Trademarks

For circulation amongst the
online course subscribers
Paper I
Study Material on
TRADEMARKS
Contributed by
Prof. KN Chandrasekharan Pillai

Ms. Versha Vahini
Mr. Devashish Bharukah
and
Mr. Alok Gupta
Revised by
Ms. Jaya V S
Asst. Res. Prof., ILI & Programme Co-ordinator
Indian Law Institute

Bhagwan Das Road
New Delhi - 110001
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TRADEMARKS
Contents of this Part
Introduction
Registration of Trademark
Registrability of Trademark
Deceptive Similarity
Passing Off
Infringement under the Trade mark Act, 1999
Well-known Trademark
Fundamental of Trademarks
Trademark is a symbol that allows a purchaser to identify goods or services that have been
proved satisfactory and not to buy goods or services that have not been satisfactory.
Trademarks serve mainly three purposes viz. (i) encourage the production of quality
products; (ii) reduce the customer’s costs of shopping and (iii) help the customer to make
decisions on purchasing products.
Trademarks help promote economic efficiency. If trademarks are not allowed to be

registered with the manufacturers it may eventually take away the incentive of trademark
owning manufacturers to make investments in quality control. There would thus be no
healthy competition among the manufacturers leading to the loss of vitality of the
economy. If we do not have a system of having trademark a manufacturer would get
nothing by improving his product’s quality. And consumers would not be in a position to
identify high or low-quality products. In such a situation a manufacturer who reduce the
price by reducing quality may pocket the benefit of the market. The consequence would be
attempts to produce inferior quality products rather than competition to produce better-
quality products.
Today the uniformity of quality of products in the marketplace is the result of the use of
trademarks rather than the inherent nature of production or the reflection of altruistic
motives of manufacturers or distributors. In a system wherein trademarks are allowed to be
infringed, all may take a free ride on the successful sellers trademark and reputation, there
would be no incentive to distinguish one’s own goods and services.
Trademarks reduce the customer’s cost and agony of acquiring information about products
and service. If a person knows by his experience or experience of others that a product is of
good quality he would go for that brand without much search. With reference to the
question of new trademarks if the customers are willing to pay for the new brand to
establish itself through advertising then the rational potential entrant will have incentive to
enter the market and enjoy success. It is for the customers to do the needful.
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Trademarks are universal phenomena. The legal systems of free market economies as well
as that of the socialists’ economies recognize some form of identification of the source and
quality of goods.
The law of trademark is a branch of unfair competition or unfair trade practices. In other
words, trademark law is a part of the generic law of unfair competition. Trademark
infringement is a commercial tort and all persons who infringe a trademark are liable as
joint tortfeasors.
Trademark infringement law and unfair trademark law a different. The essential element of
a trademark is the exclusive right of its owner to use a word or device to distinguish his
products. On the contrary a claim of unfair competition consider the total physical image
given by the product and its name together. In giving protection to trademark, the law is
imposing ethical and moral norms on the competitive process. It is view that the unethical
and unfair to allow one two appropriate goods which a competitor has built up by quality
control and advertising in a trade symbol. Trademark infringement is regarding as an
unacceptable access in the heat of competitive rivalry.
In a sense the law of trademarks reflects the societal view that certain forms of competitive
behaviour in business practices are unfair. Today there is consensus that gaining customers
by the use of confusingly similar to trademarks is contrary to all concepts of commercial
morality ethics and fairness.
The logic underlying protection of trademarks seems to be the fairness involved in the first
user being given the recognition, as he is the first to appreciate the value of the mark who
had gone through the efforts necessary to establish the mark as a meaningful symbol. To
permit others to exploit the first user’s efforts is unjust. From the customers’ standpoint
this conduct is an unfair trade practice inasmuch as it deceives the purchaser. In that sense,
it is a fraud on the public, which acquires a right in course of time to get a particular brand.
It had been argued by many scholars that the trademark like a patent or copyright served to
differentiate the product with which it is associated and thus leads to control over a
segment of the market.
Many judges and writers have later however restricted the contention that trademarks
partake of the essential aspects of monopoly. Perhaps Judge Frank’s conclusion is
appropriate to appreciate the question in proper perspective. He said that judges should
keep in mind “the basic common law policy of encouraging competition and the fact that
the protection of monopolies in names is but a secondary and limited policy.” (Eastern
Wine Corp. v. Winslaw – Warren-Ltd. 137 F.2d 955).
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It is argued by many that trademarks actually create a barrier to entry to the market. It does
not appear to be correct. In fact when consumers have the benefit of price advertising retail
prices are dramatically lower than without advertising. Advertising may reduce, not raise
the cost of products/services. However, when such barriers exist it may be noted that they
exist because consumers prefer the brand with the favourable representation and are willing
to pay a higher price for them.
Trademarks are symbols representing essential element of the competitive process. The
Senate Committee in America while reposting the bill that became the Federal Trademark
Act of 1946 (Lanham Act) explains the fundamental basis of trademark protection thus:
“Trademarks, indeed, are the essence of competition because they make possible a choice
between competing articles by enabling the buyer to distinguish one from the other.
Trademarks encourage the maintenance of quality by securing to the producer the benefit
of the good reputation which excellence creates. To protect trademarks, therefore, is to
product the public from deceit, to foster fair competition, and to secure to the business
community the advantages of reputation and goodwill by preventing their diversion from
those who have created them to those who have not….” (S. Rep. No. 1333 79 th Cong. 2d.
Session. (1946) US CCAN 1275).
Trademark confers a ‘right to exclude’ – a limited exclusive right. In this view it can be
said that trademark is a form of property. The property parameters of a trademark are
defined very differently from any other kind of property. The exclusive property right in
the trademark is defined by customer perception. Trademark owners has a property right
only in so far as is necessary to prevent customer confusion as to who produced the goods
and to facilitate differentiation of the trademark owner’s products. As a “property right”
marks can be alienated like any piece of property. Trademarks can be bought, sold and
licensed.
Trademark has no existence apart from the goodwill of the product or service it symbolizes.
In a sense a trademark is a “property” only in the sense that it is a symbol of the goodwill.
When an article bearing a trademark is sold, the goodwill that trademark signifies is a
factor in making the sale. The goodwill’s existence is in the minds of the buying public. In
fact goodwill is a business interest that reflects the basic human tendency to continue
purchasing things from a seller who has offered goods that the customer develops a liking
in course of time. The goodwill together with its symbol the trademark – are classified as
property. It is non-tangible and non-physical. When alienated together, trademarks and
their goodwill are subject to ownership like any other form of intangible property rights.
Even though trademarks and goodwill are forms of non-physical property they can be
carried on in the books as an asset of the company.
While free competition is a goal, it does not override protection for the goodwill
established by a user for though the goodwill name and reputation of the producer remains
his private property and may not be traded upon and exploited by the competitors.
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Trademark Infringement as Unjust Enrichment
A trademark that has attained consumer recognition has an inherent value and should be
protected from invasion by those how would like to profit from advertising expenditure that
they did not make. In this sense trademark infringement is an undue enrichment.
Trademark law insures that the brand information received by consumers is accurate. They
in fact reduce losses caused by deceit and thus help the consumers. In this sense it can be
said that protection of trademarks is only a facet of consumer protection.
Historically, trademark law grew up as a branch of the tort of fraud and deceit, unfair
competition of which trademark infringement is a part, is, founded on the right of both
dealer and the purchasers to be protected from fraud of which both are victims. Sometimes,
the private rights of trademark owners conflict with the right of the public to know the truth
about the significance of a trademark.
A trademark not only symbolizes the goodwill behind the physical products but also the
penumbra of psychological factors that surround the product. These factors of
merchandising the legal issues of “likelihood of confusion” and “dilution” of the effect of a
given trademark. Sometimes people confuse trademarks law because of ‘irrational’
purchasing decisions of consumers, but this confusion is not justified inasmuch as
trademarks are neutral symbols insofar as advertising and a product’s usefulness is
concerned.
REGISTRATION OF TRADEMARK
PROCEDURE FOR REGISTRATION
1. Application for Registration
Section 18 of the Trade Marks Act 1999 says that any person, claiming to be the proprietor
of a trademark used or proposed to be used by him, who is desirous of registering it shall
apply in writing to the registrar in the prescribed manner for the registration of the mark.
Essential Ingredients for registration:
(i) Any person
Any person includes individual, partnership firm, association of persons, a company

whether incorporated or not, a trust, Central or State Government. It does not allow the
representative of the proprietor to apply in his own name.
(ii) Claiming to be proprietor
A person may obtain proprietorship in a trademark either by use or by registration under

