Trademarks Act,1999

As per section 2(zb) “trade mark” means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from those of others and
may include shape of goods, their packaging and combination of colours
The trademark symbol, ™, is a symbol to indicate that the preceding mark is a trademark,
specifically an unregistered trademark. It complements the registered trademark symbol, ®,
which is reserved for trademarks registered with an appropriate government agency.

Functions of a trademark
1) Firstly, a trademark indicates the source or origin of the goods, products, or services. In this
case, it is presumed that any particular good can have only one origin.
2)It assures the quality of the goods bearing the trademark to the consumers.
3. Apart from the quality which is related to the goodwill of the product, the trademark also
creates brand awareness and serves the marketing purposes and advertising aspects. In other
words, companies put a great amount of resources into developing any product, marketing it to
customers, providing customer support and backing up their products with warranties.
Trademark assures that the effort to serve the consumers pays back.
4. Provides legal protection and guards against counterfeiting and fraud of a particular brand.
5. Finally, trademarks are used to differentiate the product from others. This is the distinguishing
factor that falls under distinctiveness. The idea is that trademarks would distinguish marketed
goods and services from those of competitors.

A trademark may be divided into the following categories:

1. Product Mark:
A product mark is similar to a trademark. The only difference is, it refers to trademarks related to
products or goods and not services. It is used to identify the source of a product and to
distinguish a manufacturer’s products from others.
2. Service Mark:
A service mark is the same as a trademark, but instead of a particular product, it identifies and
differentiates the source of a service. For example, a company such as Yahoo may brand
certain products with a trademark, but use a service mark on the internet searching service that
it provides.
Service marks do not represent goods, but the services offered by the company. They are used
in a service business where actual goods under the mark are not traded. Companies providing
services like computer hardware and software assembly, restaurant and hotel services, courier
and transport, beauty and health care, advertising, publishing, etc. are now in a position to
protect their names and marks from being misused by others. The rules governing for the
service marks are fundamentally the same as any other trademarks.
3. Collective Mark:
These are the trademarks used by a group of companies and can be protected by the group
collectively. Collective marks are used to inform the public about a particular characteristic of the
product for which the collective mark is used. The owner of such marks may be an association
or public institution or it may be cooperative. Collective marks are also used to promote
particular products which have certain characteristics specific to the producer in a given field.
Thus, a collective trademark can be used by a more than one trader, provided that the trader
belongs to the association.
One example of the collective mark is the mark “CA”, which is used to indicate members of the
Society of Chartered Accountants.
4. Certification Mark:
It is a sign indicating that the goods/services are certified by the owner of the sign in terms of
origin, material, quality, accuracy or other characteristics. This differs from a standard trademark
whose function is to distinguish the goods/services that originate from a single company.
In short, certification marks are used to define the standard. They guarantee the consumers that
the product meets certain prescribed standards. The occurrence of a certification mark on a
product indicates that the product has gone through the standard tests specified. They
guarantee the consumers that the manufacturers have gone through an audit process to ensure
the desired quality of the product/service. For example, Food products, Toys, Cosmetics,
Electrical goods, etc. have such marking that specifies the safety and the quality of the product.
5. Shape marks:
According to the Indian Trademarks Act, 1999, a trademark may also include the shape of
goods, their packaging, so long as it is possible to graphically represent the shape clearly. This
helps in distinguishing the goods sold under such trademark from those of another
manufacturer. Shape Mark has facilitated promotion of products and emerged into the
trademark type after the technological advancement of graphics. Any graphical representation
which is able to make a difference amongst the products can be shape marked.
6. Sound Mark:
Sometimes, the sound that plays in the advertisement becomes so well known that when people
hear it they immediately know what product/service it refers to. In such cases, the sound may be
regarded as a trademark and is eligible for registration.
A sound mark is a trademark where a particular sound does the function of uniquely identifying
the origin of a product or a service. In the case of sound marks, a certain sound is associated
with a company or its product or services — for example, the MGM’s roar of a lion.

NON-CONVENTIONAL TRADEMARKS
Non-conventional or non-traditional trademarks are basically marks that are not included in the
traditional set of marks and hence include touch, smell, colour, shape, texture, sound, taste etc.
Usually, trademark protection is given only to marks which can be graphically represented, yet
non-conventional trademarks are registered and given protection due to the ability of these
marks to create a particular level of identification in the minds of consumers.

The registration and protection of trademarks is governed by the TRIPS agreement and as far
as the agreement is concerned, a trademark should be able to perform its primary functions and
it is not mandatory for a trademark to be tangible, visually perceptible or graphically
representable. Therefore, registration of non-conventional trademarks, especially sound, has
become very common in US and EU.
As per the Indian Trade Marks Act, 1999, registration of trademarks is only possible if it has the
ability to distinguish itself from other products and has the capability to be graphically
represented. In the case of non-conventional trademarks, though they perform the primary
function of a trademark, the registration is so far a difficult procedure in the country mainly due
to its distinctiveness criterion and its lack of ability to be graphically represented.

There are also chances that these marks can give rise to confusion among the consumers, thus
defeating the very purpose of trademarks. However, non-conventional trademarks is still a
developing concept in India and there has been a lot of debate and discussion whether it can be
considered as a trademark in the absence of its ability to be graphically represented.

