Cybe r Laws Nals Ar Pro Xi m Ate Educ

8/14/2019 Cybe r Laws Nals Ar Pro Xi m Ate Educ

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CYBER LAWS

NALSAR PROXIMATE EDUCATIONNALSAR UNIVERSITY OF LAW,

HYDERABAD

Infringement of trademarks

Applicability in internet operations

MODULE-II

S u b m i t t e d b y

A R U N T E J A D O P PA L A P U D IC L H 1 5 _ 0 9


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INFRINGEMENT OF TRADEMARKS AND ITS APPLICABILITY OF Internet TRANSACTIONS 2

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SL. NO TABLE OF CONTENTS

PAGE NO

1 Introduction

2 Objective

3 Methodology

4 What is a Trademark and Passing-Off?

5 Trade Marks in India and remedies for infringement

6 Domain Names v. Trademarks

7Cyber-Squatting a violation in theprotection of the consumer rights aninfringement of Trademark

8 Conclusion

9Bibliography


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Introduction

Trademarks are signs which distinguish the goods of one enterprise to another or it is

generic symbol for the representation of the products which are introduced by the

entrepreneurs to sell their products and provide services. A consumer is duped if he

buys a commodity presuming it to have originated from certain identified source when

actually it is not and later he finds the commodity substandard. In the process the

reputation of the traders suffers if spurious goods are goods are sold as those originating

from him. The interests of both the consumer and the trader can be saved if some

definite symbol which marks out the origin of goods from a definite trade source is

attached with the goods emanating from such source. Such symbol is called a trade

mark. A trade mark is a visual representation attached to goods for the purpose of

indicating the trade origin. A mark includes a device, brand, heading, label, ticket,

name, signature, word, letter, shape of goods, packaging or combination of colours or

any combination.

Infringement of Trade marks

Infringement of trademark occurs if a person other than the registered proprietor in the

course of trade, in relation to the same goods or services for which the mark is

registered, uses the same mark or deceptively similar mark.

The taking of any essential feature of a mark or taking the whole of the mark and then

making a few additions and alterations would constitute infringement, the infringing

mark must be used in the course of trade i.e., in the regular trade wherein the proprietor

of the mark is engaged, The use of infringing mark must be printed or usual

representation of the mark in advertisements, invoices or bills, any oral use of trade

mark is not infringement. Any use of all the above acts would constitute the

infringement. There are various forms of infringement in the context internet

trademarks. Using the names of the most important person for their domain names

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OBJECTIVE

The objective of this compilation of this project is to know about the trademarks

1) To know the various forms of Trademarks

2) To know the passing off of a goods takes place

3) To know how the infringers violate the trademarks rules and uses the good willof the other companies and the conflicts of the domain names and thetrademarks in the internet.

4) Violation of the trade marks in the internet perspective and in India and use of domain names.

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METHODOLOGY

In this project we are going to discuss about various use of trademarks how they are

violated by the various product sellers in place of the goodwill companies and we shall

discuss in detail about the different types of trademarks and their infringements and use

of trademarks in day to day life in the internet and also the cyber squatting

Where the names of the great personalities are used to promote their products in order to

gain traffic to their website and increase their ratings.

There are various functions of a trademark.

1. It identifies the product and its origin, 2.It guarantees its qualities .3. It advertises the

product, it represents the product. 4. It creates an image of the product in the minds of

the public particularly consumers or the prospective consumers of such goods. Themark M which stands for the food items originating from the American fast food chain

MACDONALD creates an image and reputation for food items offered by it for sale in

the market

Emergence of Trade mark law:

The marks associated with goods come to acquire a reputation and good will round

them, before the enactment of the Trade Mark law, the trademarks used to be called

common law marks. The common law marks could not be registered as there was no

law under which it could be done.

The owner of a common Law mark had to protect his mark against acts of infringement

or passing off of his mark by initiating Common Law proceedings such proceedings had

to be set in motion each time an infringement occurred. And also such proceeding has

been launched only when the infringer already used the trade marks. Then the

enactment of the Trade and Merchandise Marks Act, 1958 in India brought into the

system of recognition to proprietorship of Trademarks and defined the rights conferred

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by such recognition and prescribed remedies in respect of infringement of those rights

conferred by such registration and prescribed remedies this Act is now replaced by

Trade Marks Act.1999 (47 of 1999) came into force.

What is a trade mark and Passing off?

Every intelligent consumer purchases his goods or hires services from the commercial

Market only when he is satisfied that the goods or services from the commercial market

only when he is satisfied that the goods or services are of good quality and reputation.

The manufacturer, or the supplier of goods produced by him are similar to thosemanufactured by others, their distinguishing are different. This with the view to

identifying the manufacturer, brand quality of the goods and services produced by a

particular maker of the company. It is the context that trademarks play a very

important role in the modern commercial market. The importance of trademarks was

recognized only after the industrial revolution which enabled large scale production and

distribution of the goods and publicity through printing media, therefore trademark is

essentially a product of competitive economy where more than one person competed for

the manufacture of the same product which necessitated the marking of each

manufacturers goods by a symbol which distinguishes similar goods made by others.