this Act. He may also acquire proprietorship by assignment or by inheritance. In case of
unregistered mark but in use, proprietorship will be the person who first used it in case of
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two rival claims whereas in case of proposed use of mark, which comes up for registration,
the designer or the originator will be the proprietor in case of any controversy. Between
two rival claims of user of the mark and designer of the mark the former will be preferred.
At this stage of making application, the proprietor has to show his bona-fide claim. If the
mark is not mistaken on the face of application and also there is not objection to the claim,
the registrar is entitled to accept the application.
In case of manufacturer having a trademark abroad has made goods and imported them into
this country with foreign mark on them, the foreign mark may acquire distinctive character
and in such circumstances, the same or colourably similar mark cannot be registered not
because it is registered abroad but because it lacks distinctiveness.
(iii) Used or proposed to be used
The law permits registration of a mark, which has been or is being used or is proposed to be
used. In case of proposer of the mark, he must have definite and present intention to use the
mark as on the date of the application. Definite and present intention is different from the
general intention to use the mark sometime in future to something, which he may think
desirable later on. Definite and present intention means a real intention to use the mark for
resolved and settled purpose. In case of used mark, the use in itself is not sufficient but is to
be accompanied with real intention continue with the use.
The ‘proposed use’ of the trademark must be normal and fair, which, however, may include
variations in presentation or colour difference but such variation should not stretched to far
so that the used form will be totally different from the one sought to be registered. If
proprietor does not have the real and present intention to use the mark, and try to register is
for some mala-fide intention, such as to block the mark, it would amount to registration in
bad faith1, which is a serious form of commercial fraud.
The application for registration of the mark must be filed with the Registrar in the
prescribed manner who has been conferred the discretion either to accept or reject or accept
with amendments, modifications, conditions or limitations2. The Registrar must
communicate his decision in writing with the applicant and is under obligation to give the
reasons in cases of rejection or acceptance on conditions or with modification.3
2. Withdrawal of Acceptance
In case the Registrar decides to accept the mark for registration, but before actual
registration, the Registrar may withdraw his acceptance under certain circumstances under
section 19 of the Trade Marks Act 1999. For example, if the Registrar is satisfied that the
application is being accepted in error or that circumstances are such that such registration
should not be granted, he has been empowered to withdraw the acceptance of application.
1
K. C. Kailasam/Ramu Vedaraman, Law of Trademarks and Geographical Indications (Wadhwa and
company, Nagpur) 2003 at 239
2
Section 18 (4)
3
Section 18 (5)
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This power can be exercised subject to certain conditions. Registrar has to issue a notice,
specifying the objections, which has led him to think that the application has been accepted
in error or why the mark should not be registered, to the applicant and give him an
opportunity of being heard by requiring him to show cause why acceptance should not be
withdrawn.4
3. Advertisement of Application
Once the Registrar for registration has accepted the application, he shall get the application
advertised in the prescribed manner after acceptance. However, the application shall be
advertised before acceptance if the application is related to a trademark to which section
9(1) and 11(1)(2) apply or in any other case as it seems expedient to the Registrar.5 The
purpose of advertisement is give information to the public at large in respect of the
trademark advertised and afford an opportunity to oppose the registration of the mark on
given grounds. So the advertisement must be complete in all respects and otherwise the
very purpose of advertisement will be frustrated.6 If there is incomplete or incorrect
information in the advertisement, it would amount to misrepresentation, which deprives a
prospective opponent of the opportunity to get full information and of filing an effective
opposition.7
4. Opposition to Registration
Section 21 of The Trade Marks Act 1999 allows any person to oppose an application for
registration. “Any person” need not be only a prior registered trademark owner. 8 Even a
customer, purchaser or a member of the public likely to use the goods may object to the
registration of a trademark in respect of such goods on the ground of possible deception or
confusion. The period within which opposition to the application for registration can be
filed is three month from the date of advertisement, which can be extended by Registrar not
exceeding one month on application made to him and on payment of the prescribed fee. So
the period cannot exceed four months in toto.
The grounds of opposition should be based upon the specific provisions of law. The
grounds based on section 9, 11, 12, 13, 18, 24, 33, 35, 36(2) etc. would be suitable to
challenge the application of registration. However, the grounds based on section 11(2) and
(3) are available only to the proprietor of earlier trademark.9
On receiving the notice of opposition, the Registrar is under obligation to send a copy of
the same to the applicant for registration. Upon receiving such notice, the applicant is given
two months time, from the date of receipt of the notice, to file counter statement together
with the prescribed fees to the registrar. This copy of counter statement shall be sent to the
4
Relevant Case: Tikam Chand and Another v Dy. Registrar of Trade Marks 1998 PTC 542 (Del).
5
Section 20
6
Relevant case: Virendra Sethi v Kundan Das 20002 (25) PTC 50 (Del)
7
Ashoka Dresses v Bonn’s Shirts & Another (2000) RPC 507
8
P. N. Mayor v Registrar of Trademarks AIR 1960 Cal. 80
9
company, Nagpur) 2003 at 261.
8
person who has filed opposition under section 21 (3). The applicant and the opponent are
given the opportunity to adduce evidence in support of their claims and may also be given
an opportunity to be heard if they so desire under Section 21 (4).10 However the onus is on
the opponent to allege and prove the existence of facts, which may lead the tribunal to
assess the existence of likelihood of confusion in the minds of the public, which includes
likelihood of association with the earlier mark. But this does not relieve the applicant of his
onus to satisfy the Registrar or the court that there is no reasonable probability of
confusion, in respect of all goods coming within the specification applied for and not only
in respect of the goods on which he is proposing to use it immediately. 11
5. Registration
Subject to Section 19 the Registrar is under obligation to register the Trade Mark under
section 23 if he decides in favour of applicant after listening to the opposition. However,
Central Government may direct otherwise on certain grounds. The mark can also be
registered jointly for two or more persons under section 24 if two or more persons agree to
work jointly. In such cases, the registrar shall require a copy of joint venture agreement to
satisfy himself because none of them is entitled to use the mark independently. The section
in its earlier part specifically precludes the Registrar from registration of two or more
persons who use the trademark independently or propose to use it independently. The
registration shall be made as of the date of the application and the applicant shall be issued
a certificate of registration. However the registrar is empowered U/S 23 (4) to amend the
register or certificate of registration for the purpose of correcting a clerical error or an
obvious mistake. The applicant must complete all formalities within one-year time period
or within such time as may be given in the notice. If defaulted, the application may be
treated as abandoned after the registrar gives notice in this regard to the applicant.
Section 25 provides that Registration shall be for a period of ten years but may be renewed
from time to time in accordance with the provisions of this act. Renewal can be made
before the expiration of the registration. In case of default in renewal before expiration, the
act provides for the grace period of six months from the date of expiration for renewal on
payment of prescribed fee. However, before expiration of the last registration of a
trademark, the Registrar shall send notice in the prescribed manner to the registered
proprietor of the date of expiration and conditions as to the renewal. If the proprietor does
not file for renewal, the name of the mark will be removed from the register. However, the
Registrar is entitled to restore the mark in register if it is just to do so after six month but
before one year from the expiration of the last registration, on the receipt of application and
on payment of the fee by the proprietor. Such restoration shall be for another ten years to
period.
10
Case relating to adducing evidence: Hemla Embroidery v Hindustan Embroidery FAO No. 21 of 1968;
Hastimal Jain trading as Oswal Industries v Registrar of Trade Marks 2000 PTC 24; Jagajit Industries Ltd. v
The Registrar of Trade Marks 2001 PTC 24; Kantilal Thulasidas Jobanputra v Registrar (1982) PTC 127;
Torrent Pharmaceuticals Ltd. v Union of India (1998) (2) Arb. LR 45
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9
REGISTRABILITY OF THE MARK AS TRADEMARK:
Any mark, which is not hit by the definition and section 9, qualifies for registration.
However, a mark qualified under section 9 has to meet the positive objections under section
11 to be finally registered. Section 11 is the qualification of section 9. Mark having crossed
the threshold under section 9 is capable of getting the protection of the Trademark Act
subject to section 11. It deals with prohibition on registration but does not hit the inherent
capability of mark as to its registrability. The marks prohibited under section 11 may not be
desirable based upon public policy considerations.
Under The Trademark Act, 1999, trademark is defined as to mean, inter alia, a mark,
which can be represented graphically and is capable of distinguishing the goods or
services of one person from those of others.
In a way, the definition itself prescribes two features to be present in any mark to be a
trademark:
Capability of being represented graphically;
Capability to distinguish the goods or services of one person from those of others.
Absolute Grounds for Refusal of Registration under Section 9
Whereas Section 9 of The Act lays down the ground for on the basis of which, the
registration of the mark can be denied absolutely. One of the grounds is ‘if the mark is
devoid of distinctive character’12. The phrase ‘distinctive character’ implies the
‘incapability of the mark to distinguish’ the goods or services of one person from that of
the others. It also implies that the mark in itself should be distinctive in certain cases. For
example, common word of dictionary or the name of the place can not be registered unless
it is shown that the common word or the name has become distinctive of his goods or
services in the mind of the purchasing public, but if he succeeds, then he will be entitled to
protect his mark by registration.13
Another ground14 for refusal to register the mark is that the mark should not indicate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of services or other characteristics of the goods or
services. In addition to these, a mark stands disqualified from registration if represents the
shape of goods results from the nature of the goods themselves or shape of the goods
necessary to obtain a technical result or shape which gives substantial value to the goods. 15
12
Section 9(1)(a)
13
14
Section 9(1)(b)
15
Section 9(3)
10
Yet another ground16 is that the mark must not be consisted of the marks or indications,
which have become customary in current language or in the bona fide and established
practices of the trade it is not desirable to monopolize such marks.
These are the grounds, which are specific to the mark that means, if the mark is affected by
any of these characteristics, it cannot be registered. But this is not the end. The mark not
affected by any such disqualification, has to pass what can be called as the effect test. That
means, the mark should not deceive the public or cause confusion or hurt the religious
susceptibilities of any class or section of the citizens or be scandalous or obscene.17 The
section 9 lays down the pre-requisites of qualification for the protection of trademark law.
Capability to Distinguish Section 9(1)(a)
In National Bell Co. v Metal Goods MFG. Co18., Supreme Court of India observed that
distinctive in relation to the goods or services as meaning ‘adapted to distinguish’ goods
with which the proprietor is/ may be connected. Whereas in Davis v Sussex Rubber Co.
Ltd.19, the Court of Appeal drew the distinction between capable of distinguishing and
adapted to distinguish by saying that ‘capable of distinguishing’ seems to have a somewhat
wider import than the expression ‘adapted to distinguish’ as it embraces marks which have
not at the date of the application, but which, if used long enough, may become distinctive
of the goods of the proprietor of the mark. The court in this case, observed that ‘capable of
distinguishing’ might perhaps refer to the future, in the sense that a word may be able to
distinguish although at the moment of time at which the application is made it may not
have become fully effective to distinguish. However, the Court of Appeal observed that the
general considerations, which have to be taken into account in construing the expression
‘capable of distinguishing’, are the same as in construing ‘adapted to distinguish’. 20
In determining the capability to distinguish, the authority must take into consideration both
inherent capability and factual capability to distinguish. Inherent capability may mean that
irrespective of the peculiarities of the trade or the practice of other traders, the mark is
shown to possess the capability of distinguishing the goods to which it is applied. For
example, a mark having direct reference to the character or quality of the goods is
considered as inherently not capable of distinguishing. However Indian Trademark
Registry takes the view that if the reference to the character or quality is only indirect or
suggestive, the mark can be considered. The ‘factual capability to distinguish’ depends
upon the facts and circumstances of each case. In each particular case, it become a subject
of inquiry whether the mark by virtue of its being use or any other circumstances, it is in
fact is capable of distinguishing the goods. The Supreme Court in National Bell case
observed that in determining the distinctiveness, regard must be had whether it is inherently
16
Section 9(1)(c)
17
Section 9(2)
18
(1970) 3 SCC 665
19
(1927) 44 RPC 412; (1927) 2 Ch 345
20
English Cases: Electrix Ld’s., Appl. (1958) RPC 176; Philips’ Phonographische Industrie’s Appl. (1955) 72
RPC 183; Chaseside Engineering Co. Ld.’s Appl. (1956) RPC 73; Verve’s Records Inc.’s Appl. (1958) RPC
3; Tastee Freez International Ld.’s Appl. (1960) RPC 255
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distinctive or is inherently capable of distinguishing and by reason of its use or any other
circumstances, it is in fact adapted to distinguish or is capable to distinguishing the goods.
Indicating Nature or Characteristics under Section 9(1)(b)
Section 9(1)(b) lays down the other ground of disqualification of the mark for registration.
It says that the mark consists exclusively of marks or indications, which may serve in trade
to designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of services or other characteristics of the
goods or services. In addition to these, a mark stands disqualified from registration if
represents the shape of goods results from the nature of the goods themselves or shape of
the goods necessary to obtain a technical result or shape which gives substantial value to
the goods.21
The expression ‘kind’ includes the name or size or type of the goods or services. This is
based on the public policy of not affording registration to the generic description of the
goods which are the only available method of description of the goods would not be having
a capability to distinguish. E.g. words like extra, small, big, liquid, solid etc.
Any mark indicating the ‘quality’ of the goods or services is the property of everybody and
no one can be allowed to monopolize it. e.g. superior, best, No. ! etc. . Such words are
found to be devoid of distinctiveness.
Indications of quantity or standard weights or measures or numbers of contents such as

kilograms, liters, gallons, grams etc are not allowed, as these are needed by every trader in
respect of all the goods and services.
Words describing intended purpose or the primary functions of the goods or services
such as giving soothing effect or giving absolute cleaning. For example, word SAFFO22
was not given registration for cleaning powder and liquids on the ground that word was too
close to the descriptive of SAFF mean ‘clean’.
Similarly words indicating value or worth of any product are incapable of getting
registration such as Moneysworth.23
Marks indicative of place of manufacture or sale of goods or time of production are not
allowed for registration. E.g. Punjab basmati or Talvandi rice or prepared in one day etc.
Marks common to trade Section 9(1)(c)
Section 9(1)(c) prohibits the registration of marks that consists exclusively of marks of
indications which have become customary in current language or in bona fide and
21
Section 9(3)
22
Chef TM (1979) RPC 143.
23
Moneysworth Trade Mark (1976) RPC 317.
12
established practices of the trade. This is to protect the free use of indications or marks,
which are already in use in the trade, from being monopolized as a trademark. Moreover
such marks lack distinctive character. Words or indications common to trade are open to
everybody for use. E.g. generic names notified by the WHO as non-proprietary names, are
open to the trade to use.
Proviso to Section 9(1)
The proviso to Section 9(1) provides that any mark or name, which though is not distinct,
nevertheless may be registrable if it is shown that it has by virtue of use acquired a
distinctive character. That means, as a result of use, the mark has become distinctive of the
goods or services of the proprietor. In an well-know case in Registrar of Trade Marks v
Hamdard National Foundation (India)24 the Delhi High Court gave approval of the
registration of the mark ‘SAFI’ by holding that words having direct relation to the character
and quality of the goods, sometimes lose their primary meaning and acquire secondary or
good specific meaning of a particular manufacturer. If it happens then such marks may be
registered as trademark.
In English case, Cycling IS…TM Applications 25 the Court laid down the test to determine
the distinctiveness on the basis of use by holding that
“Right view to take of a particular sign may well depend upon the use (if any) that has been
made of it and more generally upon the usage of persons involved in the relevant field(s) of
commercial activity.”
Other Relevant English cases on this point are given as under:

Merz & Krell GmbH & Co. (2001) ETMR. 105.
Windsurfing Chiemsee Produktions und Vertriebs v Boots-und Segelzubehor Walter Huber
and Granz Attenberger (2000) Ch. 523
LLOYDS SCHUHFABRIK Meyer & Co. GmbH Handel BV (2000) FSR 77.
Philips Electronics v Remington [1999] RPC 809
British Sugar Plc v James Robertson & Sons Ltd. [1996] RPC 281.
Bach and Bach Flower Remedies Trade Marks [2000] RPC 513.
Marks deceiving the public or cause confusion: Section 9 (2)(a)
Section 9 (2) (a) seeks to prevent the registration of marks, which are of such nature as
likely to deceive the public or cause confusion.
Generally deception or confusion might arise by reason of similarity between the proposed
mark and another existing mark or might result from the nature of the mark itself or nature
of the use of the mark.26 For example, Deception in the nature of the Mark may be in the
form of misrepresentation as to the characteristics of the goods or services or to the effect
24
AIR 1980 Del 180 (DB)
25
(2002) RPC. 37, 729
26
13
that they were made in a specified geographical region or place, when in fact not so made.
Deceptive use may involve where mark contains false or misleading information. E.g. use
of word Regd. when the mark is actually not registered.
Section 9(2)(a) is intended to apply where the deception or confusion arises from the nature
of the mark itself27 and not to the questions based upon the similarity of the mark with
other existing mark which is a ground of refusal under section 11 which deals with relative
grounds of refusal for registration. Hence, a mark not deceptive or confusing may qualify
for registration even if the mark has resemblance or identity with other mark but is distinct.
Section 9 (2) (b) forbids registration if the mark contains or comprises of any matter likely
to hurt the religious susceptibilities of any class or section of the citizens of India. But this
does not forbid the use of name or pictures of God or Goddess or religious heads as
trademarks that are not offending. Examples of offending use may be use of Hindu Gods in
respect of beef or meat or Muslim Saints for port products etc. however, the perception and
the practice is that usually symbols relating to religion, gods or goddesses, place of worship
should not be registered even if it is not hurting but because these are part common heritage
and should not allow any monoplization.
Section 9 (2) (c) prohibits the registration of mark if it is scandalous or obscene. Whether
the mark is scandalous or obscene or not depends upon the current religious, social and
family values.
In addition to all these ground for refusal of registration of a mark under section 9(3) on the
ground of shape will not be entertained for registration. The shape of the goods resulting
from its nature28 or giving substantial value to goods or shape of goods necessary to obtain
technical results29 would disqualify the mark for registration. Whereas the definition of the
mark itself provides that mark includes shape of goods or packaging. However generally
the shapes would not be allowed registration unless it is shown that the shape is distinctive
of the goods or services.
Relative Grounds for Refusal of Registration under Section 11
While Section 9 provides for absolute grounds for refusal of an application for registration
of trademark, section 11 provides for relative grounds for refusal to register any trademark.
Subsection (1) of section 11 provides that a mark shall be refused registration if it is
identical with an earlier trademark covering similar goods or services as are covered by
earlier trademark. Also refusal can come if the mark is similar to the earlier trademark
covering identical goods or services as are covered by the earlier mark. The register is
under obligation to refuse the registration on the ground of ‘likelihood of confusion’ on the
part of the public. Earlier trademark need not necessarily be registered. If the trademark is
27
This is in consonance with the heading of section entitling “absolute grounds for refusal”.
28
Philips Electronics v Remington [1999] RPC 809
29
Philips Electronics v Remington [1999] RPC 80; Triomede (PTY) Ltd. v Beecham Group PLC FSR [2001]
583.
14
having earlier priority date or is entitled to protection by virtue of being well-known

