full studymaterial of trademarks

7/22/2019 Full Studymaterial of Trademarks

http://slidepdf.com/reader/full/full-studymaterial-of-trademarks 1/98

TRADEMARKSContents of this Part

Introduction Registration of Trademark Registrability of Trademark Deceptive Similarity Passing Off Infringement under the Act Well-known Trademark

Fundamental of Trademarks

Trademark is a symbol that allows a purchaser to identify goods orservices that have been proved satisfactory and not to buy goods or servicesthat have not been satisfactory. Trademarks serve mainly three purposes viz. (i)encourage the production of quality products; (ii) reduce the custo mer‟s costs ofshopping and (iii) help the customer to make decisions on purchasing products.

Trademarks help promote economic efficiency . If trademarks are not

allowed to be registered with the manufacturers it may eventually take away theincentive of trademark owning manufacturers to make investments in qualitycontrol. There would thus be no healthy competition among the manufacturersleading to the loss of vitality of the economy. If we do not have a system ofhaving trademark a manufacturer would get nothing by improving his product‟squality. And consumers would not be in a position to identify high or low-qualityproducts. In such a situation a manufacturer who reduce the price by reducingquality may pocket the benefit of the market. The consequence would beattempts to produce inferior quality products rather than competition to producebetter-quality products.

Today the uniformity of quality of products in the marketplace is theresult of the use of trademarks rather than the inherent nature of productionor the reflection of altruistic motives of manufacturers or distributors.



2

In a system wherein trademarks are allowed to be infringed, all may take a freeride on the successful sellers trademark and reputation, there would be noincentive to distinguish one‟s own goods and services.

Trademarks reduce the customer‟s cost and agony of acquiringinformation about products and service . If a person knows by his experienceor experience of others that a product is of good quality he would go for thatbrand without much search. With reference to the question of new trademarks ifthe customers are willing to pay for the new brand to establish itself throughadvertising then the rational potential entrant will have incentive to enter themarket and enjoy success. It is for the customers to do the needful.

Trademarks are universal phenomena. The legal systems of free marketeconomies as well as that of the socialists‟ economies recognize some form

identification of the source and quality of goods. The law of trademark is a branch of unfair competition or unfair trade practices.In other words, trademark law is a part of the generic law of unfair competition.

Trademark infringement is a commercial tort and all persons who infringe atrademark are liable as joint tortfeasors.

Trademark infringement law and unfair trademark law a different. The essentialelement of a trademark is the exclusive right of its owner to use a word or deviceto distinguish his products. On the contrary a claim of unfair competition

consider the total physical image given by the product and its name together.

In giving protection to trademark, the law is imposing ethical and moralnorms on the competitive process . It is view that the unethical and unfair toallow one two appropriate goods which a competitor has built up by qualitycontrol and advertising in a trade symbol. Trademark infringement is regardingas an unacceptable access in the heat of competitive rivalry.

In a sense the law of trademarks reflects the societal view that certain forms ofcompetitive behaviour in business practices are unfair. Today there is consensusthat gaining customers by the use of confusingly similar to trademarks is contraryto all concepts of commercial morality ethics and fairness.

The logic underlying protection of trademarks seems to be the fairnessinvolved in the first user being given the recognition as he is the first toappreciate the value of the mark who had gone through the efforts necessary toestablish the mark as a meaningful symbol. To permit others to exploit the first



3

user‟s efforts is unjust. From the customers‟ standpoint this conduct is an unftrade practice inasmuch as it deceives the purchaser. In that sense, it is a fraud onthe public which acquires a right in course of time to get a particular brand.

It had been argued by many scholars that the trademark like a patent orcopyright served to differentiate the product with which it is associated and thusleads to control over a segment of the market.

Many judges and writers have later however restricted the contention thattrademarks partake of the essential aspects of monopoly. Perhaps Judge Frankconclusion is appropriate to appreciate the question in proper perspective. Hesaid that judges should keep in mind “the basic common law policy ofencouraging competition and the fact that the protection of monopolies innames is but a secondary and limited policy.” ( Eastern Wine Corp. v. Winslaw –

Warren-Ltd. 137 F.2d 955).It is argued by many that trademarks actually create a barrier to entry to themarket. It does not appear to be correct. In fact when consumers have thebenefit of price advertising retail prices are dramatically lower than withoutadvertising. Advertising may reduce, not raise the cost of products/services.However, when such barriers exist it may be noted that they exist becauseconsumers prefer the brand with the favourable representation and are willing topay a higher price for them.

Trademarks are symbols representing essential element of the competitive process . The Senate Committee in America while reposting the bill that becamethe Federal Trademark Act of 1946 (Lanham Act) explain the fundamental basisof trademark protection thus:

“Trademarks, indeed, are the essence of competition because they make possiblea choice between competing articles by enabling the buyer to distinguish onefrom the other. Trademarks encourage the maintenance of quality by securing tothe producer the benefit of the good reputation which excellence creates. Toprotect trademarks, therefore, is to product the public from deceit, to foster faircompetition, and to secure to the business community the advantages ofreputation and goodwill by preventing their diversion from those who havecreated them to those who have not….” (S. Rep. No. 1333 79th Cong. 2d.Session. (1946) US CCAN 1275).

Trademark confers a „right to exclude‟ – a limited exclusive right. In this viewit can be said that trademark is a form of property. The property parameters of a



4

trademark are defined very differently from any other kind of property. Theexclusive property right in the trademark is defined by customer perception.

Trademark owners has a property right only in so far as is necessary to prevent customer confusion as to who produced the goods and to facilitatedifferentiation of the trademark owner‟s products.

As a “property right” marks can be alienated like any piece of property . Trademarks can be bought, sold and licensed.

Trademark has no existence apart from the goodwill of the product orservice it symbolizes . In a sense a trademark is a “property” only in the sensethat it is a symbol of the goodwill. When an article bearing a trademark is sold,the goodwill that trademark signifies is a factor in making the sale. The goodws

existence is in the minds of the buying public. In fact goodwill is a businessinterest that reflects the basic human tendency to continue purchasing thingsfrom a seller who has offered goods that the customer develops a liking in courseof time. The goodwill together with its symbol the trademark – are classified asproperty. It is non-tangible and non-physical. When alienated together,trademarks and their goodwill are subject to ownership like any other form ofintangible property rights.

Even though trademarks and goodwill are forms of non-physical property theycan be carried on in the books as an asset of the company.

While free competition is a goal, it does not override protection for the goodwillestablished by a user for though the goodwill name and reputation of theproducer remains his private property and may not be traded upon and exploitedby the competitors.

Trademark Infringement as Unjust Enrichment

A trademark that has attained consumer recognition has an inherent value andshould be protected from invasion by those how would like to profit fromadvertising expenditure that they did not make. In this sense trademarkinfringement is an undue enrichment.

Trademark law insures that the brand information received by consumers isaccurate. They in fact reduce losses caused by deceit and thus help theconsumers. In this sense it can be said that protection of trademarks is only afacet of consumer protection.



5

Historically, trademark law grew up as a branch of the tort of fraud and deceit,unfair competition of which trademark infringement is a part, is, founded on theright of both dealer and the purchasers to be protected from fraud of which bothare victims.

Sometimes, the private rights of trademark owners conflict with the right of thepublic to know the truth about the significance of a trademark.

A trademark not only symbolizes the goodwill behind the physical products butalso the penumbra of psychological factors that surround the product. Thesefactors of merchandising the legal issues of “likelihood of confusion” and“dilution” of the effect of a given trademark.

Sometimes people confuse trademarks law because of „irrational‟ purchasdecisions of consumers, but this confusion is not justified inasmuch astrademarks are neutral symbols insofar as advertising and a product‟s usefulnesis concerned.

REGISTRATION OF TRADEMARK

PROCEDURE FOR REGISTRATION

1. Application for Registration

Section 18 of the Trade Marks Act 1999 says that any person, claiming to be theproprietor of a trademark used or proposed to be used by him, who is desirousof registering it shall apply in writing to the registrar in the prescribed manner forthe registration of the mark.

Essential Ingredients for registration:

(i) Any person

Any person includes individual, partnership firm, association of persons, acompany whether incorporated or not, a trust, Central or State Government. Itdoes not allow the representative of the proprietor to apply in his own name.

(ii) Claiming to be proprietor



6

A person may obtain proprietorship in a trademark either by use or byregistration under this Act. He may also acquire proprietorship by assignment orby inheritance. In case of unregistered mark but in use, proprietorship will be theperson who first used it in case of two rival claims whereas in case of proposeduse of mark, which comes up for registration, the designer or the originator willbe the proprietor in case of any controversy. Between two rival claims of user ofthe mark and designer of the mark the former will be preferred.

At this stage of making application, the proprietor has to show his bona-fideclaim. If the mark is not mistaken on the face of application and also there is notobjection to the claim, the registrar is entitled to accept the applicationIn case of manufacturer having a trademark abroad has made goods andimported them into this country with foreign mark on them, the foreign markmay acquire distinctive character and in such circumstances, the same orcolourably similar mark cannot be registered not because it is registered abroad

but because it lacks distinctiveness.(iii) Used or proposed to be used

The law permits registration of a mark, which has been or is being used or isproposed to be used. In case of proposer of the mark, he must have definite andpresent intention to use the mark as on the date of the application. Definite andpresent intention is different from the general intention to use the marksometime in future to something, which he may think desirable later on. Definiteand present intention means a real intention to use the mark for resolved and

settled purpose. In case of used mark, the use in itself is not sufficient but is tobe accompanied with real intention continue with the use. The „proposed use‟ of the trademark must be normal and fair, which, however,may include variations in presentation or colour difference but such variationshould not stretched to far so that the used form will be totally different fromthe one sought to be registered. If proprietor does not have the real and presentintention to use the mark, and try to register is for some mala-fide intention, suchas to block the mark, it would amount to registration in bad faith 1, which is aserious form of commercial fraud.

The application for registration of the mark must be filed with the Registrar inthe prescribed manner who has been conferred the discretion either to accept orreject or accept with amendments, modifications, conditions or limitations 2. The

1 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 2392 Section 18 (4)



7

Registrar must communicate his decision in writing with the applicant and isunder obligation to give the reasons in cases of rejection or acceptance onconditions or with modification. 3

2. Withdrawal of Acceptance

In case the Registrar decides to accept the mark for registration, but before actualregistration, the Registrar may withdraw his acceptance under certaincircumstances under section 19 of the Trade Marks Act 1999. For example, if theRegistrar is satisfied that the application is being accepted in error or thatcircumstances are such that such registration should not be granted, he has beenempowered to withdraw the acceptance of application. This power can beexercised subject to certain conditions. Registrar has to issue a notice, specifyingthe objections, which has led him to think that the application has been accepted

in error or why the mark should not be registered, to the applicant and give himan opportunity of being heard by requiring him to show cause why acceptanceshould not be withdrawn. 4

3. Advertisement of Application

Once the Registrar for registration has accepted the application, he shall get theapplication advertised in the prescribed manner after acceptance. However, theapplication shall be advertised before acceptance if the application is related to atrademark to which section 9(1) and 11(1)(2) apply or in any other case as it

seems expedient to the Registrar. 5 The purpose of advertisement is giveinformation to the public at large in respect of the trademark advertised andafford an opportunity to oppose the registration of the mark on given grounds.So the advertisement must be complete in all respects and otherwise the verypurpose of advertisement will be frustrated. 6 If there is incomplete or incorrectinformation in the advertisement, it would amount to misrepresentation, whichdeprives a prospective opponent of the opportunity to get full information andof filing an effective opposition.7

4. Opposition to Registration

3 Section 18 (5)4 Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).5 Section 206 Relevant case: Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)7 Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 507



8

Section 21 of The Trade Marks Act 1999 allows any person to oppose anapplication for registration. “Any person” need not be only a prior registeretrademark owner. 8 Even a customer, purchaser or a member of the public likelyto use the goods may object to the registration of a trademark in respect of suchgoods on the ground of possible deception or confusion. The period within

which opposition to the application for registration can be filed is three monthfrom the date of advertisement, which can be extended by Registrar notexceeding one month on application made to him and on payment of theprescribed fee. So the period cannot exceed four months in toto.

The grounds of opposition should be based upon the specific provisions of law. The grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would besuitable to challenge the application of registration. However, the grounds basedon section 11(2) and (3) are available only to the proprietor of earlier trademark.9

On receiving the notice of opposition, the Registrar is under obligation to send acopy of the same to the applicant for registration. Upon receiving such notice,the applicant is given two months time, from the date of receipt of the notice, tofile counter statement together with the prescribed fees to the registrar. Thiscopy of counter statement shall be sent to the person who has filed oppositionunder section 21 (3). The applicant and the opponent are given the opportunityto adduce evidence in support of their claims and may also be given anopportunity to be heard if they so desire under Section 21 (4). 10 However theonus is on the opponent to allege and prove the existence of facts, which may

lead the tribunal to assess the existence of likelihood of confusion in the mindsof the public, which includes likelihood of association with the earlier mark. Butthis does not relieve the applicant of his onus to satisfy the Registrar or the courtthat there is no reasonable probability of confusion, in respect of all goodscoming within the specification applied for and not only in respect of the goodson which he is proposing to use it immediately.11

5. Registration

8 P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 809 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 261.10 Case relating to adducing evidence: Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968;Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24; Jagajit Industries Ltd. vThe Registrar of Trade Marks 2001 PTC 24; Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127;Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 4511 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 272



9

Subject to Section 19 the Registrar is under obligation to register the Trade Markunder section 23 if he decides in favour of applicant after listening to theopposition. However, Central Government may direct otherwise on certaingrounds. The mark can also be registered jointly for two or more persons undersection 24 if two or more persons agree to work jointly. In such cases, theregistrar shall require a copy of joint venture agreement to satisfy himself becausenone of them is entitled to use the mark independently. The section in its earlierpart specifically precludes the Registrar from registration of two or more persons

who use the trademark independently or propose to use it independently. Theregistration shall be made as of the date of the application and the applicant shallbe issued a certificate of registration. However the registrar is empowered U/S23 (4) to amend the register or certificate of registration for the purpose ofcorrecting a clerical error or an obvious mistake. The applicant must complete allformalities within one-year time period or within such time as may be given in

the notice. If defaulted, the application may be treated as abandoned after theregistrar gives notice in this regard to the applicant.Section 25 provides that Registration shall be for a period of ten years but maybe renewed from time to time in accordance with the provisions of this act.Renewal can be made before the expiration of the registration. In case of defaultin renewal before expiration, the act provides for the grace period of six monthsfrom the date of expiration for renewal on payment of prescribed fee. However,before expiration of the last registration of a trademark, the Registrar shall sendnotice in the prescribed manner to the registered proprietor of the date ofexpiration and conditions as to the renewal. If the proprietor does not file for

renewal, the name of the mark will be removed from the register. However, theRegistrar is entitled to restore the mark in register if it is just to do so after sixmonth but before one year from the expiration of the last registration, on thereceipt of application and on payment of the fee by the proprietor. Suchrestoration shall be for another ten years to period.

REGISTRABILITY OF THE MARK AS TRADEMARK:

Any mark, which is not hit by the definition and section 9, qualifies forregistration. However, a mark qualified under section 9 has to meet the positiveobjections under section 11 to be finally registered. Section 11 is the qualificationof section 9. Mark having crossed the threshold under section 9 is capable ofgetting the protection of the Trademark Act subject to section 11. It deals withprohibition on registration but does not hit the inherent capability of mark as toits registrability. The marks prohibited under section 11 may not be desirablebased upon public policy considerations.



10

Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, amark, which can be represented graphically and is capable of distinguishingthe goods or services of one person from those of others.In a way, the definition itself prescribes two features to be present in any mark tobe a trademark:Capability of being represented graphically;Capability to distinguish the goods or services of one person from those ofothers.

Absolute Grounds for Refusal of Registration under Section 9

Whereas Section 9 of The Act lays down the ground for on the basis of which,the registration of the mark can be denied absolutely. One of the grounds is „ifthe mark is devoid of distinctive character‟12. The phrase „distinctive character‟

implies the „incapability of the mark to distinguish‟ the goods or services of person from that of the others. It also implies that the mark in itself should bedistinctive in certain cases. For example, common word of dictionary or thename of the place can not be registered unless it is shown that the common wordor the name has become distinctive of his goods or services in the mind of thepurchasing public, but if he succeeds, then he will be entitled to protect his markby registration.13

Another ground 14 for refusal to register the mark is that the mark should notindicate the kind, quality, quantity, intended purpose, values, geographical origin

or the time of production of the goods or rendering of services or othercharacteristics of the goods or services. In addition to these, a mark standsdisqualified from registration if represents the shape of goods results from thenature of the goods themselves or shape of the goods necessary to obtain atechnical result or shape which gives substantial value to the goods.15

Yet another ground 16 is that the mark must not be consisted of the marks orindications, which have become customary in current language or in the bonafide and established practices of the trade it is not desirable to monopolize suchmarks.

12 Section 9(1)(a)13 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 9114 Section 9(1)(b)15 Section 9(3)16 Section 9(1)(c)



11

These are the grounds, which are specific to the mark that means, if the mark isaffected by any of these characteristics, it cannot be registered. But this is not theend. The mark not affected by any such disqualification, has to pass what can becalled as the effect test. That means, the mark should not deceive the public orcause confusion or hurt the religious susceptibilities of any class or section of thecitizens or be scandalous or obscene.17 The section 9 lays down the pre-requisitesof qualification for the protection of trademark law.

Capability to Distinguish Section 9(1)(a)

In National Bell Co. v Metal Goods MFG. Co18 ., Supreme Court of India observedthat distinctive in relation to the goods or services a s meaning „adapted todistinguish‟ goods with which the proprietor is/ may be connected. Whereas Davis v Sussex Rubber Co. Ltd.19 , the Court of Appeal drew the distinction between

capable of distinguishing and adapted to distinguish by saying that „capable ofdistinguishing‟ seems to have a somewhat wider import than the expressi„adapted to distinguish‟ as it embraces marks which have not at the date of application, but which, if used long enough, may become distinctive of the goodsof the propriet or of the mark. The court in this case, observed that „capable ofdistinguishing‟ might perhaps refer to the future, in the sense that a word mayable to distinguish although at the moment of time at which the application ismade it may not have become fully effective to distinguish. However, the Courtof Appeal observed that the general considerations, which have to be taken intoaccount in construing the expression „capable of distinguishing‟, are the samin construing „adapted to distinguish‟.20

In determining the capability to distinguish, the authority must take intoconsideration both inherent capability and factual capability to distinguish.Inherent capability may mean that irrespective of the peculiarities of the trade orthe practice of other traders, the mark is shown to possess the capability ofdistinguishing the goods to which it is applied. For example, a mark having directreference to the character or quality of the goods is considered as inherently notcapable of distinguishing. However Indian Trademark Registry takes the viewthat if the reference to the character or quality is only indirect or suggestive, themark can be considered. The „factual capability to distinguish‟ depends upon17 Section 9(2)18 (1970) 3 SCC 66519 (1927) 44 RPC 412; (1927) 2 Ch 34520 English Cases: Electrix Ld’s., Appl. (1958) RPC 176; Philips’ Phonographische Industrie’s Appl. (1955) 72RPC 183; Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73; Verve’s Records Inc.’s Appl. (1958) RPC3; Tastee Freez International Ld.’s Appl. (1960) RPC 255



12

facts and circumstances of each case. In each particular case, it become a subjectof inquiry whether the mark by virtue of its being use or any othercircumstances, it is in fact is capable of distinguishing the goods. The SupremeCourt in National Bellcase observed that in determining the distinctiveness,regard must be had whether it is inherently distinctive or is inherently capable ofdistinguishing and by reason of its use or any other circumstances, it is in factadapted to distinguish or is capable to distinguishing the goods.

Indicating Nature or Characteristics under Section 9(1)(b)

Section 9(1)(b) lays down the other ground of disqualification of the mark forregistration. It says that the mark consists exclusively of marks or indications,

which may serve in trade to designate the kind, quality, quantity, intendedpurpose, values, geographical origin or the time of production of the goods or

rendering of services or other characteristics of the goods or services. In additionto these, a mark stands disqualified from registration if represents the shape ofgoods results from the nature of the goods themselves or shape of the goodsnecessary to obtain a technical result or shape which gives substantial value tothe goods.21

The expression „kind‟ includes the name or size or type of the goods or services. This is based on the public policy of not affording registration to the genericdescription of the goods which are the only available method of description ofthe goods would not be having a capability to distinguish. E.g. words like extra,

small, big, liquid, solid etc.

Any mark indicating the „quality‟ of the goods or services is the property ofeverybody and no one can be allowed to monopolize it. e.g. superior, best, No. !etc. . Such words are found to be devoid of distinctiveness.

Indications of quantity or standard weights or measures or numbers of contentssuch as kilograms, liters, gallons, grams etc are not allowed, as these are neededby every trader in respect of all the goods and services.

Words describing intended purpose or the primary functions of the goods orservices such as giving soothing effect or giving absolute cleaning. For example,

word SAFFO 22 was not given registration for cleaning powder and liquids on theground that word was too close to the descriptive of SAFF m ean „clean‟.

21 Section 9(3)22 Chef TM (1979) RPC 143.



13

Similarly words indicating value or worth of any product are incapable of gettingregistration such as Moneysworth.23

Marks indicative of place of manufacture or sale of goods or time of productionare not allowed for registration. E.g. Punjab basmati or Talvandi rice or preparedin one day etc.

Marks common to trade Section 9(1)(c)

Section 9(1)(c) prohibits the registration of marks that consists exclusively ofmarks of indications which have become customary in current language or in

bona fide and established practices of the trade. This is to protect the free use ofindications or marks, which are already in use in the trade, from beingmonopolized as a trademark. Moreover such marks lack distinctive character.

Words or indications common to trade are open to everybody for use. E.g.generic names notified by the WHO as non-proprietary names, are open to thetrade to use.

Proviso to Section 9(1)

The proviso to Section 9(1) provides that any mark or name, which though is not

distinct, nevertheless may be registrable if it is shown that it has by virtue of useacquired a distinctive character. That means, as a result of use, the mark hasbecome distinctive of the goods or services of the proprietor. In an well-knowcase in Registrar of Trade Marks v Hamdard National Foundation (India)24 the DelhiHigh Court gave approval of the registration of the mark „SAFI‟ by holding t

words having direct relation to the character and quality of the goods, sometimeslose their primary meaning and acquire secondary or good specific meaning of aparticular manufacturer. If it happens then such marks may be registered astrademark.

In English case, Cycling IS…TM Applications25 the Court laid down the test todetermine the distinctiveness on the basis of use by holding that

23 Moneysworth Trade Mark (1976) RPC 317.24 AIR 1980 Del 180 (DB)25 (2002) RPC. 37, 729



14

“Right view to take of a particular sign may well depend upon the use (if any)that has been made of it and more generally upon the usage of persons involvedin the relevant field(s) of commercial activity.”

