Nandar Khaing | 1641001084 | ILA 102 | 252A

1. What is passing off?

Passing off refers to the use of an unregistered trade mark to pass off products or services
as one's own, i.e., establishing a relationship to another firm and benefiting from its goodwill
and reputation. The offence of passing off prohibits one party from imitating another party's
goods or services by utilising the name or "get-up" of that party's firm.

2. Case study overview

The plaintiff in this case, Yahoo!Inc., is an internationally known American web service
provider famous for delivering web-based services. The defendant in this case, Akash Arora,
started offering his web-based business by utilising a trademark that was phonetically similar
to the plaintiffs'.This case represents a turning point for Indian law on cyber squatting. The
High Court of Delhi granted a registered domain name identical to a trademark the required,
equivalent protection for the first time.

Facts of the case

Yahoo Incorporation (hereby referred to as "Plaintiffs") is the owner of the registered
trademark Yahoo and of the domain name Yahoo.com; as a result, both the trademark and
the domain name have accumulated a specific name, goodwill, and reputation. Since its
registration with Network Solution Inc. in 1995, Yahoo.com has offered a wide range of
web-based services. Despite the fact that 69 nations had either registered or were about to
register the trademark Yahoo, the plaintiff Yahoo Inc. had not yet registered its name in India.
Under the name Yahoo India, Akash Arora (here referred to as the "defendant") started to
provide web-based services that were nearly identical to those provided by the Plaintiffs. The
defendant also submitted a registration request for an equivalent, which was eventually
authorised. Due to the defendant's use of a trademark that was misleadingly similar to its
own and passing off its services as those provided by the plaintiffs, the plaintiffs filed a
lawsuit against the defendant and requested a permanent injunction against them under
Order 39 Rules 1 & 2 CPC.

Solution & Result

Domain names are inherently not registered as trademarks due to the necessity to
assess them for proof of distinctiveness . The registration of domain names as trademarks is
not automatically permitted or prohibited. If a domain name has the ability to serve not just
as a website name but also as a trademark for products or services of the kind described by
the applicant, it will likely be registered as a trademark and be eligible for protection. By
having a trademark that is misleadingly similar to another's, a firm runs the risk of confusing
the public and harming the reputation of the other. As a result, the court can suspend their
operations.
As we know that every judge has his own opinion and pronounces the judgement
accordingly, the above case also dealt with an opinion based on his perspective. Since every
judge has an opinion and delivers a decision based on that viewpoint, the above case
likewise involves an opinion from the judge's point of view.
In this case, Yahoo Inc. argued that Akash Arora used the name Yahoo to provide
services that were nearly identical to those of Yahoo Inc. and had tried to profit from the
goodwill created by Yahoo Inc. because there was a good chance that an online user could
be misled and confused into thinking that both the domain names, Yahoo and Yahoo India,
belonged to Yahoo Inc. As a result, Yahoo Inc. claimed that Akash is responsible for passing
off.
The court found Akash complicit in passing off and commanded him to stop using the
suspiciously similar name because the trademarks/domain names "Yahoo!" and "Yahoo
India!" were nearly identical. As a result, the latter offered services that were nearly identical
to those offered by the previous and because it misrepresented them as being provided by
Yahoo Inc.
The court's decision in this case is justified by the argument that using a name whose
reputation is primarily based on how closely it resembles the name or trademark of another
company would likely deceive the public and consequently be considered passing off. The
Hon'ble Court decided as a result that the word "Yahoo" in issue had grown unique and was
associated with the Plaintiff's field of work. By using the domain name "yahooindia.com," the
Defendant is misrepresenting the Plaintiff's company as his own, and as a result, an
equivalent must be permanently ceased. As a result, a court ordered an injunction
prohibiting the defendant from using the disputed mark.

References
https://brandsandfakes.com/case-analysis-yahoo-inc-vs-akash-arora-anr/136/
https://www.legalwiz.in/blog/5-famous-trademark-cases-for-businesses-to-learn-from
https://www.lawnn.com/delhi-high-court-judgment/