trademark, it would sufficiently be an earlier mark for the purposes of this section.
So the Registrar before refusing the register a mark that has come up for registration has to
function at three levels. One, he must find out the identity or similarity of mark. Two he
must look for identity or similarity of goods or services to which the mark is going to be
applied. And three, he must check out whether there is any likelihood of confusion on the
part of the public.
Identity or Similarity of Marks
Test for determining Identity or similarity of Marks
For determining the identity or similarity, the rules of comparison are developed over the
years and which J. Parkar aptly explains in Pianotist Company Ltd.’s Application 30 case.
According to him one must judge the two marks both by the look and by the sound;
consider the goods to which the mark is to going to be applied; consider the nature and kind
of customers who are likely to buy the goods; consider as to what would happen if both the
marks are used in the normal way as a trademark for goods of the respective owners of the
mark. After considering all these circumstances, if one comes to the conclusion that there
will be confusion, registration must be refused.
While comparing, one must not take a part of the word rather consider the whole and
compare it. Supreme Court31 while recognizing it further observed that the approach to
comparison should be from the point of view of a man of average intelligence and of
imperfect recollection. Whether to such a man, the overall structure and phonetic similarity
or similarity of the idea in the two marks is reasonably likely to cause a confusion between
them, is the test.32
Search Procedure
To determine the identity or similarity with the earlier mark, the Registrar needs to go
through the search procedure before registration. Search is confined to a particular class
in which registration is applied for. However, search should be carried on amongst the
marks not only for identical goods but also for similar goods.
[Schedule IV to the Trade Marks Rules provides for classification of the goods and services
in 45 classes – goods being classified in classes 1 to 34 and services included in classes 35
to 45. For international classification of goods and services published by WIPO, one can
visit www.wipo.org earlier trademark is one that is already registered or subject of a
convention application33 of an earlier priority date or is one which is entitled to protection
as a well known trade mark.
30
(1906) 23 R.P.C. 774
31
In Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142. Also refer to Amritdhara Pharmacy v
Satya Deo Gupta AIR 1963 SC 449; Torrent Pharmaceuticals v Wellcome Foundation Ltd. 2001 (2) CTMR
158.
32
Corn Products v Shangrila Food Products Ltd. AIR 1960 SC 142
33
India being member of Paris Convention for protection of industrial property is bound to accord priority
date under section 154.
15
Identity or similarity of goods or services
To determine the identity or similarity, the Registrar needs to go through the search
process before registration. Search is to be done in the specific classes of goods and
services in which the proposed mark falls is going to fall. However, search would include
not only amongst the identical goods but cover similar goods.
For this purpose, it is advisable that applicant should be precise in stating the specification
of goods or services for which the mark is sought to be registered. However, the
specification, if indefinite, may be a bar to the registration. If the applicant gives
unnecessarily wide specification, there are greater chances that he may found a prior
registration in same or similar mark in that class which may result in an objection to his
registration. Moreover, even registrar may object to wide specification of goods under rule
25(15) of Trademarks Rules.
One thing is to be made clear here that classification of goods and services is not the
criterion for determining whether two sets of goods or services are of the same description.
Indeed, goods comprised in same class may include goods of a different description and
different description of goods may fall in the same class. [Schedule IV to the Trade Marks
Rules provides for classification of the goods and services in 45 classes. For international
classification of goods and services published by WIPO, one can visit www.wipo.org
Likelihood of confusion [Section 11(1)]

Section 11(1) of the Trade Marks Act 1999 says that if because of the identity or similarity
of marks or goods or services, there exists a likelihood of confusion on the part of the
public, which includes the likelihood of association with the earlier trademark, the
mark shall not be registered save as otherwise provided in section 12.
Laying down the test in Amritdhara Pharmacy case34 the Supreme Court observed:
“for deceptive resemblance two important questions are: (1) who are the persons whom
the resemblance must be likely to deceive or confuse, an (2) what rules of comparison are
to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an
appropriate description of the state of mind of a customer who, on seeing a mark thinks
that it differs from the mark on goods, which he has previously bought, but is doubtful
whether that impression is not due to imperfect recollection… the question has to be
approached from the point of view of a man of average intelligence and imperfect
recollection.”
The risk of likelihood of confusion is considered as the most in cases where both the mark
and goods and services are identical of the existing mark and lesser where either of them is
identical. Whereas in the instance of similarity of mark and good or services risk is
considered lesser than in case of identical marks.
34
Amritdhara Pharmacy v Satyadeo Gupta AIR 1963 SC 449.
16
The provision in section 11(1) is mandatory on the Registrar and therefore when this
section hits an application, the Registrar is bound to refuse registration. The issue under
this section can be raised by the Registrar, prior to acceptance of the application, and by
any person after the mark is advertised. In the absence of any attack on the registration fo
the earlier trademark, it is to be assumed that there has been notional use of the earlier
trademark. The reason for this is that unless one assumes notional use of the earlier
trademark, the question whether later on the trademark, proposed to be registered, will be
give rise to a likelihood of confusion on the part of the public will become difficult to
answer. At the same time, ordinary practical business probabilities having regard to
circumstances of the case should be considered rather than constructing imaginary and
unlikely cases.
In Dalip chand case35 an application to register Escorts for electric iron, etc was opposed by
Escorts Ltd. The Assistant Registrar dismissed the objections on the ground that applicant
had established prior use and honest concurrent use. On appeal, Delhi High Court set aside
the orders of the AR and held in this particular case that it should be considered whether
the mark has come to be known and associated with the name of the opponent, not
necessarily with the particular goods of the same description but generally with its goods.
In this case, it could be shown that the mark escorts has been quite extensively used in the
market by the respondent with the result that any goods which may be marketed under this
mark will be associated with the name of the respondent, so that people buying may feel
that it is product of the respondent. This is sufficient justification for refusing the
application of a similar trademark.
DECEPTIVELY SIMILAR
Section 2(h) of the Act defines mark, which can be called deceptively similar. According to
the definition, a mark shall be deemed to be deceptively similar to another mark if it so
nearly resembles that other mark as to be likely to deceive or cause confusion.
The act does not lay down any criteria for determining what is likely to deceive or cause
confusion. So every case of deceptive similarity depends upon the facts and circumstances
of each case after applying the test, which has been laid down by judiciary through cases.
In H. C. Dixon36, the Court held that likely to deceive is a question largely one of first
impression and not necessary to prove the intention to deceive. It is sufficient if the
ordinary user entertains a reasonable doubt37 as to the source of the product. It is the likely
hood of deception and not the actual deception, which is the deciding factor.
PASSING OFF
With the tremendous growth in trade and commerce, the competitors or other traders tend
to imitate the well known or reputed trademarks by imitating colour scheme or get up or
packaging with a view to pass off such goods as goods of the genuine owner. In cases of
35
Dalip Chand Aggarwal v Escorts Ltd. AIR 1981 Del 150.
36
H. C Dixon & Sons Ltd. v Geo Richardson & Co. Ltd. 50 RPC 36, p. 374
37
Jellineck’s Appl., (1946) 63 RPC 59. P. 78
17
registered trademarks, the owner can move the court under this Act for the infringement
whereas in cases of the unregistered trademarks, the Act recognizes the Common Law
remedy of passing off. The tort of passing off is based upon the principle that “no man is
entitled to represent his goods as being the goods of another man; and no man is required to
use any mark, sign or symbol, device or means, whereby without making a direct
representation himself to a purchaser who purchases from him, he enables such purchaser
to tell a lie or to make a false representation to somebody else who is the ultimate
purchaser.”38
The purpose of this remedy is three fold39:

(i) Protect the interest of the trademark owner in his advantageous relations he has
created in the market place
(ii) Protect the interest of the consumer or purchaser of goods against acts tending
to create false impressions and to deceive or confuse him by inducing the belief
that the business or products of one manufacturer or trader are those of another
(iii) Protect the social interest by promoting fair dealing in the market place and
prevent unethical and unfair practices in trade.
The plaintiff, in an action of passing off, has to establish that his business or goods has
acquired the reputation and that his mark has become distinctive of his goods among the
public at large. He has to establish that there is likely hood of deception or confusion int eh
minds of the public. He, however, does not have to establish the fraudulent intention on the
part of the defendant. Thirdly, he has to establish that confusion is likely to cause damage
or injury to the reputation, goodwill and fair name of the plaintiff. He need not prove the
actual loss or damage in an action of passing off.
The probability of deception is a question of fact, which depends upon a number of factors
as held by Supreme Court in Cadila Healthcare case40:
(i) Nature of the mark
(ii) Degree of resemblances between the marks.
(iii) Nature of goods in respect of which they are used
(iv) Similarity in the nature, character and performance of the goods of the rival
traders.
(v) Class of purchasers, who are likely to buy the goods bearing the marks, their
education and intelligence and a degree of care they are likely to exercise.
(vi) Mode of purchasing
(vii) Any other surrounding circumstances which may be relevant.
Before that, Bombay High Court in Hiralal Prabhudas v Ganesh Trading Company41 laid
down various factors to be considered, some of which are as follows:
38
Singer Manufacturing Co. v Loog (1880) 18 Ch. D. 395, p. 412.
39
Stephen P. Ladas on Patents, Trade Marks & Related Rights (Vol II – 1975)
40
Cadila Healthcare Ltd. v Cadila Pharmaceutical Ltd. (2001) 5 SCC 73. Other important case is: Mahendra
and Mahendra Paper Mills Ltd. v Mahindra and Mahindra Ltd. AIR 2002 SC 117.
41
AIR 1984 Bom. 218
18
(i) Marks are remembered by general impressions or by some significant details

rather that by a photographic recollection of the whole. So over all similarity is
the touchstone.
(ii) Marks must be compared as a whole, microscopic examination being
impermissible
(iii) The broad and salient features must be considered for which the marks must not
be placed side by side to find out the difference in design.
(iv) Marks must be looked apart from the first impression of a person of average
intelligence and imperfect recollection
(v) Overall structure, phonetic similarity and similarity of idea are important and
both visual and phonetic tests must be applied.
In addition to the these factors, the nature of commodity, the class of purchasers, the mode
of purchase and surrounding circumstances must also be taken into consideration.
INFRINGEMENT UNDER THE ACT
The registration gives the proprietor exclusive right to use the trademark in relation to
goods or services in respect of which the registration is being made under section 28 of the
Act.42 This right of exclusive use shall be subject to conditions and limitations with which
the registration is made. A registered trademark is infringed when a person, not being a
registered proprietor or permitted user, uses in the course of trade, a mark, which is
identical with or deceptively similar to the registered trademark, in relation to goods or
services in respect of which the trademark is registered.43 Section 29 gives instances of
what shall constitute infringement. The gist of the offence of infringement is that the mark
is deceptively similar and is likely to cause confusion on the part of the public.
In cases of infringement, the plaintiff does not have to prove that he is the user. Mere
registration on his part is enough to give him the right to sue unlike in cases of passing off
wherein the plaintiff has to prove that he is user of the mark, which has become distinctive
of his product.
In cases of infringement, there may be instances whereby the defendant does not use the
exact mark but the get up is similar that he is likely to be deceived, such circumstances
would warrant for an injunction is a recognized way back in 1970 by the Supreme Court in
Ruston case.44 In TorrentPharmaceuticals45 the Court held that the test to determine the
two mark identical or resemble each other or is likely to deceive or cause confusion is the
test of an average person with imperfect recollection.
In Dyechem Ltd.46 case the Supreme Court traced the legal principles applicable to cases of
infringement with reference to the dissimilarities in essential feature of a mark.47 The Apex
42
Important case on this point is Revlon Inc. and another v Hosiden Laboratories (India) and others 2001
PTC 595.
43
Section 29.
44
Ruston & Hornby Ltd. Zamindara Engineering Co. Ltd. AIR 1970 SC 1649
45
Torrent Pharmaceuticals Ltd. v The Wellcome Foundation Ltd. (guj) 2001 (2) CTMR 158.
46
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
19
Court observed that the question of resemblance of two marks could be determined by
considering the leading characters of each. Yet the sameness of most leading elements in
each may give very different impression. On the other hand, critical comparison of the two
marks might disclose numerous points of difference and yet the impression which would
remain with any person seeing them apart at different time might be the same. Thus it is
clear that a mark is infringed if the essential features or essential particulars of it are copied.
It is more so, when any distinctive arrangement or unusual features of the common
elements are copied.48 The apex court further recognized that under other laws, emphasis is
laid on the common features rather than on essential features and held that “where common
marks are included in the rival trade marks, more regard is to be paid to the parts not
common and the proper course is to look at the marks as a whole but at the same time not
to disregard the parts, which are common.”
Thus the Supreme Court lays down three-prong test to determine the infringement:
(i) Is there any special aspect of the common feature, which has been copied?
(ii) Mode in which parts are put together differently, i.e. whether dissimilarities are
sufficient to make the mark dissimilar?
(iii) Paying more regard to the parts which are not common while at the same time
not disregarding the common parts.
Relying upon the Dyechem case, Delhi High Court held in Peshawar Soap case49 that for
determining the comparative strength of infringement in favour of plaintiff, regard must be
had to the essential features. Ascertainment of essential features is not by ocular test alone
by excluding sound of words forming part of the whole mark. In cases of word mark,
resemblance is important, but in cases of devices and composite marks dissimilarity in
essential features is more important than similarity. The leading characters, both orally and
visually, in each as a whole would be the relevant indicia. In cases of similar marks, the
dissimilarities would be relevant to adjudge the impression left on the mind. The
ascertainment of distinctive arrangement of common elements is also relevant to determine
infringement. The Court further observed that defendant couldn’t take a plea that his mark
contains besides the plaintiff mark other matters also, though this is not an absolute
proposition.
WELL-KNOWN TRADEMARK
Article 6bis The Paris Convention provides for protection of well-known mark by
mandating the member countries to prohibit the use of a trademark, which constitutes a
reproduction, an imitation, or a translation liable to create confusion of a mark considered
by the competent authority of the country of registration or use to be well-known mark in
that country as being already the mark of a person entitled to the benefits of the convention.
Neither the Paris Convention nor TRIPS agreement contains any definition of well-known
mark, which is defined, for the first time, under Section 2 (1) (zg) of Indian Trade Marks
Act 1999. Section 2 (1) (zg) defines:
47
company, Nagpur) 2003 at 397.
48
S. M. Dyechem Ltd. v Cadbury (India) Ltd. (2000) 5 SCC 573
49
Peshawar Soap & Chemicals Ltd. v Godrej Soap Ltd 2001 PTC 1 (Del.)
20
Well-known trademark in relation to any goods or services, means a mark which has
become so to the substantial segment of the public which uses such goods or receives such
services that the use of such mark in relation to other goods or services would be likely to
be taken as indicating a connection in the course of trade or rendering of services between
those goods or services and a person using the mark in relation to the first-mentioned goods
or services.
Section 11 (6) to (11) deals with the matters relating to Well-known trademark. Subsection
(6) lays down the list of factors to be taken into account by the Registrar while determining
Well-known trademark. It is mandatory for the registrar to look into these aspects, which
includes:
(i) Knowledge or recognition of that mark in the relevant section of public
including knowledge in India obtained as a result of promotion of the
trademark.
(ii) Duration, extent and geographical area of use of that mark
(iii) Duration, extent and geographical area of any promotion of the mark, including
advertising or publicity and presentation, at fair or exhibition.
(iv) Duration and geographical area of any registration of or any publication for
registration of that mark, to the extent they reflect the use or recognition of the
mark.
(v) Record of successful enforcement and the extent to which the mark has been
recognized as a Well-known trademark by any court or Registrar.
It must be mentioned here that these factors are only indicative and illustrative and by no
means exhaustive. Registrar is not precluded from taking into consideration other factor, if
found relevant. Also it is not necessary that all the criteria mentioned in the subsection (6)
must be complied with. However, it is mandatory for the Registrar to take into
consideration all these factors and cannot ignore any.
The protection afforded to a well-known trademark is on territorial basis. So the person