Other Relevant English cases on this point are given as under: Merz & Krell GmbH & Co. (2001) ETMR. 105.Windsurfing Chiemsee Produktions und Vertriebs v Boots-und Segelzubehor Walter Huand Granz Attenberger(2000) Ch. 523LLOYDS SCHUHFABRIK Meyer & Co. GmbH Handel BV(2000) FSR 77.Philips Electronics v Remington [1999] RPC 809British Sugar Plc v James Robertson & Sons Ltd. [1996] RPC 281.Bach and Bach Flower Remedies Trade Marks [2000] RPC 513.

Marks deceiving the public or cause confusion: Section 9 (2)(a)Section 9 (2) (a) seeks to prevent the registration of marks, which are of suchnature as likely to deceive the public or cause confusion.Generally deception or confusion might arise by reason of similarity between theproposed mark and another existing mark or might result from the nature of themark itself or nature of the use of the mark. 26 For example, Deception in thenature of the Mark may be in the form of misrepresentation as to thecharacteristics of the goods or services or to the effect that they were made in aspecified geographical region or place, when in fact not so made. Deceptive use

may involve where mark contains false or misleading information. E.g. use of word Regd. when the mark is actually not registered.

Section 9(2)(a) is intended to apply where the deception or confusion arises fromthe nature of the mark itself 27 and not to the questions based upon the similarityof the mark with other existing mark which is a ground of refusal under section11 which deals with relative grounds of refusal for registration. Hence, a marknot deceptive or confusing may qualify for registration even if the mark hasresemblance or identity with other mark but is distinct.

Section 9 (2) (b) forbids registration if the mark contains or comprises of anymatter likely to hurt the religious susceptibilities of any class or section of thecitizens of India. But this does not forbid the use of name or pictures of God orGoddess or religious heads as trademarks that are not offending. Examples of

26 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 15027 This is in consonance with the heading of section entitling “absolute grounds for refusal”.



15

offending use may be use of Hindu Gods in respect of beef or meat or MuslimSaints for port products etc. however, the perception and the practice is thatusually symbols relating to religion, gods or goddesses, place of worship shouldnot be registered even if it is not hurting but because these are part commonheritage and should not allow any monoplization.

Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene. Whether the mark is scandalous or obscene or not depends upon the currentreligious, social and family values.

In addition to all these ground for refusal of registration of a mark under section9(3) on the ground of shape will not be entertained for registration. The shape ofthe goods resulting from its nature 28 or giving substantial value to goods or shapeof goods necessary to obtain technical results29 would disqualify the mark for

registration. Whereas the definition of the mark itself provides that mark includesshape of goods or packaging. However generally the shapes would not beallowed registration unless it is shown that the shape is distinctive of the goodsor services.

Relative Grounds for Refusal of Registration under Section 11

While Section 9 provides for absolute grounds for refusal of an application forregistration of trademark, section 11 provides for relative grounds for refusal toregister any trademark. Subsection (1) of section 11 provides that a mark shall be

refused registration if it is identical with an earlier trademark covering similargoods or services as are covered by earlier trademark. Also refusal can come ifthe mark is similar to the earlier trademark covering identical goods or services asare covered by the earlier mark. The register is under obligation to refuse theregistration on the grou nd of „likelihood of confusion‟ on the part of the public.Earlier trademark need not necessarily be registered. If the trademark is havingearlier priority date or is entitled to protection by virtue of being well-knowntrademark, it would sufficiently be an earlier mark for the purposes of thissection.

So the Registrar before refusing the register a mark that has come up forregistration has to function at three levels. One, he must find out the identity orsimilarity of mark. Two he must look for identity or similarity of goods or

28 Philips Electronics v Remington [1999] RPC 80929 Philips Electronics v Remington [1999] RPC 80; Triomede (PTY) Ltd. v Beecham Group PLC FSR [2001]583.



16

services to which the mark is going to be applied. And three, he must check out whether there is any likelihood of confusion on the part of the public.

Identity or similarity of Marks

Test for determining Identity or similarity of Marks

For determining the identity or similarity, the rules of comparison are developedover the years and which J. Parkar aptly explains in Pianotist Company Ltd.’s

Application 30 case. According to him one must judge the two marks both by thelook and by the sound; consider the goods to which the mark is to going to beapplied; consider the nature and kind of customers who are likely to buy thegoods; consider as to what would happen if both the marks are used in thenormal way as a trademark for goods of the respective owners of the mark. After

considering all these circumstances, if one comes to the conclusion that there willbe confusion, registration must be refused.

While comparing, one must not take a part of the word rather consider the whole and compare it. Supreme Court 31 while recognizing it further observedthat the approach to comparison should be from the point of view of a man ofaverage intelligence and of imperfect recollection. Whether to such a man, theoverall structure and phonetic similarity or similarity of the idea in the two marksis reasonably likely to cause a confusion between them, is the test.32 Search Procedure

To determine the identity or similarity with the earlier mark, the Registrar needsto go through the search procedure before registration. Search is confined to aparticular class in which registration is applied for. However, search should becarried on amongst the marks not only for identical goods but also for similargoods.[Schedule IV to the Trade Marks Rules provides for classification of the goodsand services in 45 classes – goods being classified in classes 1 to 34 and servicesincluded in classes 35 to 45. For international classification of goods and servicespublished by WIPO, one can visit www.wipo.org earlier trademark is one that is

30 (1906) 23 R.P.C. 77431 In Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142. Also refer to Amritdhara Pharmacy vSatya Deo Gupta AIR 1963 SC 449; Torrent Pharmaceuticals v Wellcome Foundation Ltd. 2001 (2) CTMR158.32 Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142

http://www.wipo.org/






17

already registered or subject of a convention application33 of an earlier prioritydate or is one which is entitled to protection as a well known trade mark.

Identity or similarity of goods or services

To determine the identity or similarity, the Registrar needs to go through thesearch process before registration. Search is to be done in the specific classes ofgoods and services in which the proposed mark falls is going to fall. However,search would include not only amongst the identical goods but cover similargoods.

For this purpose, it is advisable that applicant should be precise in stating thespecification of goods or services for which the mark is sought to be registered.However, the specification, if indefinite, may be a bar to the registration. If the

applicant gives unnecessarily wide specification, there are greater chances that hemay found a prior registration in same or similar mark in that class which mayresult in an objection to his registration. Moreover, even registrar may object to

wide specification of goods under rule 25(15) of Trademarks Rules.

One thing is to be made clear here that classification of goods and services is notthe criterion for determining whether two sets of goods or services are of thesame description. Indeed, goods comprised in same class may include goods of adifferent description and different description of goods may fall in the sameclass. [Schedule IV to the Trade Marks Rules provides for classification of the

goods and services in 45 classes. For international classification of goods andservices published by WIPO, one can visit www.wipo.org

Likelihood of confusion [Section 11(1)]Section 11(1) of the Trade Marks Act 1999 says that if because of the identity orsimilarity of marks or goods or services, there exists a likelihood of confusionon the part of the public , which includes the likelihood of association withthe earlier trademark , the mark shall not be registered save as otherwiseprovided in section 12.

Laying down the test in Amritdhara Pharmacy case34 the Supreme Courtobserved:“for deceptive resemblancetwo important questions are: (1)who are the personswhom the resemblance must be likely to deceive or confuse, an (2) whatrules of

33 India being member of Paris Convention for protection of industrial property is bound to accord prioritydate under section 154.34 Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449.







18

comparison are to be adopted in judging whether such resemblance exists. As to confusiois perhaps an appropriate description of the state of mind of a customer who, on seeing a thinks that it differs from the mark on goods, which he has previously bought, but is douwhether that impression is not due to imperfect recollection… the question has to be approach

from the point of view of a man ofaverage intelligence and imperfectrecollection .”

The risk of likelihood of confusion is considered as the most in cases where boththe mark and goods and services are identical of the existing mark and lesser

where either of them is identical. Whereas in the instance of similarity of markand good or services risk is considered lesser than in case of identical marks.

The provision in section 11(1) is mandatory on the Registrar and therefore whenthis section hits an application, the Registrar is bound to refuse registration. The

issue under this section can be raised by the Registrar, prior to acceptance of theapplication, and by any person after the mark is advertised. In the absence of anyattack on the registration fo the earlier trademark, it is to be assumed that therehas been notional use of the earlier trademark. The reason for this is that unlessone assumes notional use of the earlier trademark, the question whether later onthe trademark, proposed to be registered, will be give rise to a likelihood ofconfusion on the part of the public will become difficult to answer. At the sametime, ordinary practical business probabilities having regard to circumstances ofthe case should be considered rather than constructing imaginary and unlikelycases.

In Dalip chand case35 an application to register Escorts for electric iron, etc wasopposed by Escorts Ltd. The Assistant Registrar dismissed the objections on theground that applicant had established prior use and honest concurrent use. Onappeal, Delhi High Court set aside the orders of the AR and held in thisparticular case that it should be considered whether the mark has come to beknown and associated with the name of the opponent, not necessarily with theparticular goods of the same description but generally with its goods. In this case,it could be shown that the mark escorts has been quite extensively used in themarket by the respondent with the result that any goods which may be marketedunder this mark will be associated with the name of the respondent, so thatpeople buying may feel that it is product of the respondent. This is sufficientjustification for refusing the application of a similar trademark.

35 Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.



19

DECEPTIVELY SIMILAR

Section 2(h) of the Act defines mark, which can be called deceptively similar. According to the definition, a mark shall be deemed to be deceptively similar toanother mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion .

The act does not lay down any criteria for determining what is likely to deceiveor cause confusion. So every case of deceptive similarity depends upon the factsand circumstances of each case after applying the test, which has been laid downby judiciary through cases. In H. C. Dixon 36 , the Court held that likely to deceiveis a question largely one of first impression and not necessary to prove theintention to deceive. It is sufficient if the ordinary user entertains a reasonabledoubt 37 as to the source of the product. It is the likely hood of deception and not

the actual deception, which is the deciding factor.

PASSING OFF

With the tremendous growth in trade and commerce, the competitors or othertraders tend to imitate the well known or reputed trademarks by imitating colourscheme or get up or packaging with a view to pass off such goods as goods ofthe genuine owner. In cases of registered trademarks, the owner can move the

court under this Act for the infringement whereas in cases of the unregisteredtrademarks, the Act recognizes the Common Law remedy of passing off. Thetort of passing off is based upon the principle that “no man is entitled torepresent his goods as being the goods of another man; and no man is requiredto use any mark, sign or symbol, device or means, whereby without making adirect representation himself to a purchaser who purchases from him, he enablessuch purchaser to tell a lie or to make a false representation to somebody else who is the ultimate purchaser.”38

The purpose of this remedy is three fold 39:(i) Protect the interest of the trademark owner in his advantageous

relations he has created in the market place

36 H. C Dixon & Sons Ltd. v Geo Richardson & Co. Ltd. 50 RPC 36, p. 37437 Jellineck’s Appl., (1946) 63 RPC 59. P. 78 38 Singer Manufacturing Co. v Loog (1880) 18 Ch. D. 395, p. 412.39 Stephen P. Ladas on Patents, Trade Marks & Related Rights (Vol II – 1975)



20

(ii) Protect the interest of the consumer or purchaser of goods against actstending to create false impressions and to deceive or confuse him byinducing the belief that the business or products of one manufactureror trader are those of another

(iii) Protect the social interest by promoting fair dealing in the market placeand prevent unethical and unfair practices in trade.

The plaintiff, in an action of passing off, has to establish that his business orgoods has acquired the reputation and that his mark has become distinctive ofhis goods among the public at large. He has to establish that there is likely hoodof deception or confusion int eh minds of the public. He, however, does nothave to establish the fraudulent intention on the part of the defendant. Thirdly,he has to establish that confusion is likely to cause damage or injury to thereputation, goodwill and fair name of the plaintiff. He need not prove the actual

loss or damage in an action of passing off. The probability of deception is a question of fact, which depends upon a numberof factors as held by Supreme Court in Cadila Healthcarecase40:

(i) Nature of the mark(ii) Degree of resemblances between the marks.(iii) Nature of goods in respect of which they are used(iv) Similarity in the nature, character and performance of the goods of the

rival traders.(v) Class of purchasers, who are likely to buy the goods bearing the marks,

their education and intelligence and a degree of care they are likely toexercise.

(vi) Mode of purchasing(vii) Any other surrounding circumstances which may be relevant.

Before that, Bombay High Court in Hiralal Prabhudas v Ganesh Trading Company 41 laid down various factors to be considered, some of which are as follows:

(i) Marks are remembered by general impressions or by some significantdetails rather that by a photographic recollection of the whole. So overall similarity is the touchstone.

(ii) Marks must be compared as a whole, microscopic examination beingimpermissible

(iii) The broad and salient features must be considered for which the marksmust not be placed side by side to find out the difference in design.

40 Cadila Healthcare Ltd. v Cadila Pharmaceutical Ltd. (2001) 5 SCC 73. Other important case is: Mahendraand Mahendra Paper Mills Ltd. v Mahindra and Mahindra Ltd. AIR 2002 SC 117.41 AIR 1984 Bom. 218



21

(iv) Marks must be looked apart from the first impression of a person ofaverage intelligence and imperfect recollection

(v) Overall structure, phonetic similarity and similarity of idea areimportant and both visual and phonetic tests must be applied.

In addition to the these factors, the nature of commodity, the class ofpurchasers, the mode of purchase and surrounding circumstances must also betaken into consideration.

INFRINGEMENT UNDER THE ACT

The registration gives the proprietor exclusive right to use the trademark inrelation to goods or services in respect of which the registration is being made

under section 28 of the Act.42

This right of exclusive use shall be subject toconditions and limitations with which the registration is made. A registeredtrademark is infringed when a person, not being a registered proprietor orpermitted user, uses in the course of trade, a mark, which is identical with ordeceptively similar to the registered trademark, in relation to goods or services inrespect of which the trademark is registered.43 Section 29 gives instances of whatshall constitute infringement. The gist of the offence of infringement is that themark is deceptively similar and is likely to cause confusion on the part of thepublic.

In cases of infringement, the plaintiff does not have to prove that he is the user.Mere registration on his part is enough to give him the right to sue unlike incases of passing off wherein the plaintiff has to prove that he is user of the mark,

which has become distinctive of his product.

In cases of infringement, there may be instances whereby the defendant does notuse the exact mark but the get up is similar that he is likely to be deceived, suchcircumstances would warrant for an injunction is a recognized way back in 1970by the Supreme Court in Ruston case .44 In TorrentPharmaceuticals 45 the Court heldthat the test to determine the two mark identical or resemble each other or is

42 Important case on this point is Revlon Inc. and another v Hosiden Laboratories (India) and others 2001PTC 595.

43 Section 29.44 Ruston & Hornby Ltd. Zamindara Engineering Co. Ltd. AIR 1970 SC 164945 Torrent Pharmaceuticals Ltd. v The Wellcome Foundation Ltd. (guj) 2001 (2) CTMR 158.



22

likely to deceive or cause confusion is the test of an average person withimperfect recollection.

In Dyechem Ltd. 46 case the Supreme Court traced the legal principles applicableto cases of infringement with reference to the dissimilarities in essential featureof a mark.47 The Apex Court observed that the question of resemblance of twomarks could be determined by considering the leading characters of each. Yetthe sameness of most leading elements in each may give very differentimpression. On the other hand, critical comparison of the two marks mightdisclose numerous points of difference and yet the impression which wouldremain with any person seeing them apart at different time might be the same.

Thus it is clear that a mark is infringed if the essential features or essentialparticulars of it are copied. It is more so, when any distinctive arrangement orunusual features of the common elements are copied. 48 The apex court further

recognized that under other laws, emphasis is laid on the common features ratherthan on essential features and held that “where common marks are included the rival trade marks, more regard is to be paid to the parts not common and theproper course is to look at the marks as a whole but at the same time not todisregard the parts, which are common.”

Thus the Supreme Court lays down three-prong test to determine theinfringement:

(i) Is there any special aspect of the common feature, which has beencopied?

(ii) Mode in which parts are put together differently, i.e. whetherdissimilarities are sufficient to make the mark dissimilar?

(iii) Paying more regard to the parts which are not common while at thesame time not disregarding the common parts.

Relying upon the Dyechem case, Delhi High Court held in Peshawar Soap case 49 that for determining the comparative strength of infringement in favour ofplaintiff, regard must be had to the essential features. Ascertainment of essentialfeatures is not by ocular test alone by excluding sound of words forming part ofthe whole mark. In cases of word mark, resemblance is important, but in cases ofdevices and composite marks dissimilarity in essential features is more importantthan similarity. The leading characters, both orally and visually, in each as a whole

would be the relevant indicia. In cases of similar marks, the dissimilarities would

46 S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 57347 K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa andcompany, Nagpur) 2003 at 397.48 S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 57349 Peshawar Soap & Chemicals Ltd. v Godrej Soap Ltd 2001 PTC 1 (Del.)



23

be relevant to adjudge the impression left on the mind. The ascertainment ofdistinctive arrangement of common elements is also relevant to determineinfringement. The Court fu rther observed that defendant couldn‟t take a pleathat his mark contains besides the plaintiff mark other matters also, though thisis not an absolute proposition.

WELL-KNOWN TRADEMARK

Article 6bis The Paris Convention provides for protection of well-known markby mandating the member countries to prohibit the use of a trademark, whichconstitutes a reproduction, an imitation, or a translation liable to createconfusion of a mark considered by the competent authority of the country ofregistration or use to be well-known mark in that country as being already themark of a person entitled to the benefits of the convention.

Neither the Paris Convention nor TRIPS agreement contains any definition of well-known mark, which is defined, for the first time, under Section 2 (1) (zg) ofIndian Trade Marks Act 1999. Section 2 (1) (zg) defines:

Well-known trademark in relation to any goods or services, means a mark whichhas become so to the substantial segment of the public which uses such goods orreceives such services that the use of such mark in relation to other goods orservices would be likely to be taken as indicating a connection in the course oftrade or rendering of services between those goods or services and a personusing the mark in relation to the first-mentioned goods or services.

Section 11 (6) to (11) deals with the matters relating to Well-known trademark.Subsection (6) lays down the list of factors to be taken into account by theRegistrar while determining Well-known trademark. It is mandatory for theregistrar to look into these aspects, which includes:

(i) Knowledge or recognition of that mark in the relevant section ofpublic including knowledge in India obtained as a result of promotionof the trademark.

(ii) Duration, extent and geographical area of use of that mark(iii) Duration, extent and geographical area of any promotion of the mark,

including advertising or publicity and presentation, at fair or exhibition.(iv) Duration and geographical area of any registration of or any

publication for registration of that mark, to the extent they reflect theuse or recognition of the mark.

(v) Record of successful enforcement and the extent to which the markhas been recognized as a Well-known trademark by any court orRegistrar.



24

It must be mentioned here that these factors are only indicative and illustrativeand by no means exhaustive. Registrar is not precluded from taking intoconsideration other factor, if found relevant. Also it is not necessary that all thecriteria mentioned in the subsection (6) must be complied with. However, it ismandatory for the Registrar to take into consideration all these factors andcannot ignore any.

The protection afforded to a well-known trademark is on territorial basis. So theperson seeking protection and enforcement of well-known trademark has toadduce evidence regarding duration, extent and geographical area of any use ofthe well-known trademark. The kinds of evidence may include consumer surveysand opinion polls, promotion of the mark through advertising in both print andelectronic media etc.However subsection (9) of section 11 forbids the Registrar to ask for the

following as condition precedent to determine a trademark as well-knowntrademark. Particularly that the mark has been used or registered or filed forregistration in India or outside India or that the trademark is well-known to thepublic at large in India are specifically excluded from consideration.

Subsection (7) of section 11 indicates the factors to be taken into account by theRegistrar while determining whether a trademark in known or recognized „inrelevant section of the public‟. The inclusion of this phrase indicates that amark to become a well-known trademark requires the knowledge on the part ofpublic of relevant section and not the general public at large. The factors to be

taken into account are as under:(i) Number of actual or potential consumers of the goods or services.(ii) Number of persons involved with the channels of distribution.(iii) Business circles dealing with the goods or services to which that

trademark apply.

The number of actual or potential users may vary depending upon the nature ofgoods or services. What the Registrar is supposed to do is not to count thenumbers of person physically but to take into account the concerned section ofusers of those goods or services. As far as the distribution channels areconcerned there has been sea change in the tradition mode of distribution andsupply. The recent growth of super malls has changed the mode of distributionthat must not be lost sight of. The third factor „business circles‟ may incluimporters, wholesalers, franchisees and other dealers interested in dealing withthe goods or services to which the mark applies.



25

Sub-section (8) of section 11 says that the determination of trademark as well-known trademark by any court or judicial authority amongst at least one relevantsection of the public in India shall be taken as well-known mark by Registrar.

Subsection (10) of section 11 casts an obligation on Registrar to protect well-known trademark while considering the application for registration of any markand its opposition thereto. The protection to well known trademarks is affordedagainst the identical or similar trademarks50, which may come up for registrationto the Registrar. The underlying principle for according protection to well-knowncases is to prevent traders taking free ride. They may tend to take advantage ofthe good will of the well-known trademark without doing efforts. Thus theRegistrar is obliged to take into consideration „bad faith ‟51 while balancing theinterests of the parties (both applicant and opponent) involved in theenforcement of the well-known trademark.

The term „bad faith ‟ is also read through implicationunder section 18(1) of the Act, which provides that any person claiming to be the proprietor of a trademarkused or proposed to be used by him shall apply for the registration of histrademark in a prescribed form. Thus there is an implication that he intends touse the mark in the manner applied for and which is nothing but normal and fairuse. If the applicant‟s use or propose use of the mark in not normal and fair th

would bring upon him the charge that the mark proposed has been applied for in„bad faith ‟

Act does not define the expression „bad faith ‟ and is left to the Registrar to decidein each case based upon the facts and circumstances. „Bad faith ‟ as interpreted bythe courts in India connotes the breach of faith or willful failure to respond toone‟s known obligations or duty. It imports a dishonest purpose or some morobliquity and implies conscious doing of wrong.52 The allegation of „bad faith ‟ is aserious form of commercial fraud, which should not be taken lightly.

Subsection (11) of section 11 forms the exception to the subsection (6) to 10 inthe sense that it protects the prior use or prior registration in good faith beforethe commencement of the act, of an identical or similar trademark as against

well-known trademark. To get the benefit of this provision, one must show thatthe prior use or registration was in good faith. Once this is proved, the right touse the mark cannot be taken away on the ground that the mark is identical orsimilar to a well-known trademark.

50 Section 11(10)(i)51 Section 11(10)(ii)52 Bhupinder Singh v State of Rajasthan AIR 1968 Pun 406 at 411. Another case: Manish Vij v Indra Chugh2002 (24) PTC 561. Also see: Growmax Plasticulture v Don & Low Nonwovens (1999) RPC 379.



26

TRADEMARKS ON THE INTERNET

We have so far been dealing with trademarks in the real world. Under this topic, we wilthrough the equivalent of trademark in the cyberspace: domain name, its importance, disrelating to domain name and their resolution.

