India: Bombay High Court wishes happy
ever after to Secondshaadi
In a recent judgement delivered by the Bombay High Court,
in the case of People Interactive (I) Pvt. Ltd vs. Vivek Pahwa and Ors, Justice
G.S. Patel dismissed the notice of motion of the Plaintiff (shaadi.com's) to
restrain the Defendants’ from using the domain name secondshaadi.com
Background of the case-
In the instant case, People
Interactive (India) Private limited (hereinafter referred to as the
‘Plaintiff’), belongs to the People Group of Companies with several well-known
websites, brands and trade marks, including the marks Shaadi.com and Shadi.com. In 1996, Siddharth Mehta, the Plaintiff’s
predecessor-in-title adopted the mark Shaadi.com in relation to online
matrimonial services. The Plaintiff acquired Mehta’s rights in the mark and the
domain name under an Assignment Deed dated October 9, 2001. The Plaintiff
thereon, used the mark and domain name to provide online matrimonial and
matchmaking services. The label mark Shaadi.com and the word mark Shadi.com were registered in 2004 in
class 42. The domain name www.shaadi.com has had 12.4 million visitors,
won many awards and acquired substantial goodwill and reputation.
Vivek Pahwa and others
(hereinafter referred as ‘Defendants’) launched their website with the domain
name www.SecondShaadi.com on January 25, 2006. The said website caters to those
seeking to marry again, having a very different market position from that of
the Plaintiff. The said mark Secondshaadi.com was used almost for 8 years which
gained much popularity within their segment.
Brief facts of the case-
In July 2007, it was brought to
the attention of the Plaintiff that the Defendants are hosting a website www.secondshaadi.com which showcases a similar
business profile as that of the Plaintiff using the mark ‘Shaadi’ and ‘Shadi’.
Pursuant to this, the Plaintiff
sent a cease and desist notice to Vivek Pahwa (hereinafter referred as
Defendant no.1)
Pursuant to this, the Defendant
declined to comply.
It was on September 28, 2013, 6
years after the Defendant no.1’s reply to the Plaintiff’s cease and desist
notice, that the Plaintiff sent it another demand, pursuant to which, Accentium
web Private Limited (hereinafter referred as Defendant no.2) replied on October
15, refuting the Plaintiff’s claim, and specifically contending that the words
‘shaadi’ and ‘shadi’ are generic’. The defences in the correspondence are also
the defences to the present Motion.
Plaintiff’s Submissions-
The counsel for the Plaintiff
submitted that a domain name has all the characteristics of a trade mark. The
Defendant’s domain name is deceptively similar to the Plaintiff’s registered
marks, Shaadi.com and Shadi.com. The learned counsel submitted that, the
Plaintiff’s mark has now gained a ‘secondary meaning’, and further conceded
that the mark Shaadi.com is not inherently distinctive: ‘Shaadi’ is a
translation of the Hindi word for marriage, hence, it is purely descriptive of
the services in question. He further submitted that this does not, by itself
preclude the Plaintiff from claiming a monopoly over the mark, since it is
well-settled that even a descriptive mark can attain distinctiveness, and is,
therefore, capable of being used as a trade mark relying upon the judgement in T.V. Venugopal v. Ushodaya enterprises Ltd[1],
Godfrey Philips India Ltd v. Girnar Food and Beverages Pvt Ltd[2], ITC
Ltd v. Nestle India[3],
Indchemie Specialities Pvt Ltd v. Intas Pharmaceuticals Ltd[4],
Hi-Tech Pipes Ltd v. Asian Mills Pvt Ltd [5], Info
Edge (India) Pvt Ltd v. Shailesh Gupta[6].
According to the counsel, the
word ‘shaadi’ is the ‘essential feature’ of the Plaintiff’s mark, and when in
relation to matrimonial services is associated with the Plaintiff’s website
alone. This is evidenced by the substantial promotional expenses and revenue
generated, numerous awards, its reviews carried in leading magazines,
newspapers and on web-portals, which shows that the Plaintiff’s mark is
ubiquitous and well-known. Therefore, he submitted that Defendant no.1’s
adoption of the domain name www.secondshadi.com is not bona fide, but merely an
attempt to ride the wave of the Plaintiff’s success.
Defendant’s Submissions-
The Counsel for the Defendants
submitted that the word ‘shaadi’ is generic and commonly descriptive and the
word lends itself to no meaning other than its ordinary lexical one. ‘Shaadi’
(synonym to ‘vivah’) means matrimony or wedding. Hence, is generic. He also
submitted, that there are any number of entities that use the word to provide
similar service. He further submitted a list of 29 websites that all use
“shaadi” in their domain name, and 10 companies that also prefix ‘shaadi’ to
their names. Relying on the judgement in British Vacuum Cleaner Company Limited v. New Vacuum
Cleaner Company Limited[7] wherein, it was held that there is a distinction between
ordinary descriptive words and a ‘fancy word’, one that does not primarily
relate to the article, but perhaps to the person manufacturing it. There can be
no restraint against the use of general words. The decision in Office Cleaning Services Ltd v. Westminster
Window and General Cleaners Ltd [8] supports his contention.
