faith. Further, it must be noted that the term “segis” is a term that is used by others in the public in connection with different subject matters. This is readily confirmed by a cursory check of the Internet. For example, the term “segis” has been found to be widely used as an acronym for “Solar Energy Grid Integration Systems,” in connection with a United States government sponsored solar energy project. Another example is the use of the term “segis” as a trademark for a smart grid inverter. As such, the logic used by the Complainant here, namely that had the Respondent conducted a check, it would have known about the Complainant, is not persuasive, since a check would likely have resulted in finding different uses of the name “segis” by different parties in connection with different subject matters. The Panel also notes that even when some UDRP panels found bad faith registration on the ground that the respondent should have known the complainant’s registered marks, they are less inclined to find it when the complainant’s trademark is less well-known or corresponded to a common word. In this case, the Complainant has not provided enough evidence of showing that its mark was so well-known that the Respondent must have known of the Complainant’s SEGIS mark.

Furthermore, the Complainant did not claim that the Respondent’s prospective business is somehow related to its business, and in fact, there is nothing in the record to suggest same. It is therefore not possible to make any reliable determination as to whether the Respondent must have known that the disputed domain name could be an infringement of the Complainant’s SEGIS mark.

338 In the Complainant’s second argument – that the Respondent’s passive holding of the disputed domain name can infer bad faith – the Panel notes that while this has been recognized by the panels in other UDRP decisions, such factor is but a single consideration among others, and that an ultimate finding of bad faith involved a finding of a number of cumulative, supporting circumstances. In this case, however, there is no evidence on the record that shows, for example, that the Respondent attempted to sell or to contact the Complainant as the trademark holder; that the Complainant’s SEGIS mark is well-known; that the Respondent failed to respond to the Complaint; or that the Respondent attempted to conceal his identity, all of which factors were outlined in the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, as cited by the Complainant in its Complaint.

Further, the record does not support a finding of any circumstances under paragraph 4(b) of the Policy that evidence registration and use of the disputed domain name in bad faith. Specifically, there is no evidence of the existence of any of the four circumstances under 4(b)(i)-(iv) of the Policy, as summarized above.

In conclusion, the Panel finds that the Complainant has not established that the disputed domain name “has been registered and is being used in bad faith” by the Respondent. For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.

Summation A perusal of above discussion leads us to the conclusion that the technological changes bring challenges to the basic principles of Intellectual property laws and internet and the digital revolution poses complex problems for their protection. There are various steps already a boot to tackle the domain name dispute, especially cybersquatting on International level. As far as India is concerned, there is no legislation which explicitly refers to the domain name disputes; the law is yet to be developed unlike the USA. It is only governed by the

339 Trade Mark Act 1999, which does not have any express law on the point of domain name disputes. However, the Information Technology (Amendment) Act 2008 provides punishment for cheating and personating by means of any communications device or computer. There is still an urgent need for definite laws in this field.

340 Notes & References 1. WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues: Final Report of the WIPO Internet Domain Name Process, para. 132(i)-(iv). (1999), http://wipo2.wipo.int/ processl/ report/flnalrep art. lit ml 2. The first ccTLD dispute resolution policy was introduced by Nominet (the ccTLD registry for the UK) in April 1997. See also E Taylor, Keeping Your Good Name, Business Net- works (Aug./Sept. 2001), 38 3. Walker L, ICANN’s Uniform Domain Dispute Resolution Policy, Berkeley Technology Law Journal, 15, 2000, 289, 296-297 4. See Stewart I, The Best Laid Plans, Federal Communication Law Journal, 53, 2001, 509, 512; see ICANN, About ICANN, (2001), http://www.icann.org/general/abouticann.htm 5. WIPO, ‘First WIPO Internet Domain Name Process: Archive’ (1999), http://wipo2.wipo.int/procexsl.htm 6. http://www.icann.orfi/dntlr/iidrp/policy.htm, (viewed on 28/03/2013) 7. http://www,icann.org/dndr/udrp/uniform-rules.htm. (viewed on 28/03/2003 8. See ICANN. Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute Resolution Policy, (2002), http:// www.iciinn. org/ udrp/udrp-xchcihile.htm. 9. Sourabh Ghosh, Domain Name Disputes and Evolution of the KANH’S Uniform Domain Name Dispute Resolution Policy p. 429. 10. The variation on the UDRP for the liclgiuin ccTLD includes this element, which surely invites abuse in the same way as NSI’s policies did 11. Sec UDRP Rule 4(a)(ii),(iii) 12. Sec UDRP Rule 4(a)(i) 13. http://www.academia.edu/1426116/Cybersquatting and Domain Name Dispute under Trademark law. P.24 14. Id. 15. Id. 16. Ibd. P. 25

341 17. Justice Yatindra Singh, Cyber Laws, 2012, Universal Law Publication, Vth Ed. P. 100 18. Nandan Kamath, “Law Relating to Computers, Internet and E-commerce, nd A guide to Cyber Laws” 2 ed, Universal Law Publication, P. 241-242. 19. INTA “White paper”, “Trademarks on the Internet”, at . (viewed on 22/03/2013). 20. This is because there is never a suit for damages against a domain name owner. Only for specific performance involving transfer of a domain name, i.e., no financial liability-Carl Oppedahl, “Analysis and suggestions regarding NSI Domain Name trademark Dispute Policy” at http://www.patents.com/nsi/iip/shr.( viewed on 20.03.2013) 21. Domain names that have been put on hold include , and . 22. Clue Computing v. NSI, District Court, Boulder Country, Colorado, Case No. 96CV 694. Division, http://www.clue. com/ legal/ index/ html. (viewed on 20.03.2013) 23. Supra note 18 at p. 243. 24. http://www.domain-name.org/intro.html. (viewed on 18.02.2013) 25. Carl Oppedahl, “Oppedahl How is a domain name like a Cow?” at http://www.patents.com/pubs/jmls.sht.. 26. Suptra Note 18. p. 243 27. To review all the proposals, see INTA “White Paper”, “Trade marks on the Internet” at http://www.agent.org/pub/iip-amr-html. (viewed on 18.02.2013) 28. For complete plan visit http://www.gtld-mou.org. (viewed on 28.03.2013) 29. See, Oppedahl, supra note 25. This article lists several economic reasons as to why the IAHC proposal is unworkable. 30. The plan is available at http://www.netsol.com/papers/Internet.html. (viewed on 22/03/2013) 31. Supra note 18, at p 244.

342 32. http://www.vaishlaw.com/article/information_technology_law/ the_domain_name_chaos.pdf?articleid=100324 (viewed on 28.03.2013)

33. “Domain Name Dispute and Cyber Squatting” by Ranjan K. Mishra, 20th July 2010. (viewed on 28.03.2013) 34. See, http://www.icann.org. 35. Supra Note 32. 36. Prof. Saleem Akhtar & Shweta Jain, Protection of Domain Names in India & Abroad, Printed at : Aligarh Muslim University Press, pp. 49-50. 37. See, http://www.icann.org (viewed on 18.04.2013) 38. Id. 39. Id. 40. Id. 41. Id.

