Thursday 15 December 2016

India: Delhi High Court grants injunction in favor of GSK

In this case, Glaxosmithkline Pharmaceuticals (hereinafter referred to as the ‘Plaintiff’) filed a suit against Sarath Kumar Reddy (hereinafter referred to as the ‘Defendants’) to permanently injunct the latter from using the mark “GSK”. The Hon’ble High Court of Delhi ruled in favor of the Plaintiff vide order dated November 2, 2016.

Brief facts and background of the case

The Plaintiffs herein are -
1.      Plaintiff no. 1: GlaxoSmithKline Pharmaceuticals Limited (hereinafter referred to as ‘GSK India’)
2.      Plaintiff no. 2: SmithKline Beecham Limited (hereinafter referred to as ‘SKB’)

The Plaintiff no. 1 herein is a well-known pharmaceutical company, and the mark GSK is a commonly used abbreviation for GlaxoSmithLline, which has been in use since the year 2000 (as averred by the Plaintiffs in para 6 of the judgment). The Plaintiffs are a part of the GlaxoSmithKline Group, which is the parent company.

The Defendant herein is one of the directors of ‘GSK Life Sciences Private Limited (hereinafter referred to as the “company”). The Defendants were using the mark ‘GSK’ as a part of their trade name, along with the GSK logo in the drop form.

On May 30, 2013, the High Court had passed an ex-parte ad-interim injunction against the Defendant, thereby restraining the same from using the mark GSK and any other deceptively similar mark.

Plaintiff’s Submissions

The Plaintiff’s submitted that -
  • The GSK acronym has been in use since the year 2000.
  • They are the registered proprietor of the mark GSK and variations thereof in India in various classes.
  • That the Defendant Company is clandestinely carrying out its operations under the name ‘GSK Life Sciences Private Limited’.
  • That the Defendant’s use of the GSK name/mark/logo in relation to pharmaceutical products amounts to trademark infringement as  under Section 29(5) of the Act.
  • That the mark GSK is a well-known mark.  

Further, the Plaintiffs established that the Company (Defendant) had been manufacturing and dealing in products under the mark ‘GSK”. The Plaintiffs also relied on the Apex Court’s judgment in Time Incorporated v. Lokesh Srivastava, to pray for grant of exemplary and punitive damages.

The Court’s Decision

The Court observed that the Defendant was also operating in the pharmaceutical industry, and by using the mark ‘GSK’ was infringing on the Plaintiff’s registered trademarks. The Court also opined that the Defendant’s impugned logo is deceptively similar to that of the Plaintiffs.

Further, the Court did not grant the damages prayed for as the Plaintiffs couldn’t establish the extent of the sales of the Defendant and the quantum of loss caused to them by the Defendant.

The Court observed that the sales and turnover figures submitted by the Plaintiff in support of their claims is a significant factor whilst examining the reputation of the Plaintiff’s product. 

The Court thereby granted a permanent injunction against the Defendant, thereby restraining them from using the mark ‘GSK’.

The Football Wave Continues……SSR Football Team Semi Finalists in CII Soccer Fest!!

The Confederation of Indian Industry (CII) recently organized its 4th edition of the CII Soccer Festival on December 10-11, 2015, at the Commonwealth Games Sports Village, New Delhi, to create awareness, connect and involve the key influencers for football within the Indian Corporate world. A football tournament among various corporates was also organized as part of a myriad of activities.

The event was inaugurated by renowned cricketer of yesteryears, Ajay Jadeja, and Indian television host, Manish Paul, of Jhalak Dekhla Jaa fame. During the stellar inauguration, Mr, Jadeja spoke briefly about the state of Indian football, and ways in which we can encourage the youth of today to have a positive attitude towards the sport.

The event saw participation from 32 teams from various companies and firms in the men’s category, with 5 persons a side. S.S. Rana & Co., also participated in the grand event and qualified to the semi-finals in the Challenger cup category.

In the girls’ category, there was an unprecedented participation from 16 teams across companies and colleges, in which 2 teams from S.S Rana & Co. participated, 1 of which reached till the semi-finals stage. Kudos to the girls and boys for the successful tournament.  

