Trademarks & GIs

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TRADEMARKS& GEOGRAPHICAL INDICATIONS
S. No. Particulars Page Nos.
1. INTRODUCTION 1
2. REGISTRATION OF TRADEMARK 7
3. REGISTRABILITY OF TRADEMARK 12
4. ASSIGNMENT OF TRADEMARKS 20
5. DECEPTIVE SIMILARITY 25
6. PASSING OFF 26
7. INFRINGEMENT UNDER THE ACT 28
8. WELL-KNOWN TRADEMARK 30
9. CASE-LAWS ON TRADEMARKS 34
10. TRADEMARKS ON THE INTERNET 43
11. GEOGRAPHICAL INDICATIONS 82

2
INTRODUCTION
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
manufacture 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,
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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. Information the procedure and
the time required to acquire is not without expenditure. 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 ado. 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.
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 are 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 viewed that the unethical and
unfair to allow one to appropriate goods which a competitor has built up
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by quality control and advertising in a trade symbol. Trademark

infringement is regarded 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).
5
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 adversiting 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)
explain 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 protect 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.
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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.
Trademark Infringement as Unjust Enrichment

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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.
8
REGISTRATION OF TRADEMARK
PROCEDURE FOR REGISTRATION
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 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.
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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 it for some mala-fide intention, such as to block the mark, it
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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
1. 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. 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
2. Advertisement 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)
4
Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).
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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
3. 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.
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
12
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 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
4. Registration
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company, Nagpur) 2003 at 261.
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
13
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
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fee by the proprietor. Such restoration shall be for another ten years
period.
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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
12
Section 9(1)(a)
16
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
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
13
14
Section 9(1)(b)
15
Section 9(3)
16
Section 9(1)(c)
17
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
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
18
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 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
21
Section 9(3)
19
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.
22
Chef TM (1979) RPC 143.
23
Moneysworth Trade Mark (1976) RPC 317.
20
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 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
24
AIR 1980 Del 180 (DB)
25
(2002) RPC. 37, 729
21
“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 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.
26
22
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 pork 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 of common heritage
and should not be allowed 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
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.
23
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 registrar 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 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 to 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.
24
ASSIGNMENT OF REGISTERED TRADE MARKS
A registered trade mark is assignable and transmissible. The

proprietor of the registered trade mark has power to assign or transmit
the trade mark with or without the goodwill of the business concerned.
The assignment or transmission can be for all of the goods or services
covered by such trade mark or only some of such goods or services.
However, no such assignment or transmission of a registered trade
mark is permissible in a case. There are subsisting exclusive rights in
more than one of the persons concerned to the use of trade marks
nearly resembling each other or of identical trade mark in relation to
same goods or services or same description of goods or services or
goods or services or description of goods and services which are
associated with each other. This would be so if having regard to the
similarity of goods and services and to the similarity of the trade marks
the use of the trade marks in exercise of such exclusive rights would be
likely to deceive or cause confusion.
However, such assignment would not be invalid if the goods are to be
sold in different markets either within India or to exports to other
countries, keeping in view the limitations imposed on such exclusive
rights.
Section 42 of the Trademarks Act, 1999 lays down condition for
assignment of a trade mark without the goodwill of business. Such
assignment, however, would take effect when the assignor obtains
directions of the Registrar and advertises the same in terms of the
directions of the Registrar according to the prescribed procedure. No
such directions of the Registrar would be required if the assignment is
only in respect of some of the goods or services with the goodwill of the
business or assignment is of a trade mark which is to be used only in
respect of goods or services for export along with the goodwill of export
25
business only as such assignment would not be considered as

assignment without goodwill of the whole of the business.
No assignment or transmission of a certification trademark can be
made without the consent of the Registrar.
Associated trade marks are not assignable or transmissible except as
a whole and not separately. For all other purposes under the Act,
however, such trade marks shall be deemed to have been registered as
separate trade marks.
Registration of assignment or transmission has to be applied for in
the prescribed manner to the Registrar for registration of the title of the
registered trade mark by a person who becomes entitled to the same.
The Registrar on being satisfied that the validity of such assignment or
transmission is not in dispute may register the same in the register.
Chapter V of the Act deals with assignment and transmission. Sections
37 to 45 and Rule 71 cover these. The Trade Marks Act, 1999 recognizes
the right of proprietor of a Trade Mark to assign or transmit the Trade
Mark the relevant Section and Rules.
Identity or similarity of Marks
Test for determining Identity or similarity of Marks
For determining the identity or similarity, the rules of comparison have

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 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
30
(1906) 23 R.P.C. 774
26
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.
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.
27
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 find 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
28
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.
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
of 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
34
Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449.
29
later on the trademark, proposed to be registered, will 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.
35
Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.
30
DECEPTIVELY SIMILARITY
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 doubt 37 as to the
source of the product. It is the likely hood of deception and not the
actual deception, which is the deciding factor.
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
31
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 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
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)
32
become distinctive of his goods among the public at large. He has to

establish that there is likely hood of deception or confusion in the 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 resembleness 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:
(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
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
33
(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.
34
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
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.
35
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 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-step 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?
46
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
47
company, Nagpur) 2003 at 397.
48
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
36
(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 of the Paris Convention, 1967 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:
49
Peshawar Soap & Chemicals Ltd. v Godrej Soap Ltd 2001 PTC 1 (Del.)
37
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
38
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.
(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
39
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
traditional 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 trademarks 50,
which may come up for registration to the Registrar. The underlying
principle for affording 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
50
Section 11(10)(i)
51
Section 11(10)(ii)
40
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.
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.
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.
41
CASE LAWS ON TRADEMARKS
1. Aristo Pharmaceuticals Ltd. v. Wockhardt Ltd., 2001 PTC 139

(SC)
From the evidence on record and other material facts of the case the
court found that before an injunction could have been granted it was
necessary for the court to have allowed the parties to lead evidence in
as much as the facts alleged by the appellant herein were not exactly
admitted by the respondent company. This could have been done only
at the time of trial, whether the word 'spasmo' has been used in
connection with medicine since before' and after 1977 is a relevant
consideration and there was a dispute between the parties as to
whether any drug using the word "spasmo" was still being manufactured
and sold after the respondent company had got its trade mark
registered in the year 1977.
2. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., 2001

PTC 300 (SC)
The court held that the decisions of English courts would be relevant in a
country where literacy is high and the mark used are in the language
which the purchaser can understand. While the English cases may be
relevant in understanding the essential features of Trade Mark law but
while dealing with sale of consumer items in India it has to see and bear
in mind the difference in situation between England and India. In a
country like India where there is no single common language, a large
percentage of population is illiterate and a small fraction of people know
English, then to apply the principles of English law regarding
dissimilarities of the marks or the customer knowing about the
distinguished characteristics of the plaintiff's goods seems to overlook
the ground realities of India. While examining such cases in India, what
42
has to be kept in mind is the purchaser of such goods in India who may
have absolutely know the English language or the language in which the
trade mark is written and to whom different words with slight difference
in spellings may sound the phonetical the same. While dealing with
cases relating to passing off, one of the important tests which has to be
applied in each case is whether the misrepresentation made by
defendant is of such a nature as is likely to cause an ordinary consumer
to confuse one product for another due to similarity of marks and other
surrounding factors.
3. Sony Corporation v. Park Kwangsoo, 2001 PTC 492 (WIPO).
In this instant case the domain name "NEWSONY.COM" is virtually

identical and confusingly similar to the domain name of the complainant
"SONY.COM" and as the goodwill of the complainant who is one of the
world's premier entertainment electronics companies, would be
tarnished by the showing of sexually explicit and pornographic material
put on the website which is the only user under the impugned domain
name, the said name should be transferred to the complainant
SONY.COM.
4. Tata Sons Limited v. Manu Kosari, 2001 PTC 432 (Del).
The court held that with the advancement and progress in technology
the services rendered by an internet site have also to be recognised and
accepted and are being given protection from passing off.
The court further held that with the advent of modern technology
particularly that relate to cyberspace, domain names or internet sites
are entitled to protection as a trade mark because they are more than a
mere address. The rendering of internet services is also entitled to
43
protection in the same way as goods and services are and trade marks
law applies to activities of internet.
5. Torrent Pharmaceuticals Ltd. v. Union of India and others, AIR

1998 Guj 181
The appellant in this case who was the original petitioner was engaged
in the business of manufacturing and marketing pharmaceuticals and
medicinal preparations. He applied for registration of trade mark
"VIREX" on January 27, 1987 which was advertised in the Trade Journal
on 1st January, 1995. The Welcome Foundation Ltd. filed notice of
opposition on 6th April, 1995. Appellant filed counter statement on 10th
October, 1995, copy served on third- respondent on November 22, 1995.
The third respondent was required to adduce evidence in support of his
opposition within 2 months of the service of counter statement under
rule 53 of the Rules. Extension of time was granted to third respondent.
An interlocutory application filed by the third respondent for taking
further evidence on second was allowed.
According to the appellant the said permission for further evidence

was violation of rule 53 of the Rules.
After considering the facts and circumstances of the case, the learned
single judge found no error of law in the said action and dismissed the
petition, holding that the provisions of rule 53 were directory and not
mandatory and non-compliance thereof would not result in
abandonment of opposition under sub-rule 2 of rule 53.
The High Court held that the order passed by respondent No. 2 the
Controller did not suffer from any infirmity and the learned single
44
judge had committed no error in not interfering with the said order.
The letters patent appeal was, therefore, dismissed.
The High Court however, held that it was necessary for the learned
single judge to opine on interpretation of rule 53 and all observations
made by the learned single judge would not be treated as final. The
appropriate court would decide the said question in accordance with law
without being inhibited by the observations made by the single judge.
6. Gupta Enterprises v. Gupta Enterprises & Anr., AIR 1998 Del

