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Infringement of trademarks
Applicability in internet operations


Submitted by




1 Introduction

2 Objective

3 Methodology

4 What is a Trademark and Passing-Off?

5 Trade Marks in India and remedies for
6 Domain Names v. Trademarks

Cyber-Squatting a violation in the
7 protection of the consumer rights an
infringement of Trademark
8 Conclusion



Trademarks are signs which distinguish the goods of one enterprise to another or it is
generic symbol for the representation of the products which are introduced by the
entrepreneurs to sell their products and provide services. A consumer is duped if he
buys a commodity presuming it to have originated from certain identified source when
actually it is not and later he finds the commodity substandard. In the process the
reputation of the traders suffers if spurious goods are goods are sold as those originating
from him. The interests of both the consumer and the trader can be saved if some
definite symbol which marks out the origin of goods from a definite trade source is
attached with the goods emanating from such source. Such symbol is called a trade
mark. A trade mark is a visual representation attached to goods for the purpose of
indicating the trade origin. A mark includes a device, brand, heading, label, ticket,
name, signature, word, letter, shape of goods, packaging or combination of colours or
any combination.

Infringement of Trade marks
Infringement of trademark occurs if a person other than the registered proprietor in the
course of trade, in relation to the same goods or services for which the mark is
registered, uses the same mark or deceptively similar mark.
The taking of any essential feature of a mark or taking the whole of the mark and then
making a few additions and alterations would constitute infringement, the infringing
mark must be used in the course of trade i.e., in the regular trade wherein the proprietor
of the mark is engaged, The use of infringing mark must be printed or usual
representation of the mark in advertisements, invoices or bills, any oral use of trade
mark is not infringement. Any use of all the above acts would constitute the
infringement. There are various forms of infringement in the context internet
trademarks. Using the names of the most important person for their domain names



The objective of this compilation of this project is to know about the trademarks

1) To know the various forms of Trademarks

2) To know the passing off of a goods takes place

3) To know how the infringers violate the trademarks rules and uses the good will
of the other companies and the conflicts of the domain names and the
trademarks in the internet.

4) Violation of the trade marks in the internet perspective and in India and use of
domain names.



In this project we are going to discuss about various use of trademarks how they are
violated by the various product sellers in place of the goodwill companies and we shall
discuss in detail about the different types of trademarks and their infringements and use
of trademarks in day to day life in the internet and also the cyber squatting
Where the names of the great personalities are used to promote their products in order to
gain traffic to their website and increase their ratings.
There are various functions of a trademark.
1. It identifies the product and its origin, 2.It guarantees its qualities .3. It advertises the
product, it represents the product. 4. It creates an image of the product in the minds of
the public particularly consumers or the prospective consumers of such goods. The
mark ‘M’ which stands for the food items originating from the American fast food chain
MACDONALD creates an image and reputation for food items offered by it for sale in
the market
Emergence of Trade mark law:
The marks associated with goods come to acquire a reputation and good will round
them, before the enactment of the Trade Mark law, the trademarks used to be called
common law marks. The common law marks could not be registered as there was no
law under which it could be done.
The owner of a common Law mark had to protect his mark against acts of infringement
or passing off of his mark by initiating Common Law proceedings such proceedings had
to be set in motion each time an infringement occurred. And also such proceeding has
been launched only when the infringer already used the trade marks. Then the
enactment of the Trade and Merchandise Marks Act, 1958 in India brought into the
system of recognition to proprietorship of Trademarks and defined the rights conferred


by such recognition and prescribed remedies in respect of infringement of those rights
conferred by such registration and prescribed remedies this Act is now replaced by
Trade Marks Act.1999 (47 of 1999) came into force.

What is a trade mark and Passing off?
Every intelligent consumer purchases his goods or hires services from the commercial
Market only when he is satisfied that the goods or services from the commercial market
only when he is satisfied that the goods or services are of good quality and reputation.
The manufacturer, or the supplier of goods produced by him are similar to those
manufactured by others, their distinguishing are different. This with the view to
identifying the manufacturer, brand quality of the goods and services produced by a
particular maker of the company. It is the context that ‘trademarks’ play a very
important role in the modern commercial market. The importance of trademarks was
recognized only after the industrial revolution which enabled large scale production and
distribution of the goods and publicity through printing media, therefore trademark is
essentially a product of competitive economy where more than one person competed for
the manufacture of the same product which necessitated the marking of each
manufacturers goods by a symbol which distinguishes similar goods made by others.
The concept of property arising out of a trademark was first recognised at common law
before it was subject matter of any enactment .The use of distinctive marks on goods
which the manufacturers have made in an ancient trade practice, but the recognition of
the same in a law as a species of incorporeal was done by Lord Cotenhan, Chancellor,
In Millington Vs. Fox 12
What is a Trademark?
A ‘trade mark’ means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and
may include shape of the goods or services of one person from those of others and may
include the shape of the goods, their packaging and combination of the colours ,
‘Mark’ includes a device, brand, heading, label, ticket, name, signature, word letter,
numeral, shape of goods, packaging or combination of colours or any combination


thereof, this meaning is simple and not so exhaustive thereof and there is practicality of
the limit for the various types of marks.

