Satyam Infoway Ltd. alleged that Sifynet Solutions Pvt. Ltd. was attempting to pass off its services as Satyam's by using a confusingly similar domain name. Satyam had registered domain names containing "Sify" in 1999, claiming it was derived from its name. Sifynet Solutions registered domains containing "Siffy" in 2001. Satyam argued this would cause confusion and violate trademark law. Sifynet Solutions denied the allegations. The court was asked to apply trademark law to disputes over domain names.

1. RADICO KHAITAN LTD VS CARLSBERG INDIA PVT LTD
3/16/2013
AND
Indian Institute of Management Raipur
SATYAM INFOWAY LTD. VS SIFYNET SOLUTIONS PVT. LTD
1 12PGP059 – Aditi Chauhan
12PGP075 – Kaveri Sapra
12PGP097 – Soumya Ch
12PGP104 – Vikas P Singh

2. THE TRADEMARK ACT 1999
3/16/2013
 Trademark Act, 1999 is an Act to amend and
consolidate the law relating to trade marks, to
Indian Institute of Management Raipur
provide for registration and better protection of
trade marks for goods and services and for the
prevention of the use of fraudulent marks.
 Definition of Trademark includes:
 Shape of the goods
 Packaging of the goods
 The combination of colors
2

3. INTRODUCTION
3/16/2013
 Sections used in the analysis of the case:
 Section 15 of the Trademarks Act 1999.
Indian Institute of Management Raipur
 Registration of parts of trademarks and of trademarks as a series
 Section 17 of the Trademarks Act 1999.
 Effect of registration of parts of a mark
 Section 30 of the Trademarks Act 1999.
 Infringement of Registered Trademarks
 Section 134 of the Trademarks Act 1999.
 Limits on effect of registered trade mark
3

4. CASE SUMMARY
3/16/2013
 Radico Khaitan Limited
Indian Institute of Management Raipur
 Carlsberg India Private Limited
 Issue
4

5. ARGUMENT BY PLAINTIFF- RADICO KHAITAN
LIMITED
3/16/2013
 Trade Mark Infringement
Indian Institute of Management Raipur
 Passing Off
5

6. ARGUMENTS BY DEFENDANT – CARLSBERG
INDIA PVT. LTD
3/16/2013
 Non exclusiveness in the registered Trademark
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 Cardinal Number-Not a valid Infringement.
 Distinct goods – Thus Trademark infringement is
not valid.
 No separate registration for numeral “8”.
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7. JUDGMENT- ORDER OF SINGLE JUDGE
BENCH
3/16/2013
 Ascertained that numeral 8 does not give right to
Radico to claim exclusive use for the same.
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 Granted Carlsberg to use “PALONE” with numeral 8
in different font and color.
 Has given time for Carlsberg to change its
packaging style.
Reason: To avoid slightest chances of
misrepresentation.
7

8. QUESTIONS IN FRONT OF DIVISION BENCH OF
DELHI HIGH COURT
3/16/2013
 Can a single numeral be used as a trademark?
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 To what extent did Carlsberg try to copy the “Look
and Feel” of the numeral 8?
 Did Radico made any specific claims on color and
font for “8” within “8PM” while registering for the
trademark.
8

9. JUDGMENT- ORDER OF DIVISION BENCH OF
DELHI HIGH COURT
3/16/2013
 Section 30 of the Trademarks Act 1999
Indian Institute of Management Raipur
 Numerical 8 does not give sufficient grounds for Radico
to claim injunction.
 Quoted Example: Colgate Palmolive vs Patel (2005
(31) PTC 583 (Del))
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10. JUDGMENT- ORDER OF DIVISION BENCH OF
DELHI HIGH COURT
3/16/2013
 Section 15 of the Trademarks Act 1999
Indian Institute of Management Raipur
 Radico has registered for a composite trademark for
“8PM”
 No individual trademark neither for the font nor for the
color of numeral “8”.
 “8PM” text by Radico had been registered as a
word mark but not a label mark.
10