23
The appellant had applied for registration of his trade mark 'GUPTA' in
respect of electric boxes, lights (tube patties and chokes). In response to
the notice, M/s. Gupta Enterprises and was registered proprietor of trade
mark Gupta since 1953.
In the counter-statement the appellant refuted the claim of the

opponent. The opponent filed a letter with the Registrar stating that it
did not wish to file evidence but would rely on the submissions in the
notice of opposition. The appellant herein, however, filed evidence
before the Registrar. The Registrar allowed the opposition and dismissed
the application of the appellant herein. Review application was filed by
the appellant herein before the Registrar who allowed it dismissing the
opposition.
The court in the appeal against Registrar's order set aside the order
holding that Registrar could not rewrite his judgment under the garb of
review as he has no jurisdiction to review his own order.
45
The High Court held that the Registrar's impugned order could not be
sustained and was set aside primarily on the ground that Kewal Kishan
had failed to establish that he was the registered proprietor of the trade
mark "GUPTA" on that he was prior user in case of that trade mark. The
court remanded the case back to Registrar to decide the matter on
merits in accordance with law.
7. Sri Sai Agencies Pvt. Ltd. v. Chintala Rama Rao, AIR 1998
AP86
Both the parties in this case applied for registration of trade mark. The
trade marks used by the two rivals were "Mathura Ghee" and "Mathurag
Ghee".
The use of the trade mark 'Mathurag' by the rival producer had
commenced after lapse of five years from the use of trade mark
'Mathura Ghee'. The owner of trade mark /Mathura' had popularised his
mark by investing huge amounts on advertisement. The two marks were
phonetically similar. There was not much difference in pictorial and
monogram. The only difference was the word 'g'.
Registration was granted to neither. Therefore, there could be no case

of infringement of trade mark. There could only be case of passing off.
In passing off action the decisive factor is the prior use and who is the
prior user.
The High Court found no reason to interfere with the grant of

injunction in favour of the plaintiff passed by the second Additional Chief
Judge, City Civil Court, restraining the defendant before him from using
the trade mark 'Mathurag Ghee' since the rival party had been
46
manufacturing and selling their product using the trade mark 'Mathura
Ghee' as prior users.
8. Peshawar Soap & Chemicals Ltd. v. Godrej Soap Ltd., 2001

PTC 1 (Del).
The commercial reality is that newcomers most often arrange

incentives of myriad natures to get the retailer to promote its products.
The customers choice is undermined by stratagems such as the
purveyor implying that the products are same; (a) It would be sanguine
to expect that the shopkeeper will explain the difference in the source of
the two products and put both products before the confused or unaware
client in order to help him to take his decision, (b) Even though a
disclaimer may have recorded, this would not disentitle such a party to
complain of imitation in a passing off action, (c) Acquiescence or laches
or failure to object would disentitle a challenge to a similar mark since
the rival would have built up a reputation and clientele and that then
apple cart of balance of convenience ought not to be upset, (d)
Acquiescence would also lend legal legitimacy to exclusive user of a
descriptive words, which if contemporaneously challenged would call for
cancellation, (e) Use of prefix to the same mark is no justification for
permission to use of two identical or similar marks, (f) User of the mark
is of pre-eminent importance and would override the rights of owner of a
registered mark who had not entered the market till the time its
competitor did.
9. Caterpillar Inc. 100 NE v. Jorange and other, AIR 1998 Mad

171
The appellant challenged the order dated 25-3-1997 of the learned

single judge by which their applications for appointing a commission and
47
grant of temporary injunction were dismissed on the ground that no

case had been made out because the plaintiff had not been able to show
that the plaintiff had advertised the goods in India. The Division Bench
of the High Court set aside the said order and held that injunction could
be granted restraining the defendants from using the well known or
reputed name of the plaintiff having regard to the transborder
reputation established by it because if injunction was not granted,
plaintiff/appellant would be put to great hardship as the defendants had
started manufacturing and selling their garments in the names of 'Cat'
and 'Caterpillar' which were the registered trade marks of the
appellant/plaintiff.
10. S.B.L. Limited v. Himalaya Drug Co., AIR 1998 Del 126
The court held that the test for judging a case of infringement and/or
passing off remains the same when applied to medicines and
pharmaceuticals. However, a few additional considerations arise when
dealing with case of such drugs which cannot be sold except on
prescription of a doctor and which are sold only by such persons who
have special knowledge or expertise in the field. The manner in which
trade in such medicines is carried on that is, they can be sold only on
prescription and at authorised outlets only and the class of persons who
would purchase that is, the patients advised by doctors, chemists and
druggists. These two facts assume significance and shall have to be kept
in view by the courts. There are about 100 drugs in the market using the
abbreviation 'Liv' made out of the word Liver — an organ of the human
body, as a constituent of names of medicinal/pharmaceutical
preparations with some prefix or suffix — mostly suffixes — meant for
treatment of ailments or diseases associated with liver. 'Liv.' has thus
become a generic term and publici juris. It is descriptive in nature and
common in usage. Nobody can claim an exclusive right to the use of 'Liv'
48
as a constituent of any trade mark. The class of customers dealing with

medicines would distinguish the names of the medicines by ignoring 'Liv'
and by assigning weight to the prefix or suffix so as to associate the
name with the manufacturer. The possibility of deception/confusion is
reduced practically to nil in view of the fact that the medicine will be
sold on medical prescription and by licenced dealers well versed in the
field and having knowledge of medicines.
In the instant case the two rival marks Liv. 52 and Liv-T contain a
common feature Liv which is not only descriptive but also publici juris; a
customer will tend to ignore the common feature and will pay more
attention to uncommon features, i.e., 52 and T. The two do not have
such phonetic similarity as to make it objectionable. The Cartons of
the two products respectively of the plaintiff and of the defendant
show that there is no possibility of one being accused of being
deceptively similar with the other, and the customer mistaking one with
the other, even by recollecting faint impressions. Therefore the
proprietor of Liv 52 was not entitled to the grant of an injunction the use
of Liv-T.
11. Rupa &c Co. Ltd. and another v. Dawn Mills Co. Ltd. and
another, AIR 1998 Guj 247
In this case the High Court held that the plaintiffs were owner of
registered trade mark in the form of label depicting figure of sun at
dawn with prominently displayed word 'DAWN' and subsidiary word
hosiery beneath DAWN as well as words 'DAWN HOSIERY per se since
last over 40 years and were marketing their products under that name.
So also defendants were manufacturing and trading in the same field of
hosiery for over 25 years now under their own registered trade name
RUPA. From the sample of offending hosiery products and cartons in
49
which the same were offered to buyers by the defendant shown to the
court, it was clear that on labels attached to it word 'DON' was shown in
prominence rather than its registered trade mark 'RUPA'.
Court held that the use of word 'DON' by defendant prima facie
infringed plaintiff's registered mark in question and he was entitled to
grant of temporary injunction.
12. Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine

Pharmaceutical Ltd., AIR 1998 Mad 347
In this case the plaintiff was selling its product, allopathic medicinal
preparation under trade mark "Enerjex". Plaintiff's grievance was
adoption of trade mark "Enerjase" by defendant for selling his Ayurvedic
medicinal preparation. Prefix for both marks viz. "Enerj" was common
and abbreviation of generic name 'energy'. Suffix to said words "jex"
and "jase" were totally dissimilar not creating confusion in mind of users
especially when visual impression of the said two trade names was
completely different. Total sound effect of these two words lacked any
similarity. The court held that no infringement of trade mark of plaintiff
was noticed. Injunction was refused.
13. Allergan Inc. v. Milment Oftho Industries and others, AIR