Monday 28 November 2016

Kimberly Clark Worldwide Inc V/S Lin Yanxiao

Brief Facts

The Complainant, Kimberly Clark Worldwide, Inc., is a registered proprietor of the trademark HUGGIES since 1976 in the US and since 1985 in India. It is a leading company in the tissues, diapers, personal and health care industry. The Complainant filed a complaint with the National Internet Exchange of India (NIXI) for recovery of the disputed domain name <> registered by the Respondent, Lin Yanxiao as it incorporates the well-known and registered mark HUGGIES of the Complainant.

Contensions Raised By The Complainant

  • Its various HUGGIES and HUGGIES trademarks are registered under the Trade Marks Act in India as well as in the US.
  • They have acquired valuable goodwill and reputation under the trademark HUGGIES in relation to the goods and business of diapers, tissues and health care segments and the said trademark distinguishes the complainant’s products and business from its source and origin. The said trademark is therefore distinctive.
  • The said trademark is well known, well established, well used and advertised in India since 1985 in the market.
  • The term “HUGGIES” forms an integral part of the Complainant’s domain name- <> that was registered on March 4, 1996 and <> that was registered on October 7, 2007 and the complainant is the registrant of both the domain names.
  • Consumers associate the term HUGGIES with that of the Complainant.
  • The disputed domain name <www.> is identical and similar to that of the registered trademark HUGGIES of the complainant, their registered domain names <> and <> and thus violates their rights.
  • Adoption of disputed domain name shows the malafide intention of the Respondent to obtain illegal gains and trade upon the goodwill and reputation of the Complainant’s registered trademark HUGGIES and related domain name.
  •  Respondent has illegally adopted the disputed trademark to mislead the online visitors and public into believing that the domain name belongs to the Complainant or is associated with them.
  • Respondent is also advertising the goods of the direct competitors of Complainant on the disputed domain name with malafide intention of disrupting the goodwill and reputation of Complainant’s mark. Therefore, Respondent is using the disputed domain name in bad faith and they have no legitimate rights and interests therein.

Discussion And Findings

The Arbitrator, while deciding the matter, made the following observations:

  • The disputed domain name <> bears the complainant’s registered trade mark HUGGIES as an essential and memorable feature that would be remembered by the general internet users. An average consumer would believe that there is a nexus between the Complainant and the Respondent or of the disputed name.
  • The consumers would also believe that the disputed domain name is sponsored, licensed or affiliated to that of the trademark of the Complainant or is an extension of the Complainant’s business. Therefore, there is complete similarity/ identity between the complainant’s trademark HUGGIES and the disputed domain name.
  • The disputed domain name of the Respondent bearing the identical registered trademark HUGGIES of the complainant is a violation of Complainant’s rights of the Trade Marks Act, 1999. The Respondent’s acts are without leave and license. Therefore, such acts are considered to be a legal wrong. The Complainant would have no control over the quality of goods and services provided by the Respondent.
  • Respondent is commercially carrying out unauthorized advertisements and sale of HUGGIES products. The acts of the Respondent would tarnish the business and diminish, erode and eclipse the distinctiveness of the registered trademark HUGGIES of the Complainant’s. Therefore, adoption of the disputed domain name is actuated in bad faith, malafide and fraud.
  • The Respondent are also guilty of cyber piracy and cybersquatting.
  • Wrongs of Respondent are apparent from the fact that it has not traversed nor challenged the Complainant’s facts. The motive of Respondent was to derive unjust benefit from the registered trademark HUGGIES of complainant.

Decisions Of The Nixi Arbitrator

In light of all of the above facts and circumstances in the matter, the Arbitrator allowed the complaint directing that the Respondent’s domain name <> be transferred to the Complainant.

Cases cited by Arbitrator

1.   Montari Overseas Ltd. vs Montari Industries Ltd.
Similarity in addition to being qualified as deception it also acts as evidence of bad faith and malafide intention on part of Respondent to gain illegal monetary benefits.