The concept of property arising out of a trademark was first recognised at common law

before it was subject matter of any enactment .The use of distinctive marks on goods

which the manufacturers have made in an ancient trade practice, but the recognition of

the same in a law as a species of incorporeal was done by Lord Cotenhan, Chancellor,

In Millington Vs. Fox 12

What is a Trademark?

A trade mark 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 the goods or services of one person from those of others and may

include the shape of the goods, their packaging and combination of the colours ,

Mark includes a device, brand, heading, label, ticket, name, signature, word letter,

numeral, shape of goods, packaging or combination of colours or any combination

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thereof, this meaning is simple and not so exhaustive thereof and there is practicality of

the limit for the various types of marks.

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12 40 ER 956( Dr. GB Reddys intellectual property Rights )

A trade mark is a symbol which is applied or attached to goods offered for sale in the market, so as

to distinguish them from similar goods and to identify them with a.

particular trader or with his successor as the owner of a particular business, as being made, worked

upon, imported, selected, certified or sold by him or them or other

This has been properly registered under the Acts as the Trademarks of a particular trader. It is a

symbol consisting in general of picture, Label, word or words, which is applied or attached to

traders goods.

A party acquires exclusive rights to protect its mark by virtue of priority in adoption. Long

continues and exclusive user and any subsequent user of the deceptively similar mark or trade mark

which is of confusing nature on account of sound and look is guilty of infringement of the right of the prior user of the mark as his obvious motive is to trade and encash upon the good will and

reputation of the prior user. Reputation or Good will is not established in a day. It is gained over the

years and at the huge costs of advertisement.

The definition of the trademark is very wide and means, interalia, a mark capable of being

represented graphically and which is capable of distinguishing the goods or services of one person

from those of others. Mark includes amongst other things name or word.

Trade mark is essentially adopted to advertise ones products and to make it known to the

purchaser. It attempts to portray the nature and, if possible, the quantity of the product and over a

period of time the mark may become popular. It is usually at this stage that the other people get

tempted to pass off their products as that of the original owner of the mark.

The following features can be deduced from various judicial decisions with regard to the nature

and essential features of trademarks1) Trade mark is a kind of property and is entitled to the production under the law, irrespective of

its value

2The Domain Name System (DNS) helps users to find their way around the Internet. Every

computer on the Internet has a unique address - just like a telephone number - which is a rather

complicated string of numbers. It is called its "IP address" (IP stands for "Internet Protocol"). IP

Addresses are hard to remember. The DNS makes using the Internet easier by allowing a familiar

string of letters (the "domain name") to be used instead of the arcane IP address.


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When a domain name is being registered, it means inserting an entry into a directory of all the

Domain names and their corresponding computers on the Internet.

Domain names ending with .aero, .biz, .com, .coop, .info, .museum, .name, .net, .org, or .pro can be

registered through many different companies (known as "registrars") that compete with one another.

A listing of these companies appears in the Registrar Directory. The registrar one chooses will ask one to provide various contact and technical information that

Makes up the registration. The registrar will then keep records of the contact information and

Submit the technical information to a central directory known as the "registry." This registry

Provides other computers on the Internet the information necessary to send e-mail or to find the

specified web site. A registration contract has to be entered with the registrar, which sets forth the

terms under which the registration is accepted and will be maintained. Each registrar has the

flexibility to offer initial and renewal registrations in one-year increments, with a total registration

period limit of ten years.

Each registrar sets the price it charges for registering names, and prices vary significantly among

different registrars. In addition, some registrars offer discounted or free registration services in

connection with other offerings, such as web hosting.

All ICANN-accredited registrars follow a uniform dispute resolution policy. Under that policy,

disputes over entitlement to a domain-name registration are ordinarily resolved by court litigation

between the parties claiming rights to the registration. Once the court rules who is entitled to the

registration, the registrar will implement that ruling. In disputes arising from registrations allegedlymade abusively (such as "cyber squatting" and cyber piracy"), the uniform policy provides an

expedited administrative procedure to allow the dispute to be resolved without the cost and delays

often encountered in court litigation. In these cases, one can invoke

the administrative procedure by filing a complaint with one of the dispute-resolution service

Acquisition of Trademark or Trade name:-2Ordinarily, the right to a trademark or trade name is acquired originally by its appropriation and

use as such. The mere adoption of a mark without bona fide use, in an attempt to reserve it for the

future, does not create trademark rights. Trademark or service mark ownership is not acquired by

federal or state registration; rather, ownership rights flow only from the prior appropriation and

actual use in the market

Observation:

Inasmuch as a trademark does not exist apart from the article or goods on which it has been used

there must have been an initial use of the mark on goods, or use of the name in the actual conduct of the business, before there can be any wrong done to the one claiming the exclusive right to the use


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of the mark or name. A party establishes a common law right to a trademark only by demonstrating

that its use of the mark was deliberate and continuous, not sporadic, casual or transitory. The name

or mark must have become associated in the public mind with the producer or owner of the goods to

which it is applied however, evidence of actual sales is not necessary to establish ownership of a

trademark. As long as there is a genuine use of the trademark in commerce, ownership may beestablished even if the first uses are not extensive and

do not result in deep market penetration or widespread recognition

________________ 2American Jurisprudence, Second Edition Database updated May 2009Trademarks and Trade names John Kimpflen,

J.D. http://www.icann.org

A party establishes a common law right to a trademark only by demonstrating that its use of the

mark was deliberate and continuous, not sporadic, casual or transitory. The name or mark must have

become associated in the public mind with the producer or owner of the goods to which it is

applied. However, evidence of actual sales is not necessary to establish ownership of a trademark.As long as there is a genuine use of the trademark in commerce, ownership may be established even

if the first uses are not extensive and do not result in deep market penetration or widespread

recognition.