1998 Cal 261
In this case of the High Court observed that a plaintiff with a reputation
which is established internationally can sue to protect in this country
even if it does not have any business activity here. In other words,
reputation of a product may precede its introduction and may exist
without trade in such product in the country.
50
The court also observed that where the two products in question were
pharmaceutical preparations with identical names and the foreign
manufacturer company chose the name first and used it on its product
in several countries around the world excluding India, whereafter the
Indian Company entered the market with their product and the foreign
company together with certain Indian Pharmaceutical company set up a
joint venture company for sale of its product in India and had applied for
registration of the disputed mark before the Registrar of Trade Marks,
Indian Company can be restrained from using the trade mark. Moreover,
if it is possible for a purchaser of the Indian Company's product in India
to do so under the impression that he is buying the foreign company's
product the Indian Company as the subsequent adopter of the mark
must be restrained from doing so. Further, once the foreign product is
released in the Indian market the consequences may well prove
disastrous given the fact that in India, drugs are available without
prescription. In such a case, where the interest of the general public is
affected, delay is of no consequence. Moreover, delay could defeat the
foreign company's right if the Indian Company having built up their
sales, were suddenly faced with the prospect of an injunction. Moreover,
the Indian Company was put on notice of the foreign company's claim in
1994 and no surprise could have been caused by the filing of the suit by
the foreign company to enforce that claim.
Decision of single judge was reversed by the Division Bench of the

court.
14. Whirlpool Corporation v. Registrar of Trade Marks, AIR 1999

SC22
The Supreme Court held in this case that jurisdiction of the High Court
in entertaining write petition under Article 226 of the Constitution
51
inspite of alternative judicial remedies, was not affected, specially in a

case where authority against whom the writ was filed is shown to have
had no jurisdiction or had purported to jurisdiction without any legal
foundation.
The Supreme Court held in this case that the High Court was not
justified in dismissing the writ petition at the initial stage without
examining the contention that the show cause notice issued to the
appellant was wholly without jurisdiction and registration in the
circumstances of the case was not justified in acting as the 'Tribunal'.
15. Playboy Enterprises Inc. v. Bharat Malik, 2001 PTC 328 (Del).
The court concluded that though the plaintiff has secured registration of
the trade mark ‘Playboy’ in respect of the magazine and several other
goods which is more than seven years old and has demonstrated its
strength due to the degree of distinctiveness, fame and reputation of
the trade mark playboy yet being title of the magazine it qualifies to be
a valid trade mark even if it is not registered because of its long and
continuous use.
Secondly the trademark playboy falls in the category of arbitrary fanciful

trade mark as it does not bring to mind the product to which it is applied
and as such deserve the highest degree of protection. The trade mark
playboy has acquired its worldwide circulation and publication in as
many as 16 foreign countries and huge amounts spent on its publicity
and promotion of this mark product its wide spread fame and reputation
culminating in its synonimity with the plaintiff's company. And hence
from other generalisations too the plaintiff has the right to protect
its trade name PLAYBOY from infringement as well as from passing
off.
52
53
TRADEMARKS ON THE INTERNET
As the concept of global village is holding ground, and globalizations,

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 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 given 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,
54
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
55
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 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.
56
.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.
ccTLD
57
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
58
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.
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
59
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
connection 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
60
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 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.
61
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.
62
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 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
63
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 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
64
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

65
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.
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.
66
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 a 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.
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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.
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.
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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
69
reputation by the operation of a website under the impugned 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.
70
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.
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
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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
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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 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.
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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 before 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.
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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 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 wesbite 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.”
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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.
It was also noticed by the Supreme Court that admittedly, the appellant
was the prior used and had the right to debar the respondent from
76
eating into the goodwill, it may have built up in connection with the
name.
A trademark defence of ‘operating in different fields’ was taken by the

respondent. However, the same was rejected on the ground that a
deceptively similar domain name may not only lead to a confusion of the
source but the receipt of unsought-for services. Also, on facts, it was
found that both the respondent was, on its website, offering software
solution, integrating and management solutions and software
development which were similar to services provided by the appellant.
The Supreme Court concluded that in view of finding of prima facie

dishonest adoption of the appellant’s trade name by the respondent, the
investments made by the appellant in connection with the trade name,
and the public association of the trade name Sify with the appellant, the
appellant was entitled to the relief it claimed.
Practical difficulties with traditional litigation
Although domain name disputes gave rise to a strong line of precedents,

approaching a court of law came with it’s own share of misgivings. While
litigation before the courts, the top three problems primarily are:53[1]
i) The difficulty of detecting the wrong defendants or of serving the

defendants;
ii) The risk of the domain name being transferred if the plaintiff gives a
cease and desist letter;
53[1]
Shamnad Basheer, Trademark Issues on the Internet: Domain Name Dispute Resolution, Legal
Dimenstions of Cyberspace, Indian Law Institute, 2004, p. 156
77
iii) Even if one gets an injunction, the possibility that the defendant
would obtain registration of alpha-numeric variations. This makes the
enforcement an expensive affair.
Therefore, traditional litigation has not been accepted as a complete

solution to domain name dispute problems.
Dispute Resolution through UDRP – the ICANN policy
Due to practical difficulties faced due in pursuing traditional litigation in

different jurisdictions, The Uniform Domain-Name Dispute Resolution
Policy (UDRP) was introduced and finally approved by ICANN. This was
on 24.10.1999. The UDRP has been adopted by ICANN-accredited
registrars in all gTLDs (that is, .com, .org, .net, .pro, .aero, .biz, .coop,
.info, .museum, .name). Dispute proceedings arising from alleged
abusive registrations of domain names (cybersquatting) may be initiated
by a holder of trademark rights. The UDRP is a policy between the
registrar and its customer and is included in the registration agreement
for all ICANN-accredited registrars.
If a trademark holder believes that a domain name registration infringes

on its trademark, it may initiate a proceeding under the UDRP. As
indicated above, every registrant of a domain name has to agree to the
Dispute Clause of the Terms and Conditions for the registration of a
gTLD domain name. Therefore, once the complainant initiates the
proceedings, the registrant must submit to such proceedings.
The UDRP permits complainants to file a case with a resolution service

provider, specifying, mainly, the domain name in question, the
respondent or holder of the domain name, the registrar with whom the
domain name was registered and the grounds for the complaint. Such
78
grounds include, as their central criteria, the way in which the domain
name is identical or similar to a trademark to which the complainant has
rights; why the respondent should be considered as having no rights or
legitimate interests in respect of the domain name that is the subject of
the complaint; and why the domain name should be considered as
having been registered and used in bad faith. The respondent is offered
the opportunity to defend itself against the allegations. The dispute
resolution service provider (e.g., the WIPO) appoints a panelist who
decides whether or not the domain(s) should be transferred.
It is worth noting that Paragraph 3 of the UDRP permits ICANN to cancel,

transfer or otherwise make changes to domain name registrations in
case they receive an order from a court or arbitral tribunal having
competent jurisdiction requiring such action. Therefore, one may even
opt for a traditional litigation, get an order for transfer of domain name
and then approach ICANN under Paragraph 3 of UDRP for transfer of
domain name.
Approved Providers for Domain Name Disputes
As on date, there are a total of four Approved Providers for Domain

Name Disputes.
(a) WIPO took the lead in becoming the first approved. This was on
29.11.1999 dispute resolution provider.
(b) National Arbitration Forum, closely followed WIPO. It was approved
on 23.12.1999.
(c) On 22.05.2000, CPR Institution for Dispute Resolution became the
fourth approved service provider.
(d) >From 28.02.2002, the final approved service provider so far, Asian
Domain Names Dispute Resolution Centre began accepting proceedings.
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It is relevant to note that Disputes.org/eResolution consortium-

DeC had became an approved service provider on 01.01.2000. However,
it ceased to accept any proceedings from 30.11.2001.
Statistics under WIPO-UDRP
The Statistics on WIPO’s UDRP domain name cases reflect the mammoth
task we have taken at hand. And remember, this is just the tip of
iceberg. For there are very many disputes which are not brought to the
notice of any of the domain name dispute providers. The WIPO statistics
(as on 28.08.2004) relating to Geographical Distribution of Parties
cumulative: gTLDs gives us the domicile of the complainant and
respondent. The statistics in itself gives an interesting revelation. Note,
for example, Republic of Korea: there are only 27 complainants whereas
a whooping 333 respondents! One might conclude that either there are
just too many coincidences that the people there have registered such
domain names which should have been genuinely registered by
someone else. Or maybe, cybersquatting is a popular way of making
money. Same conclusion might be reached for Russia. On the other
hand, Switzerland seems to have been more of a victim of
cybersquatting – 209 complainants as against 53 respondents.
Statistics pertaining to case filing (from 1999 to 2004) indicate a very

queer trend. One might expect an increase in filing of cases under
UDRP. On the contrary, there has been a gradual decline from 2000
onwards in filing of gTLD cases. On the other hand, most of the decisions
being taken by a UDRP panelist is transfer of the domain name.
Statistics indicates that the level of cybersquatting and ‘bad faith’
registration has been high. As many as 3,971 domain names have been
transferred till date.
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Search cases through cases numbers or through the Index of WIPO

UDRP Panel decisions.
Cases under WIPO-UDRP
As the statistics indicated above, there are a large number of domain

name disputes which are resolved annually through the ICANN-approved
dispute resolution providers. In fact, all the decisions under World
Intellectual Property Organisation (WIPO) has been catergorised on the
basis of usage of the domain name as also in accordance with the legal
point. A mere look into the categories gives an insight as to the
importance of a domain name. For example, domains may relate to
association and institutions (be it religious or sports) or individuals like
authors, media, music, film, or industry and commerce or education or
public sector.
Let us study a few decisions rendered under UDRP:
(A) Worldwrestlingfederation.com, World Wrestling Federation