2.      Lt. Food Limited vs Sulson Overseas Pvt. Ltd
Disputed domain name bearing identical registered trade mark of Complainant would be in complete violation of the said registered trade mark of Complainant (Section 29 of Trade Mark Act, 1999).

3.   GramaxPlasticulture Limited vs Don and Low Nonwovens Limited
Bad faith has been defined to include dishonesty and dealings which fall short of the standards of acceptable commercial behaviors observed by reasonable and experienced men in particular area being examined.
Identifying Bad Faith in Registered Domain Names: ESPN Inc. Domain Admin

It was held in the case of ESPN Inc. v. Domain Admin[1] that the use of a domain name that is a well-known mark to promote competing or infringing products cannot be considered bonafide offering of goods and services. Even where a party passively holds a domain name conflicting with that of a well-known mark, it constitutes bad faith.   

Brief facts and background of the case

It is known that the complainant ESPN Inc. is a well-known company incorporated under prevalent Corporate Laws of the United States of America. The complainant provides sports entertainment services, including media coverage and broadcasting of sports world over through all media sources. 

A complaint was filed with the National Internet Exchange of India on August 18, 2016 by ESPN against the Respondent “Domain Admin” who registered the domain name The Exchange had verified the complaint and discerned that it satisfied all the formal requirements of the Indian Domain Name Dispute Resolution Policy and the Rules framed thereunder.

A copy of the complaint was sent by the Sole Arbitrator Mr. Vinod K Agarwal to the respondent at their address registered in the WHOIS data records. However, no response was received from the end of the respondents pursuant to which the proceedings were initiated ex-parte. Also, the respondent’s activities remain unknown.   

Complainant’s Submission

The complainant contended that all elements specified in the policy were applicable to the dispute at hand. The complainant stated that they have been using their trademark ESPN in India as trade name, corporate name, business name, trading style etc. since 1994 without any interruption. The complainant further contended that their trademark registration in respect of ESPN is valid and still subsisting.

Pursuant to this contention they are the sole and absolute owners of copyright vesting in all artistic works around their trademark. Moreover, they own some other domain names incorporating the word ESP such as,,,,, indicating that they are well known users of the word ESPN as their owners and that their domain name has become a business identifier for them and the conflicting domain name is likely to cause confusion and mislead netizens as it is similar/ identical to their name.

Respondent’s Submission

The respondent’s contentions were not known as they did not submit any response. Furthermore, their identity could not be determined owing to the unavailability of their complete address.

National Internet Exchange of India observed

The Sole Arbitrator observed that the complainant owns the trademark ESPN along with several domain names incorporating the word ESPN created much before the creation of the disputed domain name by the Respondent which is confusingly similar or identical to ESPN’s marks.

As no response was received from the respondents and lack of evidence that the disputed domain name is known anywhere in the world. Further, it could be inferred from the conduct of the Respondents that they had no legitimate interest, license, or authority to use the Complainant’s trademark in a domain name.

The sole Arbitrator deduced that the Respondent had intentionally attempted to attract netizens to their disputed domain name for commercial gain by creating a likelihood of confusion with the complainant’s trademark.  

Therefore, the disputed domain name was declared confusingly similar to that of the Complainant’s. The arbitrator inferred that the disputed domain name was registered in bad faith under the Guiding Policies and the Rules thereunder and passed an order transferring the disputed domain name to the Complainant. 

[1] INDRP/825

Wednesday 16 November 2016

India: Delhi High Court celebrates 50 years of existence

On October 31, 2016, the High Court of Delhi completes half a century of its existence. It stands proudly poised as the flagship High Court leading India’s Justice administration system to a new futuristic, technology driven, dynamic juridical era with the clear vision of a “guarantee of an independent and efficient judicial system which upholds the rule of law and denies no one access to fair and equal justice”. It has embraced modern technology to introduce efficiency and greater transparency so as to earn the trust and confidence of the people. The High Court of Delhi has guarded the Constitution of India and its values by repeatedly emphasizing that equality before law and equal protection of the laws underpin the very rights bestowed upon us by our common humanity.