The mere advertising and documentary use of a notation apart from the goods do not constitute

technical trademark use. However, there is also contrary authority holding that, at common law, the

use of a trade name may be established by its appearance on signs, documents employed in

conducting business, mail solicitations, or advertising.

CUMULATIVE SUPPLEMENT

Cases:

Described use of "Garden of Life" mark by California business that manufactured and sold

home sprout-growing products and health food products and held seminars and clinics was notsufficient to establish "continuous use" of mark and confer common law trademark protection;
http://www.icann.org/http://www.icann.org/


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business's sales were admittedly sporadic, no description was offered as to frequency or extent of

product sales or seminars, and declaration testimony was unsubstantiated by documentary evidence.

Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946 (C.D. Cal. 2004) ,

Competitor did not "use" trademark "FragranceNet.com," for Lanham Act purposes, by using

trademark as keyword to prompt competitor's appearance as sponsored link in internet searchengine or by including trademark in competitor's website's met tag, where link to competitor's

website appeared both within search results screen and immediately proximate to search results

screen upon request for trademark owner's website, competitor did not place trademark on any

product, good, or service, and trademark was not used in any way that would indicate source or

origin. FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F. Supp. 2d 545 ( E.D. N.Y. 2007) .

To establish the right to trademark protection under the Lanham Act, a plaintiff must show

that it has actually used the designation at issue as a trademark; thus, the designation or

phrase must be used to perform the trademark function of identifying the source of the

merchandise to the customers. Micro Strategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th Cir.

2001) .

Service marks and trademarks are governed by identical standards, and thus, as with

trademarks, common law rights are acquired in a service mark by adopting and using the

mark in connection with services rendered.

A designation is "used" as a trademark, trade name, collective trademark, or certification

mark when the designation is displayed or otherwise made known to prospective purchasers

in the ordinary course of business in a manner that associates the designation with the goods,

services, or business of the user.

The purpose of a trademark is to help consumers identify the source, but a mark cannot

serve a source-identifying function if the public has never seen the mark and thus is not

meritorious of trademark protection until it is used in public in a manner that creates an

association among consumers between the mark and the mark's owner.

.Even though a word, name, symbol, device, or a combination of words comprising a slogan

may be used in the sale or advertising of services, or on or in connection with goods, it is not

protectable as a trademark unless it is used as a mark.

Common-law trademark rights cannot be established by advertising alone Passing off:-Generally, no person is entitled to institute any proceedings to prevent, or to recover
http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0004637&FindType=Y&SerialNum=2004508483http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0004637&FindType=Y&SerialNum=2004508483http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0004637&FindType=Y&SerialNum=2012550038http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0000506&FindType=Y&SerialNum=2001255315http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0000506&FindType=Y&SerialNum=2001255315http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0000506&FindType=Y&SerialNum=2001255315http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0004637&FindType=Y&SerialNum=2004508483http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0004637&FindType=Y&SerialNum=2012550038http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0000506&FindType=Y&SerialNum=2001255315http://international.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=0000506&FindType=Y&SerialNum=2001255315


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damages for the infringement of an unregistered trademark However the trademarks Act,

1999, while recognising the above principle, provides that nothing in the Act shall be

deemed to affect the rights of action

against any person for passing-off the goods or services, as the goods of another

person, as services provided by another person, or the remedies in respect thereof In

other words, even in respect of a unregistered trademark also, the proprietor may

initiate passing of action against those who try to pass of their goods or services as

those of the proprietor of the unregistered trademark, this is common law remedy,

Provided under the law of Torts.

The basis for a passing action is false representation , passing is said to be a species of unfair

trading by which one person through deception, attempts to obtain an economic benefit of the

reputation which another has established for himself in a particular trade or the business, The action

is regarded as action for deceit.

The three elements of the passing off are;-

1) Reputation of the goods

2) Possibility of deception

3) Likelihood of damages to the plaintiff

Generally the following methods are adopted by the persons for representing their goods or

business as the goods/business of another person:-

1) Direct false representation;

2) Adoption of trademark which is the same or colourable imitation of the trademark of therival traders;

3) Adoption of an essential part of the rival traders name :

Distinction Between passing off and infringement of a trademark

Issue in an infringement action is quite different from the issue in passing-off action. The action for

infringement is a statutory right. It is dependent upon the validity of the registration and subject to

other restrictions laid down in the act; on the other hand, the gist of passing off action is that A is

not entitled to represent his goods as the goods of B. But it is not necessary for B to prove that a

did this knowingly or with intent to deceive


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The Supreme court, has distinguished between an action for passing-off and infringement thus :-

1) An action for passing off is a common law remedy, being in substance an action for deceit.