CONTENTS

1. 1. Introduction 2. 2. Domain Names

a. a. Internet Corporation for Assigned Names and Numbers b. b. gTLD c. c. ccTLD d. d. Importance of Domain Names e. e. Legal Status of Domain Names in India

f. f. Practical difficulties with traditional litigation

g. g. UDRP

h. h. Approved Providers for Domain Name Disputes i. i. Statistics under WIPO-UDRP

j. j. Cases under WIPO-UDRP k. k. Dispute Resolution of Indian ccTLDs

3. 3. Meta-tags 4. 4. Framing and Linking

INTRODUCTION

As the concept of global village is holding ground, and globalisation,liberalization and privatization is finding its way in the minutest of thecommercial activities in developed, developing, and least developed countries,the importance of trademark is growing multi-fold. One cannot deny the value, abusinessman attaches to its trademark. People identify the product of a particularmanufacturer through its trademark. With the Internet being used in a big way by

http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23Introduction


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23Domainnames


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23icann


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23gtld


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23cctld


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23importanceofdomainname


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23legalstatusdomainnameindia


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23practicaldifficulties


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23udrp


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23approvedproviders


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23statistics


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23casesunderudrp


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23disputeresolutionindiancctld


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23Metatags


http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarks%22%20l%23framingandlinking



















27

the businessmen for not only advertising and promoting their products, but alsofor selling them, the principles of trademark, infringement of trademark andpassing off are being applied even in the online environment. There is anincreasing awareness that any kind of activity with the aid of technology which

would made the consumer believe that the goods and services being offered onthe Internet might be coming from a particular source and thus, induces theconsumer to accept such goods and services, should be discouraged. One of theprimary areas is Domain Names which has been legal protection equal to that ofa trademark. Others areas we will be discussing is the effect of use of somebodyelse‟s trademarks/names in Meta-tags and whether that constitutes trademarkinfringement. Lastly, we will touch upon the issues of Framing and Linking andtheir impact on trademarks.

DOMAIN NAMES

With the advent and acceptance of Internet by people across the globe, thenotion of trademark took a new turn. To access a website, one requires a webaddress. This web address comprises of domain names. As the number ofInternet users increased, the importance of domain name increased. Peoplestarted identifying the domain name with its owner. For example, if one is toaccess the website of TATA, one would, in a natural process, presume the

website to be www.tata.com or www.tata.org . This gave the websiteaddress/domain name a further impetus and gave it an importance equivalent tothat of a trademark. Domain names no longer were considered to be merely atool to gain access to the website. Rather, they came to be used to identify thegoods and services which a particular company is offering, be it online or offline.If a company has acquired a distinguishing mark (like TATA) with respect to aparticular product, the company would be entitled to acquire that domain name( www.tata.com or www.tata.org ) as well. Domain name has thus been given legalprivileges of a trademark and anyone registering the domain name is required toshow good faith use.

Once hooked to the Internet, we would like to access certain websites. Each website is nothing but a set of information, programes and webpages stored on

the some server across the Internet. This server would have an Internet Protocol(IP) address. For example, keying 64.233.161.99 takes us to the popular searchengine, Google. However, it is difficult to remember the complicated numbersspecially if we are to access a number of websites. A system was thus evolvedlinking each such number to a name. So, instead of typing 64.233.161.99, we cantype www.google.co.in to get the same result. Much simpler!

http://www.tata.com/


http://www.tata.org/








http://www.google.co.in/










28

Internet Corporation for Assigned Names and Numbers

The Internet Corporation for Assigned Names and Numbers ( ICANN ) is atechnical coordination body for the Internet. It was created in October 1998. ithas responsibility for Internet Protocol (IP) address space allocation, protocolidentifier assignment, generic (gTLD) and country code (ccTLD) Top-LevelDomain name system management, and root server system managementfunctions. These services were originally performed under U.S. Governmentcontract by the Internet Assigned Numbers Authority ( IANA ) and other entities.

ICANN is governed by an internationally diverse Board of Directors overseeingthe policy development process. ICANN's President directs an internationalstaff, working from three continents, who ensure that ICANN meets itsoperational commitment to the Internet community.

gTLD

A gTLD is a generic top level domain. It is the top-level domain of an Internetaddress, for example: .com, .net and .org.

In addition to the above, seven new gTLDs were also selected by ICANN on

November 16, 2000. .aero: It is only intended for use of the members of the aviation community.Registration of a .aero domain name is done in 2 steps: (a) Identification: beforea registrant can submit an application for a .aero domain name, the registrantmust be recognized as a member of the aviation community and obtain an

Aviation Membership ID from the Registry; (b) Registration: once the registranthas obtained an Aviation Membership ID, the Registrant can obtain a .aerodomain name from an accredited Registrar. (See .aero Domain ManagementPolicy for details)

.biz: It is only intended for domain names that are or will be used primarily for a„bona fide business or commercial purpose‟.

.coop: It is a sponsored gTLD for cooperatives. One has abide by the .coopCharter.

http://www.icann.org/



http://www.iana.org/



http://www.information.aero/policy/aerodmp.htm



http://www.icann.org/tlds/agreements/coop/sponsorship-agmt-att1-05nov01.htm











29

.info: It is an open gTLD without restrictions (anyone can register any domainname)

.museum: It is a sponsored TLD for museums. One has to abide by the .museumcharter.

.name: It is an open gTLD for registration of personal names or names officticious characters on the second level or on the second and third level (e.g.<Smith.NAME> or <John.Smith.NAME> or <Smith.John.NAME> or<J.Smith.NAME>. However, it permits only for personal names (described asthe legal name or the name by which the person is commonly known) of anindividual or of a fictional character provided applicant has a trademark in thatname. Further, additional distinguishing elements (e.g. numbers) permitted

.pro: It is open for unsponsored TLD for qualified professionals meeting theregistration restrictions. See the Appendix of the .PRO Registry Agreement fordetails. Registration is permitted on the third level only. The second level willindicate individual professions (<smith.law.pro>, <smith.cpa.pro>,<smith.med.pro>). In an initial phase, domain name can only be registered bylawyers (.law.pro), medical doctors (.med.pro) and chartered accountants(.cpa.pro).

ICANN is currently exploring possibilities to add additional gTLDs. See a

Report on Review of new gTLDs and assess for yourself how advisable it is tohave more gTLDs.

ccTLD

Two letter domains, such as .uk, .fr or .au (for example), are called country codetop-level domains (ccTLDs) and correspond to a country, territory, or othergeographic location. The rules and policies for registering ccTLDs varysignificantly and a number of ccTLDs are reserved for use by citizens of the

corresponding country. A few of these ccTLDs were established in the 1980s,but most of them created in the mid and later 1990s.

See policies governing the establishment, delegation and operation of ccTDLs.

The administration of a ccTLD is left to the specific country concerned. Forexample, the Administration of Domain Names within the .in (Indian) ccTLD is

http://www.icann.org/tlds/agreements/museum/sponsorship-agmt-att1-20aug01.htm




http://www.icann.org/tlds/agreements/pro/registry-agmt-appl-03mar02.htm



http://www.icann.org/announcements/announcement-31aug04.htm


http://www.icann.org/icp/icp-1.htm



http://domain.ncst.ernet.in/











30

looked after by the NCST. The IANA provides for a Root-Zone WhoisInformation Index by TLD Code. This Index enlists all the countries with thisccTLD which makes for an interesting reading. With the gTLDs being over-usedand short in supply, one is now turning to ccTLDs. There are quite manyinstances where the ccTLDs are proving to be more apt to indicate moremeaningfully one‟s business or profession. Take for example, .tv (of Tuva

which has been high demand by television companies around the world. Anotherinstance is .md (of Republic of Moldova), a hot favourite for medicalprofessionals. Other ccTLDs having higher appealing value could be .mr (ofMauritania), .ms (of Montserrat), .my (of Maldives), .tm (of Turkmenistan), .ac(of Ascension Island), .id (of Indonesia), im (of Isle of Man), etc.

Indian (.in)

The Indian ccTLD is .in . Initially, the policy for registration in India was anextremely restrictive on and allowed for a registration only if the application wasa registered commercial entity in India. Owing to demand from several quartersthat the policy be liberalized to incorporate the interests of trademark ownersand foreign corporations, the policy was liberalized.

Following are key points of the liberalized policy:

(a) New categories of the sub-domains such as gen.in , firm.in and ind.in have beenadded.

(b) For a foreign entity seeking to register a domain name in India ,the relevantsub-domains would be co.in , gen.in and firm.in .

(c) The initial co.inrequirement that one has to have a local presence in the formof a branch/liaison office has, to a certain extent, been done away with.

(d) The gen.incategory has been specifically added for foreign corporations whoare unable to meet the stringent requirements added for a co.inregistration.

(e) The earlier requirement stipulating that the name-server should be physicallypresent in India and the domain name applicant should have permanent Internetconnectivity through an Internet Service Provider, located in India has beendispensed with.

For further details, visit http://domain.ncst.ernet.in .



http://www.iana.org/cctld/cctld-whois.htm












31

Importance of Domain Names

The domain name gained importance over the years as business entities realizedthat Internet could be a convenient mode for not only imparting information butalso using it for gaining access to a world-wide market and selling its products.Naturally, a company would prefer its own trade mark to be used as domainname since people recognize the trade mark. So a newspaper like The Economic

Times would prefer www.theeconomictimes.com for the purpose of putting itsdaily version online so that everyone around the world could read it. On theother hand, even the readers would expect that www.theeconomictimes.com

would contain the online version of the daily, The Economic Times rather than,maybe, contain a cartoon feature by some unknown individual or worse, somepornographic material.

The Supreme Court, recently in Satyam Inforway Ltd. v. Sifynet Solutions (P)Ltd., observed as under:

“The original role of a domain name was no doubt to provide anaddress for computers on the Internet. But the Internet hasdeveloped from a mere means of communication to a mode ofcarrying on commercial activity. With the increase of commercialactivity on the Internet, a domain name is also used as a businessidentifier. Therefore, the domain name not only serves as anaddress for Internet communication but also identifies the specificInternet site. In the commercial field, each domain-name ownerprovides information/services which are associated with suchdomain name.”

It was further observed that “a domain name as an address must, of necessity,bepeculiar and unique and where a domain name is used in connected with abusiness, the value of maintaining an exclusive identify becomes critica

Therefore, the importance of a domain name is no less than the trademark itself.If a particular trade name has come to be known in the market to represent aparticular commodity or a particular company, the general guess of people online

would be that the domain name equivalent to such trade name would be used bythe such company. The domain name in the online world, just like the tradename in the offline world, serves to identify the goods/services provided by thecompany.

However, there is one big problem. The process of registration of a domainname is not as stringent as that of registration of a trademark. The system isbased primarily on first-come-first-serve basis. Anyone can approach a Domain

http://www.theeconomictimes.com/








32

Name Registrar and register any available domain name. The Delhi High Courtin Acqua Minerals Limited v. Pramod Borse ( infra ) observed as under:

“So far as theRegistering Authority of the domain name isconcerned it agrees for registration of domain name only to oneperson. That is on first come first serve basis. If any person gets thedomain name registered with the Registering Authority whichhappens to be trade name of some other person, the Registering

Authority has no mechanism to inquire into it to decide whetherthe domain name sought to be registered in is in prior existenceand belongs to another person.”

So, a person just might approach the Registrar and register www.mahindra.com though he does not have the remotest connection with famous Mahindra &Mahindra in Mumbai. Naturally, for Mahindra & Mahindra, it might be wrongfor anyone to register www.mahindra.com. After all, „Mahindra‟ is quite apopular trade mark for its products. It was soon realized that such domain nameshave been registered by unauthorized persons, not only for the purpose of takingadvantage of the goodwill created by the trade mark owners but also, and mostof times, for receiving certain financial gain in exchange of the domain name.

Check www.greatdomains.com for an interesting value-analysis of variousdomain names.

It is also important to realize that in the online world, there can be only one domain name as opposed to the possibility of two or more trademarks co-existing in different working spheres. For example, might be selling garmentsunder the mark „Roughins‟ in India and somebody else might be selling the saproduct under the same mark maybe in New Zealand. One can even have„Roughins‟ registered as trade marks in different countries without affecting other registrations. Leaving apart legal objections, this arrangement is perfectlypossible in the physical world. However, the online world does not permit ofsuch technological arrangement. If one person owns www.roughins.com, registration of the same domain name by another person is not permissible. Onemight register www.roughins.net or www.roughins.org or www.roughins.biz butcannot register www.roughins.com. In such a situation, one might conclude thatthe domain names have a higher degree of importance than the trade mark. Eventhough one might be using the trade mark „Roughins‟ somewhere else in world but it is not affecting one‟s business in India, not much damage is doBut domain name is single. If one registers, another cannot. This predicamenthas lead the trade mark owners to protect their marks online by registering their

http://www.mahindra.com/





http://www.greatdomains.com/


http://www.roughins.com/


http://www.roughins.net/



http://www.roughins.org/



http://www.roughins.biz/















33

domain names. Adding to this problem is the tendency of net surfers to hunt fora particular company‟s website by its trademark itself.

Another indicator of importance of domain names is the availability of a numberof popular domain names in many of the auction/sale web sites. One mightregister a trade mark as a domain name, and then put it up for auction or sale.See for instance http://www.david-carter.com/bid-for.htm , http://www.100domains.com/ , http://www.fastdomainsales.com .

Legal Status of Domain Names in India

The journey of legal protection of domain names in India has been more or lessa favourable one. The Courts in India have been more patient towards theconcept of permitting legal protection to domain names on a status more or lessequal to that of a trademark. There has been a widespread of realization ofimportance of legal protection of domain names among the Indian legal circlesright from its very inception and the Courts have adopted a more progressiveinterpretation. There have been disputes between trademark holders anddomain-name owners or between domain-name owners themselves. The Courts

have uniformly applied the law of passing off to such domain name disputes. Letus look at a few decisions to appreciate this point.

(A) Yahoo Inc. v. Akash Arora, (1999) 19 PTC 201 (Del)

This suit was filed by the plaintiff before the High Court of Delhi seeking adecree of permanent injunction restraining the defendant from operating anybusiness or selling, offering for sale, advertising and in any manner dealing in any

services or goods on the Internet under the domain name„YAHOOINDIA.COM‟.

It was submitted that the plaintiff was the owner of the trademark „Yahoo!‟ adomain name „YAHOO.COMwhich are well-known and have acquireddistinctive reputation and goodwill. It was submitted that a domain nameadopted by the plaintiff is entitled to equal protection against passing off as inthe case of a trademark. The plaintiff contended that that it would not be

http://www.david-carter.com/bid-for.htm


http://www.100domains.com/


http://www.fastdomainsales.com/








34

unusual for someone looking for an authorized „Yahoo!‟ site with India-specificcontent to type in „YAHOOINDIA.COM‟ (which is defendant‟s domain name)and thereby instead of reaching the Internet site of the plaintiff, such person

would reach the Internet site of the defendants. Allegation of cybersquatting wasalso made.

The defendants, on the other hand, averred that the Indian Trade Marks Actrelated only to good and not services and there could not be any action ofpassing off as the services rendered both by the plaintiff and the defendantscannot be said to be goods within the Act. It was also contended that „Yahoo!a general dictionary word. Further, defendants have been using a disclaimer andthus, there were no chances of any deception. The contention that the principleof unwary customer which is applicable in a case of infringement and passing offof the trademark would not be applicable since the Internet users are technically

education and literate persons.It came on record that „YAHOO.COM‟ was registered in plaintiff‟s favour wNetwork Solution Inc since 18 Jan 1995. It also came on record that thetrademark „Yahoo!‟ and its variance are registered or pending registration in 69countries across the globe, India being one of them.

After appreciation of evidence on record and law on the subject, the Court heldas under:

(a) The present is not for an action for infringement of a registered trademarkbut an action for passing off. The principle underlying the act is that no man isentitled to carry on his business in such a way as to lead to believe that he iscarrying on or has any connection with the business carried on by another man.

After referring to decisions in Cardservice International Inc v. McGee (42USPQD 2d 1850 relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), the Court held thatalthough the word „services‟ may not find place in the expression used inSections 27 and 29 of the Trade and Merchandise Marks Act, yet, servicesrendered have come to be recognized for an action of passing off.

(b) There can be no two opinions that the two domain names „ YAHOO.COM ‟and „ YAHOOINDIA.COM ‟ are almost similar except for use of the suffix„India‟ in the latter. When both the domain names are considered, it is crysclear that the two names being almost identical or similar in nature, there is everypossibility of an Internet user being confused and deceived in believing that both



35

the domain names belong to one common source and connection, although thetwo belong to two difference concerns.

(c) On the „literate Internet consumer‟ argument, it was held that the consumermight be an unsophisticated consumer of information and might find his way tothe defendant‟s website providing for similar information thereby creaticonfusion.

(d) The „disclaimer‟ contention was rejected on the ground that the defendanappropriation of plaintiff‟s mark as a domain name and home page addrecannot adequately be remedied by a disclaimer.

(e) Though „Yahoo‟ is a dictionary word, yet, it has acquired uniqueness adistinctiveness and are associated with the business of the concerned companyand such words have come to receive maximum degree of protection by courts.

Ad-interim injunction retraining the defendant from using the domain name„ YAHOOINDIA.COM ‟ till the disposal of the suit was granted.

(B) Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27

The plaintiffs had registered the domain name „REDIFF.COM‟ on 8 Feb 19 with Network Solutions Inc. They are an online media company carrying on thebusiness of communication and providing services through the Internet. It cameto their knowledge in March 1999 that the defendant had registered the domainname „RADIFF.COM‟. An action for passing off was filed.

The plaintiffs contended that RADIFF is deceptively similar to REDIFF and isbeing used by the defendants with a view to pass of their business services as thatof the plaintiffs and to induce members of the public into believing that thedefendants are associated with the plaintiffs. It was also averred that REDIFF iscomprised of the first six letters of their group companies corporate names beingRediffusion Dentsu Young and Rubicam Advertising Limited.

The defendants contested the plaintiff‟s action on the ground that the „look afeel‟ of the plaintiff‟s website is totally different from that of the defenda

website. RADIFF has been coined by taking the first three letters of the word„radical‟, first letter of the word „information‟, first letter of the word „futurefirst letter of the word „free‟. It was also contended that there is no likelihooddeception or confusion between the two domain names.



36

The Court, after referring to Cardservice International Inc v. McGee (42USPQD 2d 1850 relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), Yahoo, Inc. v. Akash

Arora (1999 PTC (19) 201 relating to Yahooindia.com) observed that a domainname is more than an Internet address and is entitled to equal protection as trademark.

The Court found that both the plaintiffs and the defendant have common fieldof activity. They are operating on the website and providing information ofsimilar nature. When both domain names are considered, it is clearly seen thattwo names being almost similar in nature there is every possibility of Internetuser being confused and deceived in believing that both domain names belong toone common source and connection although two belong to different persons.

The explanation of origin of the word „RADIFF‟ given by the defendants wfound to be unsatisfactory and merely an a ttempt to answer the plaintiff‟s claim. The Court held that the defendants had adopted the domain name „RADIFF with the intention to trade on the plaintiff‟s reputation.

Interlocutory injunction was thus granted.

(C) Acqua Minerals Ltd. v. Pramod Borse, 2001 PTC 619 (Del)

This was suit seeking a decree for permanent injunction restraining thedefendants from using the mark BISLERI and directing them to transfer thedomain name BISLERI.COM to the plaintiff.

The plaintiff is the registered proprietor of the trademark BISLERI. The wordhas no dictionary meaning and is an Italian surname. Its reputation grew over theyears as result of enormous consumer confidence and trust in the mineral waterand the mark BISLERI came to be associated exclusively with the plaintiff.Plaintiff applied for registration of domain name BISLERI.COM but found thatthe defendants had already registered the same. It was contended that a person

wanting to know more about their product will type BISLERI.COM but will betaken to the de fendant‟s website which has nothing to do with the plaintiff‟goods. Thus, constitutes a mischief of passing off by the defendants. Theplaintiff referred to Paragraph 4(b)(i&ii) of the UDRP to project the element of„bad faith‟.



37

The question which arose for consideration was whether the domain nameregistred with the Network Solutions, Inc. i.e., the Registering Authority has thesame protection as the trade name or trade mark registered under the Trade andMerchandise Marks Act, 1958.

With the advancement of Internet communication, the domain name hasattained as much legal sanctity as a trade name. After discussing the meaning of„domain, it was held that the same principles and criteria are applicable fproviding protection to the domain name either for action for infringement ifsuch a name is registered under the Trade and Merchandise Marks Act or for apassing off action as are applicable in respect of trade mark or name.

The court also relied upon the „bad faith‟ test under the UDRP. It found thatthedefendants had blocked user of the trade name BISLERI from getting theregistration as a domain name and as such it has affected the trade and name ofthe plaintiff. It was obvious that the domain name „BISLERI‟ was chosen by defendants with mala fideand dishonest intention and as a blocking or squattingtactic.

It was also found that the defendants already had their own domain name,namely, [email protected]. It appeared that the only object of the defendantin adopting BISLERI.COM was to earn huge money for transferring the saiddomain name in the name of the plaintiff knowing it well that they had no righteither of registration of the domain name or of any other domain name which

consisted of the plaintiff‟s mark or copyright name. The suit was thus decreed on ground of bad faith registration.

(D) Dr. Reddy‟s Laboratories Ltd. v. Manu Kosuri, 2001 PTC 859 (Del)

The plaintiff-company is the proprietor of the trademark „DR. REDDY‟S‟. Thdefendants had registered the domain name „DRREDDYSLAB.COM‟. T webpage merely showed the caption „welcome to the future Website drreddyslab.com‟.

A suit was filed by the plaintiff-company praying for a permanent injunctionrestraining the defendants from using the trademark/domain nameDRREDDYSLAB.COM since the same was identical or deceptively similar tothe plaintiff‟s trade mark DR. REDDY‟S.



38

The plaintiff-company was established in 1984 for research and developmentactivity in the field of medicine and over 15 years, grew into a full integratedpharmaceutical organization. It was contended that DR. REDDY‟S is alwayperceived as indicative of the source of the company and the trademark DR.REDDY‟S is a personal name of the plaintiff company‟s founder and its use trademark in relation to pharmaceuticals is completely arbitrary.

The plaintiffs also contended that the defendants are in the business ofregistering domain names in India and their purpose of existence appears to beto block well-known trademark and even names of well-known personalities onthe Internet. Having once registered as domain names, the defendants offer themfor sale for large amounts. The potential for confusion or deception being causedon account of the adoption of the impugned trademark/name by the defendantsand the likelihood of damage to plaintiff‟s company business, goodwill and

reputation by the operation of a website under the impugned domain name bythem is enormous and is aimed at diverting the business of plaintiff companyand to earn easy, illegal and undeserved profit.

The defendants had chosen not to appear and contest.

