TRADEMARK

TRAFFICKING AND
INFRINGEMENT THROUGH
INTERNET IN INDIA.
BY- PRINSU SEN
 Three functions of trademarks in the
modern economy
 a)Origin Function: Marks operates as indicators of the trade source, from
which goods or services come, or are in some other way connected.
 b) Quality or Guarantee Function: Marks symbolise qualities associated by
consumers with certain goods or services and guarantees that the goods or
services measure up to expectations.
 c) Investment or Advertisement Function: Marks are cyphers around which
investment in the promotion of a product is built and that investment is a
value which deserves protection as such, even when there is no abuse arising
from misrepresentations either about origin or quality.
TRADEMARK VIS - A - VIS DOMAIN
NAMES
 Both are identifier or indicator.
 Trademark suggests the trade source, domain name serves the central function of facilitating user
ability to navigate the Internet.
 A trademark may take a number of forms. In relation to domain names the only signs of relevance
are those, which consist of the alphanumeric characters capable of constituting a domain name, in
effect words.
 Unlike the traditional trademark environment where identical trademarks can co-exist in different
markets, in the current domain name systems a trademark can only be used in a single commercial
domain name (.com).
 CYBERSQUATTING
 Cybersquatting occurs when someone registers a domain name identical or confusingly
similar to a well-known trademark with the hope of luring mistaken Internet users to his
web site.
 Registering, selling or using a domain name with the intent of profiting from the goodwill
of someone else's trademark gives rise to cybersquatting.
 These practices include the deliberate bad faith registration as domain of well-known
trademarks in the hope of being able to sell the domain to the owners of those marks (or
rivals owners) or simply to take unfair advantage of the reputation attached to those marks
and thus it involves the use of domain name by a person with neither trademark registration
nor any inherent rights to the name.
VARIOUS FORMS OF CYBERSQUATTING
 1) Speculative cybersquatting
 2) Legitimate cybersquatting
 3) Innocent cybersquatting
 4) Concurrent cybersquatting
 5) Active cybersquatting
 6) Passive cybersquatting
 7) Cross-character cybersquatting
 8) Typo squatting
 9) Classic cybersquatting and
 10) Reverse cybersquatting.
 TRADEMARK INFRINGEMENT THROUGH
CYBERSQUATTING VARIOUS TESTS
 i. Complainant's rights over the trademark.
 ii. Geographical reach of the complainant's trade mark right
 iii. Common law trade mark and cybersquatting issues
 iv. Doctrine of ‘confusing similarity’ in cybersquatting cases
 v. TLDS, Hyphens, Underscores, Punctuation, Spacing, Capitalisation Etc.
 vi. Visual, phonetical and conceptual similarity
 vii. Highly Stylised Trademarks
 viii. Doctrine of multi-factored bad faith test
 ix. Doctrine of “legitimate interest”
 INDIAN CASES; YAHOO CASE

 Yahoo's case , in which the court applied “passing off principles.” On the issue of
likelihood of confusion, the court held that even if it is assumed that an Internet user is a
sophisticated user, he might be an unsophisticated consumer of information. The court
observed that many Internet users are not sophisticated enough to distinguish between the
subtle difference of the two domain names, namely, ‘yahoo.com’ and ‘Yahooindia.com’.
The Delhi High Court granted an interim injunction restraining the defendant from
operating any business or selling or advertising or dealing in trade or service in any manner
on the Internet under the trade mark or domain name “yahooindia.com” or any other
similar trademark or domain name.
 Yahoo! Inc. v. Akash Arora, 1999 SCC OnLine Del 133 : (1999) 19 PTC 201 (Del).
 Online India Capital Co. (P)
Ltd. v. Dimensions Corporate 
 In Online India Capital Co. (P) Ltd. v. Dimensions Corporate  , the Indian court
refused to grant injunction on the ground of passing off observing that descriptive
words do not afford protection. In this case, the domain names at question were,
www.MUTULFUNDSINDIA.COM and WWW.MUTUALFUNDSINDIA.COM.
The Delhi High Court while applying passing off principles said thus: “The words
mutual funds forming part of the plaintiffs' domain name of
www.mutualfundsindia.com is the description of the character of the services
offered by it. The material placed on record by the plaintiffs prima facie falls
short of indicating that the aforesaid word has acquired a secondary meaning
which is a pre-condition for granting protection to a descriptive name”.
 CONCLUSION AND SUGGESTIONS
 There must be endeavour to enact a specific statute to tackle the new
branding issue.
 Any law to prevent cybersquatting and regulate domain name system must take care to avoid two
dangers. The first is to under regulate. The second is to over regulate. Over regulation will result in
rigid market, stifling it of the flexibility of operation, potentially its best feature and so stifle
development of electronic commerce and may easily lead to commercial entities setting up in
jurisdiction with less rigid controls.
 These situations demand for a new legal regime to prevent cybersquatters and to protect trademark
owners right in cyberspace. Thus cybersquatting results not only in trademark infringement but also
in consumer deception, fraud and unhealthy trade practices.