On the other hand, the action for infringement is a statutory remedy conferred on the

registered proprietor of a trademark.

2) The use of trade mark of plaintiff by the defendant is non essential in an action for passing off but it is a sine qua non in the case of an infringement action.

3) In an action for infringement, the plaintiff must make out that the use of the defendants mark

is likely to deceive but in case of a passing off, the defendant may escape the liability if he

can show that the added matter is sufficient to distinguish his goods.

Test to determine deception or confusion in an action for passing-off

In the English case which is under can determine the test of deception ,

Case law 1

Erven Warnink vs. Towned,

Which is known as the advocate case the essential characteristics which must represent in order to

create a valid cause of action for passing off, as stated by the Lord diplock are :-

1) Misrepresentation

2) Made by person in the course of trade ;

3) To prospective customers of his or ultimate consumers of goods or services supplied by

him ;

4) Which is calculated to injure the business or good will of another trader; and5) Which causes actual damage to a business or good-will of the trader by whom the action

for is brought; etc.

Criminal law

In number of countries, a trademark infringement is, at the same time, a criminal offence obtain Big

Macs from Burger king Outlets

Case law 2

In the case of

McDonalds ham burgers limited v. Burger King (UK) limited :-

Burger king attacked McDonalds in a poster campaign featuring a Burger king whopper above the

head line Its not just Big, Mac. You know when you got a whopper Mc Donalds was successful

in establishing passing off after producing the evidence that a number of those who saw the poster

believed that they could.

Trade Marks in India and Remedies for Infringement :-


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The Trade and Merchandise Marks Act, 1958 for the first time codified the law relating to

trademarks and provided for registration of trademarks already in use and even those proposed to be

used, since 1958 it was amended several times, in the view of the developments in trading and

commercial practices, increasing globalisation and trade and industry, the need to encourage the

investments flows and transfer of technology and the need to simplify and harmonise trademark management systems, it has been considered, by the parliament necessary to bring out a

comprehensive legislation on the subject Accordingly the trade marks Act, 1999 was passed to

replace the Act of 1958.

To achieve these purposes, the present act proposed to incorporate inter alia the following,

namely :-

a) Providing for registration of trademarks for services in addition to the goods. This is a novel

feature introduced by the Act of 1999.

b) Registration of trademarks, which are imitation of well known trademarks, not to be

permitted, besides enlarging the grounds for refusal of registration consequently, the

provisions for defensive registration of trademarks have been proposed to be omitted.

c) Amplification of factors to be considered for defining a well known trademark.

d) Doing away with the system of maintaining registration of trademark

e) Simplifying the procedure for registration

f) Providing for an appellate board for speedy disposal of appeals and rectification applications

which under the Act of 1958, lay to the High Court.g) Providing the enhanced punishments for the offences to the trademarks on par with the

present Copyright Act, 1957, to prevent the sale of the spurious goods:

h) Prohibiting the use of someone elses trade mark as part of corporate names, or name of

business concern;

Rights conferred By Registration of Trade marks

Registration of a trade mark confers many rights on the proprietor of the trade mark Chapter IV of the trade marks Act,-1999 deals with the effect of registration it may be seen that the rights

conferred are not absolute. They are subject to the other provisions of the Act and, to any conditions

and limitations to which the registration is subject

Section 28 of the act deals with the rights conferred by registration

(i) The exclusive rights to use of the trademark in relation to the goods or services in

respect of which the trade mark is registered.

(ii) The right to obtain relief in respect of infringement of the trademark.


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In addition to and apart from the premier right to use the trade mark exclusively, the

proprietor of a trademark also has the right to file a suit for infringement of his right and

he can obtain the reliefs in the nature of

(i) Injunctions, temporary or permanent

(ii) Damages ; and(iii) Account of profits;

So let us in this diagram the procedure how a trademark is registered

Remedies for Infringement of TrademarksWhenever a trademark is infringed, in order to protect it, the following remedies can be restored

to :-

1) Civil remedies

2) Criminal remedies

3) Administrative Remedies

For the purpose of infringement of an unregistered trade-mark, the common Law remedy of

passing-off action can be invoked.


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1. Civil remedies: - whenever a registered trade mark is violated or infringed, to the detriment

of its proprietor or user, the aggrieved person can make use of the remedies available in a

civil court, The most common remedy for infringement of a registered trade mark is to file a

suit in a civil court, to restrain the defendants using the registered trade-mark of the

plaintiffs.Essentials of infringement

In order to constitute infringement of a trade mark the following elements must be present.

(i) Using a registered trade mark by a person other than its registered proprietor or

registered user.

(ii) Using either the whole of the registered trademark or the adopted one by making a few

additions and alterations;

(iii) Using such infringing mark in relation to the regular trade of the registered proprietor or

user :

(iv) The infringing trademark is identical or similar to the trade-mark already registered.

(v) The likelihood of causing confusion on the part of the public; and

(vi) Advertising of the trademark registered, as if it is owned by the unauthorised user etc.,

Different forms of infringement :-

The infringement of a trademark may take different forms. It may be using of marks identical or

similar to trademarks, by unauthorised persons, in relation to the similar or same trade. Using thesimilar marks.

