The Boys Did Really Well !!

It is official now. IIT Law School will step forward to bring more laurels to the school. The team of Rutwik K.Rao, Vighnesh Kamat and researcher Bibhunanda Mishra stormed into finals of the Oxford University India Moot Court Competition on Constitutional Law 2013-14 organised by The Oxford University Society India alumni group. They have bagged 'the Best Memorial award' as well.

Vighnesh Kamat and Rutwik Rao share their experience very candidly with the blog. Here is the interview..

Blog: First and foremost, many many congratulations to you for this tremendous success and we all thank you for bring great pride to RG. 

                                      

Vighnesh: Thank you.                      Rutwik: Thank you very much.

Blog: How do you feel about your success in the Oxford University India Moot Court Competition 2013-14?

    Vighnesh: It is only when you participate in such competitions; you realize the level of talent outside and appreciate the learning experience gained in IIT.      

    
"I am glad to have reached the Finals; we attribute all of this success to our professors."

    Blog:  What were the teams you were up against?

Vighnesh: We were against Christ College, Bangalore and Jindal Law School in the prelims. We went against Christ College, Bangalore in the quarters, and NLSIU, Bangalore in the semis. We were pitted against Faculty of law, Delhi University in the finals.

  Blog: Which team in the competition was most fierce in their arguments? 
      How did you tackle them? How were the Judges during their interventions?

 Rutwik: Of all the rounds and teams we faced, I think the team from Christ College Bangalore in our quarter finals was the best. A good opponent brings out the best in you, they say. They brought out the best in our team too. That I think was also my personal best so far. The judge in that round really appreciated both team’s arguments and he would smile in acknowledgement, every time we came up with a creative argument. Arguing in the quarter final round tested us to the limit and we stood the test. Great fun!!

We came across OP Jindal Law School in our prelims, one of their speakers spoke really well, and later after the round I could not resist asking her about her “performance”. She told me she memorized everything. Kamat and I were pretty surprised and kinda impressed by her ability to remember so much.

"We operate very differently, Kamat and I. We are more spontaneous. We are extempore speakers. We think on our feet and this helped us when the judge posed all sorts of questions." 

 Since we hadn’t memorized anything, there was nothing to forget! 

    Blog:  According to you, what was the most challenging part of the Competition?

Vighnesh: The whole schedule was very hectic such that we had the qualifying rounds till the afternoon and then the quarter rounds at 7 pm. It was not the rounds but the wait which drained us throughout the day. 

"Maintaining tenacity under such circumstances was the most challenging part."

Blog:  How was your final Round Competition against University of Delhi? What strategy did you adopt while approaching the finals?

Rutwik: The Moot problem was beautifully drafted, I must say. There was ample scope for some brilliant arguments from both the sides and it was based on the Judicial Appointment Panel, which also happens to be the burning issue in the nation with the introduction of the Judicial Appointment Commission Bill, 2013.

"The only strategy we had in mind, which I think served us well was to stick to the facts, the law point and make submissions backed by relevant authority."

We were the appellants in the final round. The problem involved Art.124 (2) and its interpretation, and the amendment thereto, along with the introduction of Article 124A to the Constitution by way of an amendment under Art. 368.

The issues were whether the SC had the power to invalidate the amendment to the Constitution which complies with Art. 368, since the Union of India appealed the order by the SC which struck down the amendment as being unconstitutional by invoking the Basic Structure Doctrine.

On a preliminary reading, the respondent’s side appears to be stronger since there is judicial precedent in favor of the Collegium system and prima facie the amendment appears to be hit by basic structure doctrine laid down in Keshvananda Bharti case.  

While making the arguments on behalf of the Union of India (Appellant), we took a practical approach and as tempting as it was, we decided not to challenge the basic structure doctrine. Given the judicial precedence in its favor and challenging it would prove to be a futile exercise.

This was strategic since the respondents side assumed that we would challenge Kesavananda Bharti case which we did not. Instead we admitted to the Basic Structure Doctrine and set out to establish that the said amendment did not violate the basic structure and since it was in compliance with Art 368, it could not be invalidated.   

"So yeah, we thought out of the box and worked our way within the doctrine."

This approach helped us come up with some really brilliant arguments and we turned our handicap into our strength.

    Blog: Any major takeaways of the prelims that helped you in the advanced                   rounds of the competition?

Vighnesh: We learnt from the questions which were being asked to us as well as the rebuttals in the prelims and we incorporated those answers in our arguments in the subsequent rounds, so that such questions don't arise and are answered beforehand. In this way the opponents are also thwarted because their contentions have already been answered by us.