42. Sharma Vakul “Information Technology Law and Practice” 2nd Ed. Universal Publication, 2008 page 422-423. 43. See, http://www.icann.org (viewed on 18/04/2013) 44. Supra Note. 17 p. 100 45. Ibid P. 100-101 46. “Legal Opinion : Celebrity Domain Squatting Rise in India” by – Salman

Waris (heads, Fox Mandal Law Firm), July 7th 2010. 47. Id, Also see (www.nixi.in, www.ispai.com) 48. 2006 (33) PTC 597 (NIXI) IN Registry, National Exchange of India (NIXI) 49. Supra note 17 pp. 101 50. 2006 (33) PTC 631 (Del)] 51. 154 (2009) DLT 83 : CS (OS) No. 1164 of 2001, decided on 14.11.2008]. 52. 2007 (35) PTC 177 (Del) 53. 2011 (45) PTC 96 (Del) 54. 2010 (42) PTC 361. 55. http://www.icann.org/udrp/cedrp-policy.html. (viewed on 03.03.2013) 56. http://www.icann.org/en/udrp/erdrp-policy.html. (viewed on 03/03/2013)

343 57. Id. 58. http://www.icann.org/en/udrp/ipdrcp-policy.html. (viewed on 03.03.2013) 59. http://www.icann.org/en/udrp. (viewed on 03.03.2013)

60. Sood Vivek, “Cyber law Simplified”, 2nd Ed, Tata Mc Graw Hill Publication Co. Ltd., p. 275. 61. http://www.icann.org./eu/udrp-policy.html. (viewed on 03.03.2013) 62. http://www.icann.org/en/transfers/dispute-policy-12jul04.htm. (viewed on 03.03.2013) 63. http://websvr01.afilias.info/register/dispute_resolution/sunrise_challenge- policy. (viewed on 03.03.2013) 64. http://www.arbiter.wipo.int/domains/gtld/biz/stop/index.html. (viewed on 03.03.2013) 65. http://www.arbitr.wipo.int/domains/gtld/name/index.html. (viewed on 03.03.2013) 66. http://www.icann.org/tlds/agreements/sponsored/sponsorship-agmt-arr12- 08sep01.html. (viewed on 03.03.2013) 67. Connely Lain. M, Jurisdiction over trademarks and domain names: the view from the channwa at, at http://www.fewf.com (viewed on 07.11.2012) 68. FSR 265, 1988, (1977) 69. http://cyber.law.harvard.edu/ilaw/mexico_2006_module_8_domain (viewed on 07.11.2012) 70. http://www.icann.org/udrp/udrp-policy. 71. 42 USPQ 2 d 1850. 72. NO. 96-0213-WMB, 1996 U.S. Dist. LEXIS 20259 (C.D. Cal. April 26, 1996). 73. 985 F. Supp. 949 (C.D. Cal 1997), affd 194 F. 3d 980 (9th Cir. 1999). 74. 141 F. 3d 1316 (9th Cir. 1998). 75. 947 F. Supp. 1227, 1240 (N.D. III, 1996) 76. Sharma Vakul “Information Technology law and Practice”, II edition, universal publication, 2008, pp. 415.

344 77. Ibid at Page 416. 78. Cyberspace is a domain characterized by the use of electronics and the electromagnetic spectrum to store, modify, and exchange data via networked systems and associated physical infrastructures. In eITect. eyberspaee can be thought of as the interconnection of human beings through computers and telecommunication, without regard to physical geography. William (iibson is sometimes credited with inventing or popularizing the term by using it in his novel of 1984. Neuromancer. See. 79. http://www.murdoch.edu.au/elaw/issues/v7n3/kilian73.html. 80. 202 F. 3d 489 (2d.Cir.2000) 81. 128 F. Supp. 2 d 340. (E.D. Va. 2001) 82. 113 F Supp. 2d 915 (E.D. Va. 2000) 83. 115 F. Supp. 2d 1108 (D Minn. 2000) 84. 55 U.S.P.Q. 2d (BNA) 1620 (S.D.N.Y. 2000) 85. Nandan Kamath, “Law Relating to Computers, Internet and e-commerce – A guide to cyber law,” II edition, Universal Law Publication, pp-246. 86. Ibid at pp-247. 87. Examination of the truth of Domain Name Act of 2003 By-Rami Olwan http://www.scribd.com/doc/3901559/why-do-we-criminal-sanctions. (viewed on 10.12.2012) 88. See http://www.icann.org/udsp/udrp-policy, (viewed on 05/04/2013.) 89. Supra not 87 90. Ibid. 91. http://gautamkumarnujs.lawyearsclubindia.com/articles/Online- infringement of Trademarks-2883.asp. (viewed on 04/03/2013) 92. Id 93. Id 94. Domain Name Protection In India, By praveen Dalal (Also see www.navi.org) 95. Id

345 96. Domain Name Dispute Resolution in India, By-Majumdar andCompany. (Also see. www.majumdarindia.com) (viewed on 05.03.2013) 97. Id 98. 1990 Suppl SCC 727 99. Supra note 94. 100. Section 27. 101. Sections 2 (1) (m) and 2 (1) (z) respectively. 102. Section 2 (2) (b). 103. N.R. Dongre v.Whirpool Corporation 1996 (PTC) (16) 583 (SC) 104. M/s Satyam Infoway Ltd. V. M/s Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145. 105. Section 31. 106. Lakshmikant v. Chetanbhat Shah. JT 2001 (10) SC 285. 107. Section 154 and 155. 108. MIPR 2010 (3) 0067 109. Section 9 stipulates that the trade marks which are devoid of any distinctive character or which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, intended purpose, values, geographical origin or the time of production of goods or rendering of the services or other characteristics of the goods or service or which consists exclusively of marks or indications which have become customary in the current language or in the bon’afide and established practice of the trade shall not be registered, unless it is shown that the mark has in fact acquired a distinctive character as a result of use before the date of application. It also provides that a mark shall not to be registered as trademarks if (i)it deceives the public or causes confusion, (ii) it contains or comprises of an\ matter likely to hurt the religious susceptibilities, (lii) it contains scandalous or obscene matter, (iv) its use is prohibited. It further provides that if a mark corMsts exclusively of (a) the shape of goods which from the nature of goods themselves or (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape

346 which gives substantial value of the goods then it shall not be registered as trade mark. 110. Section 31(2) stipulates that a registered mark shall not be held as invalid on the ground that it was not a registerable trade mark under Section 9 except upon the evidence of distinctiveness and that such evidence was not submitted to the registrar before registration, if it is proved that the trade mark had not been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration. 111. 1999 PTC (19) 201 112. AIR 1970 SC 1649. 113. AIR 2000 Bom 27 114. 2001 PTC 859. 115. 2001 PTC 432 (Del.) 116. 2001 PTC 619 (Del.) 117. 2006 (32) PTC 537. 118. High Court of Delhi, CS (OS) 1289/2008. 119. (2004) 6 SCC 145. 120. Supra Note 76, at p. 419. 121. http://arbiter.wipo.int/domain/decesions/2000-0014.html. (viewed on 04/03/2013) 122. http://arbiter.wipo.int/domain/decesions/2000-0015.html. (viewed on 04/03/2013) 123. http://arbiter.wipo.int/domain/decesions/2000-0049.html. (viewed on 04/03/2013) 124. http://arbiter.wipo.int/domain/decesions/html/d2000-0365.html. (viewed on 04/03/2013) 125. WIPO Case NO. D2000-0497 126. WIPO Case No. D2000-0248 127. WIPO Case No. D2000-0053 128. WIPO Case No. D2002-0007 129. WIPO Case No. D2002-0881. 130. WIPO Adm. Panel decision, Case No. D2002-0649.