Entertainment, Inc. v. Michael Bosman, decided on 18 Jan 2000 [Click
Case No. D99-0001 for text of the complete Decision]
This was the first case conducted under the UDRP. The proceedings
were initiated on 09.12.1999. The respondent registered the domain
name <worldwrestlingfederation.com> for a term of two years from
October 7, 1999. The complainant provided evidence of registration of
the following marks:
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1. Service Mark - WORLD WRESTLING FEDERATION, registered for a term

of 20 years from January 29, 1985, with the United States Patent and
Trademark Office;
2. Trademark - WORLD WRESTLING FEDERATION, registered for a term
of 20 years from November 7, 1989, with the United States Patent and
Trademark Office.
The respondent had registered the domain name and within three days,
offered the same for sale. The complainant contends that respondent
has registered as a domain name a mark which is identical to the
service mark and trademark registered and used by complainant, that
respondent has no rights or legitimate interests in respect to the domain
name at issue, and that respondent has registered and is using the
domain name at issue in bad faith. The respondent did not contest the
allegations of the complaint.
It was found that because respondent offered to sell the domain name
to complainant “for valuable consideration in excess of” any out-of-
pocket costs directly related to the domain name, respondent has
“used” the domain name in bad faith as required under Paragraph 4, b, i
of the UDRP. Therefore, pursuant to Paragraph 4,i of the UDRP, the
Panel required that the registration of the domain name
<worldwrestlingfederation.com> be transferred to the complainant.
(B) Backstreetboys.com, Backstreet Productions, Inc. v. John

Zuccarini, decided on 24 Aug 2001
The domain names in dispute were backsreetboys.com,

backsteetboys.com, backstreeboys.com, backstreetboyspics.com,
backstreetboyspictures.com, backstreetboyz.com, backstreetsboys.com,
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backstretboys.com, backtreetboys.com, bacstreetboys.com and

bakstreetboys.com.
The Backstreet Boys are well-known pop singers. The Backstreet Boys
have licensed a wide range of products bearing their trademark,
including posters, watches, backpacks, musical products, live concert
photos, etc., which are projected to result in over twenty million dollars
in revenue. The Backstreet Boys operate a website at
“http://www.backstreetboys.com”.
Respondent has never been licensed by Complainant to use the

Backstreet Boys trademark. Respondent does not offer any goods or
services through the websites he established with these domain names.
Rather, upon entering Respondent’s sites, Internet users are diverted to
a number of windows displaying advertisements, and must click on each
of the windows before exiting.
It was found that the domain names are ‘virtually identical and
confusingly similar’ to the trademark, respondent’s use of the domain
names do not give him a legitimate interest in the domain names, and
respondent did register and use the domain names at issue in bad faith.
Having concluded that all the requirements of Para. 4(a) of the UDRP
have been fulfilled, the Panel, pursuant to paragraph 4(i) of the UDRP,
concluded that the registration of the domain names at issue was to be
transferred to the Complainant.
(C) Bahaiwomen.com, National Spiritual Assembly of the Bahá’ís

v. Buy This Name, decided on 18 Dec 2001 [Click Case No.
D2001-1302 for text of the complete Decision]
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The Complainant is the registered owner of the trademarks BAHÁ’Í,

BAHÁ’Í and design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁ’ÍS
OF THE UNITED STATES. All three trademarks are registered in the
United States of America. The date of first use of the trademark BAHÁ’Í
is given as 1900.
On May 27, 2001, the Respondent registered the disputed domain

name. The Complainant states that some time shortly thereafter, the
Respondent began operating a pornographic website at the site
<bahaiwomen.com>. The site also operates as a portal to other
pornographic websites.
The site <bahaiwomen.com> also contains a link entitled "Click Here to

Buy this Domain Name". Users clicking on that link are transported to a
page on which they can make an offer to purchase the disputed domain
name.
After looking into evidence and averments, the Panel found that:
(a) The domain name <bahaiwomen.com> is confusingly similar to the

trademark BAHÁ’Í, in which the Complainant has rights;
(b) There is no evidence to demonstrate that the Respondent has a

legitimate right or interest in the disputed domain name;
(c) Since the domain name was a well-known trademark and the domain
name is being used in connection with a pornographic site, the domain
name has been registered and is being used in bad faith.
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Pursuant to paragraph 4(i) of the Policy, the Panel required that the
registration of the domain name <bahaiwomen.com> be transferred to
the Complainant.
(D) Calvinklein-watches.com, Calvin Klein, Inc. & Calvin Klein

Trademark Trust v. Rhythm, decided on 28 Dec 2001
The Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc.
(hereinafter "Complainant"), are respectively the record owner and the
beneficial owner of the CALVIN KLEIN trademarks (referred to
hereinafter as the "CALVIN KLEIN Marks"). The Complainant is involved
in the apparel business and designs, manufactures, markets and sells
merchandise for men, women and children including watches, shoes,
accessories, underwear, jeans, cosmetics, home furnishings, sweatshirts
and many other apparel items. In June 1997, the Complainant registered
the domain name <calvinklein.com> with Network Solutions, Inc.
The Domain Name was registered in August 2000, three years after the
registration of Complainant's <calvinklein.com> domain name and over
13 years after Complainant began using the CALVIN KLEIN Marks.
Based on the evidence and contentions, the Panel found that the
Domain Name is confusingly similar to the CALVIN KLEIN Marks and the
<calvinklein.com> domain name in which Complainant has rights.
The Panel agreed with the contentions of the Complainant that the
Respondent had no rights or legitimate interests in the Domain Name.
The Respondent had an opportunity to demonstrate such rights or
legitimate interests but did not do so.
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The Panel found that the Domain Name was registered and is being
used in bad faith.
The Panel therefore directed that the Domain Name be transferred to

the Complainant.
(E) Juliaroberts.com, Julia Fiona Roberts v. Russell Boyd, decided

on 29 May 2000
The Complainant, Julia Fiona Roberts, is a famous motion picture

actress. She has appeared in such movies as Erin Brockovich, Notting
Hill, Runaway Bride, Stepmom, My Best Friend’s Wedding, Conspiracy
Theory, Everyone Says I Love You, Mary Reilly, Michael Collins,
Something to Talk About, I Love Trouble, Ready to Wear, The Pelican
Brief, The Player, Dying Young, Hook, Sleeping With the Enemy,
Flatliners, Pretty Woman, and more. A partial filmography for the
Complainant is found at Yahoo! Movies. The Complainant is widely
featured in celebrity publications, movie reviews, and entertainment
publications and television shows, and she has earned two Academy
Award nominations.
Respondent registered the subject domain name on November 9, 1998.

As of March 24, 2000, the website www.juliaroberts.com featured a
photograph of a woman named ‘Sari Locker’. The Respondent has
placed the domain name up for auction on the commercial auction
website, "eBay," specifically at http://cgi.ebay.com/aw-cgi/eBayISAPI.dll?
ViewItem&item=285891617.
The Respondent had also registered over fifty (50) other domain names,
including names incorporating other movie stars names within
<madeleinestowe.com> and <alpacino.com> and a famous Russian
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gymnast’s name within <elenaprodunova.com>. Respondent listed his

email address as mickjagger@home.com. Respondent was offered
US$2,550 in the eBay auction for the domain name registration.
Complainant contended that Para. 4(a) of the UDRP is clearly attracted

in the present case. Respondent did not contest that the domain name
<juliaroberts.com> is identical with and confusingly similar to
Complainant’s name. However, the Respondent did contest whether
Complainant has common law trademark rights in her name.
The Panel found that common law trademark rights could exist in an
author’s name. The other requirements of paragraph 4(a) of the UDRP
were also found to be existing in the present case: (a) the domain name
is identical the complainant’s name; (b) Respondent had no rights or
legitimate interest in the domain name; and, (c) Respondent had
registered and used the domain name <juliaroberts.com> in bad faith
since he had not only registered other domain names including several
famous movie and sports stars, he had also placed the domain name up
for auction on the commercial website eBay.
The domain name <juliaroberts.com> was ordered to be transferred to

Complainant Julia Fiona Roberts.
(F) Mahindra.com, M/s Mahindra & Mahindra Ltd. v. Neoplanet

Solutions, decided on 7 Jun 2000
The Complainant is a well-known manufacturer and exporter of tractors

and utility vehicles. Apart from the Complainant itself, 35 Group
Companies include "Mahindra" in their names. By reason of the
extensive use of the Trade Marks and the name Mahindra in the various
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Group Companies, the word MAHINDRA, at least in relation to motor

vehicles, is associated exclusively with the Complainant.
The Complainant became aware of the existence of the domain name

registration in issue at a date prior to December 13, 1999. Prior to the
attorneys’ letter of December 13, 1999, they had asked their associates
in Vijaywada to approach Network Solutions informally to enquire about
its registration of the domain name. The associates were (it is said)
informed that Network Solutions was willing to transfer the domain
name for the sum of Rs. 15,000 (about US $1,500), but Network
Solutions "did not reproduce the demand in writing".
It was found by the Panel that the Respondent’s domain name

"mahindra.com" was identical to the trademark "MAHINDRA", the
Respondent had no rights or legitimate reason for adopting the word
"mahindra" as a domain name and the domain name "mahindra.com"
was registered and being used in bad faith.
Since the elements of paragraph 4(a) of UDRP were proved, the Panelist
ordered that the domain name "mahindra.com" be transferred to
Mahindra & Mahindra.
(G) Tata.org, Tata Sons Ltd. v. The Advance Information

Technology Association, decided on 10 Apr 2000
In this case, the Complainant was an Indian company existing under

