TRADEMARK LAW

THIS is how airtel evolved and rebranded. Ma’am is playing with our psyche as we may have
some experience with the brand. The below image is not the Airtel logo.

This man tried to play on the goodwill or bad will we share with Airtel and tried to monetize on it.
This person is not associated with airtel. So, there are marks which have the potential to have an
impact on our psyche and on our potential purchasing skills. These marks over usage attain
reputation and if it is there for a longer period then they may be built on this reputation. More
reputation more disadvantage as someone would like to encash on it.

Other example: rebranding

Here they kept red from Vodafone and yellow from idea, as there is a possibility of losing the
customer base because of rebranding. So, they ensured to stick to the basic essential and the
customer sticks to the brand.
Historical point of view: these were the symbol for the monarch, they symbolize either
monuments/building was built for the monarch or by him or these were just to indicate that the
specific people were associated with it.

These Chinese marks, the name of the emperor and we also find in Hindu merchandise, the marks
were picture symbols of the craft.

During the dark ages there was fall of roman empire, the marks disappeared, because of the
importance of the broad trade market reduced. However, during the Middle Ages, they came back
with large municipal legislation which were dedicated to regulating marks.

Because we could see that goods travelled across market and they represented the change in how
business was done, represented customs were formed in doing business with artisans directly.
Although the suppliers were individuals and not enterprise, the need for source identification was
there.
Historical Roots of the modern trademark

The Proprietary Mark

It could be put on goods by the owner and could be either for people who would want to
just recognize the goods. And since ship piracy of goods were really common, identifying
some goods in such situations became easier.

So, this mark was actually essential for a merchant rather than the craftsman because it had
nothing to do with the production of the goods and was just meant for identification.

The Regulatory Production Mark

Unlike the proprietary mark, this was compulsorily put on goods and because it could get
some legal backing from some statute or some administrative order. The idea was that any
defective work, if you find out in that particular good, it could be traced back to the guilty
craftsman and appropriate action could be taken.

This was a true mark of origin and this was designated as the actual producer of the goods.
Anglo American Law and English Law

English Law – An important distinction between court of law and court of equity is also that a
court of equity is a court which hears cases which involve remedies other than monetary
compensation. So, it could also go into injunctions, writs, whereas a court of law would restrict
themselves to providing monetary damages as some kind of relief or that would be the outcome of
the case. So, because the action at law they were denominated as actions on the case and the case
would revolve around some nature of deceit. Courts of equity, on the other hand, claimed their
jurisdiction, which was based on property. This led to some scholars conclude that law and equity
developed some theories which were not compatible with trademark law. But in both types of
cases, courts were focused on the harm to the producer, from some kind of diversion of its trade
and they worked with existing forms of action to remedy that harm. It would include monetary
damages, injunction, etc.
But the important part to note is that they focused on the harm which was meant on the producers
and they were trying to avoid any kind of diversion of its trade, which would otherwise not happen
if some kind of trademark infringement didn't happen.

American courts - also had the same focus when they started deciding trademark law cases. They
repetitively made clear that the purpose or the underlying idea behind trademark law was to protect
a party from any kind of attempt, legitimate or illegitimate, to protect or to divert its trade.

The main goal of traditional American trademark law was to protect the producer from similar
trade diversion. They very early on concluded that this protection in many cases was actually based
on a right which could be given in a property and therefore they were protecting producer’s
produces by recognizing property right.

Frank Schechter is trying to argue what could be the rational basis of trademark protection and
then years later Stolte comes in and gives an answer to Schechter’s article and he has some other
elements.
What is the first reference for trademarks in terms of case law?

The first reference to trademarks is in 1656 as per Schechter but Stolte says Southern v. How
(1618) was the case to be looked at. And a connection with trademark law in general arose because
the judge in the question gave that dictum and the judge made a brief reference to another earlier
unreported case.

Commentators usually cite the 1618 cases Southern v. How as the first English case which dealt
with republication of another’s mark.

One particular scholar called Popham’s report was also contested. According to Popham’s report
of that case, there were good reasons to doubt the reliability of the case and some people also
believe that Popham’s report in general could be doubted and Frank Schechter was able to show
that in his article. He was saying that Popham is only one of the five known reports of the case and
the other reports do not corroborate Popham’s account of Southern v. How. Some of the reports
contain actually no reference at all to the case.

But Popham’s characterization of Southern v. How played a prominent role in how early English
Law fate because we will see that several English judges deciding trademark cases in the early
18th and the 19th century, relied heavily on Popham report of the case because he was saying that
Southern v. How was an old case and the idea is to protect the producer.

Makenna, a very prominent author, who talks about historical aspects of trademark law argues that
traditional American trademark law was actually producer oriented and he brings this aspect from
an unfair competition law point of view. He said that the trademark law was actually designed to
promote commercial morality and the idea was to protect producers from attempts which would
be made to divert their consumer base.
Additionally, American courts also from the very beginning protected producers from such trade
in the early on cases itself. So, because they recognize these property rights and because those
property rights were grounded in the natural rights theory of property, he says this is very well
accepted by most judges in the 19th century.

Producer protection – it is meant to protect the producer whose mark it is and also protecting it
from losing its consumer base from someone who would use that mark.

Consumer protection – meant to protect the consumer from the confusion of whose goods it is.

But the question is not that we have to balance between both the regimes but to improve the quality
of info in the market place it is the ultimate goal.

So here the scholars would say, that the Dettol trademark is not for protecting the companies from
other companies but it is for the benefit of the consumers and thereby increase the social gains
from the market. So, we know that which is the true Dettol.
Private interest- if complaint beings in private action, then the remedy is also meant to address the
private injury, and that is why the purpose of any injunction is to protect the private interest and it
would be of the aggrieved trader and that would be inclined towards the producer regime and thus
trader is allowed to acquire the interest he is entitled.

Public interest – public not to get confused between two products.

This debate has been cancelled by some scholars who say that actual pursuit is Honest competition.
i.e., to balance between these two. Soo there is lot of literature available between trademark law
and unfair competition law.

Eco rationale is criticized by McKenna, trademark law was unapologetically producer oriented.
Functions of a trademark identified by Sidney

1. Identification Function

2. Guarantee Function

3. Advertising Function

4. Ensure Uniformity

5. Builds Goodwill and Image

Frank Schechter argues in his article:

1. That the value of the modern trademark lies in its selling power. The more you're able
to build on the goodwill, the more you're able to connect your product with that mark,
the more it will help build its selling power.

2. This selling power depends upon its psychological hold upon the public, not merely
upon the merits of the goods upon which it is used, but equally upon its own uniqueness
and singularity.
 3. That such uniqueness or Singularity is vitiated or embed by its use upon either related
or non-related goods.

4. That the degree of its protection depends in turn upon the extent to which through the
efforts or injected of its owner, it is actually unique and different from other marks.

Current Legal Argument:

Trademark is some kind of merchandising mark which induces or helps the consumer to buy the
product. It helps believe that the good is good or bad. Owner so the mark exploits human psyche
by exploitation this relationship. And thus, we can say trademark has achieved its value.

Search Procedure for trademarks

• Trademark Act 1999 established a Trademark Registry in 5 Places
• The search is free of cost. There are 45 classes – Classes 1-34 goods; and Classes 34-45
services.
Class 3 – 16th September 2021

Subject Matter Understanding Legal Boundaries

Trademark v. Logo

Trademark is the wider umbrella under which logo is part of. When a company invest its resources
in coming up with a logo, it's still not protected. When you get trademark protection over it then
the trademark protection is applicable on logos.

· ● A trademark protects a slogan, phrase, word, company name, logo, or design that
identifies a company and/or its goods. A logo is a symbol or design used by a company
that may fall under trademark protection laws.

· ● Trademark protection on logos

· ● When approved, a trademark restricts others from using an exact or similar mark.

Kinds of Trademarks

You can impose remedies like trademark infringement and passing off because you were able to
register that trademark because it falls within the conceptual understanding of what a trademark
is.
But now since branding and how you market your goods, how you advertise your goods has
crossed all your known boundaries we have something called unconventional trademarks and they
are usually unusual element which earlier were considered to be incapable of registration and they
were earlier considered that they cannot be protected but now because the methods in which
branding is done have changed, courts have started to consider whether it can be subjected to
trademark protection or not.

Coco cola is conventional trademark.

But colour purple is unconventional as to which shade or medium we are seeking protection for.
As when medium changes colour changes.

Basic International Legal Framework

Required criteria may vary from country to country but are generally around the following lines:

· ● The sign should have the potential to be distinctive;

· ● It must indicate origin and

· ● thereby distinguish or differentiate the goods or services upon which it is used from
others on the marketplace

This is the position which is also taken under TRIPs and to be eligible for protection and
registration of the trademark has to comply with these certain statutory requirements. It will vary
from country to country but this flexibility is given by the TRIPS agreement and it is given through
international treaties like Paris convention and the Madrid System.

Generally, it is difficult to obtain registration for non-traditional trademarks or unconventional

trademarks.
This EU directive is meant to streamline the laws of all the member states of the European Union
with respect to trademarks and the idea is to harmonise these disparities with respect to trademarks.
This is responsible for providing this framework for minimum provision and it's applicable
throughout the EU.

Lanham Act is the official trademark act which is applicable in the United States of America.

This is kind of an open-ended approach to what would be the subject matter.

The Manual (Draft) of Trademark Practice and the Procedure of Indian Trademark
Registry 2015-

This is an attempt by the IP office to present the provisions of the trademark act in a more
simplified manner. It's like an addendum which has to be read with the Trademark Act for
implementation and enforcement can be done in a more streamlined and harmonized manner. This
is an inclusive definition and clarifies some categories of marks like shapes and colors and sound
and it caused excitement in the IP community in general is because it was one of the initial attempts
to at least recognize that if you come out with an unconventional trademark registry. The draft
manual then devotes various pages to what would be the graphical representation requirement. So,
one important requirement is that you should be able to represent it properly that what will be the
mark and graphical representation requirement becomes a little difficult in colour and sound and
sense.

The Trademark Rules of 2017 was considered to be a breakthrough because it finally recognized
that sound marks could be taken into consideration when you're filing for an application.
Rule 26(5) - Where an application for the registration of a trademark consists of a sound as a
trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty
seconds’ length recorded on a medium which allows for easy and clearly audible replaying
accompanied with a graphical representation of its notations.

Following are the main categories of non-traditional trademarks that can be registered:

• Smell/scent/olfactory marks

· ● Sound/aural marks/audio signature

· ● Tactile/touch/texture/haptic marks

· ● Single colour marks

· ● Shape marks/three dimensional/3D marks

· ● Taste/gustatory marks

· ● Holograms

· ● Moving images/motion/animated marks

Siechmann v. Deutsches Patent-und Markenamt (German Patent and Trade Mark Office)
[2003]

This was the subject matter.

Here the plaintiff was applying to the German trademarks industry to register a scent mark and
this mark was for various services. He attempted to represent this mark by first indicating the name
of the chemical substance. So, when he filed the application, in the graphical representation, he
mentioned this chemical formula and in addition to the chemical formula, he also attached some
laboratory samples and he also submitted an odor sample in a container. And when it came to the
written description, he described the scent – “balsamically fruity with a slight hint of cinnamon”.
Prisha (Class Discussion)– there is a very distinct smell, it is specific and thus identification can
be there and then it can be associated with a particular product and hence TM can be granted.
Chemical formula is a derivative and thus this formula was close to an end product.

Ralf Siekmann attempted to represent the mark by:

● indicating the name of the chemical substance, methyl cinnamate;

● the structural formula for that substance (C6H5-CH = CHCOOCH3);

● indicating laboratories where samples may be obtained;

● submitting an odour sample in a container; and

● describing the scent in words as “balsamically fruity with a slight hint of cinnamon”

The question here was that the mark at issue was a scent and Sieckmann was claiming that Article
2 of the EU Directive did not preclude any smell mark from being registrable. So, he submitted
that this provision covered all kinds of marks or covered all kinds of non-traditional trademarks or
unconventional trademarks and he submitted that because he was able to represent it in words and
in a chemical representation, the requirement of graphical representation was successful.

The application eventually went up its way to the European Court of Justice and this is one of the
initial cases and it's a widely recognized landmark decision as far as graphical representation of
unconventional trademarks are concerned.