    Blog: What advice will you give to the other mooters?

Rutwik: My advice based on my limited exposure to Mooting would be to focus more on the facts, the law point and logic. Base your arguments on the same and back them up with authority. I believe reliance should be placed on judgments more than articles and critics opinions. Critic’s opinions are just that, “opinions”. They are not authorities which are binding or even persuasive. A lot of teams we came across in the Oxford Constitution Moot placed reliance on news articles, books and biographies and statements of retired judges etc. None of which is of much consequence in the court of law.

Also, one must understand the importance of thinking on your feet when it comes to mooting. Be open minded, good arguments will come. Take rebuttals seriously, it’s your last chance to leave an impression on the judge’s mind and improve upon any mistakes you may have made earlier.

Petitioners/Appellants must stick to facts and law points and the Respondents/Defendants must counter the arguments put forth by the Petitioners/Appellants.  

"After all, it’s an argument and not a presentation. Your focus must not be on finishing your speech in front of the judge. Instead your goal must be to satisfy any and all questions the judge might have for you."

Pick your team well. When you work with likeminded people, you’re half way through.

Remain calm. You’ll see things clearer. Specially the speakers.

"Finally, when it comes to mooting, there is no single strategy which works, you’ve got to evolve your own strategy; that will come with practice."

       Blog: And finally, describe your entire moot court competition experience in       one sentence.

Rutwik: It’s a thrilling experience, I highly recommend mooting for everyone, you’ll get a glimpse into what it feels like to be a lawyer. Researching, strategizing and finally arguing, the entire process gives you a high, its addictive I think.

Vighnesh: “The boys did really well.” (Both Laughs!!)

     Blog: Thank you very much for talking with the IIT Law Blog. Your experience will be helpful for us all. We wish you best of luck and great success ahead.

Rutwik: Thank you!!

Vighnesh: Thanks!

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Breakdown of the ‘Idea- Expression Dichotomy’ Doctrine

The doctrine that, only expressions are Copyrightable and not the underlying ideas, is referred to as ‘idea expression dichotomy’ and is one of the foundation pillars of modern Copyright Law. It is because of this doctrine that non literal expressions could also enjoy a protection. The doctrine has been relied upon by the Indian Courts in a number of decisions (for e.g., see the oft quoted judgment in the case of R.G.Anand v. Delux Films, AIR 1978 SC 1613).

The test to separate the copyrightable expressions from the underlying non copyrightable ideas is referred to as the ‘pattern test’ or ‘abstraction test’ and has emerged from the argument put forward by J. Learned Hand in the case of Nichols v. UniversalPictures Corp., 45 F.2d 119 (2d. Cir. 1930):

Upon any work, ...  a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play [or the work] is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright [the author] could prevent the use of his "ideas," to which, apart from their expression, his property is never extended...

In this quest to find out the dividing line between the expression and the underlying idea, Hand asks us to carry out a series of abstractions where each abstraction is coupled with filtration out of Copyrightable expressions. For the sake of clarity, consider the following example:

“Samba, mad with rage, murdered the treacherous Kaliya on that dark moonless night.” [Initial Expression]

First abstraction:

“Samba, mad with rage, murdered the treacherous Kaliya that night.” [Underlying Expression]

Second abstraction:

“Samba, mad with rage, murdered the treacherous Kaliya.” (Expression underlying the Underlying Expression)

Third abstraction:

“Samba, mad with rage, murdered Kaliya.” (Expression underlying the Expression underlying the Underlying expression

Fourth abstraction:

“Samba murdered Kaliya.” [The most general statement of what the initial Expression is about]

Justice Hand regards this ‘the most general statement’ as the idea which is not copyrightable.

However, such an approach presents to us a paradox because aren’t the words, “Samba murdered Kaliya”, too an expression. They are words of English language and language is an instrument of expression. Hence, to say that we have dissected the expression and found out the underlying idea is an absurd statement, for the course of such an exercise, pushes us to the realms of Psychology, which in itself is not an exact science. Because, whatever the idea we think through our faculty of reasoning, logic or aesthetics, as soon as is delivered to the external world, either through speech or pen or paint brush or an act of drama or dance, becomes an expression and no more remains merely a thought or an idea. Thoughts and ideas dwell in the kingdom of the brain and mind but as soon as they are delivered to the outside world, even in the most minuscule, raw and uncreative form, they are expressed, hence transform into an expression. Thus, for the purpose of finding out the underlying idea, telepathy and not ‘pattern’ or ‘abstraction’ test is required. Hence, to me, the doctrine that idea- expression dichotomy is a pillar of Copyright Law, appears to be incorrect. 