seeking protection and enforcement of well-known trademark has to adduce evidence
regarding duration, extent and geographical area of any use of the well-known trademark.
The kinds of evidence may include consumer surveys and opinion polls, promotion of the
mark through advertising in both print and electronic media etc.
However subsection (9) of section 11 forbids the Registrar to ask for the following as
condition precedent to determine a trademark as well-known trademark. Particularly that
the mark has been used or registered or filed for registration in India or outside India or that
the trademark is well-known to the public at large in India are specifically excluded from
consideration.
Subsection (7) of section 11 indicates the factors to be taken into account by the Registrar
while determining whether a trademark in known or recognized ‘in relevant section of the
public’. The inclusion of this phrase indicates that a mark to become a well-known
trademark requires the knowledge on the part of public of relevant section and not the
general public at large. The factors to be taken into account are as under:
(i) Number of actual or potential consumers of the goods or services.
21
(ii) Number of persons involved with the channels of distribution.

(iii) Business circles dealing with the goods or services to which that trademark
apply.
The number of actual or potential users may vary depending upon the nature of goods or
services. What the Registrar is supposed to do is not to count the numbers of person
physically but to take into account the concerned section of users of those goods or
services. As far as the distribution channels are concerned there has been sea change in the
tradition mode of distribution and supply. The recent growth of super malls has changed
the mode of distribution that must not be lost sight of. The third factor ‘business circles’
may include importers, wholesalers, franchisees and other dealers interested in dealing with
the goods or services to which the mark applies.
Sub-section (8) of section 11 says that the determination of trademark as well-known

trademark by any court or judicial authority amongst at least one relevant section of the
public in India shall be taken as well-known mark by Registrar.
Subsection (10) of section 11 casts an obligation on Registrar to protect well-known

trademark while considering the application for registration of any mark and its opposition
thereto. The protection to well known trademarks is afforded against the identical or similar
trademarks50, which may come up for registration to the Registrar. The underlying
principle for according protection to well-known cases is to prevent traders taking free ride.
They may tend to take advantage of the good will of the well-known trademark without
doing efforts. Thus the Registrar is obliged to take into consideration ‘bad faith’51 while
balancing the interests of the parties (both applicant and opponent) involved in the
enforcement of the well-known trademark.
The term ‘bad faith’ is also read through implication under section 18(1) of the Act, which
provides that any person claiming to be the proprietor of a trademark used or proposed to
be used by him shall apply for the registration of his trademark in a prescribed form. Thus
there is an implication that he intends to use the mark in the manner applied for and which
is nothing but normal and fair use. If the applicant’s use or propose use of the mark in not
normal and fair that would bring upon him the charge that the mark proposed has been
applied for in ‘bad faith’
Act does not define the expression ‘bad faith’ and is left to the Registrar to decide in each
case based upon the facts and circumstances. ‘Bad faith’ as interpreted by the courts in
India connotes the breach of faith or willful failure to respond to one’s known obligations
or duty. It imports a dishonest purpose or some moral obliquity and implies conscious
doing of wrong.52 The allegation of ‘bad faith’ is a serious form of commercial fraud,
which should not be taken lightly.
50
Section 11(10)(i)
51
Section 11(10)(ii)
52
Bhupinder Singh v State of Rajasthan AIR 1968 Pun 406 at 411. Another case: Manish Vij v Indra Chugh
2002 (24) PTC 561. Also see: Growmax Plasticulture v Don & Low Nonwovens (1999) RPC 379.
22
Subsection (11) of section 11 forms the exception to the subsection (6) to 10 in the sense
that it protects the prior use or prior registration in good faith before the commencement of
the act, of an identical or similar trademark as against well-known trademark. To get the
benefit of this provision, one must show that the prior use or registration was in good faith.
Once this is proved, the right to use the mark cannot be taken away on the ground that the
mark is identical or similar to a well-known trademark.
23
TRADEMARKS ON THE INTERNET
We have so far been dealing with trademarks in the real world. Under this topic, we will go
through the equivalent of trademark in the cyberspace: domain name, its importance,
disputes relating to domain name and their resolution.
CONTENTS
1. 1. Introduction
2. 2. Domain Names
a. a. Internet Corporation for Assigned Names and Numbers
b. b. gTLD
c. c. ccTLD
d. d. Importance of Domain Names
e. e. Legal Status of Domain Names in India
f. f. Practical difficulties with traditional litigation
g. g. UDRP
h. h. Approved Providers for Domain Name Disputes
i. i. Statistics under WIPO-UDRP
j. j. Cases under WIPO-UDRP
k. k. Dispute Resolution of Indian ccTLDs
3. 3. Meta-tags
4. 4. Framing and Linking
INTRODUCTION
As the concept of global village is holding ground, and globalisation, liberalization and
privatization is finding its way in the minutest of the commercial activities in developed,
developing, and least developed countries, the importance of trademark is growing multi-
fold. One cannot deny the value, a businessman attaches to its trademark. People identify
the product of a particular manufacturer through its trademark. With the Internet being used
in a big way by the businessmen for not only advertising and promoting their products, but
also for selling them, the principles of trademark, infringement of trademark and passing
off are being applied even in the online environment. There is an increasing awareness that
any kind of activity with the aid of technology which would made the consumer believe
that the goods and services being offered on the Internet might be coming from a particular
24
source and thus, induces the consumer to accept such goods and services, should be
discouraged. One of the primary areas is Domain Names which has been legal protection
equal to that of a trademark. Others areas we will be discussing is the effect of use of
somebody else’s trademarks/names in Meta-tags and whether that constitutes trademark
infringement. Lastly, we will touch upon the issues of Framing and Linking and their
impact on trademarks.
DOMAIN NAMES
With the advent and acceptance of Internet by people across the globe, the notion of
trademark took a new turn. To access a website, one requires a web address. This web
address comprises of domain names. As the number of Internet users increased, the
importance of domain name increased. People started identifying the domain name with its
owner. For example, if one is to access the website of TATA, one would, in a natural
process, presume the website to be www.tata.com or www.tata.org. This gave the website
address/domain name a further impetus and gave it an importance equivalent to that of a
trademark. Domain names no longer were considered to be merely a tool to gain access to
the website. Rather, they came to be used to identify the goods and services which a
particular company is offering, be it online or offline. If a company has acquired a
distinguishing mark (like TATA) with respect to a particular product, the company would
be entitled to acquire that domain name (www.tata.com or www.tata.org) as well. Domain
name has thus been given legal privileges of a trademark and anyone registering the
domain name is required to show good faith use.
Once hooked to the Internet, we would like to access certain websites. Each website is
nothing but a set of information, programes and webpages stored on the some server across
the Internet. This server would have an Internet Protocol (IP) address. For example, keying
64.233.161.99 takes us to the popular search engine, Google. However, it is difficult to
remember the complicated numbers specially if we are to access a number of websites. A
system was thus evolved linking each such number to a name. So, instead of typing
64.233.161.99, we can type www.google.co.in to get the same result. Much simpler!
Internet Corporation for Assigned Names and Numbers
The Internet Corporation for Assigned Names and Numbers (ICANN) is a technical
coordination body for the Internet. It was created in October 1998. it has responsibility for
Internet Protocol (IP) address space allocation, protocol identifier assignment, generic
(gTLD) and country code (ccTLD) Top-Level Domain name system management, and root
server system management functions. These services were originally performed under U.S.
Government contract by the Internet Assigned Numbers Authority (IANA) and other
entities.
ICANN is governed by an internationally diverse Board of Directors overseeing the policy

development process. ICANN's President directs an international staff, working from three
25
continents, who ensure that ICANN meets its operational commitment to the Internet
community.
gTLD
A gTLD is a generic top level domain. It is the top-level domain of an Internet address, for
example: .com, .net and .org.
In addition to the above, seven new gTLDs were also selected by ICANN on November 16,
2000.
.aero: It is only intended for use of the members of the aviation community. Registration of
a .aero domain name is done in 2 steps: (a) Identification: before a registrant can submit an
application for a .aero domain name, the registrant must be recognized as a member of the
aviation community and obtain an Aviation Membership ID from the Registry; (b)
Registration: once the registrant has obtained an Aviation Membership ID, the Registrant
can obtain a .aero domain name from an accredited Registrar. (See .aero Domain
Management Policy for details)
.biz: It is only intended for domain names that are or will be used primarily for a ‘bona fide
business or commercial purpose’.
.coop: It is a sponsored gTLD for cooperatives. One has abide by the .coop Charter.
.info: It is an open gTLD without restrictions (anyone can register any domain name)
.museum: It is a sponsored TLD for museums. One has to abide by the .museum charter.
.name: It is an open gTLD for registration of personal names or names of ficticious

characters on the second level or on the second and third level (e.g. <Smith.NAME> or
<John.Smith.NAME> or <Smith.John.NAME> or <J.Smith.NAME>. However, it permits
only for personal names (described as the legal name or the name by which the person is
commonly known) of an individual or of a fictional character provided applicant has a
trademark in that name. Further, additional distinguishing elements (e.g. numbers)
permitted
.pro: It is open for unsponsored TLD for qualified professionals meeting the registration
restrictions. See the Appendix of the .PRO Registry Agreement for details. Registration is
permitted on the third level only. The second level will indicate individual professions
(<smith.law.pro>, <smith.cpa.pro>, <smith.med.pro>). In an initial phase, domain name
can only be registered by lawyers (.law.pro), medical doctors (.med.pro) and chartered
accountants (.cpa.pro).
ICANN is currently exploring possibilities to add additional gTLDs. See a Report on

Review of new gTLDs and assess for yourself how advisable it is to have more gTLDs.
26
ccTLD
Two letter domains, such as .uk, .fr or .au (for example), are called country code top-level
domains (ccTLDs) and correspond to a country, territory, or other geographic location. The
rules and policies for registering ccTLDs vary significantly and a number of ccTLDs are
reserved for use by citizens of the corresponding country. A few of these ccTLDs were
established in the 1980s, but most of them created in the mid and later 1990s.
See policies governing the establishment, delegation and operation of ccTDLs.
The administration of a ccTLD is left to the specific country concerned. For example, the
Administration of Domain Names within the .in (Indian) ccTLD is looked after by the
NCST. The IANA provides for a Root-Zone Whois Information Index by TLD Code. This
Index enlists all the countries with this ccTLD which makes for an interesting reading.
With the gTLDs being over-used and short in supply, one is now turning to ccTLDs. There
are quite many instances where the ccTLDs are proving to be more apt to indicate more
meaningfully one’s business or profession. Take for example, .tv (of Tuvalu) which has
been high demand by television companies around the world. Another instance is .md (of
Republic of Moldova), a hot favourite for medical professionals. Other ccTLDs having
higher appealing value could be .mr (of Mauritania), .ms (of Montserrat), .my (of
Maldives), .tm (of Turkmenistan), .ac (of Ascension Island), .id (of Indonesia), im (of Isle
of Man), etc.
Indian (.in)
The Indian ccTLD is .in. Initially, the policy for registration in India was an extremely
restrictive on and allowed for a registration only if the application was a registered
commercial entity in India. Owing to demand from several quarters that the policy be
liberalized to incorporate the interests of trademark owners and foreign corporations, the
policy was liberalized.
Following are key points of the liberalized policy:
(a) New categories of the sub-domains such as gen.in, firm.in and ind.in have been added.
(b) For a foreign entity seeking to register a domain name in India ,the relevant sub-
domains would be co.in, gen.in and firm.in.
(c) The initial co.in requirement that one has to have a local presence in the form of a
branch/liaison office has, to a certain extent, been done away with.
(d) The gen.in category has been specifically added for foreign corporations who are
unable to meet the stringent requirements added for a co.in registration.
(e) The earlier requirement stipulating that the name-server should be physically present in
India and the domain name applicant should have permanent Internet connectivity through
an Internet Service Provider, located in India has been dispensed with.
27
For further details, visit http://domain.ncst.ernet.in.
Importance of Domain Names
The domain name gained importance over the years as business entities realized that
Internet could be a convenient mode for not only imparting information but also using it for
gaining access to a world-wide market and selling its products. Naturally, a company
would prefer its own trade mark to be used as domain name since people recognize the
trade mark. So a newspaper like The Economic Times would prefer
www.theeconomictimes.com for the purpose of putting its daily version online so that
everyone around the world could read it. On the other hand, even the readers would expect
that www.theeconomictimes.com would contain the online version of the daily, The
Economic Times rather than, maybe, contain a cartoon feature by some unknown
individual or worse, some pornographic material.
The Supreme Court, recently in Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd.,
observed as under:
“The original role of a domain name was no doubt to provide an address