On the basis of the available materials on record, the Court, after looking into well-settled legal proposition of passing off, and after observing that domainname serves same function as a trademark, held that the two names, DR.REDDY‟S and DRREDDYSLAB.COM being almost identical or similar

nature and there is every possibility of an Internet user being confused anddeceived in believing that both the domain names belong to plaintiff althoughthe two domain names belong to two different concerns.

Order restraining the defendants from using any mark/domain name identical ordeceptively similar to plaintiff‟s trademark DR.REDDY‟S was passed.

(E) Info Edge (India) (P) Ltd. v. Shailesh Gupta, (2001) 24 PTC 355 (Del)

This case was only on an application for an order of injunction under Order 39Rules 1 & 2 of the Code of Civil Procedure.

Plaintiff adopted the domain name „NAUKRI.COM‟ ON 27 Mar 1997. It wcontended that the domain name has assumed distinctiveness as the plaintiff haschosen a Hindi word and use the same in the English script as early as in March1997 in the Internet world, which is dominated by the English domain names.



39

According to the plaintiff, the word NAUKRI has attained a secondary inconnection with its services.

The defendant, on the other hand, was offering similar services throughjobsourceindia.com. However, it also registered NAUKARI.COM in 1999 andused as a hyperlink to jobsourceindia.com Therefore, anyone who typesNAUKARI.com would be lead to jobsoureindia.com. The plaintiff alleged thatNAUKARI.COM was registered in bad faith and to attract web-surfers andinnocent users for diverting the traffic to jobsourceindia.com

In nutshell, plaintiff alleged that: (a) there was passing off of services and goods;(b) defendant‟s domain name was deceptively similar to the plaintiff‟s; (c) thegrave and immense possibility of confusion and deception; (d) defendantdishonesty is clear since jobsourceindia.com and NAUKARI.COM wasregistered two years after the plaintiff registered NAUKRI.COM.

The main line of defence for the defendant was that NAUKRI.COM is genericand hence, incapable of achieving the trademark significance or secondarymeaning. It was further contended that in case NAUKRI.COM has attainedsecondary meaning, same has to be proved.

The Court, after relying on, Yahoo, Inc., Rediff Communication, Acqua Mineraland Dr. Reddy‟s Laboratories reiterated that a domain name is more than aInternet address and is entitled to be equal protection as that of trademark. The

Court also observed that in a matter where services rendered through the domainname in the Internet, a very alert vigil is necessary and a strict view is to be takenfor its easy access and reach by anyone from any corner of the globe.

After considering the material and evidence on record, the Court held that adistinctiveness can be attributed to the domain name of the plaintiff. On thisfinding, the Court rejected the defendant‟s contention that the NAUKRI.COM isa generic and/or descriptive word and hence, incapable of any trademarkprotection.

The Court also observed that the defendant has employed minor mis-spelling ofthe plaintiff‟s mark, although it has another such mark available to it, whichalso a registered domain name. The defendant‟s choice of slightly mis-spelt version of the plaintiff‟s domain name was deliberate in order to suit tbusiness activities of the defendant and for the purpose of diverting traffic of theInternet users to website unrelated to the plaintiff. (This kind to activity is known



40

as „typo-squatting‟. See, for example, the case of Yahoo.com under„Cases under WIPO-UDRP ‟ infra )

The Court also referred to Paragraph 4(b)(iv) of the UDRP to appreciate theargument of „bad faith‟. It held that the website using the domain name, simto that of the plaintiff, for commercial purposes, would lead to an inference thatthe domain name was chosen intentionally to attract Internet users of theplaintiff. This was also established in view of the minor spelling variant to the a

well-known mark, without any explanation and the same definitely creates a prima facieevidence of bad faith within the meaning of Paragraph 4(b)(iv) of UDRP.

A case of temporary injunction was made out and the Court restrained thedefendant from using NAUKARI.COM till the disposal of the suit.

(D) Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432 (Del)

This case involved the following domain names: jrdtata.com, ratantata.com,tatahoneywell.com, tatayodagawa.com, tatateleservices.com, tatassl.com,tatapowerco.com, tatahydro.com, tatawestide.com and tatatimken.com. Theplaintiff averred that the defendants had misappropria ted the plaintiff‟strademark TATA since a part of a series of domain names that had beenregistered by the defendants incorporating the well-known and famoustrademark TATA.

The plaintiff contended that it was the registered proprietor of TATA since 1917in relation to various goods, in various classes. It further had trademarksregistered in nine other countries in various classes. The plaintiff‟s case was tsince its trademark and name TATA was already perceived as a household namedue to the involvement of its companies in almost every form of businessactivity, a business under identical name would attract actual or potentialcustomers‟ attention and induce them to subscribe to the services of thdefendants or to deal in some manner with the defendants operating under thedomain names believing them to be licensed or authorized by the plaintiff to dothe said business.

The defendants did not put in their appearance despite service.









41

The Court, on the basis of the materials on record, found that the plaintiff hasbeen able to prove the averments made in the plaint.

After discussing the decisions in Yahoo, Inc. ( supra ) and Rediff Communications( supra ), it was observed that it is now well settled law that with the advent ofmodern technology particularly that relating to cyberspace, domain name orInternet sites are entitled to protection as a trademark because they are morethan a mere address. The rendering of Internet services is also entitled toprotection in the same way as goods and services are, and trademark law appliesto activities on the Internet.

The suit was decreed was the defendants were restrained from using the abovedomain names.

(G) Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145

This case is the first one from the Apex Court dealing with legal protection ofdomain names and has given seal to the law laid down by the High Courts thatthe domain names are entitled to legal protection equal to that of a trademark.

The main question for the consideration of the Supreme Court was whetherInternet domain names are subject to the legal norms application to otherintellectual properties such as trademarks.

The appellant, which was incorporated in 1995, registered several domain nameslike www.sifynet.com, www.sifymall.com, www.sifyrealestate.com, etc. in June1999 with ICANN. The word „Sify‟ is a coined word which the appellant claito have invented by using elements of its corporate name, Satyam Infoway.

The respondent, on the other hand, started carrying on business of Internetmarketing under the domain names www.siffynet.net and www.siffynet.comfrom June 2001.

After the respondent to refused to transfer the above domain names to thepetitioner, a suit was filed on the basis that the respondent was passing off itsbusiness and services by using the appellant‟s business name and domain nam

An application for temporary injunction was also filed which was allowed by thetrial court but on appeal reversed by the High Court. The plaintiff/appellantpreferred a special leave to appeal before the Supreme Court. Leave was granted.

The respondent contended before the Supreme Court that a domain name couldnot be confused with „property names‟ such as trademarks. According to him



42

domain name is merely an address on the Internet. It was also submitted thatregistration of a domain name with ICANN does not confer any intellectualproperty right; that it was a contract with a registration authority allowingcommunication to reach the owner‟s computer via Internet links and channeledthrough the registration authority‟s server and that it was akin to registration ocompany name which is a unique identifier of a company but of itself confers nointellectual property rights.

After reiterating the principles of passing off, the Supreme Court observed asunder:

“The use of the same or similar domain name may lead to adiversion of users which would result from such users mistakenlyaccessing one domain name instead of another. This may occur ine-commerce with its rapid progress and instant (and theoreticallylimitless) accessibility to users and potential customers andparticularly so in areas of specific overlap. Ordinaryconsumers/users seeking to locate the functions available underone domain name may be confused if they accidentally arrived at adifferent but similar website which offers no such services. Suchusers could well conclude that the first domain-name owner hasmisrepresented it goods or services through its promotionalactivities and the first domain-owner would thereby lose its custom.It is apparent, therefore, that a domain name may have all the

characteristics of a trademark and could found an action forpassing off.”

In view of the decisions of various High Courts, it was held that the domainnames are entitled to legal protection equal to that of a trademark.

The Court also discussed at some length the provisions of UDRP relating toresolution of domain name disputes. It was held that a prior registrant canprotect its domain name against subsequent registrants. Confusing similarity indomain names may be a ground for complaint and similarity is to be decided on

the possibility of deception amongst potential customers. After looking into the evidence, the Supreme Court reached a prima facieconclusion that the appellant had been able to establish the goodwill andreputation claimed by it in connection wit the trade name „Sify‟. Apart fromclose visual similarity between „Sify‟ and „Siffy‟, the Court held that ther



43

phonetic similarity between the two names as well. The addition of „net‟ to „Siffy‟did not detract from this similarity.

The Court was not impressed with the argument was of the defendant that the word „Siffy‟ has been derived from a combination of the first letter of the fpromoters of the respondent, namely, Saleem, Ibrahim, Fazal, Fareed and Yusuf.It was found that the domain name of the respondent already stood registered asin the name of one Mr. C.V.Kumar. Further, „Siffy‟ as an original acronym wbased on the initial letters of the re spondent company‟s promoters seemedunsupported by any evidence.

It was also noticed by the Supreme Court that admittedly, the appellant was theprior used and had the right to debar the respondent from eating into thegoodwill, it may have built up in connection with the name.

A trademark defence of „operating in different fields‟ was taken by trespondent. However, the same was rejected on the ground that a deceptivelysimilar domain name may not only lead to a confusion of the source but thereceipt of unsought-for services. Also, on facts, it was found that both therespondent was, on its website, offering software solution, integrating andmanagement solutions and software development which were similar to servicesprovided by the appellant.

The Supreme Court concluded that in view of finding of prima faciedishonest

adoption of the appellant‟s trade name by the respondent, the investments maby the appellant in connection with the trade name, and the public association ofthe trade name Sify with the appellant, the appellant was entitled to the relief itclaimed.

Practical difficulties with traditional litigation

Although domain name disputes gave rise to a strong line of precedents,approaching a court of law came with it‟s own share of misgivings. Whilelitigation before the courts, the top three problems primarily are: 53[1]

i) The difficulty of detecting the wrong defendants or of serving the defendants;

ii) The risk of the domain name being transferred if the plaintiff gives a cease anddesist letter;

53[1] Shamnad Basheer, Trademark Issues on the Internet: Domain Name Dispute Resolution, LegalDimenstions of Cyberspace, Indian Law Institute, 2004, p. 156



44

iii) Even if one gets an injunction, the possibility that the defendant would obtainregistration of alpha-numeric variations. This makes the enforcement anexpensive affair.

Therefore, traditional litigation has not been accepted as a complete solution todomain name dispute problems.

Dispute Resolution through UDRP – the ICANN policy

Due to practical difficulties faced due in pursuing traditional litigation in differentjurisdictions, The Uniform Domain-Name Dispute Resolution Policy (UDRP)

was introduced and finally approved by ICANN. This was on 24.10.1999. TheUDRP has been adopted by ICANN-accredited registrars in all gTLDs (that is,.com, .org, .net, .pro, .aero, .biz, .coop, .info, .museum, .name). Disputeproceedings arising from alleged abusive registrations of domain names(cybersquatting) may be initiated by a holder of trademark rights. The UDRP is apolicy between the registrar and its customer and is included in the registrationagreement for all ICANN-accredited registrars.

If a trademark holder believes that a domain name registration infringes on itstrademark, it may initiate a proceeding under the UDRP. As indicated above,every registrant of a domain name has to agree to the Dispute Clause of the

Terms and Conditions for the registration of a gTLD domain name. Therefore,once the complainant initiates the proceedings, the registrant must submit to

such proceedings. The UDRP permits complainants to file a case with a resolution service provider,specifying, mainly, the domain name in question, the respondent or holder of thedomain name, the registrar with whom the domain name was registered and thegrounds for the complaint. Such grounds include, as their central criteria, the wayin which the domain name is identical or similar to a trademark to which thecomplainant has rights; why the respondent should be considered as having norights or legitimate interests in respect of the domain name that is the subject ofthe complaint; and why the domain name should be considered as having been

registered and used in bad faith. The respondent is offered the opportunity todefend itself against the allegations. The dispute resolution service provider (e.g.,the WIPO) appoints a panelist who decides whether or not the domain(s) shouldbe transferred.

It is worth noting that Paragraph 3 of the UDRP permits ICANN to cancel,transfer or otherwise make changes to domain name registrations in case they

http://www.icann.org/dndr/udrp/policy.htm






















45

receive an order from a court or arbitral tribunal having competent jurisdictionrequiring such action. Therefore, one may even opt for a traditional litigation, getan order for transfer of domain name and then approach ICANN underParagraph 3 of UDRP for transfer of domain name.

Approved Providers for Domain Name Disputes

As on date, there are a total of four Approved Providers for Domain NameDisputes.

(a) WIPO took the lead in becoming the first approved. This was on 29.11.1999dispute resolution provider.

(b) National Arbitration Forum , closely followed WIPO. It was approved on23.12.1999.

(c) On 22.05.2000, CPR Institution for Dispute Resolution became the fourthapproved service provider.

(d) >From 28.02.2002, the final approved service provider so far, Asian DomainNames Dispute Resolution Centre began accepting proceedings.

It is relevant to note that Disputes.org/eResolution consortium-DeC hadbecame an approved service provider on 01.01.2000. However, it ceased toaccept any proceedings from 30.11.2001.

Statistics under WIPO-UDRP

The Statistics on WIPO‟s UDRP domain name cases reflect the mammoth task we have taken at hand. And remember, this is just the tip of iceberg. For thereare very many disputes which are not brought to the notice of any of the domainname dispute providers. The WIPO statistics (as on 28.08.2004) relating toGeographical Distribution of Parties cumulative : gTLDs gives us the domicile ofthe complainant and respondent. The statistics in itself gives an interestingrevelation. Note, for example, Republic of Korea: there are only 27 complainants

whereas a whooping 333 respondents! One might conclude that either there arejust too many coincidences that the people there have registered such domainnames which should have been genuinely registered by someone else. Or maybe,cybersquatting is a popular way of making money. Same conclusion might bereached for Russia. On the other hand, Switzerland seems to have been more ofa victim of cybersquatting – 209 complainants as against 53 respondents.

http://www.icann.org/dndr/udrp/approved-providers.htm



http://arbiter.wipo.int/domains/statistics/cumulative/countries.html



http://www.arbforum.org/domains/


http://www.cpradr.org/ICANN_Menu.htm


http://www.adndrc.org/




http://arbiter.wipo.int/domains/statistics/index.html
















46

Statistics pertaining to case filing (from 1999 to 2004) indicate a very queer trend.One might expect an increase in filing of cases under UDRP. On the contrary,there has been a gradual decline from 2000 onwards in filing of gTLD cases. Onthe other hand, most of the decisions being taken by a UDRP panelist is transferof the domain name. Statistics indicates that the level of cybersquatting and „badfaith‟ registration has been high. As many as 3,971 domain names have betransferred till date.

Search cases through cases numbers or through the Index of WIPO UDRPPanel decisions.

Cases under WIPO-UDRP

As the statistics indicated above, there are a large number of domain namedisputes which are resolved annually through the ICANN-approved disputeresolution providers. In fact, all the decisions under World Intellectual PropertyOrganisation (WIPO) has been catergorised on the basis of usage of the domainname as also in accordance with the legal point. A mere look into the categories gives an insight as to the importance of a domain name. For example, domainsmay relate to association and institutions (be it religious or sports) or individualslike authors, media, music, film, or industry and commerce or education orpublic sector.

Let us study a few decisions rendered under UDRP:

(A) Worldwrestlingfederation.com , World Wrestling Federation Entertainment, Inc.v. Michael Bosman , decided on 18 Jan 2000 [Click Case No. D99-0001 for text ofthe complete Decision]

This was the first case conducted under the UDRP. The proceedings wereinitiated on 09.12.1999. The respondent registered the domain name<worldwrestlingfederation.com> for a term of two years from October 7, 1999.

The complainant provided evidence of registration of the following marks:

1. Service Mark - WORLD WRESTLING FEDERATION, registered for a termof 20 years from January 29, 1985, with the United States Patent and TrademarkOffice;

http://arbiter.wipo.int/domains/statistics/cumulative/results.html






http://arbiter.wipo.int/domains/search/index.html


http://arbiter.wipo.int/cgi-bin/domains/search/legalindex?lang=eng



http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarksICANN%20approved%20dispute%20resolution%20Providers.htm






http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html














47

2. Trademark - WORLD WRESTLING FEDERATION, registered for a termof 20 years from November 7, 1989, with the United States Patent and

Trademark Office.

The respondent had registered the domain name and within three days, offeredthe same for sale. The complainant contends that respondent has registered as adomain name a mark which is identical to the service mark and trademarkregistered and used by complainant, that respondent has no rights or legitimateinterests in respect to the domain name at issue, and that respondent hasregistered and is using the domain name at issue in bad faith. The respondent didnot contest the allegations of the complaint.

It was found that because respondent offered to sell the domain name tocomplainant “for valuable consideration in excess of” any out-of-pocket costsdirectly related to the domain name, respondent has “used” the domain name bad faith as required under Paragraph 4, b, i of the UDRP. Therefore, pursuantto Paragraph 4,i of the UDRP, the Panel required that the registration of thedomain name <worldwrestlingfederation.com> be transferred to thecomplainant.

(B) Backstreetboys.com , Backstreet Productions, Inc. v. John Zuccarini , decided on24 Aug 2001 [Click Case No. D2001-0654 for text of the complete Decision]

The domain names in dispute were backsreetboys.com, backsteetboys.com,backstreeboys.com, backstreetboyspics.com, backstreetboyspictures.com,backstreetboyz.com, backstreetsboys.com, backstretboys.com,backtreetboys.com, bacstreetboys.com and bakstreetboys.com.

The Backstreet Boys are well-known pop singers. The Backstreet Boys havelicensed a wide range of products bearing their trademark, including posters,

watches, backpacks, musical products, live concert photos, etc., which areprojected to result in over twenty million dollars in revenue. The Backstreet Boysoperate a website at “http://www.backstreetboys.com”.

Respondent has never been licensed by Complainant to use the Backstreet Boystrademark. Respondent does not offer any goods or services through the

websites he established with these domain names. Rather, upon enteringRespondent‟s sites, Internet users are diverted to a number of windowsdisplaying advertisements, and must click on each of the windows before exiting.

http://e/Documents/Silla%20Sir/TRADE%20MARK/Documents%20and%20SettingsvershaDesktopvershipr%20onlineonline%20coursetrademarksWIPO%20-%20UDRP%20-%20backstreetboys.com%20(Summary).htm









48

It was found that the domain names are „virtually identical and confusingly similar ‟ tothe trademark, respondent‟s use of the domain names do not give him alegitimate interest in the domain names, and respondent did register and use thedomain names at issue in bad faith. Having concluded that all the requirementsof Para. 4(a) of the UDRP have been fulfilled, the Panel, pursuant to paragraph4(i) of the UDRP, concluded that the registration of the domain names at issue

was to be transferred to the Complainant.

(C) Bahaiwomen.com, National Spiritual Assembly of the Bahá‟ís v. BuyThis Name , decided on 18 Dec 2001 [Click Case No. D2001-1302 for text ofthe complete Decision]

The Complainant is the registered owner of the trademarks BAHÁ‟Í, BAHÁand design and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁ‟ÍS OF THE UNITED STATES. All three trademarks are registered in the UnitedStates of America. The date of first use of the trademark BAHÁ‟Í is given1900.

On May 27, 2001, the Respondent registered the disputed domain name. TheComplainant states that some time shortly thereafter, the Respondent beganoperating a pornographic website at the site <bahaiwomen.com>. The site alsooperates as a portal to other pornographic websites.

The site <bahaiwomen.com> also contains a link entitled "Click Here to Buythis Domain Name". Users clicking on that link are transported to a page on

which they can make an offer to purchase the disputed domain name.

After looking into evidence and averments, the Panel found that:

(a) The domain name <bahaiwomen.com> is confusingly similar to thetrademark BAHÁ‟Í, in which the Complainant has rights;

(b) There is no evidence to demonstrate that the Respondent has a legitimateright or interest in the disputed domain name;

(c) Since the domain name was a well-known trademark and the domain name isbeing used in connection with a pornographic site, the domain name has beenregistered and is being used in bad faith.







49

Pursuant to paragraph 4(i) of the Policy, the Panel required that the registrationof the domain name <bahaiwomen.com> be transferred to the Complainant.

(D) Calvinklein-watches.com, Calvin Klein, Inc. & Calvin Klein TrademarkTrust v. Rhythm , decided on 28 Dec 2001 [Click Case No. D2001-1295 fortext of the complete Decision]

The Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc.(hereinafter "Complainant"), are respectively the record owner and the beneficialowner of the CALVIN KLEIN trademarks (referred to hereinafter as the"CALVIN KLEIN Marks"). The Complainant is involved in the apparelbusiness and designs, manufactures, markets and sells merchandise for men,

women and children including watches, shoes, accessories, underwear, jeans,cosmetics, home furnishings, sweatshirts and many other apparel items. In June1997, the Complainant registered the domain name <calvinklein.com> withNetwork Solutions, Inc.

The Domain Name was registered in August 2000, three years after theregistration of Complainant's <calvinklein.com> domain name and over 13 yearsafter Complainant began using the CALVIN KLEIN Marks.

Based on the evidence and contentions, the Panel found that the Domain Name

is confusingly similar to the CALVIN KLEIN Marks and the <calvinklein.com>domain name in which Complainant has rights.

The Panel agreed with the contentions of the Complainant that the Respondenthad no rights or legitimate interests in the Domain Name. The Respondent hadan opportunity to demonstrate such rights or legitimate interests but did not doso.

The Panel found that the Domain Name was registered and is being used in badfaith.

The Panel therefore directed that the Domain Name be transferred to theComplainant.







50

(E) Juliaroberts.com, Julia Fiona Roberts v. Russell Boyd , decided on 29May 2000 [Click Case No. D2000-0210 for text of the complete Decision]

The Complainant, Julia Fiona Roberts, is a famous motion picture actress. Shehas appeared in such movies as Erin Brockovich, Notting Hill, Runaway Bride,Stepmom, My Best Friend‟s Wedding, Conspiracy Theory, Everyone Says I L

You, Mary Reilly, Michael Collins, Something to Talk About, I Love Trouble,Ready to Wear, The Pelican Brief, The Player, Dying Young, Hook, Sleeping

With the Enemy, Flatliners, Pretty Woman, and more. A partial filmography forthe Complainant is found at Yahoo! Movies . The Complainant is widely featuredin celebrity publications, movie reviews, and entertainment publications andtelevision shows, and she has earned two Academy Award nominations.

Respondent registered the subject domain name on November 9, 1998. As of

March 24, 2000, the website www.juliaroberts.com featured a photograph of a woman named „Sari Locker‟. The Respondent has placed the domain namefor auction on the commercial auction website, "eBay," specifically athttp://cgi.ebay.com/aw-cgi/eBayISAPI.dll?ViewItem&item=285891617.

The Respondent had also registered over fifty (50) other domain names,including names incorporating other movie stars names within<madeleinestowe.com> and <alpacino.com> and a famous Russian gymnastname within <elenaprodunova.com>. Respondent listed his email address [email protected]. Respondent was offered US$2,550 in the eBay auction

for the domain name registration.