The High Court of Delhi came into existence on October 31, 1966 upon enactment by Parliament of the Delhi High Court Act, 1966. It exercises jurisdiction over the Union Territory of Delhi (now, National Capital Territory of Delhi). Prior to October 31, 1966, the territory now covered by the High Court of Delhi was under the jurisdiction of the High Court of Punjab (now High Court of Punjab & Haryana).
The High Court of Delhi began functioning from a residential bungalow at 4, Maulana Azad Road. In 1967, it shifted to Travancore House on Kasturba Gandhi Marg and then to Patiala House, New Delhi. The foundation stone for its current premises at Sher Shah Road was laid by the then President of India, Dr. Zakir Hussain on November 4, 1968. Originally there were 3 buildings – one main court building (Block ‘A’) and two adjacent but integrated administrative blocks (‘B and C’) on each side of block ‘A’. The main court building (block ‘A’) has 24 court rooms. The façade of the main building has murals by Satish Gujral, the renowned painter, sculptor and muralist. The buildings were completed in 1976 and were inaugurated by the then President, Shri Fakhruddin Ali Ahmed on September 25, 1976.

Recent Endeavors
One of the endeavors of the High Court of Delhi has been and is to promote and strengthen mechanisms for alternate dispute resolution including mediation and arbitration. The court has made pioneering and significant strides in this direction. It has been in the forefront of developing Alternate Dispute Resolution (ADR) mechanisms.
Ten years ago, in 2006, it set up its own Mediation and Conciliation Centre called the “Delhi High Court Mediation & Conciliation Centre” which is also known as “Samadhan”, a name given to it in 2008. The center has a state-of-the-art infrastructure and has 263 trained and experienced mediators drawn from the bar. Since 2006, it has resolved 6,707 cases has also additionally resulted in the resolution of 4,671 cases which were not referred to mediation. Many cases are settled even at the pre-litigation stage, thereby avoiding litigation altogether.

The Delhi International Arbitration Centre (DAIC) is another institution developed by the High Court of Delhi. It is the first court annexed arbitration centre in India. It came into existence on November 25, 2009. The idea behind it was to facilitate parties to resolve their disputes through arbitration as an efficient and cost-effective alternative.

Find below a few important judgments of the Court on Intellectual Property Laws in the past year, which have been covered in our earlier newsletters:
  1. Delhi High Court grants interim injunction against Britannia for “deceptively similar” packaging
  2. Delhi High Court restrains YouTube from displaying Offending Videos against Tata Sky.  
  3. Delhi High Court orders that ‘artistic works’ related to ‘design’ can only be protected under the Design Act.
  4. Division Bench of Delhi High Court denies removal of Google, RMPIL, Amazon etc. as Parties from Blueberry Books’ Copyright Infringement Case
  5. Highest Damages Awarded By Delhi High Court in IP Matters
  6. Trademark Infringement Case - London Dairy Vs. London Derry
  7. Delhi High Court grant relief to Apple for the term ‘Splitview’
  8. Maruti Udyog Wins Trademark Battle against Maruti Piston before IPAB
  9. Delhi High Court Orders Only the Brews from Scotland to be called Scotch
  10. “Pehla Nasha*” Not Pehla Enough for Radio Mirchi

Rupin Chopra & Bijit Das from S.S Rana & Co., conduct a workshop on Trademark & Copyright Law, at Lovely Professional University, Jalandhar

Rupin Chopra & Bijit Das from S.S Rana & Co., conducts a workshop on Trademarks & Copyright at Lovely Professional University. Mr. Rupin Chopra & Mr. Bijit Das, Associate Advocates of S.S. Rana & Co., recently on November 12, 2016, conducted a workshop on ‘Trademark & Copyright Law’ at Lovely Professional University, Jalandhar.

The workshop focused on a basic introduction to Trademark & Copyright for students of Law, as well as Management, with especial focus on how to conduct a trademark search in India and worldwide, etc. The talk initially focused on the basics of trademark & copyright law, followed by the importance and practical aspects of Trademark Searches in India and abroad.

