1999 (2) TMI 630 - HC - Companies Law

Summary

Issues Involved:
1. Passing off action for domain names.
2. Applicability of trademark laws to services.
3. Distinctiveness and protection of dictionary words as trademarks.
4. Prima facie case for grant of temporary injunction.

Summary:

1. Passing off action for domain names:
The plaintiff sought a decree of permanent injunction to restrain the defendants from using the trademark/domain name 'Yahooindia.Com' or any similar mark, alleging that it was deceptively similar to their well-known trademark 'Yahoo!'. The court noted that the domain name 'Yahoo.com' is registered in the plaintiff's favor and that the plaintiff's trademark 'Yahoo!' is registered or pending registration in 69 countries, including India. The court held that domain names serve the same function as trademarks and are entitled to equal protection against passing off. The court cited the decision in Marks & Spencer Vs. One-in-a-Million, which held that deliberate registration of a domain name similar to a well-known trademark could lead to an injunction to restrain passing off.

2. Applicability of trademark laws to services:
The defendants argued that the Indian Trade Marks Act applies only to goods and not to services, and thus the plaintiff could not claim passing off for services. The court rejected this argument, stating that passing off actions are common law remedies recognized by Section 27(2) and Section 106 of the Trade and Merchandise Marks Act, 1958. The court emphasized that the principles of passing off apply to both goods and services, citing several cases where services were included within the scope of passing off.

3. Distinctiveness and protection of dictionary words as trademarks:
The defendants contended that 'Yahoo!' is a dictionary word and cannot be appropriated as a trademark. The court dismissed this argument, noting that many dictionary words have acquired distinctiveness and are associated with specific businesses. The court referenced the case of 'WHIRLPOOL', where the word, although a dictionary term, was recognized for its distinctiveness and granted protection. The court held that the word 'Yahoo!' had similarly acquired uniqueness and distinctiveness.

4. Prima facie case for grant of temporary injunction:
The court found that the plaintiff had made a prima facie case for the grant of an ad interim injunction. The court observed that the two domain names 'Yahoo!' and 'Yahooindia' were almost identical, leading to a high likelihood of confusion among Internet users. The court also noted that the defendants' use of a disclaimer was insufficient to eliminate the possibility of deception. Consequently, the court granted an ad interim injunction restraining the defendants from using the trademark/domain name 'Yahooindia.com' or any similar mark and from copying the contents of the plaintiff's programs under the domain name 'Yahoo.com'.

Conclusion:
The application for an injunction was disposed of, with the court granting an ad interim injunction in favor of the plaintiff. The court clarified that the opinions expressed were tentative and prima facie, not final judgments on the merits of the case.