The, Federal Patents Court, Germany stayed the proceedings and referred two questions for
determination to European Court of Justice. The same are reproduced herein below:

1. Is Article 2 of the Directive to approximate the laws of the Member States relating to trade
marks to be interpreted as meaning that the expression “signs capable of being represented
graphically” covers only those signs which can be reproduced directly in their visible form or is it
also to be construed as meaning signs — such as odours or sounds — which cannot be perceived
visually per se but can be reproduced indirectly using certain aids?

2. If the first question is answered in terms of a broad interpretation, are the requirements of graphic
representability set out in Article 2 satisfied where an odour is reproduced: (a) by a chemical
formula; (b) by a description (to be published); (c) by means of a deposit; or (d) by a combination
of the abovementioned surrogate reproductions?”

The ECJ answered this first question by saying that article 2 had to be interpreted as meaning that
a trademark may consist of a sign which maybe in itself is not capable of being perceived visually
but it has to be represented graphically and it has to be done so by using means like images or lines
or characters. The whole idea of graphical representability is that it helps in determining the precise
domain and the subject matter of the protection which the plaintiff or the applicant is trying to seek
for.

So, the court kind of answers the first question in positive saying that if they are not perceived
visually, they can still be reproduced using certain aid.

The ECJ answer this second question by saying that as far as smell marks are concerned,
requirements of graphical representability are not satisfied by a chemical formula, or even by a
written description or even by an odour sample. The reasoning of the ECJ is when you look at an
odour and smell it, only few people would probably be able to recognize the odour by way of a
formula.

The court was hesitant and had some kind of skepticism that not everyone would be able to recall
that the moment you look at a chemical formula, you're automatically reminded of that scent.

The underlying principle of trademark law is that it has to be distinctive, it has to act as a source,
it should be able to tell the audience that if you're looking at a mark than the audience recall only
of those particular goods or services and which showed the courts believe that a chemical formula
definitely does not pass that hurdle and a formula does not represent the odour but it represents the
substance which it is made of.

The court found that that formula did not represent the odour and it was not sufficiently clear or
even precise for that matter. The description too which was provided was also very unclear, vague
and it was very subjective. Sample of the odour, court felt did not really constitute that
representation as it was not stable, it was not durable.

And if these elements taken in their individual senses cannot really pass the practical
representability test, then of course the combination will also not pass the test.

This case did open the possibility of a scent mark to be registered but some kind of threshold as
far as that of representability was set here.
Dyson Ltd. V/s Registrar of Trademarks (2007) [Court of Justice of the European
Communities]

FACTS: This was with respect to a mark which consisted of a transparent bin and Dyson came up
with a vacuum cleaner and the vacuum cleaner had an external collection chamber and this
collection chamber was nothing but a transparent bin. They describe the mark as consisting of a
transparent bin and applied for the registry in 1996. This application was rejected by the Registrar
and this was upheld by the Hearing Office in 2002. In 2004, Dyson bought an appeal against this
decision before the High Court of Justice of England and Wales, and the High Court of Justice in
England and Wales, Chancery Division, decided to stay proceedings and they decided to refer the
two questions to the court for a preliminary reading.

The question which was there were that if in a situation the applicant is able to redefine which is a
shape and if this consists of some feature which has a function then would the applicant be
successful in some kind of illustration on it and if it is not sufficient, then what else would be
required for the mark to gain some kind of distinctive factors to it, so that it can go ahead with the
protection.

Article 3 of EU TM Directive talks about grounds for refusal or invalidity.

Article 3(1)(e) talks about those signs which consists exclusively of:

- the shape which it results from the nature of the good;

- or if it is necessary to opt in a technical result,

- or if it gives some kind of substantial value to the good

If the mark is talking about these two particular shapes, then it would be an important ground for
registration.

ISSUE: The two questions which were sent to the court was that if there's a situation where an
applicant has used the sign and that sign consists of a feature which has a function and that forms
some part of an appearance. Is it sufficient to say that it has acquired some kind of distinctive
character under Article 3 and will it then be able to gain trademark protection? And if that is not
sufficient, then what else is needed so that some distinctive characters can be achieved to get that
trademark protection.

Arguments by Dyson

The application does not seek to obtain registration of a trade mark in one or more particular shapes
of transparent collecting bin--the shapes represented graphically on the application form being
only examples of such a bin-but rather to obtain registration of a trade mark in the bin itself.

It is, moreover, common ground that those marks consist not of a particular colour, but rather in
the absence of any particular colour, namely transparency, which enables the consumer to see how
much dust has been collected in the collecting bin and to know when the bin is full

In the present case, this was a common ground that the subject matter of the application itself was
just a particular type of transparent collection bin and it was a rather very abstract subject matter.
So, in this regard, Dyson cannot really maintain that the subject matter of this application is capable
of being perceived visually. So, what can viewers identify visually is not the subject matter of the
application, but what is inside it.

Held

Since a concept is not capable of being perceived by one of the five senses and appeals only to the
imagination, it is not a 'sign' within the meaning of Article 2 of the Directive. If a concept were
able to constitute a trade mark, the logic behind Article 3(1)(e) of the Directive, namely to prevent
trade mark protection from granting its proprietor a monopoly on technical solutions or functional
characteristics of a product, would be frustrated.
Accordingly, it should not be possible to achieve that advantage by registering all the shapes which
a particular functional feature might have, which would be the result of allowing the registration
of a concept which can cover many physical manifestations”

So, giving monopoly of a transparent bin can defeat the purpose of TM law. They emphasized that
that even graphical representation not enough and thus it failed. This case is peculiar because it
also gives rise to a lot of other questions that what strategy actually Dyson wanted to approach.

Dyson could have gone to seek protection other than a trademark as industrial design. The idea of
industrial design is that if you have a technical invention with you but you also have some aesthetic
part of it, which is attached on it so that it invokes a different meaning or a different feeling when
the consumer look at the product. So, because patent is meant to protect only the technical part of
it, the aesthetic part of it is then protected by industrial design. In India, we give it from a more
design law approach, in US it is more patent law approach

John Lewis of Hungerford Ltd’s Trademark application, 2001

Here, the registration was with respect to a scent mark and the applicant had a really wide scope.
He was trying to register the smell and the essence of cinnamon. He was in the business of furniture
and fittings, and he wanted to get this protection over furniture and fitting.

When he submitted the application form, under the description, he said “the smell, aroma, or
essence of cinnamon”.
Held:

Many factors have a bearing on the perception of a smell. Perceptions are liable to vary accordingly
to the nature, purity, concentration, quantity, age and temperature of the relevant olfactant(s)

Words which merely describe a smell by reference to the olfactory perceptions of people exposed
to it are thus liable to cover a range of perceptions linked to a range of precipitating sources, thereby
defeating the purpose of TM law

If it is varying from person to person and from whatever factors, then you are not able to determine
the scope of protection then the purpose of trademark law is kind of defeated because you're giving
monopoly over something very huge to one person.

The judgement also says that cinnamon is a name given to a spice. Even in Cinnamon you have
kinds of other variants of cinnamon. A person's perception of the smell is likely to be influenced
by the context in which you may be experiencing it.
Libertei Group BV v. Benelux Trademark Office 2003 [ECJ]

Whether some particular colour can be trademarked or not?

Here the question was with respect to a particular shade of orange and the application was filed in
front of the Benelux Trademark Office. Benelux stands for Belgium, Netherlands and
Luxembourg. The applicant here filed a particular shade of orange as a trademark for certain
telecommunication goods and services. The BTMO informed the applicant that it was
provisionally refusing the registration of the sign. The Office considered that unless the applicant
will show that the sign filed consists exclusively of the colour orange and it had acquired some
kind of distinctive characters to use, it was not having enough distinctive characters.

The Applicant objected to this provisional refusal and the office took the view that there was no
need to reconsider the refusal and observe notice of final review. An appeal eventually went up to
the European Court of Justice.
So, the question becomes that whether a colour was capable of some kind of graphical
representation or not?

Such signs are capable of distinguishing the goods or services of one undertaking from other
undertakings. So, if you look at a sample of colors, it probably could deteriorate with time and
there may be certain media on which it is possible to reproduce a colour in permanent form.
However, with other media, the exact shape is difficult to stick with. So, in these cases, the filing
of the sample may not possess that durability which is required by article 2 of the EU TM Directive.

But it was also held that the designation of a colour if it was used through an internationally
recognized identification code, it may be considered to constitute a graphical representation which
may be sufficiently precise or which may be durable.
A mere sample of colour is not registrable and it has to be accompanied by some description of
words. It also said that the graphical representation could still fail because representing a colour
by just some words may not fulfil the requirement of graphical representation.

But if you maybe pinpointed through some identification code, it may still be possible.

So, the next question then was that is it possible for some single specific colour to acquire a
distinctive character for certain goods or services within the meaning of Article 3(1)(b) of the
Directive?

Article 3(b) of the EU TM Directive which says grounds for refusal or invalidity and reads that if
the trademark is devoid of any distinctive character, it will not be liable for registration. Here the
court emphasized that although colours possess very little inherent capacity for communicating
specific information due to their widespread use to advertise and market goods without any
specific message, the possibility was still there that it could represent the origin of the goods or
services and undertaking and it followed that colour per se was capable of constituting a trademark
within the meaning of Article 2.

Held:

In the assessment of the distinctive character of a specific colour as a trade mark, must account be
taken of whether, with regard to that colour, there is a general interest in availability, such as can
exist in respect of signs which denote a geographical origin?
As regards the registration as trademarks of colours per se, the fact that the number of colours
actually available is limited means that a small number of trade mark registrations for certain
services or goods could exhaust the entire range of the colours available. Such an extensive
monopoly would be incompatible with a system of undistorted competition, in particular because
it could have the effect of creating an unjustified competitive advantage for a single trader. Nor
would it be conducive to economic development or the fostering of the spirit of enterprise for
established traders to be able to register the entire range of colours that is in fact available for their
own benefit, to the detriment of new traders.

Finally, the court ruled that when you're assessing a trademark with respect to a distinctive
character, the competent authority would have to carry out an examination with respect to the
actual situation and it would have to take into account all the circumstances of the case and in
particular, any use which has been made of that mark. So, the fact that a lot of colours were actually
available is limited means that a small number of trademark registrations for certain services and
goods could exhaust the entire range of colours available and that is why this extensive monopoly
would be incompatible with the entire system of trademark law, the system of competition laws,
and it would not be conducive to economic development or the fostering of the spirit of enterprise.

Case Study: Registering a Single Colour Mark

By utilitarian functionality, the idea is that if some kind of a product feature is considered to be
functional, then it is essential to the use of that article. Whereas on the other hand, aesthetic
functionality is where you are trying to put on a colour on something it may not be truly utilitarian
in that form, but it can still provide some kind of other competitive advantage. If a mark is
functional then it cannot be registered.
Continued discussion on Registering a Single-Color Mark

Case – Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.

Facts: There are two companies involved – Christian Louboutin (CL) and Yves Saint Lauren
(YSL). CL had a trademark – red sole on the heels. See the following pic

YSL started manufacturing red shoes:

CL filed case against YSL for violation of trademark. YSL disputed this claim and requested CL’s
trademark to be cancelled altogether. YSL argued that red sole adds aesthetic values and thus have
functionality attached to it. They argued that the trademark is wrongly registered.
Held: the court had to inquire whether this red sole creates the distinctiveness:

The court, on the evidence presented, held that red sole on the heels distinguishes and identifies
CL brand. They held CL mark to be distinctive. You can identify the distinctiveness from
following pic:

Court observations:

Court also cited a survey of customers – in which YSL were shown – many of them identified to
be CL and on the basis of red sole.
Whether a single color serve as trademark?

The case went to court of appeal. The red sole mark was not aesthetic and did not have
functionality. The court observed that by placing the red color in unusual place, created requisite
distinctiveness + successfully associated with the brand for a while. But they also identified that
distinctiveness is created when red color sole is in contrast with other color on shoes. So, if other
company uses makes complete red color shoe, it does not violate distinctiveness and thus does not
violate trademark.

Critique –

The court held that the company has right over trademark for Class 25. Now the issue is, Class 25
covers various types of stuff: see, following pic
Does company have right of red sole over all kinds of shoes? Madam, argues that there should be
certain list of products over which it should have right – for e.g., for flat shoes, red sole will not
be possible, so no distinctiveness. Second, the trademark talks about red color – but what shade of
red? It does not talk finish – whether gloss or matte or mix of gloss and matte. The scope needs to
be narrowed down.

Key takeaway – test for aesthetic functionality – A mark is aesthetic functional if design is essential
for purpose of good and affects the cost and quality of good. However, as in this case, CL was
about to prove that there was brand connection with the pop of color (red sole) and people were
able to trace the brand with it – it means red sole was more than mere aesthetic functionality.