Lovely Professional University is a semi-residential university college in North India created under the Punjab State Private University Act, 2005, and recognized by UGC under Section 2(f) of UGC Act, 1956. LPU offers around 200 programmes and courses at diploma, undergraduate, graduate, postgraduate, and doctoral levels. The university has more than 30,000 students graduating every year. The university has received the recognition, approval and membership of the national statutory bodies UGC, NCTE, PCI, IAP, COA, BCI, AIU and international memberships of Association of Commonwealth Universities (UK), International Association of Universities (France), Accreditation Council of Business Schools and Programs (USA), The Institute of International Education (New York), amongst others.
Essay Competition in celebration of Children’s Day: Results Announced!!

In an effort to spread awareness about the importance of education and innovation amongst children, IP4Kids, a CSR Initiative of S.S. Rana & Co., organized an Essay Competition on Children’s Day on the theme, “Education and Innovation: Towards a better India“

Young minds were encouraged to focus on the theme of Children’s Day, and hence were free to write on topics related to –
  1. Favorite Scientist
  2. Favorite Innovation
  3. Importance of Education
  4. Right to Education
The winners of the Competition are –

Category I
  1. Mahima Gupta, of Vision International School, who wrote on the topic, “Importance of Education”.  
  2. Ayushi Sareen, of The Mothers International School, who wrote on the topic, “Education and Innovation: towards a better India.”  
Heartiest Congratulations on behalf of IP4Kids and S.S. Rana & Co. to the winners in Category I who won prizes worth ₹ 3000, and ₹ 2000 respectively.  

All participants shall receive a participation certificate from the firm.  

We look forward to further such participation in the future.

Monday 31 October 2016

Vedant Fashions Pvt. Ltd. v. Ravi 

In a recent case, Vedant Fashions Pvt. Ltd. (hereinafter referred to as the ‘Complainant’) filed a complaint before a sole arbitrator against Ravi (hereinafter referred to as the ‘Registrant/Respondent’), to transfer the domain name “” to Vedant Fashions Pvt. Ltd., which the sole arbitrator S. C. Inamdar found was registered with mala fides and with the ulterior motive of making profits at the disadvantage to the Complainant. The Sole Arbitrator granted the arbitral award as to entitle the disputed domain name to be transferred to Complainant and asked the Registrant/Respondent to play the cost of the arbitration proceedings to the Complainant.

Brief Facts and Background of the Case

The Complainant is engaged in the business of high-end readymade fashion apparels and accessories with a chain of 350 exclusive stores across 160 cities in India and also has international stores in U.S.A., U.A.E., Bangladesh, Nepal, and Saudi Arabia. Complainant is also the registered owner of the trademark ‘MANYAVAR’, similar and identical to which the Registrant/Respondent had registered the domain name “”.

On having tried to contact the Registrant/Respondent for sale of the domain name for Rs. 10,000/- plus reimbursement of costs towards registration and renewal of the domain name, the Complainant found themselves subjected to refusal to buy at this price and the negotiations failed thereafter. This complaint was then made before the Sole Arbitrator in Maharastra to which the Registrant/Respondent failed to submit any response.

Summary of the Complaint

The Complainant has also been concurrently fighting trademark infringement and passing off cases against the registrants of the domains ‘’, ‘’ and ‘’. Apart from these, the Complainant owns about 22 domain names either directly or beneficially, incorporating the word MANYAVAR in India and abroad, including the suffix— .com, .net, .info, .biz, .org, .co, .store, .online, .wedding etc.

The contentions of the Complainant included that there was a contravention of the registered trademark and domain names of the Complainant. The trade name ‘manyavar’ has been in continuous and extensive use for the past 17 years or so. The disputed domain name includes the Complainant’s registered trademark in its entirety. It is identical to the trademark and trade name and several websites of the Complainant, to which the Registrant/Respondent had no right or legitimate interest. The website address initially directs internet users to unrelated pages and finally to a parking page which contains pay-per-click advertisements and misleading links unrelated to the Complainant. Thus proving before the court that the said registration and the use were in bad faith and the Registrant/Respondent being a habitual cyber squatter who used to passively hold other registered domains named after well-known fashion designers.

