Trademark rights over logos and phrases

Understanding the test of deceptive similarity under Trademark Law

Group 2
Aditya Agarwal B003
Harsh Agarwal B004
Soumya Dabas B021
Abhimanyu Kaul B033
Saumya Srivastava I055
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Trademark Act, 1999
• Any symbol, logo, color, phrase, etc. which acts as an indicator of a product becomes the ‘trademark’ or brand
of that particular product
• A trademark forms an integral part of a business’s identity, market value, branding, and overall reputation. So,
every Trademark should not only be unique but must be easily distinguishable by a consumer of average
intelligence
• The Trademark Act,1999 complies with the TRIPS Agreement of the World Trade Organization
• Section 2(h) of the Act defines deceptively similar as: A mark shall be deemed to be deceptively similar to
another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion
• Sub-section (2) bars registration when a trademark is identical with or similar to an earlier trademark and is to
be registered for goods or services which are similar to those for which the earlier trademark is registered. It
has to be shown that the earlier Trademark is well-known in India and the use of the later mark would take
unfair advantage of or be detrimental to the distinctive character or repute of the earlier Trademark

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Why is the law required?
• A deceptively similar mark may lead the consumer to make an error into thinking that a certain good has
another origin point, which the consumer associates with the original product/mark. To consider
resemblance, two important factors are:
(a) who are the persons whom the resemblance must be likely to deceive or confuse, and
(b) what rules of comparison are to be adopted in judging whether such resemblance exists.

• Trademarks in India are guaranteed under the Trademarks act, 1999. Section 135 of the act provides
statutory remedies for both registered and unregistered trademarks. However, as per Section 28, registering
under this act will be beneficial as it gives proprietor exclusive rights and benefits to his registered product.
Two types of remedies available –

Trademark Infringement Passing Off

Registration mandatory. When exclusive rights
under Section 28 are violated.
Plaintiff is only required to establish that infringing
mark is deceptively similar to the registered mark in
respect to similar goods/ services and no further
proof is required as there is presumption of
confusion
Unregistered trademarks. When a product is
deceptively similar to the plaintiff’s product
Plaintiff is not only required to establish deceptive
similarity of two contesting mark but also require to
prove deception or confusion among public and
likelihood of injury to the Plaintiff’s goodwill.
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 Conditions for claiming damages
• An unauthorized person uses a trademark that is
identical or deceptively similar to a registered trademark
• Trademark has to be reputed or well known amongst
consumers especially in the area where the said
knockoff is being distributed.
• There has to be a misrepresentation, hence confusing
the consumers
• This causes injury, loss, and ultimately damage the
business of the company

Remedies Available
A suit can be filed under section 134 of Trademark Act,
1999 in the district court. The jurisdiction could be either
where the plaintiff’s head office is or where the cause of
action arose.
• Injunction - stay order against the use of the
trademark Compensatory damages
• Punitive damages
• Geographical restriction
• Reimbursement of legal costs
Factors to test for deceptive similarity
Relatedness of Goods and Services
Similarity of Marks
Similarity in Appearance
The extensive trail of landmark
judgments has laid down the path for
the formation of principles to assist
legal enforcement, which include
visual and phonetic similarity, rule of
entirety, rule of disintersection, test
of likelihood and confusion, goodwill
and recognizable reputation.

Similarity in Sound
Principle of entirety has to be
applied i.e. all aspects of the above
Similarity in Meaning
criteria shall be considered in its
entirety and the mark or any of its
Design Marks elements shall not be dissected and
judged on its parts. The marks shall
be taken comprehensively in totality
Likely to Deceive and only definitive similarity would
constitute infringement.
 TRADEMARK REGISTRATION
WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED ?

Under the Indian trademark law the following are the types of trademarks that can be registered:

 Product trademarks: are those that are affixed to identify goods.

 Service trademarks: are used to identify the services of an entity, such as the trademark for a
broadcasting service, retails outlet, etc. They are used in advertising for services.

