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TRADEMARK ISSUES

Cyberspace raises a variety of thought—provoking trademark and trademark-related issues. The cyberspace trademark issue that continues to get the most press is the domain name controversy. Beyond domains lies the vast array of trademark issues that ultimately are likely to occupy you and your clients much more than domain disputes. Questions of what constitutes the use, and abuse, of trademarks in cyberspace are exploding along with the web. 

For trademark owners, the internet is a profitable platform, but in certain cases, it turns out to be problematic in their business growth. These trademark owners often have to deal with certain domain name disputes inflicted by the third party like cybersquatting etc but in India, we per say do not have any Domain Name Protection Law so the cases relating to cybersquatting are decided under Trademark Act, 1999. Under the current law, section 29(2) provides for the protection of registered trademark and the protection for unregistered trademark has been provided in section 32(3). However, the act is silent on the protection for trademarks infringement in cyberspace.

DISPUTE RESOLUTION

Most domain name disputes seem to involve trademarks as it is submitted that the dispute arises with the registration or use of the domain name which infringes any legally recognized right, such as any trademark right, common law right in passing off, or any other right for that matter. As trademark laws are territorial in nature but internet in the global domain so the dispute involving bad faith registrations are typically resolved using the UDRP (Uniform Domain Name Dispute Resolution Policy) process which is developed by the ICANN. Domain (“SLD”) requested by the party seeking the domain assignment.

In India, National Centre for Software Technology (NCST) is the body that regulates country level domain name registration. On September 26, 2000 NCST added two more domain names “ind.in” (for individuals) and “gen.in” (for organizations) to facilitate registration of individuals and organizations under the .in category. The two new categories of domain name do not require the applicant’s presence in the country as an essential requirement for registration. Earlier, the applicant had to compulsorily have their offices in India to register domain name under “co.in” & “org.in” category. On October 26, 2004, the Government of India declared National Internet Exchange of India (NIXI) as the registrar of .in domain. NIXI was rendered with the function of collaborating with companies who are adept registrars and fulfill the international standards of domain name registration.

LANDMARK CASES 

Yahoo Inc. Corporation v Akash Arora 

This is the first case in which the Indian Court that discussed the issues revolving services offered through the Internet. The plaintiff, in this case, submitted that they had the registration of the domain name yahoo.com with Network Solutions Inc. and had registrations of the same in more than 69 countries. The defendant contended that he had provided a disclaimer in his website which avoided the confusion, also, that yahoo is a dictionary word and could not be protected but the High Court of Delhi held that the marks were similar, and disclaimer does not help as people still would associate it with the original yahoo, administratively or economically. Furthermore, the word yahoo was protected as it was a well-known trademark used by the Plaintiff and was distinctive. The main problem regarding this dispute arises with Cyber Twins which occurs when both the domain name holder and the challenger have a legitimate claim to a domain name then they are known as cyber twins. The cases involving cyber twins are the most difficult to resolve, because the law of trademark and unfair competition may otherwise allow both parties to enjoy concurrent use of both. These kinds of disputes also happen at two different levels; firstly, when the same mark is owned and used by different persons in respect of different goods or services ‘specialty’. Secondly, when the same mark owned and used by different persons in different countries in relation to the same goods or services ‘territoriality’.

Bennett Coleman & Co. Ltd v. Long Distance Telephone Company D-2000-0015, Adm Panel Decision, WIPO

This was the first on its kind case where an Indian Company got relief under ICANN’s URDP mechanism. The complainant company was engaged in the publication of Articles in Daily newspapers like “The Economic Times” and “The Times of India”. The complainant also published online versions of their respective newspapers under the domain name “economicstimes.com” and “timesofindia.com” The respondents registered domain name “theeconomictimes.com” and “thetimesofindia.com”. The complainant contended that the SLD of the respondent company was same as theirs and that it was meant to attract customers using complainant’s goodwill. Hence, the use of the respective domain names similar to that of complainant was in bad faith.

The matter came before the panel of Mediation and Arbitration Centre of WIPO and the panel decided that the two domain names of respondent should stand transferred to complainant. It must be noted that this case was decided in a span of just 45 days with the help of E-magistrate mechanism. The whole procedure took place online.

CONCLUSION

With the emerging trend of modernization of technology, it is crucial to have a meaningful legal discourse on the intellectual property issues that are set to barrage the cyber world. Solutions are critical to the present discourse. Traditional regulations revolving around intellectual property protection are not enough to be applied in cyberspace – more is vital, for reasons of the typical challenges faced by the realm of cyberspace. Border control measures, in the context of global trade and international market and e-commerce, are necessary to be granted a safe environment for import and export free from infringing intellectual property endeavors.