……………………………………………………………………………………………………………

Project on: Role and function of Chairman and Chief Executive Officer
……………………………………………………………………………………………………………….
.

Submitted by: - Submitted to:-

Pritee Kishore Dr. P.K DAS
B.sc.LLb (Hons.) Assistant professor
8th semester School of law and governance
CUB1413115014 CUSB
Date: 19/11/2018

1
 Acknowledgement
I hereby take the opportunity thank Dr. Das sir, for his consent and the inspiration that he
radiates. His jovial behavior and ease making attitude eased my tension and the initial doubts that
I had about my potentialities. I also want to thank my friends who helped me a lot in preparing
this project. I have also taken help from several books and websites for doing this. Ultimately, I
once again thank Dr. Das sir, who made indelible impact on me which shall go beyond the pages
of this project and reflect in all my endeavors of life.

Hoping Acceptance and Appreciation from you, I hereby submit this project.

-Pritee Kishore

2
 Table of Contents
Contents page no.

Title of the proposed study …………………………………………………..……06

Literature Survey/Review …………………………………………………………. 06

Objective of study…………………………………………………….…………. …07

Purpose, Aim and Scope of the Study ……………………………………………..08

Research design/methodology ……………………………………………………...08

Research Hypotheses …………………………………………………………….…09

Research Problems …………………………………………………………….……09

Chapter 1: Introduction ...................................................................................................... 01

Chapter 2: Trademark: Concept ......................................................................................... 02

Chapter 2.1 Evolution of trade mark law in India ............................................................... 02

Chapter 2.2. Trade mark under International Law ............................................................04 -06

Chapter 2.2.1. The Paris Convention ...................................................................................04

Chapter 2.2.2 The Madrid Agreement and Protocol ..........................................................04

Chapter 2.2.3 The TRIPs Agreement .................................................................................05

Chapter 2.3.Trade mark: statutory definition and provisions ...........................................05 -06

Chapter 2.3.1. Right of TM owner ................................................................................... 06

Chapter 2.3.2. Registration of Trademark .........................................................................06

3
Chapter 3 Infringement of trade mark in cyberspace ........................................................07

Chapter 3.2 Infringement in cyberspace........................................................................... 07 -10

Chapter 4 Jurisdiction and enforcement issues ............................................................... 11

Chapter 5 Position in India...............................................................................................

Chapter 6 Conclusion ...................................................................................................... 16

Bibliography ......................................................................................................................17

1. Title of the proposed study

Trademark Infringement: Extending Frontiers in Cyberspace

2. Literature Survey/Review
The following Primary and Secondary sources have been referred to

Primary Sources

 Books Referred

The following textbooks have been referred to:

1. P. Narayanan, Intellectual Property Law (Eastern Law House, New Delhi, 9th edn.,
2012).
2. Dr. M.K. Bhandari, Law relating to Intellectual Property Rights (Central Law
Publications, Allahabad 4th edn., 2015).
3. N.S Gopalkrishnan and T.G. Agitha, Principles of Intellectual Property (Easter Book
Company, Lucknow, 2nd edn., 2014).
4. V K Ahuja, Law relating to Intellectual Property Rights (Lexis Nexis , New Delhi, 3rd
edn., 2017).

5. J.P. Mishra, An introduction to Intellectual Property Rights (Central Law Publications,

Allahabad 3rd edn., 2012).

4
  . Statutes Referred

(i) Trade mark Act, 1999

(ii) The Companies Act, 2013.

Secondary Sources
 Articles Referred

 Himani Makkad, “Trade mark Law in cyberspace:protection to Internet address”, 3 JLSR

39 (2017).
 N.S Gopalkrishnan and T.G. Agitha, Principles of Intellectual Property 548 (Easter Book
Company, Lucknow, 2nd edn., 2014).
 Sourabh Gohosh, “Domain name disputes and evaluation of the ICANN’S Uniform
Domain Name Dispute Regulation Policy”, 9 JIPR 102 (2004).
 Georgios I. Zekos, “Copyrights and Trademarks in Cyberspace: A Legal and Economic
Analysis”, 15 CKJIP 347 (2016).
 Gayle Weiswasser, “Domain Names, the Internet and Trademarks: Infringement in
Cyberspace”, 20 SCHTLJ 217 (2004).