 Certification trademarks: are those that are capable of distinguishing the goods or services in
connection with which it is used in the course of trade and which are certified by the proprietor with
regard to their origin, material, the method of manufacture, the quality or other specific features

 Collective trademarks: are registered in the name of groups, associations or other organizations for
the use of members of the group in their commercial activities to indicate their membership of the
group.

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Objective of Trademark Act:

An act to amend and consolidate the Law relating trade marks, to provide for registration and
better protection of trade marks for goods and services and for prevention of the use of
fraudulent marks.

Advantages of Trademark Registration

1. Protects your hard earned goodwill in the business

2. Protects your Name / Brand Name from being used in a same or similar fashion, by any other

business firm, thus discourages others from cashing on your well built goodwill
3. Gives your products a status of .Branded Goods.

4. Gives an impression to your customers that the company is selling some standard Products or Services
5. The exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade
mark is registered.

6. To obtain relief in respect of infringement (misuse by others) of the trade mark.

7. Power to assign (transfer) the trade mark to others for consideration.

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Procedure/Steps for Trademark Registration
1. Filing of an application for registration by a person claiming to be the proprietor of
a trademark

2. Examination of the application by the Registrar.

3. Publication of the application after or before acceptance of the application.

4. After publication if any person gives notice of his opposition to the registration in
three months

5. If the opposition has been decided in favour of the applicant of the registration of
trademark, the Registrar shall register the Trademark.

6. On the registration of the Trademark the Registrar shall issue to

the applicant a Trademark Registration
Term/Duration of a Trademark in India

The term of registration of trademark is 10 (Ten) years, but may be renewed subject to
the payment of the prescribed fee, in accordance with the provisions of the Trademarks
Act, 1999. An application for renewal of a trademark can be filed within six months
from Constantia (Body) the expiry of the last registration of trademark.

Use of the .TM. and ® symbols

Generally, one who has filed an application (pending registration) can use the TM
(trademark) designation with the mark to alert the public of his exclusive claim. The
claim may or may not be valid. The registration symbol, ®,may only be used when the
mark is registered.

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 Trademark : Logos and Phrases
Your logo becomes a trademark when
it appears on labels, packaging or the
product itself and the public
recognizes the company behind that
particular combination of colors and
shapes.
Logos Phrases Can it be When it
becomes a
registered
trademark
It is capable of representing graphically
and distinguishing the goods of one
from another and it creates a
connection with the person who is
selling such goods with the slogan. So,
for example, “I am loving it”
The trademark symbols ® and ™ can be added to a design
to signify that a logo is a trademark. You can use the ®
symbol only for registered trademarks. Though you aren’t
required to use the trademark symbols of ™ or ®, doing so
signifies that someone claims ownership of the mark,
which could make other businesses think twice about
“borrowing” part of your bran
Logo qualify How to use
trademark
to register,
symbols
Though the Patent Office approves hundreds of
thousands of trademark applications annually,
not all trademarks are eligible for registration.
Trademarks cannot be offensive or misleading,
for example. Applications for trademarks that
are too similar to existing ones will be denied
unless the products are completely unrelated, as
in the case of Apple
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Case Studies

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 Parle Products vs. Future Consumer

Case background

• The plaintiff (Parle Products) is a key player in the Indian food products category
• Its flagship product ‘Parle G’ is the world’s largest selling biscuit brand
• Firm also sells biscuits under the trademarks ‘Monaco’, ‘Krackjack’ and ‘Hide & Seek’
• In Sep 2020, plaintiff noticed striking similarities between the packaging of their
products and those of the defendants i.e. ‘Crack O’, ‘Kracker King’ and ‘Peek a Boo’
• Plaintiff alleged that the packaging of the defendant’s products had been substantially
reproduced from theirs and therefore, it appeared deceptively similar
• Plaintiff submitted before the court that the defendants had copied their packaging,
including many distinctive elements

