Trademarks.pdf

Paper I
Study Material on
TRADEMARKS
Contributed by
Prof. KN Chandrasekharan Pillai
Ms. Versha Vahini
Mr. Devashish Bharukah
and
Mr. Alok Gupta
Revised by
Ms. Jaya V S
Asst. Res. Prof., ILI & Programme Co-ordinator
Indian Law Institute
Bhagwan Das Road
New Delhi - 110001
For circulation amongst the
online course subscribers

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TRADEMARKS
Contents of this Part

Introduction

Registration of Trademark

Registrability of Trademark

Deceptive Similarity

Passing Off

Infringement under the Trade mark Act, 1999

Well-known Trademark
Fundamental of Trademarks
Trademark is a symbol that allows a purchaser to identify goods or services that have been
proved satisfactory and not to buy goods or services that have not been satisfactory.
Trademarks serve mainly three purposes viz. (i) encourage the production of quality
products; (ii) reduce the customer’s costs of shopping and (iii) help the customer to make
decisions on purchasing products.
Trademarks help promote economic efficiency. If trademarks are not allowed to be
registered with the manufacturers it may eventually take away the incentive of trademark
owning manufacturers to make investments in quality control. There would thus be no
healthy competition among the manufacturers leading to the loss of vitality of the
economy. If we do not have a system of having trademark a manufacturer would get
nothing by improving his product’s quality. And consumers would not be in a position to
identify high or low-quality products. In such a situation a manufacturer who reduce the
price by reducing quality may pocket the benefit of the market. The consequence would be
attempts to produce inferior quality products rather than competition to produce better-
quality products.
Today the uniformity of quality of products in the marketplace is the result of the use of
trademarks rather than the inherent nature of production or the reflection of altruistic
motives of manufacturers or distributors. In a system wherein trademarks are allowed to be
infringed, all may take a free ride on the successful sellers trademark and reputation, there
would be no incentive to distinguish one’s own goods and services.
Trademarks reduce the customer’s cost and agony of acquiring information about products
and service. If a person knows by his experience or experience of others that a product is of
good quality he would go for that brand without much search. With reference to the
question of new trademarks if the customers are willing to pay for the new brand to
establish itself through advertising then the rational potential entrant will have incentive to
enter the market and enjoy success. It is for the customers to do the needful.

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Trademarks are universal phenomena. The legal systems of free market economies as well
as that of the socialists’ economies recognize some form of identification of the source and
quality of goods.
The law of trademark is a branch of unfair competition or unfair trade practices. In other
words, trademark law is a part of the generic law of unfair competition. Trademark
infringement is a commercial tort and all persons who infringe a trademark are liable as
joint tortfeasors.
Trademark infringement law and unfair trademark law a different. The essential element of
a trademark is the exclusive right of its owner to use a word or device to distinguish his
products. On the contrary a claim of unfair competition consider the total physical image
given by the product and its name together. In giving protection to trademark, the law is
imposing ethical and moral norms on the competitive process. It is view that the unethical
and unfair to allow one two appropriate goods which a competitor has built up by quality
control and advertising in a trade symbol. Trademark infringement is regarding as an
unacceptable access in the heat of competitive rivalry.
In a sense the law of trademarks reflects the societal view that certain forms of competitive
behaviour in business practices are unfair. Today there is consensus that gaining customers
by the use of confusingly similar to trademarks is contrary to all concepts of commercial
morality ethics and fairness.
The logic underlying protection of trademarks seems to be the fairness involved in the first
user being given the recognition, as he is the first to appreciate the value of the mark who
had gone through the efforts necessary to establish the mark as a meaningful symbol. To
permit others to exploit the first user’s efforts is unjust. From the customers’ standpoint
this conduct is an unfair trade practice inasmuch as it deceives the purchaser. In that sense,
it is a fraud on the public, which acquires a right in course of time to get a particular brand.
It had been argued by many scholars that the trademark like a patent or copyright served to
differentiate the product with which it is associated and thus leads to control over a
segment of the market.
Many judges and writers have later however restricted the contention that trademarks
partake of the essential aspects of monopoly. Perhaps Judge Frank’s conclusion is
appropriate to appreciate the question in proper perspective. He said that judges should
keep in mind “the basic common law policy of encouraging competition and the fact that
the protection of monopolies in names is but a secondary and limited policy.” (Eastern
Wine Corp. v. Winslaw – Warren-Ltd. 137 F.2d 955).

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It is argued by many that trademarks actually create a barrier to entry to the market. It does
not appear to be correct. In fact when consumers have the benefit of price advertising retail
prices are dramatically lower than without advertising. Advertising may reduce, not raise
the cost of products/services. However, when such barriers exist it may be noted that they
exist because consumers prefer the brand with the favourable representation and are willing
to pay a higher price for them.
Trademarks are symbols representing essential element of the competitive process. The
Senate Committee in America while reposting the bill that became the Federal Trademark
Act of 1946 (Lanham Act) explains the fundamental basis of trademark protection thus:
“Trademarks, indeed, are the essence of competition because they make possible a choice
between competing articles by enabling the buyer to distinguish one from the other.
Trademarks encourage the maintenance of quality by securing to the producer the benefit
of the good reputation which excellence creates. To protect trademarks, therefore, is to
product the public from deceit, to foster fair competition, and to secure to the business
community the advantages of reputation and goodwill by preventing their diversion from
those who have created them to those who have not….” (S. Rep. No. 1333 79th
Cong. 2d.
Session. (1946) US CCAN 1275).
Trademark confers a ‘right to exclude’ – a limited exclusive right. In this view it can be
said that trademark is a form of property. The property parameters of a trademark are
defined very differently from any other kind of property. The exclusive property right in
the trademark is defined by customer perception. Trademark owners has a property right
only in so far as is necessary to prevent customer confusion as to who produced the goods
and to facilitate differentiation of the trademark owner’s products. As a “property right”
marks can be alienated like any piece of property. Trademarks can be bought, sold and
licensed.
Trademark has no existence apart from the goodwill of the product or service it symbolizes.
In a sense a trademark is a “property” only in the sense that it is a symbol of the goodwill.
When an article bearing a trademark is sold, the goodwill that trademark signifies is a
factor in making the sale. The goodwill’s existence is in the minds of the buying public. In
fact goodwill is a business interest that reflects the basic human tendency to continue
purchasing things from a seller who has offered goods that the customer develops a liking
in course of time. The goodwill together with its symbol the trademark – are classified as
property. It is non-tangible and non-physical. When alienated together, trademarks and
their goodwill are subject to ownership like any other form of intangible property rights.
Even though trademarks and goodwill are forms of non-physical property they can be
carried on in the books as an asset of the company.
While free competition is a goal, it does not override protection for the goodwill
established by a user for though the goodwill name and reputation of the producer remains
his private property and may not be traded upon and exploited by the competitors.

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Trademark Infringement as Unjust Enrichment
A trademark that has attained consumer recognition has an inherent value and should be
protected from invasion by those how would like to profit from advertising expenditure that
they did not make. In this sense trademark infringement is an undue enrichment.
Trademark law insures that the brand information received by consumers is accurate. They
in fact reduce losses caused by deceit and thus help the consumers. In this sense it can be
said that protection of trademarks is only a facet of consumer protection.
Historically, trademark law grew up as a branch of the tort of fraud and deceit, unfair
competition of which trademark infringement is a part, is, founded on the right of both
dealer and the purchasers to be protected from fraud of which both are victims. Sometimes,
the private rights of trademark owners conflict with the right of the public to know the truth
about the significance of a trademark.
A trademark not only symbolizes the goodwill behind the physical products but also the
penumbra of psychological factors that surround the product. These factors of
merchandising the legal issues of “likelihood of confusion” and “dilution” of the effect of a
given trademark. Sometimes people confuse trademarks law because of ‘irrational’
purchasing decisions of consumers, but this confusion is not justified inasmuch as
trademarks are neutral symbols insofar as advertising and a product’s usefulness is
concerned.
REGISTRATION OF TRADEMARK
PROCEDURE FOR REGISTRATION
1. Application for Registration
Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the proprietor
of a trademark used or proposed to be used by him, who is desirous of registering it shall
apply in writing to the registrar in the prescribed manner for the registration of the mark.
Essential Ingredients for registration:
(i) Any person
Any person includes individual, partnership firm, association of persons, a company
whether incorporated or not, a trust, Central or State Government. It does not allow the
representative of the proprietor to apply in his own name.
(ii) Claiming to be proprietor
A person may obtain proprietorship in a trademark either by use or by registration under
this Act. He may also acquire proprietorship by assignment or by inheritance. In case of
unregistered mark but in use, proprietorship will be the person who first used it in case of