2⋅ 40 ER 956( Dr. GB Reddys intellectual property Rights )

A trade mark is a symbol which is applied or attached to goods offered for sale in the market, so as
to distinguish them from similar goods and to identify them with a.
particular trader or with his successor as the owner of a particular business, as being made, worked
upon, imported, selected, certified or sold by him or them or other
This has been properly registered under the Acts as the Trademarks of a particular trader. It is a
symbol consisting in general of picture, Label, word or words, which is applied or attached to
traders’ goods.
A party acquires exclusive rights to protect its mark by virtue of priority in adoption. Long
continues and exclusive user and any subsequent user of the deceptively similar mark or trade mark
which is of confusing nature on account of sound and look is guilty of infringement of the right of
the prior user of the mark as his obvious motive is to trade and encash upon the good will and
reputation of the prior user. Reputation or Good will is not established in a day. It is gained over the
years and at the huge costs of advertisement.

The definition of the trademark is very wide and means, interalia, a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one person
from those of others. Mark includes amongst other things name or word.

Trade mark is essentially adopted to advertise one’s products and to make it known to the
purchaser. It attempts to portray the nature and, if possible, the quantity of the product and over a
period of time the mark may become popular. It is usually at this stage that the other people get
tempted to pass off their products as that of the original owner of the mark.

The following features can be deduced from various judicial decisions with regard to the nature
and essential features of ‘trademarks’
1) Trade mark is a kind of property and is entitled to the production under the law, irrespective of
its value

The Domain Name System (DNS) helps users to find their way around the Internet. Every
computer on the Internet has a unique address - just like a telephone number - which is a rather
complicated string of numbers. It is called its "IP address" (IP stands for "Internet Protocol"). IP
Addresses are hard to remember. The DNS makes using the Internet easier by allowing a familiar
string of letters (the "domain name") to be used instead of the arcane IP address.
When a domain name is being registered, it means inserting an entry into a directory of all the
Domain names and their corresponding computers on the Internet.
Domain names ending with .aero, .biz, .com, .coop, .info, .museum, .name, .net, .org, or .pro can be
registered through many different companies (known as "registrars") that compete with one another.
A listing of these companies appears in the Registrar Directory. The registrar one chooses will ask
one to provide various contact and technical information that
Makes up the registration. The registrar will then keep records of the contact information and
Submit the technical information to a central directory known as the "registry." This registry
Provides other computers on the Internet the information necessary to send e-mail or to find the
specified web site. A registration contract has to be entered with the registrar, which sets forth the
terms under which the registration is accepted and will be maintained. Each registrar has the
flexibility to offer initial and renewal registrations in one-year increments, with a total registration
period limit of ten years.
Each registrar sets the price it charges for registering names, and prices vary significantly among
different registrars. In addition, some registrars offer discounted or free registration services in
connection with other offerings, such as web hosting.
All ICANN-accredited registrars follow a uniform dispute resolution policy. Under that policy,
disputes over entitlement to a domain-name registration are ordinarily resolved by court litigation
between the parties claiming rights to the registration. Once the court rules who is entitled to the
registration, the registrar will implement that ruling. In disputes arising from registrations allegedly
made abusively (such as "cyber squatting" and cyber piracy"), the uniform policy provides an
expedited administrative procedure to allow the dispute to be resolved without the cost and delays
often encountered in court litigation. In these cases, one can invoke
the administrative procedure by filing a complaint with one of the dispute-resolution service

Acquisition of Trademark or Trade name:-
Ordinarily, the right to a trademark or trade name is acquired originally by its appropriation and
use as such. The mere adoption of a mark without bona fide use, in an attempt to reserve it for the
future, does not create trademark rights. Trademark or service mark ownership is not acquired by
federal or state registration; rather, ownership rights flow only from the prior appropriation and
actual use in the market

Inasmuch as a trademark does not exist apart from the article or goods on which it has been used
there must have been an initial use of the mark on goods, or use of the name in the actual conduct of
the business, before there can be any wrong done to the one claiming the exclusive right to the use
of the mark or name. A party establishes a common law right to a trademark only by demonstrating
that its use of the mark was deliberate and continuous, not sporadic, casual or transitory. The name
or mark must have become associated in the public mind with the producer or owner of the goods to
which it is applied however, evidence of actual sales is not necessary to establish ownership of a
trademark. As long as there is a genuine use of the trademark in commerce, ownership may be
established even if the first uses are not extensive and
do not result in deep market penetration or widespread recognition

American Jurisprudence, Second Edition Database updated May 2009Trademarks and Trade names John Kimpflen,

A party establishes a common law right to a trademark only by demonstrating that its use of the
mark was deliberate and continuous, not sporadic, casual or transitory. The name or mark must have
become associated in the public mind with the producer or owner of the goods to which it is
applied. However, evidence of actual sales is not necessary to establish ownership of a trademark.
As long as there is a genuine use of the trademark in commerce, ownership may be established even
if the first uses are not extensive and do not result in deep market penetration or widespread

The mere advertising and documentary use of a notation apart from the goods do not constitute
technical trademark use. However, there is also contrary authority holding that, at common law, the
use of a trade name may be established by its appearance on signs, documents employed in
conducting business, mail solicitations, or advertising.



Described use of "Garden of Life" mark by California business that manufactured and sold
home sprout-growing products and health food products and held seminars and clinics was not
sufficient to establish "continuous use" of mark and confer common law trademark protection;
business's sales were admittedly sporadic, no description was offered as to frequency or extent of
product sales or seminars, and declaration testimony was unsubstantiated by documentary evidence.
Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946 (C.D. Cal. 2004),
Competitor did not "use" trademark "," for Lanham Act purposes, by using
trademark as keyword to prompt competitor's appearance as sponsored link in internet search
engine or by including trademark in competitor's website's met tag, where link to competitor's
website appeared both within search results screen and immediately proximate to search results
screen upon request for trademark owner's website, competitor did not place trademark on any
product, good, or service, and trademark was not used in any way that would indicate source or
origin., Inc. v., Inc., 493 F. Supp. 2d 545 (E.D. N.Y. 2007).