TYPES OF UNCONVENTIONAL TRADEMARKS

A. Smell Trademarks/Olfactory Trademarks
Smell is one of the most powerful senses of human beings, which has the ability to recollect
past experience effortlessly. Though many countries have accepted the registration and
protection of the smell of products as trademarks, the registration still continues to be a difficult
process due to its inability to be graphically represented and the herculean task required to
shows its distinctiveness from the product
In many cases, the smell has been illustrated by writing down the chemical formula of the
substance. However, there are companies that completed all the required tests successfully and
registered smell as their trademark. For instance, the scent of roses of a UK tyre company,
smell of beer in the dart flights of a London- based company are famous examples of smell
trademarks
B. Taste Trademarks
The illustration of taste mark is considered to be one of the most difficult and challenging when
compared to other non-conventional trademarks, but some countries have accommodated the
registration of flavour as a trademark to identify products in the commercial market. Generally,
the illustration of taste mark is made by providing a written explanation of the taste
Just like smell mark, it is mandatory that the taste mark should be distinctive from the inherent
function performed by the product. However, there are a lot of debates and discussions on the
registration of taste as trademarks for services.
C. Motion Trademarks/Movement Trademarks
Few countries accept the trademark registration of moving pictures, videos, cinematography,
video clips of documentaries or films, etc. Famous motion trademarks include the 20th Century
Fox Movies, Columbia Pictures, Microsoft Windows logo that appears when we open a
Windows desktop. etc. In India, the registration of motion marks is rising into prominence when
compared to other non-convention marks due to many big movie companies prevailing in the
country.
D. Touch Trademarks/Texture Trademarks
Touch mark, also known as texture mark, is not as frequently used like other trademarks and is
therefore the least claimed non-conventional trademark. For registration of a touch mark, it is
extremely important that it should carry a meaning and should not be a mere ornamental
packaging of products or services. The velvet touch trademark of Khvanchkara wine bottles and
leather-like material on the packaging of brandy or grappa are examples of touch as trademark.
E. Hologram Trademarks
Hologram marks are non-conventional trademarks that use a combination of images and
colours that are visible only when viewed from a particular direction and therefore it is extremely
difficult to show the trademark on paper since it will not be able to capture all the motion of the
mark. These types of marks are mainly used by companies to avoid unwanted false imitation of
goods and services. The trademark on the toothpaste of Glaxo Groups is one of the most
famous examples of the hologram mark.
F. Colour Trademarks
Colour is something which is seen everywhere and the distinctiveness of colour is therefore an
unsolved question. The colour trademark is accepted for combination of colour but registration
of a single colour mark still forms a grey area as it lacks the intrinsic ability to be distinctive and
it may lead to confusion for consumers as there are lot of shades for a single colour.
Another problem pertaining to the registration of single colour is that, if trademark registration is
allowed for a single colour, then it will cause problems from the other front runners and hence it
will end up in no one using the colour as the number of colours are very limited. Royal purple
colour of Cadbury, a protected shade of pink of the Barbie company, Canary yellow of 3M
company are some of the well-known colour trademarks in the world today
G. Shape Marks
Just like colours, textures and other non-conventional trademarks, the shape of a product can
also be protected if the consumer identifies that particular shape with the product. The Trade
Mark Act, 1999 and the UK Trade Mark Act, 1994 include shapes as marks in their definition of
trademark.
However, just like other non-traditional trademarks, registration of shape marks face a lot of
challenges due to its inability to be graphically represented as well as difficulty in showing
distinctiveness. Yet, there are a lot of companies that were able to protect the shape of the
product such as the shape of a chocolate called Toblerone, shape of zippo lighters, shape of
Coco-Cola bottles, etc
H. Sound Trademarks
Sound mark or auditory marks can be anything which is auditory in nature. When compared to
other non-conventional trademarks, sound mark is the most registered and protected one and it
is gaining wide popularity in many countries especially in US
Sound mark performs the function of helping consumers uniquely identify a particular product in
the commercial market without causing much confusion. Unlike other non-conventional
trademarks, sound mark has the capability to be graphically represented using a series of
musical notes with or without the usage of words. Some of the oldest and famous registered
trademarks in this regard are the sound of Harley Davidson, Nokia tune, Tarzan Yell, etc

POSITION OF UNCONVENTIONAL TRADEMARKS IN INDIA

A. Sound Trademark
Yahoo Inc.’s three-note yodel and ICICI Bank’s corporate jingle , granted trademark status in
2008 and 2011 respectively, are two of the best examples of sound marks in the country; the
former being the first sound trademark to be granted in India and the latter being the first sound
trademark to be granted to an Indian entity. Britannia Industries’ four-note bell sound, Nokia
mobile phone’s default ring tone, MGM film’s lion’s roar, Raymond: The Complete Man’s musical
sequence,
Edgar Rice Burroughs’ Tarzan yell, National Stock Exchange’s theme song, etc. are some of the
other examples of sound marks in the country
For a sound to be registered as a trademark in India; an MP3 recording of the said jingle, chime
or musical composition, which is not more than 30 seconds in length, has to be submitted to the
Office of Registrar of Trade Marks as per Section 26(5) of the Trade Marks Rules, 2017.
Additionally, a graphical representation of its notations also has to be submitted.
Furthermore, according to the Draft Manual of Trade Marks Practice and Procedure, the
application submitted should clearly indicate that the trademark is being sought for a sound.
Otherwise, the trademark being sought will be presumed to be for a word and will be examined
as such.
2. Colour Trademark
Colour marks may be of two types: those pertaining to single colours and those pertaining to
combination of colours. 61 Combination of colours find mention in Sections 2(1)(m), 2(1)(zb)
and 10(1) of the Trade Marks Act, 1999. In furtherance to this, Section 26(2) of the Trade Marks
Rules, 2017 stipulates that a reproduction of the mark should accompany applications seeking
trademark for a combination of colours.
However, single colour trademarks do not find mention anywhere in the Act. Additionally,
Section 9(1)(a) of the Act prescribes that trademarks which are not distinctive should not be
registered. This limits the scope of trademarking of colours in India as single colours are easily
available and widely used and can hence be argued to not be distinctive in nature. Furthermore,
the colour depletion theory, i.e., the
limited availability of colours in the world also comes into the picture. It can therefore be said
that the law on trademarking of colours in India is ambiguous and that a huge amount of
discretion in this regard has been conferred on the judiciary.
In the case of Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. in 2003, the
Delhi High Court restrained the defendant from using the red and white colour combination of
the plaintiff in the packaging of their products and also opined that copying the colour of another
product was tantamount to passing off.
However, 4 years later, in the case of Cipla Ltd. v. MKI Pharmaceuticals, wherein the plaintiff
had sought an interim injunction restraining the defendant from using orange colour, similar to
that of the plaintiff, in the production of their products; the court opined that there could not be
monopoly over colours and thereafter held that copying the colour of another product did not
amount to passing off.
3. SHAPE MARKS
Shape of goods receives recognition as a trademark under Sections 2(1)(m) and 2(1)(zb) of the
Trade Marks Act, 1999 just like combination of colours; provided the shape is distinctive in
nature and can be graphically represented. Shape as a trademark also finds mention in Section
9(3) of the Act wherein it is stipulated that the shape to be trademarked should be distinctive
from the good or service and should hence not be due to the nature of the product.