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two rival claims whereas in case of proposed use of mark, which comes up for registration,
the designer or the originator will be the proprietor in case of any controversy. Between
two rival claims of user of the mark and designer of the mark the former will be preferred.
At this stage of making application, the proprietor has to show his bona-fide claim. If the
mark is not mistaken on the face of application and also there is not objection to the claim,
the registrar is entitled to accept the application.
In case of manufacturer having a trademark abroad has made goods and imported them into
this country with foreign mark on them, the foreign mark may acquire distinctive character
and in such circumstances, the same or colourably similar mark cannot be registered not
because it is registered abroad but because it lacks distinctiveness.
(iii) Used or proposed to be used
The law permits registration of a mark, which has been or is being used or is proposed to be
used. In case of proposer of the mark, he must have definite and present intention to use the
mark as on the date of the application. Definite and present intention is different from the
general intention to use the mark sometime in future to something, which he may think
desirable later on. Definite and present intention means a real intention to use the mark for
resolved and settled purpose. In case of used mark, the use in itself is not sufficient but is to
be accompanied with real intention continue with the use.
The ‘proposed use’ of the trademark must be normal and fair, which, however, may include
variations in presentation or colour difference but such variation should not stretched to far
so that the used form will be totally different from the one sought to be registered. If
proprietor does not have the real and present intention to use the mark, and try to register is
for some mala-fide intention, such as to block the mark, it would amount to registration in
bad faith1
, which is a serious form of commercial fraud.
The application for registration of the mark must be filed with the Registrar in the
prescribed manner who has been conferred the discretion either to accept or reject or accept
with amendments, modifications, conditions or limitations2
. The Registrar must
communicate his decision in writing with the applicant and is under obligation to give the
reasons in cases of rejection or acceptance on conditions or with modification.3
2. Withdrawal of Acceptance
In case the Registrar decides to accept the mark for registration, but before actual
registration, the Registrar may withdraw his acceptance under certain circumstances under
section 19 of the Trade Marks Act 1999. For example, if the Registrar is satisfied that the
application is being accepted in error or that circumstances are such that such registration
should not be granted, he has been empowered to withdraw the acceptance of application.
1
K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and
company, Nagpur) 2003 at 239
2
Section 18 (4)
3
Section 18 (5)

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This power can be exercised subject to certain conditions. Registrar has to issue a notice,
specifying the objections, which has led him to think that the application has been accepted
in error or why the mark should not be registered, to the applicant and give him an
opportunity of being heard by requiring him to show cause why acceptance should not be
withdrawn.4
3. Advertisement of Application
Once the Registrar for registration has accepted the application, he shall get the application
advertised in the prescribed manner after acceptance. However, the application shall be
advertised before acceptance if the application is related to a trademark to which section
9(1) and 11(1)(2) apply or in any other case as it seems expedient to the Registrar.5
The
purpose of advertisement is give information to the public at large in respect of the
trademark advertised and afford an opportunity to oppose the registration of the mark on
given grounds. So the advertisement must be complete in all respects and otherwise the
very purpose of advertisement will be frustrated.6
If there is incomplete or incorrect
information in the advertisement, it would amount to misrepresentation, which deprives a
prospective opponent of the opportunity to get full information and of filing an effective
opposition.7
4. Opposition to Registration
Section 21 of The Trade Marks Act 1999 allows any person to oppose an application for
registration. “Any person” need not be only a prior registered trademark owner.8
Even a
customer, purchaser or a member of the public likely to use the goods may object to the
registration of a trademark in respect of such goods on the ground of possible deception or
confusion. The period within which opposition to the application for registration can be
filed is three month from the date of advertisement, which can be extended by Registrar not
exceeding one month on application made to him and on payment of the prescribed fee. So
the period cannot exceed four months in toto.
The grounds of opposition should be based upon the specific provisions of law. The
grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to
challenge the application of registration. However, the grounds based on section 11(2) and
(3) are available only to the proprietor of earlier trademark.9
On receiving the notice of opposition, the Registrar is under obligation to send a copy of
the same to the applicant for registration. Upon receiving such notice, the applicant is given
two months time, from the date of receipt of the notice, to file counter statement together
with the prescribed fees to the registrar. This copy of counter statement shall be sent to the
4
Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).
5
Section 20
6
Relevant case: Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)
7
Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 507
8
P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 80
9
company, Nagpur) 2003 at 261.

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person who has filed opposition under section 21 (3). The applicant and the opponent are
given the opportunity to adduce evidence in support of their claims and may also be given
an opportunity to be heard if they so desire under Section 21 (4).10
However the onus is on
the opponent to allege and prove the existence of facts, which may lead the tribunal to
assess the existence of likelihood of confusion in the minds of the public, which includes
likelihood of association with the earlier mark. But this does not relieve the applicant of his
onus to satisfy the Registrar or the court that there is no reasonable probability of
confusion, in respect of all goods coming within the specification applied for and not only
in respect of the goods on which he is proposing to use it immediately.11
5. Registration
Subject to Section 19 the Registrar is under obligation to register the Trade Mark under
section 23 if he decides in favour of applicant after listening to the opposition. However,
Central Government may direct otherwise on certain grounds. The mark can also be
registered jointly for two or more persons under section 24 if two or more persons agree to
work jointly. In such cases, the registrar shall require a copy of joint venture agreement to
satisfy himself because none of them is entitled to use the mark independently. The section
in its earlier part specifically precludes the Registrar from registration of two or more
persons who use the trademark independently or propose to use it independently. The
registration shall be made as of the date of the application and the applicant shall be issued
a certificate of registration. However the registrar is empowered U/S 23 (4) to amend the
register or certificate of registration for the purpose of correcting a clerical error or an
obvious mistake. The applicant must complete all formalities within one-year time period
or within such time as may be given in the notice. If defaulted, the application may be
treated as abandoned after the registrar gives notice in this regard to the applicant.
Section 25 provides that Registration shall be for a period of ten years but may be renewed
from time to time in accordance with the provisions of this act. Renewal can be made
before the expiration of the registration. In case of default in renewal before expiration, the
act provides for the grace period of six months from the date of expiration for renewal on
payment of prescribed fee. However, before expiration of the last registration of a
trademark, the Registrar shall send notice in the prescribed manner to the registered
proprietor of the date of expiration and conditions as to the renewal. If the proprietor does
not file for renewal, the name of the mark will be removed from the register. However, the
Registrar is entitled to restore the mark in register if it is just to do so after six month but
before one year from the expiration of the last registration, on the receipt of application and
on payment of the fee by the proprietor. Such restoration shall be for another ten years to
period.
10
Case relating to adducing evidence: Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968;
Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24; Jagajit Industries Ltd. v
The Registrar of Trade Marks 2001 PTC 24; Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127;
Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 45
11

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REGISTRABILITY OF THE MARK AS TRADEMARK:
Any mark, which is not hit by the definition and section 9, qualifies for registration.
However, a mark qualified under section 9 has to meet the positive objections under section
11 to be finally registered. Section 11 is the qualification of section 9. Mark having crossed
the threshold under section 9 is capable of getting the protection of the Trademark Act
subject to section 11. It deals with prohibition on registration but does not hit the inherent
capability of mark as to its registrability. The marks prohibited under section 11 may not be
desirable based upon public policy considerations.
Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark,
which can be represented graphically and is capable of distinguishing the goods or
services of one person from those of others.
In a way, the definition itself prescribes two features to be present in any mark to be a
trademark:
Capability of being represented graphically;
Capability to distinguish the goods or services of one person from those of others.
Absolute Grounds for Refusal of Registration under Section 9
Whereas Section 9 of The Act lays down the ground for on the basis of which, the
registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is
devoid of distinctive character’12
. The phrase ‘distinctive character’ implies the
‘incapability of the mark to distinguish’ the goods or services of one person from that of
the others. It also implies that the mark in itself should be distinctive in certain cases. For
example, common word of dictionary or the name of the place can not be registered unless
it is shown that the common word or the name has become distinctive of his goods or
services in the mind of the purchasing public, but if he succeeds, then he will be entitled to
protect his mark by registration.13
Another ground14
for refusal to register the mark is that the mark should not indicate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of services or other characteristics of the goods or
services. In addition to these, a mark stands disqualified from registration if represents the
shape of goods results from the nature of the goods themselves or shape of the goods
necessary to obtain a technical result or shape which gives substantial value to the goods.15
12
Section 9(1)(a)
13
14
Section 9(1)(b)
15
Section 9(3)

