A trademark means a mark capable of being represented graphically and may include a word, name, symbol, device, numeral , letters, pictures, signature, label, slogans, logo, shape, graphic, designs, three dimensional forms, moving image, product or packaging features, etc.
Trademark is distinctive in nature. It is distinctive of a person's goods or services and it is useful to identify the goods or services and distinguishes the goods or services of others. If two goods are same in quantity and quality, then it is the trademark which distinguishes the goods and helps the buyer to identify the goods.
In digital medium, the owner of trademark has various rights:-
-Right of goodwill or assign its goodwill value.
-Right to trade - Right to exhibit, market or promote the goods in an exclusive manner.
-Right of sole proprietorship - The owner of trademark has the right to use it in any manner; he can stop others from using the said mark or similar mark.
-Right to become a licensor - The owner of mark can issue license for a fee.
-Right to sue - The owner of mark can also initiate legal action against the infringer. He can also institute legal proceedings in both Civil and Criminal Courts.
The trademark is not a legal person. It is the owner of the trademark who is a legal person.
A trademark infringement is a violation of the trademark owner's right. An infringement occurs only when the trademark cause deception or confusion or mistake in the minds of persons who are using the goods or services of similar trademark.
Sellers of goods make a trademark which is similar to the trademark of branded goods or services.
It comes under common law. It totally depends on the principle that no one has any right to represent his goods, as similar to other person's goods. Trader of goods misrepresented his goods to the customers so that customer can purchase those goods which are similar to those branded goods and trademark is also similar to those goods so that it can cause confusion in mind of customers. It is treated as a form of unfair competition. It can also be said that customers wrongfully identify the goods.
TWO BROAD CATEGORIES OF PASSING OFF ARE:-
1.In the first category, it is alleged that the defendant (trader) has promoted his business or goods in such a manner which creates false impression, mistake, confusion in the minds of customers and has proved that his business is authorized or approved by plaintiff (whose trademark is infringed) and that there is some business connection between them. The defendant has created the false impression in order to earn more money and to gain goodwill of another.
2.In second category, the competitors are engaged in same business and plaintiff complains that defendants (competitors) have named, packaged or described his product in same manner so that it creates the confusion in mind of customers that defendant product or business is same to that of plaintiff.
The right of trademark owners to own, license, sell, exhibit, promote are threatened/misused by web based technology tools like search engines, meta tags and hyper links.
Domain names are alpha numeric designation which is registered or authorized by the Registrar of Domain Names, Domain Name Registry or other Domain Name Registration Authority as part of an electronic address on internet.
Domain names provide a system of internet address which can be translated by the Domain Name System (DNS) into numeric address Internet Protocol (IP) used by network.
For example: When we press Enter, a number comes i.e., 202.12.45.65 in an alpha numeric form of www.specimen.com known as Domain Name System.
Domain Name is a kind of a web address of a website.
1.Secondary Level Domain names (SLD) - It can be chosen by the person registering the name. It is also called as middle name, i.e., specimen.
· .com is a suffix which is assigned at the end of the websites.
2.The other part which is used throughout the world are "Top Level Domain". These are known as g TLDs i.e., "generic" Top Level Domains.
Earlier there were seven g TLDs (.com, .edu, .gov, .int, .mil, .net or e.org). Seven more g TLDs are .aero, .biz, .coop, .info, .museum, .name, .pro
By 80s or 90s we only had .com, but by early 1990s other Top Level Domains were also introduced. Names have been assigned to the country of origin. For example, in for India, .us for United States, .ca for Canada, .jp for Japan, .de for Germany, .uk for United Kingdom, .sg for Singapore, etc. They are known as cc TLDs i.e., country code Top Level Domains.
The National Internet Exchange of India (NIXI) has been set up to facilitate the exchange of internet within the country. It has also set up the country code Top Level Domain i.e., in registry by the Government of India.
The registration of Domain Name has been done by Network Solutions Inc. (NSI) since 1992 under an agreement with National Science Foundation and the U.S. Department of Commerce. In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN), a private sector corporation based in Narina Del Ray, California, USA, took over the management of Domain Name System from NSI.
ICANN performed many functions. The main functions are:-
1.Setting up of rules for giving the numbered IP address/Protocol Parameters. Numbered addresses are given to the registries by ICANN. There are three registries in the world.
-American Registry for Internet Numbers (ARIN).