347 131. WIPO Adm. Panel decision, Case No. D2002-0651. 132. RDNH, defined in the UDRP rules as "using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name". 133. WIPO Case NO. D2000-0477. 134. WIPO Case No. D2000-0479.

135. Sharma Vakul, Information technology Law and Practice 2nd edition, Universal Publications, 2008 page-411. 136. Domain Name Dispute and Cyber squatting by Ranjan K.

Mishra, 20th July 2010. 137. http://gautamkumarnujs.Lawyersclubindiov.com/asticles/online/i nfringement of Trademarks 2883 asp. Dated 10/04/2013 138. http://knowledgerush.com/kr/encyclopedia/Cybersquatting/, viewed on August 28, 2009 dated 10/04/2013 139. James Marcovitz, “Ronald @McDonalds.com – “Owning a Bitchin” Corporate Trademark as an Internet Addresss- Infringement?” 17 (1995) Cardozo L. Rev. 85, p. 85 140. G. Kaufmann-Kohler and T. Schultz, “Online Dispute Resolution : Challenges for Contemporary Justice”, 2004 ed., p. 36 141. Justice Yatindra Singh, Cyber Laws, 5th edition, (2012), Universal Law Publication, Page 102. 142. Ibid page 103 143. Id 144. Ibid page 104 145. Salim Akhtar & Shweta Jain Protection of Domain Names in India and Abroad, Printed at : Aligarh Muslim University Press, page-86. 146. 1997 F.S.R. (Ct. Sess.O.H.) 24 Oct. 1996. 147. http:www.netlitigatioin.com/netlitigation/linking.html. (viewed on 10.04.2013) 148. Civil Action Number 97-1190, Id. 149. Supra Note 137

348 150. Id. 151. Supra not 141 page 108 152. Id. 153. Google, QSEARCH, MSM, Altavista, HotBot Lycos and Northern Light. 154. Supra Note 137. 155. www.wipo.int/pressroom/en/articles/2013/article_0007.html (viewed on 10/04/2013) 156. Ibid. 157. Ibid. 158. http://www.wipo.int/pressroom/en/articles/2011/article_0010.ht ml 159. www.wipo.int/amc/en/domains/statistics/domains.jsp (viewed on 06.06.2013) 160. www.wipo.int/amc/en/domains/statistics/domains.jsp (viewed on 06.06.2013) 161. www.wipo.int/amc/en/domains/statistics/domains_avrg.jsp (viewed on 06.06.2013) 162. www.wipo.int/amc/en/domains/statistics/countries_a-zjsp (viewed on 06.06.2013) 163. www.wipo.int/amc/en/domains/statistics/legalindex.jsp (viewed on 06.06.2013) 164. http//www.wipo.int/export/sites/www/pressroom/en/documents/p r2013733a.pdf (Viewed on 06.06.2013) 165. WIPO Case No. D99-0001. 166. WIPO Case No. D2000-1713. 167. WIPO Case No. D2005-0271. 168. WIPO Case No. D2000-0009 169. WIPO Case No. D2000-0364. 170. WIPO Case No. D2000-0835. 171. WIPO Case No. D2009-0405. 172. WIPO Case No. D2000-0548.

349 173. WIPO Case No. D2010-0346. 174. WIPO Case No. D2010-0003 175. Paragraph 15 (a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. 176. WIPO Case No. D2009-0570 177. WIPO Case No. D2010-0899. 178. WIPO Case No. D2009-0352. 179. WIPO Case No. D2000-0411. 180. WIPO Case No. D2000-0120 181. http://www.wipo.int/amc/en/domains/search/text.jsp?case=D201 3-0292 (Viewed on 03-09-13) 182. http://www.wipo.int/amc/en/domains/word/2013/d2013-0724doc (Viewed on 03-09-13) 183. http://www.wipo.int/amc/en/domains/search/text.jsp?case=D201 3-0725 (Viewed on 03-09-13)

350

CONCLUSION & SUGGESTIONS

CONCLUSION AND SUGGESTIONS CONCLUSION The jurisdictions under study are is rich in Intellectual Property Right (IPR) resources, which are of great value to us and to the world at large. But we have more or less failed to protect and exploit them. The area of management of Intellectual Property Rights (IPRs) has assumed a great significance in the present day world of explosive technological growth and developments. With the rapid growth in diversified fields of technology, and with the advent of new scientific inventions and innovations, the country’s technological prospects and perspectives have to be redefined and one such important zone of globalization and modernization are Intellectual Property Right exploitation and Intellectual Property Right protection that establishes the significance of Intellectual Property Right in today’s modern and highly competitive world.

Protection of intellectual property rights will definitely promote the development of new products, services and national economies and any erosion thereof can threaten the economic performance of the sector and might curtail the major benefits accrued therefrom. It has brought the abundance of information and the each which can be accessed, reproduced, and distributed have become problems that must be seen in all of their complexity as well as the accompanying policy challenges. The Intellectual Property Right are increasingly becoming the physical assets in the digital age, though substantial time and effort may be required to achieve a workable balance between private rights and public interest in information. The technological changes bring challenges to the basic principles of Intellectual Property Right laws, Internet and the digital revolution poses complex problems for Intellectual Property Right laws and their protection. The three technological advances namely digitization of information, networking, and www. (world wide web) have turned the classical economics of the information upside down. An indication of the relative importance and complexity of the issues involved can be taken from a recent world intellectual property organization (WIPO) estimate that no Less than 90% of total investment in a multimedia product was expanded in dealing with intellectual property issue.