(i) Using a deceptively similar mark: - A person may use a mark which is deceptively

similar to a registered trade mark and that act itself amounts to infringement. The

deception or the confusion may be

a) As to goods or services themselves :- Here a person may buy the goods seeing one

mark thinking that it is the brand, which is in his mind

b) As to the trade origin :- Here a person looking at a mark may buy the goods thinking

that it is coming from the source as the some other goods bearing a similar mark with

which he is familiar.

c) As to the trade connection :- Here a person looking at the mark may not think that it

is the same as open with a different brand in his mind

Persons entitled to sue for infringement:- The plaintiff in a suit for infringement may be either

(i) The registered proprietor of the trademark or his legal successor

(ii) The registered user of a trademark; or

(iii) An applicant for registration of a trademark; or (iv) Any one of the joint proprietors of the trademark; or


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(v) A foreign proprietor of a trademark registered in India when infringement occurs in

India.

Persons liable to be sued :- In an infringement action the persons who become liable to be sued are:-

(i) The infringer himself; or

(ii) The master responsible for his servants acts of infringement; or (iii) The agents of an infringer; or

(iv) The Directors and promoters of a limited company if they have personally committed or

directed the infringing acts.

Quia Timet Action:- When, a registered proprietor registered or registered user of a TM apprehends

that the defendant who has taken certain steps in the direction who has taken certain steps in the

direction of using a similar TM, this remedy is known as Quia Timet action. The Delhi high court

has recently explained the rationale for grant for grant of such action in Mars Incorporated vs.

.Kumar Krishna Mukarjee.

Quia Timet Action is actually a Latin word which means to apprehend

In legal terminology it has been defined in the Osborne Conscience dictionary an action by which a

person may obtain an injunction to prevent or restrain some threatened act being done which, if

done, would cause him the substantial damage .and for which money would be no adequate or

sufficient remedy.

Relief that can be sought :-In an infringement action, the plaintiff may seek any of the following reliefs-

(i) An Injunction restraining further use of the infringing mark;

(ii) Damages on accounts of profits;

(iii) An order for delivery-up of infringing labels and marks for destruction or erasure.

The injunction which may be sought includes the

a) Anton Pillar Order ;

b) Mareva Injunction ;

c) Interloculatory injunction:;

d) Perpetual Injunction

Anton Pillar injunction order, which is an ex-parte order to inspect the defendants premise

without notice, where there is a possibility of the defendants premise without notice, where

there is a possibility of the defendant destroying or disposing of the incriminating material. Such

an order is for inspection of the premises of the defendant.

In order for Mareva Injunction, the court has power freeze defendants assets, where there

exists a probability of the assets being dissipated or cancelled so as to make a judgement againsthim worthless and un-forceable, this remedy is similar to the Interloculatory order to attach


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property before judgement under code of civil procedure, 1908..

There are some Administrative Remedies:- Apart from the civil remedies aforementioned, the

act also vests certain powers in various administrative authorities to grant relief s and remedies

to the aggrieved persons

Intellectual Property Appellate board:-The board has appellate jurisdiction to hear appeals from the orders or decisions of the

Registrar, to the exclusion of other courts. The board is not bound by the procedure laid down

under civil procedure code but it shall be guided by the principles of the natural justice. For the

purpose of discharging its functions under the Act, it shall have the powers of a civil court while

trying a suit in respect of the following matters ;

a) Receiving evidence ;

b) Issuing commissions for examination of witnesses;

c) Requisitioning any public record; and

d) Any other matter which may be prescribed.

Criminal Remedies

The trademarks Act, 1999 provides for a comprehensive scheme whereby those persons who

unauthorised deal with trademarks can be punished for various offences

The punishments for these offences include a minimum imprisonment of six months and minimum

fine of Rs.50,000 which may extend to a maximum of 3 years and Rs.2,00,000/- respectively.

Domain Name V. Trade marks Before going into the Domain name aspects we shall deal with internet and its popularity.Trademarks are usually infringed in the Internet because, so let us know what is a internet , in theInternet, trademark has no jurisdiction by the very nature of the constructWhat is Internet?

The internet is a system of computers created by a open standard for communication between

different computers

The basic protocol is called as the TCP/IP which stands for transmission Control protocol/Internet protocol

Why sell goods services on the web?

.Increased revenues from a new customer base .Lower sales and customer service costs from the use

of on-line catalogue technology strengthened customer loyalty and deepened relationships by better

use of customer choice and preference information through online selling system

Faster time to market

Online delivery of consumer and commercial information, services such as legal information,

insurance and banking and other digital goods and avoiding loss of market share to competitors

potential customers.