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• The Court noted at the outset that prima facie, the
copyrights seemed to have been duly acquired by
the plaintiffs with respect to the packaging used in
their products “Monaco”, “Krackjack” and “Hide &
seek”
• Furthermore, these products had also acquired a
substantial amount of goodwill and reputation in the
market
• The Court proceeded to compare the packaging
used in the rival products of the two parties by
perusing the following photographs
• Finding no doubt about the manner in which the
defendant had copied the plaintiffs packaging and
that the trade labels were simply reproduced from
the plaintiff’s products
• The Court stated that it was not possible that the
similarities were due to a co-incidence and the
defendants must have had the plaintiff’s products
before them while designing their trade labels and
packaging

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Court ruling
• It was noted by the court that a comparison of the rival products hardly leaves any
doubt about how Defendants have blatantly copied Plaintiffs' Packaging/labels
• The court ordered that –
a) The defendants, by themselves, their directors, servants, agents, stockiest, dealers,
distributors, packagers, manufacturers and all persons acting on their behalf be
restrained by an injunction from infringing the plaintiffs’ copyright and using the
impugned packaging
b) The Court Receiver, High Court, Bombay be appointed as the Receiver of defendants’
impugned products bearing the impugned packaging with all powers to enter in the
premises of defendants and their directors, servants, agents, dealers, stockiest,
manufacturers, packagers and distributors at any time of the day or night, to seize and
take charge, possession and control of the same
 Toyota vs. Prius Auto Industries

Case background
• Toyota (the Plaintiff) is a globally known automobile manufacturer incorporated in Japan. Between 1997-
2001, it has launched the world's first commercial hybrid car called 'Prius' in Japan, U.K., U.S.A., Australia
etc. They obtained trademark registrations for the word 'Prius' in Japan in 1990, and eventually in other
jurisdictions globally thereafter

• In Dec 2009, Toyota filed a case for permanent injunction against M/S Prius Auto Industries Ltd. & Ors.
(the Defendant) before the Single Bench of the Delhi High Court on the grounds that they were using their
'trademark' without their consent, leading to an unfair advantage of their reputation and goodwill

• The Single Bench granted an ex-parte ad-interim injunction restraining the Defendants from using the
Plaintiff's registered trademarks and the mark 'Prius' in respect of auto accessories

• However, the Division Bench of the Delhi High Court held that the grant of injunction in favor of the Plaintiff
insofar as the trademark 'Prius' is concerned was not justified. The Court held that the Territoriality
Doctrine would hold the field and the Plaintiff should necessarily establish that its reputation had spilled
over to Indian market prior to April 2001, i.e., date of adoption of the mark by the Defendant
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 Appeal to the Supreme Court

• The plaintiff appealed to the Supreme Court. The issues before the court were –
a) Whether M/S Prius Auto Industries Ltd. & Ors are guilty of passing off their products under the trademark
Prius as those of the Plaintiff thereby injuring the reputation of the Plaintiff in the market?
b) In case of trademark passing off claim what should be taken into consideration: the territoriality principle
or the universality doctrine?

• The plaintiff argued that to claim goodwill and reputation, advertisement and promotion of the mark
through different forms of media in that geographical area is adequate. Herein, since 1997, the mark
'Prius' was widely publicized and advertised in leading newspapers and magazines with wide circulation
all over the world. It further stated that 'to establish goodwill and reputation it is not necessary that the
mark should be recognized by every member of the public and it would be sufficient if persons associated
with the industry/goods are aware of the mark. It was also argued that the question who has registered
the 'Prius' trademark is irrelevant to the issue of passing off
• M/S Prius Auto Industries Ltd. defended itself by stating that it has adopted and used the mark from April
2001 and obtained two registration for the trademark Prius in the year 2002-2003. Further, it was stated
that Toyota adopted the mark in India in 2009. They also pleaded that Toyota did not advertise the mark at
all prior to April 2001 in India. It was urged that the Territoriality Principle should be the primary focus for
the present case and not the Universality Doctrine