351 A trademark can be word, a logo, a number, a letter, a slogan, a sound, a colour, or sometimes even “Service” identify the source of goods and/or services with which the trademark used. Trademarks can be owned or companies and should be registered at a governmental agency, which is usually referred to as the trader when a trademark is used in connection with service. It is sometime referred to as a “Service mark”. The registration symbol – the latter “R” in circle ® - may not be used unless the trademark with which it is has been actually registered with the governmental agency alluded to above. It has four primary functions. The first is to signify that all goods bearing the trademark come from a single source. The second is to convey to the buying public a guarantee of quality. The consumer should know that from, purchase to purchase, the favourable characteristics of the goods bearing the trademark remain the same. The third is to allow one trade to distinguish his goods from those of his competitors. The fourth is to promote the goods. It is important to realize trademarks are property; just a buildings and machinery are property. They should therefore be treated with the same respect as these, more obvious, tenable form of the property. This type of property to which trademark is attributed is known as intellectual property. This term also encompasses patents, which protect inventions (useful advances), registered designs, which protect the shape or surface decoration of articles and copyright, which protect artistic or literacy works. Whilst a product may also be protected by some, or even all of these other property rights, it source and quality is always identified by its trademark.

A Trade Mark is a commercial asset intended to be used commercially by businessmen. It is a personal right which can only be claimed or enforced by action and not by physical possession. It is thus a legal right. The characteristics of a legal right are: right should be vested in a person, it must have contents, it must have a subject matter or object, there should be title by which the right has been vested in the owner, there should be a corresponding duty, means that there should be a person against whom the rights avails, the person who is bound by it and upon whom the correlative duty lies. The existence of object of a right is no longer an important characteristic, in the context of intellectual property. Rights relating

352 in these properties must without objects as understood in common parlance such as right in Trade Mark. Intellectual property rights are negatively available, protected by law against initiation and piracy. Obligation is fastened on persons other than the owner of the rights, to take care against limitation, piracy or plagiarism. Infringement by them involves liability for damages or invites penalty, fine or prosecution.

This means that they can be treated, in legal terms, in much the same way as real property, such as a house. To illustrates this further, let us consider how the owner of a registered trademark can benefit from his ownership of such an asset and compare this with the right enjoyed by a home owner. First, the trademark owner may use the mark himself on the goods for which it is registered, to the exclusion of others. Clearly, this is comparable to a home owner who lives in his own property. Alternatively, a trademark owner may license the use of his mark, under agreed conditions, to a third party. This is very similar to a homeowner who decides to let out his property, in return for rent.

The discussion as of now has concentrated on the value of and the rights attached to registered trademarks. This is understandable given that recent changes in trade mark laws around the world have widened the definition of the type of trade mark that may be registered (in some cases, to include shapes for the first time), increased the area of protection that is available to the registered trade mark owner and generally boosted the importance of registration still further. It should not be forgotten, however, that a registered trade mark that is never brought into use has little or no intrinsic value. It is only through use, in relation to particular goods that a trade mark becomes of some worth to its owner. The trademark becoming the symbol of a product’s reputation and goodwill in the UK, along with other developing countries like India and Pakistan that follow the UK’s legal tradition, recognize the separate nature of trade mark rights derived by use and by registration. Such unregistered trade mark rights may also allow their owner to prevent or stop unfair trade practices, by its competitors, either when he

353 has no registered rights or when his registered trade mark rights are unsuited to the task.

Now the time and attitudes have been changed. Business has recognized as the fundamental importance of their brands to present and their future success. Their legal advisors have realized that trademark rights are generally cheap to protect and relatively quick on simple to enforce. The judiciary has now understood that a trade marks is a valuable legal rights that deserves to be treated with the same respect as a patent and copyright. The internationalization of trade and the growth in advertising since the Second World War have meant that product can now be sold to a global audience. The need to encapsulate complex messages about a product character, quality advantages, in a simple way has therefore increased. Business has found that most elegant summation of these messages is use of member able trademarks.

All the values of trademark have grown, so has their abuse by competitors, eager to ride on the back of another’s hard earned reputation. However, all form of such competition can damage the reputation and sales of the originator’s product. Registered trademark and to lesser extent, their unregistered brethren, are powerful weapon against unfair practices. Recent changes in the trademark Laws, in India, and elsewhere, have increased the values of trademark and importance of registration. The importance and value of trademark to our business colleagues show how this sometimes arcane area in day to day activities operates. After all, trade that is chosen used and protection correctly, can has forever.

The trade Marks Act, 1999 replaces the Trade and Merchandise marks Act, 1958. The Act is a consolidated effort to bring the law at par with international practices. These changes are envisaged by India, well before it signed the General Agreement on Trade and Tariffs (GATT) and the Trade Related Intellectual Property Rights (TRIPS) agreements in April 1993. One of the main reasons for enacting the new legislation” is to ensure that the new act reflects current trading practice as well as guaranteeing that India conformed to

354 the Uruguay final Agreement on TRIPS relating to the trade marks. For the first time, the new Act will seek to protect service marks as well, as opposed to trade marks in goods. The services to which a trade mark can be registered include that of advertising and business, insurance and finance, construction and repair, transport and storage, material treatment, boarding and loading, education and entertainment.

The new Act expands the scope of the definition of “trade mark” to include graphic representation, shape, packaging and combustion of colours and covers both goods and services. Under the 1958 Act any name signature, word, letter or numeral or any combination thereof capable of distinguishing the goods of one concern from those of others were eligible for registration as trade mark. Under the new legislation any combination of colors is also register able. The scope of other terms like “mark” collective mark, goods, registered trade mark permitted use” has been expanded in tune with international practices. The jurisdiction of the courts is also affected with the formation of the appellate tribunal. The Act makes provisions for procedure for registration of trademarks easier by removing the earlier system part A and B registration. It provides for a single application for registration in more than one class and increases the period of registration and renewal from seven to ten years. The Act also provides for the classification of goods and services in conformity with recognized International Classification of goods and services which also envisaged in the publication of an alphabetical index of classification of goods and services. The registrar of trademarks is vested with greater powers in the classification of goods and services. The Act seeks to prevent a person from adapting someone else’s trade mark as a part of that person’s trade name or business.

The scope of the trade mark law has been expanded in the definition of “Infringement”. In the earlier Act a registered trade mark is infringed by a person who uses in the course of a trade mark which is identical with or deceptively similar to the registered mark. In the new Act “infringement” has defined to include not just deceptively similar, but similar marks, similar goods, and even

355 goods not similar to those for which the trade mark is registered. Trade mark infringement under the new Act is a cognizable offence. The police can act in cases where violation is “likely” to occur. The benefit under the Trade and Merchandise Marks Act are given to individuals, No public benefit is derived therefrom. It is to protect the individual right, statutory provisions have been made. The benefit derived under the Act can be waived. Another person can make use of the mark with the consent of the registered proprietary.

When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or an account of profit made by the other person. The purpose of the Act is, thus, to protect the interest of the proprietors of the registered trademarks and the rights and duties created in relation to the rights of individual owners. The act does not seek to create any right in a general sense.