Indian laws. It was the principal investment holding company of the Tata
Group of Companies whose turnover was more than US$9 Billion. The
word “TATA” was the trade mark, corporate name, house mark of the
complainant and its Group companies. The Complainant and its Group
companies had interests in a diverse field of activities including
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Automobiles, Energy, Chemicals & Pharmaceuticals, Consumer Products,

Publishing, Metal, Information Technology & Communications, Finance
etc.
The Respondent was the registrant of the domain name <tata.org> with
NSI but did get the website activated.
It was contended that potential customers would be induced to

subscribe to the services of the impugned web site or to deal in some
matter with the Respondent/third party believing them to be licensed or
authorised by the Complainant.
Since the website was not activated even though it was registered
almost three years earlier, it was found that the respondent is merely
‘hoarding’ the said domain name. It was further observed that even if a
website under the said domain name had been activated, in the facts
and circumstances of the case, it would still constitute dishonest
adoption and misappropriation.
It was also brought on record that the Complainant had successfully

obtained orders from Courts in India in relation to domain names
wherein Courts have granted orders of injunction against the defendants
therein from using the domain names <tatagroup.com>, <bodacious-
tatas.com>, <jrdtata.com>, <ratantata.com>, <tatahoneywell.com>,
<tatateleservices.com>, <tatahydro.com>, <tatawestside.com>,
<tatatimken.com>. Though these disputes were still pending at the time
the present Decision was rendered, it was observed that they were
prima facie evidence of the recognition of the Complainant's rights in
the TATA name/mark.
It was thus found by the Panel that:

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(a) the Respondent's domain name <tata.org> was identical to the

trade mark TATA in which the Complainant had rights;
(b) the Respondent had no legitimate interest in the domain name
<tata.org>;
(c) the registration of the domain name "tata.org" was a "Bad Faith
registration".
The Panel decided that that the Respondent's domain name "tata-org"
should be transferred to the Complainant.
(H) Theeconomictimes.com/thetimesofindia.com, Bennett Coleman &

Co. Ltd. v. Steven S. Lalwani, decided on 15 Mar 2000
The Complainant published "The Economic Times", which had an

average daily circulation of 350,100, and "The Times of India", which
had a daily circulation of 2,522,488. Both included Indian news in their
content. The Complainant was engaging in certain supplemental
activities in the entertainment industry, using the brand "Times". Since
1996 the Complainant had held the domain names, economictimes.com
and timesofindia.com, using them for the electronic publication of their
respective newspapers. The Complainant registered in India the mark,
"The Economic Times" for newspapers, journals, magazines, books and
other literary works on March 28, 1973, and the mark, "The Times of
India" for the same goods on July 30, 1943.
The Respondent’s web sites using the disputed domain names in

contention redirected Internet users to the site indiaheadlines.com
which provided India-related news and articles.
The respondent has specifically contended that the trademark of the

complainant was allowed to lapse since 1980. It was held that whether
Complainant’s Indian trademarks were any longer registered does not
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matter, since they had a very substantial reputation in their newspaper

titles arising from their daily use in hard-copy and electronic publication.
It was found by the Panel that:
(i) the Respondents adopted in their domain names the identical marks
in which the Complainant has rights,
(ii) that the Respondents had no rights or legitimate interests in respect
of the domain names; and
(iii) that their registration and use of the domain names is in bad faith in
the sense that their use amounted to an attempt intentionally to attract,
for commercial gain, Internet users to their web sites by creating a
likelihood of confusion with the Complainant’s marks as to the source,
sponsorship, affiliation or endorsement of those web sites and the
services on them.
Both the domain names were decided to be transferred to the

Complainant.
(I) Yahoo.com, Yahoo! Inc. v. Victor Majevski a/k/a Marec Polanski

& Ors., decided on 20 Sep 2002
The domain names involved in this case were: financeyahoo.com,

gamesyahoo.com, greetingsyahoo.com, playyahoo.com,
wwwyahoochat.com, yahooauction.com, yahoohomepage.com and
yahoolians.com.
The Complainant, Yahoo! is a global Internet communications, media,

and commerce company that delivers a branded network of
comprehensive searching, directory, information, communication,
shopping services and other online activities and features to millions of
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Internet users daily. Yahoo! is the owner of the service marks and
trademarks YAHOO!, as well as the trade name YAHOO! and the domain
names <yahoo.com> and <yahooligans.com>.
It was, inter alia, contended by the Complainant that the respondent’s

registration and use of the domain names met the ‘bad faith’ element
set out in Paragraph 4(a)(iii) of the UDRP and clearly constitute
‘typosquatting’, namely, the misspelling or punctuation/letter omission
of another’s name in order to divert Internet traffic via Internet users’
typographical errors.
The respondent did not file any submissions before the Panel.
The Panel supported the Complainant’s argument that the very nature
of the Yahoo name (i.e. its arbitrary nature) makes it unlikely that the
Respondent had not realized that its names could be other than
confusingly similar to those of the Complainant. It further found that the
Respondent used the Domain Names to intentionally attract, for
commercial gain, Internet users to its affiliated websites by creating a
likelihood of confusion with Complainant’s YAHOO! And YAHOOLIGANS!
marks as to the source, sponsorship, affiliation and endorsement of
Respondent’s affiliated websites and/or the goods and services offered
on those websites.
Panel found the three elements that is confusing similarity with the mark
of the complainant, lack of respondent’s legitimate interest and bad
faith, as set out in paragraph 4(a) of the UDRP present and therefore,
directed that the domain names in dispute be transferred to the
Complainant.
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Dispute Resolution of Indian ccTLDs
The Administration of Domain Names within the .in (Indian) category is

looked after by the Center for Development of Advance Computing,
Mumbai (C-DAC) (formerly National Center for Software Technology).
For the purpose of resolution of domain name disputes in the .in

category, NCST does not subscribe to UDRP. Rather, it has its own policy
Indian Internet Domain Name Dispute Resolution Policy. Paragraph 5 of
the said Policy empowers the Domain Registrar to cancel, transfer or
otherwise make changes to Domain Name registrations. Following
circumstances are subscribed for making such changes:
1. On receipt of written or appropriate electronic instructions from the

applicant/assignee or his authorized agent.
2. On any direction/orders from a court of law or arbitral tribunal having

its competent jurisdiction, requiring such action.
3. On receipt of a decision of Internet Management Group (IMG)

requiring such action as above.
According to Paragraph 7 of the Policy, a domain name dispute may

arise under the following conditions:
(1) The domain name is identical or confusingly similar to a trademark or

service mark in which the complainant has a rightful claim.
(2) The registrant has no rights or legitimate interests in respect of the

domain name.
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(3) The registrant has sold/auctioned/transferred the domain name to a

third part without taking approval of the Domain Registrar.
(4) The domain name has not been used by the registrant for over on
year.
(5) A complaint of cyber squatting has been received.
(6) Any other dispute, accepted by the Domain Registrar in his own
discretion.
A registrant shall be given 15 days prior notice to present his case. An

oral hearing may be granted. The Domain Registrar shall given his
decision in writing. An appeal lies to the Internet Management Group,
and thereafter, before any court in Mumbai.
META-TAGS
When we deal with trademarks infringements on the Internet, another

area of considerable concern is the use of meta-tags in one’s own
website. The HTML code used to create a web site has a keyword field.
These keywords are known as “Meta-tags” since the HTML code uses the
tag “META” to indicate the keyword field. These meta-tags are not
visible to the user looking at the site. However, these meta-
tags/keywords are essential indicators the search engines. They look for
these keywords when searching for a particular website.
We should make clear the difference between an Internet Directory and

an Internet search engine. Former is more or less like a Yellow Pages
directory with all the entries available under specific categories. One has
to merely click at the categories and sub-categories and locate the
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entry. On the other hand, a search engine is like a ‘text-search’ facility

that search through the Internet contents for returning the results on the
basis of certain keywords given by the user. Search engines in turn build
up their databases/indexer by using web spiders/robots who scan the
Internet for new content and dump in a database for future use. The
robots, in turn, for the purpose of building the indexer, look for meta-
tags in a webpage’s HTML code. Since meta-tags are essential for
identification of a website, it plays an important role for any entity
wanting consumers to reach its website. For example, X company,
selling watches, might put words like ‘watch’, ‘wrist watch’, ‘hand
made’, ‘time’, ‘time pieces’, etc. as keywords/meta-tags so that a search
engine can pick these up and while answering to a query for these
words, returns the website of the X company.
Now, if someone is hunting for a particular trade name on the Internet

via a search engine, the search engine would look into the meta-tags of
the website and return the results. However, the problem arises when
one inserts a trademark/name of a particular company to trick the
search engine in displaying a particular website as containing that
particular trademark/name and inducing/diverting the consumer to that
particular website. Legal problems arise when one is using another
trademark/name as a meta-tag in his website without any authorization.
This raises the legal issue of ‘initial interest confusion’. For example, X
company inserts in the meta-tags of its website, the trademark of a
competitor, Y company, so that anybody searching for Y company
through a search engine will also, in the result to the query, get the
website of X company. The consumer might click on the address of X
company and once taken to the website, though there is no confusion as
to the source, still, as the Courts have put it, it does amount to ‘initial
interest confusion’. The consumer after reaching X company might be
inclined to review the products of X company and might be induced to
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buy them. In such situations, Y company suffers from the risk of loosing
potential consumers due to use of its trademark by X company as meta-
tags in its website.
A word about ‘initial interest confusion’ would be apt at present. Let us