for computers on the Internet. But the Internet has developed from a mere
means of communication to a mode of carrying on commercial activity.
With the increase of commercial activity on the Internet, a domain name is
also used as a business identifier. Therefore, the domain name not only
serves as an address for Internet communication but also identifies the
specific Internet site. In the commercial field, each domain-name owner
provides information/services which are associated with such domain
name.”
It was further observed that “a domain name as an address must, of necessity, be peculiar
and unique and where a domain name is used in connected with a business, the value of
maintaining an exclusive identify becomes critical”. Therefore, the importance of a domain
name is no less than the trademark itself. If a particular trade name has come to be known
in the market to represent a particular commodity or a particular company, the general
guess of people online would be that the domain name equivalent to such trade name would
be used by the such company. The domain name in the online world, just like the trade
name in the offline world, serves to identify the goods/services provided by the company.
However, there is one big problem. The process of registration of a domain name is not as
stringent as that of registration of a trademark. The system is based primarily on first-come-
first-serve basis. Anyone can approach a Domain Name Registrar and register any available
domain name. The Delhi High Court in Acqua Minerals Limited v. Pramod Borse (infra)
observed as under:
“So far as the Registering Authority of the domain name is concerned it

agrees for registration of domain name only to one person. That is on first
come first serve basis. If any person gets the domain name registered with
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the Registering Authority which happens to be trade name of some other

person, the Registering Authority has no mechanism to inquire into it to
decide whether the domain name sought to be registered in is in prior
existence and belongs to another person.”
So, a person just might approach the Registrar and register www.mahindra.com though he
does not have the remotest connection with famous Mahindra & Mahindra in Mumbai.
Naturally, for Mahindra & Mahindra, it might be wrong for anyone to register
www.mahindra.com. After all, ‘Mahindra’ is quite a popular trade mark for its products. It
was soon realized that such domain names have been registered by unauthorized persons,
not only for the purpose of taking advantage of the goodwill created by the trade mark
owners but also, and most of times, for receiving certain financial gain in exchange of the
domain name.
Check www.greatdomains.com for an interesting value-analysis of various domain names.
It is also important to realize that in the online world, there can be only one domain name
as opposed to the possibility of two or more trademarks co-existing in different working
spheres. For example, might be selling garments under the mark ‘Roughins’ in India and
somebody else might be selling the same product under the same mark maybe in New
Zealand. One can even have ‘Roughins’ registered as trade marks in different countries
without affecting the other registrations. Leaving apart legal objections, this arrangement is
perfectly possible in the physical world. However, the online world does not permit of such
technological arrangement. If one person owns www.roughins.com, registration of the
same domain name by another person is not permissible. One might register
www.roughins.net or www.roughins.org or www.roughins.biz but cannot register
www.roughins.com. In such a situation, one might conclude that the domain names have a
higher degree of importance than the trade mark. Even though one might be using the trade
mark ‘Roughins’ somewhere else in the world but it is not affecting one’s business in India,
not much damage is done. But domain name is single. If one registers, another cannot. This
predicament has lead the trade mark owners to protect their marks online by registering
their domain names. Adding to this problem is the tendency of net surfers to hunt for a
particular company’s website by its trademark itself.
Another indicator of importance of domain names is the availability of a number of popular

domain names in many of the auction/sale web sites. One might register a trade mark as a
domain name, and then put it up for auction or sale. See for instance http://www.david-
carter.com/bid-for.htm, http://www.100domains.com/, http://www.fastdomainsales.com.
29
Legal Status of Domain Names in India
The journey of legal protection of domain names in India has been more or less a
favourable one. The Courts in India have been more patient towards the concept of
permitting legal protection to domain names on a status more or less equal to that of a
trademark. There has been a widespread of realization of importance of legal protection of
domain names among the Indian legal circles right from its very inception and the Courts
have adopted a more progressive interpretation. There have been disputes between
trademark holders and domain-name owners or between domain-name owners themselves.
The Courts have uniformly applied the law of passing off to such domain name disputes.
Let us look at a few decisions to appreciate this point.
(A) Yahoo Inc. v. Akash Arora, (1999) 19 PTC 201 (Del)
This suit was filed by the plaintiff before the High Court of Delhi seeking a decree of
permanent injunction restraining the defendant from operating any business or selling,
offering for sale, advertising and in any manner dealing in any services or goods on the
Internet under the domain name ‘YAHOOINDIA.COM’.
It was submitted that the plaintiff was the owner of the trademark ‘Yahoo!’ and domain
name ‘YAHOO.COMwhich are well-known and have acquired distinctive reputation and
goodwill. It was submitted that a domain name adopted by the plaintiff is entitled to equal
protection against passing off as in the case of a trademark. The plaintiff contended that
that it would not be unusual for someone looking for an authorized ‘Yahoo!’ site with
India-specific content to type in ‘YAHOOINDIA.COM’ (which is defendant’s domain
name) and thereby instead of reaching the Internet site of the plaintiff, such person would
reach the Internet site of the defendants. Allegation of cybersquatting was also made.
The defendants, on the other hand, averred that the Indian Trade Marks Act related only to
good and not services and there could not be any action of passing off as the services
rendered both by the plaintiff and the defendants cannot be said to be goods within the Act.
It was also contended that ‘Yahoo!’ is a general dictionary word. Further, defendants have
been using a disclaimer and thus, there were no chances of any deception. The contention
that the principle of unwary customer which is applicable in a case of infringement and
passing off of the trademark would not be applicable since the Internet users are technically
education and literate persons.
It came on record that ‘YAHOO.COM’ was registered in plaintiff’s favour with Network
Solution Inc since 18 Jan 1995. It also came on record that the trademark ‘Yahoo!’ and its
variance are registered or pending registration in 69 countries across the globe, India being
one of them.
After appreciation of evidence on record and law on the subject, the Court held as under:
(a) The present is not for an action for infringement of a registered trademark but an action
for passing off. The principle underlying the act is that no man is entitled to carry on his
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business in such a way as to lead to believe that he is carrying on or has any connection
with the business carried on by another man. After referring to decisions in Cardservice
International Inc v. McGee (42 USPQD 2d 1850 relating to cardservice.com) and Marks &
Spencer v. One-in-a-Million (1998 FSR 265 relating to marksandspencer.co.uk), the Court
held that although the word ‘services’ may not find place in the expression used in Sections
27 and 29 of the Trade and Merchandise Marks Act, yet, services rendered have come to be
recognized for an action of passing off.
(b) There can be no two opinions that the two domain names ‘YAHOO.COM’ and
‘YAHOOINDIA.COM’ are almost similar except for use of the suffix ‘India’ in the latter.
When both the domain names are considered, it is crystal clear that the two names being
almost identical or similar in nature, there is every possibility of an Internet user being
confused and deceived in believing that both the domain names belong to one common
source and connection, although the two belong to two difference concerns.
(c) On the ‘literate Internet consumer’ argument, it was held that the consumer might be an
unsophisticated consumer of information and might find his way to the defendant’s website
providing for similar information thereby creating confusion.
(d) The ‘disclaimer’ contention was rejected on the ground that the defendant’s
appropriation of plaintiff’s mark as a domain name and home page address cannot
adequately be remedied by a disclaimer.
(e) Though ‘Yahoo’ is a dictionary word, yet, it has acquired uniqueness and
distinctiveness and are associated with the business of the concerned company and such
words have come to receive maximum degree of protection by courts.
Ad-interim injunction retraining the defendant from using the domain name
‘YAHOOINDIA.COM’ till the disposal of the suit was granted.
(B) Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27
The plaintiffs had registered the domain name ‘REDIFF.COM’ on 8 Feb 1997 with
Network Solutions Inc. They are an online media company carrying on the business of
communication and providing services through the Internet. It came to their knowledge in
March 1999 that the defendant had registered the domain name ‘RADIFF.COM’. An action
for passing off was filed.
The plaintiffs contended that RADIFF is deceptively similar to REDIFF and is being used
by the defendants with a view to pass of their business services as that of the plaintiffs and
to induce members of the public into believing that the defendants are associated with the
plaintiffs. It was also averred that REDIFF is comprised of the first six letters of their group
companies corporate names being Rediffusion Dentsu Young and Rubicam Advertising
Limited.
31
The defendants contested the plaintiff’s action on the ground that the ‘look and feel’ of the
plaintiff’s website is totally different from that of the defendant’s website. RADIFF has
been coined by taking the first three letters of the word ‘radical’, first letter of the word
‘information’, first letter of the word ‘future’ and first letter of the word ‘free’. It was also
contended that there is no likelihood of deception or confusion between the two domain
names.
The Court, after referring to Cardservice International Inc v. McGee (42 USPQD 2d 1850
relating to cardservice.com) and Marks & Spencer v. One-in-a-Million (1998 FSR 265
relating to marksandspencer.co.uk), Yahoo, Inc. v. Akash Arora (1999 PTC (19) 201
relating to Yahooindia.com) observed that a domain name is more than an Internet address
and is entitled to equal protection as trade mark.
The Court found that both the plaintiffs and the defendant have common field of activity.
They are operating on the website and providing information of similar nature. When both
domain names are considered, it is clearly seen that two names being almost similar in
nature there is every possibility of Internet user being confused and deceived in believing
that both domain names belong to one common source and connection although two belong
to different persons.
The explanation of origin of the word ‘RADIFF’ given by the defendants was found to be
unsatisfactory and merely an attempt to answer the plaintiff’s claim. The Court held that
the defendants had adopted the domain name ‘RADIFF’ with the intention to trade on the
plaintiff’s reputation.
Interlocutory injunction was thus granted.
(C) Acqua Minerals Ltd. v. Pramod Borse, 2001 PTC 619 (Del)
This was suit seeking a decree for permanent injunction restraining the defendants from
using the mark BISLERI and directing them to transfer the domain name BISLERI.COM
to the plaintiff.
The plaintiff is the registered proprietor of the trademark BISLERI. The word has no
dictionary meaning and is an Italian surname. Its reputation grew over the years as result of
enormous consumer confidence and trust in the mineral water and the mark BISLERI came
to be associated exclusively with the plaintiff. Plaintiff applied for registration of domain
name BISLERI.COM but found that the defendants had already registered the same. It was
contended that a person wanting to know more about their product will type
BISLERI.COM but will be taken to the defendant’s website which has nothing to do with
the plaintiff’s goods. Thus, constitutes a mischief of passing off by the defendants. The
plaintiff referred to Paragraph 4(b)(i&ii) of the UDRP to project the element of ‘bad faith’.
The question which arose for consideration was whether the domain name registred with
the Network Solutions, Inc. i.e., the Registering Authority has the same protection as the
trade name or trade mark registered under the Trade and Merchandise Marks Act, 1958.
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With the advancement of Internet communication, the domain name has attained as much
legal sanctity as a trade name. After discussing the meaning of ‘domain, it was held that the
same principles and criteria are applicable for providing protection to the domain name
either for action for infringement if such a name is registered under the Trade and
Merchandise Marks Act or for a passing off action as are applicable in respect of trade
mark or name.
The court also relied upon the ‘bad faith’ test under the UDRP. It found that the defendants
had blocked user of the trade name BISLERI from getting the registration as a domain
name and as such it has affected the trade and name of the plaintiff. It was obvious that the
domain name ‘BISLERI’ was chosen by the defendants with mala fide and dishonest
intention and as a blocking or squatting tactic.
It was also found that the defendants already had their own domain name, namely,
info@cyberworld.com. It appeared that the only object of the defendant in adopting
BISLERI.COM was to earn huge money for transferring the said domain name in the name
of the plaintiff knowing it well that they had no right either of registration of the domain
name or of any other domain name which consisted of the plaintiff’s mark or copyright
name.
The suit was thus decreed on ground of bad faith registration.
(D) Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri, 2001 PTC 859 (Del)
The plaintiff-company is the proprietor of the trademark ‘DR. REDDY’S’. The defendants
had registered the domain name ‘DRREDDYSLAB.COM’. The webpage merely showed
the caption ‘welcome to the future Website of drreddyslab.com’.
A suit was filed by the plaintiff-company praying for a permanent injunction restraining the
defendants from using the trademark/domain name DRREDDYSLAB.COM since the same
was identical or deceptively similar to the plaintiff’s trade mark DR. REDDY’S.
The plaintiff-company was established in 1984 for research and development activity in the
field of medicine and over 15 years, grew into a full integrated pharmaceutical
organization. It was contended that DR. REDDY’S is always perceived as indicative of the
source of the company and the trademark DR. REDDY’S is a personal name of the plaintiff
company’s founder and its use as a trademark in relation to pharmaceuticals is completely
arbitrary.
The plaintiffs also contended that the defendants are in the business of registering domain
names in India and their purpose of existence appears to be to block well-known trademark
and even names of well-known personalities on the Internet. Having once registered as
domain names, the defendants offer them for sale for large amounts. The potential for
confusion or deception being caused on account of the adoption of the impugned
trademark/name by the defendants and the likelihood of damage to plaintiff’s company
business, goodwill and reputation by the operation of a website under the impugned
33
domain name by them is enormous and is aimed at diverting the business of plaintiff
company and to earn easy, illegal and undeserved profit.
The defendants had chosen not to appear and contest.
On the basis of the available materials on record, the Court, after looking into well-settled
legal proposition of passing off, and after observing that domain name serves same
function as a trademark, held that the two names, DR. REDDY’S and
DRREDDYSLAB.COM being almost identical or similar in nature and there is every
possibility of an Internet user being confused and deceived in believing that both the
domain names belong to plaintiff although the two domain names belong to two different
concerns.
Order restraining the defendants from using any mark/domain name identical or
deceptively similar to plaintiff’s trademark DR.REDDY’S was passed.
(E) Info Edge (India) (P) Ltd. v. Shailesh Gupta, (2001) 24 PTC 355 (Del)
This case was only on an application for an order of injunction under Order 39 Rules 1 & 2
of the Code of Civil Procedure.
Plaintiff adopted the domain name ‘NAUKRI.COM’ ON 27 Mar 1997. It was contended
that the domain name has assumed distinctiveness as the plaintiff has chosen a Hindi word
and use the same in the English script as early as in March 1997 in the Internet world,
which is dominated by the English domain names. According to the plaintiff, the word
NAUKRI has attained a secondary in connection with its services.
The defendant, on the other hand, was offering similar services through
jobsourceindia.com. However, it also registered NAUKARI.COM in 1999 and used as a
hyperlink to jobsourceindia.com Therefore, anyone who types NAUKARI.com would be
lead to jobsoureindia.com. The plaintiff alleged that NAUKARI.COM was registered in
bad faith and to attract web-surfers and innocent users for diverting the traffic to
jobsourceindia.com
In nutshell, plaintiff alleged that: (a) there was passing off of services and goods; (b)
defendant’s domain name was deceptively similar to the plaintiff’s; (c) there is grave and
immense possibility of confusion and deception; (d) defendant’s dishonesty is clear since
jobsourceindia.com and NAUKARI.COM was registered two years after the plaintiff
registered NAUKRI.COM.
The main line of defence for the defendant was that NAUKRI.COM is generic and hence,
incapable of achieving the trademark significance or secondary meaning. It was further
contended that in case NAUKRI.COM has attained secondary meaning, same has to be
proved.
34
The Court, after relying on, Yahoo, Inc., Rediff Communication, Acqua Mineral and Dr.
Reddy’s Laboratories reiterated that a domain name is more than an Internet address and is
entitled to be equal protection as that of trademark. The Court also observed that in a matter
where services rendered through the domain name in the Internet, a very alert vigil is
necessary and a strict view is to be taken for its easy access and reach by anyone from any
corner of the globe.
After considering the material and evidence on record, the Court held that a distinctiveness
can be attributed to the domain name of the plaintiff. On this finding, the Court rejected the
defendant’s contention that the NAUKRI.COM is a generic and/or descriptive word and
hence, incapable of any trademark protection.
The Court also observed that the defendant has employed minor mis-spelling of the
plaintiff’s mark, although it has another such mark available to it, which is also a registered
domain name. The defendant’s choice of slightly mis-spelt version of the plaintiff’s
domain name was deliberate in order to suit the business activities of the defendant and for
the purpose of diverting traffic of the Internet users to website unrelated to the plaintiff.
(This kind to activity is known as ‘typo-squatting’. See, for example, the case of
Yahoo.com under ‘Cases under WIPO-UDRP’ infra)
The Court also referred to Paragraph 4(b)(iv) of the UDRP to appreciate the argument of
‘bad faith’. It held that the website using the domain name, similar to that of the plaintiff,
for commercial purposes, would lead to an inference that the domain name was chosen
intentionally to attract Internet users of the plaintiff. This was also established in view of
the minor spelling variant to the a well-known mark, without any explanation and the same
definitely creates a prima facie evidence of bad faith within the meaning of Paragraph
4(b)(iv) of UDRP.
A case of temporary injunction was made out and the Court restrained the defendant from
using NAUKARI.COM till the disposal of the suit.
(D) Tata Sons Ltd. v. Manu Kosuri, 2001 PTC 432 (Del)
This case involved the following domain names: jrdtata.com, ratantata.com,