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Market surveys consistently show that internet users are better educated and higher incomes than

the population at large

What sells on the web

The worlds most successful online directory. Yahoo Inc ., has published the following information

Computer Software & Games 18 %Books 14%

Music 11 %

Computer Hardware 7 %

Clothes and shoes 6%

Concert and events 6%

Travel Services 7%

Groceries 4%

Types of web advertising

Advertising may appear on the pop up window that present a minisite to the user. another type of

advertisement is that the intercitel advertisements that appear momentarily as you click from one

site to another

New legal issues arising from the web advertising

Spamming This is the practise of emailing advertising messages far and wide, in the worst cases

inducing the recipient to read the mail and induces you to buy the products and at last gives you the

bogus address and deviates youAbuse of the metatags = metatags are stores of information usually not available for the viewer

some people take this information and stop the information to be viewed in the search engines at the

priority list

Domain name grabbing

In various countries it is considered as the unfair competition law is violated if a person uses the

trade mark of others

Trade mark V. domain name

In the introduction , it was pointed out that domain names, unlike trademarks are not granted in

formal proceedings and that, at least in the past, no checks in the for prior conflicting trademarks .

It is therefore not surprising that the conflicts between domain names were performed. Even in the

absence of the bad faith, the registration may violate the rights of the trademark , The majority of

the owners are considered to be this type of conflict Hyper links and framing have given rise to

disputes involving unfair competition copyright and trade mark infringement

Other potential issues could include liability for the content of the site that the advertisers is linked


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Case Law 5

In Yahoo, inc Vs. Akash Arora ,1999 PTC (19) 201

The plaintiff used the trade mark Yahoo for their internet domain name both the parties covered

the common field of operation. The court found that both the trade marks were almost similar

excepting the use of suffix India and accordingly restrained the dependents form using the tradename yahoo India.

Case law 6

Rediff Communications Ltd vs.Cyberbooth.AIR 2000 Bom.27

The court restrained the defendant from using the domain name radiff which was

sought to be passed-off as the trade mark Rediff for the plaintiffs.

The supreme court of India has dealt with an important issue relating to internet domain names and

their protection under the Trade Marks Act, 1999 recently in.

Case Law 7

Satyam Infoway Ltd. Vs. Sifynet Solutions (P) Ltd.(2004) 19 ILD 30 (SC)

Judgement-

The court emphatically held that a domain name can be said to be word or name which is capable of

distinguishing the subject to trade or service made available to potential users on the Internet,thereby affirming the views of various decisions of the high courts in India. In the Instant case M/s

Satyam Infoway Ltd. Which was incorporated in 1995 and which registered several domain names

like www.sifynet , www.sifymail.com , www.sifyrealestate.com etc in June 1999 with the

internationally recognized registrars, via, the Internet corporation for Assigned names and numbers

(ICANN) and the WIPO, challenged the action of the respondents in carrying on business of

internet marketing under the domain names, www.sifynet.net and www.sifynet.com form 5 th June,

2001.

The court finally held that the respondents in were guilty of passing off as there was close visual

similarity between sify and siffy as well as phonetic similarity between the two names.

Cyber-Squatting a violation in the protection of the consumer

rights an infringement of Trademark:

Before going into the aspects of the infringement of the traded mark we deal with the

What is a cyber squatting?
http://www.sifynet/http://www.sifymail.com/http://www.sifyrealestate.com/http://www.sifynet.net/http://www.sifynet.com/http://www.sifynet/http://www.sifymail.com/http://www.sifyrealestate.com/http://www.sifynet.net/http://www.sifynet.com/


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These types of cases has been resolved in the courts where there is a completely exploitive intention

of registering names in order to extract gains from firms or entities the registration of names of

celebrities like Julia Roberts, Madonna, Daler Mahendi have been resolved in favour of the

celebrities.

There are other operators who do not extract money but used popular names to have more traffic totheir sites.

In the latest case law we can observe the how a trademark has been violated by the by use of

Michael Jackson name in the Internet domain names and this is also called the cyber squatting.

Case Law 8

Michael J. Jackson v.HEAL THE WORLD FOUNDATION, a California

corporation; CV 09 07084.September 29, 2009

Facts of the case

This is a case for clear violations of the trademarks and the anti- cyber-squatting where there

Complaint for: Trademarks (MJ); and (7) Violations of the AntiCybersquatting Consumer

Protection Act,

For their COMPLAINT herein, Plaintiffs allege:

This is an action for trademark infringement, unfair competition and false designation of origin

arising under the Trademark Act of 1946, (the Lanham Act); for violations of the Anti cybers

squatting Consumer Protection Act, (ACPA); and for trademark infringement, unfair competition,

and violation of the right of publicity under the laws of the State of California. This Court has

personal jurisdiction over Defendants in that they do business and/or reside in the State of

California. Upon information and belief, Defendant United Fleet (United Fleet) is a corporation,

organized and existing under the laws of the State of California and this judicial district, having an

address and/or conducting and transacting business at the address 41605 Goodrich St., Indio,California 92203. United Fleet was formed on June 25, 2008. A true and correct copy of the

Articles of Incorporation for United Fleet is attached hereto and incorporated herein as Exhibit E.