3. Objectives of the Study

The study was geared to achieve the following objectives:-

General Objectives
(i) To study the infringement of Trade mark in cyber space.
(ii) To study the modes of online infringement of trade mark.

Specific Objectives
(i) To deal with the jurisdiction issues in infringement of trade mark in cyberspace.

5
 4. Purpose, Aim and Scope of the Study.
Internet in this era of globalizing world is playing a vital role for education as well s business
purposes. Cyberspace is a virtual computer world and it an electronic medium which is used
to form a global computer network. Cyberspace is intervening the trademark also. Various
trademark infringement issues in cyberspace have not been solved by the traditional
trademark laws. The purpose of this project is to discuss various trade mark infringement
issues in cyberspace and give emphasis on remedies available to these infringements.

5. Research design/methodology
In accordance with the objectives of the present study, doctrinal research design has been
adopted. The doctrinal design has been used to study the provisions related to qualification, legal
position and appointment of directors. Doctrinal Research is a research, as we all know, based on
the principles or the propositions made earlier. It is more based on the sources like books of the
library, and through resources collected through access to various websites. For the purpose of
the Research Project, the Researcher has collected relevant materials from books on Investment
Law and also from various websites.

6
 6. Research Problems
(i) What is the infringement of trade
(ii) What
(iii) What is the need of separating the position of Chairman and Chief Executive Officer
in Corporate governance?

7. Research Hypotheses

The following hypotheses would be taken account of in this study and they have been examined
in the course of discussion. A conclusion has been drawn to assess whether the hypotheses
proposed were true to their extent of statement.

(i) A chairman is an executive elected by a company's board of directors that is responsible for
presiding over board or committee meetings.
(ii) The chief executive officer (CEO), is the most senior corporate, executive, or administrative
officer in charge of managing an organization, who commands for the implementation of
project.
(iii) The position of Chairman and Chief Executive Officer should be separated to deal the
crisis situation by coordinating communications between the board and management,
as well as communications between the company and external groups, such as
investors or members of the media.

7
 Trademark Infringement: Extending Frontiers in Cyberspace
Abstract

Internet in this era of globalizing world is playing a vital role for education as well s business
purposes. Cyberspace is a virtual computer world and it an electronic medium which is used to
form a global computer network. Cyberspace is intervening the trademark also. Various
trademark infringement issues in cyberspace have not been solved by the traditional trademark
laws. This article attempts to discuss various trade mark infringement issues in cyberspace and
give emphasis on remedies available to these infringements.

Chapter 1

Introduction

The development of law of trademarks can be traced back to the onset of the industrial revolution
which enabled large scale production and distribution of goods. With the emergence of
competitive market economy, manufacturers began to identify their products by certain symbols,
marks or devices so as to distinguish their goods from similar goods manufactured and marketed
by others. In addition, manufactures also started advertising their goods by using their trade
marks on them. This led to trade mark acquiring goodwill and reputation among consumers of
goods. Realizing the economic worth of the trade marks, the competitors had a temptation to
copy well known trademarks or adopt deceptively similar trademarks so as so as to reap profits
by trading on the reputation of another trade mark. The necessity for protecting the goodwill and
reputation of trademark was, therefore felt in all the nations which led to the adoption of trade
mark law everywhere. At international level, the first multilateral convention i.e. Paris

8
Convention for the Protection of Industrial Property was adopted in 1883.1 In this era, trademarks
trademark infringement is very complex issue in cyberspace. Cyberspace raises a variety of
thought provoking trade mark and trade mark related issues. While many of the issues and
problems that arise may be analyzed and resolved from the vantage point vantage point of
traditional notions of trademark law, others present thornier questions requiring greater
sensitivity to the practical effect of cyberspace on the commercial marketplace. 2

Author Bruce Sterling describes cyberspace as the place where a telephone conversation appears
to occur. Not inside your actual phone, the plastic device on your desk. Not inside the other
person’s, in some other city, the place between the phones. The indefinite place out there, where
the two of you, human beings, actually meet and communicate.