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Yet another ground16
is that the mark must not be consisted of the marks or indications,
which have become customary in current language or in the bona fide and established
practices of the trade it is not desirable to monopolize such marks.
These are the grounds, which are specific to the mark that means, if the mark is affected by
any of these characteristics, it cannot be registered. But this is not the end. The mark not
affected by any such disqualification, has to pass what can be called as the effect test. That
means, the mark should not deceive the public or cause confusion or hurt the religious
susceptibilities of any class or section of the citizens or be scandalous or obscene.17
The
section 9 lays down the pre-requisites of qualification for the protection of trademark law.
Capability to Distinguish Section 9(1)(a)
In National Bell Co. v Metal Goods MFG. Co18
., Supreme Court of India observed that
distinctive in relation to the goods or services as meaning ‘adapted to distinguish’ goods
with which the proprietor is/ may be connected. Whereas in Davis v Sussex Rubber Co.
Ltd.19
, the Court of Appeal drew the distinction between capable of distinguishing and
adapted to distinguish by saying that ‘capable of distinguishing’ seems to have a somewhat
wider import than the expression ‘adapted to distinguish’ as it embraces marks which have
not at the date of the application, but which, if used long enough, may become distinctive
of the goods of the proprietor of the mark. The court in this case, observed that ‘capable of
distinguishing’ might perhaps refer to the future, in the sense that a word may be able to
distinguish although at the moment of time at which the application is made it may not
have become fully effective to distinguish. However, the Court of Appeal observed that the
general considerations, which have to be taken into account in construing the expression
‘capable of distinguishing’, are the same as in construing ‘adapted to distinguish’. 20
In determining the capability to distinguish, the authority must take into consideration both
inherent capability and factual capability to distinguish. Inherent capability may mean that
irrespective of the peculiarities of the trade or the practice of other traders, the mark is
shown to possess the capability of distinguishing the goods to which it is applied. For
example, a mark having direct reference to the character or quality of the goods is
considered as inherently not capable of distinguishing. However Indian Trademark
Registry takes the view that if the reference to the character or quality is only indirect or
suggestive, the mark can be considered. The ‘factual capability to distinguish’ depends
upon the facts and circumstances of each case. In each particular case, it become a subject
of inquiry whether the mark by virtue of its being use or any other circumstances, it is in
fact is capable of distinguishing the goods. The Supreme Court in National Bell case
observed that in determining the distinctiveness, regard must be had whether it is inherently
16
Section 9(1)(c)
17
Section 9(2)
18
(1970) 3 SCC 665
19
(1927) 44 RPC 412; (1927) 2 Ch 345
20
English Cases: Electrix Ld’s., Appl. (1958) RPC 176; Philips’ Phonographische Industrie’s Appl. (1955) 72
RPC 183; Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73; Verve’s Records Inc.’s Appl. (1958) RPC
3; Tastee Freez International Ld.’s Appl. (1960) RPC 255

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distinctive or is inherently capable of distinguishing and by reason of its use or any other
circumstances, it is in fact adapted to distinguish or is capable to distinguishing the goods.
Indicating Nature or Characteristics under Section 9(1)(b)
Section 9(1)(b) lays down the other ground of disqualification of the mark for registration.
It says that the mark consists exclusively of marks or indications, which may serve in trade
to designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of services or other characteristics of the
goods or services. In addition to these, a mark stands disqualified from registration if
represents the shape of goods results from the nature of the goods themselves or shape of
the goods necessary to obtain a technical result or shape which gives substantial value to
the goods.21
The expression ‘kind’ includes the name or size or type of the goods or services. This is
based on the public policy of not affording registration to the generic description of the
goods which are the only available method of description of the goods would not be having
a capability to distinguish. E.g. words like extra, small, big, liquid, solid etc.
Any mark indicating the ‘quality’ of the goods or services is the property of everybody and
no one can be allowed to monopolize it. e.g. superior, best, No. ! etc. . Such words are
found to be devoid of distinctiveness.
Indications of quantity or standard weights or measures or numbers of contents such as
kilograms, liters, gallons, grams etc are not allowed, as these are needed by every trader in
respect of all the goods and services.
Words describing intended purpose or the primary functions of the goods or services
such as giving soothing effect or giving absolute cleaning. For example, word SAFFO22
was not given registration for cleaning powder and liquids on the ground that word was too
close to the descriptive of SAFF mean ‘clean’.
Similarly words indicating value or worth of any product are incapable of getting
registration such as Moneysworth.23
Marks indicative of place of manufacture or sale of goods or time of production are not
allowed for registration. E.g. Punjab basmati or Talvandi rice or prepared in one day etc.
Marks common to trade Section 9(1)(c)
Section 9(1)(c) prohibits the registration of marks that consists exclusively of marks of
indications which have become customary in current language or in bona fide and
21
Section 9(3)
22
Chef TM (1979) RPC 143.
23
Moneysworth Trade Mark (1976) RPC 317.

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established practices of the trade. This is to protect the free use of indications or marks,
which are already in use in the trade, from being monopolized as a trademark. Moreover
such marks lack distinctive character. Words or indications common to trade are open to
everybody for use. E.g. generic names notified by the WHO as non-proprietary names, are
open to the trade to use.
Proviso to Section 9(1)
The proviso to Section 9(1) provides that any mark or name, which though is not distinct,
nevertheless may be registrable if it is shown that it has by virtue of use acquired a
distinctive character. That means, as a result of use, the mark has become distinctive of the
goods or services of the proprietor. In an well-know case in Registrar of Trade Marks v
Hamdard National Foundation (India)24
the Delhi High Court gave approval of the
registration of the mark ‘SAFI’ by holding that words having direct relation to the character
and quality of the goods, sometimes lose their primary meaning and acquire secondary or
good specific meaning of a particular manufacturer. If it happens then such marks may be
registered as trademark.
In English case, Cycling IS…TM Applications25
the Court laid down the test to determine
the distinctiveness on the basis of use by holding that
“Right view to take of a particular sign may well depend upon the use (if any) that has been
made of it and more generally upon the usage of persons involved in the relevant field(s) of
commercial activity.”
Other Relevant English cases on this point are given as under:
Merz & Krell GmbH & Co. (2001) ETMR. 105.
Windsurfing Chiemsee Produktions und Vertriebs v Boots-und Segelzubehor Walter Huber
and Granz Attenberger (2000) Ch. 523
LLOYDS SCHUHFABRIK Meyer & Co. GmbH Handel BV (2000) FSR 77.
Philips Electronics v Remington [1999] RPC 809
British Sugar Plc v James Robertson & Sons Ltd. [1996] RPC 281.
Bach and Bach Flower Remedies Trade Marks [2000] RPC 513.
Marks deceiving the public or cause confusion: Section 9 (2)(a)
Section 9 (2) (a) seeks to prevent the registration of marks, which are of such nature as
likely to deceive the public or cause confusion.
Generally deception or confusion might arise by reason of similarity between the proposed
mark and another existing mark or might result from the nature of the mark itself or nature
of the use of the mark.26
For example, Deception in the nature of the Mark may be in the
form of misrepresentation as to the characteristics of the goods or services or to the effect
24
AIR 1980 Del 180 (DB)
25
(2002) RPC. 37, 729
26

13
that they were made in a specified geographical region or place, when in fact not so made.
Deceptive use may involve where mark contains false or misleading information. E.g. use
of word Regd. when the mark is actually not registered.
Section 9(2)(a) is intended to apply where the deception or confusion arises from the nature
of the mark itself27
and not to the questions based upon the similarity of the mark with
other existing mark which is a ground of refusal under section 11 which deals with relative
grounds of refusal for registration. Hence, a mark not deceptive or confusing may qualify
for registration even if the mark has resemblance or identity with other mark but is distinct.
Section 9 (2) (b) forbids registration if the mark contains or comprises of any matter likely
to hurt the religious susceptibilities of any class or section of the citizens of India. But this
does not forbid the use of name or pictures of God or Goddess or religious heads as
trademarks that are not offending. Examples of offending use may be use of Hindu Gods in
respect of beef or meat or Muslim Saints for port products etc. however, the perception and
the practice is that usually symbols relating to religion, gods or goddesses, place of worship
should not be registered even if it is not hurting but because these are part common heritage
and should not allow any monoplization.
Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene. Whether
the mark is scandalous or obscene or not depends upon the current religious, social and
family values.
In addition to all these ground for refusal of registration of a mark under section 9(3) on the
ground of shape will not be entertained for registration. The shape of the goods resulting
from its nature28
or giving substantial value to goods or shape of goods necessary to obtain
technical results29
would disqualify the mark for registration. Whereas the definition of the
mark itself provides that mark includes shape of goods or packaging. However generally
the shapes would not be allowed registration unless it is shown that the shape is distinctive
of the goods or services.
Relative Grounds for Refusal of Registration under Section 11
While Section 9 provides for absolute grounds for refusal of an application for registration
of trademark, section 11 provides for relative grounds for refusal to register any trademark.
Subsection (1) of section 11 provides that a mark shall be refused registration if it is
identical with an earlier trademark covering similar goods or services as are covered by
earlier trademark. Also refusal can come if the mark is similar to the earlier trademark
covering identical goods or services as are covered by the earlier mark. The register is
under obligation to refuse the registration on the ground of ‘likelihood of confusion’ on the
part of the public. Earlier trademark need not necessarily be registered. If the trademark is
27
This is in consonance with the heading of section entitling “absolute grounds for refusal”.
28
Philips Electronics v Remington [1999] RPC 809
29
Philips Electronics v Remington [1999] RPC 80; Triomede (PTY) Ltd. v Beecham Group PLC FSR [2001]
583.