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 Judgement

• Interpreting the meaning of trans-border reputation, i.e. the global

reputation of the brand when spilling into India, the judgement
described that just acquiring goodwill globally would not be
sufficient and it is important that the mark has earned goodwill in
India at the relevant time i.e. before the date of adoption of the
mark by the opposite party
• The Apex Court agreed that the mark of Toyota 'Prius' has
acquired goodwill and reputation globally much before Prius Auto
Industries started to use (2001) and registered it in India (2002-
2003). But, Toyota failed to give satisfactory evidence to show that
it has acquired substantial goodwill for its car under the name
'Prius' in the Indian market prior to April, 2001, i.e. date of adoption
of the mark by the Prius Auto Industries
• It opined 'the courts must necessarily have to determine if there
has been a spill over of the reputation and goodwill of the mark
used by the claimant who has brought the passing off action. In
the course of such determination it may be necessary to seek and
ascertain the existence of not necessarily a real market but the
presence of the claimant through its mark within a particular
territorial jurisdiction in a more subtle form which can best be
manifested by the following illustrations, though they arise from
decisions of Courts which may not be final in that particular
jurisdiction'
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South Korea: Louis Vuitton vs. Louis Vuiton Dak

• In one of the more shocking examples of international

trademark infringement, a South Korean fried chicken
restaurant recently lost a trademark battle with designer
Louis Vuitton. The court ruled in the designer's favour
after determining that the restaurant's name of Louis
Vuiton Dak was too similar to Louis Vuitton. In addition to
the name infringement, the restaurant's logo and
packaging closely mirrored the designer's iconic imagery.

• The restaurant was ultimately hit with another 14.5 million

fine for non-compliance, after changing their name
immediately after the first ruling to LOUISVUI TONDAK.
Many brands can avoid similarly expensive legal battles
by avoiding mirroring their brand closely after another,
even if the products and purchase channels have nothing
in common.

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China: 3M vs. 3N
Case background

• The US company 3M won a recent victory at the

Supreme People’s Court (SPC) when the SPC
rejected a petition for a retrial by Changzhou Hua
Wei Advanced Material Co Ltd (CHW) in respect of
an infringement decision over the trademark 3N

• CHW was unhappy with being ordered to pay RMB

3.5 million and filed a petition to the SPC for a retrial
seeking to reduce the damages to the statutory limit
of Y500,000 ($75,000). To the delight of foreign
brand owners, the SPC upheld the ruling of the
Zhejiang Higher People’s Court on the filing and the
damages awarded in favour of 3M

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China: 3M v. 3N
Overall trademark similarity
• The court compared the parties’ marks – focusing on the composition and structure – and the goods
that the marks are used on. When the two products were examined, the court found that the 3M and 3N
were both positioned in almost the same place on the reflective tape product, and were both used on
red and white coloured reflector tape, which made the products confusingly similar to the relevant
consumer
• The court also found that the similarity gave the impression that the products were either the same or
related and that there might be a connection between CHW and 3M. The SPC supported the court’s
reasoning by holding that when considering whether two trademarks are similar, it is not only the overall
appearance of the mark that needs to be considered but also the level of attention of the relevant
consumer. In addition, 3M’s products were well known in the reflective tape industry in China. Further, it
was an important factor that the safety certification mark CCC was found on both parties’ products

Good faith 
• The court did not believe that CHW chose to use 3N in good faith. In fact, it found that CHW had
knowingly and without permission started using a mark that was confusingly similar to the 3M trademark
for the purpose of gaining market share. It did not help CHW’s case that in 2013 the Trademark Review
and Adjudication Board had ruled not to register the 3N mark in Class 19 due the existence of a prior
registration by 3M. The SPC also held that the 3N mark had not been used in good faith because CHW
chose to use a mark that closely resembled a pre-existing and well-known highly distinctive mark.
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China: 3M v. 3N
Determining damages
 
3M could not prove its loss of profit due to the infringement, however the court considered both the improper
and illegitimate conduct element, as well as economic factors in determining the damages:

• CHW had produced and sold the 3N product for an extended period of time
• CHW was not a small company and had high registered capital
• The company’s overall performance was trending upwards
• Its sales covered all of China
• It had refused to provide reports and financial data on production quantities and sales profits relating  to
the infringing goods. This seemed to have been an aggravating factor when the court determined the
damages

Even though it was not possible to ascertain the actual gains from the infringement, the court took a dim
view of CHW’s refusal to provide financial data. It therefore held that CHW had netted a high profit from the
sale of 3N products, not least since 3M products are so well- known and popular in China

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Larsen & Toubro Limited (L&T) vs Leuci Communications & Ors.