Melissa Johnson, president of HTWF, is HTWF's registered agent for service of process. Melissa

Johnson is also United Fleet's registered agent for service of process. The true names and capacities,

whether individual, corporate, associate, or otherwise, of defendants sued herein as Does 1 through

10, are unknown to Plaintiffs, which sues said defendants by such fictitious names (the Doe

Defendants). If necessary, Plaintiffs will seek leave of Court to amend this complaint to state their

true names and capacities when the same have been ascertained. Plaintiffs are informed and believe

and on that basis aver that the Doe Defendants are liable to Plaintiffs as a result of their


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MICHAEL JACKSON'S TRADEMARK REGISTRATIONS AND APPLICATIONS:

Jackson's Foundation, a non-profit corporation, registered the word mark HEAL THE WORLD, and

its associated design, a child's hands holding a globe with a band-aid on it (the Logo), on October

25, 1994 and September 19, 1995, U.S. Trademark Registration Nos. 1,860,559 and 1,920,720,

respectively. In addition, the typed drawing HEAL THE WORLD, was registered on February 8,1994, U.S. Trademark Registration No. 1,820,329. True and correct copies of the U.S. Patent and

Trademark Office Certificate of Registration Nos. 1,860,559, 1,920,720 and 1,820,329 are attached

hereto and incorporated herein as Exhibit F. Despite the fact that these trademark registrations were

cancelled in 2001 and 2002, as a result of the success of the Heal the World song, and the extent

to which the works of Jackson's Foundation were well-known and publicized throughout the world,

HEAL THE WORLD and its Logo, continue to be connected to Mr. Jackson.

Plaintiff Triumph is the owner of the registered mark MICHAEL JACKSON, U.S. Exhibit H.

Triumph is also the owner of U.S. Trademark Application Serial Nos. 77,806,397; 77,806,395;

77,806,393; and 77,806,392, for word mark MICHAEL JACKSON, plus a design (a signature).

True and correct copies of the foregoing applications are attached hereto and incorporated herein as

Exhibit I. Plaintiff Triumph is also the owner of U.S. Trademark Application Serial Nos.

77,806,377; 77,806,362; 77,806,361 and 77,806,360 for the standard character mark KING OF

POP, a name commonly connected with Mr. Jackson. True and correct copies of the foregoing

applications are attached hereto and incorporated herein as Exhibit J. Triumph is further the owner

of U.S. Trademark Application Serial Nos. 77,811,345; 77,811,342; 77,811,340; and 77,811,338 for the standard character mark NEVERLAND VALLEY RANCH, in reference to Mr. Jackson's

former home. True and correct copies of the foregoing applications are attached for the mark

THRILLER 25 THE WORLD'S BIGGEST SELLING ALBUM OF ALL TIME, plus a design.


Exhibit M. Finally, Triumph is the owner of U.S. Trademark Application Serial Nos. 77,806,913;

77,806,908; 77,806,905; and 77,806,901 for the standard character mark MJ, Mr. Jackson's initials.


Exhibit N.

All of the registered marks identified in paragraphs 22 through 28 are collectively referred to herein

as the MJJ Trademarks.The MJJ Trademarks are associated exclusively with Plaintiffs, and as a

result of sales, marketing, the media and the general public's interest in Mr. Jackson, these marks

have become well-known in the United States as identifying and referring to Plaintiffs.

Consequently, the MJJ Trademarks have developed substantial recognition among the consuming

public for their connection with Plaintiffs and Mr. Jackson's charitable works and have acquired and

enjoy a valuable reputation and significant goodwill. The MJJ Trademarks are famous not onlywithin the United States, but throughout the world entitling them to the greater protection afforded


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marks of such international distinction under both United States law and international treaties, such

as the Paris Convention and the TRIPS Agreement both of which were entered into by the United

States. From at least February 2008, Defendants have been and are currently conducting business at

and out of the locations 41605 Goodrich St., Indio, California 92203 and/or 44489 Town Center

Way, Suite 542, Palm Desert, California 92260. Defendants have created an organization that purports to carry on the work of Jackson's Foundation and make numerous false representations

regarding their affiliation with Mr. Jackson and his charity. Attached hereto and incorporated herein

as Exhibit O are screenshots from Defendants' websites. Defendant HTWF has registered 6

trademarks and filed 41 trademark applications for marks connected to Mr. Jackson, many of which

are identical or confusingly similar to the MJJ Trademarks. The registered and applied-for marks

also falsely suggest a connection between Defendant and Plaintiffs, and violate Mr. Jackson's right

of publicity. Each of these trademarks was registered and/or applied for without Plaintiffs' or Mr.

Jackson's consent. A chart summarizing these trademarks is attached hereto and incorporated herein

as Exhibit P. Defendant HTWF has registered the following trademarks referencing Mr. Jackson's

charity's name, Heal the World Foundation: Defendant HTWF further registered the standard

character mark MJ, Mr. Jackson's initials, with the U.S. Patent and Trademark Office, U.S.

Trademark Registration No. 3,567,671 on January 27, 2009. A true and correct copy of U.S.

Trademark Registration No. 3,567,671 is attached hereto and incorporated herein as Exhibit S.