14
having earlier priority date or is entitled to protection by virtue of being well-known
trademark, it would sufficiently be an earlier mark for the purposes of this section.
So the Registrar before refusing the register a mark that has come up for registration has to
function at three levels. One, he must find out the identity or similarity of mark. Two he
must look for identity or similarity of goods or services to which the mark is going to be
applied. And three, he must check out whether there is any likelihood of confusion on the
part of the public.
Identity or Similarity of Marks
Test for determining Identity or similarity of Marks
For determining the identity or similarity, the rules of comparison are developed over the
years and which J. Parkar aptly explains in Pianotist Company Ltd.’s Application30
case.
According to him one must judge the two marks both by the look and by the sound;
consider the goods to which the mark is to going to be applied; consider the nature and kind
of customers who are likely to buy the goods; consider as to what would happen if both the
marks are used in the normal way as a trademark for goods of the respective owners of the
mark. After considering all these circumstances, if one comes to the conclusion that there
will be confusion, registration must be refused.
While comparing, one must not take a part of the word rather consider the whole and
compare it. Supreme Court31
while recognizing it further observed that the approach to
comparison should be from the point of view of a man of average intelligence and of
imperfect recollection. Whether to such a man, the overall structure and phonetic similarity
or similarity of the idea in the two marks is reasonably likely to cause a confusion between
them, is the test.32
Search Procedure
To determine the identity or similarity with the earlier mark, the Registrar needs to go
through the search procedure before registration. Search is confined to a particular class
in which registration is applied for. However, search should be carried on amongst the
marks not only for identical goods but also for similar goods.
[Schedule IV to the Trade Marks Rules provides for classification of the goods and services
in 45 classes – goods being classified in classes 1 to 34 and services included in classes 35
to 45. For international classification of goods and services published by WIPO, one can
visit www.wipo.org earlier trademark is one that is already registered or subject of a
convention application33
of an earlier priority date or is one which is entitled to protection
as a well known trade mark.
30
(1906) 23 R.P.C. 774
31
In Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142. Also refer to Amritdhara Pharmacy v
Satya Deo Gupta AIR 1963 SC 449; Torrent Pharmaceuticals v Wellcome Foundation Ltd. 2001 (2) CTMR
158.
32
Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142
33
India being member of Paris Convention for protection of industrial property is bound to accord priority
date under section 154.

15
Identity or similarity of goods or services
To determine the identity or similarity, the Registrar needs to go through the search
process before registration. Search is to be done in the specific classes of goods and
services in which the proposed mark falls is going to fall. However, search would include
not only amongst the identical goods but cover similar goods.
For this purpose, it is advisable that applicant should be precise in stating the specification
of goods or services for which the mark is sought to be registered. However, the
specification, if indefinite, may be a bar to the registration. If the applicant gives
unnecessarily wide specification, there are greater chances that he may found a prior
registration in same or similar mark in that class which may result in an objection to his
registration. Moreover, even registrar may object to wide specification of goods under rule
25(15) of Trademarks Rules.
One thing is to be made clear here that classification of goods and services is not the
criterion for determining whether two sets of goods or services are of the same description.
Indeed, goods comprised in same class may include goods of a different description and
different description of goods may fall in the same class. [Schedule IV to the Trade Marks
Rules provides for classification of the goods and services in 45 classes. For international
classification of goods and services published by WIPO, one can visit www.wipo.org
Likelihood of confusion [Section 11(1)]
Section 11(1) of the Trade Marks Act 1999 says that if because of the identity or similarity
of marks or goods or services, there exists a likelihood of confusion on the part of the
public, which includes the likelihood of association with the earlier trademark, the
mark shall not be registered save as otherwise provided in section 12.
Laying down the test in Amritdhara Pharmacy case34
the Supreme Court observed:
“for deceptive resemblance two important questions are: (1) who are the persons whom
the resemblance must be likely to deceive or confuse, an (2) what rules of comparison are
to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an
appropriate description of the state of mind of a customer who, on seeing a mark thinks
that it differs from the mark on goods, which he has previously bought, but is doubtful
whether that impression is not due to imperfect recollection… the question has to be
approached from the point of view of a man of average intelligence and imperfect
recollection.”
The risk of likelihood of confusion is considered as the most in cases where both the mark
and goods and services are identical of the existing mark and lesser where either of them is
identical. Whereas in the instance of similarity of mark and good or services risk is
considered lesser than in case of identical marks.
34
Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449.

16
The provision in section 11(1) is mandatory on the Registrar and therefore when this
section hits an application, the Registrar is bound to refuse registration. The issue under
this section can be raised by the Registrar, prior to acceptance of the application, and by
any person after the mark is advertised. In the absence of any attack on the registration fo
the earlier trademark, it is to be assumed that there has been notional use of the earlier
trademark. The reason for this is that unless one assumes notional use of the earlier
trademark, the question whether later on the trademark, proposed to be registered, will be
give rise to a likelihood of confusion on the part of the public will become difficult to
answer. At the same time, ordinary practical business probabilities having regard to
circumstances of the case should be considered rather than constructing imaginary and
unlikely cases.
In Dalip chand case35
an application to register Escorts for electric iron, etc was opposed by
Escorts Ltd. The Assistant Registrar dismissed the objections on the ground that applicant
had established prior use and honest concurrent use. On appeal, Delhi High Court set aside
the orders of the AR and held in this particular case that it should be considered whether
the mark has come to be known and associated with the name of the opponent, not
necessarily with the particular goods of the same description but generally with its goods.
In this case, it could be shown that the mark escorts has been quite extensively used in the
market by the respondent with the result that any goods which may be marketed under this
mark will be associated with the name of the respondent, so that people buying may feel
that it is product of the respondent. This is sufficient justification for refusing the
application of a similar trademark.
DECEPTIVELY SIMILAR
Section 2(h) of the Act defines mark, which can be called deceptively similar. According to
the definition, a mark shall be deemed to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to deceive or cause confusion.
The act does not lay down any criteria for determining what is likely to deceive or cause
confusion. So every case of deceptive similarity depends upon the facts and circumstances
of each case after applying the test, which has been laid down by judiciary through cases.
In H. C. Dixon36
, the Court held that likely to deceive is a question largely one of first
impression and not necessary to prove the intention to deceive. It is sufficient if the
ordinary user entertains a reasonable doubt37
as to the source of the product. It is the likely
hood of deception and not the actual deception, which is the deciding factor.
PASSING OFF
With the tremendous growth in trade and commerce, the competitors or other traders tend
to imitate the well known or reputed trademarks by imitating colour scheme or get up or
packaging with a view to pass off such goods as goods of the genuine owner. In cases of
35
Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.
36
H. C Dixon & Sons Ltd. v Geo Richardson & Co. Ltd. 50 RPC 36, p. 374
37
Jellineck’s Appl., (1946) 63 RPC 59. P. 78