tatahoneywell.com, tatayodagawa.com, tatateleservices.com, tatassl.com, tatapowerco.com,
tatahydro.com, tatawestide.com and tatatimken.com. The plaintiff averred that the
defendants had misappropriated the plaintiff’s trademark TATA since a part of a series of
domain names that had been registered by the defendants incorporating the well-known and
famous trademark TATA.
The plaintiff contended that it was the registered proprietor of TATA since 1917 in relation
to various goods, in various classes. It further had trademarks registered in nine other
countries in various classes. The plaintiff’s case was that since its trademark and name
TATA was already perceived as a household name due to the involvement of its companies
in almost every form of business activity, a business under identical name would attract
actual or potential customers’ attention and induce them to subscribe to the services of the
35
defendants or to deal in some manner with the defendants operating under the domain
names believing them to be licensed or authorized by the plaintiff to do the said business.
The defendants did not put in their appearance despite service.
The Court, on the basis of the materials on record, found that the plaintiff has been able to
prove the averments made in the plaint.
After discussing the decisions in Yahoo, Inc. (supra) and Rediff Communications (supra),
it was observed that it is now well settled law that with the advent of modern technology
particularly that relating to cyberspace, domain name or Internet sites are entitled to
protection as a trademark because they are more than a mere address. The rendering of
Internet services is also entitled to protection in the same way as goods and services are,
and trademark law applies to activities on the Internet.
The suit was decreed was the defendants were restrained from using the above domain
names.
(G) Satyam Inforway Ltd. v. Sifynet Solutions (P) Ltd., (2004) 6 SCC 145
This case is the first one from the Apex Court dealing with legal protection of domain
names and has given seal to the law laid down by the High Courts that the domain names
are entitled to legal protection equal to that of a trademark.
The main question for the consideration of the Supreme Court was whether Internet domain
names are subject to the legal norms application to other intellectual properties such as
trademarks.
The appellant, which was incorporated in 1995, registered several domain names like
www.sifynet.com, www.sifymall.com, www.sifyrealestate.com, etc. in June 1999 with
ICANN. The word ‘Sify’ is a coined word which the appellant claimed to have invented by
using elements of its corporate name, Satyam Infoway.
The respondent, on the other hand, started carrying on business of Internet marketing under
the domain names www.siffynet.net and www.siffynet.com from June 2001.
After the respondent to refused to transfer the above domain names to the petitioner, a suit
was filed on the basis that the respondent was passing off its business and services by using
the appellant’s business name and domain name. An application for temporary injunction
was also filed which was allowed by the trial court but on appeal reversed by the High
Court. The plaintiff/appellant preferred a special leave to appeal before the Supreme Court.
Leave was granted.
The respondent contended before the Supreme Court that a domain name could not be
confused with ‘property names’ such as trademarks. According to him, a domain name is
merely an address on the Internet. It was also submitted that registration of a domain name
36
with ICANN does not confer any intellectual property right; that it was a contract with a
registration authority allowing communication to reach the owner’s computer via Internet
links and channeled through the registration authority’s server and that it was akin to
registration of a company name which is a unique identifier of a company but of itself
confers no intellectual property rights.
After reiterating the principles of passing off, the Supreme Court observed as under:
“The use of the same or similar domain name may lead to a diversion of
users which would result from such users mistakenly accessing one domain
name instead of another. This may occur in e-commerce with its rapid
progress and instant (and theoretically limitless) accessibility to users and
potential customers and particularly so in areas of specific overlap. Ordinary
consumers/users seeking to locate the functions available under one domain
name may be confused if they accidentally arrived at a different but similar
website which offers no such services. Such users could well conclude that
the first domain-name owner has misrepresented it goods or services
through its promotional activities and the first domain-owner would thereby
lose its custom. It is apparent, therefore, that a domain name may have all
the characteristics of a trademark and could found an action for passing
off.”
In view of the decisions of various High Courts, it was held that the domain names are
entitled to legal protection equal to that of a trademark.
The Court also discussed at some length the provisions of UDRP relating to resolution of
domain name disputes. It was held that a prior registrant can protect its domain name
against subsequent registrants. Confusing similarity in domain names may be a ground for
complaint and similarity is to be decided on the possibility of deception amongst potential
customers.
After looking into the evidence, the Supreme Court reached a prima facie conclusion that
the appellant had been able to establish the goodwill and reputation claimed by it in
connection wit the trade name ‘Sify’. Apart from the close visual similarity between ‘Sify’
and ‘Siffy’, the Court held that there was phonetic similarity between the two names as
well. The addition of ‘net’ to ‘Siffy’ did not detract from this similarity.
The Court was not impressed with the argument was of the defendant that the word ‘Siffy’
has been derived from a combination of the first letter of the five promoters of the
respondent, namely, Saleem, Ibrahim, Fazal, Fareed and Yusuf. It was found that the
domain name of the respondent already stood registered as in the name of one Mr.
C.V.Kumar. Further, ‘Siffy’ as an original acronym was based on the initial letters of the
respondent company’s promoters seemed unsupported by any evidence.
37
It was also noticed by the Supreme Court that admittedly, the appellant was the prior used
and had the right to debar the respondent from eating into the goodwill, it may have built
up in connection with the name.
A trademark defence of ‘operating in different fields’ was taken by the respondent.

However, the same was rejected on the ground that a deceptively similar domain name may
not only lead to a confusion of the source but the receipt of unsought-for services. Also, on
facts, it was found that both the respondent was, on its website, offering software solution,
integrating and management solutions and software development which were similar to
services provided by the appellant.
The Supreme Court concluded that in view of finding of prima facie dishonest adoption of
the appellant’s trade name by the respondent, the investments made by the appellant in
connection with the trade name, and the public association of the trade name Sify with the
appellant, the appellant was entitled to the relief it claimed.
Practical difficulties with traditional litigation
Although domain name disputes gave rise to a strong line of precedents, approaching a
court of law came with it’s own share of misgivings. While litigation before the courts, the
top three problems primarily are:53[1]
i) The difficulty of detecting the wrong defendants or of serving the defendants;
ii) The risk of the domain name being transferred if the plaintiff gives a cease and desist
letter;
iii) Even if one gets an injunction, the possibility that the defendant would obtain
registration of alpha-numeric variations. This makes the enforcement an expensive affair.
Therefore, traditional litigation has not been accepted as a complete solution to domain
name dispute problems.
Dispute Resolution through UDRP – the ICANN policy
Due to practical difficulties faced due in pursuing traditional litigation in different

jurisdictions, The Uniform Domain-Name Dispute Resolution Policy (UDRP) was
introduced and finally approved by ICANN. This was on 24.10.1999. The UDRP has been
adopted by ICANN-accredited registrars in all gTLDs (that is, .com, .org, .net, .pro, .aero,
.biz, .coop, .info, .museum, .name). Dispute proceedings arising from alleged abusive
registrations of domain names (cybersquatting) may be initiated by a holder of trademark
rights. The UDRP is a policy between the registrar and its customer and is included in the
registration agreement for all ICANN-accredited registrars.
53[1]
Shamnad Basheer, Trademark Issues on the Internet: Domain Name Dispute Resolution, Legal
Dimenstions of Cyberspace, Indian Law Institute, 2004, p. 156
38
If a trademark holder believes that a domain name registration infringes on its trademark, it
may initiate a proceeding under the UDRP. As indicated above, every registrant of a
domain name has to agree to the Dispute Clause of the Terms and Conditions for the
registration of a gTLD domain name. Therefore, once the complainant initiates the
proceedings, the registrant must submit to such proceedings.
The UDRP permits complainants to file a case with a resolution service provider,
specifying, mainly, the domain name in question, the respondent or holder of the domain
name, the registrar with whom the domain name was registered and the grounds for the
complaint. Such grounds include, as their central criteria, the way in which the domain
name is identical or similar to a trademark to which the complainant has rights; why the
respondent should be considered as having no rights or legitimate interests in respect of the
domain name that is the subject of the complaint; and why the domain name should be
considered as having been registered and used in bad faith. The respondent is offered the
opportunity to defend itself against the allegations. The dispute resolution service provider
(e.g., the WIPO) appoints a panelist who decides whether or not the domain(s) should be
transferred.
It is worth noting that Paragraph 3 of the UDRP permits ICANN to cancel, transfer or
otherwise make changes to domain name registrations in case they receive an order from a
court or arbitral tribunal having competent jurisdiction requiring such action. Therefore,
one may even opt for a traditional litigation, get an order for transfer of domain name and
then approach ICANN under Paragraph 3 of UDRP for transfer of domain name.
Approved Providers for Domain Name Disputes
As on date, there are a total of four Approved Providers for Domain Name Disputes.
(a) WIPO took the lead in becoming the first approved. This was on 29.11.1999 dispute
resolution provider.
(b) National Arbitration Forum, closely followed WIPO. It was approved on 23.12.1999.
(c) On 22.05.2000, CPR Institution for Dispute Resolution became the fourth approved
service provider.
(d) From 28.02.2002, the final approved service provider so far, Asian Domain Names
Dispute Resolution Centre began accepting proceedings.
It is relevant to note that Disputes.org/eResolution consortium-DeC had became an

approved service provider on 01.01.2000. However, it ceased to accept any proceedings
from 30.11.2001.
Statistics under WIPO-UDRP
The Statistics on WIPO’s UDRP domain name cases reflect the mammoth task we have
taken at hand. And remember, this is just the tip of iceberg. For there are very many
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disputes which are not brought to the notice of any of the domain name dispute providers.
The WIPO statistics (as on 28.08.2004) relating to Geographical Distribution of Parties
cumulative: gTLDs gives us the domicile of the complainant and respondent. The statistics
in itself gives an interesting revelation. Note, for example, Republic of Korea: there are
only 27 complainants whereas a whooping 333 respondents! One might conclude that
either there are just too many coincidences that the people there have registered such
domain names which should have been genuinely registered by someone else. Or maybe,
cybersquatting is a popular way of making money. Same conclusion might be reached for
Russia. On the other hand, Switzerland seems to have been more of a victim of
cybersquatting – 209 complainants as against 53 respondents.
Statistics pertaining to case filing (from 1999 to 2004) indicate a very queer trend. One
might expect an increase in filing of cases under UDRP. On the contrary, there has been a
gradual decline from 2000 onwards in filing of gTLD cases. On the other hand, most of the
decisions being taken by a UDRP panelist is transfer of the domain name. Statistics
indicates that the level of cybersquatting and ‘bad faith’ registration has been high. As
many as 3,971 domain names have been transferred till date.
Search cases through cases numbers or through the Index of WIPO UDRP Panel decisions.
Cases under WIPO-UDRP
As the statistics indicated above, there are a large number of domain name disputes which
are resolved annually through the ICANN-approved dispute resolution providers. In fact,
all the decisions under World Intellectual Property Organisation (WIPO) has been
catergorised on the basis of usage of the domain name as also in accordance with the legal
point. A mere look into the categories gives an insight as to the importance of a domain
name. For example, domains may relate to association and institutions (be it religious or
sports) or individuals like authors, media, music, film, or industry and commerce or
education or public sector.
Let us study a few decisions rendered under UDRP:
(A) Worldwrestlingfederation.com, World Wrestling Federation Entertainment, Inc. v.

