This is article of the series of editorials written by the ADV ACS Jeetam Kumar Saini on Corporate Laws(He also Written many articles Including Companies Act, 2013, SEBI, RBI Regulations, IBC)advocatejeetamsaini@gmail.com - 9785949998
1. Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)] :-The first decision on the protection of IP rights on the Internet.
In what is known till date as a Landmark judgment in cybersquatting, the Delhi High Court held that a domain name served the same function as a trademark and was therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection. The court further observed that the disclaimer used by the defendants was not sufficient because the nature of the Internet is such that use of a similar domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a dictionary word. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff.The Bombay High Court, in Rediff Communication v. Cyberbooth & Anr 2000 PTC 209 also observed that the value and importance of a domain name is like a corporate asset of a company.
2. DM entertainment v Baby Gift House and ors. [MANU/DE/2043/2010] :-
Celebrity Merchandising.
Daler Mehndi, the most famous pop star hailing from Punjab has created a niche audience and is immensely popular amongst Punjabi-pop music lovers. The appellant company was incorporated in 1996 to manage the artist’s escalating career. The crux of the case is that the defendants had prolific businesses in selling miniature toys of Daler Mehndi and majorly cashed on to his popularity. Majorly aggrieved, the plaintiff company filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.
The plaintiff company had been assigned all the rights, titles and interests in the personality of the artist along with the Trademark, Daler Mehndi. It was contended by the plaintiff that the unauthorized or unlicensed use of or any part of the reputation of the artist, with respect to goods or services of any manner will lead to make an impression on the public that the goods or services are associated with the singer. And hence, it was submitted that such a use would lead to passing off. It was further averred by the plaintiff that such use was done for commercial exploitation without adequate permission from the person or any other authorized by him, shall constitute infringement of the person’s right to publicity.
Section 29 of the Trademark Act-1999 (hereinafter the Act) lays down the aspects of infringement of trademark. It elucidates that a when a person is using, in course of trade any mark, which is identical or deceptively similar to a registered mark and which he is not entitled or licensed to use shall be deemed to infringe onto the rights of the person who has the lawful right over the mark.
The Act does not give a specific description of passing off as a result it has been derived through judicial precedents drawn from common law. Put simply , passing off would occur when the mark is not only being used deceptively similar to the mark of another but it is being used to create confusion in the minds of the consumer that results in the damage or loss of business for the person or company who/which is the lawful owner of the trademark.
Character merchandising is an area of law which is unexplored in India. The first case that dealt with this was Star India Private Limited v Leo Burnett India (Pvt.) Ltd. The courts in India in these earlier cases, had not dealt with publicity rights. In this case the Court did so quite emphatically. The court meted out a compensatory amount to the tune of Rs. 1,00,000 to the Plaintiff. The intent of the judiciary is clear.
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