Case Background
On 25th September, 2006, Mr Santanu Das, Sales Engineer in
the Jamshedpur office of the plaintiff-company purchased a
charger from a shop in Muzaffarpur in Bihar and found that
though the charger was made in China, L&T logo (in a circle) was
printed on the top of the carton and it was also found engraved
on the charger itself.

• It is alleged that use and adoption of the mark L&T by the defendants is likely to cause confusion
and give an impression to the public that the defendants are associated with the plaintiff-company.
• It is also alleged that the defendants have adopted/copied the mark of the plaintiff in respect of
goods mentioned in Class 9 which are covered by the plaintiff's registered mark and have thereby
infringed the said trademark.
• It is also claimed that the whole intention of the defendants in adopting and using the trademark/logo
of the plaintiff is to pass off their products as those of the plaintiff and to represent to the public that
they are in some way connected with the plaintiff-company.
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Larsen & Toubro Limited (L&T) vs Leuci
Communications & Ors.

Plaintiff’s defence
• The mark/logo LT has acquired so much distinctiveness that its use by any person other than the
plaintiff is bound to cause confusion among the traders and the members of the public and convey an
impression that the person using the said mark/logo was a subsidiary or associate of the company or
is connected with it
• The names L&T or its abbreviated form, LT have been used exclusively and extensively by the
plaintiff for over half a century in India and have come to be exclusively associated with it and/or its
group companies
• The goods and services under the name L&T have come to be associated with goods and services of
highest quality
• The plaintiff-company had turnover of Rs 10124 crores, 10212 crores and 13965 crores during the
years 2002-03, 2003-04, 2004-05 respectively whereas it had profit after tax of Rs 433 crores, Rs 533
crores, Rs 984 crores respectively during this period
• The plaintiff-company incurred expenditure of Rs 43 crores, Rs 26 crores and Rs 30 crores
respectively during these years on advertising its mark and products
• The plaintiff has neither authorized nor permitted the defendants to use the mark/logo

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Larsen & Toubro Limited (L&T) vs Leuci
Communications & Ors.

Reliefs claimed by plaintiff

• The plaintiff has sought an injunction restraining the defendant from using its trademark/logo LT or
any other mark which is deceptively similar to the registered trademark/logo of the plaintiff-company
• The plaintiff has also sought injunction restraining the defendant from passing off its goods/products
as those of the plaintiff- company
• Damages amounting to Rs 20,01,600/- have also claimed by the plaintiff from the defendants
• The plaintiff has also sought destruction of the infringing goods and packing material, etc.

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Larsen & Toubro Limited (L&T) vs Leuci
Communications & Ors.

Judgement
• The registration of trademark/logo LT (in a circle) has been granted to the plaintiff-company not only
in respect of telephones, but also their parts and accessories. It is difficult to dispute that mobile
phones would be included in the list of telephones. A charger of a mobile telephone is an essential
accessory and the mobile telephone cannot be charged without using the charger meant for the
purpose. Hence, it cannot be disputed that the plaintiff-company holds copyright in mark/logo LT
(written in a circle) in respect of mobile phone chargers and this right is being held by the plaintiff-
company continuously since 24th January, 2003, the registration being valid for 10 years
• A trademark is infringed if either the same mark or a mark deceptively similar to that mark is used,
without a license from its proprietor. In the case before this Court, the mark/logo being used on the
carton of the charger being a reproduction of the registered trademark/logo of the plaintiff company,
the defendants have infringed the registered trademark/log of the plaintiff by using that mark on the
carton of their charger
• Defendants were restrained from manufacturing, selling, exporting, distributing or marketing  any
mobile charger using the registered mark/logo LT (in a circle) of the plaintiff company either on the
product or on its packaging. Defendants are also directed to destroy within eight weeks all the
chargers and packaging, which bear the registered mark/logo of the plaintiff company. The plaintiff
company has not proved any actual damages
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The Coca-Cola Company vs. Bisleri International Pvt.Ltd

