2016 (9) TMI 1643 - HC - Indian Laws

Seeking restraint from using the domain name secondshaadi.com in any manner including as part of the domain name for their web-based matrimonial services - seeking restraint on contesting Defendants from passing off their website as that of the Plaintiff - restraint on Defendant No. 5 a webhost and a domain name registrar from hosting the contesting Defendants website - seeking to direct it to de-register or terminate the contesting Defendants domain name registration - HELD THAT - Both shaadi.com and secondshaadi.com are generic or commonly descriptive of their services (and each service is distinguishable) then Section 30(2)(a) must apply. Further if these expressions commonly describe the nature of the services then this use is also protected by Section 35. In Notice of Motion (L) No. 2312 of 2014 I granted the Plaintiff an injunction against the proprietors of www.getshaadi.com. Plaint Exhibit F1 p. 107 120 That relief however was in passing off. On those defendants website the emphasis was on the words shaadi.com and the word get was set off above the word shaadi . The attempt was ex facie deceitful those defendants attempted to divert traffic from the Plaintiff s site to theirs. This is certainly not so in the present case - There is also a device of what is presumably a leaf placed by the word second . Below the expression shaadi.com is the tagline Start a New Life which is in no manner similar to the Plaintiff s tagline The World s No.1 Matchmaking Service . The font and stylization of the contesting Defendants mark is completely different from that of the Plaintiff. So too is the get up and look-and-feel of the two websites. In Notice of Motion (L) 1504 of 2014 where the offending website was ShaadiHiShaadi.com I granted the Plaintiff interim reliefs since on comparing the two websites I found very many similarities. Plaint Exhibit F2 pp. 121 129 Although the get up of the two websites was not identical the defendants used the tagline World s Biggest Matrimonial Service which was far too similar to the Plaintiff s tagline (as it then was) The World s Largest Matrimonial Service . Evidently this was merely an attempt by those defendants to create an illicit association with the Plaintiff s website since those defendants website was nowhere close to being the World s Biggest Matrimonial Service . Those defendants used code to divert traffic headed for the Plaintiff s site to their own a case that is pleaded but not pressed in the present case and which in any case is unsupported by any cogent material. Acquiescence is a species of estoppel and that makes it both a rule of evidence and a doctrine in equity. Where a party with knowledge of its rights stands silent and watches another deal with the property in a manner inconsistent with the claimant s right; and where the claimant makes no objection while the act continues progresses and grows he cannot later be heard to complain. A trade mark proprietor who not ignorant of his rights sits on his hands and watches his competitor grow in the market taking no action while the other does not can claim no exclusivity. He must be deemed to have affirmed his rival s use of the mark. The Notice of Motion fails. It is dismissed with no order as to costs.

Issues Involved:
1. Restraining the defendants from using the domain name secondshaadi.com.
2. Allegations of passing off by the defendants.
3. The generic nature of the term "shaadi".
4. Acquisition of secondary meaning by the plaintiff's mark.
5. The applicability of Sections 30(2)(a) and 35 of the Trade Marks Act, 1999.
6. Claims of acquiescence by the plaintiff.

Detailed Analysis:

1. Restraining the defendants from using the domain name secondshaadi.com:
The plaintiff sought to restrain the defendants from using the domain name secondshaadi.com, alleging that it was deceptively similar to their registered marks Shaadi.com and Shadi.com. The plaintiff argued that the defendants' domain name subsumed the whole of the plaintiff's mark, which had gained a 'secondary meaning'. However, the court found that the word 'shaadi' is generic and commonly descriptive, meaning matrimony or wedding. The court noted that there are many entities using the word 'shaadi' in their domain names and corporate names, indicating its generic nature.

2. Allegations of passing off by the defendants:
The plaintiff claimed that the defendants were passing off their website as that of the plaintiff, leading to confusion among the public. The court found no evidence of passing off or deceit by the defendants. The court compared the get-up, look-and-feel, and taglines of the two websites and found them to be sufficiently different. The defendants' website prominently displayed the word 'second' above 'shaadi.com', and the tagline "Start a New Life" was distinct from the plaintiff's tagline "The World’s No.1 Matchmaking Service".

3. The generic nature of the term "shaadi":
The court agreed with the defendants that the word 'shaadi' is generic and commonly descriptive. It pointed out that generic or commonly descriptive words can never become trademarks on their own and do not indicate the origin of goods or services. The court emphasized that words in everyday language should not be monopolized, and the plaintiff's claim over the word 'shaadi' failed on this ground.

4. Acquisition of secondary meaning by the plaintiff's mark:
The plaintiff argued that their mark had acquired a secondary meaning due to extensive and continuous use, substantial promotional expenses, and high revenue. However, the court found that there was no evidence to support the claim of secondary meaning. The court noted that mere use and statements of sales and expenses do not establish secondary meaning. The plaintiff failed to provide consumer surveys or other evidence showing that the public associated the mark exclusively with their services.

5. The applicability of Sections 30(2)(a) and 35 of the Trade Marks Act, 1999:
The court found that Sections 30(2)(a) and 35 of the Trade Marks Act, 1999, applied to the case. Section 30(2)(a) states that a registered trademark is not infringed where the use indicates the kind, quality, or other characteristics of goods or services. Section 35 protects the bona fide use of a name, address, or description of goods or services. Since both shaadi.com and secondshaadi.com are generic or commonly descriptive of their services, their use was protected under these sections.

6. Claims of acquiescence by the plaintiff:
The defendants argued that the plaintiff had acquiesced to their use of the domain name secondshaadi.com. The court found that the plaintiff had been aware of the defendants' website since 2007 but took no action until 2013. The plaintiff's delay in taking action, while the defendants built their trade and invested in marketing, amounted to acquiescence. The court held that the plaintiff could not claim exclusivity after allowing the defendants to grow their business for several years without objection.

Conclusion:
The court dismissed the plaintiff's notice of motion, finding that the plaintiff's mark was generic and commonly descriptive, and there was no evidence of secondary meaning or passing off. The use of the domain name secondshaadi.com was protected under Sections 30(2)(a) and 35 of the Trade Marks Act, 1999. The plaintiff's delay in taking action also amounted to acquiescence, dislodging their claim.

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