The Section also prescribes that the shape must not have functional considerations, i.e., should
not be in order to obtain a technical result. Additionally, the Section prescribes that the shape
should not add any extra value to the good or service such that trademarking it would result in
loss in value of the product to the manufacturers of similar goods and services.
Indian courts have also been more or less consistent in their judgements with regard to shape
as a trademark. In the case of Lilly ICOS LLC and Anr. v. Maiden Pharmaceuticals Ltd. , wherein
it had been alleged that the almond shape of the plaintiff’s product had been copied by the
defendant, the Delhi High Court passed judgement in favour of the plaintiff and thereafter issued
an injunction against the defendants in this regard as it was of the opinion that the defendant
had adopted such shape with deceptive intent.
Furthermore, in the case of Gorbatschow Wodka KG v. John Distilleries Ltd., the Bombay High
Court held the shape of the plaintiff’s vodka bottles to be a trademark and thereafter granted
them an injunction against the defendants as it agreed with their claim that the shape of their
bottle was distinctive in nature and also contributed to the goodwill of their product.

GROUNDS FOR REFUSAL OF REGISTRATION OF TRADEMARK

ABSOLUTE GROUNDS (SEC. 9)
According to section 9(1), following trademarks cannot be registered:
a) Trademarks which are not capable of distinguishing the goods or services of one person from
that of another person.

The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks (1 AIR 1977 Cal.
413)

The Imperial Tobacco Company is a famous company which manufactures and distributes
cigarettes with a label "SIMLA" throughout the country. In the year 1960 and in 1966, ITC ltd.
made an application to the Registrar for the registration of the above mentioned trademark in his
register in respect of Part A and Part B in the respective years. However, the Registrar refused
the application for the registration both times against which an appeal was preferred to the
Calcutta High Court. The Calcutta High Court dismissed the appeal on the ground that the word
"SIMLA" is a famous geographical place which cannot be registered as a trademark.

b) Trademark which consist only of such marks or of such indications which may function in
trade to specify the kind, quality, quality, geographical origin, or time of production of goods or
services or other characteristics of goods or services.
This clause prohibits the registration of marks which are descriptive that identify the
characteristics of the product or service to which the mark pertains. A mark is descriptive if it
provides or gives the information directly.

In M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks (AIR
1955 Cal. 519), it has been held by the court that the mark "RASOI" for edible oils cannot be
registered as a trademark because such mark indicates the nature of the product.
In Central Camera Company Private Ltd v. Registrar of Trade Mark ( (1980) IPLR 1.), the court
held that the word "solar" undoubtedly refers to the sun and understood to be produced by or
coming from the sun as solar energy.
c) Trademark which consists only of such marks or indication which have become customary in
the current language or in bona fide and established practice of trade.
The word which have become publici juris or general cannot be registered as they belong to the
public at large. It has been held by the Division Bench of Delhi High Court that nobody can claim
exclusive right over the use of any word, abbreviation or acronym which has become publici
juris.
Example - German word "auto" is not registered for motor cars or their parts and fittings or
anything related to such kind of services. Thus, where it has been found that a large number of
people have been using the same mark in the relevant trade, then such a mark cannot be
registered in the name of any one person.

In SBL Ltd v. Himalayan Drug Company, the Appellant filed a suit against the Respondent for
infringement of trade mark Liv.52 by use of the trade mark Liv-T, which was dismissed on the
ground that the mark 'LIV' is publici juris and that 'Liv' will be considered as the generic on
account of the fact that it is used in respect of medicine used for treatment of ailment of 'LIVER'
and non-distinctive part of the mark. The Division bench of Delhi High Court held that nobody
can claim exclusive right over the use of any word, abbreviation or acronym which has become
publici juris.

This section is not only applied to words but also to the colour combinations. Delhi High Court
held that colour red being a basic colour, red and white combination was held to be common to
the toothpaste trade in the domestic and as well as international market and could not be
monopolised by any party

According to section 9(2) following trademark shall not be registered:

a) If such trademark is likely to deceive the public or can even cause confusion.
In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd., the plaintiff had
stamped upon their goods the words 'tanned leather cloth' whereas only about one-third of their
whole produce was in tanned cloth. It was held by the House of Lords that the plaintiffs were
disentitled for relief as they were misrepresenting about the nature of the goods.
b) If such trademark is hurting the religious sentiment of any class or section of Indian citizens.
It is not difficult to find the name of any god or goddess or any religious head as a trademark in
India.
Examples: The use of names or device of deities on foot wear will be considered disrespectful.
Likewise, the use of Hindu gods in respect of beef or meat products or use of Muslim saints for
pork products would be offending the religious sentiments of respective sections of public.
c) If such trademark contains any kind of scandalous or obscene matters.Obviously, a mark
which is contrary to the morality or is considered obscene must not be registered and the onus
will fall on the applicant to prove it so by the evidence to overcome the objection.
d) If the use of such trademark is prohibited under the Emblem & Names (Prevention of
Improper use) Act, 1950
Emblem and Names (Prevention of Improper) Act, 1950, prohibits the improper use of certain
emblems and names for professional and commercial purpose. Section 4(b) of the act prohibits
the registrar from registering a trademark or a design which holds any emblem or name and use
of it shall be in contravention of section 3 of the Act.
Example: Mahatma Gandhi, Pandit Nehru, National Flag etc. cannot be used as Trademark

According to section 9(3) a mark shall not be registered if it consists exclusively of:
a) The shape of goods which result from the nature of the goods themselves.
Example - the shape of an egg tray, whose purpose is to hold eggs, would fall within the context
of section 9(3) (a) and would not be considered as capable to distinguish from others.
b) The shape of goods which is necessary to obtain a technical result.
Example - the shape of a square pinned plug, if the pins are not square they will not fit into the
standard socket therefore it is mandatory to achieve that standard shape which is a technical
result. Hence shall not be registrable under section 9(3) (b).
c) The shape of goods which adds substantial value to the goods.
Example - shapes which are more effective than other alternatives for performing a particular
task add substantial value to the goods are not registrable.