17
registered trademarks, the owner can move the court under this Act for the infringement
whereas in cases of the unregistered trademarks, the Act recognizes the Common Law
remedy of passing off. The tort of passing off is based upon the principle that “no man is
entitled to represent his goods as being the goods of another man; and no man is required to
use any mark, sign or symbol, device or means, whereby without making a direct
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
purchaser.”38
The purpose of this remedy is three fold39
:
(i) Protect the interest of the trademark owner in his advantageous relations he has
created in the market place
(ii) Protect the interest of the consumer or purchaser of goods against acts tending
to create false impressions and to deceive or confuse him by inducing the belief
that the business or products of one manufacturer or trader are those of another
(iii) Protect the social interest by promoting fair dealing in the market place and
prevent unethical and unfair practices in trade.
The plaintiff, in an action of passing off, has to establish that his business or goods has
acquired the reputation and that his mark has become distinctive of his goods among the
public at large. He has to establish that there is likely hood of deception or confusion int eh
minds of the public. He, however, does not have to establish the fraudulent intention on the
part of the defendant. Thirdly, he has to establish that confusion is likely to cause damage
or injury to the reputation, goodwill and fair name of the plaintiff. He need not prove the
actual loss or damage in an action of passing off.
The probability of deception is a question of fact, which depends upon a number of factors
as held by Supreme Court in Cadila Healthcare case40
:
(i) Nature of the mark
(ii) Degree of resemblances between the marks.
(iii) Nature of goods in respect of which they are used
(iv) Similarity in the nature, character and performance of the goods of the rival
traders.
(v) Class of purchasers, who are likely to buy the goods bearing the marks, their
education and intelligence and a degree of care they are likely to exercise.
(vi) Mode of purchasing
(vii) Any other surrounding circumstances which may be relevant.
Before that, Bombay High Court in Hiralal Prabhudas v Ganesh Trading Company41
laid
down various factors to be considered, some of which are as follows:
38
Singer Manufacturing Co. v Loog (1880) 18 Ch. D. 395, p. 412.
39
Stephen P. Ladas on Patents, Trade Marks & Related Rights (Vol II – 1975)
40
Cadila Healthcare Ltd. v Cadila Pharmaceutical Ltd. (2001) 5 SCC 73. Other important case is: Mahendra
and Mahendra Paper Mills Ltd. v Mahindra and Mahindra Ltd. AIR 2002 SC 117.
41
AIR 1984 Bom. 218

18
(i) Marks are remembered by general impressions or by some significant details
rather that by a photographic recollection of the whole. So over all similarity is
the touchstone.
(ii) Marks must be compared as a whole, microscopic examination being
impermissible
(iii) The broad and salient features must be considered for which the marks must not
be placed side by side to find out the difference in design.
(iv) Marks must be looked apart from the first impression of a person of average
intelligence and imperfect recollection
(v) Overall structure, phonetic similarity and similarity of idea are important and
both visual and phonetic tests must be applied.
In addition to the these factors, the nature of commodity, the class of purchasers, the mode
of purchase and surrounding circumstances must also be taken into consideration.
INFRINGEMENT UNDER THE ACT
The registration gives the proprietor exclusive right to use the trademark in relation to
goods or services in respect of which the registration is being made under section 28 of the
Act.42
This right of exclusive use shall be subject to conditions and limitations with which
the registration is made. A registered trademark is infringed when a person, not being a
registered proprietor or permitted user, uses in the course of trade, a mark, which is
identical with or deceptively similar to the registered trademark, in relation to goods or
services in respect of which the trademark is registered.43
Section 29 gives instances of
what shall constitute infringement. The gist of the offence of infringement is that the mark
is deceptively similar and is likely to cause confusion on the part of the public.
In cases of infringement, the plaintiff does not have to prove that he is the user. Mere
registration on his part is enough to give him the right to sue unlike in cases of passing off
wherein the plaintiff has to prove that he is user of the mark, which has become distinctive
of his product.
In cases of infringement, there may be instances whereby the defendant does not use the
exact mark but the get up is similar that he is likely to be deceived, such circumstances
would warrant for an injunction is a recognized way back in 1970 by the Supreme Court in
Ruston case.44
In TorrentPharmaceuticals45
the Court held that the test to determine the
two mark identical or resemble each other or is likely to deceive or cause confusion is the
test of an average person with imperfect recollection.
In Dyechem Ltd.46
case the Supreme Court traced the legal principles applicable to cases of
infringement with reference to the dissimilarities in essential feature of a mark.47
The Apex
42
Important case on this point is Revlon Inc. and another v Hosiden Laboratories (India) and others 2001
PTC 595.
43
Section 29.
44
Ruston & Hornby Ltd. Zamindara Engineering Co. Ltd. AIR 1970 SC 1649
45
Torrent Pharmaceuticals Ltd. v The Wellcome Foundation Ltd. (guj) 2001 (2) CTMR 158.
46
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573

19
Court observed that the question of resemblance of two marks could be determined by
considering the leading characters of each. Yet the sameness of most leading elements in
each may give very different impression. On the other hand, critical comparison of the two
marks might disclose numerous points of difference and yet the impression which would
remain with any person seeing them apart at different time might be the same. Thus it is
clear that a mark is infringed if the essential features or essential particulars of it are copied.
It is more so, when any distinctive arrangement or unusual features of the common
elements are copied.48
The apex court further recognized that under other laws, emphasis is
laid on the common features rather than on essential features and held that “where common
marks are included in the rival trade marks, more regard is to be paid to the parts not
common and the proper course is to look at the marks as a whole but at the same time not
to disregard the parts, which are common.”
Thus the Supreme Court lays down three-prong test to determine the infringement:
(i) Is there any special aspect of the common feature, which has been copied?
(ii) Mode in which parts are put together differently, i.e. whether dissimilarities are
sufficient to make the mark dissimilar?
(iii) Paying more regard to the parts which are not common while at the same time
not disregarding the common parts.
Relying upon the Dyechem case, Delhi High Court held in Peshawar Soap case49
that for
determining the comparative strength of infringement in favour of plaintiff, regard must be
had to the essential features. Ascertainment of essential features is not by ocular test alone
by excluding sound of words forming part of the whole mark. In cases of word mark,
resemblance is important, but in cases of devices and composite marks dissimilarity in
essential features is more important than similarity. The leading characters, both orally and
visually, in each as a whole would be the relevant indicia. In cases of similar marks, the
dissimilarities would be relevant to adjudge the impression left on the mind. The
ascertainment of distinctive arrangement of common elements is also relevant to determine
infringement. The Court further observed that defendant couldn’t take a plea that his mark
contains besides the plaintiff mark other matters also, though this is not an absolute
proposition.
WELL-KNOWN TRADEMARK
Article 6bis The Paris Convention provides for protection of well-known mark by
mandating the member countries to prohibit the use of a trademark, which constitutes a
reproduction, an imitation, or a translation liable to create confusion of a mark considered
by the competent authority of the country of registration or use to be well-known mark in
that country as being already the mark of a person entitled to the benefits of the convention.
Neither the Paris Convention nor TRIPS agreement contains any definition of well-known
mark, which is defined, for the first time, under Section 2 (1) (zg) of Indian Trade Marks
Act 1999. Section 2 (1) (zg) defines:
47
company, Nagpur) 2003 at 397.
48
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
49
Peshawar Soap & Chemicals Ltd. v Godrej Soap Ltd 2001 PTC 1 (Del.)

20
Well-known trademark in relation to any goods or services, means a mark which has
become so to the substantial segment of the public which uses such goods or receives such
services that the use of such mark in relation to other goods or services would be likely to
be taken as indicating a connection in the course of trade or rendering of services between
those goods or services and a person using the mark in relation to the first-mentioned goods
or services.
Section 11 (6) to (11) deals with the matters relating to Well-known trademark. Subsection
(6) lays down the list of factors to be taken into account by the Registrar while determining
Well-known trademark. It is mandatory for the registrar to look into these aspects, which
includes:
(i) Knowledge or recognition of that mark in the relevant section of public
including knowledge in India obtained as a result of promotion of the
trademark.
(ii) Duration, extent and geographical area of use of that mark
(iii) Duration, extent and geographical area of any promotion of the mark, including
advertising or publicity and presentation, at fair or exhibition.
(iv) Duration and geographical area of any registration of or any publication for
registration of that mark, to the extent they reflect the use or recognition of the
mark.
(v) Record of successful enforcement and the extent to which the mark has been
recognized as a Well-known trademark by any court or Registrar.
It must be mentioned here that these factors are only indicative and illustrative and by no
means exhaustive. Registrar is not precluded from taking into consideration other factor, if
found relevant. Also it is not necessary that all the criteria mentioned in the subsection (6)
must be complied with. However, it is mandatory for the Registrar to take into
consideration all these factors and cannot ignore any.
The protection afforded to a well-known trademark is on territorial basis. So the person
seeking protection and enforcement of well-known trademark has to adduce evidence
regarding duration, extent and geographical area of any use of the well-known trademark.
The kinds of evidence may include consumer surveys and opinion polls, promotion of the
mark through advertising in both print and electronic media etc.
However subsection (9) of section 11 forbids the Registrar to ask for the following as
condition precedent to determine a trademark as well-known trademark. Particularly that
the mark has been used or registered or filed for registration in India or outside India or that
the trademark is well-known to the public at large in India are specifically excluded from
consideration.
Subsection (7) of section 11 indicates the factors to be taken into account by the Registrar
while determining whether a trademark in known or recognized ‘in relevant section of the
public’. The inclusion of this phrase indicates that a mark to become a well-known
trademark requires the knowledge on the part of public of relevant section and not the
general public at large. The factors to be taken into account are as under:
(i) Number of actual or potential consumers of the goods or services.