Sound Mark India – The application must be submitted in a MP3 format along with the graphical
note. It cannot be longer than 30 seconds

Case: Shield Mark BV v. Joost Kist, 2003 [European Court of Justice] [Sound Mark]

One of the first cases for Sound trademark.

Facts: (incomprehensible– just keep in mind that one of the companies violated sound trademark
of other company) Registrant (Shield Mark BV) of the mark had 14 registered trademarks in its
favor. The registrations were in Class 9 (computer software (recorded), etc.), 16 (magazines,
newspapers, etc.), 35 (publicity, business management, etc.), 41 (education, training, organization
of seminars on publicity, marketing, intellectual property and communications in the business
sector, etc.) and 42 (legal services).

The details of the same in their form and manner of presentation in application are provided herein
below:
• Four on a Musical Stave – The trademarks consisted of the representation of the melody
formed by the notes (graphically) transcribed on the stave.

• Four other trademarks consisted of the first nine notes of Für Elise. The trade mark
consisted of the melody described, plus, in one case, played on a piano.

• Two of the trademarks registered by Shield Mark consisted of the denomination

Kukelekuuuuu (an onomatopoeia suggesting, in Dutch, a cockcrow)

• Last mark consisted of a cockcrow and also stated: Sound mark, the trade mark consists of
the cockcrow as described.
In October 1992, Shield Mark launched a radio advertising campaign, each of its commercials
beginning with a signature tune employing the first nine notes of Für Elise. From February 1993,
Shield Mark issued a news sheet describing the services which it offers on the market. The
signature tune is heard each time a news sheet is removed from the stand. Further, Shield Mark
also published software for lawyers and marketing specialists and each time the disk containing
the software started a cockcrow was heard.

Mr. Kist, was a communications consultant, in particular in advertising law and trademarks law.
During an advertising campaign in 1995, Mr. Kist used a melody consisting of the first Nine notes
of Für Elise and also sold a computer program which on emitted a cockcrow. Shield Mark brought
an action against Mr. Kist for infringement of its trade mark and unfair competition.

Issues:
• Whether a sound can be registered as trademark? If yes, what will be requirement for its
registration?

Held: the court held that according to Article 2 of the Directive Sounds may constitute a trademark,
on the condition that they may also be represented graphically. In this case, musical mark was
considered trademark while the non-musical was rejected the trademark protection.

Can music be represented graphically? The court observed:

In India – draft manual follows shield mark case (detailed music notation suffice), but it does not
create distinction between musical and non-musical sounds. Then how to depict non-musical
sound?
Note – There are musical and non-musical elements to sound marks. It might be easier to
graphically represent the musical elements and obtain trademark; however, describing the non-
musical element of it is not easy.

Helpful case: Yahoo registration case – Key takeaway is that it is hard to note human voices
(non-musical). # Yahoo has been given the trademark here.

Next Module

Trademark Filing Procedure in India

Trademark search – Search, if similar mark is already registered on trademark registry

website. This is not the mandatory step. Actually, it should be conducted before starting the
process. After you are sure that no similar mark is registered, you should go for filing.
• Trademark application form (Section 18)
• Then examination report is issued concerning whether your application should be accepted
or not.
• If accepted, then such examination report goes to TM Journal advertisement.
• TM journal advertise such applications for third party opposition. Opposition can be made
on two grounds 1) absolute grounds 2) relative grounds. If no objection, TM authority will
register the TM. If opposed, TM application is cancelled. The opposition must be filed
within 4 months. If no opposition within 4 months, it is deemed that there is no opposition.
• TM in India is issue for 10 years. After 10 years, renewal is possible for another 10 years.
GROUNDS FOR REFUSAL OF REGISTRATION:

Absolute Grounds: it means refusal on the ground of the intrinsic qualities of the mark. When
explaining the absolute grounds for refusal, it considers concepts such as descriptiveness, lack of
distinctive character, generic trademarks, exclusions based on shape or other characteristics and
bad faith.

Section 9:

Absolute grounds for refusal of registration —

(1) The trademarks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person;

A person in US was trying to get the word “The” trademark. The application was refused on
this ground.

(b) which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods or
service;

(c) which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade, shall not be
registered: Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use made
of it or is a well-known trade mark.

(2) A mark shall not be registered as a trade mark if—

(a) it is of such nature as to deceive the public or cause confusion;

(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any
class or section of the citizens of India;

(c) it comprises or contains scandalous or obscene matter;

(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act,
1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of—

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods. Explanation. —For the purposes of
this section, the nature of goods or services in relation to which the trade mark is used or
proposed to be used shall not be a ground for refusal of registration.

Comparison:

There are specific grounds

• Absolute ground – S. 9
• Relative Ground – S. 11

Absolute grounds - when you try to refuse the successful registration of the marks due to the
reasons that exist in the mark itself, its absolute in nature. It is not compared with anything else,
but whatever intricate qualities are there in the mark that may be problematic. Absolute grounds
have certain aspects: Go to Sec. 9 and Article 3 for that. I pasted in last class. Refer to the same.
Also, try to observe if there are any similarities, difference between S. 9 and Article 3.
Case: Windsurfing Chiemsee Productions v. Boots, 1999 [EU Case]

Facts: It is a landmark case which talks about whether some kind of location can be trademarked
or not.

Chiemsee is the name of the largest lake in Germany and it is one of the popular destinations of
wind surfing. Wind surfing Chiemsee is a store based in Chiemsee, it’s a fashion store selling
sportswear. They had trademark with the name Chiemsee. See the pic:

Another store used the same. The store claimed that it violated the Article 3(1)(c) of the EU
directive.
Arguments by petitioners and respondents:

Held:
the court enlisted the factors it will take into account to determine whether the trademark has any
distinctive mark or not. See the following slide screenshot for the factors:

Then it interpreted Article 3(1)(c) and observed that

This article of the directive pursues an aim which is in the public interest namely that descriptive
signs or indications relating to the categories of goods or services in respect of which registration
is applied for may be freely used by all, including as collective marks or as part of complex or
graphic marks.

Article 3(1)(c) therefore prevents such signs and indications from being reserved to one
undertaking alone because they have been registered as trademarks.
That being said, the court rejected the argument of respondents. It held that just because TM origins
from a geographical place, it does not mean they are categorically unregistrable. PUBLIC
PERCEPTION played a major role in the ruling the favor of petitioners. But such cases are
exceptions.

Case: Imperial Tobacco Company v. Registrar of Trademark, 1977 (Indian Position)

Facts: Relevant provisions:

(1) The trademarks—

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the
goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of production of
the goods or rendering of the service or other characteristics of the goods or service;

ITC made application for TM twice. Registrar rejected both times and case went to Calcutta
HC. HC also rejected plea of ITC and held:
Case: Procter & Gamble Co. v. OHIM, 2001 (also known as baby dry case)

Facts:
Held:

The court was of opinion that you need to see if there is any difference between the trademark and
language used in common parlance. If there is difference, then look at whether it creates any
distinctive character. In this case, although the term BABY DRY is the purpose of the diapers, but
this is not used in common parlance. Therefore, this TM should be registered.

Quoting from the judgment: (read para 2 and 3)

Case: Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd. [2003]

Facts: (read from slide)

Held: the matter went to ECJ and it ruled (read from slide – Self-explanatory). COURT RULED
IN FAVOUR OF RENINGTON. Again, the court observed that aim is to protect public interest.

The court held that if the technical solution the product provides is trademark, it will lead to market
monopoly and that is not acceptable.

Case: Lego Juris A/s v. OHIM and Mega Brands Inc, 2010 – ECJ (Extension of Philips case)

Facts:
Relevant provision:

Article 7 of EU Trademark Law: Absolute grounds for refusal

Held:

The court held that each of the grounds for refusal in Article 7(1) must be interpreted in the light
of underlying PUBLIC INTEREST. Here, if TM is given to company, would defeat the public
interest as it then would restrict competitors from manufacturing toys like this – in similar shape
and leading to same technical result. (Moreso in the situation where the patent protection has been
expired).

The court held that existence of other shapes which could achieve the same technical result does
not preclude the application of Article 7(1)(e)(ii).

Read this for better understanding (personal opinion- not referred in class):
https://www.lexology.com/library/detail.aspx?g=610c68ae-3814-413c-b45d-2ff748c32432

Case: Lal Babu Priyadarshi v. Amrit Pal Singh, 2015

The dispute was over the word RAMAYAN. One company was using OM RAMAYAN, other
Badshah RAMAYAN. Th issue is: can you have TM over the word “RAMAYAN”
Relevant provision: 9(2)(b) – TM will be refused if

It contains or comprises of any matter likely to hurt the religious sentiments of any class or sections
of the citizens of India.

Court took into account the 8th report of the trademark bill, 1993 in which it was clearly observed
that any symbol relating to Gods, places of worship, name of religious book cannot be used as TM.
They should be freely used by everyone. Further, the person was failed to prove that it created any
distinctive brand.

Read from the slide: Self – explanatory:

Relative Grounds for Refusal of Registration (Section 11)

Exercise - Read bare text of Section 11

Section 11(1) states the following grounds for refusal:

Understand the difference – first ground is talking about IDENTICAL, second is talking
about SIMILAR products.
Section 11(2) states the following grounds for refusal:

Second ground – is talking about dilution and not infringement. The idea is not to infringe.
Generally, an additional symbol is added which does not confuse customers but reminds of
the well-known brand.

Section 11(3) states the following grounds for refusal:

Exceptions:

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of
the earlier trade mark or other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12. Explanation —For
the purposes of this section, earlier trade mark means—

(a) a registered trade mark or convention application referred to in section 154 which has a date
of application earlier than that of the trade mark in question, taking account, where appropriate,
of the priorities claimed in respect of the trade marks;

(b) a trade mark which, on the date of the application for registration of the trade mark in question,
or where appropriate, of the priority claimed in respect of the application, was entitled to
protection as a well-known trade mark.

Sabel BV v. Puma AG, 1997

Facts: Puma filed case against Sabel in Germany for infringing its trademark. The issue in this case
“whether the mere likelihood of association which customers may make between two brands, is
sufficient to satisfy the threshold of confusion – test for infringement of trademark?
Relevant provision:

Article 4 – Further grounds for refusal or invalidity concerning conflicts with earlier invalid:

Issues:

Held:

Difference between likelihood of association and likelihood of confusion

Likelihood of association: A Customer will think that there is some kind of relation between two
companies – one may be parent/subsidiary of other or some contractual understanding.

Likelihood of confusion: similarity is so much that a customer will be confused whether they are
the same.
The court made this distinction and observed that it should be looked from average customer
point of view and all factors need to be taken into account.

In this case, the court held that there is no likelihood of confusion, so, no infringement.

Case: Amritdhara Pharmacy v. Satya Deo Gupta, 1963

Facts: the respondent applied for trademark “Lakshmandhara”. Appellant resisted and argued that
it will infringe its trademark “Amritdhara”. There are similarities between the two and the same
can confuse customers.

Held: the court noted that trademark and merchandise act (now repealed) did not define
“confusion.” So, whether the similarity can confuse customers, needs to be determined on case-
to-case basis:

Court used two tests, applied together:

• Reasonable man’s test: the differentiation of the two marks must be done from the point
of view of a man with average intelligence and imperfect recollection.
• Overall impression test: one must see the overall impression of the two marks. This
includes the overall phonetic and visual similarity of the two marks. How the word
sounds, how they look – is there any similarity.
The court allowed the appeal and held that standard is to look from MAN OF AVERAGE
INTELLIGANCE AND IMPERFECT RECOLLECTION. The court held that Lakhsmandhara
can cause confusion. (Not every customer will break the names and understand the difference –
some directly look at entire name and see the similarity)

Case: Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959, Supreme Court

Supreme Court –
• The court held that in deciding a question of similarity between two marks, the marks have
to be considered as whole – and from average customer point of view.
• the court held that mere difference is “co” between the letters. The idea of the two marks
is the same.
• Further, presence of glucose is enough to establish a trade connection between the 2
commodities, despite the difference in goods i.e., biscuits (which uses liquid glucose) &
glucose (powdered form).
London Rubber Co. Ltd. v. Durex Products (Incorporated) and Ors. 1958, Calcutta HC

Facts: the respondent filed to register the trademark “Durex”. The appellant claimed that it has
been using this TM from 1932 and it was also renewed in 1954 for 15 years. The registrar
registered the TM “Darex”. The appellant argued that this is in infringement of his TM, as both
are similar. Case went to HC.