The aim of the provision of the enforcement is to ensure the undisturbed the IPR, which find their place in the substantive provisions. All TRIPS member (WTO member) are required to give effect to the provisions under their national laws. The TRIPS agreement has thus, harmonized the law on the protection and enforcement of Intellectual Property Rights (IPRS). As in the case of substantive standards, the United States standards were made the basis on enforcement measures. After the entry into force of the TRIPS Agreement, India has given effect to its different provisions through amending the existing IP Laws or legislating new ones. In this process, it has amended its Copyright Act 1957 (in 1994 and subsequently, in 1999) and the Patents Act, 1970 (by the Patents (Amendment) Act, 2002); replaced the Trade and Merchandise Marks Act 1958 with the new Trade Marks Act 1999; and enacted the Geographical Indications of

356 Goods (Registration and Protection) Act 1999; the Integrated Circuits Layout Design Act, 2000; and the Plant Varieties and Farmer’s Right Act, 2001

Since the Internet is global phenomenon, experiences has shown that the US has tried to plug the legal lacuna by passing the Trademark Cyber Piracy Prevention Act. There are various steps already a foot to tackle the domain name disputes, especially cybersquatting, on international level. As far as India is concerned, one has to be pragmatic and it is to be realized that the virtual world of cyber space needs a law for itself. Bringing passing of within the framework of the Trade and Merchandise Marks Act, which is un antiquated legislation (pasted in the year 1958/would result in granting trademark holder more extensive protection than what the legislative originally interned. A trend of increased disputes over web address is gaining ground in India over the past few years as companies recognize the commercial potential on the Internet. As companies try to state their claims in cyberspace they often find their prime panels already in the hands of somebody else. The W1PO arbitration and mediation center may order the respondent only to refrain from the use damages for the loss caused to the complainant law are being continuously amended to take care of the technological changes.

357 signed electronically to be enforceable in a court of law. The Act provides legal framework for ecommerce, e-security and e-governance in India.

The various problems posed by digital medium are distribution, catching, protecting of confidential information patent, copyrights, trademarks, domain names, liability for defamatory statements over network, content liability and protection, payment mechanism for Internet commerce, money laundering, taxation, issue prohibited and activities etc. Intellectual Property laws are being continuously amended to take care of technological changes, but stilt requires major amendments to deal with challenges posed by the Internet and digital revolution. The activities of tampering, eavesdropping impersonation are some, issues that arise during the electronics transaction of documents. All these can be remedied by the use of public key cryptography. However the question of when (time of creation) a document was created or signed electronically stilt remains unanswered.

This information may be proved to be crucial to be ecommerce legally binding transaction When refers to time stamping. There is need as of now to introduce digital time stamping service in electronic transactions in India and the author has attempted a possible methodology for the same. With the help of DTS, it is possible to guarantee the integrity of electronic record. One can prevent, insider fraud, prove ownership of intellectual property, or settle disputes with customers, competitors, partners and employees, which are of vital importance in currently emerging Intellectual Property Right regime.

Real importance of time stamping becomes evidence when there is need for legal use of electronic documents with along” life time. The time stamping wilt help in solving the cases where cryptographic scheme used for become unreliable or where the signer have repudiates the signings claiming that he has accidentally lost her/his private key. Although today’s time stepping procedure may appear to be complicated, failure e-commerce application are expected to technology. The problem of cybersquatting is escalating globally and even in

358 India. Trademark and service mark owners need to be able to protect their marks as domain names from others who register and use the mark in bad faith. As a preliminary matter the owner must first discover that its mark is being used in an Internet address. An inexpensive way to do this is simply to use a search engine to discover web pages using the mark. Making detection even easier, one domain name registrar offers a service that will report cybersquatting or any trademark being used in hidden or overt ways.

The disputes between trademarks and domain names present unusual features that are currently stretching the capacity of Indian Judiciary to its limits. In certain cases, the global dimensions of domain name disputes have made it difficult for Indian courts to come up with comprehensive solutions to combat the cybersquatting menace. India passed the Information Technology Act, 2000 to deal with the emerging cyber issues. It aims to provide for the legal framework so that legal sanctity is accorded to all electronic records and transactions carried out by the means of electronic data interchange and other means of electronic communication (e-commerce). However, it does not deal with major issues like Cybersquatting, Spamming, and Cyber Stalking. Phishing etc., though it was expected to deal with so.

For the effective regulation of a phenomenon, the legal regime for it must be abreast with the latest developments taking place in that field, which becomes difficult in the case of Information Technology as it has an accelerated pace of development and hence the statute requires constant updating. There are some grey areas in the Act which need special attention as under:  The Act extends the application of its penal provisions to persons outside India, irrespective of their nationality if the offence under the Act relates to a computer located in India. Such extra-territorial Jurisdiction is fraught with limitations as to its enforcement.  The jurisdiction of a particular country over online transactions, which involves more than one jurisdiction, has been left open. This can lead to a conflict of jurisdictions.

359  The Act fails to address the issue of cross-border taxation that may arise in international contracts.  The Act does not address the issue of protection of intellectual property on the internet.  The Act does not deal with privacy and data protection issues on the internet.  The Act fails to cover cyber laundering of money, spamming, phishing, cyber stalking, and cyber-squatting and other innovative cyber-crimes.  The Act does not clarify the situation regarding the liability of network service providers.

Whereas domain names are used to establish a presence on the Internet, many organisations register as their domain names their own names, initials or trademarks (in text form), or words that are descriptive of their products or services or that are otherwise associated with them. It is almost intuitive for a seasoned Internet, user seeking to locate the website of a particular organisation to type as URL words or initials that he would associate with that organisation.

However, domain names are usually issued on a “first come, first served” basis. Many TLD registries do not require an applicant to prove that he is entitled to a particular domain name before registering the domain name. As domain names are necessarily unique, disputes over who is entitled to a particular domain name may arise where there are two or more parties interested in using the same domain name. The parties to a typical domain name dispute are the registrant of the domain name and the party seeking to take over the domain name (the “complainant”). Generally, a domain name dispute may be resolved in five ways:  By agreement between the parties (for instance, where the domain name is transferred.  By the registrant to the complainant for an agreed consideration).  By using alternative dispute resolution mechanisms such as mediation or arbitration.  by court proceedings : and

360  by using any administrative procedure for resolving domain name disputes that may be prescribed by the domain name registration agreement entered into between the registrant and the registry registrar for that domain name.

Examples of administrative procedures for resolving domain disputes include:  ICANN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”). Which has been adopted by all ICANN accredited registrars for the “.cero”, “.biz”, “.com”, “.coop”, “.info”. – museum”, “.name”, “.net” and “.org” gTLDs :  The country Domain Name Dispute Resolution Policy if any. (INDRP in case of India).