take for example, that you like Pizza Hut. You are on the move and find
a sign saying ‘Pizza Hut 1 km. on the left’. You take a left, and after a
kilometer, find Pizza Corner rather than Pizza Hut. Though are you know
Pizza Corner is different from Pizza Hut and though you prefer Pizza Hut,
yet, since you have already taken the trouble of taking a left and coming
a kilometer, you might want to enter Pizza Corner, look at menu and
check ‘just in case’ you like something for a bite. This is what is known
as the ‘initial interest confusion’. Meta-tags are responsible for creating
just this kind of ‘initial interest confusion’ so that an Internet user once
he reaches a particular website, though knows well that it was not this
website he was looking for, yet might stay around for a while and check
the contents of the website.
Let us look into a few cases:
(A) Playboy Enterprises, Inc. v. Calvin Designer Label [985 F. Supp. 1218
(N.D. Cal. 1997) (temporary restraining order issued), 985 F. Supp. 1220
(N.D. Cal. 1997) (preliminary injunction granted), 1999 WL 329058 (N.D.
Cal. 1999) (summary judgment entered for plaintiff)]
Calvin Designer had two adult websites, namely, www.playboyxxx.com

and www.playmatelive.com. It used ‘Playboy’, ‘Playmate’ and ‘Playboy
Magazine’ as meta-tags in its website to cash on the reputation and
goodwill Playboy. Playboy alleged infringement of trademark which was
agreed by the District Court and permanent injunction was granted
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enjoining Calvin from using Playboy’s trademarks as domain names or

meta-tags.
(B) Playboy Enterprises, Inc. v. Asiafocus International, Inc., [1998 WL

724000 at *2. (E.D. Va. 1998)]
In an action against the defendant for trademark infringement, the Court

found that the defendants had purposefully embedded Playboy’s
trademarks ‘playboy’ and ‘playmate’ within its computer source code
‘which is visible to search engines that look for web sites containing
specific words or phrases specified by the computer user’. Therefore,
once a querry for ‘playmate’ is made, the search engine returns a
number of websites including that of Asiafocus. The Court concluded
that consumers would be mislead into believing that the website of the
defendant is in someway connected to or sponsored by the Playboy. The
Court found against the defendant.
(C) Playboy Enterprises, Inc. v. Global Site Designs, Inc., [1999 WL

311707 at *1 (S.D. Fla. 1999)]
In this case, Global Site Designs registered two domain names that
incorporated Playboy’s trademarks, www.playmatesearch.net and
www.playboyonline.net. The words ‘playboyonline’ was also used in the
meta-tags of the website. The Court found infringement of trade mark
and restrained the defendant from using the plaintiff’s trademarks,
Playboy and Playmate, as meta-tags or as part of a domain name.
(D) SNA, Inc. v. Array, [51 F. Supp. 2d 554 (E.D. Pa. 1999)]
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The defendant’s were using the plaintiff’s trademark as meta-tags. A

block of text repeating the words, “seawind,” “SEAWIND,” “Seawind”
was inserted. It was observed that it does not matter what the domain
name is. The fact that the trademark was used as meta-tags was
enough to confuse Internet users and hence, the defendants were
restrained from using the plaintiff’s trademarks as meta-tags.
(E) Niton Corp.v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d. 102
(D. Mass. 1998)
In this case, the defendant not only used all trademarks of the plaintiff
as meta-tags but also literally copied all of the meta-tags that plaintiff
had used to design its own website. The Court came to the conclusion
that the act of the defendant would probably lead an Internet consumer
to believe that the defendant is in someway either connected to or
sponsored by the plaintiff. Injunction was granted.
(F) Brookfield Communications, Inc. v. West Coast Entertainment Corp.,

174 F.3d 1036 (9th Cir. 1999)
In what is considered as the first decision by a federal appellate court,

the defendant used the word, MOVIEBUFF, as meta-tags which the
plaintiff claimed to be its trademark. The Court held that consumers on
the look out of plaintiff’s goods might be diverted to the website of the
defendant due to use of MOVIEBUFF as meta-tag which would influence
the search engine results.
The Court held that using a competitor's trademarks in meta-tags

causes initial interest confusion which is a form of trademark
infringement. The plaintiff owned the trademark MOVIEBUFF whereas
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the defendant used it as a meta-tag. Searching the said word returned

links to both parties’ websites. The court explained that when a user
clicked on the link to West Coast's web site, there is no confusion
regarding the source of the products (because consumers know they are
patronizing West Coast's web site and not Brookfield's web site), but
there is initial interest confusion because West Coast used the
trademark MovieBuff to capture initial consumer attention and divert
people to its web site and West Coast ‘improperly benefit[ed] from the
goodwill that Brookfield developed in its mark’.
It is always advisable that one should insert words and expressions as

meta-tags in their websites with caution and restraint, specially when
one is not sure whether it might infringe somebody else’s trademark. It
has observed time and again by the Indian Courts that, 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. The threat of meta-tags is a
larger one when one recalls that there can be trademark infringement
even thought the domain name used does not even remotely infringes
anybody’s trademark. Maybe, for this reason, this kind of trademark
infringement has also been termed as ‘invisible trademark
infringement’.
FRAMING AND LINKING
Linking
Z launches a website of news items. However, instead of putting his own

collection of news items, he puts the links of a few leading newspapers
like The Times of India, The Economic Times, The Hindustan Times, The
Hindu, The Statesman, etc. If the Internet user clicks on one of the icons,
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it takes the user to the website of the particular newspaper. Sounds fair
enough! It actually facilitates the user in navigating through the Internet
with considerable ease. In most cases, linking is welcome. For example,
enter www.yahoo.com and you would notice a whole range of
advertisements towards the top. Those are nothing but links to another
website.
Before we look into the problem, we shall also understand how one can
increase revenues through advertisements on a website. An
advertiser/companiy chooses where to advertise on the Internet by
checking the number of ‘hits’ on a website, that is, how many people
have accessed/visited the website. When we say ‘accessed’, we mean
accessing the homepage/main webpage. The more there are ‘hits’ on
www.yahoo.com, the more advertisers/companies are attracted to
advertise there. A problem would arise if another website would permit
somebody to skip the homepage of a website (which contains the
advertisements) by deep linking into the site. This would not be counted
as a ‘hit’ for that website and as more and more deep linking would
happen, the number of ‘hits’ would decrease.
Let us get back to Z who is offering news items by permitting linking to

different newspapers websites. Suppose Z is offering search facilities as
well so that one can indicate what kind of news items he is looking for.
For instance, you type in ‘cricket’ and Z permits you deep linking into
cricket section of The Times of India. In this process, the main webpage
of The Time of India has been skipped which is a loss for the newspaper.
In law, these are more of copyright and unfair competition issues.
However, to a certain extent, there might be trademark infringement as
well. If the Z’s website in any way indicates that he might have an
association with The Times of India or might be directly sponsored by
The Times of India, he might be hauled up for trademark infringement. It
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depends upon whether Z is using the logo of The Times of India or

anything else so as to indicate an association. It is worth noting that
deep linking into a website might be a stronger indication of association
and hence, trademark infringement, than simple linking to the
homepage of a website. Though, it is quite unlikely that the Internet
user would think that there is any association, yet one has to be on the
outlook of trademark infringement through linking.
Framing
One can have a stronger case of trademark infringement on ground of

framing rather than linking. Z launches a website of news items.
However, instead of putting his own collection of news items, he puts
the links of a few leading newspapers like The Times of India, The
Economic Times, The Hindustan Times, The Hindu, The Statesman, etc.
If the Internet user clicks on one of the icons, instead of taking him to
the website of that particular newspaper, the contents of that
newspaper’s wesbite is dragged onto the main webpage of the Z’s
wesbite itself so that the user need not move anywhere else. The
problem is that such contents are framed within the webpage of Z
cutting off the newspaper’s advertisements and showing the
advertisements of Z only. This kind of activity is known as framing.
Again framing is more of an unfair competition issue. The companies

might get upset due to loss of revenue through advertisements. Also,
copyright issues are involved since the contents, user is browsing
through on a website has actually has pulled from some other website
though the user might not be even aware of it. There are also chances of
trademark infringement which strongly depends upon the way the
contents are framed. Generally, the framing site’s web address is on
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display which will confuse the users as to the origin/source of the

contents.
On February 20, 1997, a number of newspapers and periodicals filed suit

in the Southern District of New York against Total News, Inc., framing of
news. Total News is characterized in the suit as a “parasite Web site”
with little or no substantive content, but with considerable on-screen
advertising of itself and the products and services of its advertisers. The
user sees a menu consisting of third-party trademarks (Fox News,
MSNBC), the Total News trademark and URL, and some content from the
framed site. The site apparently also contains an advertisement from
the Total News advertiser, AT&T, with the opportunity to ‘click here’ and
get more advertising content from the AT&T Web site or other Total
News Web pages. The complaint alleges misappropriation, trademark
dilution and infringement, ‘willful copyright violation’ and other tortious
acts such as false advertising. In a single sentence, the plaintiffs
challenge the Total News practice: ‘Defendants have designed a
parasite Web site that republishes the news and editorial content of
others' Web sites in order to attract both advertisers and users.’ The
case was ultimately settled on the basis that Total News, Inc. would not
use framing and use only simple linking without use of logos, etc. of the
linking website. (See Mary M. Luria, Controlling Web Advertising:
Spamming, Linking, Framing, And Privacy, The Computer Lawyer, Vol.
14, No. 11; Pg. 10, November, 1997)
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GEOGRAPHICAL INDICATIONS
Governments have been protecting trade names and trademarks used in