Complainant contended that Para. 4(a) of the UDRP is clearly attracted in thepresent case. Respondent did not contest that the domain name<juliaroberts.com> is identical with and confusingly similar to Complainant‟name. However, the Respondent did contest whether Complainant has commonlaw trademark rights in her name.

The Panel found that common law trademark rights could exist in an authorname. The other requirements of paragraph 4(a) of the UDRP were also foundto be existing in the present case: (a) the domain name is identical thecomplainant‟s name; (b) Respondent had no rights or legitimate interest in tdomain name; and, (c) Respondent had registered and used the domain name<juliaroberts.com> in bad faith since he had not only registered other domainnames including several famous movie and sports stars, he had also placed thedomain name up for auction on the commercial website eBay.







51

The domain name <juliaroberts.com> was ordered to be transferred toComplainant Julia Fiona Roberts.

(F) Mahindra.com, M/s Mahindra & Mahindra Ltd. v. NeoplanetSolutions , decided on 7 Jun 2000 [Click Case No. D2000 – 0248 for the textof complete Decision]

The Complainant is a well-known manufacturer and exporter of tractors andutility vehicles. Apart from the Complainant itself, 35 Group Companies include"Mahindra" in their names. By reason of the extensive use of the Trade Marksand the name Mahindra in the various Group Companies, the wordMAHINDRA, at least in relation to motor vehicles, is associated exclusively withthe Complainant.

The Complainant became aware of the existence of the domain name registrationin issue at a date prior to December 13, 1999. Prior to the attorneys‟ letter December 13, 1999, they had asked their associates in Vijaywada to approachNetwork Solutions informally to enquire about its registration of the domainname. The associates were (it is said) informed that Network Solutions was

willing to transfer the domain name for the sum of Rs. 15,000 (about US $1,500),but Network Solutions "did not reproduce the demand in writing".

It w as found by the Panel that the Respondent‟s domain name "mahindra.com was identical to the trademark "MAHINDRA", the Respondent had no rights orlegitimate reason for adopting the word "mahindra" as a domain name and thedomain name "mahindra.com" was registered and being used in bad faith.

Since the elements of paragraph 4(a) of UDRP were proved, the Panelist orderedthat the domain name "mahindra.com" be transferred to Mahindra & Mahindra.

(G) Tata.org , Tata Sons Ltd. v. The Advance Information Technology Association , decided on 10 Apr 2000 [Click Case No. D2000-0049 for text ofcomplete Decision]

In this case, the Complainant was an Indian company existing under Indian laws.It was the principal investment holding company of the Tata Group ofCompanies whose turnover was more than US$9 Billion. The word “TATA” wthe trade mark, corporate name, house mark of the complainant and its Groupcompanies. The Complainant and its Group companies had interests in a diverse













52

field of activities including Automobiles, Energy, Chemicals & Pharmaceuticals,Consumer Products, Publishing, Metal, Information Technology &Communications, Finance etc.

The Respondent was the registrant of the domain name <tata.org> with NSI butdid get the website activated.

It was contended that potential customers would be induced to subscribe to theservices of the impugned web site or to deal in some matter with theRespondent/third party believing them to be licensed or authorised by theComplainant.

Since the website was not activated even though it was registered almost threeyears earlier, it was found that the respondent is merely „hoarding‟ the said

domain name. It was further observed that even if a website under the saiddomain name had been activated, in the facts and circumstances of the case, it would still constitute dishonest adoption and misappropriation.

It was also brought on record that the Complainant had successfully obtainedorders from Courts in India in relation to domain names wherein Courts havegranted orders of injunction against the defendants therein from using thedomain names <tatagroup.com>, <bodacious-tatas.com>, <jrdtata.com>,<ratantata.com>, <tatahoneywell.com>, <tatateleservices.com>,<tatahydro.com>, <tatawestside.com>, <tatatimken.com>. Though these

disputes were still pending at the time the present Decision was rendered, it wasobserved that they were prima facie evidence of the recognition of theComplainant's rights in the TATA name/mark.

It was thus found by the Panel that:

(a) the Respondent's domain name <tata.org> was identical to the trade mark TATA in which the Complainant had rights;

(b) the Respondent had no legitimate interest in the domain name <tata.org>;

(c) the registration of the domain name "tata.org" was a "Bad Faith registration".

The Panel decided that that the Respondent's domain name "tata-org" should betransferred to the Complainant.



53

(H) Theeconomictimes.com/thetimesofindia.com , Bennett Coleman & Co.Ltd. v. Steven S. Lalwani , decided on 15 Mar 2000 [Click Cases No. D2000-0014 and 2000-0015 for the text of complete Decision]

The Complainant published "The Economic Times", which had an average dailycirculation of 350,100, and "The Times of India", which had a daily circulation of2,522,488. Both included Indian news in their content. The Complainant wasengaging in certain supplemental activities in the entertainment industry, usingthe brand "Times". Since 1996 the Complainant had held the domain names,economictimes.comand timesofindia.com , using them for the electronic publication oftheir respective newspapers. The Complainant registered in India the mark, "TheEconomic Times" for newspapers, journals, magazines, books and other literary

works on March 28, 1973, and the mark, "The Times of India" for the samegoods on July 30, 1943.

The Respondent‟s web sites using the disputed domain names in contentioredirected Internet users to the site indiaheadlines.com which provided India-relatednews and articles.

The respondent has specifically contended that the trademark of the complainant was allowed to lapse since 1980. It was held that whether Complainant‟s Indtrademarks were any longer registered does not matter, since they had a very

substantial reputation in their newspaper titles arising from their daily use inhard-copy and electronic publication.

It was found by the Panel that:

(i) the Respondents adopted in their domain names the identical marks in whichthe Complainant has rights,

(ii) that the Respondents had no rights or legitimate interests in respect of thedomain names; and

(iii) that their registration and use of the domain names is in bad faith in thesense that their use amounted to an attempt intentionally to attract, forcommercial gain, Internet users to their web sites by creating a likelihood ofconfusion with the Complainant‟s marks as to the source, sponsorship, affiliator endorsement of those web sites and the services on them.









54

Both the domain names were decided to be transferred to the Complainant.

(I) Yahoo.com , Yahoo! Inc. v. Victor Majevski a/k/a Marec Polanski &Ors. , decided on 20 Sep 2002 [Click Case No. D2002-0694 for the text ofcomplete Decision]

The domain names involved in this case were: financeyahoo.com,gamesyahoo.com, greetingsyahoo.com, playyahoo.com, wwwyahoochat.com,yahooauction.com, yahoohomepage.com and yahoolians.com.

The Complainant, Yahoo! is a global Internet communications, media, andcommerce company that delivers a branded network of comprehensivesearching, directory, information, communication, shopping services and other

online activities and features to millions of Internet users daily. Yahoo! is theowner of the service marks and trademarks YAHOO!, as well as the trade name YAHOO! and the domain names <yahoo.com> and <yahooligans.com>.

It was, inter alia , contended by the Complainant that the respondent‟s registrationand use of the domain names met the „bad faith‟ element set out in Paragra4(a)(iii) of the UDRP and clearly constitute „typosquatting‟, namely, thmisspelling or punctuation/letter omission of another‟s name in order to diveInternet traffic via Internet users‟ typographical errors.

The respondent did not file any submissions before the Panel.

The Panel supported the Complainant‟s argument that the very nature of th Yahoo name (i.e. its arbitrary nature) makes it unlikely that the Respondent hadnot realized that its names could be other than confusingly similar to those of theComplainant. It further found that the Respondent used the Domain Names tointentionally attract, for commercial gain, Internet users to its affiliated websitesby creating a likelihood of confusion with Complainant‟s YAHOO! An

YAHOOLIGANS! marks as to the source, sponsorship, affiliation andendorsement of Respondent‟s affiliated websites and/or the goods and servicoffered on those websites.

Panel found the three elements that is confusing similarity with the mark of thecomplainant, lack of respondent‟s legitimate interest and bad faith, as set out inparagraph 4(a) of the UDRP present and therefore, directed that the domainnames in dispute be transferred to the Complainant.







55

Dispute Resolution of Indian ccTLDs

The Administration of Domain Names within the .in (Indian) category is lookedafter by the Center for Development of Advance Computing , Mumbai (C-DAC)(formerly National Center for Software Technology).

For the purpose of resolution of domain name disputes in the .in category,NCST does not subscribe to UDRP. Rather, it has its own policy Indian InternetDomain Name Dispute Resolution Policy . Paragraph 5 of the said Policy empowers the Domain Registrar to cancel, transfer or otherwise make changesto Domain Name registrations. Following circumstances are subscribed formaking such changes:

1. On receipt of written or appropriate electronic instructions from theapplicant/assignee or his authorized agent.

2. On any direction/orders from a court of law or arbitral tribunal having itscompetent jurisdiction, requiring such action.

3. On receipt of a decision of Internet Management Group (IMG) requiring suchaction as above.

According to Paragraph 7 of the Policy , a domain name dispute may arise under

the following conditions:

(1) The domain name is identical or confusingly similar to a trademark or servicemark in which the complainant has a rightful claim.

(2) The registrant has no rights or legitimate interests in respect of the domainname.

(3) The registrant has sold/auctioned/transferred the domain name to a thirdpart without taking approval of the Domain Registrar.

(4) The domain name has not been used by the registrant for over on year.

(5) A complaint of cyber squatting has been received.

(6) Any other dispute, accepted by the Domain Registrar in his own discretion.




http://www.ncst.ernet.in/



http://domain.ncst.ernet.in/disputepolicy.php

















56

A registrant shall be given 15 days prior notice to present his case. An oralhearing may be granted. The Domain Registrar shall given his decision in writing.

An appeal lies to the Internet Management Group, and thereafter, before anycourt in Mumbai.

META-TAGS

When we deal with trademarks infringements on the Internet, another area ofconsiderable concern is the use of meta- tags in one‟s own website. The HTMLcode used to create a web site has a keyword field . These keywords are known as“Meta-tags” since the HTML code uses the tag “META” to indicate the keyworfield. These meta-tags are not visible to the user looking at the site. However,these meta-tags/keywords are essential indicators the search engines. They look

for these keywords when searching for a particular website. We should make clear the difference between an Internet Directory and anInternet search engine. Former is more or less like a Yellow Pages directory withall the entries available under specific categories. One has to merely click at thecategories and sub-categories and locate the entry. On the other hand, a searchengine is like a „text-search‟ facility that search through the Internet contents forreturning the results on the basis of certain keywords given by the user. Searchengines in turn build up their databases/indexer by using web spiders/robots

who scan the Internet for new content and dump in a database for future use.

The robots, in turn, for the purpose of building the indexer, look for meta-tags ina webpage‟s HTML code. Since meta-tags are essential for identification of a website, it plays an important role for any entity wanting consumers to reach its website. For example, X company, selling watches, might put words like „watch‟,„wrist watch‟, „hand made‟, „time‟, „time pieces‟, etc. as keywords/meta-tags sothat a search engine can pick these up and while answering to a query for these

words, returns the website of the X company.

Now, if someone is hunting for a particular trade name on the Internet via asearch engine, the search engine would look into the meta-tags of the websiteand return the results. However, the problem arises when one inserts atrademark/name of a particular company to trick the search engine in displayinga particular website as containing that particular trademark/name andinducing/diverting the consumer to that particular website. Legal problems arise

when one is using another trademark/name as a meta-tag in his website withoutany authorization. This raises the legal issue of „initial interest confusion‟. example, X company inserts in the meta-tags of its website, the trademark of a



57

competitor, Y company, so that anybody searching for Y company through asearch engine will also, in the result to the query, get the website of X company.

The consumer might click on the address of X company and once taken to the website, though there is no confusion as to the source, still, as the Courts haveput it, it does amount to „initial interest confusion‟. The consumer after reachinX company might be inclined to review the products of X company and mightbe induced to buy them. In such situations, Y company suffers from the risk ofloosing potential consumers due to use of its trademark by X company as meta-tags in its website.

A word about „initial interest confusion‟ would be apt at present. Let us take example, that you like Pizza Hut. You are on the move and find a sign saying„Pizza Hut 1 km. on the left‟. Youtake a left, and after a kilometer, find PizzaCorner rather than Pizza Hut. Though are you know Pizza Corner is different

from Pizza Hut and though you prefer Pizza Hut, yet, since you have alreadytaken the trouble of taking a left and coming a kilometer, you might want toenter Pizza Corner, look at menu and check „just in case‟ you like somethinga bite. This is what is known as the „initial interest confusion‟. Meta-tags areresponsible for creating just this kind of „initial interest confusion‟ so that anInternet user once he reaches a particular website, though knows well that it wasnot this website he was looking for, yet might stay around for a while and checkthe contents of the website.

Let us look into a few cases:

(A) Playboy Enterprises, Inc. v. Calvin Designer Label [985 F. Supp. 1218 (N.D.Cal. 1997) (temporary restraining order issued), 985 F. Supp. 1220 (N.D. Cal.1997) (preliminary injunction granted), 1999 WL 329058 (N.D. Cal. 1999)(summary judgment entered for plaintiff)]

Calvin Designer had two adult websites, namely, www.playboyxxx.com and www.playmatelive.com. It used „Playboy‟, „Playmate‟ and „Playboy Magazmeta-tags in its website to cash on the reputation and goodwill Playboy. Playboyalleged infringement of trademark which was agreed by the District Court andpermanent injunction was granted enjoining Calvin from using Playboytrademarks as domain names or meta-tags.

(B) Playboy Enterprises, Inc. v. Asiafocus International, Inc., [1998 WL 724000at *2. (E.D. Va. 1998)]



58

In an action against the defendant for trademark infringement, the Court foundthat the defendants had purposefully embedded Playboy‟s trademarks „playband „playmate‟ within its computer source code „which is visible to search enthat look for web sites containing specific words or phrases specified by thecomputer user‟. Therefore, once a querry for „playmate‟ is made, the seaengine returns a number of websites including that of Asiafocus. The Courtconcluded that consumers would be mislead into believing that the website ofthe defendant is in someway connected to or sponsored by the Playboy. TheCourt found against the defendant.

(C) Playboy Enterprises, Inc. v. Global Site Designs, Inc., [1999 WL 311707 at *1(S.D. Fla. 1999)]

In this case, Global Site Designs registered two domain names that incorporatedPlayboy‟s trademarks, www.playmatesearch.net and www.playboyonline.net. The words „playboyonline‟ was also used in the meta-tags of the website. The Courtfound infringement of trade mark and restrained the defendant from using theplaintiff‟s trademarks, Playboy and Playmate, as meta-tags or as part of a domainname.

(D) SNA, Inc. v. Array, [51 F. Supp. 2d 554 (E.D. Pa. 1999)]

The defendant‟s were using the plaintiff‟s trademark as meta-tags. A block of textrepeating the words, “seawind,” “SEAWIND,” “Seawind” was inserted. It wobserved that it does not matter what the domain name is. The fact that thetrademark was used as meta-tags was enough to confuse Internet users andhence, the defendants were restrained from using the plaintiff‟s trademarks meta-tags.

(E) Niton Corp.v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d. 102 (D.Mass. 1998)

In this case, the defendant not only used all trademarks of the plaintiff as meta-tags but also literally copied all of the meta-tags that plaintiff had used to designits own website. The Court came to the conclusion that the act of the defendant

would probably lead an Internet consumer to believe that the defendant is insomeway either connected to or sponsored by the plaintiff. Injunction wasgranted.



59

(F) Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174F.3d 1036 (9th Cir. 1999)

In what is considered as the first decision by a federal appellate court, thedefendant used the word, MOVIEBUFF, as meta-tags which the plaintiffclaimed to be its trademark. The Court held that consumers on the look out ofplaintiff‟s goods might be diverted to the website of the defendant due to use MOVIEBUFF as meta-tag which would influence the search engine results.

The Court held that using a competitor's trademarks in meta-tags causes initialinterest confusion which is a form of trademark infringement. The plaintiffowned the trademark MOVIEBUFF whereas the defendant used it as a meta-tag.Searching the said word returned links to both parties‟ websites. The couexplained that when a user clicked on the link to West Coast's web site, there is

no confusion regarding the source of the products (because consumers knowthey are patronizing West Coast's web site and not Brookfield's web site), butthere is initial interest confusion because West Coast used the trademark MovieBuffto capture initial consumer attention and divert people to its web site and WestCoast „improperly benefit[ed] from the goodwill that Brookfield developed inmark‟.

It is always advisable that one should insert words and expressions as meta-tagsin their websites with caution and restraint, specially when one is not sure

w hether it might infringe somebody else‟s trademark. It has observed time aagain by the Indian Courts that, where services rendered through the domainname in the Internet, a very alert vigil is necessary and a strict viewis to be takenfor its easy access and reach by anyone from any corner of the globe. The threatof meta-tags is a larger one when one recalls that there can be trademarkinfringement even thought the domain name used does not even remotelyinfringes anybody‟s trademark. Maybe, for this reason, this kind of trademarkinfringement has also been termed as „invisible trademark infringement‟.

FRAMING AND LINKING

Linking

Z launches a website of news items. However, instead of putting his owncollection of news items, he puts the links of a few leading newspapers like The

Times of India, The Economic Times, The Hindustan Times, The Hindu, TheStatesman, etc. If the Internet user clicks on one of the icons, it takes the user tothe website of the particular newspaper. Sounds fair enough! It actually facilitates



60

the user in navigating through the Internet with considerable ease. In most cases,linking is welcome. For example, enter www.yahoo.com and you would notice a

whole range of advertisements towards the top. Those are nothing but links toanother website.

Before we look into the problem, we shall also understand how one can increaserevenues through advertisements on a website. An advertiser/companiy chooses

where to advertise on the Internet by checking the number of „hits‟ on a website,that is, how many people have accessed/visited the website. When we say„accessed‟, we mean accessing the homepage/main webpage. The more there„hits‟ on www.yahoo.com, the more advertisers/companies are attracted toadvertise there. A problem would arise if another website would permitsomebody to skip the homepage of a website (which contains theadvertisements) by deep linking into the site. This would not be counted as a „hit‟

for that website and as more and more deep linking would happen, the numberof „hits‟ would decrease.

Let us get back to Z who is offering news items by permitting linking to differentnewspapers websites. Suppose Z is offering search facilities as well so that onecan indicate what kind of news items he is looking for. For instance, you type in„cricket‟ and Z permits you deep linking into cricket section of The TimesIndia. In this process, the main webpage of The Time of India has been skipped

which is a loss for the newspaper. In law, these are more of copyright and unfaircompetition issues. However, to a certain extent, there might be trademark

infringement as well. If the Z‟s website in any way indicates that he might han association with The Times of India or might be directly sponsored by The Times of India, he might be hauled up for trademark infringement. It dependsupon whether Z is using the logo of The Times of India or anything else so as toindicate an association. It is worth noting that deep linking into a website mightbe a stronger indication of association and hence, trademark infringement, thansimple linking to the homepage of a website. Though, it is quite unlikely that theInternet user would think that there is any association, yet one has to be on theoutlook of trademark infringement through linking.

Framing

One can have a stronger case of trademark infringement on ground of framingrather than linking. Z launches a website of news items. However, instead ofputting his own collection of news items, he puts the links of a few leadingnewspapers like The Times of India, The Economic Times, The Hindustan

http://www.yahoo.com/









61

Times, The Hindu, The Statesman, etc. If the Internet user clicks on one of theicons, instead of taking him to the website of that particular newspaper, thecontents of that newspaper‟s wesbite is dragged onto the main webpage of tZ‟s wesbite itself so that the user need not move anywhere else. The problemthat such contents are framed within the webpage of Z cutting off thenewspaper‟s advertisements and showing the advertisements of Z only. This kof activity is known as framing.

Again framing is more of an unfair competition issue. The companies might getupset due to loss of revenue through advertisements. Also, copyright issues areinvolved since the contents, user is browsing through on a website has actuallyhas pulled from some other website though the user might not be even aware ofit. There are also chances of trademark infringement which strongly dependsupon the way the contents are framed. Generally, the framing site‟s web addr

is on display which will confuse the users as to the origin/source of the contents.On February 20, 1997, a number of newspapers and periodicals filed suit in theSouthern District of New York against Total News, Inc., framing of news. TotalNews is characterized in the suit as a “parasite Web site” with little or nsubstantive content, but with considerable on-screen advertising of itself and theproducts and services of its advertisers. The user sees a menu consisting of third-party trademarks (Fox News, MSNBC), the Total News trademark and URL, andsome content from the framed site. The site apparently also contains anadvertisement from the Total News advertiser, AT&T, with the opportunity to

„click here‟ and get more advertising content from the AT&T Web site or oth Total News Web pages. The complaint alleges misappropriation, trademarkdilution and infringement, „willful copyright violation‟ and other tortious asuch as false advertising. In a single sentence, the plaintiffs challenge the TotalNews practice: „Defendants have designed a parasite Web site that republishthe news and editorial content of others' Web sites in order to attract bothadvertisers and users.‟ The case was ultimately settled on the basis that ToNews, Inc. would not use framing and use only simple linking without use oflogos, etc. of the linking website. (See Mary M. Luria,Controlling Web Advertising:Spamming, Linking, Framing, And Privacy , The Computer Lawyer, Vol. 14, No. 11;Pg. 10, November, 1997)

EXTRAS:1. ICANN Glossary 2. WIPO‟s Frequently Asked Questions ( FAQ ) 3. ICANN‟s Internationalised Domain Name (IDN)

http://www.icann.org/general/glossary.htm



http://arbiter.wipo.int/center/faq/domains.html



http://www.icann.org/topics/idn.html








62



63

Geographical IndicationsContents

1) Part I: Background and Definition

2) Part II: Conditions, Procedure and Duration of Registration

3) Part III: Effect of Registration

4) Part IV: Offences, Penalty and Procedure for Seeking Relief

5) Websites

6) References

Part I: Background and Definition

Introduction The Geographical Indications of Goods Registration and Protection Act, 1999,(the „Act‟) which was recently enforced in India provides a statutory mechanismfor registration and protection of Geographical Indications (GIs) for the firsttime in India. GIs as a form of intellectual property has now been subject matterof debate at international level, the basic reason being the value addition it givesto a product and therefore the importance of GIs as valuable commercial assets.

The basic function of a GI is to protect the goodwill of a producer or a sectionof producers and imparting consumer information.

We all know products like „Bikaneri Bhujia‟, „Alphonso Mango‟, „Kolhchappal‟, „Darjeeling Tea‟, „Champagne‟, „Havana‟, „Tequila‟, „Scotch „Bordeaux‟, „Burgogne‟, „Irish Whisky‟, „Porto‟, „Cognac‟, „Sherry‟, „C„Gouda‟ and many others. Often we purchase these products simply for thqualitative properties attributing the same to their geographical origin. Not just

http://www.patentoffice.nic.in/ipr/gi/gi_act.PDF







64

today but from ancient times every region had its claim to fame for its productsfor example Arabia for horses, China for its silk, Dhaka for its muslin, Venice forglass, India for its spices and many others, painstakingly developed and handedover from one generation to the next for centuries. Gradually a specific linkbetween the goods and the region/place evolves resulting in growth of what weterm as today in legal sense (a part of the intellectual property laws bouquet) as“Geographical Indication‟.