-Reseaux IP Europeons (RIPE).
-Asia Pacific Network Information Center (APNIC).
2.Adding news suffixes to the directory.
3.Setting up of rules for arbitrating disputes over Domain ownership. ICANN has adopted WIPO report for trademark related Domain Name Disputes and has framed Uniform Domain Name Dispute Resolution Policy.
Domain Names are allotted by the Registrar of Domain Name Registry (DNR) on first come first served basis. Domain Name can be registered in an on-line medium as well. For example www.networksolutions.com, www. net4india.com.
Domain Names can be registered for one year, two years and upto 10 years maximum. There is no limitation as for the length of alphabets or words in the secondary level domain. Secondary level domain can be alpha numeric name as well. E.g., 123india.com, www. net4india.com..
While going for a registration, a person who is registering a domain name is known as registrant and he is obtaining a domain name from the domain name registrar. That means there exist a contract between a Registrant and a Registrar. Since Domain Names are given or distributed on first come first served basis, it has resulted in domain name cyber squatting by certain individuals.
1.Cyber Squatting.
2.Typo Squatting.
3.Cyber Smearing.
The Domain Names which are given or distributed on first come first served basis, has resulted in Cyber Squatting by certain individuals. The Cyber Squatters book the Domain Names of well known companies, famous trademarks including celebrities name and then ask for fabulous amount to vacate such domain names.
Cyber squatters can also indulge in other activities like Typo Squatting and Cyber Smearing.
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Cyber Squatting |
Typo Squatting |
Cyber Smearing |
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Tata sons, A person who is not a team owner of Tata sons may take a domain name as www.tatasons.com. By having this domain name, this person would be imperson-ating Tata sons and their goodwill in the cyber space which could be detrimental to the Tata sons and its various affiliates/companies. |
www.disney.com. A typo squatter may take a site by the name www.disney.com. That means a typo squatter is assuming that a user of net while typing www.disney. com may type or may misspell Disney as dismey which means a typo squatter would be diverting a traffic of user who are interested in visiting disney.com may find themselves at dismey.com. |
Certain sites which may be called as hate sites or smear sites of well-known companies. For example: Kentukey fried chicken has a smear site by the name of kentukey fried chicken sux.com runs a smear campaign against kentukey fried chicken and its commercial practices. For example: This hate site tells how kentukey fried chicken ill-treats their chicken. Kentukey fried chicken sux.com is an initiative of a society which is working towards stopping cruelty towards birds and chickens. |
Domain Name Disputes are resolved under a policy referred as UDRP (Uniform Domain Name Dispute Resolution Policy) is created by ICANN (Internet Corporation of Assigned Names and Numbers), in association with WIPO (World Intellectual Property Organization).
Under UDRP, a domain name registered by a registrant can be cancelled or suspended if it is proved that the registrant has obtained the domain name in bad faith as defined under UDRP.
There are four Domain Name Dispute Resolution Service providers:-
1.WIPO (World Intellectual Property Organization)-It is effective from 1st December, 1999.
2.CPR (Institute for Dispute Resolution)-It is effective from 22nd May, 2000.
3.NAF (National Arbitration Forum)-It is effective from 23rd December, 1999.
4.ADNDRC (Asian Domain Name Dispute Resolution Centre)-It is effective from 28th February, 2002.
There was another Domain Name service provider by the name of e-Resolutions and they had to close their operations. The Domain Name Dispute Resolution Service Providers provide Dispute Resolution services in an on-line medium and maintain harmony and friendly relations.
Complainant has an option to approach any one of the forums and file a complaint. On receiving the complaint, such dispute resolution service providers will appoint an arbitrator or panel of arbitrators to look into the complaint. A copy of complaint is sent to the offender for his response. On receipt of the response, the arbitrators will decide whether the complaint has a merit or not and decide accordingly. The entire process of an on-line arbitration which may also be called as on-line dispute resolution may take 6-9 months to complete and may cost upto US dollar 500. If the arbitrators feel that the case relates to bad faith registration then they may order transfer of that disputed domain name from respondent to the complainant. The difference of UDRP with the trademark legislation is in the sense that under UDRP, there are no civil damages or compensation given to the complainant if it is proved that it was a bad faith registration on the part of the respondent. Trademark legislation talks about both civil and criminal liabilities against infringer. UDRP does not mention any criminal prosecution of the offender or infringer.