Michael Bosman, decided on 18 Jan 2000 [Click Case No. D99-0001 for text of the
complete Decision]
This was the first case conducted under the UDRP. The proceedings were initiated on
09.12.1999. The respondent registered the domain name <worldwrestlingfederation.com>
for a term of two years from October 7, 1999. The complainant provided evidence of
registration of the following marks:
1. Service Mark - WORLD WRESTLING FEDERATION, registered for a term of 20

years from January 29, 1985, with the United States Patent and Trademark Office;
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2. Trademark - WORLD WRESTLING FEDERATION, registered for a term of 20 years

from November 7, 1989, with the United States Patent and Trademark Office.
The respondent had registered the domain name and within three days, offered the same for
sale. The complainant contends that respondent has registered as a domain name a mark
which is identical to the service mark and trademark registered and used by complainant,
that respondent has no rights or legitimate interests in respect to the domain name at issue,
and that respondent has registered and is using the domain name at issue in bad faith. The
respondent did not contest the allegations of the complaint.
It was found that because respondent offered to sell the domain name to complainant “for
valuable consideration in excess of” any out-of-pocket costs directly related to the domain
name, respondent has “used” the domain name in bad faith as required under Paragraph 4,
b, i of the UDRP. Therefore, pursuant to Paragraph 4,i of the UDRP, the Panel required
that the registration of the domain name <worldwrestlingfederation.com> be transferred to
the complainant.
(B) Backstreetboys.com, Backstreet Productions, Inc. v. John Zuccarini, decided on 24

Aug 2001 [Click Case No. D2001-0654 for text of the complete Decision]
The domain names in dispute were backsreetboys.com, backsteetboys.com,

backstreeboys.com, backstreetboyspics.com, backstreetboyspictures.com,
backstreetboyz.com, backstreetsboys.com, backstretboys.com, backtreetboys.com,
bacstreetboys.com and bakstreetboys.com.
The Backstreet Boys are well-known pop singers. The Backstreet Boys have licensed a
wide range of products bearing their trademark, including posters, watches, backpacks,
musical products, live concert photos, etc., which are projected to result in over twenty
million dollars in revenue. The Backstreet Boys operate a website at
“http://www.backstreetboys.com”.
Respondent has never been licensed by Complainant to use the Backstreet Boys trademark.
Respondent does not offer any goods or services through the websites he established with
these domain names. Rather, upon entering Respondent’s sites, Internet users are diverted
to a number of windows displaying advertisements, and must click on each of the windows
before exiting.
It was found that the domain names are ‘virtually identical and confusingly similar’ to the
trademark, respondent’s use of the domain names do not give him a legitimate interest in
the domain names, and respondent did register and use the domain names at issue in bad
faith. Having concluded that all the requirements of Para. 4(a) of the UDRP have been
fulfilled, the Panel, pursuant to paragraph 4(i) of the UDRP, concluded that the registration
of the domain names at issue was to be transferred to the Complainant.
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(C) Bahaiwomen.com, National Spiritual Assembly of the Bahá’ís v. Buy This Name,
decided on 18 Dec 2001 [Click Case No. D2001-1302 for text of the complete Decision]
The Complainant is the registered owner of the trademarks BAHÁ’Í, BAHÁ’Í and design
and NATIONAL SPIRITUAL ASSEMBLY OF THE BAHÁ’ÍS OF THE UNITED
STATES. All three trademarks are registered in the United States of America. The date of
first use of the trademark BAHÁ’Í is given as 1900.
On May 27, 2001, the Respondent registered the disputed domain name. The Complainant
states that some time shortly thereafter, the Respondent began operating a pornographic
website at the site <bahaiwomen.com>. The site also operates as a portal to other
pornographic websites.
The site <bahaiwomen.com> also contains a link entitled "Click Here to Buy this Domain
Name". Users clicking on that link are transported to a page on which they can make an
offer to purchase the disputed domain name.
After looking into evidence and averments, the Panel found that:
(a) The domain name <bahaiwomen.com> is confusingly similar to the trademark

BAHÁ’Í, in which the Complainant has rights;
(b) There is no evidence to demonstrate that the Respondent has a legitimate right or
interest in the disputed domain name;
(c) Since the domain name was a well-known trademark and the domain name is being
used in connection with a pornographic site, the domain name has been registered and is
being used in bad faith.
Pursuant to paragraph 4(i) of the Policy, the Panel required that the registration of the
domain name <bahaiwomen.com> be transferred to the Complainant.
(D) Calvinklein-watches.com, Calvin Klein, Inc. & Calvin Klein Trademark Trust v.
Rhythm, decided on 28 Dec 2001 [Click Case No. D2001-1295 for text of the complete
Decision]
The Complainants, Calvin Klein Trademark Trust and Calvin Klein, Inc. (hereinafter
"Complainant"), are respectively the record owner and the beneficial owner of the
CALVIN KLEIN trademarks (referred to hereinafter as the "CALVIN KLEIN Marks").
The Complainant is involved in the apparel business and designs, manufactures, markets
and sells merchandise for men, women and children including watches, shoes, accessories,
underwear, jeans, cosmetics, home furnishings, sweatshirts and many other apparel items.
In June 1997, the Complainant registered the domain name <calvinklein.com> with
Network Solutions, Inc.
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The Domain Name was registered in August 2000, three years after the registration of
Complainant's <calvinklein.com> domain name and over 13 years after Complainant began
using the CALVIN KLEIN Marks.
Based on the evidence and contentions, the Panel found that the Domain Name is
confusingly similar to the CALVIN KLEIN Marks and the <calvinklein.com> domain
name in which Complainant has rights.
The Panel agreed with the contentions of the Complainant that the Respondent had no
rights or legitimate interests in the Domain Name. The Respondent had an opportunity to
demonstrate such rights or legitimate interests but did not do so.
The Panel found that the Domain Name was registered and is being used in bad faith.
The Panel therefore directed that the Domain Name be transferred to the Complainant.
(E) Juliaroberts.com, Julia Fiona Roberts v. Russell Boyd, decided on 29 May 2000
[Click Case No. D2000-0210 for text of the complete Decision]
The Complainant, Julia Fiona Roberts, is a famous motion picture actress. She has
appeared in such movies as Erin Brockovich, Notting Hill, Runaway Bride, Stepmom, My
Best Friend’s Wedding, Conspiracy Theory, Everyone Says I Love You, Mary Reilly,
Michael Collins, Something to Talk About, I Love Trouble, Ready to Wear, The Pelican
Brief, The Player, Dying Young, Hook, Sleeping With the Enemy, Flatliners, Pretty
Woman, and more. A partial filmography for the Complainant is found at Yahoo! Movies.
The Complainant is widely featured in celebrity publications, movie reviews, and
entertainment publications and television shows, and she has earned two Academy Award
nominations.
Respondent registered the subject domain name on November 9, 1998. As of

March 24, 2000, the website www.juliaroberts.com featured a photograph of a woman
named ‘Sari Locker’. The Respondent has placed the domain name up for auction on the
commercial auction website, "eBay," specifically at http://cgi.ebay.com/aw-
cgi/eBayISAPI.dll?ViewItem&item=285891617.
The Respondent had also registered over fifty (50) other domain names, including names
incorporating other movie stars names within <madeleinestowe.com> and <alpacino.com>
and a famous Russian gymnast’s name within <elenaprodunova.com>. Respondent listed
his email address as mickjagger@home.com. Respondent was offered US$2,550 in the
eBay auction for the domain name registration.
Complainant contended that Para. 4(a) of the UDRP is clearly attracted in the present case.
Respondent did not contest that the domain name <juliaroberts.com> is identical with and
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confusingly similar to Complainant’s name. However, the Respondent did contest whether
Complainant has common law trademark rights in her name.
The Panel found that common law trademark rights could exist in an author’s name. The
other requirements of paragraph 4(a) of the UDRP were also found to be existing in the
present case: (a) the domain name is identical the complainant’s name; (b) Respondent had
no rights or legitimate interest in the domain name; and, (c) Respondent had registered and
used the domain name <juliaroberts.com> in bad faith since he had not only registered
other domain names including several famous movie and sports stars, he had also placed
the domain name up for auction on the commercial website eBay.
The domain name <juliaroberts.com> was ordered to be transferred to Complainant Julia

Fiona Roberts.
(F) Mahindra.com, M/s Mahindra & Mahindra Ltd. v. Neoplanet Solutions, decided on 7
Jun 2000 [Click Case No. D2000–0248 for the text of complete Decision]
The Complainant is a well-known manufacturer and exporter of tractors and utility

vehicles. Apart from the Complainant itself, 35 Group Companies include "Mahindra" in
their names. By reason of the extensive use of the Trade Marks and the name Mahindra in
the various Group Companies, the word MAHINDRA, at least in relation to motor
vehicles, is associated exclusively with the Complainant.
The Complainant became aware of the existence of the domain name registration in issue at
a date prior to December 13, 1999. Prior to the attorneys’ letter of December 13, 1999, they
had asked their associates in Vijaywada to approach Network Solutions informally to
enquire about its registration of the domain name. The associates were (it is said) informed
that Network Solutions was willing to transfer the domain name for the sum of Rs. 15,000
(about US $1,500), but Network Solutions "did not reproduce the demand in writing".
It was found by the Panel that the Respondent’s domain name "mahindra.com" was
identical to the trademark "MAHINDRA", the Respondent had no rights or legitimate
reason for adopting the word "mahindra" as a domain name and the domain name
"mahindra.com" was registered and being used in bad faith.
Since the elements of paragraph 4(a) of UDRP were proved, the Panelist ordered that the
domain name "mahindra.com" be transferred to Mahindra & Mahindra.
(G) Tata.org, Tata Sons Ltd. v. The Advance Information Technology Association,
decided on 10 Apr 2000 [Click Case No. D2000-0049 for text of complete Decision]
In this case, the Complainant was an Indian company existing under Indian laws. It was the
principal investment holding company of the Tata Group of Companies whose turnover
was more than US$9 Billion. The word “TATA” was the trade mark, corporate name,
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house mark of the complainant and its Group companies. The Complainant and its Group
companies had interests in a diverse field of activities including Automobiles, Energy,
Chemicals & Pharmaceuticals, Consumer Products, Publishing, Metal, Information
Technology & Communications, Finance etc.
The Respondent was the registrant of the domain name <tata.org> with NSI but did get the
website activated.
It was contended that potential customers would be induced to subscribe to the services of
the impugned web site or to deal in some matter with the Respondent/third party believing
them to be licensed or authorised by the Complainant.
Since the website was not activated even though it was registered almost three years earlier,
it was found that the respondent is merely ‘hoarding’ the said domain name. It was further
observed that even if a website under the said domain name had been activated, in the facts
and circumstances of the case, it would still constitute dishonest adoption and
misappropriation.
It was also brought on record that the Complainant had successfully obtained orders from
Courts in India in relation to domain names wherein Courts have granted orders of
injunction against the defendants therein from using the domain names <tatagroup.com>,
<bodacious-tatas.com>, <jrdtata.com>, <ratantata.com>, <tatahoneywell.com>,
<tatateleservices.com>, <tatahydro.com>, <tatawestside.com>, <tatatimken.com>. Though
these disputes were still pending at the time the present Decision was rendered, it was
observed that they were prima facie evidence of the recognition of the Complainant's rights
in the TATA name/mark.
It was thus found by the Panel that:
(a) the Respondent's domain name <tata.org> was identical to the trade mark TATA in
which the Complainant had rights;
(b) the Respondent had no legitimate interest in the domain name <tata.org>;
(c) the registration of the domain name "tata.org" was a "Bad Faith registration".
The Panel decided that that the Respondent's domain name "tata-org" should be transferred
to the Complainant.
(H) Theeconomictimes.com/thetimesofindia.com, Bennett Coleman & Co. Ltd. v. Steven

S. Lalwani, decided on 15 Mar 2000 [Click Cases No. D2000-0014 and 2000-0015 for
the text of complete Decision]
The Complainant published "The Economic Times", which had an average daily circulation
of 350,100, and "The Times of India", which had a daily circulation of 2,522,488. Both
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included Indian news in their content. The Complainant was engaging in certain
supplemental activities in the entertainment industry, using the brand "Times". Since 1996
the Complainant had held the domain names, economictimes.com and timesofindia.com,
using them for the electronic publication of their respective newspapers. The Complainant
registered in India the mark, "The Economic Times" for newspapers, journals, magazines,
books and other literary works on March 28, 1973, and the mark, "The Times of India" for
the same goods on July 30, 1943.
The Respondent’s web sites using the disputed domain names in contention redirected
Internet users to the site indiaheadlines.com which provided India-related news and
articles.
The respondent has specifically contended that the trademark of the complainant was
allowed to lapse since 1980. It was held that whether Complainant’s Indian trademarks
were any longer registered does not matter, since they had a very substantial reputation in
their newspaper titles arising from their daily use in hard-copy and electronic publication.
It was found by the Panel that:
(i) the Respondents adopted in their domain names the identical marks in which the
Complainant has rights,
(ii) that the Respondents had no rights or legitimate interests in respect of the domain
names; and
(iii) that their registration and use of the domain names is in bad faith in the sense that their
use amounted to an attempt intentionally to attract, for commercial gain, Internet users to
their web sites by creating a likelihood of confusion with the Complainant’s marks as to the
source, sponsorship, affiliation or endorsement of those web sites and the services on them.
Both the domain names were decided to be transferred to the Complainant.
(I) Yahoo.com, Yahoo! Inc. v. Victor Majevski a/k/a Marec Polanski & Ors., decided on
20 Sep 2002 [Click Case No. D2002-0694 for the text of complete Decision]
The domain names involved in this case were: financeyahoo.com, gamesyahoo.com,

greetingsyahoo.com, playyahoo.com, wwwyahoochat.com, yahooauction.com,
yahoohomepage.com and yahoolians.com.
The Complainant, Yahoo! is a global Internet communications, media, and commerce