Commercial usage of the Internet has exploded in recent years, transforming the network system
from a research tool to a global marketplace with the potential to serve millions of customers
across the world. As a result, many companies have positioned themselves to offer their goods
and services over the Internet, in order to reach a market that can deliver 30 millions users.

The cyberspace trademark issue that continues to get the most press is the domain name
controversy.3 A domain is an important corporate identifier and an address at which web site may
be located.4Beyond being the name under which the company sends and receives e-mail, like any
other trademark or trade name it can be a symbol of the company’s goodwill and recognition in
the marketplace. Managing domain names remains central for the functioning of cyberspace. The
first step in materializing a corporate presence in cyberspace is to choose a domain name that is
thoroughly conceived in order to sufficiently represent the company or organization using it. A
domain name is equivalent to a telephone directory or directory assistance for the internet. The
chosen domain name often conflates the company’s trademark. In other words, if a company has
a mark or trade name, the company should have a domain name that is the same as the mark or
trade name enhancing communication with the company’s customer base. The chosen name must
plainly identify the company, enabling the customer to distinguish the requisite nexus between
the corporation and the internet URL. A URL or internet site address will contain a trademark as
the second level domain and as a distinctive identifier of a company.5 Cyberspace is used
disseminate information, expand networks and generate commercial opportunities. Cyberspace

1
V K Ahuja, Law relating to Intellectual Property Rights 262 (Lexis Nexis , New Delhi, 3rd edn., 2017).
2
Shashank Tyagi “Trade trafficking in Cyberspace”, 4 IJL 220 (2018).
3
Available at repository.law.umich.edu/cgi/viewcontent.cgi?article=1158&context=... · PDF file (Last accessed on
November 20, 2018).
4
Available at people.ischool.berkeley.edu/~pam/courses/cyberlaw98/docs/cyberlaw.htm (Last accessed on
November 25, 2018).
5
Georgios I. Zekos, “Copyrights and Trademarks in Cyberspace: A Legal and Economic Analysis”, 15 CKJIP 347
(2016).

9
engenders trans-boundary disputes over trade mark and other intellectual property. The
globalization of communications via the internet has led to a system where trademarks and trade
names may be used as a method of communication, via domain names may be both address and
trade mark.

The commercialization of the internet has led to a number of skirmishes between trademark
owners and internet users who have registered domain names that potentially infringe the rights
of those trademark owners. These disputes illustrate vividly the competing interests at stake and
the types of controversies that the system of domain name registration has caused.6 For a
company doing business on Internet, a domain name is an extremely valuable tool for reaching
and maintaining communication with customers.

Chapter 2

Trademark: Concept

A trade mark is a visual symbol in the form of a word, a device or a label applied to articles of
commerce with a view to indicate to the purchasing public that they are the goods manufactured
or otherwise dealt in by a particular person as distinguished from similar goods manufactured or
dealt in by other person. A person who sells his goods under a particular trade mark acquires a
sort of limited exclusive right to the use of mark in relation to those goods. Such a right acquired
by use is recognized as a form of property in the trade mark, and protected under common law.7

Chapter 2.1

Evolution of trade mark law in India

Prior to the enactment of Trademarks Act, trademarks used to be called common law marks and
they could not be registered as there was no statutory law. The owner of trade mark had to seek
common law remedy of passing off against infringement of his mark. The first statutory
protection prior to independence of India was given through Trademarks Act, 1940. This Act was
based on the Trademarks Act, 1938 of England.

Since 1940 significant development took place took place in the field of business and trade. After
independence, to meet with these requirements and to give the effect to the recommendations
made by Mr. Justice A.N. Rajgopala Aiyangar, the Trade and Merchandise Marks Act was

6
Gayle Weiswasser, “Domain Names, the Internet and Trademarks: Infringement in Cyberspace”, 20 SCHTLJ 217
(2004).
7
P. Narayanan, Intellectual Property Law 145 (Eastern Law House, New Delhi, 9th edn., 2012).

10
passed in 1958. But since then again there has been considerable changes in the trading and
commercial practices due to the globalization of trade and industry. To keep pace with the
changing trends of investment flow and technology transfer at international level, a
comprehensive law was required. Therefore, the Trademarks Act was passed in 1999, which
came into force with effect from 15th September, 2003. This Act has repealed the Trade and
Merchandise Marks Act, 1958.8

Chapter 2.2.

