ROLE OF ARBITRATION IN TRADEMARK DISPUTE

Arbitration is a process which is used to settle the disputes which are brought before the
arbitrators for the private dispute settlement rather going for court for litigation as arbitrators
awarded the final decision on the dispute, by consensus of the parties. For IP dispute arbitration
has inherent advantages of saving time and costs and ensuring confidentiality while also
maintaining long-term business relations as going for litigation it is also a loss of IP holder as
prolonged time period led to loss of IP like a IP holder who owns trademark if litigation going on
for 2-3 years then it is a loss. Litigation results in cost effective. Alternative dispute resolution
measures are gaining prominence for enforcing the protection of intellectual property. This
article explores the use of alternative legal mechanisms for the protection of intellectual property
rights in India.

Need for Alternative Mode of Dispute Resolution in Intellectual Property Disputes

As we know the registered trademark is a word, symbol or combination that represents a

company or a product and differentiates it in the market. A registered service mark represents a
service of that particular business. Trademark also provides public notification of ownership. As
Intellectual property protection provides a pointer to the creator to exert his powers over third
parties, who, without his permission, try to use the fruits of his labour. Arbitration, mediation,
settlement and conciliation are some of the models which are the alternatives to court based
litigation. The Arbitration and Conciliation Act, 1996 has been the main statute in India dealing
with the two cited alternate forms of dispute resolution. The Civil Procedure Code, 1908 also
provides different models for the expeditious determination of disputes. The merits of the modes
of alternate dispute resolution are not only limited to speedy remedy, but also, to the flexibility,
cost effectiveness, confidentiality and business oriented results.

Legal Framework in ADR Framework

Firstly it has to be decided which kind of Intellectual Property related dispute it is, like over here
we’re dealing with trademark so that it is well stated Trademark Law is prevailing trademark
litigation covers an overwhelming landscape in the intellectual property related litigation. The
trademark litigation is an inter parts adjudication. That being the case, the modes of alternative
dispute resolution can certainly provide an appropriate recourse to the ailing judiciary.In

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business transaction if a party A do their business with trademark in India and Party B do their
business with trademark in china, so when both the parties come for worldwide transaction then
which trademark will be there to govern as their trademark are in similar in nature which was the
main cause for dispute. So to settle the disputes which law will be applicable.

Domain Name Disputes & ADR

Now with respect to domain name dispute related to trademarks have their roots in the common
law, passing off‟ a claim in tort which first appeared in the early nineteenth century. It allowed
business enterprise to protect the goodwill it has established in its trading name or brand identity
to raise an action in tort against anyone who damages that goodwill by causing the public to
confuse their brand, product, or service with that of the claimant.

3 essential elements for passing off:-

1. Establishment that the claimant has goodwill in: the name, brand, or

identity in question;

2. That there has been a misrepresentation (by the defendant) and

3. That misrepresentation has caused damage to the claimant‟s goodwill.

As Cyber squatting is an act of a defendant

to incorporate someone’s registered trade mark in the domain name of the defendant or

to imitate the similar domain name of plaintiff as that of Defendant or

to incorporate the deceptively similar domain name of the plaintiff to create likelihood of
confusion in the minds of consumer or user.

In the high-profile case of Yahoo Inc. v Akash Arora & Anr. a lawsuit was filed by the plaintiff
against the defendants seeking a decree of permanent injunction restraining the defendants from
operating any business, selling, advertising and/or dealing in any services or goods on the
internet or otherwise under the trademark and/or domain name ‘yahooindia.com’, or any other
trademark and/or domain name that is identical with or deceptively similar to the plaintiff’s well-

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known trademark “Yahoo!”.It was the defendant’s contention that
the“Yahoo!”trademark/domain name purportedly belonging to the plaintiff was not at the time
registered in India and therefore could not be used as a basis for an action in relation to
trademark infringement. The defendant also argued that the word “Yahoo!” is a general word
that is neither unique nor invented and as such, did not possess any element of distinctiveness. It
was further submitted that since the defendants had been using a disclaimer all along, there was
no deception and hence no action of passing off could be taken against the defendants. The Court
gave its decision in favor of the plaintiff and granted the injunction against the defendants. It was
held that the service rendered by the plaintiff on the internet had become recognized and
accepted globally. The Court agreed that though “Yahoo!” was a dictionary word, it had acquired
sufficient uniqueness and distinctiveness so as to enable the plaintiffs to be

protected against passing off.

It is also to note that in cases of cybersquatting, arbitration plays an eminent role in the
streamlined procedure outlined under the Uniform Domain Name Dispute Resolution Policy,
1999 and the Indian Domain Name Dispute Resolution Policy for the adjudication of disputes.
This brings to fore the importance of arbitration and the use of other alternate dispute resolution
measures for reconciliation of the interests of the trademark owner and the impugned party.

ADR & interim Relief

Section 9 indicates that a party may apply to the court for an interim measure of protection
before or during the arbitral proceedings or at any time after the arbitral award is made but
before it is enforced in accordance with section 36. Prayers for interim protection measures may
include:

–Appointment of a guardian of a minor or an unsound person

–Preservation or interim custody or sale of goods where goods are of a perishable nature

–Securing the amount of claims

–Allowing inspection or interim injunction or appointment of a receiver

–Any other relief as the court may, in its sole discretion, deem appropriate, taking into account
the case

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Significance of ADR

Arbitral tribunal chooses which law will be apply in Indian jurisdictions, WIPO arbitration &
mediation rules are there to set up if the disputes are between two countries which law/rule will
be apply .

If the tribunal isn’t able to choose any party’s law or rule so the matter can be settled with
respect to equity and good conscience.

Law Governing Arbitration process:- Procedural part regarding applicability of laws, process of
arbitration, appointment of arbitrators whole process to be conducted sees the procedural part &
also sees whether the dispute can be put for arbitral or not what are the different kinds of interim
measures which requires arbitration in expedited manner therefore the party incur a lot of loss so
it hamper the original IP owner’s right like in case of India Arbitration Conciliation Act follows
which decide interim measures can be taken/interim order to be followed. In regard to
enforceable of the particular award are binding in nature. Once the procedural laws are needed to
decide.

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