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)

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