Trade mark under International Law

The most influential effort on global scale regarding the protection of intellectual properties is
undoubtly the agreement on Trade Related Aspects of Intellectual Property Rights, which was
adopted at April 15, 1994 and came into force on January 1st, 1995.

Following are the main provisions related to trade mark in International Law

Chapter 2.2.1.

The Paris Convention

The key requirements of the Paris Convention, includes trademark utility models and industrial
designs. However, for trademarks, in order to preserve priority, the interval between the original
filing and filing to another member country is limited to six months. The convention contains
stronger substantive guarantees for trademarks than it does for patents. First, the convention

8
Dr. M.K. Bhandari, Law relating to Intellectual Property Rights 175 (Central Law Publications, Allahabad 4th edn.,
2015).

11
facilitates leveraging goodwill from one country to other through its well known marks’
provision.9 Second, the convention facilitates use of the same mark in all regions.10

Chapter 2.2.2.

The Madrid Agreement and Protocol

With respect to the acquisition of rights to trademarks, the Paris convention relies on the same
expensive state by state registration system that it uses for patents. The Madrid Agreement for
International Registration of Trademarks, which went into effect less than ten years after the
conclusion of Paris Convention. Under the Madrid Agreement, once protection is secured in a
trade mark holder’s country it can be extended to other member States by filing an international
application with International Bureau at WIPO, specifying where protection is sought.

Because the Madrid Agreement bases protection on securing registration in a trader’s home
country, it presents a problem for countries that make registration in a trader’s home country, it
presents a problem for countries that make registration contingent on the use of the trademark in
commerce. Under a Madrid Protocol an application is sufficient to enter the system.

Chapter 2.2.3

The TRIPs Agreement

TRIPs explicitly incorporate the provisions of the Paris convention, including its national
treatment provision, its priority rule, and substantive protection. It adds a most-favored nation
requirement, elaborates on the requirements for trademarks protection, and extends the
substantive a member State must confer.

Prior to TRIPs, some countries had been giving local manufacturers a boost when they
manufactured goods for foreign trademark holder by requiring the foreign trademark holder to
display the local manufacturer’s mark. TRIPs Article 20 prohibits encumbering foreign marks in
this way, although identification of the undertaking that produced the goods and services may be
required. Members also enjoy a measure of flexibility. Article 17 permits ‘limited’ exceptions ,

9
Under Article 6, members must prohibit the use of, referred to register, or cancel the registration of any symbol
where use is liable to create confusion with a mark that is well known in that country for the use of identical or
similar marks.
10
Article 10 requires members to provide effective protection against unfair competition.

12
provided they ‘take account of the legitimate interests of the owner of the trademark and third
parties.11

Chapter 2.3.

Trade mark: statutory definition and provisions

1. The trade mark must be a mark which includes a device, brand, heading, label, ticket,
name, signature, word, letter, numeral shape of goods, packaging or combination of
colours or any combination thereof.12
2. The mark must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services one person from those of
others.
4. It may include shape of goods, their packaging and combination of colours.
5. It must be used or proposed to be used in relation to goods or services
6. The use must be for the purpose of indicating a connection in the course of trade between
the goods or services and some person having the right as proprietor to use the mark.
7. The right to proprietorship of a trade mark may be acquired by registration under the Act
or by use in relation to particular goods or sevices.

Chapter 2.3.1.

Right of TM owner

The trademark owner has three essential rights:

1. Exclusively right to use that product.

2. To obtain relief from the infringement of the product.
3. Right to assign the TM in consideration to use.

The right in the trademark are confer by two ways that is by registering the trademark in
registration office i.e. patent and registration office or by being the first one to use that trademark
in commerce. The use of marks means the actual sale of the product to public in that area where
it gain the reputation for example if owner sale pizza in his local area than he gain the reputation

11
Ibid 8 at 176.
12
The Trade marks Act, 1999 (Act 47 of 1999 ), s. 2 (zb).

13
over there and can protect that marks from the late comers who use that marks. But if the mark is
used in other geographical area then the mark could not called as infringes. The other way to use
mark is by registering that mark in the registration office. It is the bonafide intention to use that
mark. After the marks have been registered the right will be confers to sue the party in
infringement or could claim the remedy from that person. This right is limited if the mark is been
used in geographical area then the registration owner of the trademark can use that mark
everywhere except in that area where it has been used earlier.