Decision of the Sole Arbitrator

The Sole Arbitrator deciding in favor of the Complainant granted them the entitlement to the domain name “” and ordered for the same to be transferred to them. The Registrant/Respondent was also ordered to pay the cost of the arbitration proceedings. Concluding that the Registrant/Respondent had registered the domain name with mala fides and with the ulterior motive of making profits at the disadvantage to the complainant.

The Registrant/ Respondent having not filed any reply to the complaint or Notice of the Arbitration was presumed to have accepted the contents/allegations of the Complaint. The Sole Arbitrator also opined that no person having lawful rights in the domain name will keep mum and will not defend his case. It was found that the Registrant/Respondent did not have any registered trademark, or any other similar prior website or business mark containing the words or part thereof ‘manyavar’, and is neither known commonly by these words. It was the duty of the Registrant/Respondent to first verify if any similarity existed with existing domain names of others, and that ignorance of law is no excuse.

Also that if the use of the disputed domain name by the Registrant/Respondent is allowed in future, the same would be offered for sale at unreasonable consideration to the competitors of the Complainant. This might lead to business losses to the Complainant and would lead to damage to the Complainant’s goodwill and creditworthiness.

Thursday 20 October 2016

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 ('s) to restrain the Defendants’ from using the domain name

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 and In 1996, Siddharth Mehta, the Plaintiff’s predecessor-in-title adopted the mark 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 and the word mark were registered in 2004 in class 42. The domain name 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 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 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 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, and The learned counsel submitted that, the Plaintiff’s mark has now gained a ‘secondary meaning’, and further conceded that the mark 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 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 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 ‘’. The domain name is, a sufficient variation. There is also a device of what is presumably a leaf placed by the word ‘second’. That, below the expression ‘’ 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 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 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 “” 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 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.
[1] [2011] 4 SCC 85
[2] [2004] 5 SCC 257
[3] MIPR 2015 (2) 40
[4] 2015 (63) PTC 391 (Bom)
[5] (2006) 126 DTL 353
[6] ILR (2002) 1 Delhi 2
[7] 1907 (2) Ch. D. 312, 328
[8] (1946) 63 R.P.C 39, 43
[9]2010 (44) PTC 381 (Del)

Vikrant Rana speaks at FICPI’s 16th Open Forum about the relevance of ISO-27001 certification for a Law Firm

Vikrant Rana, Managing Partner of S.S. Rana & Co. recently spoke at the 16th Open Forum organized by Fédération Internationale des Conseils en Propriété Intellectuelle (hereinafter referred to as FICPI) at St. Petersburg, Russia. FICPI is a non-political, international, professional body of intellectual property professionals, i.e., patent trademark attorneys, in private practice.

The 16th Open Forum programme began on Wednesday, October, 5, 2016, with the welcome reception at the New Stage of the Alexandrinsky Theatre, where Forum delegates and guests had the unique opportunity to enjoy a ballet performance and a cocktail reception. The Forum continued with its business meetings on Thursday and Friday. A plenary session was followed by the usual “three streams” format, intermingled with a break out workshop dealing with a specialized patent topic.

Vikrant spoke on the session titled, “Quality Control – Using Quality Assurance Methods to bring your Firm to the Next Level”. At S.S. Rana & Co., having embraced the technological advancements and changes in legal practices over the years, Vikrant has spearheaded the Firm's ISO 27001 certification project, which culminated in the Firm being certified 27001 certification by DNV-GL in 2015 and thus becoming one of the few Indian Law Firms to do so.
His talk focused on what an IP firm can reasonably expect if it introduces quality assurance methods or starts to document its internal processes according to ISO 27001. He initially introduced the need and the theory behind quality assurance methods and, from firsthand experience based on his own Firm's journey of obtaining the ISO certification, gave examples how these methods may be implemented to make the internal work-flow more transparent, less error-prone, faster and less costly.