To establish the right to trademark protection under the Lanham Act, a plaintiff must show
that it has actually used the designation at issue as a trademark; thus, the designation or
phrase must be used to perform the trademark function of identifying the source of the
merchandise to the customers. Micro Strategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th Cir.

Service marks and trademarks are governed by identical standards, and thus, as with
trademarks, common law rights are acquired in a service mark by adopting and using the
mark in connection with services rendered.

A designation is "used" as a trademark, trade name, collective trademark, or certification
mark when the designation is displayed or otherwise made known to prospective purchasers
in the ordinary course of business in a manner that associates the designation with the goods,
services, or business of the user.

The purpose of a trademark is to help consumers identify the source, but a mark cannot
serve a source-identifying function if the public has never seen the mark and thus is not
meritorious of trademark protection until it is used in public in a manner that creates an
association among consumers between the mark and the mark's owner.
.Even though a word, name, symbol, device, or a combination of words comprising a slogan
may be used in the sale or advertising of services, or on or in connection with goods, it is not
protectable as a trademark unless it is used as a mark.

Common-law trademark rights cannot be established by advertising alone Passing off:-
Generally, no person is entitled to institute any proceedings to prevent, or to recover
damages for the infringement of an unregistered trademark However the trademarks Act,
1999, while recognising the above principle, provides that nothing in the Act shall be
deemed to affect the rights of action

against any person for passing-off the goods or services, as the goods of another
person, as services provided by another person, or the remedies in respect thereof In
other words, even in respect of a unregistered trademark also, the proprietor may
initiate passing of action against those who try to pass of their goods or services as
those of the proprietor of the unregistered trademark, this is common law remedy,
Provided under the law of Torts.
The basis for a passing action is false representation , passing is said to be a species of unfair
trading by which one person through deception, attempts to obtain an economic benefit of the
reputation which another has established for himself in a particular trade or the business, The action
is regarded as action for deceit.

The three elements of the passing off are;-

1) Reputation of the goods

2) Possibility of deception

3) Likelihood of damages to the plaintiff

Generally the following methods are adopted by the persons for representing their goods or
business as the goods/business of another person:-

1) Direct false representation;

2) Adoption of trademark which is the same or colourable imitation of the trademark of the
rival traders;
3) Adoption of an essential part of the rival traders name :

Distinction Between passing –off and infringement of a trademark

Issue in an infringement action is quite different from the issue in passing-off action. The action for
infringement is a statutory right. It is dependent upon the validity of the registration and subject to
other restrictions laid down in the act; on the other hand, the gist of passing off action is that “A” is
not entitled to represent his goods as the goods of “B”. But it is not necessary for B to prove that a
did this knowingly or with intent to deceive
The Supreme court, has distinguished between an action for passing-off and infringement thus :-
1) An action for passing –off is a common law remedy, being in substance an action for deceit.
On the other hand, the action for infringement is a statutory remedy conferred on the
registered proprietor of a trademark.
2) The use of trade mark of plaintiff by the defendant is non essential in an action for passing –
off but it is a sine qua non in the case of an infringement action.
3) In an action for infringement, the plaintiff must make out that the use of the defendants mark
is likely to deceive but in case of a passing –off, the defendant may escape the liability if he
can show that the added matter is sufficient to distinguish his goods.
Test to determine deception or confusion in an action for passing-off
In the English case which is under can determine the test of deception ,
Case law 1
Erven Warnink vs. Towned,
Which is known as the advocate case the essential characteristics which must represent in order to
create a valid cause of action for passing off, as stated by the Lord diplock are :-
1) Misrepresentation
2) Made by person in the course of trade ;
3) To prospective customers of his or ultimate consumers of goods or services supplied by
him ;
4) Which is calculated to injure the business or good will of another trader; and
5) Which causes actual damage to a business or good-will of the trader by whom the action
for is brought; etc.
Criminal law
In number of countries, a trademark infringement is, at the same time, a criminal offence obtain Big
Macs from Burger king Outlets
Case law 2
In the case of
McDonald’s ham burgers limited v. Burger King (UK) limited :-
Burger king attacked McDonalds in a poster campaign featuring a Burger king ‘whopper’ above the
head line ‘It’s not just Big, Mac. You know when you got a whopper Mc Donald’s was successful
in establishing passing off after producing the evidence that a number of those who saw the poster
believed that they could.

Trade Marks in India and Remedies for Infringement :-
The Trade and Merchandise Marks Act, 1958 for the first time codified the law relating to
trademarks and provided for registration of trademarks already in use and even those proposed to be
used, since 1958 it was amended several times, in the view of the developments in trading and
commercial practices, increasing globalisation and trade and industry, the need to encourage the
investments flows and transfer of technology and the need to simplify and harmonise trademark
management systems, it has been considered, by the parliament necessary to bring out a
comprehensive legislation on the subject Accordingly the trade marks Act, 1999 was passed to
replace the Act of 1958.
To achieve these purposes, the present act proposed to incorporate inter alia the following,
namely :-
a) Providing for registration of trademarks for services in addition to the goods. This is a novel
feature introduced by the Act of 1999.
b) Registration of trademarks, which are imitation of well known trademarks, not to be
permitted, besides enlarging the grounds for refusal of registration consequently, the
provisions for defensive registration of trademarks have been proposed to be omitted.
c) Amplification of factors to be considered for defining a well known trademark.
d) Doing away with the system of maintaining registration of trademark
e) Simplifying the procedure for registration
f) Providing for an appellate board for speedy disposal of appeals and rectification applications
which under the Act of 1958, lay to the High Court.
g) Providing the enhanced punishments for the offences to the trademarks on par with the
present Copyright Act, 1957, to prevent the sale of the spurious goods:
h) Prohibiting the use of someone else’s trade mark as part of corporate names, or name of
business concern;