Chapter 2.3.2.

Registration of Trademark

Although it is not important to register the trademarks but registering the trademarks confer you
some benefits related to trademark. Registration of trademark can give you right to use that
trademark nationwide. It is constructive notice to the public that such trademark is owned by
party. It gives to sue the other party in court. Also give a remedy to that party for the damage,
attorney fees and other remedy.

Chapter 3

Infringement of trade mark in cyberspace

A trade mark owner has right either to use himself or assign others the use of his trade mark.
unauthorized use of trade mark which may be identical or deceptively similar to the original
trade mark would amount to infringement. In case of registered trade mark, the registered
proprietor or user may take action against infringement. But in the case of trade mark which is
not registered, the common law remedy of passing off action is maintainable.

14
A registered trademark is said to be infringed in case of the following situation:13

1. If the mark in dispute is identical with or deceptively similar to the registered trademark
and is in relation to the same or similar goods or services;
2. If the identical or similar mark can cause confusion in the minds of general public to have
an association with the registered trademark
3. If the registered trademark is used as a part of trade name or business concern for goods
and services in respect of which the trademark is registered
4. If the trademark is advertised and as a result it takes unfair advantage or is contrary to the
honest practices or is detrimental to the distinctive character and reputation of the
registered trademark.
5. If the registered trademark is used in the material meant for packaging or labelling of
other goods or as a business paper without due authorization of the registered user.14

Chapter 3.2

Infringement in cyberspace

The internet was initially created as a tool for communication only for government and industrial
purpose but now it becomes the global economic purpose. With the great leap in the field of
internet, its relevance got intensified in the field of trade and marketing.15 The easy flow of
information and ease of communication increase the ability to access the information which
creates the opportunity to misuse and criminal activity. It had tremendous impact in intellectual
property. Domain name dispute is the most active part that involves the accusation of trademark
infringement usually by the cyber squatter. An enterprise, by registering its domain name,
acquires a unique identity on the internate.16 Recently there was no law regarding the protection
of the domain name but after the legislation made by the United State which is the first country
to make cyber squatting infringement Act 1999.

In an increasingly global market the brand become important for competitive advantage in the
internet. ”Brands rely on their symbolic power to draw attention to themselves and build an
acknowledged capacity for value creation”. Brand can secure its rights by registering the
trademark as a domain name. The current internet technology does not limit problem of cyber
squatting and other confusion regarding the TM as a domain name. the Internet Corporation for

13
The Trade marks Act, 1999 (Act 47 of 1999 ), s. 29.
14
Section 30 of Trade marks Act, 1999 also gives the condition when trade mark is not infringed.
15
J.P. Mishra, An introduction to Intellectual Property Rights 303 (Central Law Publications, Allahabad 3rd edn.,
2012).
16
N.S Gopalkrishnan and T.G. Agitha, Principles of Intellectual Property 548 (Easter Book Company, Lucknow, 2nd
edn., 2014).

15
Assigned Names and Numbers (ICANN) made a new law with Domain Name Dispute
Resolution Policy (UDRP) adopted in August 26, 1999. The ICANN is responsible for managing
and coordinating the domain name system so that every address is unique as a unique IP address
and domain names.

The World Intellectual Property Organization (WIPO) is an organization that ensures the right of
creators and owners of intellectual property are protected worldwide through its Digital Agenda
confluence of the internet, digital, technologies and the intellectual property system.

Following are the various methods of online infringement in trade mark:

1. Cyber squatting: Cybersqatting is a registration of domain name by someone who lacks

a legitimate claim with the intent to:
(a) Sell the name,
(b) Prevent the trademark holder from gaining access to the name
(c) To divert traffic

Who occupy a name hoping that a trademark owner will make an offer for it. 17 It is the
use of domain name to make a profit off a trademark belonging to someone else or
registering a domain name of a famous company or a celebrity and then selling it at an
inflated price.