Compare previous and existing act:

Trade and Merchandise Marks Act, 1958

"(1) Save as provided in sub-section (2), no trade mark shall be registered in respect of any goods
or description of goods which is identical with a trade mark belonging to proprietor and already
on the respect of the same goods or description goods, or which so nearly resemble such trade
mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use or of other
special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit
the registration by more than one proprietor of trade marks which are identical or nearly resemble
each other in respect of the same goods or description of goods, subject to such conditions and
limitations, if any, as the 'Registrar may think fit to impose, (3) Where separate applications are
made by different persons to be registered as proprietors respectively of trade marks which are
identical or nearly resemble each other, in respect of the same goods or description of goods, the
Registrar may refuse to register any of them until their rights have been determined by a competent
Court."

Existing act: Trademarks act – Section 12

Registration in the case of honest concurrent use, etc.—In the case of honest concurrent use or of
other special circumstances which in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trademarks which are identical or
similar (whether any such trade mark is already registered or not) in respect of the same or similar
goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit
to impose.
What the court held in this case:

Case: Daimler Benz Aktiegesselschaft v. Ors. V. Hydo Hindustan, 1993 – Delhi HC

VIP Benz is in the business of undergarments and has a certain trademark (see the mark in slide).
Mercedes Benz filed claim against VIP Benz for infringing its trademark.

In this case, the court was of the firm opinion and made it clear that it is violating Mercedes Benz
trademark as the VIP Benz trademark will confusion in the minds of customers.
Case: Canon Kabushiki Kaisha v. Metro Goldwyn-Mayer Inc.

Facts: In later 1980s, MGM wanted to apply for a mark “CANNON” the idea was to use this for
products including cassettes. Now, Canon argued that it has PATENT with the name “CANON”
in Germany for electrical goods like television, video records etc.

Issue and Decision:

In this case, the customers knew that origin of place is different of both companies, but they were
confused over whether there is any relation between the two companies. So, court did not allow
MGM appeal.

Absolute Ground cases again – Will be able to appropriate it!

Radico Khaitan Limited v. Carlsberg India Private Limited, 2011

Facts: The defendant was trying to use number “8” on its beer. The plaintiff in this case was owner
of the famous brand “8 PM”
Before moving to judgment, understand that number “8” is common in alcohol industry.

Held: Court relied on these images to held that defendant can use this number “8”. On Section
2(m) which defines mark, the court held that the definition is inclusive in nature and it has to
examined from the facts and circumstances of every case.

Court also looked at Section 17 of the trademark act:

Section 17 - Effect of registration of parts of a mark—

(1) When a trade mark consists of several matters, its registration shall confer on the proprietor
exclusive right to the use of the trade mark taken as a whole.

Trademark was over “8 PM”. The petitioner cannot claim protection over individual component
like “8”.

Another factors – how there is difference between styling – how 8 is written in different style,
different background. We need to consider mark as whole.

Societe Des Produits Nestle SA v. Cadbury UK Ltd.

Facts: the issue was whether Kitkat has right over its famous 4 finger shape in chocolate? Does
consumer firmly associate such shape with Kitkat?
Held: the court observed
• Consumer don’t see the shape when she buys the product – shape is not visible. She also
sees the packaging.
• Second, shape is not the sole factor that consumers take into account to identify Kitkat.

So, Kitkat does not have right over such shape.

M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks,
1955
Facts: A company wanted to use word “Rasoi” in its product – groundnut oil. Registrar refused to
register the trademark on the ground that it directly refers to the character of the goods. Law
prohibits so.

Held: the trademark cannot be registered:

• If there is a difference in reference to character or quality;
• If the word has no distinctive character
• If it is common word of a language.

[Interesting fact: the word “Rasoi” is a trademark as per the website – for edible oils.]

PROHIBITED USE AND ACTIONABLE CONFUSION

We have been studying consumer confusion for a while. It is crucial to gauge why we have been
focusing on this.
1. Public interest – it is important to protect public interest. If the law does not prevent
confusion, consumers won’t be able to identify the products they are actually looking for.
2. Proprietary interest – afford the trademark owner the right and ability to distinguish its
goods or services from those of its competitors through the use the same mark which the
public has come to associate with its goods or services.

Types of Actionable Confusion

• Source Confusion – most common. It simply refers to the confusion wrt the
origin/source of the good.
• Sponsorship/Affiliation Confusion – Understand by example. M is milk shake from
Company L. You think that L has some kind of relationship with Company N, which
manufactures chocolate. As you like chocolates of N, you think M will also be good.
In this case, you believe there is some affiliation between two companies. Confusion is
not wrt source but the affiliation.
Arsenal Football Club v. Reed, 2002

Facts: Arsenal Football Club brought a trade mark infringement case against a vendor of
unauthorized football merchandise on which appeared various of the Club's registered trademarks
including ARSENAL, GUNNERS and Club logos. The defendant, Mr. Reed, had sold football
memorabilia from outside the grounds of the Club for over 30 years on which the Club's trade
marks were used. He made clear to consumers that his goods were “unofficial”. He had put this on
his door:

Do you think if a company puts disclaimer like this, it will waive off their liability?

Read Article 5 of EU Trademark law. It says that the proprietor has right to prevent all third parties
not having consent from using in the trade:
• Any sign which is identical
• Any sign similar which can cause likelihood of confusion

Focus on clause 5(3):

Held:
The main function of trademark is to guarantee the origin of the product. Using Arsenal, jeopardize
the guarantee of origin, which is the purpose of trademark. Therefore, Mr. Reed infringed the
trademark rights of Arsenal. Putting disclaimer does not affect anything.

Another factor – there was likelihood of confusion. That’s why, on very first place, Mr. Reed put
up the banner.

Kapil Wadhwa vs Samsung Electronics 2012 Delhi HC

Parallel importation – related to national exhaustion doctrine. Importation of some goods which
are outside otherwise authorized channels.

Parallel imports are genuine goods that are legitimately acquired from the rights holder and
subsequently sold at lower prices through unauthorized trade channels in the same or a different
market.

E.g. – I decide to import a Gucci bag for 50,000 but same is available in Delhi showroom for
1,00,000. This is parallel importation.

As far as trademark law is concerned, exhaustion of right is the principle followed. When a product
is launched in a jurisdiction, is parallel import allowed or not. Through this case, we will see India’s
position.
Exhaustion is referring to ‘limit of IPR.’ This limitation is known as first sale doctrine. The core
ideas – if I have sold my product which has registered trademark on it, then I have lost control on
further distribution of product. I just exhausted my exclusive right.

There can be national/ regional/ international exhaustion.

What are meta tags?

They provide info about the webpage in the html of the document. Seo- search engine optimization.
Because you want your content to pop up, you put more meta tags in it, so that your link comes up
in the search. So, if A searches - shop online, I would want my shop name to come first.

Facts – Samsung is famous electronic giant and they decided to sue Kapil Wadhwa, for
unauthorized import from Korea to India, and then him selling them in India at cheaper price. Q
was-

She comes back to metatag- A metatag is when you are providing info about your page. All this
will help searches to take your page. For e.g., if I am local store and using metatag Gucci, then
person searching may land on my page rather than Gucci page.
Back to facts-

Read 29(1) and 29(6) -

S 29(1) and 29(6) put forth that the act of import of goods without authorization of registered
proprietor can be taken as trademark infringement. But it can’t be read in isolation. S 30 is
exception to S 29.

As per s 30, sale of goods done by non-proprietor is permitted where goods are lawfully and
unlawfully’ acquired after they are put in market by proprietor.

Court had to see- what does market mean here? - Because if market is interpreted international,
case would favor Kapil Wadhwa. So, interpretation of this term as imp.

Court held – It can be extended to international market.

Thus, it was held that parallel imports were allowed and we did not require consent of manufacturer
etc.

Wrt to hyperlinking, or using tags, court said this

29(1) and 29(6) and 30 would mean – that such sales would not cause infringement. There was
word of caution- that

Appeal of this case has been filed and we are yet to see what SC wants to say.

Christian Loubotin vs Nakul Bajaj, 2018, Delhi HC

She is explaining how internet usage has boomed. Defendants were operating website darveys.com

Nakul Bajaj was on his trip; his mother purchased a parade bag. So, an idea stuck him. To introduce
a showroom in India where exclusive brands can be sold at a cheaper price.

Defendant was operating this website and USP was- luxury brands. Defendant was offering luxury
shoes under name of Christian Loubotin.
Plaintiff argues that goods are counterfeit and not of required standard. The image of founder of
plaintiff and name of brand was also used in the meta tags. So, Nakul Bajaj website would pop up
when Christian name would be looked at. Plaintiff felt that defendant’s website gave impression
that his brand and Nakul Bajaj portrayed affiliation. He said his trademark is violated.

Nakul – no, my website is just providing platform so that customers can book their orders directly
from the sellers.

Legal context - Section 79 of information technology act talks about intermediary liability. If a
website is only acting as intermediary, and intermediary has no knowledge of malicious practices
of seller, then, intermediary is not responsible. So Darvey can defence take this section defence.

Section 102 of trademark act – infringing is used but not counterfeiting. Term counterfeiting is not
defined anywhere in trademark act. Infringement offers broader remedies than counterfeiting.
Court – they observed that Darvey has taken responsibility that their goods were authentic. They
did exercise complete control over products by identifying seller. But can’t claim exemption under
s 79 because they were very active in selling process.

Infringement of plaintiff trademark- interpreted s 102 – said this

Summary

In this case Delhi High Court attempted to clarify the responsibilities and liability of online
intermediaries for trademark infringement. The judgement clarifies India’s intermediary liability
regime as it relates to trademark infringement. The Plaintiff is Christian Louboutin owner of
registered trademarks, including the single colour mark for its distinctive “red sole”. According to
plaintiff these products are sold in India only by authoried dealerships. The defendant is
“darveys.com”, a website marketing itself as a “luxury brands marketplace”. The plaintiff alleges
trademark infringement against the defendant, by selling counterfeit goods. The defendant argued
the goods sold to be genuine and there was no infringement on its part because it was mere
intermediary and is entitled to be protected by “Safe harbour” provision of section 79 of IT
Act,2000. In this case Delhi High Court examine ‘intermediary’ under section 2(w) of IT Act and
also discussed intermediary position in the EU, the US and in India. At last court concludes that
the defendant is more than an intermediary and exercise complete control over product being sold.
Therefore, the conduct of intermediaries in failing to observe ‘due diligence’ with respect to IPR
could amount to conspiring, aiding, abetting or inducing unlawful conduct would disqualify it from
the safe harbour exemption, as per Section 79(3)(a). Finally, the Court ordered that the
intermediary must require its sellers to honor the warranties and guarantees provided by the
plaintiff, and must also remove all meta-tags containing the plaintiff’s mark.
Brookfield Communication v West Coast

Defendant was allegedly using the same domain name as plaintiff and thereby re-directing the
traffic.

Using another trademark is one’s metatag, the consumer may not put in effort to find the what the
actual product is.

Defendant-

Analogy used by court

There is initial interest confusion here. Even if consumer has realized that he has actually got
another product, but still advantage has been taken by defendants. Also court here not concerned
about confusion but diversion, and this aspect has been criticized as well.

What is an ad-word?

Sometimes, when we google, we see sponsored links/ ads. So, advertisers purchase ad-words, that
is advertisers bid to display brief advertisements, service offerings, product listings, or videos to
web users. It can place ads both in the results of search engines like Google Search and on non-
search websites, mobile apps, and videos.

Since 2004, google gas allowed purchasers to purchase competitions Trademarks. Thus, was a
problem with few companies, because google was allowing you to purchase your competitor’s
trademark.

Rescuecom vs Google
Facts - Google operates a popular search engine under www.google.com. Through the website,
Google’s proprietary system responds to search request by: 1) provides a list of links to websites,
ordered in what Google deems to be of descending relevance to the user's search terms; and 2) by
showing advertisements on the user's screen from advertiser’s which are likely to be of interest to
a searcher who enters the particular term. The ad includes a link to the advertiser's website, so that
in response to such an ad, if the searcher clicks on the link, he will open the advertiser's website,
which offers not only additional information about the advertiser, but also perhaps the option to
purchase the goods and services of the advertiser over the Internet. Rescuecom filed an action
against Google for trademark infringement, false designation of origin, and dilution under the
Lanham Act. Rescuecom alleged that Google has recommended the Rescuecom trademark to
Rescuecom's competitors as a search term to be purchased. Rescuecom's competitors, some
responding to Google's recommendation, have purchased Rescuecom's trademark as a keyword in
Google's program, so that whenever a user launches a search for the term "Rescuecom," seeking
to be connected to Rescuecom's website, the competitors' advertisement and link will appear on
the searcher's screen. This practice allegedly allows Rescuecom's competitors to deceive and divert
users searching for Rescuecom's website into thinking that a competitor's advertisement (and
website link) is sponsored by, endorsed by, approved by, or affiliated with Rescuecom.
Legal context in this case was Lanham act – this act is defining what is the threshold of confusion.
Trademark infringement requires these essentials-

Use in commerce is the threshold issue which has to be met.