Rights conferred By Registration of Trade marks
Registration of a trade mark confers many rights on the proprietor of the trade mark Chapter IV of
the trade marks Act,-1999 deals with the effect of registration it may be seen that the rights
conferred are not absolute. They are subject to the other provisions of the Act and, to any conditions
and limitations to which the registration is subject

Section 28 of the act deals with the rights conferred by registration
(i) The exclusive rights to use of the trademark in relation to the goods or services in
respect of which the trade mark is registered.
(ii) The right to obtain relief in respect of infringement of the trademark.
In addition to and apart from the premier right to use the trade mark exclusively, the
proprietor of a trademark also has the right to file a suit for infringement of his right and
he can obtain the reliefs in the nature of
(i) Injunctions, temporary or permanent
(ii) Damages ; and
(iii) Account of profits;
So let us in this diagram the procedure how a trademark is registered

Remedies for Infringement of Trademarks
Whenever a trademark is infringed, in order to protect it, the following remedies can be restored
to :-
1) Civil remedies
2) Criminal remedies
3) Administrative Remedies
For the purpose of infringement of an unregistered trade-mark, the common Law remedy of
passing-off action can be invoked.
1. Civil remedies: - whenever a registered trade mark is violated or infringed, to the detriment
of its proprietor or user, the aggrieved person can make use of the remedies available in a
civil court, The most common remedy for infringement of a registered trade mark is to file a
suit in a civil court, to restrain the defendants using the registered trade-mark of the
Essentials of infringement
In order to constitute infringement of a trade mark the following elements must be present.
(i) Using a registered trade mark by a person other than its registered proprietor or
registered user.
(ii) Using either the whole of the registered trademark or the adopted one by making a few
additions and alterations;
(iii) Using such infringing mark in relation to the regular trade of the registered proprietor or
user :
(iv) The infringing trademark is identical or similar to the trade-mark already registered.
(v) The likelihood of causing confusion on the part of the public; and
(vi) Advertising of the trademark registered, as if it is owned by the unauthorised user etc.,

Different forms of infringement :-
The infringement of a trademark may take different forms. It may be using of marks identical or
similar to trademarks, by unauthorised persons, in relation to the similar or same trade. Using the
similar marks.
(i) Using a deceptively similar mark: - A person may use a mark which is deceptively
similar to a registered trade mark and that act itself amounts to infringement. The
deception or the confusion may be
a) As to goods or services themselves :- Here a person may buy the goods seeing one
mark thinking that it is the brand, which is in his mind
b) As to the trade origin :- Here a person looking at a mark may buy the goods thinking
that it is coming from the source as the some other goods bearing a similar mark with
which he is familiar.
c) As to the trade connection :- Here a person looking at the mark may not think that it
is the same as open with a different brand in his mind
Persons entitled to sue for infringement:- The plaintiff in a suit for infringement may be either
(i) The registered proprietor of the trademark or his legal successor
(ii) The registered user of a trademark; or
(iii) An applicant for registration of a trademark; or
(iv) Any one of the joint proprietors of the trademark; or
(v) A foreign proprietor of a trademark registered in India when infringement occurs in
Persons liable to be sued :- In an infringement action the persons who become liable to be sued are:-
(i) The infringer himself; or
(ii) The master responsible for his servant’s acts of infringement; or
(iii) The agents of an infringer; or
(iv) The Directors and promoters of a limited company if they have personally committed or
directed the infringing acts.
Quia Timet Action:-When, a registered proprietor registered or registered user of a TM apprehends
that the defendant who has taken certain steps in the direction who has taken certain steps in the
direction of using a similar TM, this remedy is known as Quia Timet action. The Delhi high court
has recently explained the rationale for grant for grant of such action in Mars Incorporated vs.
.Kumar Krishna Mukarjee.
Quia Timet Action is actually a Latin word which means to apprehend
In legal terminology it has been defined in the Osborne Conscience dictionary an action by which a
person may obtain an injunction to prevent or restrain some threatened act being done which, if
done, would cause him the substantial damage .and for which money would be no adequate or
sufficient remedy.