The domain name registrant has to submit a mandatory administrative proceeding in the event that the third party (a complainant) asserts to the applicable provider that:-
1.The registrant domain name is similar to a trademark in which the complainant has rights.
2.The registrant has no rights or interest in domain name.
3.The registrant domain name is registered and used in bad faith and obtained with fraud.
In the administrative proceeding, the above mentioned elements must be proved.
1.The registrant has registered the domain name for the purpose of selling, renting or transferring the domain name registration to the complainant who is the owner of the trademark or competitor of the complainant for valuable consideration.
2. The registrant has registered the domain name to prevent the owner of trademark from reflecting the mark in corresponding domain name and the registrant must be engaged in same business.
3.The registrant has registered the domain name in order to disrupt the business of a competitor. It was the principle laid down in www.rediff.com case. This case was decided in Bombay High Court. This is the first example of Typo Squatting.
4.The registrant has used the domain name in order to attract, for commercial gain and to create confusion with the complainant's mark as to the source, sponsorship, endorsement of its registrant website or of a product or service on the registrant's website or location.
Many rules have been set up by nations based on UDRP to resolve the country specific domain name disputes. The rules of UDRP have been accepted and the global expansion of rules of UDRP is because of its simplified procedure and it is easy accessible. This is on-line dispute mechanism and it is also good revenue model for the dispute resolution service providers.
No domain names are for life. One has to register the domain name again after the period ends and renew it again. Once it is not renewed it is open to every person.
There is no such bar of getting the domain name registered as domain name in the digital medium. There can be many mode of communication available to a person to have a desirable domain name. For example: if ICICI Bank owns a domain name like www.icicibank.com then any person may have a registration that may include ICICI bank as a secondary level domain in any manner whatsoever.
Other case on respect of bad faith registration is www.sify.com case. Person used domain name in name of www.sify.com. Supreme Court ruled that by giving sifynet.com, the respondent or accused in this case is trying to create confusion in mind of user. Phonetic similarity is there. This case was decided in the year 2004.
Mutual funds case is also another example of Typo Squatting. A person was using www.mutualfundofindia.com a registered site by proprietor. In order to create confusion in mind of other consumers, accused made a site www.mutualfundsofindia.com.
Bennett Coleman and Co. Ltd. v. Steven S. Lalwani, Case No. D 2000-0014.
It was contended by the complainant that the respondent registered the domain names "theeconomictimes.com" and "thetimesofindia.com" which was same to the plaintiff's domain name i.e., "economictimes.com" and "timeofindia.com" and represented its electronic publications of its leading print newspapers. It was also contended that the domain names of the defendants again directed the internet users to the respondent website "indiaheadlines.com" which provides news related to India. It was also held that the WIPO panel confirmed the presence of three elements as stated in UDRP and ordered the respondent to transfer the domain name to the plaintiff.
Similarly, in Tata Sons Ltd. v. The Advance Information Technology Association, Case No. D 2000-0049 the WIPO panel found the presence of all three elements as stated in UDRP. Therefore, it was stated that the respondent registrant of "tata.org" has no right or interest in the said domain name and the domain name should be transferred to the plaintiff.
Other cases related to bad faith registration in which the domain name was similar to the plaintiff's domain name and court ordered to transfer the domain name to plaintiff are:
In Mahindra Corporation v. Amit Mehrotra, the domain name involved was "Microsoft.org".
In Mahindra and Mahindra Ltd. v. Neoplanet Solutions, Case No. D 2000-0248 the domain name involved was "mahindra.com".
In Castrol Ltd. v. Shriniwas Ganediwal, in this case, the domain name involved was "castrolindia.com" and all three elements of UDRP were found in this case also. Therefore, court ordered to transfer the domain name to plaintiff.
In Asian paints (India) Ltd. v. Domain Administration, Case No. D 2002-0649 it was held in this case that the registration of domain name "asianpaints.com" is similar to the complainant domain name and due to this similarity, the domain name of respondent is creating confusion in mind of people. It was also observed that the respondent have no explanation or reason for registering the similar domain name to that of plaintiff and have no interest or right in it. The website of complainant is www.asianpaints.com and respondent has omitted the letter "S" in order to create confusion and exploit users.