It should be noted that not all domain name registration agreements provide for administrative procedures for resolving domain name disputes. Realizing a need for change and in light of the aforesaid circumstances, a strong recommendation was made to formulate laws for regulating the domain names in cyber space. Accordingly, ICANN (International Community for Assigned Names and Numbers), Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), came into existence with an object to streamline the process of acquiring domain names. Consequently a similar policy was adopted/introduced in India known as .IN DISPUTE RESOLUTION POLICY (”INDRP”) with a similar object. The courts across the country and authorities world over started reacting in seriousness to instances or cases of cyber squatting or misuse of registered trade mark by registered domain name holders, who were not the registered trade mark owner/user regarding UDRP, the following observations have been made :  The process is fast (on average 42 days, but frequently as few as 28 days when the parties haven’t requested Stays.  The process is usually hassle-free. Few parties report to us that they have serious problems with having decisions implemented, and in a large number of those cases, it’s the complainant who didn’t understand how the process worked, or didn’t follow up in a timely manner. However, I note

361 that ICANN rarely follows up on Rule 16 (a) violations. No matter how many times we bring to ICANN’s attention that a Registrar is not notifying the Parties and Provider of the Date on which the decision will be implemented, nothing is done about it. Many of the largest registrars are complying, notably, GoDaddy, eNom, and Tucows. Of the ones that don’t comply, there are few problems with transfer so it seems the non- compliance has little negative effect. However, for a handful of Asian- based registrars with whom obtaining transfer proves to be most difficult, ICANN isn’t enforcing Rule 16 (a), which should be the first step in enforcing the decision. The only entity that has leverage over Registrars that don’t comply with UDRP Panel Orders is ICANN. So if ICANN is not enforcing 16 (a) or a registrar’s refusal to contact/work with a prevailing complainant, the UDRP becomes worthless.  The UDRP has by-and-large stood the test of time. The Internet has changed drastically since the UDRP was approved and few changes have arisen to really confound the process. We caution ICANN and the Working Group to consider the thousands of UDRP decisions serving as precedent when suggesting substantive changes to the UDRP.

Uniform Dispute Resolution Policy faces a lot of criticisms worldwide. Some of the most important of then are:  The UDRP fails to account for a process that consists of checks and balances and is not consistent with due process.  The UDRP does not provide incentives, equal for both parties.  The UDRP promotes forum shopping.  The panelists associated with the UDRP have mainly a trademark law background.  The number of default cases is worryingly high.  The democratic fractions of the UDRP are weak and incapable to resist trademark penetration.  The UDRP makes arbitrary use of precedent.

362  Similarly, the UDRP also promotes an inconsistent system, despite the fact that is meant to be uniform.  The UDRP is based upon the illogical conclusion that all domain name registrations are potentially abusive and Hannifin and, occasionally, without any distinction or assessment between actual harm and the likelihood of such harm, it has normatively evolved into an inconsistent paradigm.  The substantive provisions of the UDRP (paragraph 4a) are at best etymologically obscure.  The bad faith element is open to wide and discretionary interpretations.  There is no authority responsible for the decisions (good or bad) that come out of UDRP panels.

SUGGESTIONS An adequate trademark system is very important to consumers in developing countries, because it permits these consumers to rely on a particular standard of quality associated with the trademark and identify the origin of the trademarked goods, rather than have no means of distinguishing goods from different sources.

An adequate trademark system is very important to enterprises in developing countries because it permits them to develop domestic and foreign markets for their products. Without an adequate trademark system, it is very difficult to start a new business or introduce a new product line and compete with established foreign and domestic enterprises, particularly in consumer product lines.

Therefore, trademark protection is at least as important for the consumers and enterprises of developing countries as it is for consumers and enterprises of developed countries. Also a trademark may be of particular assistance in the transfer of technology to enterprises in developing countries. The license recipient

363 will have to acquire know-how and technical skills in order to maintain the quality standard required by the license supplier, and the licensed trademark, particularly if it is known in his country, will help the license recipient develop the market faster than would otherwise be possible.

The question of the significance of trademark systems in developing countries is worthy of further investigation and analysis by The International Trademark Association, providing essential trademark information to national and international governmental bodies and particularly enterprises in developing countries as under:  Implementation and interpretation of TRIPS provisions for promoting both access to existing medicines and the creation of new medicines.  TRIPS Agreement should not prevent member governments from protecting public health.  TRIPS Agreement to be read in Light of its objectives and principles.  International transfer of technology.

Some of the suggestions to reform the Indian law to tackle the problem of cybersquatting is that: There is a need for a new legislation in India in lines with ACPA and UDRP. There is no legislation in India which explicitly refers to dispute resolution in connection with domain names. The existing laws concerning trademark infringement do not adequately protect trademark holders against cyber squatters. The Indian courts have been relying on the Trade Marks Act, 1999 (before 1999 on Trade and Merchandise Marks Act, 1958) and the Information Technology Act, 2000 to deal with the growing problem of cybersquatting. But, both these legislations fall short in providing an effective protection to domain names in India.

The Information Technology Act, 2000 regulates to a large extent cybercrimes and electronic signatures, but it does not cover all aspects of information technology and it leaves an important area - Intellectual Property

364 Rights (IPRs), specifically in respect of Internet-related activities. The Act also does not contain any provisions with regard to cybersquatting, which is growing in prevalence by the day as has been discussed in the aforementioned cases. In many situations the Indian courts have to seek guidance from English and American laws and decisions, which really makes it pertinent to make a new legislation of its own, just like ACPA in the US which has resulted in significantly controlling cybersquatting there. It has become important for India to legislate a law like ACPA of US, and which necessarily conforms to the international standards laid down in the UDRP.

There is a need for setting up an independent adjudicatory authority that shall be able to decide cases relating to domain name disputes, especially cybersquatting in India. The setting up such bodies has proved effective in many countries like US (National Arbitration Forum) and Czech Republic (Czech Arbitration Court).

Setting up such an independent judicial body to tackle the domain name disputes, especially cybersquatting, shall prove less time consuming, more expedient and more effective, as the parties will not have to wait to get onto a docket, then for a trial, then for an outcome. The INDRP which deals with only “.in” domain name disputes needs to be further strengthened and given the effect of a law. The policy, since not being in the shape of a law, is not mandatory to be followed. The inconsistency between the INDRP and the UDRP needs to be removed The UDRP and the INDRP differ on the domain names in many places. Thus to make INDRP more effective, it has to be made more compliant to the UDRP, and be given the shape of a law.

After analyzing various approaches relating to cybersquatting, it is clear that two methods have developed in the form of dispute resolution by the regulatory authorities and the formal legal or court procedure. The majority of authorities has either implemented the UDRP or has implemented one closely modeled on it. This is indeed a very effective method of curbing cybersquatting,

365 though it requires changes with time. And then observing at how the courts have reacted. it is clear that the picture is altogether different. While some countries have implemented cybersquatting specific legislation, others have reacted rather indolently by simply applying trademark laws inappropriately.