In Yahoo Inc. v. Akash Arora18, the plaintiff, who is the registered owner of the domain name
yahoo.com" succeeded in obtaining an interim order restraining the defendants and agents from
dealing in service or goods on the Internet or otherwise under the domain name
“yahooindia.com” or any other trademark/domain name which is deceptively similar to the
plaintiff's trademark.

In Sbicards.com v. Domain Active Property Ltd.19, Sbicards.com was ordered by the WIPO to be
transferred to the Indian Company from an Australian entity, which hijacked the domain name
hoping to later sell it for a hefty sum to the State Bank of India subsidiary. The panel accepted
SBI Card counsel s argument that the Australian company was in the business of buying and
selling domain name through its websites.

17
Sourabh Gohosh, “Domain name disputes and evaluation of the ICANN’S Uniform Domain Name Dispute
Regulation Policy”, 9 JIPR 102 (2004).
18
1999 Arb. L.R. 620.
19
Available at http://blog.ipleaders.in/cybersquatting-position-india/#ixzz4AV8kozUo (Last visited on November
24, 2018).

16
 2. Reserve Domain Name Hijacking: it is done by people who register confusingly similar
versions of domain names, pointing them to grip sites that carry some other propaganda.20

3. Typo squatting: When a cyber squatter registers domain names containing variant of
popular Typo squatters rely on the fact that Internet users will make typographical errors
when entering domain names into their web browsers. It is done by the people who
register the domain names incorporation well known trade marks such as misspellings.21

In Rediff’s case22, Daniyal Waseem of Pakistan was using the domain name rediffpk.com'. To
this, the NASDAQ-listed Indian firm had contended that the disputed Internet site was identical
in part and confusingly similar as a whole to the 'Rediff trademark, for which it has rights.
Finding that Waseem had no rights to the REDIFF mark the WIPO Panel concluded the
proceeding by transferring Rediff.compk to the Indian REDIFF trademark owner Rediff.com
India Ltd.

sIn Tata Sons Ltd V. Ramadasoft23, the Panel concluded that the respondent owned domain
names are confusingly similar to the complainants trademark TATA, and the respondent has no
rights or legitimate interests in respect of the domain names. These facts entitle the complainant
to an order transferring the domain names from the respondent.

4. Linking: it has two types;

(a) Hypertext reference link instantly: it transports the user to another location. The link
may lead simply to a particular point within the same web site, or allow the user to
leap from one site to a completely different, unrelated site provided by a different
source. This form of linking, called “linking out”.
(b) Image linking: it brings an image contained in a separate file onto the page being
viewed. The separate file may be an image file stored on the same server as the link or
an image file stored on a separate, unrelated site, which is known as "linking in”. For
eg. A travel agency or a hotel website.

5. Meta tagging: it is a technique whereby a word (e.g VIRAT KOHLI) is inserted in the
keywords field (visible/invisible) of the site in order to increase the chances of a search
engine returning the site, although the site may have nothing to do with the inserted wor

20
Available at http;//www.vaishlaw.com/article/information technology laws/the domain name
chaos.pdf?articleid=100324 (Last accessed on November 25, 2018).
21
, Himani Makkad “Trade mark Law in cyberspace:protection to Internet address”, 3 JLSR 39 (2017).
22
Rediff Communication Limited v Cyberbooth. 1999 (4) BomCR 278).
23
III AD Delhi 545, 90 (23001).

17
6. Renewal Snatching: Usually, domain registration is for a fixed period and if the owner
does not re-register the domain name prior to expiration, then the domain name can be
purchased by anybody. Cyber squatters will snatch up a domain name as it becomes
available. This process is often referred to as renewal snatching.

18
Chapter 4

Jurisdiction and enforcement issues

With the shrinking of global marketplace and advancement in communication technologies, the
biggest issue that has arisen is to determine accurately the appropriate jurisdiction in a particular
transaction. The insensitive nature of the internet to local constraints is the basis of all the
jurisdictional problems.