Intellectual properties are intangible assets that are developed over a period oftime and involve considerable investment and GIs are no different and thereforelaws national or international are harmonizing and tightening the protectionregime. GIs as a form of intellectual property have been accorded protection inthe now universally accepted Agreement on Trade – Related Aspects ofIntellectual Property Rights popularly known as the TRIPS Agreement. Many

countries like India, Singapore, Thailand, Trinidad, the European Union throughits Council Regulations and others have enacted specific enactments to protectGIs.

Our discussion herein will basically revolve around the new Indian Act on thesubject. We shall start with understanding the definition and concept of GIstouching in Part I, then look in to the procedure and duration of registration inPart II. In Part III we shall discuss the effects of registration of a GI and finallyin Part IV discuss the remedies and reliefs as enumerated in the Act forinfringement of GIs and any offences committed with respect to a GI.

Definition According to Section 2(e) of the Act “geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, ormanufactured in the territory of a country, or a region or locality in thatterritory, where a given quality, reputation or other characteristic of such

goods is essentially attributable to its geographical origin and in casewhere such goods are manufactured goods one of the activities of eitherthe production or of processing or preparation of the goods concernedtakes place in such territory, region or locality, as the case may be.Explanation: - For the purposes of this clause, any name which is not thename of a country, region or locality of that country shall also beconsidered as the geographical indication if it relates to a specificgeographical area and is used upon or in relation to particular goodsoriginating from that country, region or locality, as the case may be;” ( http://www.patentoffice.nic.in/ipr/gi/gi_act.PDF )

http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm









65

Therefore in general to qualify for protection an indication must:

A. Identify the good and its area of geographical origin.B. Possess a given quality, reputation or other characteristics whichC. Is essentially attributable to its area of geographic origin .

The definition as given in the Act is in consonance with the definition of GI asgiven in the TRIPS Agreement (Article 22(1)) and rather is more specific andexhaustive. The Indian definition explicitly extends the protection to GIs notonly for agricultural products but also for manufactured goods. Though the useof GIs is predominantly with respect to agricultural products typically havingqualities attributable to the specific geographical area, influenced by factors suchas climate, soil etc. however, certain geographical locality or region may also

highlight specific qualities of a product, due to human factors found in the placeof origin of the products, such as specific manufacturing skills and tradition.Such a place of origin may be a village or town, a region or a country. Forexample „Switzerland‟ or „Swiss‟, which is often perceived as a GI for proslike chocolate and watches made in Switzerland. Back home „Kolhapuri‟ foparticular kind of „chappals‟ made in Kolhapur district of Maharashtra, „Bikafor a specific kind of snack called Bhujia made in Bikaner district of Rajasthan,„Kanjeevaram‟ for a specific kind of silk saris made in Kanjeepuram in SouthIndia can be such examples of manufactured goods. It should be understood thatthe function of a GI is that it points to a specific place or a region of production

that determines the characteristic qualities of a product that originates formthere. It is important that the product derives its qualities and reputation fromthat place. Since those qualities depend on the geographical place of production,a specific “link” exists between the products and their original place ofproduction. In case of manufactured goods the link develops over a period oftime. Though it is easy to imagine this concept of GI with respect to agriculturalgoods as the specific link can be easily seen, understood or perceived. Forexample „Darjeeling‟ for tea known for its flavour and aroma grown in Darjeeling area of Eastern India, „Basmati‟ known for a kind of rice having lgrain and sweet aroma grown in the sub Himalayan regions of India and Pakistanand many other examples of such GIs can be given.

Prior to specific provisions as to protection of GIs this form of collectivegoodwill was in many jurisdictions protected under the trademarks law namely byregistration as „Certification Marks‟, or „Collective Marks‟. Even today countlike US, Australia and others, since they lack a specific legislation on this subjectprotects GIs through registration as „Certification or Collective Marks.‟



66

„Collective Mark‟ as defined in the English Trade marks Act 1994, means “a markthat distinguishes the goods or services of members of the association which is the proprthe mark from those of other undertakings ”. Therefore „Collective Marks‟ are owned byassociations whose members use them to identify themselves with a level ofquality and other requirements set by the association. Examples of suchassociations would be those representing accountants, engineers, or architects. While a „Certification Mark‟ as defined in the English Trade Marks Act, 1means a “mark indicating that the goods or services in connection with which it is used arecertified by the proprietor of the mark in respect of origin, material, mode of manufact

goods or performance of services, quality, accuracy or other characteristics .” Therefore thesemarks are granted for compliance with definite standards, for example as tomaterial or quality, but are not confined to any membership. They may begranted to anyone who can certify that the products involved meet certainestablished standards. „Woolmark‟, the „Kite‟ mark of the British Standar

Institutes and the mark „Stilton‟ for a particular variety of cheese produced inarea around the English village of Melton Mowbray are some of the very popularexamples of this category of marks. The internationally accepted "ISO 9000"quality standard is also an example of such certification marks.

Also unregistered GIs were and also today protected at common law by anaction of „extended passing off ‟ a variant of the classic passing off action, firstrecognized by Danckwerts J in Bollinger v Costa Brava wine Co. [1960] RPC 16.Under an action of extended passing off it is recognized that a class or group oftraders may share goodwill in a name or some other indicator that is distinctive

of a particular class of goods such as „Champagne‟ or „Scotch Whisky‟. Ther what is recognized is some kind of collective goodwill and of course GI too is aform of collective goodwill. In Bollinger v Costa Brava wine Co. case the plaintiffs

were members of a group of producers from the Champagne district in France who made a naturally sparkling wine, popularly known as „Champagne‟, broan action of passing off against the defendant for selling a product called„Spanish Champagne‟. The court observed that passing off would restrain a trader

who sought to attach to their product a name or description with which theyhave no natural association, “so as to make use of the reputation and goodwill which hasbeen gained by a product genuinely indicated by t he name or description” . Danckwerts Jfurther added that it did not matter “that the persons truly entitled to describe their goodsby the name and description are a class producing goods in a certain locality and not mereindividual” . Therefore in essence the court recognized that the plaintiffs along

with other members of the class had the requisite goodwill in the name„Champagne‟. This was because the name „Champagne‟ indicated a spar

wine that came from the Champagne district in France, was made by a particularmethod, and from grapes sourced from this Champagne region. As such, the



67

word „Champagne‟ denotes a distinctive reputation which could only be usedproducers from “Champagne‟ region. TheBollinger decision was followed inother cases namely in Vine Products v Mackenzie [1969] RPC 1 ( sherry – wine producedby the Solera process in the province of Jerez de la Fontera in Spain ); John Walker & Sons vHenry Ost [1970] RPC 489 ( Scotch Whisky distilled, but not necessarily blended, inScotland ); Taittinger SA v Allbev [1993] FSR 641 (champagne);Consorzio del Prosciuttodi Parma v Marks & Spencer [1991] RPC 351;Consorzio del Prosciutto di Parma v AsdaStores [1988] FSR 697 ( parma ham ).[1998] RPC 117; [1999] RPC 826 and recently in Chocosuisse v Cadbur [1998]

RPC 117; [1999] RPC 826 wherein Laddie J. recognized that the Swiss ChocolateIndustry had collective goodwill in the words „Swiss Chocolate‟.

Though the phrase „Geographical Indications‟ was for the first time used in TRIPS and also given a broad interpretation, the concept however is very old

and dates back to 14th

century when a specific legislation was passed on„appellations of origin‟ in relation to „Roquefort Cheese‟ in France. In brieconcept of GIs essentially originated in Europe where it has been mainly relatedto agricultural products and foodstuffs, and eventually expanding to certainindustrial products, for example, „Swiss watches‟. Till TRIPS the terminologyused was „indications of source‟ and „appellations of origin‟. Section 3 (Artito 24) of the TRIPS Agreement contains provisions in relation to GIs and thesection was essentially included due to powerful European influence whilecountries like USA, Australia, Canada, Japan and others were against itsinclusion. (As one commentator has commented on the inclusion of Section 3 in

the TRIPS Agreement that ultimately „important European movement to protecttraditional foods from the galloping globalism that threatens the entire world of food and‟

emerged triumphant in the fight to achieve a higher level of protection forgeographical indications).

The Paris Convention for the Protection of Industrial Property , 1883 (hereinafter „Paris Convention‟) was the first multilateral agreement, whprovided protection for indications of source and appellations of origin. Article1(2) lists the kinds of industrial property to be protected by the Convention andincludes, among others, „indications of source‟ and „appellations of origin‟this means these properties would also benefit from the principle of nationaltreatment pursuant to Article 2 of the Convention. Sanctions have also beenprescribed for falsifying indications of source. However, the protection wasconsidered rudimentary and weak and therefore countries entered in to theMadrid Agreement for the Repression of False or Deceptive indications ofSource on Goods of 1891(hereinafter the „Madrid Agreement‟), the 1958 Lis

Agreement for the Protection of Appellations of Origin and Their International

http://www.bitlaw.com/source/treaties/paris.html






68

Registration (hereinafter the „Lisbon Agreement‟), and the bilateral agreemfor the protection of GIs as concluded between the countries. It should bementioned that all these agreements were entered within the broad ambit of theParis Convention pursuant to Article 19.

The Madrid Agreement further obliges member countries to protectindications of source against false and misleading use and lays down that thatsuch goods bearing false and misleading indications of use must be seized onimportation by the contracting states.

The Lisbon Agreement was the first attempt to achieve effective andenforceable protection o GIs through an international registration system. Brieflyfor an appellation of origin to be protected, in accordance with the terms of this

Agreement: (i) the appellation of origin should be protected in its country of

origin, and (ii) the appellation of origin should be registered in the InternationalRegister of WIPO. However, the definition of appellation of origin as given inthe Lisbon Agreement was narrow and limited registration of appellations withrespect to agricultural goods and excluded industrial goods from the purview.

Also the Agreement required that for an appellation of origin to be protected itshould be first protected in its country of origin through a specific official Act (alegislative or administrative provision, or a judicial decision or a registration).However, till date only 19 counties have signed the agreement due to its narrowdefinition of appellation of origin basically designed to protect wines. Thereforecountries entered in to bilateral agreements to achieve a higher level of

protection, for example the European Union – Australia Wine Agreement, European Union- Mexico Agreement and the European Union - South Africa

Agreement.

Useful Links:

1. http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm

2. http://www.jurisint.org/pub/01/en/doc/139_1.htm

3. http://www.wipo.int/treaties/en/registration/lisbon/index.html

4. http://www.awbc.com.au/Content.aspx?p=47

5. http://www.google.co.in/search?hl=en&ie=UTF-8&q=+EU+-+Mexico+Wine+Agreement&btnG=Search&meta =

http://www.jurisint.org/pub/01/en/doc/139_1.htm


http://www.wipo.int/treaties/en/registration/lisbon/index.html


http://www.awbc.com.au/Content.aspx?p=47




http://europa.eu.int/comm/trade/issues/bilateral/countries/mexico/docs/en2_decision_goods.pdf


http://europa.eu.int/scadplus/leg/en/s05033.htm











http://www.google.co.in/search?hl=en&ie=UTF-8&q=+EU+-+Mexico+Wine+Agreement&btnG=Search&meta


















69

6. http://www.dti.gov.uk/ewt/safrica.htm

7. http://www.southcentre.org/publications/geoindication/TopOfPage

8. http://www.american.edu/projects/mandala/TED/basmati.htm

9. http://www.bitlaw.com/source/treaties/paris.html

10. http://europa.eu.int/scadplus/leg/en/s05033.htm

11. http://europa.eu.int/comm/trade/issues/bilateral/countries/mexico/docs/en2_decision_goods.pdf

12. http://timesofindia.indiatimes.com/articleshow/228868.cms

13. http://www.realbikaner.com/industry/

14. http://www.travelmumbai.com/html/arts___crafts.html

The definition of GIs as in TRIPS Agreement is more comprehensive andincludes industrial products. Apart from provisions as to special protection for

wines and spirits, review, overlapping trade marks and others the Agreementpursuant to Article 24(9) clearly lays down that there is no obligation on anymember country to protect a GI if the same is not or cease to be protected in the

country of its origin or have fallen in disuse in its country of origin. Thereforegiven this provision in the TRIPS and the Basmati rice controversy in the USPatent and Trade Mark Office there was considerable pressure and lobbying inIndia to have an enactment to protect its GIs. Hence the GeographicalIndications of Goods Registration and Protection Act, 1999, was enacted andnow enforced. The Geographical Indications Registry exercising all Indiajurisdictions is currently operating form Chennai.

Before going in to the registration procedure it is pertinent to point at this stagethe function of GIs, its difference with trademarks since both being overlappingsubjects and its growing importance now.

Briefly, GIs essentially fulfills two main functions namely, protecting thegoodwill of a producer or a section of producers and imparting consumerinformation. Often promotion of products having certain characteristics is ofconsiderable benefit to the region or area where the products are manufacturedand to the area where they are marketed. GIs protect producers of these regions

http://www.dti.gov.uk/ewt/safrica.htm


http://www.southcentre.org/publications/geoindication/TopOfPage


http://www.american.edu/projects/mandala/TED/basmati.htm












http://timesofindia.indiatimes.com/articleshow/228868.cms



http://www.realbikaner.com/industry/



http://www.travelmumbai.com/html/arts___crafts.html


















70

or areas against unauthorized exploitation of the goodwill created by the qualityof the products and the advertising appeal of the respective locality or region bycompetitors and their products. It should be pointed out that effective GIprotection is very important to industries like that of wine making. In SMW Winzersekt GmbH v Land Rheinland – Pfalz [1995] 2 CMLR 718 the EuropeanCourt of Justice dismissed the appeal of a German wine grower‟s associatichallenging the validity of European Council Regulation that prohibited themfrom designating their sparkling wine as „Champagne‟ or indicating that the w was produced using the „Champagne Method‟. The court in its opinion cleindicated that GIs have a purpose beyond that of protecting the consumeragainst confusion about the origin of goods and that pertains to protection of the„goodwill investment‟ of a region, which produces genuine goods againstmisappropriation by others who have not made the same investment in thegoodwill. The court held that the words „Champagne‟ or „Champagne Meth

has a value because of the investment of French sparkling wine producers inproducing their product, and German wine producers cannot be allowed to havea free ride on this investment.

But then the question arises as to the difference of GIs from trademarks as bothperform the function of identifying good; both are industrial property andperform overlapping functions. GIs act as source identifiers - In effect GIs act assource identifiers – they identify goods as originating in a particular territory, or aregion or locality in that territory. Also they act as indicators of quality as they letconsumers know that the goods come from an area where a given quality,

reputation or other characteristic of the goods is essentially attributable to theirgeographic origin. In addition GIs are business interests as they help to promotethe goods of a parti cular area. While a trademark serves as a „badge of origin‟, ia sign or combinations of signs, such as words, numerals, figurative elements,etc., capable of distinguishing goods or services of one undertaking from thoseof others. Further, a single person legal or natural is entitled to use a trademark,the right being accorded in accordance to the principle of „first in time, firstright‟ and the first user or first registrant will generally take precedence. Whilcase of a GI all producers belonging to the particular region or locality areentitled to use it. There is no precedence. Therefore the notion of trademarksimplies individual production of goods while the notion of GIs implies collective production of goods coming from the same geographical region and having thesame quality, reputation or characteristic attributable to its geographic origin.

Trademarks are easier to protect internationally though it requires active role ofthe owner who acquires this right through registration with a competentdomestic authority, while in case of GIs the state or an association of producershas to play a prominent role in its protection. Also a trademark is a personal



71

property, which can be transferred by way of assignment, licensing or any othermeans, while a GI by its very nature cannot be subject matter of licensing orassignment. For example, the know-how for producing Champagne or Cognacmay be, in principle, transferred to a person producing sparkling wine or brandyoutside the region of Champagne or Cognac, but the right to label the licensedproduct as Champagne or Cognac cannot be transferred.

And lastly question as to the sudden realization of GIs as form of intellectualproperty too has to be answered satisfactorily. In the last quarter of the twentiethcentury international trade has grown tremendously thereby affecting intellectualproperty rights in all aspects. Nations, communities and individual manufacturershave realized that GIs, intended to designate product quality, highlight brandidentity, and preserve cultural tradition, allows producers to obtain marketrecognition and often a premium price. For example French GI cheeses are sold

at a premium of two euro, Italian „Toscano‟ wine is sold at a premium of 20since its registration as a GI in 1998. Further, the EU, the biggest producer of wines and spirits, annually exports wine to a total value of EUR0 250 billion andspirits to EUR0 660 billion (all based on 1997 as the reference year). French wines like „Bordeaux‟ and „Burgundy‟ are well known world over and off courseChampagne that has become a symbol of victory and celebration. Thereforethese huge stakes were the basic reason to force EC to enter in to bilateralagreement with Australia in 1994 to prevent it from using GIs such as„Burgundy‟ or „Chablis.‟ It is stated that in case of wines and in general GIsthe country where a product originates makes a big difference to sales. Australian

wine industry thereafter devised their own regional names for wine like„coonawarra‟ or „Barossa‟ and stressed grape varieties like „Chardonnay„Shiraz‟ and built one of the most dynamic wine industry ready to outsell French both in Britain and United States this year. As of date 85% of French

wine exports use GIs and 80% of EU exported spirits use GIs. GIs are thelifeline for 138000 farms in France and 300000 Italian employees. Apart from

wines and spirits GIs are also very important to the food products like cheese,tea, coffee, rice and many others. The recent „Basmati‟ rice controversy in US,

which would be referred to in detail in later parts of this paper, save formentioning herein that at stake are exports worth $600 million from India andPakistan, only further carried the debate on GI. Further the US - EU WTOdispute as to protection of GI involving issues of reciprocity and trademarks hasdrawn considerable attention.

Therefore given the stakes involved nations whether developed or developing arenegotiating on further providing enhanced protection to GIs within the TRIPSand not just limiting it to wines and spirits.



72

Useful Links:

http://geographicindications.com/index.htm

http://europa.eu.int/comm/trade/miti/intell/argu_en.htm

http://www.economist.com/displaystory.cfm?story_id=1958256

http://usinfo.state.gov/topical/econ/wto/03040401.htm

Websites

1. www.patentoffice.nic.in 2. www.wipo.org 3. www.wto.org 4. www.geographicindications.com 5. www.southcentre.org 6. www.europa.eu.int 7. www.uspto.gov 8. www.ictsd.org 9. www.awbc.com.au

Part II: Conditions, Procedure and Duration of Registration

As mentioned earlier that unless a GI is protected in the country of its originthere is no obligation under the TRIPS Agreement for other member states toextend reciprocal protection and therefore to protect its GIs India enacted theGeographical Indications of Goods (Registration and Protection) Act, 1999(hereinafter „the Act‟). The Act provides a mechanism for registration of Gand establishes a GI registry, a statutory body to give effect to the provisions ofthe Act. It should be also noted that prior to this Act, the producers of thesekinds of goods were protected under the common law, the English precedentsand under the trademarks law. Also the subject overlaps with trademarks andhence incase of any confusion or discrepancy the Trade and Merchandise Marks

Act, 1958 and the newly enforced Trade Marks Act, 1999 should be looked in to.









http://www.patentoffice.nic.in/




http://www.wto.org/

http://www.wto.org/

http://www.geographicindications.com/


http://www.southcentre.org/


http://www.europa.eu.int/


http://www.uspto.gov/


http://www.ictsd.org/


http://www.awbc.com.au/








http://www.wto.org/









73

Infrastructure The Act is divided in to 9 chapters, containing 87 sections. Chapter I, thepreliminary section gives a short title, the area of operation, date ofcommencement and definitions of expressions like Intellectual Property

Appellate Board, authorized user, deceptive similarity, Geographical Indication,goods, indication, producers etc. Chapter II deals with Registrar and theconditions of Registration. Chapter III provides for registration ofHomonymous GIs. Chapter IV deals with the procedure for registration,Chapter V deals with special provisions relating to trade marks and prior users,Chapter VI with rectification and correction of the register, Chapter VII withappeals and the appellate Board, Chapter VIII with offences and penalties andfinally Chapter IX contains miscellaneous provisions like powers of centralgovernment to make rules and others.

Coming to Chapter II, pursuant to Section 3 of the Act the Controller Generalof Patents, Designs and Trademarks has been appointed the Registrar of GIs

who will discharge his functions through his officers as appointed therein. At themoment the GIs Registry has been established in Chennai with all Indiajurisdiction. A Register of GIs will also be kept at the GI registry under thesuperintendence and control of the Registrar of GIs (Section 6) in which detailsof all registered GIs with names, addresses and descriptions of the proprietors,the names, addresses and descriptions of authorized users and such other details

would be entered. This register is divided in to two parts namely, Part A in which

details as to the registration of the GIs has to be entered and Part B will containparticulars as to the registration of authorized users (Section 7).

Like trademarks the Act pursuant to Section 8 registration of a GI shall be withrespect to any or all of the goods comprised in such class of goods as may beclassified by the Registrar and in respect of a definite territory of a country, or aregion or locality in that territory of a country, or a region or a locality in thatterritory as the case maybe. This implies that the application for registration willhave to indicate precisely the goods to which the GI shall apply. The goods aredivided in to 34 classes and are mentioned in the Fourth Schedule to theGeographical Indications of Goods (Registration and Protection) Rules, 2002(hereinafter „the Rules‟). It should also be noted that if the goods for whiregistration has been applied for fall in more than 1 class and for which only oneapplication fees has been paid, the applicant may have either to restrict thespecification of goods included in one class or pay the appropriate additionalclass fee. The decision of the Registrar as to which class any goods fall in to shallbe final. It should be further noted that like the classification of goods under the



74

Trade Marks Act 1999, the classification as given under the Act in the FourthSchedule, is based on the International Classification system established underthe Nice Agreement of June 15 th, 1957.

RegistrabilityFor Registrability the GI must fall within the scope of the definition of theexpression „Geographical Indication‟. In addition such a GI should not f

within the purview of prohibitions as contained in Section 9 and they are: -

(a) the use of which would be likely to deceive or cause confusion; or(b) the use of which would be contrary to any law for the time being in force;

or(c) which comprises or contains scandalous or obscene matter; or(d) which comprises or contains any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India; or(e) which would otherwise be disentitled to protection in a court; or(f) which are determined to generic names or indications of goods and are,

therefore, not or ceases to be protected in their country of origin, or whichhave fallen in to disuse in that country; or

(g) which, although literally true as to the territory, region or locality in whichthe goods originate, but falsely represent to the persons that the goodsoriginate in another territory, region or locality, as the case may be.