RELATIVE GROUNDS (SEC 11)

Sec 11(1) - A trade mark shall not be registered if, because of—
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade
mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services
covered by the trade mark, there exists a likelihood of confusion on the part of the public, which
includes the likelihood of association with the earlier trade mark.

In Toshiba Appliances Co. v Kabushiki Kaisha Toshiba, the applicant’s mark ‘TOSIBA’ which
was applied for registration had a close resemblance to the opponent’s trademark ‘TOSHIBA’
which was used in respect of electronic goods. This resemblance in the two marks was likely to
confuse or deceive the users. The court in the instant case held that the applicant’s mark
‘TOSHIBA’ was deceptively similar to the opponent’s mark ‘TOSHIBA’. There was a phonetic
similarity between the two marks.

In Amritdhara Pharmacy v Satya Deo the similarity of the words ‘Amritdhara’ and
‘Lakshmandhara’ was under consideration used in relation to medicinal preparations. Both
these words when read or spoken together had a similarity which could lead to confusion.

The Supreme Court held that an ordinary purchaser who is of “average intelligence” and
“imperfect recollection” cannot be expected to bifurcate the words into its component parts and
compare the etymological meaning or consider the meaning of the component words as ‘current
of nectar’ (Amritdhara) or ‘current of Lakshman’ (Lakshmandhara).
(2) A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered in the name of a different proprietor, shall not be registered, if or to the
extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark
without due cause would take unfair advantage of or be detrimental to the distinctive character
or repute of the earlier trade mark.

A well-known trademark is defined under Section 2(1)(zg) of the Trade Mark Act, 1999 and it
means “a mark which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other goods or services
would be likely to be taken as indicating a connection in the course of trade or rendering of
services between those goods or services and a person using the mark in relation to the
first-mentioned goods or services.”

Therefore, special rights have been given to well-known trademarks under the Act. Thus, the
qualities or attributes of a well-known trademark may be acquired by an ordinary trademark.
This means that when a person sees a trademark on some goods/services and is able to relate
it to a trademark present on some other goods/services, such a trademark can be said to be a
“well-known trademark”. Section 11(6) lays down the relevant facts that must be considered by a
Registrar while determining whether a trademark is a well-known trademark or not.

In Carrefour v V Subburaman,the applicants were using the word CARREFOUR since 1960 for
their retail business throughout the world. The proprietor brought a suit of passing-off against
the respondents for using the trademark ‘Carrefour’ from July 2000 for furniture. In the instant
case, the trademark was not registered in India in favour of the applicant with respect to
furniture.

However, it was registered in other countries in relation to furniture and registered in India in
relation to other goods. Therefore, a large section of the public identified and associated the
goods of the applicants with the trade name “CARREFOUR” and was likely to draw a
connection between the products of the respondents with that of the applicant, in the course of
trade. Thus, the court held that “CARREFOUR” is a well-known trademark.

Rolex Sa v Alex Jewellery Pvt. Ltd. & Ors.,

The Plaintiff filed a case against the defendants who were dealing with artificial jewellery, and
using the trade name “Rolex” associated with the plaintiff.
The court held that the plaintiff’s trade mark was a well-known trademark since the general
public using watches recognize the trade name Rolex and the defendant using the same name
for dealing with artificial jewellery would create confusion in the minds of the general public and
might create an assumption that the products are those of the plaintiff company. Hence, the
court granted injunction against the use of the trade name Rolex by the defendants.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented—
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark
used in the course of trade; or
(b) by virtue of law of copyright.
(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.
(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2)
and (3), unless objection on any one or more of those grounds is raised in opposition
proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take
into account any fact which he considers relevant for determining a trade mark as a well-known
trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public including
knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which
the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of
that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent
to which the trade mark has been recognised as a well-known trade mark by any court or
Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in
a relevant section of the public for the purposes of sub-section (6), take into account—
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
(8) Where a trade mark has been determined to be well-known in at least one relevant section
of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a
well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a
well-known trade mark, any of the following, namely:—(i) that the trade mark has been used in
India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark—(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than
India; or
(v) that the trade mark is well-known to the public at large in India.
 Registration in the case of honest concurrent use (Sec 12)
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 trade marks 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.

Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another,
Both the applicant and respondent had “Goenka” as a predominant part of their trademarks: the
competing marks were “Goenka Public School” and “G.D. Goenka Public School”. Honest and
concurrent use was established because of the following facts: first, it was established that both
parties started using the word “Goenka” around the same time,

Secondly, one institution was based in Delhi and the other in Rajasthan so the appellant could
not have known of the respondent's mark when he started using the same and thirdly, the fact
that Goenka forms part of the appellant's trust name, all pointed to honest and concurrent
adoption. Therefore, the Registrar allowed both marks to be registered with certain conditions,
such as, the appellant was directed to insert the name of their trust in brackets below the name
of their school in order to clarify and differentiate between the two marks.

INFRINGEMENT OF TRADEMARK
Sec 29. Infringement of registered trade marks.—(1) A registered trade mark is infringed by a
person who, not being a registered proprietor or a person using by way of permitted use, uses in
the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade mark is registered and in such
manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which because of—
(a) its identity with the registered trade mark and the similarity of the goods or services covered
by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by
such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association
with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely
to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a
person using by way of permitted use, uses in the course of trade, a mark which—
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his business concern or part of the name, of
his business concern dealing in goods or services in respect of which the trade mark is
registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the registered
trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a
material intended to be used for labeling or packaging goods, as a business paper, or for
advertising goods or services, provided such person, when he applied the mark, knew or had
reason to believe that the application of the mark was not duly authorised by the proprietor or a
licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising— (a) takes unfair advantage of and is contrary to honest practices in industrial or
commercial
matters; or
(b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the
trade mark may be infringed by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark shall be construed accordingly.