21
(ii) Number of persons involved with the channels of distribution.
(iii) Business circles dealing with the goods or services to which that trademark
apply.
The number of actual or potential users may vary depending upon the nature of goods or
services. What the Registrar is supposed to do is not to count the numbers of person
physically but to take into account the concerned section of users of those goods or
services. As far as the distribution channels are concerned there has been sea change in the
tradition mode of distribution and supply. The recent growth of super malls has changed
the mode of distribution that must not be lost sight of. The third factor ‘business circles’
may include importers, wholesalers, franchisees and other dealers interested in dealing with
the goods or services to which the mark applies.
Sub-section (8) of section 11 says that the determination of trademark as well-known
trademark by any court or judicial authority amongst at least one relevant section of the
public in India shall be taken as well-known mark by Registrar.
Subsection (10) of section 11 casts an obligation on Registrar to protect well-known
trademark while considering the application for registration of any mark and its opposition
thereto. The protection to well known trademarks is afforded against the identical or similar
trademarks50
, which may come up for registration to the Registrar. The underlying
principle for according protection to well-known cases is to prevent traders taking free ride.
They may tend to take advantage of the good will of the well-known trademark without
doing efforts. Thus the Registrar is obliged to take into consideration ‘bad faith’51
while
balancing the interests of the parties (both applicant and opponent) involved in the
enforcement of the well-known trademark.
The term ‘bad faith’ is also read through implication under section 18(1) of the Act, which
provides that any person claiming to be the proprietor of a trademark used or proposed to
be used by him shall apply for the registration of his trademark in a prescribed form. Thus
there is an implication that he intends to use the mark in the manner applied for and which
is nothing but normal and fair use. If the applicant’s use or propose use of the mark in not
normal and fair that would bring upon him the charge that the mark proposed has been
applied for in ‘bad faith’
Act does not define the expression ‘bad faith’ and is left to the Registrar to decide in each
case based upon the facts and circumstances. ‘Bad faith’ as interpreted by the courts in
India connotes the breach of faith or willful failure to respond to one’s known obligations
or duty. It imports a dishonest purpose or some moral obliquity and implies conscious
doing of wrong.52
The allegation of ‘bad faith’ is a serious form of commercial fraud,
which should not be taken lightly.
50
Section 11(10)(i)
51
Section 11(10)(ii)
52
Bhupinder Singh v State of Rajasthan AIR 1968 Pun 406 at 411. Another case: Manish Vij v Indra Chugh
2002 (24) PTC 561. Also see: Growmax Plasticulture v Don & Low Nonwovens (1999) RPC 379.

22
Subsection (11) of section 11 forms the exception to the subsection (6) to 10 in the sense
that it protects the prior use or prior registration in good faith before the commencement of
the act, of an identical or similar trademark as against well-known trademark. To get the
benefit of this provision, one must show that the prior use or registration was in good faith.
Once this is proved, the right to use the mark cannot be taken away on the ground that the
mark is identical or similar to a well-known trademark.

23
TRADEMARKS ON THE INTERNET
We have so far been dealing with trademarks in the real world. Under this topic, we will go
through the equivalent of trademark in the cyberspace: domain name, its importance,
disputes relating to domain name and their resolution.
CONTENTS
1. 1. Introduction
2. 2. Domain Names
a. a. Internet Corporation for Assigned Names and Numbers
b. b. gTLD
c. c. ccTLD
d. d. Importance of Domain Names
e. e. Legal Status of Domain Names in India
f. f. Practical difficulties with traditional litigation
g. g. UDRP
h. h. Approved Providers for Domain Name Disputes
i. i. Statistics under WIPO-UDRP
j. j. Cases under WIPO-UDRP
k. k. Dispute Resolution of Indian ccTLDs
3. 3. Meta-tags
4. 4. Framing and Linking
INTRODUCTION
As the concept of global village is holding ground, and globalisation, liberalization and
privatization is finding its way in the minutest of the commercial activities in developed,
developing, and least developed countries, the importance of trademark is growing multi-
fold. One cannot deny the value, a businessman attaches to its trademark. People identify
the product of a particular manufacturer through its trademark. With the Internet being used
in a big way by the businessmen for not only advertising and promoting their products, but
also for selling them, the principles of trademark, infringement of trademark and passing
off are being applied even in the online environment. There is an increasing awareness that
any kind of activity with the aid of technology which would made the consumer believe
that the goods and services being offered on the Internet might be coming from a particular

24
source and thus, induces the consumer to accept such goods and services, should be
discouraged. One of the primary areas is Domain Names which has been legal protection
equal to that of a trademark. Others areas we will be discussing is the effect of use of
somebody else’s trademarks/names in Meta-tags and whether that constitutes trademark
infringement. Lastly, we will touch upon the issues of Framing and Linking and their
impact on trademarks.
DOMAIN NAMES
With the advent and acceptance of Internet by people across the globe, the notion of
trademark took a new turn. 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 increased. People started identifying the domain name with its
owner. For example, if one is to access the website of TATA, one would, in a natural
process, presume the website to be www.tata.com or www.tata.org. This gave the website
address/domain name a further impetus and gave it an importance equivalent to that of a
trademark. Domain names no longer were considered to be merely a tool to gain access to
the website. Rather, they came to be used to identify the goods and services which a
particular company is offering, be it online or offline. If a company has acquired a
distinguishing mark (like TATA) with respect to a particular product, the company would
be entitled to acquire that domain name (www.tata.com or www.tata.org) as well. Domain
name has thus been given legal privileges of a trademark and anyone registering the
domain name is required to show good faith use.
Once hooked to the Internet, we would like to access certain websites. Each website is
nothing but a set of information, programes and webpages 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 www.google.co.in to get the same result. Much simpler!
Internet Corporation for Assigned Names and Numbers
The Internet Corporation for Assigned Names and Numbers (ICANN) is a technical
coordination body for the Internet. It was created in October 1998. it has responsibility for
Internet Protocol (IP) address space allocation, protocol identifier assignment, generic
(gTLD) and country code (ccTLD) Top-Level Domain name system management, and root
server system management functions. These services were originally performed under U.S.
Government contract by the Internet Assigned Numbers Authority (IANA) and other
entities.
ICANN is governed by an internationally diverse Board of Directors overseeing the policy
development process. ICANN's President directs an international staff, working from three

25
continents, who ensure that ICANN meets its operational commitment to the Internet
community.
gTLD
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for
example: .com, .net and .org.
In addition to the above, seven new gTLDs were also selected by ICANN on November 16,
2000.
.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: before 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. (See .aero Domain
Management Policy for details)
.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 abide by the .coop Charter.
.info: It is an open gTLD without restrictions (anyone can register any domain name)
.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. <Smith.NAME> or
<John.Smith.NAME> or <Smith.John.NAME> or <J.Smith.NAME>. 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. See the Appendix of the .PRO Registry Agreement for details. Registration is
permitted on the third level only. The second level will indicate individual professions
(<smith.law.pro>, <smith.cpa.pro>, <smith.med.pro>). In an initial phase, domain name
can only be registered by lawyers (.law.pro), medical doctors (.med.pro) and chartered
accountants (.cpa.pro).
ICANN is currently exploring possibilities to add additional gTLDs. See a Report on
Review of new gTLDs and assess for yourself how advisable it is to have more gTLDs.

