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TMI Blog1999 (2) TMI 630X X X X Extracts X X X X X X X X Extracts X X X X ..... al with or deceptively similar to the plaintiff's trademark 'Yahoo!'. 2. Mr. Kapil Sibbal, counsel appearing for the plaintiff submitted that the plaintiff is the owner of the trademark 'Yahoo!' and domain name 'Yahoo.Com', which are very well-known and have acquired distinctive reputation and goodwill and the defendants by adopting the name 'Yahooindia' for similar services have been passing off the services and goods of the defendants as that of the plaintiff's trademark 'Yahoo!' which is identical to or deceptively similar to the plaintiff's trademark. It was submitted that a domain name/trademark adopted by the plaintiff is entitled to equal protection against passing off as in the case of a trademark. In support of his submission, the learned counsel heavily relied upon the ratio of the decisions in Marks Spencer Vs. One-in-a-Million; reported in 1998 FSR 265. It was submitted that the trademarks and domain names are not mutually exclusive and there is an overlap between the trademarks and services rendered under domain names and thus by dopting a deceptively similar trademark 'Yahooindia', the defendants have verbatim copied the format, contents, lay out, colour scheme, s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... refore, it could not have acquired any distinctiveness and since the defendants have been using disclaimer, there could be no chance of any deception and thus, no action of passing of is maintainable against the defendants. He also submitted that the persons using Internet and seeking to reach the Internet site are all technically educated and literate persons and, therefore, there is no possibility of any customer reaching the Internet site of the defendants with the intention of reaching the Internet site of the plaintiff and thus, it is not a case of unwary customer which is applicable in a case of infringement and passing off of the trademark. In the light of the aforesaid submissions, let me now consider as to whether the plaintiff has been able to make out a prima facie case for grant of temporary injunction as sought for in the application. 4. The domain name 'Yahoo.com' is registered in the plaintiff's favour with Network Solution Inc since 18th January, 1995. The trademark 'Yahoo!' and its variance are registered or pending registration in 69 countries of the world. As is disclosed from the records, an application for registration of the trademark of the plaintiff 'Yahoo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... chandise Act (referred to as the 'Act' in short) and, therefore, the plaintiff cannot plead for action of passing off in relation to such services. In support of his submission, the learned counsel drew my attention to the provisions of Section 2(5), Sections 27, 29 and Section 30 of the Act and contended that only goods are recognised for the purpose of preferring an action for infringement or passing off. Admittedly the present case is not for an action for infringement of a registered trademark, but, an action for passing off. The law relating to passing off is fairly well-settled. The principle underlying the action is that no man is entitled to carry on his business in such a way as to lead to the belief that he is carrying on the business of another man or to lead to believe that he is carrying on or has any connection with the business carried on by another man. It is also well-established that passing off action is a common law remedy. There are a plethora of cases wherein it has been held that the principles of common law govern actions of passing off and have been recognised by Section 27(2) and Section 106 of the Trade and Merchandise Marks Act, 1958. In this commentary, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... secures a reasonable area of monopoly to traders. It is thus complementary to trade mark law which is founded upon statute rather than common law. But there is a difference between statute law relating to trade marks and the passing off action; for, while registration of relevant mark itself gives title to the registered owner, the onus in a passing off action lies upon the plaintiff to establish the existence of the business reputation which he seeks to protect. The asset protected is the reputation the plaintiffs' business has in the relevant mark. This is a complex thing. It is manifested in the various indicia which lead the client or customer to associate the business with the plaintiff; such as the name of the business, whether real or adopted, the mark, design, make up or colour of the plaintiffs goods, the distinctive characteristics of services he supplies or the nature of his special processes. And it is around encroachments upon such indica that passing off actions arise. What is protected is an economic asset:" (emphasis is mine) 9. Lord Halsbury defined the tort of passing off in Reddaway Vs. Banham; reported in 1696 A.C. 199. In paragraph 31 of the aforesaid decisi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e njunction will be in terms which will make the name commercially useless to the dealer. It was held in the said decision that the name 'marksandspencer' could not have been chosen for any other reason than that it was associated with the well-known retailing group. The decision further goes on to say that where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the defendants choose it? It was also said that someone seeking or coming upon a website called http:// marksandspencer.co.uk would naturally assume that it was that of the plaintiffs. Thus, it is seen that although the word 'services' may not find place in the expression used in Sections 27 and 29 of the Trade and Merchandise Marks Act, services rendered have come to be recognised for an action of passing off. Thus law of passing off is an action under the common law which also is given a statutory recognition in the Trade Mark Act. Thus in the context and light of the aforesaid decisions and the development in the concept of law of passing off, it is too late in the day to submi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... suing a disclaimer. The said disclaimer being used by the defendants cannot eliminate the problem , for it was observed in the case of Jews for Jesus Vs. Brodsky; reported in 46 USPQ 2d 1652 that due to the nature of Internet use, defendant's appropriation of plaintiff's mark as a domain name and home page address cannot adequately be remedied by a disclaimer. It was also observed that considering the vastness of the Internet and its relatively recent availability to the general public, many Internet users are not sophisticated enough to distinguish between the subtle difference in the domain names of the parties. The ratio and principle laid down in the aforesaid decision equally apply to the facts of the present case with full force. 15. Counsel for the defendants also submitted that there is sufficient added matter, namely, addition of the word 'India" to distinguish its domain name from that of the plaintiff and in support of his submission, the learned counsel relied upon the decision in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories; . In Ruston and Hornby Ltd. Vs. Zamindara Engineering Co.; reported in 1970 S.C.1649, it was held that if there be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... therefore, although the respondents are not the registered roprietor of the 'WHIRLPOOL' in India in respect of washing machines can maintain action of passing off against the appellants in respect of the use of the same which has been registered in their favour in respect of the same goods. In the said decision, it was also held that registration of a trademark under the Act would be irrelevant in an action of passing off. 17. The defense as raised in the present suit by the defendants is, therefore, prima facie found to be without any merit. The counsel for the defendants during the course of his ubmissions submitted that the defendants have not been using or copying the contents of the programmes of the plaintiff and have no objection even if such an injunction is granted estraining the defendants from using or copying the contents of the prgrammes of the plaintiff. In my considered opinion and as discussed above, the plaintiff has been able to make out a prima facie case for grant of ad interim injunction in its favour and, therefore, an ad interim injunction is passed in favour of the plaintiff and against the defendants restraining the defendants their partners, servants an ..... X X X X Extracts X X X X X X X X Extracts X X X X
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