PAYPAL v. PAYTM
CASE SUMMARY
PayPal is an American leading company operating worldwide for online payment systems that
helps in online transactions and also includes electronic alternatives to traditional paper
methods like cheque and money order.
Paytm is an Indian e-commerce payment system and financial tech company. In Paytm it
consists of 11 Indian Languages and offers for online usage or transactions of money like
mobile recharge, travel, movies, events booking, utility bills, pharmacies, educational institutions
with the Paytm QR code. This company has also launched two new wealth management
products like Paytm gold savings plan and gold gifting to simplify long term savings.
On November 18, 2016, Paypal Inc filed an objection at the Indian Trademark Office accusing
Paytm, an Indian mobile wallet company, of trademark infringement.
For six years, Paytm had been steadily becoming a household name in middle-class India –
until it really hit the jackpot on November 8, 2016 when the Indian Prime Minister Narendra Modi
announced demonetization of currency notes of Rs. 500 and Rs. 1000 – invalidating overnight
80% of the country’s cash in circulation.
A direct consequence to the demonetization has been an unprecedented increase in electronic
transactions – with Paytm being at the forefront. Adding over half a million users a day, Paytm
saw its daily transactions grow from 2.5 million to over 7 million a day and a 10-fold increase in
the amount of money added to Paytm accounts in the first 14 days after the demonetization was
announced.
Rapid growth in that short a time earns Paytm not only great profits and valuation, but also the
attention of global competitors like PayPal. In its complaint, PayPal accused Paytm of having
“slavishly adopted the two-tone blue color scheme” of PayPal’s own logo in entirety, and
especially where “The first syllable in each mark is in dark blue color and the second syllable in
a light blue color”. Further, PayPal also noted that “both marks begin with the term ‘PAY’ which
consumers tend to remember more than the second syllable, with the marks being of similar
length.”

Objections Of PayPal against Paytm

Paypal filed law suit against Paytm under the following grounds-
Names of both the companies start with the word 'Pay'.
Logo of both the companies have similar colour combination of dark blue and light blue but with
slightly different shades which is almost unnoticeable with naked eyes.
Also, Both the companies have used the dark shade of blue for the word 'Pay'.
Both companies carry out same type of business activities that is online payment and
transaction.
According to PayPal, Paytm intended to confuse the customers and take Paytm as PayPal
since both of them have similar logo.
Since PayPal was not famous in India and had not registered its own trademarks in India before
demonitization, Paytm took the advantage of PayPal's unpopularity in India and used logo
similar to that of PayPal's.

Why is it so much concerning for PayPal?

Paytm is extremely popular in India. From cab drivers to shopkeepers to common public,
everyone knows about Paytm. On the others hand, popularity of PayPal in India is limited to
eBay shoppers, freelancers and IT software developers mainly those who are exposed to global
world much more than common consumers.
PayPal function across the globe. PayPal fears its loss to Paytm in the global scenario if Paytm
starts gaining popularity outside India.
This case is still going on and may take few more years to get the final judgement.

The Coca Cola Company v. Bisleri International Pvt. Ltd.

In this case, Bisleri was the defendant by a master agreement having transfer and assign the
trademark rights for MAAZA. It also gave away the formulation rights, IPR, and know-how along
with the goodwill for India for bottling and selling a mango fruit drink – MAAZA to Coca Cola.

Now, the defendant company applied for trademark registration for the word MAAZA in Turkey
and began exporting the same fruit drink under the given name. The plaintiff, Coca Cola claimed
a permanent injunction and infringement damages for passing off and trademark since it was
given to them by a defender, Bisleri.

In the end, the interim injunction was held up against Bisleri for using the trademark MAAZA in
India even putting it up for export which was a clear case of trademark infringement.

Zara Food vs Zara Fashion

Another case of food industry vs fashion for the brand name – Zara. It is a renowned fashion
brand having major operations across the world found a restaurant operating in Delhi under the
same name. It is highly possible that any consumer would confuse one for the other and take
into consideration that the restaurant was started by the fashion brand.

And this what Delhi High Court ruled out. Zara had a presence in India since 2010 when it
opened its first store through a joint venture and has also applied for a few trademarks in India.
The restaurant was forced to change its name and now it operates under the name of Tapas
Bar.

NR Dongre v Whirlpool Corporation ((1996) 5 SCC 714 (Well Known Trademark)

Facts-
The respondents are the original and earlier users of the trademark “WHIRLPOOL” for their
electrical goods including washing machines since the year 1937. They got their trademark
registered in the year 1956-57 in India. These Registrations were renewed periodically.

However, in 1977, the registrations in India lapsed on account of failure to apply for renewal.
Later in the year 1988, the appellants (initially defendants) applied with the registrar of
trademarks for registration of the trademark “WHIRLPOOL” for certain goods including washing
machines.

Post this application, information was released by advertising in the trademark journal and
accordingly the respondents filed an objection. The registrar dismissed the objection and
allowed the plaintiff’s application for registration on the grounds of proposed user. The
respondent’s filed an application for passing off and grant of an interlocutory injunction.

After the grant of the registration to the appellants in the year 1992, the respondents filed an
action for passing off and grant of an interlocutory injunction. A temporary injunction was
granted by the learned single judge of the Delhi High Court in an original suit by an order dated
31st October 1994, which has been affirmed by an appeal by the division bench by it’s order
dated 21.04.1995. Hence aggrieved by this decision, an appeal was filed at the Supreme Court.

The Apex Court held that:

It cannot be denied that insofar as WHIRLPOOL is concerned, the plaintiff has been the first in
point of time to be in the market, the question of exact geographical reasons apart…Whirlpool
has been frequently advertised and has featured in international magazines circulated in India.
Through the pleadings, documents and affidavits filed by the plaintiffs positively make out a
case of actual sales by the plaintiffs of Whirlpool products including washing machines in a
number of geographical regions around the world, insofar as India is concerned, Plaintiff does
not make out a case of actual sales in the markets in India.
The plaintiff has made limited sales to US Embassy and US AID in India. However, the products
have been advertised in magazines having international circulation including in India…Whirlpool
associated with plaintiff was gaining reputation through the world.
The reputation was travelling trans-border to India as well as through commercial publicity made
in magazines which are available in or brought in India. These magazines do have a circulation
in the higher and upper middle income strata of Indian society. A washing machine is a
household appliance used by the middle and upper class of the society.
Whirlpool was a ground-breaking decision in IP jurisprudence, insofar as the Apex Court
confirmed that advertising a trademark is considered to be use and is sufficient to prove
reputation and goodwill in India, even when no goods are being sold on the market.