(a) the use of which would be likely to deceive or cause confusion; or Deception or confusion need not be actual. It may be probable. As undertrademarks law protection of public interest is the primary consideration beforethe Registrar. (As mentioned earlier since this branch of law is new and overlapping withtrademarks law reference shall be made of trademark cases wherever required.) What the Registrar has to see is whether looking at the circumstances of the casea particular trademark (in our case GI) is likely to deceive or cause confusion( National Sewing Thread Company Ltd. V James Chadwick & Co. Ltd and others Air1953 SC 357, pg 364). The court must be satisfied that there is a real tangibledanger of confusion if the mark, which is sought to register, is put on theRegister ( William Bailley (Burmingham) Ltd.’s Application (1935) 52 RPC 136, pg.153). However, the Registrar ought not to refuse to register a mark as calculatedto deceive where there is no evidence, intrinsic or extrinsic, of a design to passoff goods as those of another man‟s where the marks are distinct, and wheregistration would be permitted, but for the mere possibility o confusion byinexperienced people ( Reddaway & Co. Ltd.’s Application (1925) 42 RPC 397, Pg.401: Ch. 393.



75

Therefore in general the Registrar of GIs as the registrar of trademarks has to seeeach case on its own facts and circumstances with the overriding considerationbeing public interest.

(b) the use of which would be contrary to any law for the time being inforce; or

The Trade Marks Act, 1999 prohibits registration of marks that are prohibitedunder the Emblems and Names (prevention of Improper Use) Act, 1950, the lawrelating to copyright and the common law tort of Passing – off. Similarly in caseof GIs registration of such GIs is prohibited under these laws with the TradeMarks Act, 1999 in addition.

(c) which comprises or contains scandalous or obscene matter; or

The same is the law relating to trademarks. Whether a GI that has been appliedfor registration is scandalous or obscene has to be decided by the tribunal in thefacts and circumstances of each case. The onus is on the applicant to show thatthe GI applied for registration is not scandalous or obscene.

(d) which comprises or contains any matter likely to hurt the religioussusceptibilities of any class or section of the citizens of India; or

Again as in trademarks in case of GIs too each case has to be seen in its ownpeculiar facts and circumstances. Use of pictures of Gods, Goddesses and otherreligious heads as trademarks or GIs per se is not objectionable. However, somesign or word or particular usage may hurt the religious and moral susceptibilities

and hence such trademark or GI falls under his prohibition.

For example the use of Hindu Gods in respect of beef or meat products or suchuse of Muslim Saints for pork products would offend the religious susceptibilitiesof the respective sections of public and therefore registration of such GIs wouldfall under the purview of Section 9 (d). Registration of the mark„HALLELUJAH‟ in respect of articles of clothing for women was refusedoffending against morality and religious susceptibilities of certain people( Hallelujah TM (1976) RPC 605).

(e) which would otherwise be disentitled to protection in a court; or The established principle of law is that the protection is not to be extended “ tpersons whose case is not founded in truth” ( Eno v Dunn 7 RPC 311, pg. 318).

Apart from equity as mentioned earlier a trademark or GI will not be registered ifit violates laws relating to copyright, tort of passing off, Emblems and names andother laws.



76

(f) which are determined to generic names or indications of goods andare, therefore, not or ceases to be protected in their country oforigin, or which have fallen in to disuse in that country; or

The sub clause, i.e. Section 9 (f) has to be read in conjunction with Explanation 1and 2 as given. According to Explanation 1 „generic names or indications‟means the name of a goods which, although relates to the place or the region

where the goods was originally produced or manufactured, has lost its originalmeaning and has become the common name of such goods and serves as adesignation for or indication of the kind, nature, type or other property orcharacteristic of the goods. In other words the name has ceased to be distinctiveof a particular source and has become common to the trade. This provisioncorresponds to Article 24(9) of the TRIPS Agreement, which declares “theshall be no obligation under this agreement to protect GIs which are not or ceaseto be protected in their country of origin, or which have fallen in to disuse in that

country”. Article 6 of the Lisbon Agreement clearly states that an appellationorigin will not be deemed to have become generic as long as the same isprotected in its country of origin.

According to Explanation 2 which states that in determining whether the namehas become generic, account shall be taken of all factors including the existingsituation in the region o place in which the name originates and the area ofconsumption of the goods.

It need not be mentioned that the value of a GI diminishes if the product has no

longer the exclusive meaning and its origin loses relevance. The GI no longerindicates to the market place the source of the product and instead it isconsidered the common general name of the product. Intellectual properties are

valuable assets and owners make great efforts to prevent their trademarks andGIs from becoming generic. Example can be given of Basmati rice, which hasbecome generic in USA and is a common term used for all long grain aromaticrice. The Indian government is fighting a legal battle to restore the same as a GI

(g) which, although literally true as to the territory, region or locality inwhich the goods originate, but falsely represent to the persons thatthe goods originate in another territory, region or locality, as thecase may be,

Geographical indication, which falsely represents to the persons that the goodsoriginate in a locality other than of its origin, though literally true as to thelocality of origin, cannot be registered. Therefore this provision intendspreventing deception and falsification of GIs. Falsity of representation, inabsence of any fraud, does not depend upon the meaning which the maker



77

intended or believed it to have or upon the construction which the court itselfputs upon it, but upon the way in which it could be reasonably understood bythe person to whom it is addressed. In Parker Knoll Ltd v. Knoll International Ltd .[1962] RPC 265, it was observed, “It is literally truthful for the appellants to that their furniture is manufactured by Knoll International, but if that statementconveys to a member of the public that the furniture is manufactured by Parker – Knoll, it is a false representation”.

Further, Section 10 of the Act provides for registration of homonymous, i.e.similar GIs subject to the satisfaction of the Registrar. The Registrar afterconsidering the practical conditions under which the homonymous indications

will be differentiated form other such homonymous indication, the need toensure equitable treatment of the producers of the goods concerned and aftersatisfying that the consumers of such goods will not be confused or misled

should permit registration of such homonymous GIs. The onus is on theapplicant to show that the consumers of such goods are not confused or misleddue to registration of such homonymous GIs. This section is in consonance with Article 23(3) of the TRIPS Agreement, which permits each member to “determine the practical conditions under which the homonymous indications inquestion will be differentiated from each other taking in to account the need toensure equitable treatment of the producers concerned and that consumers arenot misled”.

The example of homonymous indications are Rioja, - wines produced in

Argentina and Spain and Basmati – rice produced form India and Pakistan.

Procedure for Registration The procedure for registration of a GI is prescribed in Chapter III of the Actread with Chapter II of the Rules. Section 11 of the Act deals with applicationfor registration, its contents, making and filing, acceptance or refusal. It shouldbe noted that unlike an application for registration of a trade mark where anapplication may be made by any person, an application for registration of a GIpursuant to Section 11(1) can be made only by an “association of persons orproducers or any organization or authority established by or under any law forthe time being in force representing the interests of the producers of theconcerned goods, who are desirous of registering a GI in relation to suchgoods”. Bodies like the Tea Board, Coffee Board, and the Spices Board aresome such examples of such associations or organization.



78

Pursuant to Section 11(2) read with Rule 32 an application for registration of GIhas to be filed on Form GI-1 in triplicate along with 5 representations of the saidGI and the official fees prescribed in the First Schedule is Rs.5000/- only. Theapplication should also contain a statement of case showing as to how theconcerned GI serves to designate the goods as originating from the concernedterritory of the country or region or locality in the country as the case may be,the class of goods to which it relates, the geographical map of the territory of thecountry or region or locality in the country in which the goods originate or arebeing manufactured, particulars of the producers of the goods and other relateddetails. The rules further prescribes that the applicant has to file an affidavitalongwith the application clearly stating as to how the applicant claim torepresent the interest of the producers, association of persons or producers ororganization. Also the application should clearly state the standards benchmark

for the use of GI or the industry standard as regards production, exploitation,making or manufacture of the goods having specific quality, reputation or othercharacteristic of such goods that is essentially attributable to its geographicalorigin, the particular human skill involved, the uniqueness of the geographicalenvironment or other inherent characteristics associated with the GI to whichthe application relates, of course the name and address of the applicants and allother related details.It should be noted that a single application can be made with respect to differentclasses of goods though the applicants have to pay fees with respect to each suchclass. The application can be filed in the office of GI registry within whose

territorial jurisdiction the place mentioned in the address of service in India asdisclosed in the application is situated. As mentioned above that so far the GIRegistry has been established in Chennai with all India jurisdiction.

On receipt of the application the Registration shall cause the application to beexamined as to whether the said application meets the requirements of the law.For purposes of examination the Registrar under his chairmanship constitute aconsultative group of not more than seven persons well versed in that particularfield. Thereafter the Registrar will communicate his objections to the applicant

who within a stipulated time has to meet these objections and if necessaryrequest for hearing for satisfying the Registrar as to the merits of the application.Incase no response is received to the objections or the applicant fails to attendhearing the application will be dismissed. Thereafter the Registrar may proposeto accept the application subject to conditions, amendments, modifications, orany other limitations as he deems fit and direct the same to be advertised in theGI Journal (Gazette Publication).



79

As seen in trademarks section the procedure of registration of a GI is similar tothat of a trademark. After the GI proposed to be registered has been advertisedany person within three months and within a further period not exceeding onemonth give his or her opposition in writing to the Registrar, of opposition to thesaid registration pursuant to section 14 of the Act. Thereafter the procedure issimilar as followed in case of registration of the trademarks. The Registrar shallcause the Notice of Opposition to be served on the Applicant and within astipulated time the Applicant has to file his counter statement to this Notice.

Thereafter within a certain time frame as enumerated in the Act the parties haveto file their evidences and after that the Registrar shall hear the parties ifrequired. The Registrar then on basis of these documents and hearings take adecision as to whether the registration is to be permitted or not and if yes thansubject to what conditions or limitations. The application, if accepted, thanproceed to registration and a Registration Certificate will be issued pursuant to

section 16 of the Act.

Registration of „Authorised User‟ As mentioned previously the Act make provisions for two parts namely Part Aand Part B in the GI Register. Registr ation details of „Authorized Users‟ have tobe recorded in Part B of the Register. The Act defines Authorised User inSection 2(1) (a) as a person who is the authorised user of a GI registered undersection 17 of the Act. Section 17 states that any person who claims to be theproducer of goods in respect of which a GI has been registered under section 6,

may apply in writing to the Registrar for registering him as an authorized user ofsuch a GI. The registration procedure of an „Authorized User‟ is broadly similarto the procedure for registration of a GI as discussed above. The applicationshould be on Form GI-3 alongwith prescribed fees and has to be accompaniedby the following documents, namely:

1. Statement of case of how the applicant claims to be the producer of theregistered GI alongwith an affidavit which should include inter alia since

when he has been a producer, the turnover, the extent of cultivation ofagriculture land where applicable, the volume of processing, packaging,exploitation, production or manufacture of the gods, as the case may be,the extent of export, the regulation governing cultivation or the acceptedmethod of cultivation, production, exploitation, manufacture or themaking of the goods may also be relevant.



80

2. The applicant should also furnish any copy of agreement between theregistered proprietor and the proposed authorised user or a copy of theletter of consent from the registered proprietor of the GI. (Where suchconsent letter is not appended then a copy of the application has to beendorsed to the registered proprietor for information and the applicanthas to intimate the Registrar as to service of the application on theproprietor of the registered GI.

Section 17(3) makes it clear that the provisions of Chapter III of the Act relatingto-

(a) the filing and examination of the application;

(b) the refusal and acceptance of registration;

(c) withdrawal of acceptance of application;

(d) advertisement of application;

(e) opposition to registration;

(f) correction or error in an amendment of the application and;

(g) registration

shall apply in respect of the application and registration of authorised users inthe same manner as they apply for the application for registration of the GI.

DurationSection 18(1) of the Act provides that registration of a GI shall remain valid for aperiod of 10 years, which may be renewed from time to time. Pursuant toSection 18(2) registration of authorized user too shall valid for 10 years or for theperiod till the date on which the registration of the GI in respect of which theauthorised user is registered expires, whichever is earlier. Therefore registrationof the authorised user depends on the registration of the GI and is co-terminus

with the same.

An application for renewal of registration of a GI or an authorized user of a GIthe application has to be made in the prescribed manner along with the



81

prescribed fees i.e. on Form GI-3 or Form GI-4 as the case may be and may bemade at any time not more than six months before the expiration of the lastregistration. The renewal shall be for a further period of ten years. The person

who is proprietor of the registered GI failing which by any of the authorisedusers on record as the case may be must file such an application for renewal.(Section 18(3) Rule 60 (1) & (2)). In case no request on Form GI-3 or Form GI-4is received within 3 months of the date of expiration then the Registrar shallissue a notice to the registered proprietor or the authorised user as the case maybe about the date of the registration and the conditions upon which the renewalof the registration must be obtained. If no such request for renewal is obtainedfrom the registered proprietor or the authorised user the registrar shall removethe registration or the name of the authorised user from the register providedthat the Registrar shall not take recourse to such a drastic action if such anapplication along with the surcharge for renewal is received within six months

from the expiration date. Similarly even on expiry of this grace period of sixmonths and within one year from the date of expiration the Registrar on receiptof an application for renewal along with prescribed fees and subject to hissatisfaction may renew the same. Every restoration or renewal of a GI will beadvertised in the journal.

Section 19 of the Act highlights the effects of removal form the register of a GIdue to non-payment of renewal fees. Where the GI has been removed from theregister for failure to pay the prescribed renewal fee, it shall nevertheless, for thepurpose of any application for the registration of another GI during one year

after the date of removal be deemed to be a GI already on the register. Thereforefor the purposes of Section 9(a) it will continue to be conflicting registration forany new application for registration of any identical or similar GI. However,there are exceptions to this general rule when the Registrar is satisfied either

(a) that there has been no bonafide use of the GI which has been removed within the two years immediately preceding its removal, or

(b) that no deception or confusion would be likely to arise from the use of theGI which is the subject of the application for registration of any previoususe of the GI which has been removed.

It should be mentioned that the Regis trar‟s satisfaction would be based onevidence brought before him by an applicant whose registration is blocked bythe registration, which has been removed from the register.

Links



82

http://www.patentoffice.nic.in/ipr/gi/geo_ind.htm

Part III: Effect of Registration

Chapter IV (Sections 20 to 24) of the Act deals with the effect of registrationof GIs. Before going in to effects of registration it should be noted thatunlike a trademark a GI cannot be assigned, transmitted, licensed, pledgedmortgaged or transferred in any manner. The reason being is that it is acollective goodwill over which a group of producers or an association or anorganization of such producers or any authority has proprietary rights and notjust one single individual. Pursuant to Section 11 a GI is registered in name ofsuch association or organization and therefore having regard to such

communality of interests the Act vide section 24 expressly forbids anddisables the registered proprietor to assign, transmit, license, pledge, mortgageor do any such act to alienate the right in the common property. However,the proviso to Section 24 makes it clear that on the death of an authoriseduser his right in a registered GI shall devolve on his successor in title underthe time being in force, so that he could be brought on record as thesubsequent user in respect of the GI.

In the case of an unregistered GI section 20(1) clearly states that no person

shall be entitled to institute any proceeding to prevent or to recover damagesfor the infringement of an unregistered GI. Subsection (2) however clearlystates that nothing in this Act shall be deemed to affect rights of actionagainst any person for passing off goods as the goods of another person orthe remedies in respect thereof. In other words, while no infringement action

will lay in respect of an unregistered GI, the common law rights of the ownerof the collective goodwill to take civil and criminal action against any personfor passing off goods of another person or the remedies thereof.

Passing Off The expression „passing off‟ has not been defined in the Act or in the TraMarks Act, 1999 though it has been used at various places. As propounded by

James L.J. in Singer Manufacturing Co. v Loog (1880) 18 Ch. D.395, p 412 anaction for passing off is based on common law of tort and is founded on theprinciple that “no man is entitled to represent his goods as being the goods of anotman; and no man is permitted to use any mark, sign or symbol, device or means, whe






83

without making a direct representation himself to a purchaser who purchases from himenables such a purchaser to tell a lie or to make a false representation to somebody elsis the ultimate purchaser ”. In Kerly‟s law of trademarks and trade names it isstated, “the law of passing off can be summarized in one short general proposition – noman may pass off his goods as those of another. More specifically it may be expressterms of the elements, which the plaintiff in such action has to prove in order to suThese are 3 in number :

Firstly, he must establish a goodwill or reputation attached to the goods or services whsupplies, in the mind of the purchasing public by association with the identifying get – up(whether it consists of a brand name or a trade description, or the individual featurelabeling or packaging) under which his particular goods or services are offered to the such that the get up is re cognized by the public as distinctive specifically of the plaintiff’

goods or services. Secondly, he must demonstrate a misrepresentation by the defendan

public (whether intentional or not) leading or likely to lead the public to believe tha goods or services offered by him are the goods or services of the plaintiff. And thirdly hdemonstrate that he suffers or in quia timet action, that he is likely to suffer damagereason of the erroneous belief engendered by the defendant’s misrepresentation that the sourceof the defendant’s goods or service is the same as the source of those offered by the plaintif

It should be mentioned that the subjects trademarks and GIs are overlappingand therefore principles laid down in a passing off action based on a right in atrademark would be equally applicable in protecting an action based on a rightin a GI and therefore as above we often refer to principles as enunciated in

the trademarks law. In Baltimore v Moses59 US PQ 409 Para. 16.02 it wasobserved that the law in respect of trademarks and GIs both in letter andspirit is laid upon the premise that while it encourages fair trade in every wayand aims to foster and not to hamper competition, no one especially a trader,is justified in damag ing or jeopardizing another‟s business by fraud, deceittrickery or unfair method s of any sort. This necessarily precludes the tradingby one dealer upon the good name and reputation built up by another.

Passing off versus InfringementBefore going further it is pertinent to outline the conceptual differencebetween passing off and infringement. As discussed earlier passing off actionis based on well-established common law principle that no one has any rightto represent his goods as so mebody else‟s, while an action for infringementsis based on the right acquired by the registration under the statute. An actionfor infringement is statutory right. In Durga Dutt v/s Navratna PharmaceuticalsLaboratory AIR 1965 SC 980, Pg 990, the Supreme Court has observed as



84

follows “while an action of passing off is an common law remedy being in substancaction for deceit, that is passing off by a person of his own goods as goods of another, not the gist of an action for infringement. The action for infringement is statutory reconferred on the registered proprietor of a registered Trade mark for the vindication exclusive right to the use of the trade mark in relation to those goods. The use bydefendant of the trade mark of the Plaintiff is not essential in action for passing off bthat Sine qua non in the case of an action for infringement ”. Since as discussed earlierthe subjects of GI and Trade Marks are overlapping the same observation

would apply in an action for passing off or infringement in case of GIs.

Coming back to the Act Section 21 outlines the rights conferred byregistration of the GI. Subclause (1) (b) states that a GI once registered and if

valid gives both the registered proprietor and all the authorized users thereofexclusive right to the use of the GI in relation to the goods in respect to

which it is registered. Subclause (1) (a) lays down that the registeredproprietor of the GI and the authorised user or users thereof can initiate anaction for infringement in respect of the GI in the manner provided by in this

Act. However, it should note that the rights are subject to other provision ofthe Act. Further pursuant to sub clause (3) when two or more authorizedusers are registered for identical or nearly resembling GI, the exclusive rightto the use of GI does not operate against each other.

It should be mentioned that the words “if valid” circumscribe the rights othe proprietor. Section 23 clearly states that in all legal proceedings related to

GI the certificate of registration shall be the prima facie evidence of the validitythereof and be admissible in all courts and before the Appellate court withoutproof or production of the original. Therefore the words “ if valid” imply thfact of registration of a GI and existing on the register.

Section 22 outlines the circumstances when a registered GI is infringed.Subclause (1) (a) states that a registered GI is infringed by a person who notbeing an authorised person user uses such indication on the goods or suggeststhat such goods originate in some other geographical area other than the trueplace of origin of the goods which misleads the public. This clause is inconsonance with Article 22(2)(a) of the TRIPS Agreement, which lays anobligation on members to provide legal means to prevent persons to use GIsthat are false and misleading as to the true place of origin of the goods withrespect to which they are used.

Sub clause (1)(b) states that a GI is also infringed when a person who is notan authorised user thereof uses the GI in such manner which constitutes an



85

act of unfair competition including passing off in respect of registered GI.Explanation I as contained in this section defines “act of unfair competitioas any act of competition contrary to honest practices in industrial orcommercial matters. Further, Explanation II lists certain acts which can betermed as acts of unfair competition, namely:- all acts which are calculated tocreate confusion with the establishment, the goods or the industrial orcommercial activities of a competitor, false allegations in the course of tradeof such a nature so as to discredit the establishment, the goods or theindustrial or the commercial activities of a competitor, the use of GIs withrespect to goods in the course of trade in such a manner so as to mislead thepublic as to their nature, their manufacturing process, characteristics,suitability of their purpose or their quantity. This provision is designed to giveeffect to Article 22 (1) (b) of the TRIPS Agreement, which states thatmembers should provide legal means for interested parties to prevent any use

of an GI which constitutes an act of unfair competition within the meaningof Article 10bis of the Paris Convention (The acts of unfair competition aslisted in the Act are similar to ones as listed Article 10bis in the ParisConvention).

Further, pursuant to sub clause (1) (c) a GI is also infringed by a person, whonot being the registered proprietor or an authorized user uses another GI tothe goods which although literally true as to the territory, region, or locality in

which the good originate, falsely represent to the public that the goodsoriginate in the region, territory or a locality in respect of which such

registered GI relates. This provision is designed to give effect to Article 22 (4)of the TRIPS Agreement which mandates that the legal provisions for theprotection of GIs will also apply in case of a GI which although literally trueas to the territory, region it locality in which the goods originate, falselyrepresents to the public that the goods originate in another territory.

Article 23 of the TRIPS Agreement obliges members to provide the legalmeans to prevent the use of GIs identifying wines or spirits not originating inthe place indicated by the GI in question even when the true origin of the

wines and spirits concerned is indicated or the GI is used in translation or isaccompanied by expressions such as “kind”, “type”, “style”, “imitation”, the like. Thus „Champagne style sparkling wine, Made in the USA‟ would prohibited even though this is clearly not deceptive (We can also refer to theEuropean Court‟s decision inSMW Winzersekt GmbH v Land Rheinland – Pfalz [1995] 2 CMLR 718, as discussed in preceding part). In short Article 23outlines additional and enhanced protection for wines and sprits. Thisprovision shows the strong European influence during negotiations of the



86

Agreement though as of today it has become a highly controversial issue asdeveloping countries like India are lobbying for enhanced protection forother products as well. Section 22 (2) empowers the Central Government, if itthinks necessary, may notify in the Official Gazette the goods or class ofgoods to which such kind of additional protection may be extended. Pursuantto subsection (3) such additional protection as outlined in Article 23 of the

TRIPS Agreement extends to goods as notified.

