A number of recent INDRP cases have raised concerns in the domaining community about loss of generic domains.Â To understand these decisions, it is important to understand how Indian law considers trademarks, particularly well known trademarks.Â While this blog post is a little bit technical I think anyone seriously invested in the Indian domain market should make sure they understand the basics.
One comment I hear a lot from domainers is that the domain is used for a completely different market than the one the trademark is for.Â This was particularly the case in the All.in decision, in which even though the word “all” is generic, and the domain owner was not using the domain for anything related to Pantaloon’s “aLL” brand (which offers plus size clothing), the domain was lost because the aLL brand is well known in India.
Indian trademark law has discarded what they term the “field of activity” test (since 1991 in Marage Studies V. Counter Feat Clothing Co. Ltd. (1991) FSR 145) in trademark infringement cases.Â In its place, there is a “real likelihood of confusion or deception among consumers and the resultant damage to the plaintiff” test.Â As a practical matter, this means that even if a domain is used to offer goods or services that are completely different than the trademarked term, the fact that a trademark is well known will normally be considered to cause confusion among consumers.Â This is because when consumers think of the term, they automatically think of the company with the trademark, simply because that company is so well known.
There is a long line of legal cases support this.Â In Sunder Parmanand Lalwani and Ors. V. Caltex (India) Ltd., AIR 1969 Bombay 24, the court stated that there was a danger of confusion between Caltex watches and Caltex petrol because “a large number of persons, if they see or hear about the mark ‘Caltex’ in connection with watches, would be led to think that the watches were in some way connected with [Caltex petrol].”
In Bata India Ltd. V. M/s. Pyare Lal & Co. Meerut City and Ors., AIR 1985 Allahabad 242, the shoe maker Bata claimed trademark infringement by a company marketing foam materials under the name Bata.Â The court stated:Â “How would the customers know that Bata were not producing foam?Â It is well known that the name represented makers of shoes and other analogous products, but a question would arise in the mind of the lay consumers whether Bata were also producing foam.Â Who is going to answer this question?Â Does an ordinary customer ask the seller as to whose product it is?Â The answer generally is in the negative.Â He buys a thing on the basis of his own impression.”
In Daimler Benz Aktiegesellschft and Anr. V. Hybo Hindustan, AIR 1994 Delhi 239, a company was prohibited from using the term “Benz” for a brand of underwear.Â The judge stated that “it will be a great perversion of the law … if a mark of the order of the “Mercedes Benz” … is humbled by indiscriminate colourable imitation by all or anyone.”Â The judge made clear that the term “Benz” could not be used by anyone for any product:Â “Such a mark is not up for grabs – not available to any person to apply upon anything.”
In Kiriloskar Diesel Recon (P) Ltd. V. Kirloskar Proprietary Ltd., AIR 1996 Bombay 149, the court again made this clear and found that when a trading name is a household word, one can’t use a similar or identical brand even for remotely connected goods or services, as these are likely to be presumed by consumers to be part of the activites of the well known brand.
The Supreme Court of India has even weighed in on this issues in Mahendra & Mahendra Paper Mills Ltd. V. Mahindra Mahindra Ltd. 2002 (2) SCC 147 where the court stated:
whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion;Â that all factors which are likely to create or allay deception or confusion must be considered in combination;Â that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in the course of trade, and others.
All in all, the law in India is very clear that well known trademarks enjoy very extensive protection under Indian law.Â Domainers need to be wary of this, and to be particularly cautious of trademarks when registering Indian domains.
Disclaimer: Legal Information is Not Legal Advice
This article has provided information about the law designed to help readers better understand the legal issues surrounding domaining in India. But legal information is not the same as legal advice â€” the application of law to an individualâ€™s specific circumstances. Although I have conducted research to better ensure that this information is accurate and useful, I insist that you consult a lawyer if you want professional assurance that this information, and your interpretation of it, is accurate. To clarify further, you may not rely upon this information as legal advice, nor as a recommendation or endorsement of any particular legal understanding, and you should instead regard this article as intended for entertainment purposes only.