PASSING - OFF
The law of passing off is a civil wrong that dates back to a time when there was no codified
legislation protecting trademark from malicious infringers. However, the term “passing off of
trademarks” is now commonly used in reference to unregistered trademarks. Passing off occurs
when a person sells his goods or services as those of another in order to profit from the goodwill
and reputation of that trademark in the market.
In layman’s words, the law of passing off implies passing off your own product under the name
of an already existing and reputable trademark in order to deceive consumers and profit from
the trademark’s goodwill. The famous case of Perry v. Truefitt established the principle of
passing off, which states, “No one has the right to portray his commodities as the goods of
someone else”.
For example, if a person begins selling burgers under the name ‘MAC-E,’ this may give
consumers the impression that this place is an extension of the sequel of the famous burger
chain called ‘MAC-D,’ and this confusion in the minds of consumers, as well as the intention of
the person selling burgers to create such confusion, results in passing off of trademark.

Essential Ingredients of Passing Off

1. Goodwill in the market

It is essential to have goodwill in the market in order to bring a passing action, and the plaintiff
has the burden of proving that either he or his trademark has an unmatched goodwill in the
market. He is required to provide evidence that consumers link only his goods or services with
the trademark in question.
In the case of CIT v. B.C. Srinivas Seti, it was determined that goodwill is influenced by
everything that is associated with the business. This includes the personality of the owners of
the business, the nature and character of the business, the name and reputation of the
business, its location, its influence on the modern market, and the current socioeconomic
psychology.
2. Misrepresentation
The third fundamental component is misrepresentation, and the plaintiff has the burden of
proving that the defendant has in fact committed the act of misrepresenting his own items or
services as belonging to the plaintiff. Misrepresentation is done with the intention of misleading
the general public, which goes against the very point of trademark law.
In the case of Khemraj v. Garg, the defendants had duplicated the plaintiff’s panchang’s
appearance, layout, design, colour scheme, etc., as well as the names “manavpanchang, mani
ram panchang,” and “shri vallabh Mani Ram panchang.” The court determined that the
defendant’s product is identical to the plaintiff’s, and an interim injunction was issued.
3. Damage to the goodwill
The final element that must be established is that the plaintiff’s goodwill has been damaged as a
result of the defendant’s passing off. It means that either consumer are purchasing the
counterfeit items believing they are the plaintiff’s or the counterfeit products are of such poor
quality that consumers discontinue purchasing the plaintiff’s genuine products.
Colgate Palmolive Company v. Anchor Health and Beauty Care
In the case of Colgate Palmolive Company v. Anchor Health and Beauty Care , Both the
plaintiffs and the defendants manufacture well known toothpaste brands. The plaintiffs sued the
defendants for passing off. The contention of the plaintiffs was that the defendants’ use of colour
and pattern of colours in their dental products was dangerously similar to the plaintiffs’.
According to the plaintiffs the proportion of colours (red and white) used by the defendants was
almost identical to that of the plaintiffs (1/3:2/3). The reason for bringing in such an action was
that the plaintiffs were established in the Indian market since 1951, and had a tremendous
goodwill in the country, while the defendants had entered the market only in 1996.
It was held by the court that though there cannot be any monopoly over colour, in a country with
a huge number of illiterate and semi-literate people, by marketing a new product with a design
closely resembling that of the older product, it is easy to create confusion in the minds of the
public, especially when a similar product has been prevailing in the market for close to half a
century. It was adjudged that the defendants were using the trade dress of the plaintiffs. The
court ordered an injunction, restraining the defendants from using the red/white combination in
the disputed order.

Honda Motors Co. Ltd. v. Charanjit Singh and Ors.

The defendants manufactured pressure cookers under the name “Honda”, in India. Their
application for registration had already been rejected once before and they had applied for
registration again, while continuing to sell their products. It was held that with an established
business and sale of quality products, the name “Honda” had become associated with the
plaintiffs’ reputation and its goods.

It is very easy for the public to associate the plaintiffs with any product that carries the name of
“Honda”. Further, the honourable judges also held that by using the name “Honda” the
defendants were creating confusion in the consumers’ minds, which was indirectly affecting the
business of the plaintiffs in an adverse way. An injunction was ordered to stop the defendants
from using the name “Honda”.

Remedies available for Trademark Infringement

1) Civil remedies
2) Criminal remedies
3) Administrative remedies
Read this from slides ppt

Exceptions to Infringement Actions:

1. Consent
If the trade mark owner provides explicit consent for another party to use their mark,
infringement actions may not be applicable. This consent can be in the form of a licensing
agreement or any other legally binding arrangement.
2. Necessity
In some cases, the use of a trade mark may be necessary to describe a product or service. This
exception applies when the use of the mark is purely descriptive and does not create confusion
or deception among consumers.
3. Fair Use
The fair use exception allows for the use of a trade mark in certain circumstances, such as for
comparative advertising or commentary purposes. This exception ensures that freedom of
expression is upheld while balancing the rights of trade mark owners.

Comparative Advertisement under Trademark Regime

Advertising is one of the most effective and proven ways to attract the attention of potential
consumers in a market. Comparative advertising, also known as “comparison advertising,” is a
type of marketing in which a brand compares itself with its competitors to highlight parity or
superiority. Comparative claims may vary in nature; they may either emphasise the similarities
or the differences between the compared products or services. They may also state that the
advertised product is ‘better than’ or ‘as good as’ the competitors.

Comparative advertisement can be divided into two categories, Direct Comparative

Advertisement and Indirect comparative advertisement. In Indirect Comparative Advertisement,
the name of the competitor or the product being compared is not directly mentioned, but the
same is implied. It indicates that their product is superior to or similar to the product/service of
other brands in the world.
For example, Dove’s advertisement, shows the consumers that their moisturizer is better than
its competitors. While the competitor’s name is not mentioned directly, the bottle with spikes
represents Dove’s competitor in the market.