Relief that can be sought :-
In an infringement action, the plaintiff may seek any of the following relief’s-
(i) An Injunction restraining further use of the infringing mark;
(ii) Damages on accounts of profits;
(iii) An order for delivery-up of infringing labels and marks for destruction or erasure.
The injunction which may be sought includes the –
a) Anton Pillar Order ;
b) Mareva Injunction ;
c) Interloculatory injunction:;
d) Perpetual Injunction
Anton Pillar injunction order, which is an ex-parte order to inspect the defendant’s premise
without notice, where there is a possibility of the defendant’s premise without notice, where
there is a possibility of the defendant destroying or disposing of the incriminating material. Such
an order is for inspection of the premises of the defendant.
In order for Mareva Injunction, the court has power freeze defendant’s assets, where there
exists a probability of the assets being dissipated or cancelled so as to make a judgement against
him worthless and un-forceable, this remedy is similar to the Interloculatory order to attach
property before judgement under code of civil procedure, 1908..
There are some Administrative Remedies:- Apart from the civil remedies aforementioned, the
act also vests certain powers in various administrative authorities to grant relief ‘s and remedies
to the aggrieved persons
Intellectual Property Appellate board:-
The board has appellate jurisdiction to hear appeals from the orders or decisions of the
Registrar, to the exclusion of other courts. The board is not bound by the procedure laid down
under civil procedure code but it shall be guided by the principles of the natural justice. For the
purpose of discharging its functions under the Act, it shall have the powers of a civil court while
trying a suit in respect of the following matters ;
a) Receiving evidence ;
b) Issuing commissions for examination of witnesses;
c) Requisitioning any public record; and
d) Any other matter which may be prescribed.
Criminal Remedies
The trademarks Act, 1999 provides for a comprehensive scheme whereby those persons who
unauthorised deal with trademarks can be punished for various offences
The punishments for these offences include a minimum imprisonment of six months and minimum
fine of Rs.50,000 which may extend to a maximum of 3 years and Rs.2,00,000/- respectively.

Domain Name V. Trade marks
Before going into the Domain name aspects we shall deal with internet and its popularity.
Trademarks are usually infringed in the Internet because, so let us know what is a internet , in the
Internet, trademark has no jurisdiction by the very nature of the construct
What is Internet?
The internet is a system of computers created by a open standard for communication between
different computers
The basic protocol is called as the TCP/IP which stands for ‘transmission Control protocol’/Internet
Why sell goods services on the web?
.Increased revenues from a new customer base .Lower sales and customer service costs from the use
of on-line catalogue technology strengthened customer loyalty and deepened relationships by better
use of customer choice and preference information through online selling system
Faster time to market
Online delivery of consumer and commercial information, services such as legal information,
insurance and banking and other digital goods and avoiding loss of market share to competitors’
potential customers.
Market surveys consistently show that internet users are better educated and higher incomes than
the population at large
What sells on the web
The world’s most successful online directory. Yahoo Inc ., has published the following information
Computer Software & Games 18 %
Books 14%
Music 11 %
Computer Hardware 7%
Clothes and shoes 6%
Concert and events 6%
Travel Services 7%
Groceries 4%
Types of web advertising
Advertising may appear on the pop up window that present a ‘minisite to the user’. another type of
advertisement is that the ‘intercitel’ advertisements that appear momentarily as you click from one
site to another
New legal issues arising from the web advertising
Spamming – This is the practise of emailing advertising messages far and wide, in the worst cases
inducing the recipient to read the mail and induces you to buy the products and at last gives you the
bogus address and deviates you
Abuse of the metatags = metatags are stores of information usually not available for the viewer
some people take this information and stop the information to be viewed in the search engines at the
priority list

Domain name grabbing
In various countries it is considered as the unfair competition law is violated if a person uses the
trade mark of others
Trade mark V. domain name
In the introduction , it was pointed out that domain names, unlike trademarks are not granted in
formal proceedings and that, at least in the past, no checks in the for prior conflicting trademarks .
It is therefore not surprising that the conflicts between domain names were performed. Even in the
absence of the bad faith, the registration may violate the rights of the trademark , The majority of
the owners are considered to be this type of conflict Hyper links and framing have given rise to
disputes involving unfair competition copyright and trade mark infringement
Other potential issues could include liability for the content of the site that the advertisers is linked
The integration of metatags which are used to generate ‘hits’ in popular search engines has led to
several misleading advertising and trademarks disputes in the US . the American bar association
has issued guidelines for web link agreements
Domain name V. domain name
The owner of a website does not necessarily use as its domain name a word which is registered a as
a trademark. For example, a law firm named ‘alpha beta & Partners’ could register the domain
name ‘’ the word alpha law is nor protected otherwise therefore another competitor will
have alpha lawyers .com as their website therefore it is confusing , in any event the owner of a
domain name would be well advised to have this name registered as a trademark.
Recent case states that the Bangalore based industrialist SM Krishna when he became the President
of the Karnataka congress, one of his associates wanted him to launch a website in his name but a
canny businessman has got the domain name registered. Krishna who was
Karnataka’s chief minister and later governor of Maharashtra, kept asking him to part with the
domain. But the businessman clung to the charming name, though he did not use it.
Case law 3
Harrods limited v.UK network services Limited &others ,
The dependents company is a big departmental store and used this for the network and the domain
name was used by the other networking company and later the Harrods company was granted the
injunction in this case
In various the adverting the company’s products are governed by the Advertisement authorities.
Case Law 4
Marks and Spencer PLC Vs. one in a million, 1998 FSR 265.
It was held that any person who deliberately registers a domain name on account of its similarity to
the name, brand name or trademark of an unconnected commercial organisation must except to find
himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction
will be in terms which will make the name commercially useless to the dealer. It was held in that
decision that the name commercially useless to the dealer. I was held in that decision that the name
marks and Spencer could not have chosen for any other reason that it was associated with the well
known retailing group. The decision further goes on to say that the value of the
Name consists solely in its resemblance to the name of trademark of another enterprise. The court
will normally assume that the public is likely to be deceived, for why else would the defendants
choose it? It was also stated that someone seeking or coming upon a website called http:/Marks and
Spencer. Co UK would naturally assume that it was that of the plaintiffs.