relation to food products identified with a particular region since at least
the end of the nineteenth century, using laws against false trade
descriptions or passing off, which generally protect against suggestions
that a product has a certain origin, quality or association when it does
not. In such cases the consumer protection benefit is generally
considered to outweigh the limitation on competitive freedoms
represented by the grant of a monopoly of use over a geographical
indication.
In many countries the protection afforded to geographical indications

by law is similar to the protection afforded to trademarks, and in
particular, certification marks. Geographical indications law restricts the
use of the GI for the purpose of identifying a particular type of product,
unless the product or its constitute materials originate from a particular
area and/or meet certain standards. Sometimes these laws also stipulate
that the product must meet certain quality tests that are administered
by an association that owns the exclusive right to the use of the
indication. Although a GI is not strictly a type of trademark as it does not
serve to exclusively identify a specific commercial enterprise, there are
usually prohibitions against registration of a trademark which
constitutes a geographical indication. In countries that do not
specifically recognize GIs, regional trade associations may implement
them in terms of certification marks.
What are Geographical Indications?
Geographical Indications of Goods are defined as that aspect of

industrial property which refer to the geographical indication referring to
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a country or to a place situated therein as being the country or place of

origin of that product. Typically, such a name conveys an assurance of
quality and distinctiveness which is essentially attributable to the fact of
its origin in that defined geographical locality, region or country. Under
Articles 1 (2) and 10 of the Paris Convention for the Protection of
Industrial Property, geographical indications are covered as an element
of IPRs. They are also covered under Articles 22 to 24 of the Trade
Related Aspects of Intellectual Property Rights (TRIPS) Agreement,
which was part of the Agreements concluding the Uruguay Round of
GATT negotiations.
India, as a member of the World Trade Organization (WTO), enacted the

Geographical Indications of Goods (Registration & Protection)Act, 1999
has come into force with effect from 15th September 2003.
Geographical Indications: The concept
 GIs are essentially the DNA of Nature impregnated into the Mother
Earth – difficult to clone and beyond scientific calculation.
 GIs are about culture, geography, traditions, heritage and
traditional practices of people and countries.
Thus, putting it in simple words, GIs are any noun or adjective (need not
necessarily be a geographical name) that designates geographical
location and would tend to be regarded by buyers as descriptive of the
geographical location of origin of goods.
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Can geographical indications only be used for agricultural

products?
The use of geographical indications is not limited to agricultural

products. They may also highlight qualities of a product which are due to
human factors associated with the place of origin of the products, such
as specific manufacturing skills and traditions. That place of origin may
be a village or town, a region or a country. For example, “Bohemia” is
recognized as a geographical indication in many countries for specific
products made in the Czech Republic, in particular crystal ware.
What does a geographical indication do?
A geographical indication points to a specific place, or region of

production, that determines the characteristic qualities of the product
which originates from that place. It is important that the product derives
its qualities and reputation from that place. Since those qualities depend
on the place of production, a specific "link" exists between the products
and their original place of production.
Why do geographical indications need protection?
Geographical indications are understood by consumers to denote the

origin and the quality of products. Many of them have acquired valuable
reputations which, if not adequately protected, may be misrepresented
by dishonest commercial operators. False use of geographical
indications by unauthorized parties is detrimental to consumers and
legitimate producers. Consumers are deceived into believing that they
are buying a genuine product with specific qualities and characteristics,
when they are in fact getting an imitation. Legitimate producers are
deprived of valuable business and the established reputation of their
products is damaged.
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What is the benefit of registration of geographical indications?
It confers legal protection to Geographical Indications in India Prevents

unauthorised use of a Registered Geographical Indication by others. It
provides legal protection to Indian Geographical Indications, which in
turn boost exports. It promotes economic prosperity of producers of
goods produced in a geographical territory.
Who can apply for the registration of a geographical indication?
" Any association of persons, producers, organisation or authority

established by or under the law can apply:
" The applicant must represent the interest of the producers
" The application should be in writing in the prescribed form
" The application should be addressed to the Registrar of Geographical

Indications along with prescribed fee
Who is a registered proprietor of a geographical indication?
" Any association of persons, producers, organisation or authority

established by or under the law can be a registered proprietor.
" Their name should be entered in the Register of Geographical

Indication as registered proprietor for the Geographical Indication
applied for.
Who is an authorized user?
" A producer of goods can apply for registration as an authorized user

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" It must be in respect of a registered geographical indication
" He should apply in writing in the prescribed form along with

prescribed fee
Who is a producer in relation to a Geographical Indication?
The persons dealing with three categories of goods are covered under
the term Producer:
" Agricultural Goods includes the production, processing, trading or

dealing
" Natural Goods includes exploiting, trading or dealing
" Handicrafts or Industrial goods includes making, manufacturing,

trading or dealing.
Is a registration of a geographical indication compulsory and

how does it help the applicant?
" Registration is not compulsory
" Registration affords better legal protection to facilitate an action for

infringement
" The registered proprietor and authorized users can initiate

infringement actions
" The authorised users can exercise the exclusive right to use the
geographical indication.
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Who can use the registered geographical indication?
" An authorised user has the exclusive rights to the use of geographical
indication in relation to goods in respect of which it is registered.
How long the registration of Geographical Indication is valid?
The registration of a geographical indication is valid for a period of 10

years.
Can a Geographical Indication be renewed?
It can be renew from time to time for further period of 10 years each.
What is the effect if a Geographical Indication if it is not

renewed?
If a registered geographical indication is not renewed it is liable to be

removed from the register.
When is a registered Geographical Indication said to be

infringed?
" When an unauthorised user uses a geographical indication that

indicates or suggests that such goods originate in a geographical area
other than the true place of origin of such goods in a manner, which
mislead the public as to the geographical origin of such goods.
" When the use of geographical indication result in an unfair
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competition including passing off in respect of registered geographical

indication.
" When the use of another geographical indication results in false

representation to the public that goods originate in a territory in respect
of which a registered geographical indication relates.
Who can initiate an infringement action?
The registered proprietor or authorised users of a registered

geographical indication can initiate an infringement action.
Can a registered geographical indication be assigned,

transmitted, etc?
" No. A geographical indication is a public property belonging to the

producers of the concerned goods.
" It shall not be the subject matter of assignment, transmission,

licensing, pledge, mortgage or such other agreement
" However, when an authorised user dies, his right devolves on his
successor in title.
Can a registered geographical indication or a registered

authorised user be removed from the register?
Yes. The Appellate Board or the Registrar of Geographical Indications

has the power to remove the geographical indication or an authorised
user from the register. Further, on application by an aggrieved person
action can be taken.
109
What is the distinction Between Geographical Indications and

Trademark
Geographical indications have been protected under the Trademark law
in many national jurisdictions. Even though both the GIs and Trademark
are source identifiers, there are many differences between the two.
Whereas Trademark identifies the products with the manufacturer, the
GI identify products with the place of production or origin. Another
important difference is that the GIs are the community rights whereas
the trademark is individual right. As regards the use, the Trademark can
assigned as well as licensed, but a Geographical indication cannot be
assigned, transmitted or licensed.
A trademark is a sign used by an enterprise to distinguish its goods and
services from those of other enterprises. It gives its owner the right to
exclude others from using the trademark. A trademark will often consist
of a fanciful or arbitrary name or device. A geographical indication tells
consumers that a product is produced in a certain place and has certain
characteristics that are due to that place of production. It may be used
by all producers who make their products in the place designated by a
geographical indication and whose products share specified qualities.
Unlike a trademark, the name used as a geographical indication will
usually be predetermined by the name of the place of production.
What is a "generic" geographical indication?
If a geographical term is used as the common designation of a kind of

product, rather than an indication of the place of origin of that product,
then the term no longer functions as a geographical indication. Where
this has occurred in a certain country, then that country may refuse to
recognize or protect that term as a geographical indication. For
example, the term “cologne” now denotes a certain kind of perfumed
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toilet water, regardless of whether or not it was produced in the region

of Cologne.
Provisions of TRIPS
In 1994, when negotiations on the WTO Agreement on Trade-Related