Finally, in the light of still increasing rate of cybersquatting in India and other countries, it is important to make a concerted effort by registrars to address and curb it at the registration level itself. This is indeed going to be proving beneficial in controlling cybersquatting. Just like in real world the squatters have finally given up their practice with stringent property laws in force. Courts take recourse to the Trade Marks Act while dealing with the disputes of trademarks in cyber world. But this cannot be termed as a proper and permanent solution to these upcoming and newer kinds of disputes. So the need of the hour is to formulate a specific and detailed provisions in Trade Marks Act on the subject i.e. domain names until a special law is being passed.

Under the current Trade Marks Act, 1999 there is no specific provision to protect the interests of a registered domain name holder meant for non- commercial and private use, dealing neither in any trade nor in any services as stipulated by the Act and therefore to prevent the violation of rights of such users there should he express provisions envisaged in the Act.

One should always be cautious to protect his own website from being hijacked or unauthorized use or perversion. There are basically three basic options offered by Registrars to protect a domain name.

All Domain Names have a password based security. All Domain Names belonging to a particular Customer can only be modified though the right Username and Password combination of that customer.

Domain LOCK is must for all due to the recently announced transfer Policy by ICANN. Once a Domain Name is locked no modifications can be made

366 to the Domain’ by anyone. The Domain Name may not even be transferred to another Registrar. The Domain will remain in a LOCKED status until you yourself choose to remove the LOCK. This feature is by far the most powerful feature to ensure that no one can make any changes to your Domain Name without your express approval.

In this status the domain name cannot be transferred, hijacked, or modified. The Owner of this domain name can easily change this status from their control panel. This feature is provided as a security measure against fraudulent domain name hijacking. Apart from these, the following are also the required changes in UDRP:  Include a requirement that the Provider request verification and a lock from the Registrar for each domain name and that the Registrar respond within 48 hours. Currently, there is no provision for this, but Rule 2 requires the Provider to serve the billing address, which none can obtain no other way than through the Registrar, and Policy para, 8 forbids transfer, but nobody have any indication that the Registrar intends to comply. If the Registrar never replies, aggrieved persons are in a position of proceeding without a lock and there is a higher incidence of cyber flight on these cases. Because there is no formal requirement for this, it appears that ICANN’s hands are tied-no action can be taken against the Registrars that don’t comply. The information need from the Registrar for each domain name : a. Confirmation that the domain name (s) is/are registered with that Registrar. b. The name and billing address for the registrants (s) (Rule 2) c. Confirmation that the domain name (s) is /are locked (Policy Para 8) d. The language of the Registration Agreement (Rule 11) e. The expiration date (the who is often projects it out a year) f. Confirmation that the domain name will not be allowed to expire or be deleted during the pending UDRP proceeding. As provided under the Expired Domain Deletion Policy (EDDP)./

367  Revise required for Rule 11 (a). Currently the Rule says “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration agreement, subject to the authority of the Panel to determine other wise, having regard to the circumstances of the administrative proceeding.”  The Rule is impossible to administer as written. The language of the proceedings is determined well before commencement; at the time the domain name is verified by the Registrar, causing Complainant to have to translate the complaint during the deficiency period. At that point, the case is not commenced and no panel is appointed. Therefore, it’s impossible to ask a Panel to determine if the Complaint need not be translated. If we were to “pre-appoint” the Panel, it would remove Respondent’s ability to select a three member panel since a Panel would already be appointed.  It is recommend Rule 11 be amended to either codify the practice outlined in (b) above, or outline a new practice for the Providers, consistent with the UDRP timeline. While this Rule appears sound on its face, it’s not until you get into the practical implementation of it that the problems surface.  Currently, when a complainant has to translate a complaint, more time is needed than the five (5) day deficiency period. As a result, the Forum has a rule allowing a complainant to withdraw and then re-file for a nominal administrative fee. The challenge with this is that the withdrawal releases any lock that had previously been on the domain name. It would be helpful to write in an allowable extension of the deficiency period, only for use when complainant has to translate. While the UDRP is supposed to be fast, it’s clear the UDRP drafters didn’t consider the translation issue.

Developing countries, particularly India, require more sophisticated technologies to be competitive in today’s global economy. For which we need to give serious consideration to our policies for encouraging technology transfer. In addition to this, effective competitive policies must be established. With growing

368 pharmaceutical, software and entertainment industries, India has much to gain from implementing a more robust IPR regime. Increased intellectual property protection would boost bilateral trade and investment with the United States. Hi- tech trade and collaborative research and development are growing, but there is a need to do it faster.

369

BIBLIOGRAPHY

BOOKS

1. A.K. Koul & U.K. Ahuja (ed.) The law of Intellectual Property Rights: In prospect retrospect, Faculty of Law University Delhi, 2001. 2. Alankis, Intellectual Property. 3. Bently and Sharman, Intellectual Property Law, First Indian Reprint, Oxford University Press New Delhi 2003. 4. Catherine Colstan, Principles of Intellectual Property Law, Cavendisk Publishing Limited, London, 1999. 5. Cornish & Llewelyn, Intellectual Property, 5th edition, Thomson, Sweet & Maxwell Publication, 2005. 6. Dr. M.K. Bhandari, Law Relating to Intellectual Property Rights, Central Law Publications, 2006. 7. David Bainbridge, Intellectual Property, V edition, Pearson Education, First Indian Reprint, 2003. 8. D. Young, Passing off, 2nd edition, Longman, 1989. 9. Dr. Priya Ranjan Trivedi, Encyclopedia of Intellectual Property Rights, Volume Four, Trade Mark System, Law and Policy. Printed at Green Graphics, New Delhi. 10. Dr.B.L. Wadhera, Law Relating to Intellectual Property, IV edition, Universal Law Publication Co., 2007. 11. Daniel Geravis, The TRIPS Agreement – Drafting History and Analysis, 2nd edition Sweet and Maxwell, London, 2003. 12. Dr. B. Wadhera, Law Relating to Patents, Trade Marks, Copyright, Designs and Geographical Indications, 3rd edition, Universal Law Publishing Co. Pvt. Ltd, New Delhi, 2004, Updated Reprint, 2005. 13. Frederick W.Mostert, Famous and well Known Marks- An Internatioinal Analysis. 14. G. Kaufmann – Kohler and T. Schultz, Online Dispute Resolution: Challenges for Contemporary Justice, 2004.