Indian Internet cases
Case Law 5
In Yahoo, inc Vs. Akash Arora ,1999 PTC (19) 201
The plaintiff used the trade mark “Yahoo” for their internet domain name both the parties covered
the common field of operation. The court found that both the trade marks were almost similar
excepting the use of suffix “India” and accordingly restrained the dependents form using the trade
name “yahoo India”.

Case law 6
Rediff Communications Ltd vs.Cyberbooth.AIR 2000 Bom.27
The court restrained the defendant from using the domain name “radiff” which was
sought to be passed-off as the trade mark “Rediff” for the plaintiffs.

The supreme court of India has dealt with an important issue relating to internet domain names and
their protection under the Trade Marks Act, 1999 recently in.
Case Law 7
Satyam Infoway Ltd. Vs. Sifynet Solutions (P) Ltd.(2004) 19 ILD 30 (SC)
The court emphatically held that a domain name can be said to be word or name which is capable of
distinguishing the subject to trade or service made available to potential users on the Internet,
thereby affirming the views of various decisions of the high court’s in India. In the Instant case M/s
Satyam Infoway Ltd. Which was incorporated in 1995 and which registered several domain names
like www.sifynet,, etc in June 1999 with the
internationally recognized registrars, via, the Internet corporation for Assigned names and numbers
(ICANN) and the WIPO, challenged the action of the respondents in carrying on business of
internet marketing under the domain names, and form 5th June,
The court finally held that the respondents in were guilty of ‘passing off’ as there was close visual
similarity between ‘sify’ and ‘siffy’ as well as phonetic similarity between the two names.

Cyber-Squatting a violation in the protection of the consumer
rights an infringement of Trademark:
Before going into the aspects of the infringement of the traded mark we deal with the

What is a cyber squatting?
These types of cases has been resolved in the courts where there is a completely exploitive intention
of registering names in order to extract gains from firms or entities the registration of names of
celebrities like Julia Roberts, Madonna, Daler Mahendi have been resolved in favour of the
There are other operators who do not extract money but used popular names to have more traffic to
their sites.

In the latest case law we can observe the how a trademark has been violated by the by use of
Michael Jackson name in the Internet domain names and this is also called the cyber squatting.

Case Law 8
Michael J. Jackson v.HEAL THE WORLD FOUNDATION, a California
corporation; CV 09 07084.September 29, 2009
Facts of the case