The fact is that there are many
ventures, including online ones, that use the word ‘shaadi’ as part of their
corporate or trading name or as their domain names. The test in such cases must
be whether rivals have attempted to use the same commonly descriptive or
generic expression.
The counsel further
averts that, references to sales and promotional expenses may be used to
establish the acquisition of reputation and goodwill, i.e. to show the
popularity of a mark. Mere use and statements of sales and expenses do not, of
their own, establish the acquisition of a secondary meaning relying upon the
judgement in Stokely Van Camp,
Inc & Anr v. Heinz India Pvt Ltd [9] wherein , it was held that mere use of the mark alone does
not necessarily translate in the mark obtaining ‘secondary distinctive
meaning’. Therefore, the counsels submitted that, the proof of sales and
promotional expenses is always required of goods or services in the second
category, ‘merely descriptive’ expressions; for these are not ordinarily
registrable without such proof. Therefore, the use itself does not establish
distinctiveness. The extent to which a mark has lost its primary meaning and
the extent to which it has acquired a secondary one are conclusions to be drawn
from evidence.
The
counsel further submitted, that the Defendants began operating their website in
2008. The Plaintiff, by its own admission, was aware of the contesting
Defendant’s website since 2007. It sent the contesting Defendants a cease and
desist notice on July 27, 2007 to which the Defendants responded refusing to do
so. Then, it was on September 28, 2013 i.e., 6 years after the initial
correspondence, that the Plaintiff sent the contesting Defendants another
notice. That, too, met a denial. For those intervening years, the Plaintiff sat
by idly and allowed the contesting Defendants to build their trade until it
felt threatened. The contesting Defendants were too insignificant to merit
legal attention or action; and then when the contesting Defendants operations
have attained a certain critical mass, the Plaintiff feels such threat.
Plaintiff’s
Prayer -
- The Plaintiff seeks to restrain
Defendant no.1 to 4 (collectively, “the contesting Defendants”) from using
the domain name secondshaadi.com in any manner;
- The Plaintiff also seeks to
restrain the contesting Defendant’s from “passing off” their website as
that of the Plaintiff.
- The final relief sought is to
restrain Defendant no.5, a webhost and a domain name registrar, from
hosting the contesting Defendant’s website, and to direct it to
de-register or terminate the contesting Defendant’s domain name registration.
Courts observations in
the case-
It was brought to the
notice of the Honorable Court that the contesting Defendants place the word ‘second’
prominently above ‘shaadi.com’. The domain name is secondshaadi.com, a
sufficient variation. There is also a device of what is presumably a leaf
placed by the word ‘second’. That, 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 Defendant’s mark is completely different from that of the
Plaintiff.
The Court observed that
the real difficulty is that shaadi.com is an address, which can be seen as the
internet equivalent of a physical or terrestrial address. It directs a user to
a particular part of the Web where a domain name registrant stores and displays
his information, and offers his services. A physical mailing address can never
be a “trade mark”, properly so-called. “10 Downing Street” or “1600
Pennsylvania Avenue” are not trade marks. A web address is, technically, a
mnemonic, an easy-to-recall replacement for a complex string of numbers that
represents the actual Internet Protocol address (or addresses) where the
website in question is to be found.
The Court further went
on to state that every domain name that incorporates a trade mark enjoys the
same protection as the mark, neither more nor less. In other words, use as a
domain name does not diminish a trade mark. The proposition (often attributed
to the case of Yahoo Inc. v Arora and Anr), that a domain name is never
‘merely’ an address, seems to the Court to be incorrect.
The defendant had
contended that the expression naukri.com was generic, incapable of protection,
that evidence was required and that there was no evidence of bad faith.
Another point of
observation brought up by the Court was that once the registration of a domain
name happens, it constitutes an address in cyberspace where the registrant’s
website can be reached. Thus the coordinates and the location of a domain in
cyberspace will be governed by the internet local authority and a domain can be
easily identified by such coordinates. Trademark registration can also be
cancelled if improperly obtained or the failure to use a trade-mark may also
result in its cancellation. The failure to renew the registration of a domain
name will result in loss of the domain name.
There
is an additional complication to the Plaintiff’s secondary-meaning argument.
When the Plaintiff claims that “shaadi.com” has acquired a secondary meaning,
they must proof what precisely was the primary meaning now said to be lost. The
Court held that the primary and only meaning was nothing more than a
destination on the internet and that there is no evidence of shaadi.com having
acquired a secondary meaning.
Courts Judgement-
The Court held that,
prima facie, the Plaintiff's mark is generic and commonly descriptive. Being
generic, commonly descriptive and an Internet address, the slightest differentiation
is enough. Absent any proof of passing off or deceit, the Court did not find
any reasons to grant the Plaintiff an injunction.
Pertaining to the rule
that, acquiescence is a species of estoppel, and that makes it both a rule of
evidence and a doctrine in equity, the Honorable Court held that, 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.
Hence,
according to the opinion of Justice G.S. Patel, for the foregoing reasons, the
Notice of Motion fails. Thus, it is dismissed, with no order as to costs.
[4] 2015 (63) PTC 391 (Bom)
[7] 1907 (2) Ch. D. 312,
328
[8] (1946) 63 R.P.C 39, 43
[9]2010 (44) PTC 381 (Del)
