Author: Vijayalakshmi K.V., Aakson Institute of Management Studies
Trademark act of 1999 and is current governing law related to registered trademarks and also under the common law remedy of passing off. The administration of similar protection under the Act is done by the Controller General of Patents, Designs and Trademarks. . Trademark is defined in the Trademark Act, 1999 as, “ Trademark means mark suitable of being represented graphically an which is suitable of distinguishing the goods or services of one person for those of others and may include the shape of goods, their packaging and combination of colors ” Trademark is a word, expression, symbol or design that helps distinguish the source of the goods of one party/ association from that of others. Such a mark include multitudinous goods similar as domain name autographs, markers, Trademark fiddle – domain Name Satyam ltd, Sify results Ltd( 2004)6S.C.C. 145 The use of the same or analogous domain name may lead to diversion of addicts which could affect from similar addicts inaptly piercing one domain name rather of another. This may do ine- commerce with its rapid-fire- fire- fire progress and moment( and theoretically bottomless) vacuity to addicts and implicit guests and particularly so in areas of specific imbrication. Ordinary consumers addicts seeking to descry the functions available under one domain name may be confused if they accidentally arrived at a different but analogous website which offers no similar services. similar addicts could well conclude the the first domain – name proprietor had misrepresented it goods and service through its promotional exertion and the first domain – proprietor would there by lose its guests. It’s apparent thus that a domain name may have all the characteristics of a trademark could set up an action for passing off. A trademark is defended by the laws of the country where similar trademark may be registered Accordingly, trademark may have multiple registration in numerous countries through out the world. On the other hand, since the internet allows for access without any geographical limitation, domain name is potentially accessible irrespective of the geographical position of the consumers. The outgrowth of the eventuality for universal connectivity a not only domain name would bear worldwide exclusivity but also that public laws might be shy to effectively cover a domain name.
Trademark scam of Domain name-
Satyam v/s SifynetresultsPvt.Ltd
The decision in favour of Satyam was presumed on the court’s observation that domain names may have all the features of trademarks. The court considered the confusion that may affect in the request due to the use of identical or analogous domain names. In such a situation, rather of being directed to the website of the legal proprietor of the name, a stoner could be diverted to the website of an unauthorised stoner of a analogous or identical name. Upon appearance at the unauthorised point, guests might not find the goods or services customarily associated with the mark, and might be led to believe that the legal proprietor was misrepresenting its wares. This could affect in the domain name’s proprietor suffering a loss of request share and goodwill. Data The complainant in the Supreme Court action,Satyam., contended that the replier,SifyresultsPvt.Ltd., had designedly registered and operated a domain name that was confusingly analogous to one held by Satyam. Satyam claimed that it had in 1999, registered several domain names pertaining toitsbusinesssifynet.com,sifymall.com,sifyrealestate.com, with the Internet pot for Assigned Names and figures( ICANN) and the WIPO. It submitted that the word” Sify” – which was an blend of rudiments of its marketable name” Satyam” – was a” fantastic” term, and that it had farther garnered substantial goodwill in the request. Meanwhile, Sify results had started using the word” Siffy” as part of the domain names under which it carried on internet marketing(videlicetsiffynet.comandsiffynet.net), claiming to have registered them with ICANN in 2001. Satyam contended that Sifynet results was trying to pass off its services as those belonging to Satyam by using a deceptively analogous word as part of its domain name. Satyam claimed that this would beget confusion in the minds of the applicable consumers, who would mistake the services of Sify results as belonging to Satyam. Sify results contended that unlike a trade mark, the registration of a domain name didn’t confer an intellectual property right in the name. It averred that a domain name is simply an address on the computer, which allows dispatches from the consumers to reach the proprietor of the business, and confers no similar property rights in the same. It was a lacuna in the intellectual property laws of India that there was no regulation to address difficulties relating to domain names. thus, members of the Internet community asked the courts to apply trade mark law as an effective avenue of requital for their difficulties. The High Court responded and held that domain names could be adequately defended under the doctrine of passing off appertained to in the Indian law of trade marks. This doctrine was applied to resolve domain name difficulties inRediffCommunicationLtd.v. Cyberbooth & Anr.( AIR 2000 Bombay 27),YahooInc.v. Akash OP Aurora( 1999 PTC( 19) 201),AcquaMineralsLtd.v. Pramod Borse & Anr.( 2001 PTC 619( Del)),Dr.Reddy’sLaboratoriesLtd.v. Manu Kosuri( 2001 PTC 859( Del)). The Supreme CourtinSatyamLtd.v.SifynetresultsPvt.Ltd., affirmed the law laid down by these various High Courts, and established a modicum of certainty with regard to the law in this contentious domain. City Civil Court Satyam filed suit in the City Civil Court, Bangalore, and requested a temporary instruction against Sifynet results. The court ruled in favour of Satyam and granted the temporary instruction. It stated that Satyam was the former user of the word” Sify”, in respect of the trade of internet and computer services sold under the same. It further set up that Sifynet results’ domain name was confusingly similar to that of Satyam, and would consequently produce confusion in the minds of the public with respect to the source of the services.