This case relied on more cases to interpret use in common. So, she asked to read this judgement.

Contacts vs WhenU.com- was one such case 2nd circuit case.

The court said that internal usage of trademark which helps you to trigger pop up ad words is not
really use in commerce. Because use in commerce should be bona fide and in ordinary course of
trade.

The court again looked at initial interest doctrine.

Whether will google be liable for infringement?

Google practice has been criticized, alleged to take unfair advantage of its position. The Claim of
Rescuecom was allowed.

We saw till now as to What kind of prohibited use is allowed in internet world.
LAW OF PASSING OFF

Difference between passing off and infringement is very important.

Trademark act etc. came really late. What initially just gave you negative right came through
common law understanding. There was no trademark registration back then, but still protection
was imp for trademark community, that is you cannot use my mark as your mark.

Passing off was the initial theme which began and it has continued. So, the statutory protection
was interpreted as addition to common law principle. Passing off is available to people who do not
have certificate of registration also. Its use has expanded to businesses, seminars etc. passing off
is considered as a tort. It has expanded to both goods and services now.

It is closely linked to consumer protection. you can’t sell your goods under someone’s trademark.

Classical trinity test

Jif Lemon Case
Reckitt Colman Ltd Vs Borden Inc 1990

Plaintiff was producing lemon Jif, and Realemon introduced a similar concept some years later.
Court had to ascertain

● Because in passing off there is no requirement of registration, so requirement of showing

goodwill is considered important.
● Court said packaging is similar, in fact only labels were different. But labels were usually
thrown away by consumers, and thus it could lead to confusion. Court- shoppers won’t do
side by side experiment in every purchase. Confusion is bound to happen, will cause loss
to plaintiff. Court ruled that in terms of passing off, plaintiff claim should stand.
● Passing off is a common law right protection (available for unregistered marks also) and
infringement is a statutory right (only against registered marks).

N.R. Dongre v Whirlpool Corp 1996 [SC]

Famous trademark whirlpool –

This was a division bench of the Del HC, the court said that even if the TM whirlpool was not
registered at that point of time, when the suit was filed, it was still well known and had acquired
immense goodwill in India. The courts were thinking that whatever goods and services which were
having that TM it was at the minds of the public and potential consumers that it was of high quality
because of the reputation of the mark gathered over so many years. Court held that the confusion
would exist if the defendants were allowed to continue use of the Tm for their goods. The division
bench was also of the opinion that when you have a product, when its trademark exceeds its
boundaries not only through importation but through advertisements that knowledge and repo
would also be taken into consideration. Which is why ma’am is establishing the facts from 1937,
which is way before whirlpool came into India. The court was taking into account that the TM law
would have to expand its boundaries because reputation in today’s world was not limited to one
jurisdiction, but through advertisement and importation it would cross borders. If you have
knowledge and awareness of a foreign good of a foreign trademark, that can also occur even though
the goods are not available for circulation in your country. So, this case also talked about
transborder reputation or spill over reputation taking into account for passing off. Or also while
considering confusion i.e., if goods are not available in your country you could still have that
reputation because of ways and methods of commercialization.

Another important issue – whether a non-registered prior user may maintain an action of passing
off. The issue was if somebody may have been using that part, and for some reason was not able
to renew and at this point of time was not the true registered owner of the TM, would that person
be allowed to bring a claim against the company which has a similar trademark now. The court
was of the opinion that a prior user of a TM could maintain an action for passing off against the
proprietor. While looking at the Indian TM Act of 1958, the court also analyzed these issues while
looking at the current provisions. This suit was filed in 1999 so the court heavily relied on and
looked at the old trade and merchants act of 1958. Ma’am has shown the new act’s similar
provision in the slide below (this is solely for reference) this was not relied on by the courts,
because the applicable law at that time was the earlier 1958 act.

# Transborder Reputation/ Spill over Reputation

The old act is talking about the fact that what would the defendant assert if there was an exclusive
right to use the TM. Based on the language of s 28, the defendants said that they had exclusive
right to use the TM whirlpool and therefore they alone would have gotten any kind of relief wrt
infringement. But the division bench focused on the opening words, highlighted in the slide, which
is ‘subject to the other provisions of this act’. While looking at other provisions, it asked what are
the other provisions which would not be subject to section 28. The court moved ahead and relied
on section 27, which is ‘No action for infringement of unregistered trade mark’. Reads as follows
–
According to the court, the language of section 27 would definitely override section 28(1) and
conclusion of this overriding would mean that the vested rights of any Prior User of a trademark
would be preserved and protected. The court relied on section 33 of the TM act (section 34 in the
new act), slide above. S 33 was Saving for vested rights. S 33 of the old act is providing that
nothing in the old act would entitle registered proprietor to interfere with the use of a TM with a
prior user. Therefore, court also found some support in s 33, to come to a conclusion that a right
of the prior user should be protected. The court said that the right created under 28(1) is not
supreme when it is read in conjunction of the other provisions of the act.
So, the court then looked at these three sections, and of course, it also went further. And it stated
that the right of goodwill and reputation and a trademark was recognized that common law, even
before it was subject to statutory law, and that rights to a trademark were acquired only through
its use. Protection is provided under Section 27 and 23 of the acts. Division bench emphasized that
they were not approving of any attempt by one trader, to appropriate the work of another trader,
even though that trader may be a foreign trader and mostly uses his mark in respect of the goods
available abroad, which is outside the country where the appropriation may have taken place.
Additionally, awareness and knowledge of the trademark through any method was sufficient to
find that Whirlpool Corporation had acquired reputation and goodwill within India, for its well-
known trademark. And therefore, Whirlpool Corporation, the non-registered prior user could
maintain an action for passing off against the defendants who were the registered proprietors of
the trademark WHIRLPOOL.

If it's a registered trademark, and if you're approaching the court of law for a passing off remedy,
would you still have to show reputation?

Even Whirlpool had lost registration at that point of time. But despite this, they had to show
reputation. And while showing reputation, the court took into account spillover, and transported
reputation. So, the point being that reputation is of core importance in understanding a passing off
claim.

This is also one of the differences between passing off and trademark infringement, which is that
in Infringement, a registered mark is protected throughout India, but in Passing Off, the windows
of reputation do open up, they provide remedies which provide protection for the goodwill of the
business in the geographical area in which the plaintiff has sufficient reputation. And passing off
claim in multi-jurisdictional claims could be easier than a trademark infringement claim.

Colgate Palmolive v Anchor Health

Discussion in Breakout rooms, try to see if these two products, Anchor White and Ajanta Dento
white, if they would be passing off their products as colgate’s products. You have to show in order
to prove a successful passing off claim that there was immense reputation and goodwill that there
was some kind of misrepresentation happening in the sense that your goods are very similar to
each other. And because of this misrepresentation some damage, commercial damage has
happened.

Nishtha: Our discussion was centered around the fact that Anchor and Ajanta could be set to
passing off given that the packaging of the bottles are very similar. The second point was the color
combination of red and white would lead to certain confusion on part of the customers. And also,
that an average consumer, while maybe shopping in a hurry will not really read the names. And so
with that packaging and color combination, would likely to be confused. And so, these were the
three main points that we argued for.

Did you think it was enough for misrepresentation? Do you think that red and white is enough? If
you go into a detailed analysis of whether they are similar or not, I think one can one can argue
that Anchor and Colgate could be maybe similar but Ajanta and Colgate would be difficult to
prove.

Nishtha: We thought that packaging itself could not be a ground for considering something to be
passing off. But here the names are also very different and the pictorial depictions on the
Commerce are actually different. So, an average consumer, if you look at these three bottles
together, I think you can't really mistake one for the other.

Raghuwanshi: We also thought since Colgate’s sales would be on the word Colgate and on the
pictorial representation, and not only the shape of the bottle, so therefore, that alone cannot be a
consideration to say that we are passing off as Colgate.

Group 2 (against passing off) – there is not much misrepresentation because of the color scheme
and the images which are printed on the bottle. Coming to the third point, the loss that is happening
in the sales of Colgate is not necessarily due to anchor origin, the passing of their commodity as
being good or bad, but merely providing a sort of alternative to Colgate, which even a normal
consumer would while buying the commodity see the name that is obviously different. And again,
the slight visual differences that are present in the bottles of all the three bottles.

When you're drafting your arguments, and your pleadings, paragraphs and paragraphs are written
on just how they are similar or they may not be similar as per whosoever you're representing. So,
a categorical dissection of Anchor vs Colgate can also go on for pages. Evidence would include
proper bottles of these two products, shape, you would be looking at the present of the anchor logo,
the wordings and how the words are written below anchor, how Colgate is written etc.

When you're dissecting as lawyers, you have to look into the minute details as well to fulfill your
obligations under the ingredient number two, which is misrepresentation.

Now here the court relied on Colgate. And they said that the onus was actually on the defendant
to show that it made every effort to stay as far away as possible from the get up and of the trade
test of whosoever was the prior user, which in this case was Colgate.

The Court compared the tooth powder cans and opined that both Colgate and Anchor cans looked
similar from a layman’s perspective. The Court held that a trade dress influences the overall
impression that the customer gets as to the source and origin of the goods. This may be from the
visual impression of color combination, the shape of the container, packaging, etc. The Hon’ble
judge also emphasized the fact that toothpowder is generally used by an illiterate, unwary, and
gullible customer. If such a customer gets confused as to the source and origin of the goods which
he has been using for a longer period by way of getting the goods in a container having a particular
shape, color combination, and getup, it amounts to passing off.

Seven Towns v. Kiddland, 2016

Rubric's Cube - So in this case, the defendants came up with a similar game, which looked exactly
like how a rubric’s cube would like. The courts had to decide if this passing off claim would be
successful or not.

In this case, the defendants were actually unable to justify that why they adopted the Rubik's Cube
trade dress. The court also went ahead and said that as far as the line of judgments are concerned,
they said that no single party can actually claim exclusive rights in a single color without
demonstrating any secondary meaning. So, if that is possible, keeping that in mind, it is still
possible for a party to claim some exclusive rights in a combination of these panels. So actually,
in the Indian jurisprudence, you will find cases which stand on both spectrums about giving
protection over a certain color, and not giving protection over certain colors. But the facts really
have has varied from the case facts.

In this case at least from the perspective of a potential customer who would be a child, Ma’am has
some doubts here. Because the court sided in favor of Rubik's Cube saying that the actual get up
was copied and the defendants could make out that case that it was similar to Rubik's Cube.
But it is still difficult because from a child's perspective that whether this color scheme would
remind you of only of the Rubik's cube or not?

The court felt that that it would and that's why an injunction was granted against the defendants to
stop the usage.

Britannia Industries Ltd. v ITC, 2017

Respondents were responsible for filing this civil suit against the appellate Britannia industries.

Slide above both are digestive biscuits- Within just a matter of two or three years, so many
companies like Britannia and Sunfeast be selling digestive biscuit. Market being flooded by these
companies coming in and by making these biscuits which are supposedly healthy, which are made
of wheat, which do not have any added sugar or maida. They were known as digestive biscuits that
is just how it became popular.

There was a passing off claim, against Sunfeast Farmlite Digestive All good biscuits. According
to the respondents, the product nutrichoice digestive zero biscuit, they had a packaging which was
deceivingly similar to the respondent’s products. Confusion because of the color combination of
yellow and blue, biscuits on the right, branding on the left-hand side. Shade similar or not, confused
or not, would you take into consideration the fact that ‘Digestive biscuits’ is being sold by every
brand out there. If that is the case, would, given monopoly, over something like this, is just one
brand, would serve the functions of TM law or not. Issue was of passing OFF.