This is a case for clear violations of the trademarks and the anti- cyber-squatting where there
Complaint for: Trademarks (MJ); and (7) Violations of the AntiCybersquatting Consumer
Protection Act,
For their COMPLAINT herein, Plaintiffs allege:
This is an action for trademark infringement, unfair competition and false designation of origin
arising under the Trademark Act of 1946, (the “Lanham Act”); for violations of the Anti cybers
squatting Consumer Protection Act, (“ACPA“); and for trademark infringement, unfair competition,
and violation of the right of publicity under the laws of the State of California. This Court has
personal jurisdiction over Defendants in that they do business and/or reside in the State of
California. Upon information and belief, Defendant United Fleet (“United Fleet”) is a corporation,
organized and existing under the laws of the State of California and this judicial district, having an
address and/or conducting and transacting business at the address 41605 Goodrich St., Indio,
California 92203. United Fleet was formed on June 25, 2008. A true and correct copy of the
Articles of Incorporation for United Fleet is attached hereto and incorporated herein as Exhibit E.
Melissa Johnson, president of HTWF, is HTWF's registered agent for service of process. Melissa
Johnson is also United Fleet's registered agent for service of process. The true names and capacities,
whether individual, corporate, associate, or otherwise, of defendants sued herein as Does 1 through
10, are unknown to Plaintiffs, which sues said defendants by such fictitious names (the “Doe
Defendants”). If necessary, Plaintiffs will seek leave of Court to amend this complaint to state their
true names and capacities when the same have been ascertained. Plaintiffs are informed and believe
and on that basis aver that the Doe Defendants are liable to Plaintiffs as a result of their
participation in all or some of the acts hereinafter set forth. The parties identified in paragraphs 7, 9
and 12 are hereinafter collectively referred to as “Defendants.” Upon information and belief, each
Defendant is, and at all times mentioned herein was, an agent, employee, principal and/or co-
venturer of the other Defendants herein; that each Defendant acted within the course and scope and
authority of said relationships; and that as a result, Defendants are jointly and severally liable for
the acts alleged herein. Michael Jackson was one of the most commercially successful entertainers
of all time prior to his untimely death on June 25, 2009. After making his debut as a member of The
Jackson 5, he embarked on a highly successful solo career that continued for over three and a half
decades. His 1982 album “Thriller” remains the best-selling album of all time, and his subsequent
albums have similarly been successful. As a result of his talent and remarkable success, Mr. Jackson
came to be known as the “King of Pop.” Mr. Jackson acquired this nickname when actress and
friend Elizabeth Taylor presented Mr. Jackson with an “Artist of the Decade” award at the 1989
Soul Train Awards, proclaiming him “the true king of pop, rock and soul”. Since that time, major
media outlets and Mr. Jackson himself have marketed Mr. Jackson as the “King of Pop.” In 2008, in
celebration of Mr. Jackson's 50th birthday, a compilation album, entitled “King of Pop” was
released. Currently the album has reached the top ten in the majority of countries in which it was
released. In addition to his success as a musician and performer, Mr. Jackson was also a notable
philanthropist and humanitarian who donated and raised millions of dollars through the support of
dozens of charities and his own Heal the World Foundation (“Jackson's Foundation”).Mr. Jackson
founded the Heal the World Foundation in 1992, naming it after his hit song, “Heal the World,”
which he both wrote and composed. The song reached #2 in the UK Singles Chart in December
1992, and reached #27 on the Billboard Hot 100. In a 2001 Internet chat with fans, Jackson said
“Heal the World” is the song he is most proud to have created. The song was so identified with Mr.
Jackson that it was performed as the closing to Mr. Jackson's memorial service at the Staples Center
in Los Angeles on July 7, 2009. An ensemble of performers, including members of Mr. Jackson's
family, paid tribute to Mr. Jackson by singing this song. Mr. Jackson's memorial service was
viewed live by millions around the world, and millions more have since watched the memorial
service, including the performance of “Heal the World.”The purpose of Jackson's Foundation was
to provide medicine to children and fight world hunger, homelessness, child exploitation and abuse.
Mr. Jackson raised millions of dollars for his Heal the World Foundation by aggressively
publicizing the Jackson's Foundation and its goals. For example, all profits from “The Dangerous
World Tour,” during which Mr. Jackson performed concerts for millions of people around the
world, were donated to Jackson's Foundation. While Jackson's Foundation is no longer active, as a
result of its worldwide success in raising awareness and money for children's causes, “Heal the
World” is a phrase that continues to invoke Mr. Jackson, Mr. Jackson's Heal the World charity,
song, and commitment to improving the lives of children around the world.
Jackson's Foundation, a non-profit corporation, registered the word mark HEAL THE WORLD, and
its associated design, a child's hands holding a globe with a band-aid on it (the “Logo”), on October
25, 1994 and September 19, 1995, U.S. Trademark Registration Nos. 1,860,559 and 1,920,720,
respectively. In addition, the typed drawing HEAL THE WORLD, was registered on February 8,
1994, U.S. Trademark Registration No. 1,820,329. True and correct copies of the U.S. Patent and
Trademark Office Certificate of Registration Nos. 1,860,559, 1,920,720 and 1,820,329 are attached
hereto and incorporated herein as Exhibit F. Despite the fact that these trademark registrations were
cancelled in 2001 and 2002, as a result of the success of the “Heal the World” song, and the extent
to which the works of Jackson's Foundation were well-known and publicized throughout the world,
HEAL THE WORLD and its Logo, continue to be connected to Mr. Jackson.
Plaintiff Triumph is the owner of the registered mark MICHAEL JACKSON, U.S. Exhibit H.
Triumph is also the owner of U.S. Trademark Application Serial Nos. 77,806,397; 77,806,395;
77,806,393; and 77,806,392, for word mark MICHAEL JACKSON, plus a design (a signature).
True and correct copies of the foregoing applications are attached hereto and incorporated herein as
Exhibit I. Plaintiff Triumph is also the owner of U.S. Trademark Application Serial Nos.
77,806,377; 77,806,362; 77,806,361 and 77,806,360 for the standard character mark KING OF
POP, a name commonly connected with Mr. Jackson. True and correct copies of the foregoing
applications are attached hereto and incorporated herein as Exhibit J. Triumph is further the owner
of U.S. Trademark Application Serial Nos. 77,811,345; 77,811,342; 77,811,340; and 77,811,338 for
the standard character mark NEVERLAND VALLEY RANCH, in reference to Mr. Jackson's
former home. True and correct copies of the foregoing applications are attached for the mark
True and correct copies of the foregoing applications are attached hereto and incorporated herein as
Exhibit M. Finally, Triumph is the owner of U.S. Trademark Application Serial Nos. 77,806,913;
77,806,908; 77,806,905; and 77,806,901 for the standard character mark MJ, Mr. Jackson's initials.
True and correct copies of the foregoing applications are attached hereto and incorporated herein as
Exhibit N.
All of the registered marks identified in paragraphs 22 through 28 are collectively referred to herein
as the “MJJ Trademarks.”The MJJ Trademarks are associated exclusively with Plaintiffs, and as a
result of sales, marketing, the media and the general public's interest in Mr. Jackson, these marks
have become well-known in the United States as identifying and referring to Plaintiffs.
Consequently, the MJJ Trademarks have developed substantial recognition among the consuming
public for their connection with Plaintiffs and Mr. Jackson's charitable works and have acquired and
enjoy a valuable reputation and significant goodwill. The MJJ Trademarks are famous not only
within the United States, but throughout the world entitling them to the greater protection afforded
marks of such international distinction under both United States law and international treaties, such
as the Paris Convention and the TRIPS Agreement both of which were entered into by the United
States. From at least February 2008, Defendants have been and are currently conducting business at
and out of the locations 41605 Goodrich St., Indio, California 92203 and/or 44489 Town Center
Way, Suite 542, Palm Desert, California 92260. Defendants have created an “organization” that
purports to carry on the work of Jackson's Foundation and make numerous false representations
regarding their affiliation with Mr. Jackson and his charity. Attached hereto and incorporated herein
as Exhibit O are screenshots from Defendants' websites. Defendant HTWF has registered 6
trademarks and filed 41 trademark applications for marks connected to Mr. Jackson, many of which
are identical or confusingly similar to the MJJ Trademarks. The registered and applied-for marks
also falsely suggest a connection between Defendant and Plaintiffs, and violate Mr. Jackson's right
of publicity. Each of these trademarks was registered and/or applied for without Plaintiffs' or Mr.
Jackson's consent. A chart summarizing these trademarks is attached hereto and incorporated herein
as Exhibit P. Defendant HTWF has registered the following trademarks referencing Mr. Jackson's
charity's name, Heal the World Foundation: Defendant HTWF further registered the standard
character mark MJ, Mr. Jackson's initials, with the U.S. Patent and Trademark Office, U.S.
Trademark Registration No. 3,567,671 on January 27, 2009. A true and correct copy of U.S.
Trademark Registration No. 3,567,671 is attached hereto and incorporated herein as Exhibit S.
Defendant HTWF also filed numerous trademark applications for marks that uniquely and
unmistakably point to Mr. Jackson and his persona. Most of these were filed immediately following
Mr. Jackson's death in the hopes of exploiting the deceased artist's name and life and suggesting a
connection with Mr. Jackson. The following applications refer or relate to Mr. Jackson: All of the
registered and applied-for marks identified in paragraphs 34 through 37 are collectively referred to
herein as the “Infringing Trademarks.” Despite being placed on notice that their conduct was
infringing Plaintiffs' rights, Defendant HTWF continued to unlawfully use and apply to register the
Infringing Trademarks... In addition, Defendant HTWF has registered several domain names
connected to Mr. Jackson and/or Jackson's Foundation. These websites are: &let;> <> <> and <> Defendant's use of the trademarks HEAL THE WORLD, HEAL THE WORLD
FOUNDATION, MICHAEL JACKSON, and MJ can be seen on Defendant's
<>, <>, <>, and
<> websites. True and correct copies of screenshots from Defendant's websites
showing the use of the MJJ Trademarks are attached hereto and incorporated herein as Exhibit U.
Defendants sell merchandise bearing many of the Infringing Trademarks, including HEAL THE
Plaintiffs repeat and reallege the allegations of paragraphs 1 through 58 of this Complaint as if fully
set forth herein. Defendants are using in interstate commerce some or all of the Infringing
Trademarks. Plaintiffs have acquired common-law rights in the HEAL THE WORLD mark through
their use of the mark for nearly a decade, from approximately 1992 through 2002, in connection
with charitable fundraising. The HEAL THE WORLD mark has a secondary meaning in the
charitable community and is connected to Plaintiffs. Defendants' subsequent use of the mark HEAL
THE WORLD and confusingly-similar derivatives such as HEAL THE WORLD FOUNDATION
and HTWF are likely to cause confusion, deception, and mistake among the consuming public as to
the source of and authorization for the products and/or services sold by Defendants in violation of
the common law of the State of California.
PROTECTION ACT Plaintiffs repeat and reallege the allegations of paragraphs 1 through 101 of
this Complaint as if fully set forth herein. Defendant HTWF's registration of, use of, and trafficking
in the domain names <>, <>, <>, and <> which are nearly identical, confusingly similar to,
and/or incorporate the MJJ Trademarks are likely to cause confusion, mistake or deception as to the
source, origin, association or sponsorship of Defendant's goods and services in violation of Section
43(d) of the Lanham Act, also known as the AntiCybersquatting Consumer Protection Act (the
“ACPA”).Defendant HTWF has demonstrated bad faith intent to profit from the use of the MJJ
Trademarks, and upon information and belief, has in fact profited from use of Plaintiffs' trademarks.
As a result of the foregoing, Plaintiffs have suffered and will continue to suffer irreparable harm for
which there is no adequate remedy at law. Pursuant to the Court should order forfeiture,
cancellation or transfer of the <> <> <> and <> domain names. That Defendants be required upon
service of this Complaint to immediately deliver up to Plaintiffs any and all products, guarantees,
circulars, price lists, labels, signs, prints, packages, wrappers, pouches, receptacles, advertising
matter, promotional, and other materials in the possession of Defendants or under their control
bearing the MJJ Trademarks, or each of them, alone or in combination with any other words, or
used in connection with the advertising, offering for sale or sale of products not authorized by
Plaintiffs. That Defendants be required upon service of this Complaint to immediately supply
Plaintiffs with a complete list of entities from whom they purchased and to whom they distributed
and/or sold products falsely bearing the MJJ Trademarks.