Aspects of Intellectual Property Rights ("TRIPS") were concluded,
governments of all WTO member countries (151 countries As of August
2007) had agreed to set certain basic standards for the protection of GIs
in all member countries. There are, in effect, two basic obligations on
WTO member governments relating to GIs in the TRIPS agreement:
1. Article 22 of the TRIPS Agreement says that all

governments must provide legal opportunities in their own laws
for the owner of a GI registered in that country to prevent the use
of marks that mislead the public as to the geographical origin of
the good. This includes prevention of use of a geographical name
which although literally true "falsely represents" that the product
comes from somewhere else.
2. Article 23 of the TRIPS Agreement says that all
governments must provide the owners of GI the right, under their
laws, to prevent the use of a geographical indication identifying
wines not originating in the place indicated by the geographical
indication. This applieseven where the public is not being misled,
where there is no unfair competition and where the true origin of
the good is indicated or the geographical indication is
accompanied by expressions such as "kind", "type", "style",
"imitation" or the like. Similar protection must be given to
geographical indications identifying spirits.
111
Article 22 of TRIPS also says that governments may refuse to register a

trademark or may invalidate an existing trademark (if their legislation
permits or at the request of another government) if it misleads the
public as to the true origin of a good. Article 23 says governments may
refuse to register or may invalidate a trademark that conflicts with a
wine or spirits GI whether the trademark misleads or not.
Article 24 of TRIPS provides a number of exceptions to the protection

of geographical indications that are particularly relevant for
geographical indications for wines and spirits (Article 23). For example,
Members are not obliged to bring a geographical indication under
protection where it has become a generic term for describing the
product in question. Measures to implement these provisions should not
prejudice prior trademark rights that have been acquired in good faith;
and, under certain circumstances — including long-established use —
continued use of a geographical indication for wines or spirits may be
allowed on a scale and nature as before.
In the Doha Development Round of WTO negotiations, launched in

December 2001, WTO member governments are negotiating on the
creation of a 'multilateral register' of geographical indications.
Some governments participating in the negotiations (especially the

European Communities) wish to go further and negotiate the inclusion of
GIs on products other than wines and spirits under Article 23 of TRIPS.
These governments argue that extending Article 23 will increase the
protection of these marks in international trade. This is a controversial
proposal, however, that is opposed by other governments including the
United States who question the need to extend the stronger protection
of Article 23 to other products. They are concerned that Article 23
protection is greater than required, in most cases, to deliver the
consumer benefit that is the fundamental objective of GIs laws.
112
The Registration Process: Filing of application
Please check whether the indication comes within the ambit of the
definition of a Gl under section 2(1)(e).
The association of persons or producers or any organization or authority

should represent the interest of producers of the concerned goods and
should file an affidavit how the applicant claims to represent their
interest.
• Application must be made in triplicate.

• The application shall be signed by the applicant or his agent and
must be accompanied by a statement of case.
• Details of the special characteristics and how those standards are
maintained.
• Three certified copies of the map of the region to which the GI
relates.
• Details of the inspection structure if any to regulate the use of the
GI in the territory to which it relates.
• Give details of all the applicant together with address. If there is a
large number of producers a collective reference to all the
producers of the goods may be made in the application and the
G.I., If registered will be indicated accordingly in the register.
Please sent your application to the following address in India:
Geographical Indications Registry
Intellectual Property Office Building
Industrial Estate, G.S.T Road
Guindy, Chennai – 600 032
Ph: 044 – 22502091-93 & 98

113
Fax : 044 – 22502090
E-mail: gir-ipo@nic.in
Website : ipindia.gov.in
The applicant must have an address for service in India. Generally,

application can be filed by (1) a legal practitioner (2) a registered agent.
Geographical Indications: Procedural Overview
Any association of person, producers, organization or authority

established by or under the law can apply for a geographical indication
provided the applicant must represent the interests of the producers.
An application for registration of a Geographical Indication is to be made
in writing. along with fees and should be addressed to the “Registrar of
Geographical Indications”, The application should include the various
requirements and criteria for processing a geographical application as
specified herein below:
• The Class of goods;
• The Territory;
• The particulars of appearance;
• Particulars of producers;
• An affidavit of how the applicant claims to represent the interest in
the geographical indication;
• The standard bench mark or other characteristics of the
geographical indication;
• The particulars of special characteristics;
• Textual description of the proposed boundary;
• The growth attributes in relation to the G.I. pertinent to the
application;
• Certified copies of the map of the territory;
• Special human skill involved, if any;
114
• Number of producers; and

• Particulars of inspection structures, if any, to regulate the use of
geographical indication.
On receipt of the application, a number will be allotted. Thereafter, the
application would be examined to check whether it meets the
requirements of the Act and Rules. For this purpose the Registrar shall
ordinarily constitute a Consultative Group of experts to ascertain the
correctness of the particulars furnished. After issuance of the
Examination Report, submissions of the applicant would be considered.
If no further objection is raised, the application would be accepted and
would be advertised in the Geographical Indications Journal. An
opposition can be lodged within a maximum of four month from the date
of publication. If the opposition is dismissed, the application will proceed
to registration in Part A of the Register unless the Central Government
otherwise directs.
Opposition to Registration
• Any person can file a notice of opposition within three months

(extendable by another month on request which has to be
filed before three months) opposing the GI application
published in the Journal.
• The registrar shall serve a copy of the notice on the applicant.
• Within two months the applicant shall sent a copy of the

counterstatement.
• If he does not do this be shall be deemed to have abandoned his
application. Where the counter-statement has been filed, the
registrar shall serve a copy on the person giving the notice of
opposition.
• Thereafter, both sides will lead their respective evidences by way
of affidavit and supporting documents.
115
• A date for hearing of the case will be fixed thereafter.
Registration
• Where an application for a GI has been accepted, the registrar

shall register the geographical indication. If registered the date of
filing of the application shall be deemed to be the date of
registration.
• The registrar shall issue to the applicant a certificate with the seal
of the Geographical indications registry.
Renewal
A registered GI shall be valid for 10 years and can be renewed on

payment of renewal fee.
Additional protection to notified goods
Additional protection for notified goods is provided in the Act.
Appeal
Any person aggrieved by an order or decision may prefer an appeal to

the intellectual property appellate board (IPAB) within three months. The
address of the IPAB is as follows:
Intellectual Property Appellate Board
Annexe 1, 2 nd Floor, Guna Complex,
443, Anna Salai, Chennai – 600 018

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REGISTRATION DETAILS OF G.I APPLICATIONS

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1

TRADEMARKS& GEOGRAPHICAL INDICATIONS

S. No. Particulars Page Nos.

7. INFRINGEMENT UNDER THE ACT 28

10. TRADEMARKS ON THE INTERNET 43

11. GEOGRAPHICAL INDICATIONS 82

Trademark is a symbol that allows a purchaser to identify goods or

Trademarks help promote economic efficiency. If trademarks are not

Today the uniformity of quality of products in the marketplace is the

In a system wherein trademarks are allowed to be infringed, all may

there would be no incentive to distinguish one’s own goods and

Trademarks reduce the customer’s cost and agony of acquiring

Trademarks are universal phenomena. The legal systems of free market

The law of trademark is a branch of unfair competition or unfair trade

In giving protection to trademark, the law is imposing ethical and moral

by quality control and advertising in a trade symbol. Trademark

The logic underlying protection of trademarks seems to be the fairness

It is argued by many that trademarks actually create a barrier to entry

Trademarks are symbols representing essential element of the

“Trademarks, indeed, are the essence of competition because they

Trademark confers a ‘right to exclude’ – a limited exclusive right. In this

Trademark owners has a property right only in so far as is necessary to

As a “property right” marks can be alienated like any piece of property.

Trademark has no existence apart from the goodwill of the product or

Even though trademarks and goodwill are forms of non-physical

Trademark Infringement as Unjust Enrichment

A trademark that has attained consumer recognition has an inherent

Trademark law insures that the brand information received by

Historically, trademark law grew up as a branch of the tort of fraud and

A trademark not only symbolizes the goodwill behind the physical

Sometimes people confuse trademarks law because of ‘irrational’

PROCEDURE FOR REGISTRATION

Application for Registration

Essential Ingredients for registration:

(i) Any person

Any person includes individual, partnership firm, association of persons,

(ii) Claiming to be proprietor

A person may obtain proprietorship in a trademark either by use or by

(iii) Used or proposed to be used

would amount to registration in bad faith1, which is a serious form of

The grounds of opposition should be based upon the specific provisions

On receiving the notice of opposition, the Registrar is under obligation to

Subject to Section 19 the Registrar is under obligation to register the

REGISTRABILITY OF THE MARK AS TRADEMARK:

Under The Trademark Act, 1999, trademark is defined as to mean, inter

Absolute Grounds for Refusal of Registration under Section 9

be scandalous or obscene.17 The section 9 lays down the pre-requisites

Capability to Distinguish Section 9(1)(a)

In determining the capability to distinguish, the authority must take into

shown to possess the capability of distinguishing the goods to which it is

Indicating Nature or Characteristics under Section 9(1)(b)

Section 9(1)(b) lays down the other ground of disqualification of the

Any mark indicating the ‘quality’ of the goods or services is the

Indications of quantity or standard weights or measures or numbers of

Words describing intended purpose or the primary functions of the

Similarly words indicating value or worth of any product are incapable

Marks indicative of place of manufacture or sale of goods or time of

Marks common to trade Section 9(1)(c)

Section 9(1)(c) prohibits the registration of marks that consists

Proviso to Section 9(1)

Other Relevant English cases on this point are given as under:

Marks deceiving the public or cause confusion: Section 9 (2)(a)

Section 9(2)(a) is intended to apply where the deception or confusion

Trademarks & GIs

Trademarks & GIs