This issue can be illustrated with the help of the example : take a situation where the same
trademark is owned and used by independent companies in the US and each company has a
website (‘philips.com and philips.co.uk) which provides information about the company and its
product, and which features prominent use of the mark. Moreover, one or both the companies
offer goods or services for sale on their respective websites. Obviously both the websites can be
accessed by the internet user from anywhere in the world, raising the possibility that someone in
UK using the website of the UK company will encounter the website of the US company, and
vice-versa. Here the trademark issue arises whether the use of the trade mark by the US company
on its US website constitute the infringement of the trademarks of the UK company.

This is one of the most pertinent issue where there is still some space is left for the improvement.
When a crime is being committed on the internet than it becomes really tough for the court to
determine whether it has jurisdiction or not. In such circumstances what is taken into
consideration is that whether the person or the company or any corporate body in question is
related in some way or the other to the court. Basically there are two types of jurisdiction
involved here, namely, the personal jurisdiction and the specific jurisdiction.

There are three criteria to determine whether the case falls under the personal jurisdiction or not :

1. Residence
2. Incorporation
3. Ownership of the property in the state.

If the case falls under any of the above heads than the personal jurisdiction can be evoked. The
three elements to determine the specific jurisdiction are :

(1) The claim must directly arise out of non resident’s activities in the forum state.
(2) The contacts must represent the “ purposeful availment” of the privilege of conducting
activities in the forum state.
(3) The exercise of jurisdiction must be reasonable. Basically most of the cases that have
been decided on online infringement of trademarks have been under the personal
jurisdiction.

19
The Paris convention for the protection of the industrial property establishes a norm requiring the
protection of trade names in all state party to the convention.[21] These norms were adopted by
many nations in the form of the municipal laws in order to implement the recommendations of
the Paris convention. Also, world intellectual property organization (WIPO) role in domain name
management can not be sidetracked. One of the most crucial steps towards upholding the
Protection of IPR by WIPO is publication of the interim report on 23rd December, 1998 whereby
it contained interim recommendations regarding formal domain name registration agreement. It
defines the rights and responsibilities of the registration authority, on the one hand and the
domain name applicant on the other.24

The remedies available at international level are:

Provision of the Anti cyber squatting consumer protection act (1999).

International arbitration system created by ICANN.

National internet exchange of India

WIPOs and arbitration system

Suit in ICANN

24
Available at http://www.lawyersclubindia.com/articles/Online-infringement-of-Trademarks-2883.asp (Last
accessed on November 22, 2018).

20
Chapter 5

Position in India.

Another issue that needs to be addressed is ‘Are the trademark law in the country adequate to
resolve the matter?’
According to the court in the case of Satyam Infoway Ltd v. Sifynet Solutions (P) Ltd25 case
nailed the Indian domain name scenario way back in 2004 stating that-
“As far as India is concerned, there is no legislation which explicitly refers to dispute resolution
in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself
is not extra-territorial and may not allow for adequate protection of domain names, this does not
mean that domain names are not to be legally protected to the extent possible under the laws
relating to passing off.”26
In India, since, there exists no direct law to wrestle the threat of such disputes; hence courts have
largely used the principle of passing-off.27
It is interesting to note that despite the fact that the national court framework is not bound by the
decision of WIPO Arbitration Panel, they still have made various findings and judicial decisions
based on the ICANN’s UDRP Policy which shows that the courts find the policies and decisions
of the UDRP to be of sound authority on the matter in hand. One of the examples demonstrating
the same is Manish Vij v. Indra Chugh28, in this case, the plaintiff was dealing with second
hand good on the internet with the trademark and domain name “www.kabadibazaar.com”.
Within the same month when plaintiff had started operating, defendant came up with
“www.kabarribazaar.com” and claimed wider reputation amongst the public than that of
plaintiff’s. The plaintiff approached the WIPO Uniform Dispute Resolution Policy, 1999, and
argued that the registration of the domain name “www.kabaribazaar.com” by the defendants was
done with a malafide intention. The panel held that it was not possible to prove that the
registration of the domain name was in a bad faith as “Kabadi- bazaar” is a common term in the
hindi language and so the plaintiffs domain name had not acquired a secondary meaning.
It also referred to the Rules 4 (a) and 4 (b)29, found that both parties had operated their websites
within a month and while the plaintiff was unable to show the quantum of business carried out, it
can’t be said that the defendant had not incurred advertisement costs. Therefore, it dismissed the
plaintiff’s application and vacated the interim injunction order against the defendant.