That Defendant is required upon service of this Complaint to immediately deliver up for destruction
their entire inventory of said products bearing any of the MJJ Trademarks. That Plaintiffs be
awarded reasonable attorneys fees and have such other and further relief as the Court may deem
equitable including, but not limited to, any relief set forth under Sections 34-39 of the 1946
Trademark Act


By this discussion we came to know that the trademarks are on one of the great weapons in the
hands of the businessman and the entrepreneurs many countries follow the common law in the
protection of the trademarks and trademark and the domain names go hand in hand , the only
exception to the territorial trade mark regime is that the trans-border reputation , in internet,
trademark has no jurisdiction by its very nature of its construct. Thus any enterprise using the
internet as a trademark will not only enjoy the monopoly but also overlap the traditionally protected
trademark system in vogue ,
The courts in India and US have been interpreting the domain names Dispute akin to Trade mark
situation inspite of other issue involved, One important issue is that the existing Trademark decides
on the basis of classification of goods, transborder reputation of brand names, invented words and
related principles to decide about infringement and passing-off and only in such contexts the
internet disputes on domain names can be decided by the Indian courts.

Intellectual Property Rights In Cyber Space – Dr. V.C. Vivekanandan.

Intellectual property Rights and Law –Dr. GB Reddy

Webvertising -Unfair competition and trade marks on internet edited by Matthias W.Stecher

American jurisprudence



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