The doctrine also appears to be flawed because it makes the whole law subjective and renders unpredictability to the situation. Even if the outcome of a case does not get influenced by personal whims and fancies of the judge, yet in the absence of any bright line rule, the same situations may have different outcome when presented to different judges. The following illustration shall be useful:

Suppose you are the judge and the owner of the copyright in Spiderman approaches your court against the copyright owner in Nagraj alleging that the Naagrassi (Snake rope) coming out of the wrist of Nagraj is substantially similar to the spider web rope coming out of the wrist of Spiderman:

If you apply ‘abstraction’ test on the character of Spiderman to find out when the expression separates from the idea and thus what would be the scope of copyright protection, the following plausible abstractions come out:

Abstraction- Underlying Idea #1:

A rope like structure coming out from the wrist of the Superhero, made up of a material peculiar to the Superhero.

Abstraction- Underlying idea #2:

Use of a rope by the Superhero to swing in the air or to tie enemies.

In the absence of any guiding light or bright line formula, you are free to chose any of the above abstraction as the underlying non copyrightable idea- if you find the former as the idea, then the plaintiff will get a relief but if you find the later as the underlying idea, the defendant would be in a better position.

Then what is the way out? In my humble suggestion, we need to go to the basics of Copyright Law. Perhaps we must look into the creative aspects of the work and if the new work is creatively novel  then the work must enjoy a copyright protection. Hence, rather that traversing backward to abstract the underlying idea, we must keep the initial work (whose copyright has been alleged to have been infringed) as the starting point and then compare the later work with it. If the expression in the later work is creatively different then it is not infringing (Note: Here the degree of creativity must be much higher than the modicum of creativity, Eastern BookCompany v. D.B. Modhak, (2008) 1 SCC 1, because if creative aspects are present only in modicum quantities, then the new work is a mere adaptation).  And this decision, which would be based on the then prevailing facts, and not law should be decided not by judges, but by a jury comprising of artists and critiques in that field and expert evidence should have a great value. 

Author: Tanveer Verma

Disclaimer: This blog or any post thereof is not to be considered to be in any way associated with the official stand of IIT kharagpur or RGSOIPL on the issues being discussed in the said post. The opinions on the blog are the authors own and should not be considered as legal advice.

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RIGHT TO EMPLOYMENT - POSSIBLE?

Law has made great strides to improve the social fabric of this Country. In this regard, after MNREGA, now even "right to employment" is being envisaged. The relevant news report can be read here. Currently MNREGA promises employment only to unskilled workers in Rural areas.Though, it is still a mystery whether such a right is envisaged as a statutory right or a constitutional right. 

The question still remains Can Right to Employment be made a reality? Especially employment to all citizens of India ? 

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BEWARE OF THE 'NEW PUBLIC'

The judgement of CJEU in the case of Svenssonv Retriever Sverige AB, hereinafter referred to as Svensson, sheds some light on the doubts related to hyperlinking. In the case Retriever Sverige AB (‘Retriever Sverige’) operated a website that contained hyperlinks that redirected users to press articles in the website of the Stockholm newspaper Göteborgs-Posten. Svensson, a journalist including 3 others sued Retriever Sverige AB for communication of their copyrighted work to the public. So after the judgement to the case we try to answer some questions here.

1)      Q: What if a website provides hyperlinks to the copyrightable content of another website, otherwise freely available?

Ans: The links that have been posted are linking them to original site itself and allowing them to view what have already been given free access to! So there is no communication to “new public”. Hence there is no infringement of copyright.

By “new public”, the court means, the public that was not taken into account by the copyright holders when they authorized the initial communication to the public to whom the work has been communicated to.

2)      Q: But what if the original site has removed such protected content from the site and still another website gives access to those removed contents?

       Ans: In this case the access is being given to new public and as per the  reasoning of the court in this judgement it would amount to copyright  infringement.

3)      Q: What if a website gives access only to restricted users to the protected content and another website on the other hand circumvent such restrictions through the links appearing on such site?

       Ans: Definitely then access of the content is being given to new public a copyrighted material. Then bypassing such restrictions, will amount to infringement!

4)      Q: What if another website links to content from other website in such a way that it appears to the viewers that it is a content of the website on which the links are available?