Issue was that whether this gets up, in particular the color combination of yellow and blue had
become exclusively identifiable with digestive biscuits. In the present case, the court held that ITC
in its Advertisements, ITC would have greater difficulty to get TM on the general get-up and the
color combination. It was not possible for the color combination to become so popular that it
would get a separate reputation all together. Especially, when Britannia had submitted the
pleading that they started production as recently as 2016. Based on the short span of time, the court
felt that having such kind of reputation based solely on yellow and blue was difficult. And because
the bench did not find any reputation, they felt that going ahead and talking about
misrepresentation and damage was also not required, because if first element of passing off is not
fulfilled then they don’t need to look at other elements of misrepresentation, and likelihood of
damage.

This adds one more differentiation btw TM Infringement and Passing OFF – which is that in
Infringement the protection would be granted for the Mark., but as far as Passing off is concerned,
protection has the possibility of being granted for criteria which could go beyond marks like get
up and trade dress.

Up until now we have seen trademark infringement and passing off with a view to differentiate
between them. The difference that we have seen has been stated in the table below.

The cases and jurisprudence that we looked at has helped us understand that passing off case
protection can be granted to something more than just the mark- probably the get up around the
mark or the trade dress. This is in contradiction to trademark infringement which just concerns
protection of the mark.

Wockhardt Limited v. Torrent Pharmaceuticals- SC- Wock owned the trademark called
chymoral which essentially a drug given to a person after surgery to control the swelling. Wock
filed a passing off suit against Torrent who came with the mark called chymtral forte. This went
to Bombay HC which refused to grant injunction so the case went to SC.

The SC upheld the three elements of passing off- (i) establishment of reputation (ii)
misrepresentation and (iii) likelihood of damages. The court while assessing the merits was of the
opinion that “though passing off is, in essence, an action based on deceit, fraud is not a necessary
element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the
existence of a cause of action for passing off, if otherwise the defendant has imitated the mark of
the plaintiff”.

The fact that the defendant did not intend to pass off- its state of mind is irrelevant. This case is
imp because it upheld a similar finding of earlier cases including the case of Laxmikant V. Patel
v. Chetanbhai Shah.

In Laxmikant the words that were in question was ‘Muktajivan’. The goods concerned were
stationary material, albums- plaintiff and defendant carried on similar business. Defendant wanted
to have a similar name as plaintiff Muktajivan colour lab. The court held in favour of plaintiff and
held that the defendant state of mind is irrelevant.

These cases help us to add up to the differences between the infringement and passing off, in
infringement the severity of actions of defendant could be influenced by the fraudulent actions but
in passing off intention of defendant irrelevant as long as the three ingredients satisfied.

With regard to third element of likelihood of damage- it is enough to how that a possibility of some
damages that should suffice.

Note – One more difference between trademark and passing off – The intention of party [good
faith] is relevant factor in trademark infringement cases; however, it is irrelevant in passing off
cases. Whether party acted in good faith or not, does not matter in passing off.

Cadila Healthcare v. Cadila pharmaceuticals- Cadila restructured and these two entities were
formed. In todays’ world IP is given special importance during restructuring. Both the parties got
to keep the name Cadila as a corporate name. One party developed a drug named falcigo for
treatment of a kind of malaria- Falcipharum Malaria, this party got this falcigo registered. Next
year the other party imported something known as flacitab- which was also for this kind malaria-
Falcipharum Malaria. Falcigo owners filled an action of passing off they said that the names are
similar and could cause confusion. Defendant said that common element ‘falci’ comes from the
name of the disease itself.

Court said-

“Trade mark is essentially adopted to advertise one’s product and to make it known to the
purchaser. It attempts to portray the nature and, if possible, the quality of the product and
over a period of time the mark may become popular. It is usually at that stage that other
 people are tempted to pass off their products as that of the original owner of the mark. That
is why it is said that in a passing off action, the plaintiffs right are against the conduct of the
defendant which leads to or is intended or calculated to lead to deception.

While dealing with cases relating to passing off, one of the important tests which has to be
applied in each case is whether the misrepresentation made by the defendant is of such a
nature as is likely to cause an ordinary consumer to confuse one product for another due to
similarity of marks and other surrounding factors.

In the present case, even though both these drugs were sold under prescription this fact itself was
not considered enough to prevent confusion which the court felt that otherwise was likely to occur.

“Broadly stated in an action for passing off on the basis of unregistered trade mark generally
for deciding the question of deceptive similarity the following factors to be considered:

a) The nature of the marks i.e., whether the marks are word marks or label marks or
composite marks, i.e., both words and label works.

b) The degree of resemblances between the marks, phonetically similar, visually similar
and hence similar in idea.

c) The nature of the goods in respect of which they are used as trademarks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require,
on their education and intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of

dissimilarity between the competing marks.

The court noted that there is a difference in various areas of India- rural and urban. There is high
degree of possibility accidental negligence for various reasons like illiteracy, lack of knowledge
of English. The court noted that the issue is in medicine sector which is relied on by all, including
the rural, less educated people also rely on it. Therefore, the court noted that a stricter approach is
necessary in this case and the court ruled in favor of plaintiff and upheld passing off.

Infringement is set out in sec 29 & passing off is set out in sec 27.
Defenses against infringement and passing off

Defense is basically justification to use the property of someone else. The relevant defenses with
regard to trademark
- Invalid registration- prove that the registration of the mark is itself invalid.
- Use the mark in accordance in honest practices
- Use the mark in spare use and accessories
- Acquiescence and exception to acquiescence (good faith)

A few countries also have the concept of fair use but it is not Indian trademark act and is in fact
followed in India. The fair use we are talking is different than what we had in copyright. India does
not have fair use for copyright- it has specific exceptions which are called fair dealings.

Fair use for trademark- the classic fair use looks at good faith use of the mark- whether the mark
has any secondary meaning or primary meaning. This usually happens when marks have a lot
descriptive attribute. The mark basically describes the attributes of the product. In this regard, it
can be argued that the use of defendant is only for the secondary descriptive meaning associated
with the mark and nothing to do with the primary meaning that it represents basically the
association of the mark with a product. Other point of fair use is also nominative fair use- this is
basically when the mark is used to refer to the owner’s own product and not the user’s product.
Example is comparative ads- where by a competitor compares its product with that of competitor
and it use the competitors mark for defining the competitor’s mark itself. Thus, when defendant
can show that the mark use was for the services that the mark offers then the onus is on the plaintiff
to show that some likelihood confusion.
Note – One good example of good faith is – Comparative advertisement i.e., using somebody else’s
mark just for reference [Not using it your favor or defaming them].

The reason she is not going in detail because it is prevalent in India.

Sec 31- Registration to be prima facie evidence of validity

(1) In all legal proceedings relating to a trade mark registered under this Act (including
applications under section 57), the original registration of the trade mark and of all
subsequent assignments and transmissions of the trade mark shall be prima facie evidence
of the validity thereof.

(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid
on the ground that it was not a registrable trade mark under section 9 except upon evidence
of distinctiveness and that such evidence was not submitted to the Registrar before
registration, if it is proved that the trade mark had been so used by the registered proprietor
or his predecessor in title as to have become distinctive at the date of registration.

So, if it can be shown that the registration is invalid and therefore there is no evidence that the
plaintiff could show of the validity of the mark then your use cannot be infringement- since there
is no owner of the mark.

Section 30- Use in accordance to honest practice

(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by
any person for the purposes of identifying goods or services as those of the proprietor provided the
use—

(a) is in accordance with honest practices in industrial or commercial matters, and

(2) A registered trade mark is not infringed where—

(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be
accessory to, other goods or services in relation to which the trade mark has been used
without infringement of the right given by registration under this Act or might for the time
being be so used, if the use of the trade mark is reasonably necessary in order to indicate that
the goods or services are so adapted, and neither the purpose nor the effect of the use of the
trade mark is to indicate, otherwise than in accordance with the fact, a connection in the
course of trade between any person and the goods or services, as the case may be;
Defense of Acquiesce

Section 33 - Effect of acquiescence — (1) Where the proprietor of an earlier trade mark has
acquiesced for a continuous period of five years in the use of a registered trade mark, being aware
of that use, he shall no longer be entitled on the basis of that earlier trade mark—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation
to which it has been so used, unless the registration of the later trade mark was not applied
in good faith

The essential idea if the proprietor of an earlier for a continuous period of 5 years in the use of
registered trademark, then being aware of the use, he will not be entitled to file for a declaration
that the registration of the later trademark is invalid or to oppose.

Reliefs in trademark

Relief is basically the remedy given to the owner of trademark if the infringement or for passing
off is proved. Basically, the court is trying to make good the losses.

Section 135 - Relief in suits for infringement or for passing off — (1) The relief which a court
may grant in any suit for infringement or for passing off referred to in section 134 includes
injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff,
either damages or an account of profits, together with or without any order for the delivery-up
of the infringing labels and marks for destruction or erasure.

(2) The order of injunction under sub-section (1) may include an ex parte injunction or any
interlocutory order for any of the following matters, namely: —

(a) for discovery of documents;

(b) preserving of infringing goods, documents or other evidence which are related to the
subject-matter of the suit;

(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by
way of damages (other than nominal damages) or on account of profits in any case—
 (a) where in a suit for infringement of a trade mark, the infringement complained of is in
relation to a certification trade mark or collective mark; or

(b) where in a suit for infringement the defendant satisfies the court—

(i) that at the time he commenced to use the trade mark complained of in the suit, he
was unaware and had no reasonable ground for believing that the trade mark of the
plaintiff was on the register or that the plaintiff was a registered user using by way of
permitted use; and

(ii) that when he became aware of the existence and nature of the plaintiff’s right in
the trade mark, he forthwith ceased to use the trade mark in relation to goods or
services in respect of which it was registered; or

(c) where in a suit for passing off, the defendant satisfies the court—

(i) that at the time he commenced to use the trade mark complained of in the suit, he
was unaware and had no reasonable ground for believing that the trade mark for the
plaintiff was in use; and

(ii) that when he became aware of the existence and nature of the plaintiff’s trade mark
he forthwith ceased to use the trade mark complained of

One of the primary reliefs is delivery or destruction of the infringing labels- the court will tell the
defendant to destroy the goods which have the infringing labels

Injunction can be received under sub-section 2 to prevent the infringement of passing off.
Injunction could be temporary or permanent.

Sub-section 3 provides when the court cannot provide damages other nominal damages or accounts
of profit.

Certification marks are basically marks issued by certifying authorities- these marks certify quality
such as ISI. These are trademarks but they certify quality. In such situations damages may be
limited under sub-section 3.

A collective mark is marks used by a number of businesses to refer to their goods.

A practical challenge is how to choose the enforcement route- infringement or passing off. A
common strategy is to club infringement and passing off suits. Passing off can be applicable to
registered and unregistered marks.
One of the more appropriate routes could be under CPC, with civil remedies being more
appropriate.

Some remedies that can be claimed are-

- Injunction can be claimed
- Mareva injunction- when liquid assets involved- Mareva injunction freezes the assets of
the defendant
- Damages
- Accounts of profit
- John Doe Order- these orders are given when there are multiple defendants who are often
even unknown. The name comes from the fact that John Doe is used as a term when there
are multiple people whose names are unknown. Very common in digital website and
domain name infringement or digital products. Say a movie is pirated and showed on some
more 100 websites and no one knows who the operators of websites are- John Doe order
will be passed to ask all of these bring it down. These orders are also known Ashok Kumar
orders in India.

Typically, an infringement action can take 2 or 4 years.

Trademark Act also allows for criminal proceedings- Sec 102 (Chapter XII)- criminal proceedings
can be started by filing an application to magistrate or police officer. The party is basically asking
magistrate to conduct search and seizure of infringing material or possible infringer’s premise.

The police officer has to take the trademark registrar opinion before search and all.

Administrative Remedies- this is basically before the mark even gets registered
- Objecting to a mark published in the trademark journal for registering

There are companies who has teams whose job just to look for similar marks application in the
journal.

Law of Trademark Dilution

Before that a quick recap of passing off and infringement.

Infringement is statutory remedy, whereas passing off is a common law remedy. Infringement- the
core question is whether the defendant is using some mark which is same as or which is colourable
imitation of the plaintiff’s registered trademark. Whereas issue in passing off is whether the
defendant is selling the goods in market so marked as to be designed or calculated to lead purchaser
to believe that they are plaintiff’s good.

Passing off contours are questioned because a lot of times showing misrepresentation can be bit
complicated in a sense that when both parties operate in different product market or the channels
of the product are different may cause some jeopardy to the registered trademark owner. But
because trademark was meant to protect goods of similar kind, these days there are brands involve
in producing multiple kinds of goods and services, having protection over trademark becomes
more crucial.