However, in Direct Comparative Advertisement, the name of the competitor or product being
compared is directly mentioned. For example, Samsung and Apple, where Samsung announced
the Galaxy S22 Ultra, which features a 108MP main camera and its 100x Super Zoom, for
having the highest resolution camera in any smartphone and claimed that “it is not coming to
any iPhone near you”

Statutory laws on Comparative Advertisement

Comparative advertisements are not considered illegal in India as long as it complies with the
laws. However, if an advertiser uses a competitor’s trademark to make a comparison between
his goods & services and those of his competitor, and, in the process, disparages them, then
such an act on the part of the advertiser would invoke issues related to infringement under the
Trademarks Act, 1999.
Trademark infringement in advertising is defined under Section 29(8) of the Trademarks Act,
1999 . It states that any advertising that is not in accordance with honest practices; or is
detrimental to the distinctive character, or repute of the trademark shall be an act constituting
infringement.
However, at the same time, Section 30 (1) of the Trademarks Act, 1999 makes comparative
advertising an exception to acts constituting infringement under Section 29. It states that if the
advertiser is just emphasising his claim about his own goods or services without disparaging the
competitor’s goods or services shown in the advertisement, this will amount to an honest
practise and legally permitted.

Honest Practise in comparative advertisement

The question of whether a comparative advertisement is honest or not depends on the
impression that the advertisement or commercial registers in the viewer’s mind. In general,
honest practise does not mislead customers, does not disparage the goods/services of
competitors, and does not create any confusion in the consumer’s mind.
Under Section 30(1) of the Trademarks Act, 1999 comparative advertisement is permitted in
three ways:
a. If there is a bona fide use of the trademark,
b. If the advertisement is in accordance with honest practises,
c. If the advertisement does not take unfair advantage of the reputation of the mark.

Thus, merely puffing up the own product is allowed in an honest trade practise, but the moment
there is derogatory reference to the competitors’ good/ service in the advertisement, such
comparative advertisement is not permitted due to the presence of element of defamation.

Judicial Pronouncements
Dettol vs Santoor Handwash : Recently, the Delhi High Court, in its judgement dated May 18,
2023, held that mere puffery is not actionable in cases of comparative advertisement. It has to
be seen whether the overall effect of the commercial is to promote one’s own product or
disparage the rival product; an unfavourable comparison may be made to the extent that it does
not affect the storyline or message underlying the commercial. Thus, no injunction was granted
against the impugned advertisement.

Pepsi Co. Inc. and Ors. V/s Hindustan Coca Cola Ltd. and Ors.:
The Delhi High Court held that the word PAPPI written on the bottle shown in the respondent’s
advertisement clearly indicated the trademark PEPSI of the appellant. It stated that the “manner
of the commercial”, is one of the most important factors. If the manner is ridiculing or
condemning the product of the competitor, then it amounts to disparaging.

Respondents projected PEPSI to be only a sweet drink, hence of inferior quality, and by calling it
“Yen Bacchon Wali Hai”, the respondents depicted the commercial in a derogatory and mocking
manner, which is not permissible under the law. Thus, the court granted an injunction against
the respondent for publication and screening of the impugned advertisement.

Dabur India Limited vs Shree Baidyanath Ayurved Bhawan

This case was based on generic disparagement of a specified commodity wherein it was held
that even if there is no direct reference to the product of the Plaintiff and only a reference is
made to the entire class of Chayawanprash in its generic sense, even in those circumstances
disparagement is possible.

The Court stated “the defendant is propagating in the advertisement that there should be no
consumption of Chayawanprash during the summer months, it is also propagating that the
plaintiffs Chayawanprash should not also be taken during the summer months as it is not good
for health and instead Amritprash, which is the defendant's product, should be taken.

Such an advertisement is clearly disparaging to the product of the plaintiff as there is an element
of insinuation present in the said advertisement." Thus, the court granted an injunction against
the impugned advertisement.”
DOMAIN NAME
Domain name is the internet equivalent of a physical or a territorial address. Identical to an
address it directs the user to a particular part of the web where a domain name registrant stores
and displays his information and also offers his services.

Cybersquatting
Cybersquatting is a form of Cybercrime where the perpetrator buys or registers a domain name
that is identical or similar to existing domain with the intention of profiting from a recognizable
trademark, company name, or personal name. Crucially, the act is illegal because of the bad
faith intent of the squatter. Due to its nature, domain squatting can be considered a form of
trademark infringement.

Domain Names As Trademarks

To register domain names as trademarks, a domain name should fulfil all the conditions that are
required to be registered as trademarks. Therefore, a domain name must be unique, capable of
identifying itself, distinguish itself from the products of the competitor and also should act as a
reliable source identifier of concerned goods and services in the internet.”

Domain Name Protection in India

At the global level there is only one organization that deals with the registration of domain
names as trademarks which is ICANN [Internet Corporation for Assigned Names and Numbers]
along with the national and international protection under the directly concerned national
trademarks law and diverse International Trademarks Treaties of the world.

In India trademark protection is granted under the provision laid down under the Trademark Act,
1999. It specifically provides that a domain name should fulfil all the prerequisites to be properly
registered under the act. After the domain name is registered the owner will have all those rights
and rights and authorities that are availed by a trademark owner.

The rights consist of the following-

Sue for Infringement- “Any person who violates a domain name which is registered as a valid
trademark under the Trademarks Law will be held liable for infringement under section 29 of the
Trademark Act, 1999.”
For Passing Off-“Even if a trademark owner who has not registered his mark is also entitled to
protection of his mark given that he is a prior user, his mark has acquired distinctiveness and
there is misrepresentation by anyone else with regard to his goods which is likely to deceive the
relevant public.”

Satyam Infoway Ltd. Vs Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540
Petitioner: Satyam Infoway Ltd.
Respondent: Siffynet Solutions Pvt. Ltd.
Facts of the case:
Satyam Infoway was Incorporated in 1955 and it registered various domain names using the
word ‘Sify’ in the year 1999 including Sifynet.com, Sifymall.com etc. Satyam Infoway had
registered the domain names with the Internet Corporation for Assigned Names and Numbers
(ICANN) and the World Intellectual Property Organization (WIPO). The word Sify was a
combination of elements of its corporate name ‘Satyam Infoway’ which had very wide goodwill
and reputation in the market.