Defendant HTWF also filed numerous trademark applications for marks that uniquely and

unmistakably point to Mr. Jackson and his persona. Most of these were filed immediately followingMr. Jackson's death in the hopes of exploiting the deceased artist's name and life and suggesting a

connection with Mr. Jackson. The following applications refer or relate to Mr. Jackson: All of the

registered and applied-for marks identified in paragraphs 34 through 37 are collectively referred to

herein as the Infringing Trademarks. Despite being placed on notice that their conduct was

infringing Plaintiffs' rights, Defendant HTWF continued to unlawfully use and apply to register the

Infringing Trademarks... In addition, Defendant HTWF has registered several domain names

connected to Mr. Jackson and/or Jackson's Foundation. These websites are: &let;

healtheworld.us> < healtheworldfoundation.net> < mjaid.com> and Defendant's use of the trademarks HEAL THE WORLD, HEAL THE WORLD

FOUNDATION, MICHAEL JACKSON, and MJ can be seen on Defendant's

, , < mjaid.com>, and

websites. True and correct copies of screenshots from Defendant's websites

showing the use of the MJJ Trademarks are attached hereto and incorporated herein as Exhibit U.

Defendants sell merchandise bearing many of the Infringing Trademarks, including HEAL THE

WORLD, MJ, MICHAEL JACKSON,COUNT THREE TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION


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UNDER CALIFORNIA COMMON LAW

Plaintiffs repeat and reallege the allegations of paragraphs 1 through 58 of this Complaint as if fully

set forth herein. Defendants are using in interstate commerce some or all of the Infringing

Trademarks. Plaintiffs have acquired common-law rights in the HEAL THE WORLD mark through

their use of the mark for nearly a decade, from approximately 1992 through 2002, in connectionwith charitable fundraising. The HEAL THE WORLD mark has a secondary meaning in the

charitable community and is connected to Plaintiffs. Defendants' subsequent use of the mark HEAL

THE WORLD and confusingly-similar derivatives such as HEAL THE WORLD FOUNDATION

and HTWF are likely to cause confusion, deception, and mistake among the consuming public as to

the source of and authorization for the products and/or services sold by Defendants in violation of

the common law of the State of California.

COUNT SEVEN VIOLATIONS OF THE ANTI-CYBERSQUATTING CONSUMER

PROTECTION ACT Plaintiffs repeat and reallege the allegations of paragraphs 1 through 101 of

this Complaint as if fully set forth herein. Defendant HTWF's registration of, use of, and trafficking

in the domain names , , , and which are nearly identical, confusingly similar to,

and/or incorporate the MJJ Trademarks are likely to cause confusion, mistake or deception as to the

source, origin, association or sponsorship of Defendant's goods and services in violation of Section

43(d) of the Lanham Act, also known as the AntiCybersquatting Consumer Protection Act (the

ACPA).Defendant HTWF has demonstrated bad faith intent to profit from the use of the MJJTrademarks, and upon information and belief, has in fact profited from use of Plaintiffs' trademarks.

As a result of the foregoing, Plaintiffs have suffered and will continue to suffer irreparable harm for

which there is no adequate remedy at law. Pursuant to the Court should order forfeiture,

cancellation or transfer of the < healtheworld.us> < healtheworldfoundation.net> and < mjquotes.com> domain names. That Defendants be required upon

service of this Complaint to immediately deliver up to Plaintiffs any and all products, guarantees,

circulars, price lists, labels, signs, prints, packages, wrappers, pouches, receptacles, advertising

matter, promotional, and other materials in the possession of Defendants or under their control

bearing the MJJ Trademarks, or each of them, alone or in combination with any other words, or

used in connection with the advertising, offering for sale or sale of products not authorized by

Plaintiffs. That Defendants be required upon service of this Complaint to immediately supply

Plaintiffs with a complete list of entities from whom they purchased and to whom they distributed

and/or sold products falsely bearing the MJJ Trademarks.


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Judgement

That Defendant is required upon service of this Complaint to immediately deliver up for destructiontheir entire inventory of said products bearing any of the MJJ Trademarks. That Plaintiffs be

awarded reasonable attorneys fees and have such other and further relief as the Court may deem

equitable including, but not limited to, any relief set forth under Sections 34-39 of the 1946

Trademark Act

Conclusion

By this discussion we came to know that the trademarks are on one of the great weapons in thehands of the businessman and the entrepreneurs many countries follow the common law in the

protection of the trademarks and trademark and the domain names go hand in hand , the only

exception to the territorial trade mark regime is that the trans-border reputation , in internet,

trademark has no jurisdiction by its very nature of its construct. Thus any enterprise using the

internet as a trademark will not only enjoy the monopoly but also overlap the traditionally protected

trademark system in vogue ,

The courts in India and US have been interpreting the domain names Dispute akin to Trade mark

situation inspite of other issue involved, One important issue is that the existing Trademark decides

on the basis of classification of goods, transborder reputation of brand names, invented words and

related principles to decide about infringement and passing-off and only in such contexts the

internet disputes on domain names can be decided by the Indian courts.


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Bibliography

Books

Intellectual Property Rights In Cyber Space Dr. V.C. Vivekanandan.

Intellectual property Rights and Law Dr. GB Reddy

Webvertising -Unfair competition and trade marks on internet edited by Matthias W.Stecher

American jurisprudence Websites

http;//www.wipo.com

http://www.icann.org

Legal databases

Westlaw

Lexis nexis

Manupatra
http://www.icann.org/http://www.icann.org/

Cybe r Laws Nals Ar Pro Xi m Ate Educ

Documents

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