Similarly, there are more complicating contours in the sense that plaintiff and defendant located in
different locations and showing misrepresentation there will be difficult. In the Whirlpool case,
we saw that reputation can still be affected in other jurisdictions. It can go beyond borders.
WELL KNOWN MARKS

Some of the element of this can be seen in Paris convention.

The purpose of this provision is to avoid registration and use of trademark which will be similar
to another mark which is very popular and well known in the country. This exceptional protection
of well-known mark is justified because registration of a similar mark, that would lead to act of
unfair competition and be prejudicial to those who will be misled.

Paris convention leaves it upon the countries to decide the threshold but in doing so authorities
will have to consider the question of viewpoint of the consumer because in the end the consumer
should not have any confusion.

These provisions specify that confusion might occur in cases of fair reproduction or in cases of
invitation or translations. How well known a trademark is in a country is very subjective? It has to
be decided by the authorities like judicial authorities and that’s why the concept is set out by the
Paris convention.

NOTE- scope of well-known marks was kept limited to goods but in 1960s the TRIPS agreement
extended it to services as well.

5 years’ time period given to trademark owner so that time is given to respond and protection of
well-known mark can also be found in sec 11 of trademark act, 1999
Trademark act, 1999 was enacted as an obligation of India’s action to sign Paris agreement in
TRIPS agreement. Major reason why earlier act was repealed and this came in. India was trying
to expand global reach as far as IP was concerned. When sign int instrument, you have to make
changes to the domestic laws to incorporate int instrument in own domestic laws. Sec 11 trying to
tell that what would be trademark and giving protection to well-known mark. It will be detrimental
to the distinctive character of the trademark.

Section 11 (6)- factors. A joint resolution concerning provision on the protection of well-known
trademark was adopted by the WIPO in 1999 and the resolution was meant to protect well known
marks from any infringement. The resolution had factors to determine how a well-known mark
will be decided. India adopted these factors and put in 11 (6)
If nivea trademark is popular in India, they don’t have to show that it’s been registered here.
Because the well-known speaks a lot for it.

Section 11 (10) talks about obligation on registrar in cases of dispute or where there is infringement
happening. Go thru sec 11.

Up until now litigation was used to know if a mark was indeed well known or not. But now
trademark rules came in 2017 and it established a new procedure which allows registrar to give
out a particular trademark as well-known mark. You don’t have to wait for someone to come with
a similar mark and then litigation to know if a mark is well known. Now the rules give opportunity
to make a move yourself and claim a registration as well known. For this an application needs to
be filled FORM TM-M- https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-M.pdf
– the fees are 1,00,000.

Trademark Bullying

It’s a common concept that a bigger entity will put pressure on opponent through notices. CND
notice is initial step someone would take before litigation. Warning the parties about the mark. In
CND notice they will also mention how successful they have been wrt to other small organizations
who allegedly used their trademark in a way to bully the smaller party. The effect is that not a lot
of firms have litigation power and money so they will use the money to rebrand the trademark in
a way that doesn’t infringe.

Section 142 of trademark act gives protection

According to this section, if any person by method like advertisement or circular tries to threaten
a person or infringement which is baseless, those will be unjustified.

These are few examples of well-known trademarks. They have up to an extend been able to defend
their rights- https://ipindiaonline.gov.in/tmrpublicsearch/wellknownmarks.aspx.

All these marks have been subject of litigation and exhaustive link is given in IP India website.

The question that comes is – everyone will want to make use of this immense reputation the mark
has. There are very clever ways of infringing. E.g., Amul is known for making cartoon based on
some current events published every day. AMUL is trying to make use of current happening and
come with their own interpretation. It isn’t infringement of trademark but they are trying to use
mark from another entity and remind the viewers that such event has happened and we are making
use of it. The end goal is we are looking at it from the perspective of Amul cartoon. We aren’t
getting confused but seeing it from the perspective of Amul. Reproduction of mark in own context.
Current laws may not be sufficient for such mixed infringement so we have law of Trademark
Dilution. You aren’t copying or attacking the mark but are diluting the mark.
LAW OF TRADEMARK DILUTION

Trademark law is aimed at protecting the consumers from confusion and deception. There are
social benefits also. But at time a consumer will not get confused but will know the mark has been
used here. It is extension of the ever-growing popularity of lot of well-known trademarks. It tries
to make change to the extent of trademark protection. Prohibition are not common law derived
motivation but are motivated to protect consumer interest.

There are 2 anti-branding images. These images remind us of coca cola and shell and how it’s
being diluted.

These images were tested with consumer to understand how much confusion it will create. Huge
consumer associated it will coca cola and shell image in these pics. This indicates that these images
can successfully be recognized. But the dilution is happening due to the blurring and tarnishment.

In the same survey, consumers were asked how they felt about the content of the image. Consumer
in this case felt neutral seeing this image of coca cola but they felt negative about the shell mark.

Dilution of mark can happen through blurring or tarnishment. Through blurring you are watering
down the distinctiveness of the mark or attacking the uniqueness of the mark but through
tarnishment you are making fun of the mark.

All of this is very subjective. An example - If artist Parshe came out with work- mickey mouse on
nude body and Nazi symbol behind it. its subjective as it depends on what each person’s
connotation is with nudity.
If we had to categorize it, we can see that registered trademark is infringement if it is identical with
another trademark and that is detrimental to distinctive character. Trademark dilution by burring
is found in Sec 29 (4)(a). Sec 29 (4)(b) is dilution by tarnishment.

Bayerische Motoren Werke (BMW) AG v. OM Balajee Authomobile (India) Pvt Ltd, Delhi
High Court, 2020.

BMW were trying to defend their mark. It was a well-known trademark. They realized that a small
company in India was marketing DMW for their e cart rikshaws.
So, they decided to issue a C&D notice and the defendant refused to comply with the demand of
the Plaintiff.

Contentions of the parties in the above slide. Here the court felt that -

Use of the mark by the defendant will cause infringement as per sec 29 (4).

The court felt that as per sec 29 there was infringement but ideally this argument by DMW that
there are other parties who have similar marks, then how far can BMW go to protect it. One can
argue that enforcing such rights over an entity can be difficult but on the other hand if there is
reasonable assumption that BMW should go after other companies with same mark, then
possibility can be difficult as AMW has more characteristics attached to it.

COCA COLA V. GEMINI RISING

“Enjoy cocaine” symbol similar to coca cola. They wanted to parody popular marks. The plaintiff
was not happy with it and decided to sue. One of the essential questions that comes is that can a
party closely copy another trademark design without permission as long as infringing sales are not
encountered. As it was meant for mimicking purpose
The idea is because coca cola enjoys such immense reputation, enjoy cocaine was using that
reputation to create meaning that was different from enjoying coca cola. This was evident that both
parties were not in competition in ordinary sense. The court thinks if you have to associate your
parody with some noxious substance like cocaine and this association is done with plaintiffs’
beverage that will have tendency to injure the plaintiff’s business reputation.

As far as this case was concerned,

The court gave in favor of coca cola but this entire subject of trademark parody is complicated. It
is subjective. It would also relate to what is the court’s understanding of what parody is. It is
subjective. Courts will put pressure to find if there is any confusion or not and that would be
justified in favor of well-known trademark.

But the criticism of this is how it infringes freedom of speech and expression- Ma’am isn’t going
to teach this but just showing the clash.
Daimler Benz v. Hybo Hindustan (1994, Delhi HC)

VIP Benz had similar mark was created with the help of a person whose legs stretched. It seems
he is creating circle of life and all. The mark of VIP Benz was used for undergarments. Mercedes
Benz had problem and felt that there was dilution happening. Court attacked provision related to
trademark and felt that status of the mark of Mercedes Benz was questioned by VIP Benz and felt
that not any company can use Mercedez Benz mark. If you look at the language of the judgement,
the court goes on record to state that as a child they have also referred to luxury cars as nothing
but Mercedes Benz. If the mark is popular, no one should be given to power to recreate mark in a
way which it may tarnish their reputation in the sense that undergarments may not have a similar
stature as luxury cars.

The court gave decision in favor of Mercedez Benz

In the previous judgement, the court did not go into the merits of what trademark dilution violation
actually are. They appear to be overwhelmed by the status of Mercedes Benz mark. This is one of
the judgements to base the decision on the concept of dilution.

Tata sons Ltd v. Greenpeace International 2011 [Trademark Dilution vis-à-vis Freedom of Expression]

Greenpeace is essentially about protecting bio diversity. They had a concern about an upcoming
project in Orissa as they felt if it was successful, then they will have probable issue for particular
turtle living there in that region. They came up with this game. Game was turtle v. tata. They used
2 caricatures which was representative of the turtle present in Orissa and the second caricature was
similar to TATA symbol. Tata alleged that Greenpeace India had made this online game and they
were using their trademark T without the permission and this was driven by motive to defame tata
and bring tata in bad light as to show they haven’t done due diligence. On the other hand,
Greenpeace based its argument on freedom of speech. Tata also said that this right to free speech
wasn’t to be used to tarnish and defame Tata reputation using the game.

Section 29 (4)- green peace submitted that the whole point of the game was to make people aware
that if TATA went ahead with its project, then there could be certain consequences on biodiversity
of that region. They argued that use of tata trademark did not amount to infringement of trademark.
They were not getting any commercial benefit out of it but their intention was to bring this to
public knowledge. In such cases, defendants were also saying that they should get benefit of the
clause. Section 29 (4)(c) states mark without due cause. So, they said that they should be given the
benefit of due clause.

The purpose was to draw attention of the viewers to the activity and not to the trademark per se
and that will constitute due cause within sec 29(4)(c). therefore, court was of opinion that usage of
logo of tata was denominative.

India has recognized that if you use parody without creating any confusion or attacking the
reputation or without attacking distinctive character then it will not be dilution.

Overall attitude of judiciary is indifference to the broader implications of the concept of dilution
itself and how it will impact.
Domain Names and Trademark Law

Perspective – how trademark law functions in the age of Internet. The way is internet is connected
today, huge web domestic as well as iMTNL, they connect many internet users together, which
leads to sharing of information and services.

Internet usage has exploded in the recent years, this has also complicated how trademark law
functions. This commercialization has happened to such an extent that there are some
consequences on how companies operate and how people indulge in business on the internet.
Result is also that the companies have positioned themselves so that they can offer services on the
internet, by reaching out to immense customer base and their market via the internet.

Domain Name is extensively used by the companies so that they can capture their market. What
exactly is a domain name? –

It’s essentially this web address which is used by companies to locate their website, which is
available to everyone on the web to access. Idea is that you can distinguish the resources which
are available on the web with the help of a Domain name. Without it, it would be difficult for a
company to be visible on the web. The problem comes when there is freedom to choose the domain
name. The companies have freedom to choose their domain names which are present in the public
domain, they tend to select a combination of names which are easy for the customers to remember.
The problem is that when a company chooses a name, which has already been registered as a
trademark on somebody else’s name, there will be some clashes between the companies.

Even if they have some legitimate claim on a domain name, but they might not have promptly
registered their trademark, then that could be a problem, because the names are from a pool which
is available to everyone. You cannot use a trademark without their explicit consent. You could
also not use a trademark domain because you could confuse the customer about your internet
website. That is where trademark law becomes important in domain names.

Where you tend to do the same activity on the internet, there can be some complications
How the domain name system works – for ex. You have www.google.com, this domain name
system works on the basis of hierarchy of names. And on the top of this hierarchy of names, there
are Top Level Domain (TLD) [for ex. ‘.com’]. TLDs are further divided into 2 –

1. Generic TLDs [gTLD] (with three or more characters, and most of the times indicate the type
of organization which is registering the domain name, also includes the country code etc.).
examples of TLDs are .com, .org, .uk, etc. 2. Country Code TLD [ccTLD] this is the second level
in the hierarchy, this is the part of the domain name which is immediately to the left. For ex.
Yahoo.co.in, then country code would be ‘.in’. domain names are normally allocated by a process
of simple registration, has to be with the appropriate registrar with the payment of some fees.

But are domain names even trademarks to begin with? – what is your understanding of trademark
law? What are the functions which are portrayed in this.

Is it even appropriate to apply TM law to DN, given that TM law was meant to protect a mark
which would signify one proprietors’ image. Is it same as a domain name protection?

Domain names also indicate what is the source of the thing is, and where would it lead him to.
Similarly, the name is of high importance, therefore, it is legitimate to apply TM law to domain
names.