Case Background
• The plaintiff is the largest brand of soft drinks operating in 200
countries and the defendant in this case is a well-known Indian
brand which is highly regarded for its bottled water
• On September 18, 1993, the defendant sold the trademarks,
formulation rights know how, intellectual property rights and
goodwill etc. of their MAAZA inter alia to the plaintiff

• In March 2008, the defendant became aware of the fact that the plaintiff had filed for registration of
MAAZA trademark in Turkey. On September 7, 2008, the defendant sent the plaintiff a legal notice
repudiating the Licensing Agreement thereby ceasing the plaintiff from manufacturing MAAZA and using
its trademarks etc. directly or indirectly, by itself or through its affiliates
• As per the plaintiff, the notice claimed that the plaintiff had breached the said agreement by attempting to
register MAAZA in Turkey as the agreements/assignments between the parties allowed the plaintiff to
use MAAZA in India alone. The notice also stated the defendant’s intention to start using the trademark
MAAZA in India. The plaintiff subsequently filed a lawsuit
Holding

• The defendant prayed for the vacation of this court's order dated 15 October 2008. The objection was
mainly on the ground that this court, Delhi High Court, lacks jurisdiction to hear the present suit. The
reasons of plaintiff in the plaint to state that this court has jurisdiction are that the defendant is
carrying on business within its jurisdiction, the plaintiff has further supplemented his submissions by
adding that the license agreement dated 13th May 2004 has originated within the jurisdiction of this
Court. A newspaper report showing the defendant intention to use the trademark MAAZA in India has
been published in the Delhi edition of Times of India

• Therefore, there is no bar under the said provision as the plaintiff is carrying on business by selling
and advertising its products within the territory of this court. The plaintiff has argued that no one can
dispute that the product of the plaintiff is available in every nook and corner on extensive manner in
Delhi under the trademark MAAZA. Since the court at this stage has to take the prima facie view of
the matter and see the averment made in the plaint, therefore in view of the mandate of Section 134
(2) of the Act, there is no bar against filing this suit in Delhi and having jurisdiction

• The grounds on which the plaintiff established that the defendant had an intention to use the mark as
appeared from its notice and as per newspaper reports published in the Delhi edition of Times of
India. The plaintiff’s argument that the defendant has a factory at 66, Shivaji Marg, New Delhi clearly
states the misconduct. In accordance with its own admission in the present application, the defendant
also has a place of business in Delhi where it is bottling water there and that its registered office is in
Mumbai are facts of no consequence
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• The invoices filed by the Local Commissioner which were recovered from M/s.Varma International
show that the latter has been exporting MAAZA products to one Mr. Pars Ram Fruit and Spices in
Australia. The Local commissioner has also filed various documents issued by one M/s. MAAZA
Beverages Inc., New York pertaining to the purchase of MAAZA drinks which were addressed to M/s.
Parle Bisleri Pvt. Ltd

• This is further established from the certificate of registration of MAAZA issued by the Trademark office,
Australia in the name of M/s. Pars Ram Bros, Australia Pvt. Ltd. M/s. Varma International has admitted
during the course of the hearing that the said firm has been receiving orders to manufacture
beverages under the trademark MAAZA and defendant has regularly been exporting products under
the mark MAAZA on a large scale. it is established that the defendant no. 1 not only had the intention
to use the trademark MAAZA but in fact, directly or indirectly, the defendant was involved in the said
activities with other firms/companies

• It is well settled law that exporting of goods from a country is to be considered as sale within the
country from where the goods are exported and the same amounts to infringement of trademark as
per section 29 of the Trademarks Act, 1999. The plaintiff is the registered owner of the trademark
MAAZA

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Judgement

• Finally, in the light of the above stated reasons the Hon’ble Court granted an interim injunction
against defendant. The court said that there is a prima facie case in favor pf plaintiff and also the
balance of convenience also lies in favor of the plaintiff only and if the injunction is not issued the
plaintiff will suffer irreparable loss and injury. Therefore, the repudiation of the agreement by the
defendant was invalidated by the court of law and all the trademark rights of MAAZA were given
back to the plaintiff