       Ans: In this case if the content is still freely available then as per this judgement it would not result in any infringement as there is free access and no new public is created.

5)      Q:Article 3(1) of Directive 2001/29 provides: 

         Member States shall provide authors with the exclusive right to authorize or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.

 So it is possible for a Member State to give wider protection to authors’ exclusive right by enabling communication to the public to cover a greater range of acts than provided for in the directive?

Ans: The directive is for the purpose of harmonization of the member state laws and widening the scope of the act of “communication to the public” would be detriment to the purpose.

Conclusion: 

      

In a nutshell the implications of this judgement is that internet users will still be able to share and refer to free contents on the Internet without breaking copyright rules. It is also good news for internet users and especially for content aggregators that direct consumers to content sites whose revenue would otherwise be seriously affected. The judgement of this case is valuable as it settles some of the debated issues and brings in the concept of “new public” which however may not always provide a workable solution in every situation. It sets a positive precedent to cases of hyperlinking of unauthorized content.

The Copyright Act, 1957 of India has inserted a sec 52 (c) after the amendment in 2012 which permits transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration unless such links, access or integration have been expressly prohibited by the right holder or if the person responsible is aware or has reasonable grounds to believe that such storage is of an infringing copy. We are yet to see how the Indian courts deal with the issue of hyperlinking after this case.

References:

•     http://copyright.lawmatters.in/2011/01/hyperlinks-and-copyright-infringement.html
• Alka Chawla , Law of Copyright : Comparative Perspectives, First Edition, 2013
• http://kluwercopyrightblog.com/2014/02/21/the-svensson-case-and-the-act-of-communication-to-a-new-public/

AUTHOR - Neerajita Sarkar

Disclaimer: This blog or any post thereof is not to be considered to be in any way associated with the official stand of IIT kharagpur or RGSOIPL on the issues being discussed in the said post. The opinions on the blog are the authors own and should not be considered as legal advice.

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PILs IN DISTRICT COURTS !!

In a very interesting development, the Chief Justice of the Andhra Pradesh High Court has raised a very interesting point about filing PIL in District Court!
What is at the heart of Constitutional Law is that a PIL can only be filed in the High Court or Supreme Court and only these courts have jurisdiction to entertain the same.

Any public spirited person does not have any other forum for redressal, as he has no locus standi for the matter. Well, soon this concept may find itself way back only in the annals of history. A new kind of Jurisprudence is now emerging where PIL in district courts can actually be envisaged. I freely admit, I myself was a part of the “ignorant society” that nodded and believed that only Constitutional Courts have the Jurisdiction to entertain a PIL. But kudos the innovativeness of the Indian Judiciary for envisaging a concept which may possibly help many public spirited persons in the future.

First, let us highlight what the Hon’ble Chief Justice Kalyan Sengupta said while delivering the C. Padmanabha Reddy Memorial Lecture organised by the Indian Association of Lawyers (IAL) in Hyderabad observed: (the report can be found here )

“A PIL could be filed in district courts or other subordinate courts also but not necessarily in the Supreme Court or High Courts. Judicial activism should be welcomed wherever the executive and legislative branches fall short of their goals and when a PIL comes against them, it should not be treated as an adversarial litigation but as a reminder of their Constitutional duties”

The idea itself isn’t bad. The vision of justice to the common man would be complete. The search and reach for justice has always eluded the common man, having to spend a lot of time and money to travel to long places, file for PIL in the HC or SC and represent their case. It’s not uncommon to make more than one appearance to get the desired relief. If PILs in District Court could make headway into the Judicial System, it would eliminate the need for the long wait of justice for people even in the remotest corner of India.

But is such an idea really feasible? District Courts always have the problem of pendency of cases with over 3 crore cases pending in courts. It would mean that district courts would also have to deal with the additional burden of PILs from persons who have no locus standi. This is specially a big problem because as it is the effective rate of disposal of cases is slow and time consuming. Unless additional resources are pumped in to expedite the process, it would be very difficult for the courts to carry this additional burden.

The competiveness of the District Court in handling PIL petitions is still uncertain. While on one hand, it may be especially good as District Court looks into matters of fact, hence it may examine evidence on a fact and decide on a petition, but there would not be an expeditious remedy. On the flipside, with regard to examining matters on PIL where effective, quick, correct and adequate remedy is the need of the hour, District Courts may, at some point, lack competence.