Which leg of trademark law would be applicable? The core argument of those who say that domain
names should not be treated as trademarks, they should not be open to at least be challenged. And
those who oppose protecting domain names, they argue that the domain names are just an address,
they should not be subjected to themes like likelihood of confusion, domain name would be
cancelled because you’re infringing on another domain. They say that these are not TM to begin
with. It could be something as compared to like a street address, office buildings address which
cannot be changed like that because it is similar to another office building’s address. It is very
difficult to put it that way. Similar analogy can be applied to DN.
But DN is not just an address. Its much more than a simple address, it also conveys or interprets
as far as the reflection of the identity of the owner is concerned. So a TM will not just convey the
location, name of the owner, but also the goodwill associated with the name of the owner. So there
can be intangible value attached to it. If that is the case, then the company could use protection as
far as cyber space is concerned. Where do you go to draw the line, that from where does the domain
name start and stop to work as a trademark.

What trademark law would apply to domain names? – what are the infringements which are
relevant?
1. Infringement that causes a likelihood of confusion. As we are aware, to prevail against the
defendant of a likelihood of confusion case, it is on the plaintiff to show that the defendant’s
mark is so confusingly similar to the plaintiff’s mark so that his commerce was being
affected because of this confusion. So if this was a court of law, the court would evaluate
the extent of likelihood of confusion, there are many factors which the court would look
at. For ex. Similarity of appearance, phonetically similar etc. these factors are not really
exhaustive. And how would these factors play out when we look at domain names? Any
evidence that a mark has influenced the overall impression, and that impression is then
conveyed to a potential purchaser, which could be relevant to a customer.
2. Infringement that dilutes the value of trademark – because TM law was meant to protect
likelihood of confusion, there were ways to copying famous marks. Then the trademark
dilution was developed. It is when you are trying to reduce the capacity of a famous mark,
to identify and distinguish their goods and services form others. How would you go about
putting trademark law dilution within domain name?

Challenges to traditional TM law posed by domain name registration on the internet.

1. Geographic overlap in space – reputation is spilled over in other parts of the world, so basic
concept of TM law is that if you have 2 companies, which are entitled to use the same TM,
as long as their geographic markets are diverse enough to ensure that there is no likelihood
of confusion, but that is not really the case with the cyber space. Because one domain name,
cannot be issued to two people or two companies. Internet is one large geographic area. So
if you had to put boundaries, there is no way to put boundaries where companies would
coexist with the same domain name.
2. Technological limitations on the internet – there is a character limit on the domain name
addresses of 26 characters. In addition to this, from a user-friendly perspective, there would
be companies who would want to register their domain name and get some sort of an
 incentive, and then they are encouraged to make DN to be significantly shorter than this
character limit. Result is that the company’s is encouraged to register it’s acronyms instead
of the full name. and because of this, that only increases the risk that any domain name
(being a acronym) will be sought by more than one company. Their full name may be
different, but their acronym would be same, that creates legal issues. Issues like should
registration actually constitute use of that mark, should a second user be prevented to use
that mark because they came in later. And this is all linked to the converse of a question
which is whether DN would infringe any existing TM or not.
3. Interplay of Trademark Law and domain name registration –will it infringe any local
trademark holder, or also some foreign trademark holder. And could that TM holder be
subject to any lawsuit, what would be the jurisdiction of the lawsuit, will it be the local TM
place, or where the TM infringement has happened. And where could we say that the TM
infringement has happened in the cases of Domain names.

Yahoo Inc. v. Akash Arora &Anr. 1999 Del HC

Protectability of domain names was questioned and more imp under IP law. Cases are generally
between two domain name owner or a domain name owner or a TM owner. In this case, Yahoo
was the plaintiff, owner of the domain name Yahoo.com. Defendant adopted name,
yahooindia.com. Plaintiff filed a suit; they were trying to use remedy of ‘passing off’. They wanted
a permanent injunction against the defendant’s usage of yahoo India.

The Del HC were of the opinion that Yahoo had acquired distinctiveness and they were heavily
associated with the services which the plaintiff had to offer. Because the 2 DN were similar, the
courts said that the name is similar and the services rendered are also similar, so the courts held
that the defendants were passing off Yahoo India as Yahoo. They felt that the use of the DN Yahoo
India could lead to passing off, and the same should not be allowed and a permanent injunction
was issues, to restrict them to use the DN.

Another perspective – Confusion POV. Yahoo India is giving out the impression that they are the
Indian affiliate of yahoo, adding India to a famous mark, giving impression that you are related to
the famous mark. Customer is believing that there is some connection between both marks, and
that affects your website clicking decisions.

Internet addresses – body which identifies these DN across the world – ICANN Internet
Corporation for assigned Names and Numbers. The website reads – to reach another person on the
internet, you have to input an address on the computer, a name or a number, that address must be
unique so that computers know where to find each other. ICANN coordinates these unique
identifiers across the world, and without that coordination, we wouldn’t have one global internet.
Its essentially responsible for coordinating procedures, and databases across the globe, and in
doing so, they ensure that the network is stable and there is some secure operation.

This very reason, much of the work is around the DN. Address the issue of DN ownership, how
would we decide who owns which domain name. The resolution of these disputes for the GTLDs.
Policy was drafted in close cooperation with WIPO. Result was UDRP Uniform Domain Name
Dispute Resolution policy. This policy tries to provide a mechanism, fast paced convenient and a
rapid DR mechanism but only for DN owners. In doing so, they are avoiding court system for DN
so that these cases are brought in front of a system which is known for tech subject matter. And
according to ICANN policy, DN would have to agree to be bound to the UDRP.

Satyam Infoway v Siffynet Solutions Pvt Ltd 2004 [SC]

Defendant was owner of the DN on the right. And Satyam [plaintiff] was owner of DN sifynet.com
etc. on the left. The similarity between the names were the four letters (sify), they were reg in
1999, and 2 DN which were offered by Siffynet came in later in the year 2001. So, the plaintiff
thought that this would create confusion in the minds of their customers. They decided to file a
civil suit, they decided to resort to the Passing Off remedy. They were alleging that the Defendants
were passing off their business as plaintiff’s businesses through these domain names.

As far as India is concerned, there is no specific legislation which explicitly talks about DN
protection. Although TM act for adequate protection to tradenames it still does not mean that the
DN will be protected similarly as tradenames. Here, the SC felt that the a domain name in the
contemporary era has evolved from a mere business address to a business identifier. And while a
TM is reg in a particular country, it acquires rights which are national in character. And the
operation of a DN cannot be contained in a specific country. In this context of DN, the court was
of the opinion that it would be difficult to protect them under the Indian laws. Therefore, the court
felt that these international organs, such as the WIPO and ICANN, they have provided some
effective protection to DN. And since there is no specific recognition in the Indian national law
for DN, that does not provide a specific legal regime wrt DN. SC could not rely on positive
statutory basis, and instead they had to seek other ways to ensure defensive protection to DN. After
looking at the provisions of TM Act, and after putting DN within the same category of TMs, the
court did not focus on DN anymore since there was no use of the phrase DN, and it shifted to
Passing Off actions in TM Law. Essentials of Passing off was held to be in favor of the plaintiff
when the court made this shift.

While this decision was appreciated, people felt that this was of value, because what the courts in
Yahoo had left open, the SC in this case had closed the issue that they wanted to give the finishing
touches of the law which regulated the Domain Name protection. But this case was also criticized
by practitioners, the main contention was that significant differences were not made out between
the DN and the Trade names by the SC. Ma’am told earlier in the class That there are differences
in the relationship between users and Domain names which is not present bw users and tradenames.
Because when you surf the internet, you have to type the domain name, but that is not the same
with trademarks. People react to trademark, but not necessarily interact with trademarks as they
do with Domain Names as they are actually typing the domain name on the web. The only
distinction which the courts made was in terms of jurisdictions. But other differences were missed
such as that the DN can be made only from letters and numerical, but trademarks can be figurative
or creative in structure. Another difference is that DN can only be found on the internet, difference
bw how normal markets work and how the cyber space works, therefore, it becomes difficult to
examine DN through the conventional TM law.

Cybersquatting & Domain Names

It is a practice where individual buy domain names reflecting the name of existing companies to
sell the names back to that company to attain profit when they want to set up their own website.

It is the practice if someone who may lack legal or legitimate claim and that person register the
domain name with the sole intention to sale the name to the real owner of trademark. Most
commonly used cybersquatting is “typo Squatting”. Typo squatting is a type of social engineering
attack which targets internet users who incorrectly type a URL into their web browser rather than
using a search engine. Typically, it involves tricking users into visiting malicious websites with
URLs that are common misspellings of legitimate websites. Ex., Yahoo has two ‘o’s and someone
make domain with 3 ‘o’s with the hope that any user may type it wrong and lead to their site. Most
of these disputes usually dealt under passing off because there is no particular statute.
Arun Jaitley V Network Solutions Pvt Ltd others, 2009:

Arun Jaitley tried to book the domain name “Arunjaitly.com” but found out that it was already
registered with the defendant. Defendant was contacted and he advised Jaitley to make an offer for
purchasing it. Cos (Certified offer service) is actually a auction services where you can make offer
to buy domain through cos. The minimum bid is 100$ here which is substantially higher than
generally booking the domain. So, if he generally wanted buy it, he wouldn’t have to pay so much
which defendant was asking for. So, plaintiff realised there was some kind of ill intention behind
this as they were constantly asking them to submit the bid through this Cos. Defendant was saying
law of trademark is not applicable on domain name.

The court here found that such kind of domain names need protection as per Trademark Law and
mentioned that the law is applicable to domain name. They granted some damages to discourage
trafficking in domain names and ordered defendant to transfer the domain name to plaintiff.

Some questions arise from it like is it just because Arun Jaitley is famous personality in India that’s
why it became easy for courts to reach this conclusion? Would it be similar if some not so popular
was the plaintiff.

Rediff Communication Ltd. V Cyberbooth, 2000: (rediff.com v radiff.com)

Defendant registered the domain name radiff.com which was similar to plaintiff’s domain
rediff.com. Here the HC inclined in the favour of plaintiff and suggested that the high importance
and value that is attached to the domain name, it makes it very essential corporate asset of any
company. It is not mere an internet address but much more than that and that’s why it is entitled
to same protection given to normal registered trademark.

Ma’am thinks it’s not very well reasoned judgement.

Marks and Spencer v One in a Million, 1997:

The defendants were dealers in Internet domain names, specialising in registering names identical
or similar to the names of well-known companies without their consent. Domain names including
Marks & Spencer, Sainsbury’s, Virgin, British Telecommunications and Ladbroke Group were
registered by the appellants who wrote to the various companies whose name or mark featured in
particular domain names, offering them for sale. These companies started writings to defendants
about this. The remedy of passing off was considered and court held in favour of plaintiffs and
warning issued against defendant. Also, injunction given on ground of trademark infringement as
they felt these activities have the very much possibility of confusing consumers.

In US there are these areas of competing claims btw the trademark system and domain names.
Because the trademark systems are divided territorially and by industry many companies can use
the same names without causing infringement like the trademark united is used by United airlines,
united ways and many other. But only one of these entities could register the domain
“united.com”.

HQM ltd. And Hatlfield inc v William Hatfield:

The defendant registered the domain name Hatfield.com for email purposes. And plaintiff who
had some registration in Hatfield in connection with meat production. The court held in favour of
defendant and said that just by registering the domain name it doesn’t constitute use of name as
trademark. Court also held that .com designation alone doesn’t establish commercial use and was
of the opinion that by simply registering and activating the name as a domain doesn’t really amount
to commercial use. This whole border btw cybersquatting and legitimate use is really complex.
For ex. Sometime people register domain name which could be useful in future and hope is that
people will auction these domains. If these names they are registering are not trademarks as per
some court’s findings, then is not clear that it will cause cybersquatting or not. Defining these
contours of cybersquatting with legitimate use with non- competing use is an issue which courts
sometimes struggle with.

Reverse domain name high jacking

It’s a phenomenon where the actual trademark owner try to get the domain name from a party who
have some legitimate or competing claim in that. There wouldn’t be any case of infringement or
dilution but the trademark owner would want to buy the domain name. it can be related to cyber
bullying; the bigger corporation try to scare the smaller ones from using even names which may
not be very similar but they want to have monopoly over them. This phenomenon is similar in the
sense that lot of trademarks holder think that the internet operates similar to the market place and
they believe trademark law should operate similarly to the normal world. the idea is to increase
protection and they go about suing every legitimate domain name user. For ex. Archie comics
decided to send and letter to domain name holder “veronica.org” as veronica is one of their
characters. The owner was the one-year-old girl whose name was Veronica and he material was
just her pictures and hence no chance of confusion.