• The Trademark is a unique symbol or word(s) used to represent a business or its products. Once
registered, that same symbol or series of words cannot be used by any other organization,
forever, as long as it remains in use and proper paperwork and fees are paid. As the definition
explains what trademark is, the present case is an elaboration to the definition of Trademark. If a
trademark is licensed by a corporation, no other corporation may use it, or it may constitute an
infringement. Also, this case has made it clear that a trademark of any organization can be
registered anywhere once there is an assignment conferring the rights entirely, be it within the
country or outside of it

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Yahoo Inc. vs Akash Arora

Case Background

• The plaintiff Yahoo Inc. was the owner of the trademark Yahoo
and the domain Yahoo.com which are both well-known marks
and have a distinctive repute throughout the world. They were
a registered company since 1995 and had their trademark
registered in 69 countries, India not being one of them
• The defendant started a company with the domain name of
Yahoo India which offered internet services similar to Yahoo
Inc. Aggrieved by this, Yahoo Inc. filed a suit seeking
permanent injunction to restrain the defendants to continue
their business under the impugned domain name of
‘Yahooindia.com’ or any other similar name
Arguments by the Plaintiff

• The counsel representing the plaintiff contended that the trademark “Yahoo’ and the domain
“yahoo.com” that belonged to the plaintiff were both well-known marks and had gathered ‘distinctive
reputation’ and ‘goodwill’ and hence the defendants by using the domain name of ‘Yahooindia’ were
passing off their goods and services as that of the plaintiff as the ‘yahooIndia’ was a ‘identical and
deceptively similar’ to the plaintiff’s trademark

• The counsel submitted that a domain name or trademark of the plaintiff was protected equally against
a passing off action as it would be in the case of a trademark infringement. By taking a deceptively
similar trademark and copying the general overlay of the plaintiff’s domain name, the defendant was
trying to pass of his service as that of the plaintiff

• To substantiate this, the counsel contended that users were aware that companies adopt the same
domain name over the internet as their trademark and have the country’s name in the domain as well
and thus while intending to use the services of the plaintiff, the users can easily end up on the domain
of the defendant. Lastly, the counsel submitted that the fact that defendants are operating in the same
line of service as that of the plaintiff’s shows that adoption of a deceptively similar name was done with
dishonest intention

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Arguments by the Defendants

• The counsel for the defendants, played down the allegations of the plaintiff and contended that the
application of provisions of Trademark Merchandise Act was limited to goods and hence was not
applicable in the present case. The counsel stated that the trademark/domain name ‘Yahoo!’ that
belonged to the plaintiff was not registered in India and hence no infringement action can be brought
by them

• Further, it was contended that an action of passing cannot be brought because the services that were
provided by the defendant and plaintiff could not be termed as ‘goods’ as under the Indian Trademarks
Act

• The Counsel also submitted that the impugned word, ‘Yahoo’ was could be found in a dictionary and
hence lacked any distinctiveness

• The counsel continued that defendant had used a disclaimer and there was no probability of deception
which implied that it did not amount to passing off

• The Counsel also refuted the plaintiff’s argument by submitting that people who used Internet were
literate and ‘technically educated’ and thus no user would reach the defendant’s site when he intended
to visit the domain of the plaintiff

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Judgement

• Accordingly, the Hon'ble Court held that the said word "Yahoo" had acquired distinctiveness and is
associated with the business of the Plaintiff. The use of domain name "yahooindia.com" by the
Defendant leads to passing off of the business of the Plaintiff as his own and hence the same shall be
permanently discontinued. Therefore, an injunction restraining the Defendant from using the impugned
mark was granted

• As the two trademarks/domain names ‘Yahoo!’ and ‘Yahoo India!’ were almost similar and the latter
offered services similar to those offered by the former and as the latter passed them off as being
offered by Yahoo Inc., the court held Akash liable for passing off and restrained him from using the
deceptively similar domain name

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Thank you!

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