26
ccTLD
Two letter domains, such as .uk, .fr or .au (for example), are called country code top-level
domains (ccTLDs) and correspond to a country, territory, or other geographic location. The
rules and policies for registering ccTLDs vary significantly and a number of ccTLDs are
reserved for use by citizens of the corresponding country. A few of these ccTLDs were
established in the 1980s, but most of them created in the mid and later 1990s.
See policies governing the establishment, delegation and operation of ccTDLs.
The administration of a ccTLD is left to the specific country concerned. For example, the
Administration of Domain Names within the .in (Indian) ccTLD is looked after by the
NCST. The IANA provides for a Root-Zone Whois Information Index by TLD Code. This
Index enlists all the countries with this ccTLD which makes for an interesting reading.
With the gTLDs being over-used and short in supply, one is now turning to ccTLDs. There
are quite many instances where the ccTLDs are proving to be more apt to indicate more
meaningfully one’s business or profession. Take for example, .tv (of Tuvalu) which has
been high demand by television companies around the world. Another instance is .md (of
Republic of Moldova), a hot favourite for medical professionals. Other ccTLDs having
higher appealing value could be .mr (of Mauritania), .ms (of Montserrat), .my (of
Maldives), .tm (of Turkmenistan), .ac (of Ascension Island), .id (of Indonesia), im (of Isle
of Man), etc.
Indian (.in)
The Indian ccTLD is .in. Initially, the policy for registration in India was an extremely
restrictive on and allowed for a registration only if the application was a registered
commercial entity in India. Owing to demand from several quarters that the policy be
liberalized to incorporate the interests of trademark owners and foreign corporations, the
policy was liberalized.
Following are key points of the liberalized policy:
(a) New categories of the sub-domains such as gen.in, firm.in and ind.in have been added.
(b) For a foreign entity seeking to register a domain name in India ,the relevant sub-
domains would be co.in, gen.in and firm.in.
(c) The initial co.in requirement that one has to have a local presence in the form of a
branch/liaison office has, to a certain extent, been done away with.
(d) The gen.in category has been specifically added for foreign corporations who are
unable to meet the stringent requirements added for a co.in registration.
(e) The earlier requirement stipulating that the name-server should be physically present in
India and the domain name applicant should have permanent Internet connectivity through
an Internet Service Provider, located in India has been dispensed with.

27
For further details, visit http://domain.ncst.ernet.in.
Importance of Domain Names
The domain name gained importance over the years as business entities realized that
Internet could be a convenient mode for not only imparting information but also using it for
gaining access to a world-wide market and selling its products. Naturally, a company
would prefer its own trade mark to be used as domain name since people recognize the
trade mark. So a newspaper like The Economic Times would prefer
www.theeconomictimes.com for the purpose of putting its daily version online so that
everyone around the world could read it. On the other hand, even the readers would expect
that www.theeconomictimes.com would contain the online version of the daily, The
Economic Times rather than, maybe, contain a cartoon feature by some unknown
individual or worse, some pornographic material.
The Supreme Court, recently in Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd.,
observed as under:
“The original role of a domain name was no doubt to provide an address
for computers on the Internet. But the Internet has developed from a mere
means of communication to a mode of carrying on commercial activity.
With the increase of commercial activity on the Internet, a domain name is
also used as a business identifier. Therefore, the domain name not only
serves as an address for Internet communication but also identifies the
specific Internet site. In the commercial field, each domain-name owner
provides information/services which are associated with such domain
name.”
It was further observed that “a domain name as an address must, of necessity, be peculiar
and unique and where a domain name is used in connected with a business, the value of
maintaining an exclusive identify becomes critical”. Therefore, the importance of a domain
name is no less than the trademark itself. If a particular trade name has come to be known
in the market to represent a particular commodity or a particular company, the general
guess of people online would be that the domain name equivalent to such trade name would
be used by the such company. The domain name in the online world, just like the trade
name in the offline world, serves to identify the goods/services provided by the company.
However, there is one big problem. The process of registration of a domain name is not as
stringent as that of registration of a trademark. The system is based primarily on first-come-
first-serve basis. Anyone can approach a Domain Name Registrar and register any available
domain name. The Delhi High Court in Acqua Minerals Limited v. Pramod Borse (infra)
observed as under:
“So far as the Registering Authority of the domain name is concerned it
agrees for registration of domain name only to one person. That is on first
come first serve basis. If any person gets the domain name registered with

28
the Registering Authority which happens to be trade name of some other
person, the Registering Authority has no mechanism to inquire into it to
decide whether the domain name sought to be registered in is in prior
existence and belongs to another person.”
So, a person just might approach the Registrar and register www.mahindra.com though he
does not have the remotest connection with famous Mahindra & Mahindra in Mumbai.
Naturally, for Mahindra & Mahindra, it might be wrong for anyone to register
www.mahindra.com. After all, ‘Mahindra’ is quite a popular trade mark for its products. It
was soon realized that such domain names have been registered by unauthorized persons,
not only for the purpose of taking advantage of the goodwill created by the trade mark
owners but also, and most of times, for receiving certain financial gain in exchange of the
domain name.
Check www.greatdomains.com for an interesting value-analysis of various domain names.
It is also important to realize that in the online world, there can be only one domain name
as opposed to the possibility of two or more trademarks co-existing in different working
spheres. For example, might be selling garments under the mark ‘Roughins’ in India and
somebody else might be selling the same product under the same mark maybe in New
Zealand. One can even have ‘Roughins’ registered as trade marks in different countries
without affecting the other registrations. Leaving apart legal objections, this arrangement is
perfectly possible in the physical world. However, the online world does not permit of such
technological arrangement. If one person owns www.roughins.com, registration of the
same domain name by another person is not permissible. One might register
www.roughins.net or www.roughins.org or www.roughins.biz but cannot register
www.roughins.com. In such a situation, one might conclude that the domain names have a
higher degree of importance than the trade mark. Even though one might be using the trade
mark ‘Roughins’ somewhere else in the world but it is not affecting one’s business in India,
not much damage is done. But domain name is single. If one registers, another cannot. This
predicament has lead the trade mark owners to protect their marks online by registering
their domain names. Adding to this problem is the tendency of net surfers to hunt for a
particular company’s website by its trademark itself.
Another indicator of importance of domain names is the availability of a number of popular
domain names in many of the auction/sale web sites. One might register a trade mark as a
domain name, and then put it up for auction or sale. See for instance http://www.david-
carter.com/bid-for.htm, http://www.100domains.com/, http://www.fastdomainsales.com.

29
Legal Status of Domain Names in India
The journey of legal protection of domain names in India has been more or less a
favourable one. The Courts in India have been more patient towards the concept of
permitting legal protection to domain names on a status more or less equal to that of a
trademark. There has been a widespread of realization of importance of legal protection of
domain names among the Indian legal circles right from its very inception and the Courts
have adopted a more progressive interpretation. There have been disputes between
trademark holders and domain-name owners or between domain-name owners themselves.
The Courts have uniformly applied the law of passing off to such domain name disputes.
Let us look at a few decisions to appreciate this point.
(A) Yahoo Inc. v. Akash Arora, (1999) 19 PTC 201 (Del)
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.COMwhich are well-known and have acquired 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
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.
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 plaintiff’s favour with Network
Solution Inc since 18 Jan 1995. It also came on record that the trademark ‘Yahoo!’ and its
variance are registered or pending registration in 69 countries across the globe, India being
one of them.
After appreciation of evidence on record and 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

30
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 (42 USPQD 2d 1850 relating to cardservice.com) and Marks &
Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), the Court
held that although the word ‘services’ may not find 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 in believing that both the domain names belong to one common
source and connection, although the two belong to two difference 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 website
providing for similar information thereby creating confusion.
(d) The ‘disclaimer’ contention was rejected on the ground that the defendant’s
appropriation of plaintiff’s 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 maximum degree of protection by courts.
Ad-interim injunction retraining the defendant from using the domain name
‘YAHOOINDIA.COM’ till the disposal of the suit was granted.
(B) Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27
The plaintiffs had registered the domain name ‘REDIFF.COM’ on 8 Feb 1997 with
Network Solutions Inc. They are an online media company carrying on the business of
communication and providing services through the Internet. It came to their knowledge in
March 1999 that the defendant had registered the domain name ‘RADIFF.COM’. An action
for passing off was filed.
The plaintiffs contended that RADIFF is deceptively similar to REDIFF and is being used
by the defendants with a view to pass of their business services as that of the plaintiffs and
to induce members of the public into believing that the defendants are associated with the
plaintiffs. It was also averred that REDIFF is comprised of the first six letters of their group
companies corporate names being Rediffusion Dentsu Young and Rubicam Advertising
Limited.

31
The defendants contested the plaintiff’s action on the ground that the ‘look and feel’ of the
plaintiff’s website is totally different from that of the defendant’s website. RADIFF has
been coined by taking the first three letters of the word ‘radical’, first letter of the word
‘information’, first letter of the word ‘future’ and first letter of the word ‘free’. It was also
contended that there is no likelihood of deception or confusion between the two domain
names.
The Court, after referring to Cardservice International Inc v. McGee (42 USPQD 2d 1850
relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265
relating to marksandspencer.co.uk), Yahoo, Inc. v. Akash Arora (1999 PTC (19) 201
relating to Yahooindia.com) observed that a domain name is more than an Internet address
and is entitled to equal protection as trade mark.
The Court found that both the plaintiffs and the defendant have common field of activity.
They are operating on the website and providing information of similar nature. When both
domain names are considered, it is clearly seen that two names being almost similar in
nature there is every possibility of Internet user being confused and deceived in believing
that both domain names belong to one common source and connection although two belong
to different persons.
The explanation of origin of the word ‘RADIFF’ given by the defendants was found to be
unsatisfactory and merely an attempt to answer the plaintiff’s claim. The Court held that
the defendants had adopted the domain name ‘RADIFF’ with the intention to trade on the
plaintiff’s reputation.
Interlocutory injunction was thus granted.
(C) Acqua Minerals Ltd. v. Pramod Borse, 2001 PTC 619 (Del)
This was suit seeking a decree for permanent injunction restraining the defendants from
using the mark BISLERI and directing them to transfer the domain name BISLERI.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 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 plaintiff’s 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’.
The question which arose for consideration was whether the domain name registred with
the Network Solutions, Inc. i.e., the Registering Authority has the same protection as the
trade name or trade mark registered under the Trade and Merchandise Marks Act, 1958.