High Court
Sifynet results appealed to the Karnataka High Court, which heard the case. The High Court predicated its decision on a consideration of where the balance of convenience lay. The High Court stated that Sify results had formerly invested heavily in securing a customer base for the business( about 50,000 members), and would consequently suffer immense difficulty and irrecoverable injury if the court set up in Satyam favour. It noted that the business that the two parties were involved in were distant, and therefore there was no possibility of the guests being misled by similar domain names. Further, since Satyam also had that name to use in trade, the High Court believed that it would not beget them considerable difficulty to deny the temporary instruction.
Supreme Court
The Supreme Court, through a bench comprising judges Ruma Pal andP. Venkatarama Reddi, set aside the decision of the High Court, and ruled in favour of Satyam. It declared that domain names are subject to the nonsupervisory frame that is applied to trade marks( i.e. the Trade Marks Act, 1999). The court stated that still there is no law in India which explicitly governs the governance of domain names, this state of affairs does not foreclose protection for domain names under the aegis of the Trade Marks Act. thus, the court determined that domain names are defended under the law relating to passing off as delineated in the Trade Marks Act.( 4) In order to arrive at the Holding, the Supreme Court assimilated domain names to trade marks. After an elaboration of sections 2( zb), 2( m), and 2( z), the court stated that a domain name in the contemporary period has evolved from a bare business address to a business identifier. therefore, a domain name is not simply a gate for internet navigation, but also an instrument which distinguishes and identifies the goods or services of the business, while contemporaneously furnishing the specific internet position. This point of domain names in the modern period allows them to be likened to trademarks, and concomitantly to be included within the horizon of the Trade Marks Act.
Passing off
The court delineated the rudiments of an action for passing off that Satyam would have to prove in order to succeed. firstly, Satyam had to prove accumulated goodwill in the name” Sify”, analogous that it would be apparent that the consumers associated the name” Sify” with the services offered by Satyam( 5) Satyam discharged this burden by demonstrating that the name” Sify” had acquired immense character in the request in association with their services. Satyam argued that it had 840 cyber cafés, five lakh( five hundred thousand) subscribers, and 54 units of presence all over India. also, it cited validation to indicate that it was the first Indian internet company to be listed on the NASDAQ stock exchange in 1999, and that it had expended an enormous amount of capitalist towards the same. It further presented several review papers which had specifically appertained to Satyam company as” Sify”, and further various adverts developed to promote their services which had also prominently appertained to Satyam as” Sify”. Secondly, Satyam had to establish that Sifynet results had misrepresented its services to the consumers, analogous that a liability of confusion was created in the minds of the consuming public that the services offered by Sifynet results belonged to Satyam. Thirdly, Satyam was demanded to prove that a liability of confusion in the minds of consumers would inevitably be a result due to the use of a similar domain name by Sifynet results, and further, that analogous confusion would beget injury to the public and definite loss to Satyam. The standard applied by the court to assess liability of confusion was that of an unwary consumer of” average intelligence and amiss recollection”. The court expressed the opinion that in the field of internet services, the difference in the nature of services offered by businesses may not be of important consequence due to the system of operation on the internet. The court mooted this hand at length and explained that the vacuity of domain names to a wide spectrum of stoners underscores the point that similarity in domain names would lead to confusion and also damage of unasked for services. Distinction between trade mark and domain name The court progressed to distinguish between the nature of a trade mark and a domain name. It stated that the distinction is important to determine the compass of protection available to the rights of an owner of either of the two. The court indicated that they can be distinguished primarily on the base of the system of operation. While, a trade mark upon registered in a particular country acquires rights which are purely public in character, the operation of a domain name can’t be contained within a specific country.Thus, due to this facet of domain names, the court expressed the opinion that it would be difficult to protect them effectively under national laws.