On the other hand, Sifynet Solutions (Respondent) started carrying it’s business activities under
the same domain name ‘Sify’ like http://www.siffynet.com and http://www.siffynet since 5 June
2001, which they claimed that they have registered with ICANN on 5 June 2001 and 16 March
2002 respectively. Meanwhile, Sifynet Solutions registered its domain name
http://www.siffynet.com which was identical to the Plaintiff’s domain name
http://www.sifynet.com which had a wide reputation in the market

When the appellant got to know about the use of the same word ‘Siffy’ by the respondent they
served a notice to the respondent to either stop carrying their business activities under their
name or transfer the domain name to the appellant, but the respondent refused both the
options. Further, a suit was filed by the appellant in the city civil court.
Filing of the case:
Appellant filed a case on the basis that respondent was passing off its business activities and
services by using the word ‘Sify’ which was appellant’s business and services domain name
which would also create confusion in the minds of the relevant consumers and harm the
reputation of Appellant’s business. The appellant also filed an application for a temporary
injunction.
Judgment by City Civil Court
The City Civil Court gave the judgment in favour of the Appellant. The City Civil Court gave the
judgment on the following grounds:
Appellant has been using the word ‘Sify’ prior to the use of the respondent.
Appellant had earned a wide and good reputation and Goodwill under the name ‘Sify’ in relation
to computer and internet services.
The similar use of the domain name by the respondent will create confusion in the mind of the
general public.
Also, the application for a temporary injunction was also allowed by the City Civil Court Judge.
The Respondent further filed a case in the High Court and a stay on the City Civil Court
judgment was granted.
The judgment of the High Court
The High Court on its judgment stated that just because the Appellant started their business
activities first no order can be granted in the favour of Appellant without considering the balance
of convenience.
The High Court further stated that both the Appellant and respondent are carrying two different
business activities.
It was also held that the respondent had invested a large amount of money in establishing the
business and had enrolled about 50,000 members
The respondent would be put to greater hardship and inconvenience and also an irreparable
injury in case the injunction was granted.
A special leave petition was filed by the Appellant in the Supreme Court
Issues discussed in the Supreme Court
Whether a domain name can be a word which is capable of differentiating the trade/service
which is supplied to the users of the internet?
Judgment by Supreme Court
The Supreme Court answered this issue in the affirmative and came to the conclusion as
follow:
The first or foremost role of a domain name was to provide an address for the computers on the
internet but the internet has changed since times, from being as a communication means, it has
become a more of carrying a commercial activity. With an increase in commercial activities on
the internet, a domain name is now also used as an identity of a business.
Thus, now domain name may be considered as services under section 2(z) and the domain
name has become an exclusive identity, As the time passes by, more and more activities
(commercial) advertise or trade on the web, making the domain name more valuable. A domain
name is not only used to facilitate the consumers but it also helps in the identification of the two
different business activities. The Supreme Court also stated that the domain name identifies the
specific internet site. Also, many times people searching for an internet site guess the domain
name of that particular site, this fact has enchanted the value of domain name

Issue 2 :
Whether internet domain names are subject to the same legal norms or laws applied to
intellectual property like trademarks?
Issue 3:
Does the principle of trademark law and in particular those relating to passing off apply?

Passing off means when a trader/business person/or some other person makes a false
representation to his/her customer or consumer, to make him/her believe that the goods or
services he/she is providing are of another person.
In response to issue 2 and 3 courts stated :
If an individual uses the same domain name which another person is using, it may lead to the
diversion of users as one consumer may get confused with the other similar name which may
offer different services. This may conclude to consumers’ misrepresentation which leads to the
loss of consumers.
The Supreme Court also stated that the use of similar domain names has all the similar
ingredients which passing off have like protection of Goodwill and reputation of the business,
safeguarding the public by not creating confusion in the minds of people, misrepresentation
done by the defendant, and lastly the loss. By looking at these factors the Supreme Court held
that domain name has the same characteristics as that of trademark and thus, the domain name
can be also filed for the action of Passing off.
On the basis of facts and merits, the Court ruled in favour of the Appellant.
Analysis by the Court
The grounds on which basis the Court ruled are as follow:
Satyam Infoway has a lot of reputation and goodwill in the market on the basis of the mark ‘Sify’
having 5 lakh Subscribers, 840 cyber cafes and was also the first Indian company which was
listed on NASDAQ, Company’s large coverage by the leading national newspapers, large sales
figures of the company, etc.
There is a thin line difference between ‘Sify’ and ‘Siffy’ which leads to the confusion in the minds
of people. No proper justification was given by the respondent for using the word ‘Siffy’.

Yahoo Inc v. Akash Arora(1999 PTC (19)201 Delhi)

The Plaintiff was the owner of the Trade mark "Yahoo!" and domain name "yahoo.com", which
are very well known. The Defendant adopted the domain name "Yahooindia.com" and got the
same registered in his name. The Plaintiffs filed a suit contending that the action of the
Defendant was that of 'passing off' and that he should be permanently restrained from
continuing the same.
Accordingly, the Hon'ble Court held that the said word "Yahoo" had acquired distinctiveness and
is associated with the business of the Plaintiff. The use of domain name "yahooindia.com" by
the Defendant leads to passing off of the business of the Plaintiff as his own and hence the
same shall be permanently discontinued. Therefore, an injunction restraining the Defendant
from using the impugned mark was granted.

Rediff Communication Ltd Vs. Cyberbooth and Anr.(AIR 2000 AIR Bom. 27)
The plaintiff was using the trade mark/domain name "Rediff.com" and the Defendant started
business by using the mark/domain name "Radiff.com". Plaintiff filed a suit for passing off
against the defendant company.
It was held that the two names were almost similar and there is every possibility that the Internet
user may be deceived and confused. Therefore the court accepted the prayer of the plaintiff and
restrained the defendant from using the disputed domain name.