25
AIR 2004 SC 3540.
26
Ibid.
27
Rediff Communication Limited v Cyberbooth (1999 (4) BomCR 278).
28
AIR 2002 Del 243.
29
Rules for Uniform Domain Name Dispute Resolution Policy.

21
This, thus, can be said that the national courts can easily shift domain name cases towards
ICANN’s UDRP mechanism which is an efficient alternate dispute resolution remedy easing the
over burdened domestic court system of a country

Chapter 6

Conclusion

After going through the various discussion about infringement issues of trade mark in
cyberspace, we can say that, we can say that in this globalizing world the internet has brought
various changes in various aspect. Internet is also effecting trademark issues. As now a days,
there are various corporate entities who run their business online and have a separate domain
name. Hence, domain name issues in cyberspace involves so much complexity. It is very
difficult to stop this type of infringement an internet is itself very vast area and has so many
technicalities for the protection of infringement of trade marks in cyberspace. UDRP has been a
very cheap and simplified way of getting justice in the dispute regarding domain names.

One big problem is of jurisdiction issue. Existing laws is not able to provide effective remedies to
the plaintiff, as it is very difficult to identify the location of infringer. Inspite of that, various
countries has made a separate law to deal with this problem, like US has passed Trademark
Cyber Piracy Prevention Act, 1999. India is lagging behind this. So, it is important that India
should also have a separate law to deal these types of infringement.

As we are aware that the methods of carrying trade is increasing nowadays due to internet
facility. So, it is obvious that certain new problem will arise which will very different from that
of traditional problems. Hence, the ways by which infringement of trademark can be done is
increased now a days. So, a proper and effective law should be made to regulate the protection of
these types of infringements…

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 Bibliography
Books referred

6. P. Narayanan, Intellectual Property Law (Eastern Law House, New Delhi, 9th edn.,
2012).
7. Dr. M.K. Bhandari, Law relating to Intellectual Property Rights (Central Law
Publications, Allahabad 4th edn., 2015).
8. N.S Gopalkrishnan and T.G. Agitha, Principles of Intellectual Property (Easter Book
Company, Lucknow, 2nd edn., 2014).
9. V K Ahuja, Law relating to Intellectual Property Rights (Lexis Nexis , New Delhi, 3rd
edn., 2017).

10. J.P. Mishra, An introduction to Intellectual Property Rights (Central Law Publications,
Allahabad 3rd edn., 2012).

Articles referred

1. Himani Makkad, “Trade mark Law in cyberspace:protection to Internet address”, 3 JLSR

39 (2017).
2. N.S Gopalkrishnan and T.G. Agitha, Principles of Intellectual Property 548 (Easter Book
Company, Lucknow, 2nd edn., 2014).
3. Sourabh Gohosh, “Domain name disputes and evaluation of the ICANN’S Uniform
Domain Name Dispute Regulation Policy”, 9 JIPR 102 (2004).
4. Georgios I. Zekos, “Copyrights and Trademarks in Cyberspace: A Legal and Economic
Analysis”, 15 CKJIP 347 (2016).
5. Gayle Weiswasser, “Domain Names, the Internet and Trademarks: Infringement in
Cyberspace”, 20 SCHTLJ 217 (2004).

Web sources

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1. Available at http://www.lawyersclubindia.com/articles/Online-infringement-of-
Trademarks-2883.asp (Last accessed on November 22, 2018).
2. Available at http://blog.ipleaders.in/cybersquatting-position-india/#ixzz4AV8kozUo (Last
visited on November 24, 2018).
3. Available at repository.law.umich.edu/cgi/viewcontent.cgi?article=1158&context=... ·
PDF file (Last accessed on November 20, 2018).
4. Available at people.ischool.berkeley.edu/~pam/courses/cyberlaw98/docs/cyberlaw.htm
(Last accessed on November 25, 2018).
5. Available at http;//www.vaishlaw.com/article/information technology laws/the domain
name chaos.pdf?articleid=100324 (Last accessed on November 25, 2018).

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