32
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,
info@cyberworld.com. 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 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 ground of bad faith registration.
(D) Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri, 2001 PTC 859 (Del)
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 of drreddyslab.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 plaintiff’s 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 plaintiff’s company
business, goodwill and reputation by the operation of a website under the impugned

33
domain name by them is enormous and is aimed at diverting the business of plaintiff
company and to earn easy, illegal and undeserved profit.
The defendants had chosen not to appear and contest.
On the basis of the available materials on record, the Court, after looking into well-settled
legal proposition of passing off, and after observing that domain name serves same
function as a trademark, held that the two names, DR. REDDY’S and
DRREDDYSLAB.COM being almost identical or similar in nature and there is every
possibility of an Internet user being confused and deceived in believing that both the
domain names belong to plaintiff although the two domain names belong to two different
concerns.
Order restraining the defendants from using any mark/domain name identical or
deceptively similar to plaintiff’s trademark DR.REDDY’S was passed.
(E) Info Edge (India) (P) Ltd. v. Shailesh Gupta, (2001) 24 PTC 355 (Del)
This case was only on an application for an order of injunction under Order 39 Rules 1 & 2
of the Code of Civil Procedure.
Plaintiff adopted the domain name ‘NAUKRI.COM’ ON 27 Mar 1997. It was contended
that the domain name has assumed distinctiveness as the plaintiff has chosen a Hindi word
and use the same in the English script as early as in March 1997 in the Internet world,
which is dominated by the English domain names. According to the plaintiff, the word
NAUKRI has attained a secondary in connection with its services.
The defendant, on the other hand, was offering similar services through
jobsourceindia.com. However, it also registered NAUKARI.COM in 1999 and used as a
hyperlink to jobsourceindia.com Therefore, anyone who types NAUKARI.com would be
lead to jobsoureindia.com. The plaintiff alleged that NAUKARI.COM was registered in
bad faith and to attract web-surfers and innocent users for diverting the traffic to
jobsourceindia.com
In nutshell, plaintiff alleged that: (a) there was passing off of services and goods; (b)
defendant’s domain name was deceptively similar to the plaintiff’s; (c) there is grave and
immense possibility of confusion and deception; (d) defendant’s dishonesty is clear since
jobsourceindia.com and NAUKARI.COM was registered two years after the plaintiff
registered NAUKRI.COM.
The main line of defence for the defendant was that NAUKRI.COM is generic and hence,
incapable of achieving the trademark significance or secondary meaning. It was further
contended that in case NAUKRI.COM has attained secondary meaning, same has to be
proved.

34
The Court, after relying on, Yahoo, Inc., Rediff Communication, Acqua Mineral and Dr.
Reddy’s Laboratories reiterated that a domain name is more than an Internet address and is
entitled to be equal protection as that of trademark. The Court also observed that in a matter
where services rendered through the domain name in the Internet, a very alert vigil is
necessary and a strict view is to be taken for its easy access and reach by anyone from any
corner of the globe.
After considering the material and evidence on record, the Court held that a distinctiveness
can be attributed to the domain name of the plaintiff. On this finding, the Court rejected the
defendant’s contention that the NAUKRI.COM is a generic and/or descriptive word and
hence, incapable of any trademark protection.
The Court also observed that the defendant has employed minor mis-spelling of the
plaintiff’s mark, although it has another such mark available to it, which is also a registered
domain name. The defendant’s choice of slightly mis-spelt version of the plaintiff’s
domain name was deliberate in order to suit the business activities of the defendant and for
the purpose of diverting traffic of the Internet users to website unrelated to the plaintiff.
(This kind to activity is known as ‘typo-squatting’. See, for example, the case of
Yahoo.com under ‘Cases under WIPO-UDRP’ infra)
The Court also referred to Paragraph 4(b)(iv) of the UDRP to appreciate the argument of
‘bad faith’. It held that the website using the domain name, similar to that of the plaintiff,
for commercial purposes, would lead to an inference that the domain name was chosen
intentionally to attract Internet users of the plaintiff. This was also established in view of
the minor spelling variant to the a well-known mark, without any explanation and the same
definitely creates a prima facie evidence of bad faith within the meaning of Paragraph
4(b)(iv) of UDRP.
A case of temporary injunction was made out and the Court restrained the defendant from
using NAUKARI.COM till the disposal of the suit.
(D) Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432 (Del)
This case involved the following domain names: jrdtata.com, ratantata.com,
tatahoneywell.com, tatayodagawa.com, tatateleservices.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 was 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 plaintiff’s 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

35
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.
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 Rediff 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 is 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.
(G) Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145
This case is the first one from the Apex Court dealing with legal protection of domain
names and has given seal to the law laid down by the High Courts that the domain names
are entitled to legal protection equal to that of a trademark.
The main question for the consideration of the Supreme Court was whether Internet domain
names are subject to the legal norms application to other intellectual properties such as
trademarks.
The appellant, which was incorporated in 1995, registered several domain names like
www.sifynet.com, www.sifymall.com, www.sifyrealestate.com, etc. in June 1999 with
ICANN. The word ‘Sify’ is a coined word which the appellant claimed to have invented by
using elements of its corporate name, Satyam Infoway.
The respondent, on the other hand, started carrying on business of Internet marketing under
the domain names www.siffynet.net and www.siffynet.com from June 2001.
After the respondent to refused to transfer the above domain names to the petitioner, a suit
was filed on the basis that the respondent was passing off its business and services by using
the appellant’s business name and domain name. An application for temporary injunction
was also filed which was allowed by the trial court but on appeal reversed by the High
Court. The plaintiff/appellant preferred a special leave to appeal before the Supreme Court.
Leave was granted.
The respondent contended before the Supreme Court that a domain name could not be
confused with ‘property names’ such as trademarks. According to him, a domain name is
merely an address on the Internet. It was also submitted that registration of a domain name

36
with ICANN does not confer any intellectual property right; that it was a contract with a
registration authority allowing communication to reach the owner’s computer via Internet
links and channeled through the registration authority’s server and that it was akin to
registration of a company name which is a unique identifier of a company but of itself
confers no intellectual property rights.
After reiterating the principles of passing off, the Supreme Court observed as under:
“The use of the same or similar domain name may lead to a diversion of
users which would result from such users mistakenly accessing one domain
name instead of another. This may occur in e-commerce with its rapid
progress and instant (and theoretically limitless) accessibility to users and
potential customers and particularly so in areas of specific overlap. Ordinary
consumers/users seeking to locate the functions available under one domain
name may be confused if they accidentally arrived at a different but similar
website which offers no such services. Such users could well conclude that
the first domain-name owner has misrepresented it goods or services
through its promotional activities and the first domain-owner would thereby
lose its custom. It is apparent, therefore, that a domain name may have all
the characteristics of a trademark and could found an action for passing
off.”
In view of the decisions of various High Courts, it was held that the domain names are
entitled to legal protection equal to that of a trademark.
The Court also discussed at some length the provisions of UDRP relating to resolution of
domain name disputes. It was held that 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.
After looking into the evidence, the Supreme Court reached a prima facie conclusion that
the appellant had been able to establish the goodwill and reputation claimed by it in
connection wit the trade name ‘Sify’. Apart from the close visual similarity between ‘Sify’
and ‘Siffy’, the Court held that there was phonetic similarity between the two names as
well. The addition of ‘net’ to ‘Siffy’ did not detract from this similarity.
The Court was not impressed with the argument was of the defendant that the word ‘Siffy’
has been derived from a combination of the first letter of the five promoters of the
respondent, namely, Saleem, Ibrahim, Fazal, Fareed and Yusuf. It was found that the
domain name of the respondent already stood registered as in the name of one Mr.
C.V.Kumar. Further, ‘Siffy’ as an original acronym was based on the initial letters of the
respondent company’s promoters seemed unsupported by any evidence.

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