The Supreme Court disagreed with the High Court on the issue of where the balance of convenience lay. The court stated that no irreparable injury would be caused to Sify Solutions by proscribing him from using the domain name. It instead believed that Satyam had garnered immense goodwill associated with its business, and therefore denying it the use of its domain name would render injustice to it. The court also ruled that the right to use similar domain names could not be conferred upon both the parties in equal measure, since upon evidence adduced during the proceedings it was reasonable to conclude that Sify Solutions had adopted Satyam mark with a dishonest intention to pass off its services as those of Satyam .
Subsequent developments
While the decision was appreciated for the finality it introduced in respect of the law regulating domain name disputes, it was also criticized by some in the legal circles for failing to notice the significant distinctions between trademarks and domain names. The decision has also been criticized because it is believed that the Trade Marks legislation is not equipped to deal with the myriad disputes that arise in the domain name realm. Further, it is also believed that even the Information Technology Act, 2000, has failed to fill in the lacunae in the Trade Marks Act with respect to domain names.
In 2004, The National Internet Exchange of India (NIXI), a not-for-profit company under Section 25 of Indian Companies Act 1956 promoted by the Department of Information Technology (DIT) in association with the Internet Service providers Association of India (ISPAI), was entrusted with the responsibility of setting up the Registry for .IN country code top level domain name (ccTLD). For this the NIXI will create the .IN Network Information Centre (INNIC) to operate as a Registry for .IN domain in India.
In 2005, NIXI/.IN Registry came up with .IN Domain Name Dispute Resolution Policy, pertaining to resolution of domain name disputes between the Trademark Holders and the .IN Domain Registrants based upon the similar principles as Uniform Domain Name Dispute Resolution Policy. INDRP very clearly reads under clause 4 as: “The Registrant is required to submit to a mandatory Arbitration proceeding in the event that a Complainant files a complaint to IN Registry, in compliance with this Policy and Rules thereunder”. That is, as soon as you register .IN Domain Name you become liable under INDRP for any complaint filed against the Domain Name. INDRP proceedings are conducted in accordance with IN Domain Name Dispute Policy, INDRP Rules of Procedure and Arbitration and Conciliation Act, 1996. Wherein the panellist (in UDRP) is referred to as an Arbitrator under INDRP policy.
Conclusion –
Trademark is to protect the IPs of business, preventing others from using similar marks that could confuse consumers. Crucial for establishing and safeguarding a brands identity, like exclusive rights to the owner and consumer can easily differentiate between products and services. Strategic trademark management is important for business to maintain a competitive advantage and safeguard the authenticity of creative assets in the global market place.
FAQS
1. What are the Functions of a trademark?
Under modern business condition a trademark performs four functions:
It identifies the goods or services and its origin
It guarantees its unchanged quality
It advertises the goods and services
Its builds image/brand of the goods and services
2. What does the Register of trademark contain?
The register of Trademark currently maintained in electronic form contains trademark the class and goods/ services in respect of which is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date ( if applicable) where a trademark has been registered of an earlier mark or earlier rights .
3. What is the main purpose of trademark?
The main purpose of a trademark is to identify the source of a product , and to distinguish that product from products that come from other sources. For example , trademark will help you choose between a COKE and PEPSI.
4. The most valuable Trademarks?
Amazon, Apple, Microsoft, Google , Facebook.
5. What are the types and Validity of the Trademark?
Product Mark, Service Mark, Collective mark, Certification Mark, Shape Mark, Pattern Mark , Sound Mark and validity is for 10 years from the date of application.