370 15. Holyoak and Torremans, Intellectual Property Law, 2nd edition, London, 1989. 16. Ian J.Lyod, Information Technology Law, 5th edition, Oxford University Press, 2008. 17. J.P. Mishra, An Introduction to Intellectual Property Rights, Central Law Publications, 2005. 18. Justice Yatindra Singh, Cyber Laws,V edition, Universal Law Publishing Co. 2012. 19. K.C. Kailasam, Law of Trademarks and Geographical Indications, 2nd edition, Wadhwa Nagpur Publication, 2005. 20. K. Mani, Legal Frame Works on Cyber Crimes, Kamal publishers, 2008. 21. Lilian Edwards & Charlottee Waelda (Eds.),Law and the Internet : Regulating Cyberspace, Hart Publishing, Oxford. 22. Myneni S.R., Law of Intellectual Property Asia Law House Hyderabad, 2003. 23. Meenu Paul, Intellectual Property Rights, Allahabad Law Agency,2008. 24. Michael A. Epstein, Intellectual Property, 5th edition, Aspen Publishers, 1st Indian Reprint, 2008. 25. Majumdar Ankit and Kamath Nandan, Name – Calling in Cyberspace – Domain Name and The Law 2nd Edition. 26. Nandan Kamath, Law Relating to Computers, Internet and E-commerce, Universal Law Publication, updated reprint, 2002. 27. Prof. Salim Akhtar & Miss Shweta Jain, Protection of Domain Names in India & Abroad. Printed at Aligarh Muslim University Press, 2012. 28. P. Narayanan, Intellectual Property Law, 3rd edition, Eastern Law House, Kolkata, Revised Reprint, 2004. 29. Rodney D. Ryder, Guide to Cyber Laws, 1st edition, Wadhwa and Company, Nagpur, 2001. 30. Salmond & Houston, Law of Torts 18th edition. 31. Sharma Vakul, Information Technology – Law and Practice, 2nd Edition, Universal Publication, 2008.

371 32. Sourabh Ghosh, Domain Name Dispute and Evolution of the KANH’s Uniform Domain Name Dispute Resolution Policy. 33. T.R. Srinivas Iyengar, Revised by Dr. H.K. Saharay, The Trade Marks Act, IV edition, Universal Law Publishing Co., 2011. 34. T.R. Srinivasa Iyenger, Revised by Yudhisthire, Trade and Merchandise Marks Act, 3rd edition, The Law Book Company (P) Ltd., 1989. 35. Vivek Sood, Cyber Law Simplified, 2nd edition, Tata Mc Graw Hill Publication. 36. V.K.Unni, Trade Marks & The Emerging Concept of Cyber Property Rights, 1st edition, Eastern Book Company Calcutta, 2002. 37. Word Intellectual Property Organisation : WIPO Intellectual Property Handbook – Law, Policy and Use (WIPO Geneva, 2001) 38. WIPO, Background Reading Material an Intellectual Property, Geneva. 39. W.R. Cornish, Intellectual Property, 3rd edition, Universal Law Publishing Co. Pvt. Ltd. New Delhi, First Indian Reprint, 2001. 40. W.R. Cornish, Cases and Materials on Intellectual Property, Universal Law Publishing Company, Pvt. Ltd., New Delhi, First India Reprint, 2004.

ARTICLES

1. Ashwani Kumar, Paper on Expansion of Passing off, Circulated WIPO- DU Training Programme, 22-26 April, 1996. 2. Atin Kumar Das, Passing Off Under Indian Trademarks Act 1999 : A Bird’s Eye View. 3. Bhavna Singh, Cybersquatting and Domain Name Disputes under the Trademark Law. 4. Charlotte Waelde, Domain Names and Trademarks : What’s in a name? 5. Carl Oppedahl, Oppedahl How is a domain name like a cow? 6. Connely Lain. M, Jurisdiction over Trademarks and Domain Names. 7. David W. Maher, Trades on the Internet : Who’s in Charge? 8. E. Taylor, Keeping Your Good Name, Business Net-Works.

372 9. James Marcovitz, Ronald @ Mcdonalds.com, “Owning a Bitchin”, Corporate Trademark as an Internet Address Infringement? 10. Juan Pablo Cortes Dieguez, The UDRP Reviewed : The Need for A Uniform Policy, C.T.L.R. 2008, 14 (6) 133-139. 11. Kenneth Sutherlin Dueker, Trademark Law lost in Cyberspace : Trademark Protection for Internet Addresses. 12. Lisa M. Sharrock, The future of Domain Name Dispute Resolution : Crafting Practical International Legal Solutions from within the UDRP Framework, Volume 51, Duke Law Journal, Nov. 2001 13. Mitchell Zimmerman & Sally M. Abel, Securing and Protecting a Domain Name for your website : Trade Marks, Trade Names and Domain Names in Cyberspace. 14. Majumdar and Company, Domain Name Dispute Resolution in India. 15. Monica Kilian, Cybersquatting and Trademark Infringement, Volume 7, 3 Sept. 2000. 16. Manzoor Elahi, Passing Off and Infringement. 17. Manish Singh Nair, India :Court Reiterates Relief of Passing Off In Unregistered Marks, 24 April 2007. 18. Parveen Dalal, Domain Name Protection in India. 19. Richard Baum and Robert Cumbow, First Use : Key Test in Internet Domain Disputes. 20. Ranjan K. Mishra, Domain Name Dispute and Cyber Squatting 20th July 2010. 21. Rami Olwan, Examination of the Truth of Domain Name Act of 2003. 22. Rohans Nagpal, Intellectual Property Issues and Cyber Space. Version 2.1, April 2008. 23. Sally M. Albel, Trademark Issues in Cyberspace : The Brave New Frontier. 24. Sandhya Soman, Nestle wins Trademark battle for Kit Kat, 24 April, Times of India, 2013. 25. Singpost in Cyber Space : The Domain Name System & Internet Navigation 2005.

373 26. Stewart I., The Best Laid Plans, Federal Communication Law Journal 2001. 27. Salman Waris (heads, Fox Maudal Law Firm), Legal opinion : Celebrity Domain Squatting Rise in India, 7th July 2010. 28. Sanjay Bhatia, Domain Names, Cyber Squatting and Trademarks in India – A legal Perspective, 15th September, 2003. 29. Sourabh Ghosh, Domain Name Disputes and Evaluation of the ICANN’s Uniform Domain Name Dispute Resolution Policy Volume 9, Journal of Intellectual Property Rights, 2004. 30. Sunando Mukherjee, Passing Off in Internet Domain Names-A legal Analysis,Voume 9, Journal of Intellectual Property Rights, 2004. 31. Vatsal Arya & Subhrarag Mukherjee, A Case Study of Indian Decisions on Domain Name Trademark Disputes. The Patents and Trade Marks Cases Volume 2003 (29) PTC, Jornal Section. 32. Walker L., ICANN’s Uniform Domain Dispute Resolution Policy, Berkeley Technology Law Journal.2000.

JOURNALS

1. Berkeley Technology Law Journal.

2. Chartered Secretary.

3. Company Law Journal.

4. Duke Law Journal.

5. Federal Communication Law Journal.

6. House of Lords Journal.

7. Journal of Intellectual Property Right.

8. Manupatra Intellectual Property Reports.

9. Supreme Court Journal.

374 10. The Journal of Patent Trademark Cases.

NEWS PAPERS/MAGAZINES

1. Agriculture Today

2. Delhi Law Times

3. Economic and Political Weekly.

4. India Today.

5. Out Look.

6. The Frontline.

7. The Hindu.

8. The Hindustan Times.

9. The Times of India.

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WEBLIOGRAPHY

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