The Jurisdiction of the Court is also another aspect under consideration. The jurisdiction of the District Court is limited to the district only. This helps litigants save time and money and the Court may understand the problems of the district better than any of the Higher Courts. Yet its Jurisdiction being limited, it is very difficult for the court to give a judgment within the rigidity of jurisdiction it is bound in.

Another aspect is that, the courts are bound by procedural laws, making it very difficult to get quick remedies. So, it is very uncertain whether a District Court can be given wide amplitude of powers to bypass procedural laws which is required when a PIL petition is being heard.

In my opinion, considering many problems, and not to mention procedural aspects the District Courts may face, unless radical changes are proposed, it would be very difficult to actually put the vision of Hon’ble Chief Justice into practice. However all is not lost for the common man as he grapples with the administration, the government and the law in his quest to seek justice. The Code of Civil Procedure and Code of Criminal Procedure do provide sections for public to seek justice.

1. An important section provided by the CPC is to invoke section 91 of CPC which empowers any two public persons to raise any matter of public interest with the permission of the court in case of any public nuisance. The relief granted by the Court includes a suit of declaration and injunction or for such other relief as may be appropriate in the circumstances of the case.

2. Order I Rule 8 permits the filing of Representative Suit. Where any interested person may sue on behalf of all persons interested in the suit and a decree passed in a suit under this rule shall be binding on all persons on whose behalf, or for whose benefit, the suit is instituted, or defended, as the case may be. This section can be used as a powerful tool to file a suit in the District Court, as the language of Order I Rule 8 is so wide so as to permit filing of a civil suit and asking for civil damages as a result of redressing any public injury, enforcing public duty and claiming public rights.

3. Though PIL generally creates civil liability only, even criminal courts can entertain a complaint from a member of the public. Section 190 of CrPC gives wide powers to a Magistrate based on information received by him to take cognizance of any crime which may have been committed and to direct the Police to investigate the same. This is particularly helpful when the public injury committed by person or persons alike may attract criminal liability. The investigations may proceed say, under sections 268 of IPC for public nuisance, section 133 of CrPC empowering magistrate to take action against public nuisance.

PILs have revolutionised our justice system. Indian Judiciary has always upheld the cause of justice to common man and has addressed the same. In this regard, PIL in District Courts would give the much needed impetus in the process of restoring faith of the common man in the judiciary. But, the process is long drawn and a tough one. Its implementation would be difficult. Let us hope the vision, the path and the cause that the Hon’ble Chief Justice envisaged is taken up by others and the issues are addressed.

Author: Suraj Badrayan

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Extending the ‘passing off’ remedy of Trademark to domain names

Domain Name

In the general parlance we know that a Trademark is used to identify the products or services from a particular source (the Company from where the goods/services originate) , for example at the very moment the device through which this article is being accessed, be it a laptop, tablet, phone etc. has a Trademark say Dell, Sony, Apple, Nokia, Nexus etc. Due to the wide reach of internet to the users, almost all the companies have a website where the products and its specifications are displayed. Every company obtains a domain name and usually companies desire to obtain such domain names similar to the Trade mark of the company for the ease of users to relate. For example,consider 'Cipla' which is the Trade mark of one of the largest generic drug manufacturer in India, has the domain name of the Company as "www.cipla.com". 

The important question that would arise is ‘How does a domain name satisfy the characteristics of a trademark, thereby invoke a remedy for passing off?’ This can be understood by looking into the decisions of High Court and Supreme Court.The vacuum formed due to lack of legislation in this area has been filled by the Indian judiciary (The domain name disputes can be resolved through Uniform Domain-Name Dispute-Resolution Policy (UDRP) where there are Approved Dispute Resolution Service Providers like WIPO – it is not the area of our focus).

Let’s decipher the concept of passing off and later extend it to domain names.

Trade mark (as defined in Section 2(1)(zb) of The Indian Trademark Act, 1999): means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.

Passing off: A company would establish consumer base, goodwill and reputation through its goods and services; Passing off is the act of gaining advantage (by misrepresentation) of the established goodwill of the former.The prior user of the mark has an added advantage. As stated by P.Narayanan, an established author in intellectual property law,few examples of passing off are[i]:

• False representation;
• Adoption of a trade mark either in whole or in part;
• Colorable reproduction of trade mark;
• Copying the label, scheme or get up of the mark.

Also, the passing off remedy can be invoked by non-registered users also unlike a remedy for infringement which is only provided for registered users, so this is the only form of remedy in case of domain name. 