In Yahoo Inc. v. Akash Arora, 1999 ALR 620 the defendant was using the domain name "yahooindia.com" in which the content and colour scheme was similar to the plaintiff's "yahoo.com". It was observed by Dr. M.K Sharma, J., High Court that "if an individual is a sophisticated user of the internet, he may be an unsophisticated consumer of information and such a person may find his/her way to the different internet site which provides almost similar type of information to that of plaintiff and creates confusion in mind of person who intends to visit the internet site of the plaintiff but due to confusion, he reaches to site of defendant".
For the registration of domain name or trademark, distinctiveness is required. Distinctiveness may be either inherently distinctive or may acquire distinctiveness through secondary meaning (in market place).
In Dr. Reddy's Laboratories Ltd. v. Manu Kosuri, 2001 (3) Raj 122 it was observed by Delhi High Court that the plaintiff holds the trademark in name of DR. REDDYS and it has acquired distinctiveness through a secondary meaning. Defendant registered the mark as "drreddyslab.com" which is identical to the mark of plaintiff and it creates confusion in mind of internet users.
In Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd., MANU/SC/0462/2004 : AIR 2004 SC 3540: (2004) 6 SCC 145, it was held before the Court that the same domain name causes confusion in mind of internet users and which results in accessing one domain name instead of another by users.
The facts of the case are the appellant was incorporated in the year 1995 and registered the domain name like www.sify.net, www.sifymall.com, www.sifyrealestate.com in June, 1999. The appellant contended that the word "sify" is invented by using the same elements of its corporate name, Satyam Infoway. The appellant also stated that its name and goodwill exist in the name "sify" only.
The respondent was carrying his business in name www.siffynet.com and www.siffynet from May, 2001.
It was opined by Ruma Pal, J., that there is a similarity between two words "sify" and "siffy" which creates confusion in mind of internet users. The similarity in the name may lead the user to think that there is a business connection between the two. Therefore, only by using the letter "F" may create confusion in mind of internet users and user will get the services of respondent of which he may be disappointed with the result. Similar domain name also lead user to receipt of unsought for services and he may not be satisfied from services.
Supreme Court also concluded that the respondent is using similar domain name as of appellant and is using appellant reputation. The investments made by appellant in his trade name is being used by respondent, therefore, appellant is entitled to get claim.
WIPO copyright treaty came into existence on 20th December, 1996. Another treaties are WCT i.e., WIPO Copyright Treaty, 1996 and WIPO Performers and Phonogram Producers Treaty. By virtue of these treaties, the copyright regime has also been extended to cover the digital medium as well.
The WCT protects literary and artistic works such as books, computer programs, music, photography, paintings, sculpture and films.
The WPPT protects the rights of producers of phonograms or sound recordings. E.g., CDs, Cassettes, as well as the right of performs in which performance of performers are there in sound recordings.
Both treaties provide the right which allows the creators to control or be compensated for the ways in which their creations are misused or enjoyed by others. These treaties have provided not only the copyright protection to the performers and phonogram producers but also to the broadcasting organizations. These treaties have also introduced a term called Digital Rights Management (DRM) which means a copyright holder has a right to protect and manage his creations by using technological tools to encrypt the data or content from being infringed. One cannot decode the encrypted material.
WCT or WPPT are applicable with all digital technologies and media. The result of these WIPO initiatives (i.e., WCT and WPPT) is that there is now legal clarity regarding the rights granted to the authors, performers and producers in digital medium. These treaties also provide legal protection and remedies against technological measures that are used by authors, publishers and other rights owners to protect their intellectual property.
India became party to the Berne Convention for the protection of literary and artistic works on April 1, 1928, also to the Paris Act (of July 24, 1971, as amended on September 28, 1979) on May 6, 1984, articles 1 to 21 of the treaty. India is also Party to the Universal Copyright Convention, 1952. Though India is not still party to either WCT or WPPT but it extends the reproduction rights to digital environment by virtue of article 9 of The Berne Convention. Authors of literary and artistic works are protected by this convention. Article 9 of the Berne Convention also become part of the Copyright Act in 1994 as section 14(a)(i) which explains the meaning of copyright. "Copyright" means the exclusive right subjected to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part of it.
In case of literary, artistic or dramatic works:
1.To reproduce the work in any form.
2.To issue copies of work in any form.
3.To perform work in public and communicate to public.
4.To translate or adapt the work.
5.To sell, hire, offer to sell the work.
The Copyright Act needs amendments to make it compatible with WCT and WPPT. The inadequacies must be addressed and necessary amendments should be introduced.
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