11. JUDGMENT- ORDER OF DIVISION BENCH OF
DELHI HIGH COURT
3/16/2013
 Section 17 of the Trademarks Act 1999
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 A composite mark cannot seek exclusivity with respect to
individual components of trademark.
 Section 134 of the Trademarks Act 1999
 No likelihood of any consumer confusion to Radico by
the slogan “8 KA DUM”.
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12. REFERENCES
3/16/2013
 Trademarks Act 1999
 http://www.nishithdesai.com/New_Hotline/IPLit/IP%20LIT%20HOTLINE_Jan0212.htm
 http://indiankanoon.org/doc/49386818/
Indian Institute of Management Raipur
 http://indiacode.nic.in/fullact1.asp?tfnm=199947
12

13. 3/16/2013
Indian Institute of Management Raipur
CASE 2
SATYAM INFOWAY LTD. VS SIFYNET
SOLUTIONS PVT. LTD.
13

14. PARTIES TO THE LAW SUIT
Satyam Infoway Ltd.
3/16/2013
 It is an Indian broadband internet provider established
in 1998, based in Chennai.
Indian Institute of Management Raipur
 it has 840 cyber cafes, 5 lakh subscribers and 54 units
present all over India.
 Claims to be the first Indian internet company to be
listed on NASDAQ stock exchange in 1999
Sifynet Solutions Pvt. Ltd.
In 1999,had a customer base of about 50,000 14
members for the business.

15. LAWS COVERED
3/16/2013
• India’s Trade Marks Act (1999) section 2(zb)
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" trade mark" means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person
from those of others and may include shape of
goods, their packaging and combination of colours;
• Trade Marks Rules, 2002
15

16. FACTS OF THE CASE
 Satyam Infoway alleged that Sifynet Solutions was
3/16/2013
attempting to pass off its services as those belonging to
Satyam Infoway by using a deceptively similar word as
Indian Institute of Management Raipur
part of its domain name.
 Satyam Infoway Ltd., alleged that Sifynet Solutions Pvt.
Ltd., had intentionally registered and operated a domain
name that was confusingly similar to one owned by
Satyam Infoway.
 Satyam Infoway claimed that it had in 1999, registered
several domain names pertaining to its business:
16
sifynet.com, sifymall.com, sifyrealestate.com, with the
ICANN and the WIPO.

17.  It submitted that the word "Sify" – was an amalgam
of elements of its corporate name "Satyam Infoway“.
3/16/2013
 Meanwhile, Sifynet Solutions had started using the
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word "Siffy" as part of the domain names under
which it carried on internet marketing (namely
siffynet.com and siffynet.net), claiming to have
registered them with ICANN in 2001.
 Members of the Internet community asked the courts
to apply trade mark law as an effective avenue of
redress for their disputes.
17

18. CLAIMS OF BOTH PARTIES
3/16/2013
Satyam’s Claim
Indian Institute of Management Raipur
 Sifynet Solutions was attempting to pass off its services as
those belonging to Satyam Infoway by using a deceptively
similar word as part of its domain name.
 Satyam Infoway claimed that this would cause confusion
in the minds of the relevant consumers
18

19. SIFFYNET’S CLAIM
3/16/2013
 Sifynet Solutions contended that unlike a trade mark, the
registration of a domain name did not confer an
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intellectual property right in the name.
 It averred that a domain name is merely an address on
the computer
 Confers no comparable property rights in the same.
19

20. ORDER OF THE SINGLE JUDGE BENCH
3/16/2013
 The city civil court, Bangalore, ruled in favour of Satyam
Infoway
Indian Institute of Management Raipur
 It granted a temporary injunction against Sifynet
Solutions.
 It accepted the fact that Satyam Infoway is the prior user
of the word “sify” and it has gained goodwill
20

21. 3/16/2013
 Moreover, it stated that Sifynet’s domain name is
confusingly similar to Satyam’s and would create a
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confusion regarding the ownership of the services
21

22. DECISION OF BENCH OF HIGH COURT
3/16/2013
 Sifynet Solutions appealed to the Karnataka High
Court.
Indian Institute of Management Raipur
 The High Court based its decision on a
consideration of where the balance of
convenience lay.
 Balance of Convenience:
An objective test applied by the courts to each
party's circumstances to establish who is more
inconvenienced with having to travel to court.
22