A Trademark should be capable of distinguishing the goods or services of one from another whereas passing off is an act of gaining advantage by misreporting the goods or services of another. Passing off is against the primary purpose of the Indian Trade mark Act, 1999 (herein after referred as “the Act”) which can be inferred from the preamble which says “An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.”The common law right against passing off can be enforced for protecting the goodwill of a trader. This right has been included in the Act and has been extended to protect the right of unregistered users.

In the ErvenWarnink B.V. v. J. Townend & Sons (Hull) Ltd., [1980] R.P.C. 31, famously known as the Advocaat case, a five element test was laid down by the House of Lords to establish a valid cause of action for passing off (which has been cited by the Delhi Court in series of cases). The apex court in the case of Laxmikant V. Patel v. Chetanbhat Shah &Anr., [2002(24) PTC 1 (SC)] laid the classical trinity test as:

1. Plaintiff must establish goodwill associated with the goods or services

2. Misrepresentation by the defendant

3. Plaintiff must show that he suffered a loss.

The first case on passing off in domain names came up before the Delhi High Court in the case of Yahoo! Inc. v. Akash Arora nand Anr.,[1999 PTC (19)210 (Delhi)], in which the plaintiff owned the domain name “www.yahoo.com”. The defendant was using the domain name “www.yahooindia.com” in relation to internet related services which is the similar field in which the plaintiff is operating. So, the plaintiff alleged that by using a quite similar domain name and format to their domain name there is an act of deceit and “Passing off”. Thus by applying the principles of “passing off” the court passed an injunction.

There were similar disputes dealt by the courts in similar circumstances but the most important case is Satyam Infoway Ltd. v. Sifynet Soloutions Pvt. Ltd.,[2004 (28) PTC 566 (SC)]. The appellant in this case, incorporated in 1995, registered domain names like “www.sifynet”, “www.sifymall.com”, “www.sifyrealestate.com” etc. in 1999. The word ‘SIFY’ is a coined word adapted from ‘Satyam InFowaY’. The defendant has obtained the registration for the domain names “www.siffynet.com” and “www.siffynet.net” in 2001 and 2002 respectively. The respondent has contended that a Domain Name could not be confused with "property names" such as Trade mark. In this case the principal questions raised were:

1. “whether internet domain names are subject to the legal norms applicable to other intellectual properties such as Trade marks?”

and

2. “whether a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the internet?”

The Apex court has held with regard to the questions raised stating that:

• The internet has become a mode for commercial activity rather than a mere means of communication;
• Domain name identifies the specific internet site, it may pertain to provision of ‘services’ within the meaning of Section 2(z) (the ‘domain name’ identifies a‘service’ which is the website, so it qualifies to be a Trade mark);
• Trade marks containing same name can co-exist but the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that consumers are likely to guess a domain name has enhanced its value.

In relation to first question of passing off, the court has applied the classical trinity test:

• The evidence (newspaper publication and user base) provided by the appellant shows that it has good will;
• It is evident from the facts that appellant is the first user;
• There is likely hood of confusion (‘sify’ & ‘siffy’), with possible injury to the public and consequential loss to the appellant.

Holding that the respondent has dishonestly adapted the domain name to free-ride on appellants, the Court upheld the injunction.

The recent case of Crayons Advertising Ltd v. Crayon Advertising, of Jan 17, 2014, is also a similar domain name dispute. The disputed domain names are “www.crayonad.com” and “www.crayonadv.com” of plaintiff and defendant respectively. In this case also the Delhi High Court has iterated the same principal and this is the case which has ignited the thought in these lines.

It can be concluded that a domain name qualifies to be a Trade mark and is used to identify the source of the “services” (which is the website) provided by a person. In case of any act of deceit and passing off by a person, for using a domain similar to that another person, the latter, by proving the elements of classical trinity test and prior use, can get an injunction against the mala fide user. The Indian judiciary has played an active role by filling the gaps formed by the lack of legislation in this area by extending the passing off remedy of Trade marks to domain names.

Abbreviations:

PTC – Patent & Trademark Cases.

R.P.C – Reports of Patent Cases

SC – Supreme Court

[i]Sreenivasulu N.S, “Law Relating to Intellectual Property”.Partridge Publishing, 2013.Page 114. 

Author - Murthy Yeggina

Disclaimer: This blog or any post thereof is not to be considered to be in any way associated with the official stand of IIT kharagpur or RGSOIPL on the issues being discussed in the said post. The opinions on the blog are the authors own and should not be considered as legal advice.

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