Finally Section 22 (4) enacts by way of an exception that where the goods inrespect of which a GI has been registered are lawfully acquired by a personother than the authorised user of such GI, further dealings in those goods bysuch person including processing or packaging, shall not constitute aninfringement, unless the condition of the goods are impaired after they havebeen put in the market.

Therefore in short the Indian GI Act outlines a comprehensive protectionmechanism to prevent infringement both of registered and unregistered GIsin consonance with the TRIPS Agreement and in addition empowers theCentral Government to notify goods for which additional or higher level ofprotection can be given apart from wines and spirits, which it is obliged togive.

Important links:1. http://www.bitlaw.com/source/treaties/paris.html

Part IV: Offences, Penalty and Procedure for Seeking Relief

As discussed in the preceding part that although the registered proprietor of aGI cannot alienate the GI by way of assignment, mortgage, licensing or anyother means, the proprietor and the authorised user can certainly institute asuit for infringement to protect the collective goodwill and in case ofunregistered GI a suit for passing off. The Act like the Trade Marks Act, 1999and the Copyright Act, 1957 contains specific provisions as to the place,procedure and also the relief that can be craved form the courts in such a suitfor infringement and passing off. The Act also provides for criminalprosecution of persons who indulge in falsification of GIs. Firstly, we shalldiscuss the remedy of suits and passing off and thereafter discuss the






87

provisions as to criminal prosecution with a reference to rectificationproceedings when required.

Suit for infringement and passing off A suit for infringement or relating to any other right in a registered GIpursuant to Section 66 of the Act is to be instituted before a court notinferior to a District Court. Similarly a passing off action too has to beinitiated before the District Court. Subsection (2) clearly states that the„District Court having jurisdiction‟ shall mean a district court within the lo limits of whose jurisdiction, at the time of the institution of the suit or otherproceedings, the person instituting the suit or proceeding, i.e. the plaintiff

voluntarily resides or works for gain. This is in contrast to Section 20 of theCivil Procedure Code, 1908 (CPC) which lays down that a suit shall beinstituted in a Court within the local limits of whose jurisdiction the

defendant at the time of the commencement of the suit actually or voluntarilyresides or works for gain. Therefore this jurisdictional clause is a departureform the normal law as contained in the CPC and is based on Section 62 ofthe Copyright Act, 1957 and section 134 of the Trade Marks Act, 1999. Withthis clear provision the combination of the three causes of action, vizinfringement of GI, passing off and copyright infringement has now becomeeasy. It should also be noted that the jurisdiction for filing a suit forinfringement or passing off is not based on or linked with the operativejurisdiction of the GI Registry whether head office or branch office as held inP.M. Diesels Ltd v Patel Field Marshal Industries (1998) PTC 260 Del (DB). Also

the place where the cause of action arose will determine the jurisdiction of thecourt. This implies that the Court in a district where spurious goods were sentfor sale on a commercial scale has jurisdiction to entertain the suit.

The period of limitation for filing a suit for infringement and passing off isthree years from the date of the impugned act under the Limitation Act, 1963.However, the Supreme Court in Bengal Waterproof v Bombay Waterproof AIR1997 SC 1398 held that as an act of passing off is an act of deceit and tort andevery time when such tortuous act or deceit is committed by the defendantthe plaintiff gets a fresh cause of action to come to the Court by appropriateproceedings. Similarly infringement of a registered trademark would also be acontinuing wrong so long as the infringement continues. Therefore, whetherthe earlier infringement has continued or a new infringement has taken placecause of action for filing a fresh suit would obviously arise in favour of theplaintiff who is aggrieved by such infringements of trademark or passing offactions alleged against the defendant.



88

Section 67 outlines the relief, which a Court may give to the plaintiff in such asuit for infringement and passing off. Such relief may include an order forinjunction (subject to such terms which the court may think is fit in the factsand circumstances of the case) and at the option of the plaintiff eitherdamages or accounts of profits, together with or without any order for thedelivery – up of the infringing labels and indications for destruction orerasure. Subclause (2) clearly states that the order for injunction may be madeex parte and may include interlocutory orders on the following mattersnamely: -

(a) for discovery of documents;

(b) preserving of infringing goods, documents or other evidence which are

related to the subject matter of the suit;(c) restraining the defendant from disposing of or dealing with his assets

in a manner, which may adversely affect plaintiff‟s ability to recovdamages, costs or other pecuniary remedies which may be finallyawarded to the plaintiff.

Clearly no distinction is made as to kind of relief granted in a suit forinfringement or a passing off. Also it is pertinent to note that the explicitprovision as to the exparte relief are in nature of Anton Pillar Orders or Mareva

Injunction as granted in U.K and other common law countries.

Subsection (3)(a) lists the defences, which the defendant may plead to avoidpaying damages (other than nominal damages) or an account of profits in a suitfor infringement and they are: -

Where the defendant satisfies the Court-

(i) that at the time he commenced to use the GI complained of in thesuit he was unaware and had no reasonable ground for believingthat the GI of the plaintiff was on the register; and

(ii) that when he became aware of the existence and nature of theplaintiff‟sright in the GI, he forthwith ceased to use the GI inrelation to good in respect of which it was registered.

Similarly as per subclause (b) such defence can be pleaded in a suit for passingoff.



89

It should also be mentioned that generally in such suits for infringement whethercopyright or trademarks or GI a successful plaintiff is entitled to either an inquiryas to damages or at his election an account of profits. i.e., at his choice orelection he is entitled to any one of these remedies. The reason is that sinceaccount of profits is more in the nature of an equitable remedy, the plaintiff bytaking the profits made by the infringer by use of his property condones the actsof infringement. ( Caxton publishing Co. Ltd V Sutherland Publishing Co. Ltd [1939]

A.C. 178 at 198, De vitre v Betts (1873) L. R. 6 H. L. 319; Island Records Ltd v TringInternational Plc . [1995] F.S.R. 560)

Criminal ProsecutionChapter VIII of the Act details certain acts as offences punishable byimprisonment or with fine or with both. The following are the acts deemed as

offences: -1. Falsifying and falsely applying GIs as listed in Section 38.

2. Selling goods to which false GI is applied as outlined in Section 40.

3. Falsely representing a GI as registered as listed in Section 42.

4. Improperly describing a place of business as connected with the GIsRegistry as listed in Section 43.

5. Falsification of entries in the Register as listed in Section 44.

The chapter apart from listing penalties for the above-mentioned offences alsodetails the penalty and procedure of prosecution. In the context of offencesunder this chapter an important question is as to what constitutes meaning of„applying geographical indication‟. The expression geographical indicationbeen defined in Section 2 (1) (e). Section 37 elaborates the meaning of expression„applying geographical indication‟ and accordingly a person is deemed to appGI to goods when he: -

(a) applies it to the goods themselves; or

(b) applies it to any package in or with which the goods are sold, orexposed for sale, or had in possession for sale or for any purpose oftrade or manufacture; or



90

(c) places, encloses or annexes any goods which are sold, or exposed forsale, or had in possession for sale or for any purpose of trade ormanufacture, in or with any package or other thing to which a GI hasbeen applied; or

(d) uses a GI in any manner reasonably likely to lead to the belief that thegoods in connection with which it is used are designated or describedby that GI; or

(e) in relation to the goods uses a GI in any sign, advertisement, invoice,catalogue, business letter, business paper, price list or othercommercial documents and goods are delivered to a person inpursuance of a request or order made by reference to the GI as soused.

Subsection (2) further clarifies that a GI shall be deemed to be applied to goods, whether it is woven in, impressed on, or otherwise worked in to, or annexed oraffixed to, the goods or to any package or other thing. The term „package defined in the Act in Section 2(1) (i).

Section 38 list two kinds of offences namely:-

(a) falsifying a GI and

(b) falsely applying a GI.

Subsection (1) states that a person shall be deemed to falsify a GI who,

(a) without the assent of the authorised user of the GI makes that GI ordeceptively similar GI

(b) falsifies any genuine GI, whether by alteration, addition, effacement orotherwise.

The section is applicable to both registered and unregistered GI. In the case ofthe registered GI, the complainant may obtain from the Registrar a certified copyof entry in the register in respect of the GI to establish proprietorship. Therequest has to be made on Form GI-7, along with the copy of the registered GIas per Rule 96. In case of unregistered GI the Proprietor has to establish his titleby evidence of prior use.



91

Subsection (2) further states that a person shall be deemed to falsely apply togoods a GI when he without the assent of the authorised user of the GI: -

(a) applies such GI or a deceptively similar GI to goods or any packagecontaining goods;

(b) uses a package bearing a GI, which is identical with or deceptively similar tothe GI of such authorised user, for the purpose of packing, filling or

wrapping therein any goods other than the genuine goods of the authorizeduser of the GI.

Any GI falsified as mentioned above is a “false GI” and the onus lies on thprosecution of proving the offence as committed by the accused as mentionedabove. However, the burden of proving the assent of the proprietor lies on the

accused. The penalty for falsification of GIs and the circumstances in which a personapplies false GI are enumerated in Section 39 which states that any person –

(a) who falsifies any GI;(b) falsely applies to goods any GI, or

(c) makes, disposes of, or has in his possession, any die, block, machine, plateor other instrument for the purpose of falsifying or of being used forfalsifying, a GI; or

(d) applies to any goods to which an indication of the country or place in which they were made or produced or the name and the address of themanufacturer or person for whom the goods are manufactured is requiredto be applied under section 71 (Power to require goods to show indicationof origin), a false indication of such country, place, name or address; or

(e) tampers with, alters or effaces an indication of origin which has beenapplied to any goods to which it is required to be applied under Section 71 ;or

(f) causes any of the things as detailed above,

If proven, the accused shall be punished with imprisonment for a term not lessthan six months which may extend to three years and with a fine not less thanfifty thousand rupees which may extend to two lakh rupees. The court forspecial reasons recorded in writing may sentence the accused to imprisonment



92

less than three years or with a fine less than fifty thousand rupees. The accusedmay take the defence that he acted “ „without intent to defraud‟ and if provhe shall be absolved of the liability.

A person who sells goods to which false GIs have been applied pursuant tosection 40 shall be punishable with imprisonment or with fine unless he provesthat he – (a) he has taken all reasonable precautions against committing an offence and

that he at the time of commission of the offence had no reason to suspectthe genuineness of the GI or that any offence has been committed inrespect of the goods; or

(b) that on demand of the prosecutor he gave all the information with respectto the person form whom he had acquired such goods; or

(c) that he had acted innocently

It was held in Shantilal Uttamram Mehta v Dhanji Kanji Shah (1961) 63 Bom LR 69that whether an accused took all “reasonable precautions” against committing offence against this section is one of fact and will have to be determined withreference to the circumstances of each case.

Section 41 clearly states that a person who has already been convicted for theaforesaid offences of falsifying, falsification of GIs or selling goods with false

GIs shall be liable for enhanced penalty for subsequent convictions for the sameoffence. Employees if charged of the above said offences can take the defenceas enumerated in Section 47. Also when a person is accused of the above saidoffences namely under Sections 39 or Section 40 or Section 41 he may plead thatthe registration of the GI, infringement of which he has been accused, is invalidpursuant to Section 48. Once the Court is satisfied that this defence is tenablethen it may stop further proceedings in the prosecution to enable the accused tofile an application before the Appellate Board under the Act, for the rectificationof the register. However, the accused has to make such an application within aperiod of three months failing which the case against him will proceed, i.e. theprosecution will be allowed to go ahead from the stage where it was stopped.Incase before the initiation of the prosecution the accused has already made anapplication for rectification of the register concerning the GI on the ground ofinvalidity of registration and the same is pending before the tribunal then in sucha situation too the prosecution proceedings will remain suspended till the finaldisposal of such rectification application.



93

Section 50 (2) clearly lays down that no court inferior to that of a MetropolitanMagistrate or Judicial Magistrate of first class shall try an offence under this Actand Subsection (3) lays down that the above stated offences under Sections 39,40 and 41 are cognizable. Sub section (4) enacts that a police officer not belowthe rank of Deputy Superintendent of Police or equivalent, if he is satisfied that acognizable offence has been committed or is likely to be committed, may searchand seize – without warrant- the goods, die, block, machine, parts, plates or otherinstruments or things involved in the commission of the offence, and wheneverfound shall be produced before the magistrate at the earliest. However, theproviso to Sub section (4) clearly mandates that the police officer before makingany search and seizure, shall obtain the opinion of the Registrar on the factsinvolved in the offence relating to the GI and shall abide by the opinion of theRegistrar. This proviso clause corresponds to that of the proviso clause toSection 115(4) of the Trade Marks Act, 1999 which mandates such prior opinion

of the Registrar. Often aggrieved parties have objected to this clause as to theRegistrar‟s opinion before police action as it might delay the proceedings. Treason can be found in the fact that since courts have differed in the matter ofdetermining similarity between two marks, the legislature apparently thought itnecessary not to leave the question entirely on the police officer, before makingany search and seizure, is required to obtain the expert opinion of the Registrarof Trade Marks on the facts involved in the offence and abide by such expertopinion. However, what is needed is a judicial application of the mind by thepolice officer concerned aided by the expert opinion of the Registrar.

Any person aggrieved by such seizure of goods or the machine parts or has anyinterest in the same may apply to the Judicial Magistrate for restoration and theMagistrate after hearing the applicant and the Prosecution shall make appropriateorders.

It should also be mentioned that in all such offences the goods on which falseGIs have been applied are liable to be forfeited and the court may order theirdestruction or disposal as it thinks fit though certainly the accused whetherconvicted or acquitted may appeal against such forfeiture (section 46).

Other offences are enumerated in Sections 42, 43 & 44 and basically pertain tomisleading the public as to the status of the GI. Section 42 lays clearly prescribesimprisonment or fine or both for anybody who misrepresents that a GI which isnot registered is a registered GI or is registered with respect to class of goods

when infact it is not or misrepresents that registration of a GI gives him or heran exclusive right to use the same when infact the registration does not.Subsection (3) also indicates that while using a GI to indicate registration the



94

words “registered geographical indication” or any other expression, symbol sign like “ R.G.I” may be used. Section 43 prescribes penalty for impropedescribing a place of business as connected with the GI Registry and Section 44for falsification of entries in the register. However, no court shall takecognizance of these offences under Sections 42, 43 or 44 except on complaint in

writing made by the Registrar or any other officer authorised by him in writing.

Often such offences of infringement and piracy are committed by corporate andto fix responsibility for the same becomes a little difficult and hence, Section 49has been inserted which clearly lays down that if such offence is committed by ancompany every person in charge of and responsible to the company for theconduct of its business at the time of the commission of the offence shall bedeemed to be guilty of the offence and shall be liable to be proceeded against andpunished accordingly.

No doubt infringement, piracy, falsification, misrepresentation has been madenow serious offence and the legislature as can be deduced from the foregoingdiscussion taken a strong view of the same and made them penal offences.

ConclusionClearly the Indian legislation on the GI exhaustively outlines the registration andprotection mechanism for GIs in consonance with the prevailing frameworkcreated through the TRIPS Agreement. The Basmati rice case may have given

the impetus to enact such legislation but increasingly there was realization as tothe economic benefits, which can be derived from effective protection of GIs.

The international regime does lay down certain framework for effectiveprotection if intellectual property but ultimately this framework depends on thedomestic legislation of a country. India too like other countries have no createdan extensive and comprehensive framework for protection of intellectualproperty rights.

References

Books

1) Alan S Gutterman, Bentley J Anderson, Intellectual Property in Global markets A Guide for Foreign Lawyers and Managers,1997 Kluwer Law International TheHague / London / Boston.



95

2) Amanda Michaels, A Practical Guide to Trade Mark Law , Second Edition,1996 Sweet & Maxwell London.

3) Carlos M. Correa, Intellectual Property Rights, the WTO and Developing CountriesThe TRIPS Agreement and Policy Options , 2000 Zed Books Ltd. London &New York.

4) Daniel Gervais, The TRIPS Agreement Drafting History And Analysis,1998Sweet & Maxwell London

5) David I. Bainbridge, Intellectual Property,2002 Longman New York; HarlowEngland.

6) Duncan Matthews, Globalising Intellectual Property Rights The TRIPS

Agreement , 2002 Routledge London and New York.7) D.P. Mittal: Trade Marks, Passing Off & Geographical Indications of Goods, Law

and Procedure (September 2002 Taxmann Allied Services (P) Ltd. NewDelhi)

8) Dr. Raghbir Singh: Law Relating to Intellectual Property (A complete comprehensimaterial on Intellectual Property Covering Acts, Rules, Conventions, treati

Agreements, Case-Law and much more) Volume 1 (2004 Edition, UniversalLaw Publishing Co. Pvt. Ltd., Delhi)

9) Fredrick Abbott, Thomas Cottier & Francis Gurry, The InternationalIntellectual Property System: Commentary and Materials,Part One, 1999 KluwerLaw International The Hague / London / Boston.

10) Friedrich- Karl Beier and Gerhard Schricker (ED.), IIC Studies Studies inIndustrial Property and Copyright Law, Volume 18, From GATT to TRIPS – The Agreement on Trade Related Aspects of Intellectual Property Rights,1996 MaxPlanck Institute for Foreign and International Patent, Copyright andCompetition Law, Munich.

11) J. Audier, TRIPS AGREEMENT Geographical Indications , 2000 EuropeanCommission.

12) Jayashree Watal (Ed.), Intellectual Property Rights in the WTO and DevelopingCountries,2001 Kluwer Law International The Hague / London / Boston.



96

13) John Revesz, Trade Related Aspects of Intellectual Property Rights,ProductivityCommission Staff Research Paper, AGPS, Canberra.

14) K.C. Kailasam, Ramu Vedaraman: Law of Trade Marks & GeographicalIndications (Exclusive Commentary on the Trade Marks Act, 1999 &Geographical Indications of Goods (Registration and Protection Act), 1999) Law,Practice & Procedure(2003 Edition, Wadhwa and Company Nagpur, India)

15) Lionel Bently and Brad Sherman, Intellectual property law,2001 OxfordUniversity Press Oxford.

16) Marshall A. Leaffer (Ed.), International Treaties on Intellectual Property,1990 The Bureau of National Affairs, Inc. Washington, D.C.

17) Melvin Simensky, Lanning G. Bryer, The New Role of Intellectual Property inCommercial Transactions,1996 Supplement John Wiley & Sons, INC. New

York / Chichester / Brisbane / Toronto / Singapore.

18) P. K. Mittal & O. P. Chadha, Supreme Court on Trade Marks, Copyright,Patents & Designs 1950-2004. ( 2004, Om Law Book House Delhi)

19) Ray Steinwall, Trade Practices Act 1974, Butterworths Annotated Acts , 2003LexisNexis Butterworths, Australia.

20) Taxmann‟s,Trade Marks Act 1999, Geographical Indications of Goods(Registration and Protection) Act 1999, Copyright Act as amended by Copyrig(Amendment) Act 1999 , Taxmann Allied Services (p.) Ltd. New Delhi.

21) WIPO Intellectual Property Handbook: Policy, Law and Use , 2001 WIPOPublication no. 489(E).

Articles

1) WIPO, International Framework for the Protection of Trademarks and Geographicaindications,2003 WIPO/TM/BEY/03/1

http://www.wipo.org/arab/en/meetings/2003/tm_bey/doc/wipo_tm_bey_03_ 1.doc > (31/10/2003)

http://www.wipo.org/arab/en/meetings/2003/tm_bey/doc/wipo_tm_bey_03_1.doc







97

2) WIPO National Seminar on the Protection of Trademarks and GeographicalIndications, Economic Importance of Trademarks and Geographical indications andtheir use in commerce , 2003 WIPO/TM/BEY/03/3http://www.wipo.org/arab/en/meetings/2003/tm_bey/doc/wipo_tm_bey_03_3.doc > (31/10/2003)

3) Sergio Escudero, International Protection of Geographical Indications andDeveloping Countries.

http://www.southcentre.org/publications/geoindication/toc.htm#TopOf Page > (30/10/2003)

4) Sabrina Lucatelli, Appellations of Origin and Geographical Indications in OECD Member Countries : Economic and Legal Implications,

COM/AGR/APM/TD/WP(2000)15/FINALhttp://www.olis.oecd.org/olis/2000doc.nsf/4f7adc214b91a685c12569fa005d0ee7/c125692700623b74c12569ba00439046/$FILE/00087299.DOC >(4/11/2003)

5) Eleanor K. Meltzer, Geographical Indications and Trademarks: IntellectualProperty Any Way You Slice It, (WIPO/GEO/SFO/03/3, June 30), 2003,

Worldwide Symposium on Geographical Indications organized by WIPO& USPTO)http://www.wipo.org/meetings/2003/geoind/en/documents/doc/wipo

_geo_sfo_03_3.doc > (30/10/2003)

6) Intellectual Property why do Geographical Indications matter to us http://europa.eu.int/comm/trade/miti/intell/argu_en.htm >(1/11/2003)

7) WTO talks: EU steps up bid for better protection of regional quality product,http://www.ictsd.org/ministerial/cancun/docs/EC_GIs.pdf >(4/11/2003)

8) TED Case Studies, Basmati Case Number: 493; Case Mnemonic: Basmati; Case Name: India-US Basmati Rice Dispute, http://www.american.edu/projects/mandala/TED/basmati.htm >(5/11/2003)

9) Geographical Indications: Background - Definition - Importance - Issues - UProtection – Contact,




http://www.southcentre.org/publications/geoindication/toc.htm#TopOfPage



http://www.olis.oecd.org/olis/2000doc.nsf/4f7adc214b91a685c12569fa005d0ee7/c125692700623b74c12569ba00439046/$FILE/00087299.DOC



http://www.wipo.org/meetings/2003/geo-ind/en/documents/doc/wipo_geo_sfo_03_3.doc





http://www.ictsd.org/ministerial/cancun/docs/EC_GIs.pdf

















98

http://www.uspto.gov/web/offices/dcom/olia/globalip/geographicalindication.htm > (28/10/2003)

10) Review under Article 24.2 of the Application of the Provisions of the Section ofTRIPS Agreement on Geographical Indications. Checklist of Questions Respon

from Australia, Documents IP/C/13 and IP/C/13/Add.1,http://www.dfat.gov.au/ip/gi_response.pdf > (6/11/2003)

Online Resources and Websites:1. www.lexisnexis.com 2. www.webspirs.informit.com.au 3. www.wipo.org 4. www.wto.org

5. www.geographicindications.com 6. www.southcentre.org

7. www.europa.eu.int 8. www.patentoffice.nic.in 9. www.uspto.gov 10. www.ictsd.org 11. www.google.com.au 12. www.rediff.com 13. www.bitlaw.com

http://www.uspto.gov/web/offices/dcom/olia/globalip/geographicalindication.htm



http://www.dfat.gov.au/ip/gi_response.pdf


http://www.lexisnexis.com/


http://webspirs.informit.com.au/




http://www.wto.org/

http://www.wto.org/














http://www.google.com.au/



http://www.rediff.com/



http://www.bitlaw.com/












http://www.wto.org/