23. 3/16/2013
 The High Court stated that Sifynet Solutions had
already invested heavily in securing a customer
Indian Institute of Management Raipur
base for the business
 It would consequently suffer immense hardship and
irreparable injury if the court found in Satyam
Infoway's favour.
 It noted that the business that the two parties were
involved in were disparate
23

24. 3/16/2013
 Since Satyam Infoway also had that name to use
in trade, the High Court believed that it would not
Indian Institute of Management Raipur
cause them considerable hardship to deny the
temporary injunction.
24

25. SUPREME COURT JUDGEMENT
3/16/2013
Bench: Ruma Pal, P V Reddi
Indian Institute of Management Raipur
 The Supreme Court overturned the judgement of
Karnataka High Court
 It declared that domain names are subject to the
regulatory framework that is applied to trade marks
(i.e. the Trade Marks Act, 1999).
 , taking cognizance of the fact that there was no law
that would directly relate to domain name but that
should not prevent protection of domain names 25
under the aegis of Trade Marks Act.

26.  The Supreme court compared domain name with
Trade Marks and felt that the domain name is
analogous to Trade Marks.
3/16/2013
 The court stated that the domain has evolved from
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a business address to a business identifier.
 It is not just a portal for web navigation but a
symbol, identifier and a distinguishing factor for the
goods and services of a business.
 This feature of domain names in the modern era
allows them to be likened to trademarks, and
concomitantly to be included within the purview of 26
the Trade Marks Act.

27. Passing Off
 The court delineated the elements of an action for
3/16/2013
passing off that satyam infoway would have to prove
in order to succeed.
Indian Institute of Management Raipur
 Satyam Infoway argued that it had 840 cyber
cafes, 5 lakh subscribers and 54 units present all
over India.
 They have spend huge amount of money towards
the getting listed to NASDAQ.
27

28. 3/16/2013
 Satyam Infoway had to establish that Sifynet
Solutions has misrepresenting the facts such that a
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confusion is created regarding the ownership of
services.
 It also had to establish if this confusion would lead
to a loss to Satyam Infoway and cause a
quantifiable injury to the consumers.
28

29. Domain Name and Trademark differentiation
 The court discussed the differences between a trade
3/16/2013
mark and a domain name.
Indian Institute of Management Raipur
 It stated that a clear differentiation is important to
determine the scope of protection under the present
laws
 The distinction lies in the manner in which the two
operate.
29

30.  a trade mark may have multiple registrations in many
countries throughout the world on the other hand a
3/16/2013
domain name is potentially accessible irrespective of
the geographical location of the consumers.
Indian Institute of Management Raipur
 A domain name would require worldwide exclusivity
but also that national laws might be inadequate to
effectively protect it.
 The court informed that the international
Registrars, i.e., WIPO and ICANN had provided a
modicum of effective protection to domain names.
30

31. Balance of Convenience
The Supreme Court did not agree with the High Court
3/16/2013
on the issue of where the balance of convenience lay.
Indian Institute of Management Raipur
The court states that there will be no irreparable injury
to Sifynet Solutions if it is prevented from using the
domain name in from here on.
It believed that Satyam Infoway had garnered
immense goodwill with respect to its business
31

32.  The Supreme Court also ruled that none of the two
partied could be conferred the right to use similar
domain names
3/16/2013
 based on evidence adduced during the proceedings
Indian Institute of Management Raipur
it was reasonable to conclude that dishonest
intentions were involved on part of Sifynet Solutions
to paas off its services as those of Satyam by using
the similar domain name.
32

33. REFERENCES
3/16/2013
 http://www.indiankanoon.org/doc/21075/
 http://www.nishithdesai.com/New_Hotline/IPLit/IP%
Indian Institute of Management Raipur
20LIT%20HOTLINE_Jan0212.htm
 http://www.digestiblelaw.com/blog.aspx?entry=416
 http://www.wipo.int/wipolex/en/details.jsp?id=2400
 http://www.indiankanoon.org/doc/1630167/
 http://articles.economictimes.indiatimes.com/2004-
06-06/news/27368514_1_domain-names-satyam-
infoway-satyam-first
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34. 3/16/2013 Indian Institute of Management Raipur
34
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