company that delivers a branded network of comprehensive searching, directory,
information, communication, shopping services and other online activities and features to
millions of Internet users daily. Yahoo! is the owner of the service marks and trademarks
YAHOO!, as well as the trade name YAHOO! and the domain names <yahoo.com> and
<yahooligans.com>.
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It was, inter alia, contended by the Complainant that the respondent’s registration and use
of the domain names met the ‘bad faith’ element set out in Paragraph 4(a)(iii) of the UDRP
and clearly constitute ‘typosquatting’, namely, the misspelling or punctuation/letter
omission of another’s name in order to divert Internet traffic via Internet users’
typographical errors.
The respondent did not file any submissions before the Panel.
The Panel supported the Complainant’s argument that the very nature of the Yahoo name
(i.e. its arbitrary nature) makes it unlikely that the Respondent had not realized that its
names could be other than confusingly similar to those of the Complainant. It further found
that the Respondent used the Domain Names to intentionally attract, for commercial gain,
Internet users to its affiliated websites by creating a likelihood of confusion with
Complainant’s YAHOO! And YAHOOLIGANS! marks as to the source, sponsorship,
affiliation and endorsement of Respondent’s affiliated websites and/or the goods and
services offered on those websites.
Panel found the three elements that is confusing similarity with the mark of the
complainant, lack of respondent’s legitimate interest and bad faith, as set out in paragraph
4(a) of the UDRP present and therefore, directed that the domain names in dispute be
transferred to the Complainant.
Dispute Resolution of Indian ccTLDs
The Administration of Domain Names within the .in (Indian) category is looked after by
the Center for Development of Advance Computing, Mumbai (C-DAC) (formerly National
Center for Software Technology).
For the purpose of resolution of domain name disputes in the .in category, NCST does not
subscribe to UDRP. Rather, it has its own policy Indian Internet Domain Name Dispute
Resolution Policy. Paragraph 5 of the said Policy empowers the Domain Registrar to
cancel, transfer or otherwise make changes to Domain Name registrations. Following
circumstances are subscribed for making such changes:
1. On receipt of written or appropriate electronic instructions from the applicant/assignee or

his authorized agent.
2. On any direction/orders from a court of law or arbitral tribunal having its competent
jurisdiction, requiring such action.
3. On receipt of a decision of Internet Management Group (IMG) requiring such action as

above.
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According to Paragraph 7 of the Policy, a domain name dispute may arise under the
following conditions:
(1) The domain name is identical or confusingly similar to a trademark or service mark in
which the complainant has a rightful claim.
(2) The registrant has no rights or legitimate interests in respect of the domain name.
(3) The registrant has sold/auctioned/transferred the domain name to a third part without
taking approval of the Domain Registrar.
(4) The domain name has not been used by the registrant for over on year.
(5) A complaint of cyber squatting has been received.
(6) Any other dispute, accepted by the Domain Registrar in his own discretion.
A registrant shall be given 15 days prior notice to present his case. An oral hearing may be
granted. The Domain Registrar shall given his decision in writing. An appeal lies to the
Internet Management Group, and thereafter, before any court in Mumbai.
META-TAGS
When we deal with trademarks infringements on the Internet, another area of considerable
concern is the use of meta-tags in one’s own website. The HTML code used to create a web
site has a keyword field. These keywords are known as “Meta-tags” since the HTML code
uses the tag “META” to indicate the keyword field. These meta-tags are not visible to the
user looking at the site. However, these meta-tags/keywords are essential indicators the
search engines. They look for these keywords when searching for a particular website.
We should make clear the difference between an Internet Directory and an Internet search
engine. Former is more or less like a Yellow Pages directory with all the entries available
under specific categories. One has to merely click at the categories and sub-categories and
locate the entry. On the other hand, a search engine is like a ‘text-search’ facility that
search through the Internet contents for returning the results on the basis of certain
keywords given by the user. Search engines in turn build up their databases/indexer by
using web spiders/robots who scan the Internet for new content and dump in a database for
future use. The robots, in turn, for the purpose of building the indexer, look for meta-tags in
a webpage’s HTML code. Since meta-tags are essential for identification of a website, it
plays an important role for any entity wanting consumers to reach its website. For example,
X company, selling watches, might put words like ‘watch’, ‘wrist watch’, ‘hand made’,
‘time’, ‘time pieces’, etc. as keywords/meta-tags so that a search engine can pick these up
and while answering to a query for these words, returns the website of the X company.
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Now, if someone is hunting for a particular trade name on the Internet via a search engine,
the search engine would look into the meta-tags of the website and return the results.
However, the problem arises when one inserts a trademark/name of a particular company to
trick the search engine in displaying a particular website as containing that particular
trademark/name and inducing/diverting the consumer to that particular website. Legal
problems arise when one is using another trademark/name as a meta-tag in his website
without any authorization. This raises the legal issue of ‘initial interest confusion’. For
example, X company inserts in the meta-tags of its website, the trademark of a competitor,
Y company, so that anybody searching for Y company through a search engine will also, in
the result to the query, get the website of X company. The consumer might click on the
address of X company and once taken to the website, though there is no confusion as to the
source, still, as the Courts have put it, it does amount to ‘initial interest confusion’. The
consumer after reaching X company might be inclined to review the products of X
company and might be induced to buy them. In such situations, Y company suffers from
the risk of loosing potential consumers due to use of its trademark by X company as meta-
tags in its website.
A word about ‘initial interest confusion’ would be apt at present. Let us take for example,
that you like Pizza Hut. You are on the move and find a sign saying ‘Pizza Hut 1 km. on
the left’. You take a left, and after a kilometer, find Pizza Corner rather than Pizza Hut.
Though are you know Pizza Corner is different from Pizza Hut and though you prefer Pizza
Hut, yet, since you have already taken the trouble of taking a left and coming a kilometer,
you might want to enter Pizza Corner, look at menu and check ‘just in case’ you like
something for a bite. This is what is known as the ‘initial interest confusion’. Meta-tags are
responsible for creating just this kind of ‘initial interest confusion’ so that an Internet user
once he reaches a particular website, though knows well that it was not this website he was
looking for, yet might stay around for a while and check the contents of the website.
Let us look into a few cases:
(A) Playboy Enterprises, Inc. v. Calvin Designer Label [985 F. Supp. 1218 (N.D. Cal.
1997) (temporary restraining order issued), 985 F. Supp. 1220 (N.D. Cal. 1997)
(preliminary injunction granted), 1999 WL 329058 (N.D. Cal. 1999) (summary judgment
entered for plaintiff)]
Calvin Designer had two adult websites, namely, www.playboyxxx.com and

www.playmatelive.com. It used ‘Playboy’, ‘Playmate’ and ‘Playboy Magazine’ as meta-
tags in its website to cash on the reputation and goodwill Playboy. Playboy alleged
infringement of trademark which was agreed by the District Court and permanent
injunction was granted enjoining Calvin from using Playboy’s trademarks as domain names
or meta-tags.
(B) Playboy Enterprises, Inc. v. Asiafocus International, Inc., [1998 WL 724000 at *2.
(E.D. Va. 1998)]
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In an action against the defendant for trademark infringement, the Court found that the
defendants had purposefully embedded Playboy’s trademarks ‘playboy’ and ‘playmate’
within its computer source code ‘which is visible to search engines that look for web sites
containing specific words or phrases specified by the computer user’. Therefore, once a
querry for ‘playmate’ is made, the search engine returns a number of websites including
that of Asiafocus. The Court concluded that consumers would be mislead into believing
that the website of the defendant is in someway connected to or sponsored by the Playboy.
The Court found against the defendant.
(C) Playboy Enterprises, Inc. v. Global Site Designs, Inc., [1999 WL 311707 at *1 (S.D.
Fla. 1999)]
In this case, Global Site Designs registered two domain names that incorporated Playboy’s
trademarks, www.playmatesearch.net and www.playboyonline.net. The words
‘playboyonline’ was also used in the meta-tags of the website. The Court found
infringement of trade mark and restrained the defendant from using the plaintiff’s
trademarks, Playboy and Playmate, as meta-tags or as part of a domain name.
(D) SNA, Inc. v. Array, [51 F. Supp. 2d 554 (E.D. Pa. 1999)]
The defendant’s were using the plaintiff’s trademark as meta-tags. A block of text
repeating the words, “seawind,” “SEAWIND,” “Seawind” was inserted. It was observed
that it does not matter what the domain name is. The fact that the trademark was used as
meta-tags was enough to confuse Internet users and hence, the defendants were restrained
from using the plaintiff’s trademarks as meta-tags.
(E) Niton Corp.v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d. 102 (D. Mass. 1998)
In this case, the defendant not only used all trademarks of the plaintiff as meta-tags but also
literally copied all of the meta-tags that plaintiff had used to design its own website. The
Court came to the conclusion that the act of the defendant would probably lead an Internet
consumer to believe that the defendant is in someway either connected to or sponsored by
the plaintiff. Injunction was granted.
(F) Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036
(9th Cir. 1999)
In what is considered as the first decision by a federal appellate court, the defendant used
the word, MOVIEBUFF, as meta-tags which the plaintiff claimed to be its trademark. The
Court held that consumers on the look out of plaintiff’s goods might be diverted to the
website of the defendant due to use of MOVIEBUFF as meta-tag which would influence
the search engine results.
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The Court held that using a competitor's trademarks in meta-tags causes initial interest
confusion which is a form of trademark infringement. The plaintiff owned the trademark
MOVIEBUFF whereas the defendant used it as a meta-tag. Searching the said word
returned links to both parties’ websites. The court explained that when a user clicked on the
link to West Coast's web site, there is no confusion regarding the source of the products
(because consumers know they are patronizing West Coast's web site and not Brookfield's
web site), but there is initial interest confusion because West Coast used the trademark
MovieBuff to capture initial consumer attention and divert people to its web site and West
Coast ‘improperly benefit[ed] from the goodwill that Brookfield developed in its mark’.
It is always advisable that one should insert words and expressions as meta-tags in their
websites with caution and restraint, specially when one is not sure whether it might infringe
somebody else’s trademark. It has observed time and again by the Indian Courts that,
where services rendered through the domain name in the Internet, a very alert vigil is
necessary and a strict view is to be taken for its easy access and reach by anyone from any
corner of the globe. The threat of meta-tags is a larger one when one recalls that there can
be trademark infringement even thought the domain name used does not even remotely
infringes anybody’s trademark. Maybe, for this reason, this kind of trademark infringement
has also been termed as ‘invisible trademark infringement’.
FRAMING AND LINKING
Linking
Z launches a website of news items. However, instead of putting his own collection of
news items, he puts the links of a few leading newspapers like The Times of India, The
Economic Times, The Hindustan Times, The Hindu, The Statesman, etc. If the Internet
user clicks on one of the icons, it takes the user to the website of the particular newspaper.
Sounds fair enough! It actually facilitates the user in navigating through the Internet with
considerable ease. In most cases, linking is welcome. For example, enter www.yahoo.com
and you would notice a whole range of advertisements towards the top. Those are nothing
but links to another website.
Before we look into the problem, we shall also understand how one can increase revenues
through advertisements on a website. An advertiser/companiy chooses where to advertise
on the Internet by checking the number of ‘hits’ on a website, that is, how many people
have accessed/visited the website. When we say ‘accessed’, we mean accessing the
homepage/main webpage. The more there are ‘hits’ on www.yahoo.com, the more
advertisers/companies are attracted to advertise there. A problem would arise if another
website would permit somebody to skip the homepage of a website (which contains the
advertisements) by deep linking into the site. This would not be counted as a ‘hit’ for that
website and as more and more deep linking would happen, the number of ‘hits’ would
decrease.
Let us get back to Z who is offering news items by permitting linking to different
newspapers websites. Suppose Z is offering search facilities as well so that one can indicate
51
what kind of news items he is looking for. For instance, you type in ‘cricket’ and Z permits
you deep linking into cricket section of The Times of India. In this process, the main
webpage of The Time of India has been skipped which is a loss for the newspaper. In law,
these are more of copyright and unfair competition issues. However, to a certain extent,
there might be trademark infringement as well. If the Z’s website in any way indicates that
he might have an association with The Times of India or might be directly sponsored by
The Times of India, he might be hauled up for trademark infringement. It depends upon
whether Z is using the logo of The Times of India or anything else so as to indicate an
association. It is worth noting that deep linking into a website might be a stronger
indication of association and hence, trademark infringement, than simple linking to the
homepage of a website. Though, it is quite unlikely that the Internet user would think that
there is any association, yet one has to be on the outlook of trademark infringement through
linking.
Framing
One can have a stronger case of trademark infringement on ground of framing rather than
linking. Z launches a website of news items. However, instead of putting his own collection
of news items, he puts the links of a few leading newspapers like The Times of India, The
Economic Times, The Hindustan Times, The Hindu, The Statesman, etc. If the Internet
user clicks on one of the icons, instead of taking him to the website of that particular
newspaper, the contents of that newspaper’s wesbite is dragged onto the main webpage of
the Z’s wesbite itself so that the user need not move anywhere else. The problem is that
such contents are framed within the webpage of Z cutting off the newspaper’s
advertisements and showing the advertisements of Z only. This kind of activity is known as
framing.
Again framing is more of an unfair competition issue. The companies might get upset due
to loss of revenue through advertisements. Also, copyright issues are involved since the
contents, user is browsing through on a website has actually has pulled from some other
website though the user might not be even aware of it. There are also chances of trademark
infringement which strongly depends upon the way the contents are framed. Generally, the
framing site’s web address is on display which will confuse the users as to the origin/source
of the contents.
On February 20, 1997, a number of newspapers and periodicals filed suit in the Southern
District of New York against Total News, Inc., framing of news. Total News is
characterized in the suit as a “parasite Web site” with little or no substantive content, but
with considerable on-screen advertising of itself and the products and services of its
advertisers. The user sees a menu consisting of third-party trademarks (Fox News,
MSNBC), the Total News trademark and URL, and some content from the framed site. The
site apparently also contains an advertisement from the Total News advertiser, AT&T, with
the opportunity to ‘click here’ and get more advertising content from the AT&T Web site
or other Total News Web pages. The complaint alleges misappropriation, trademark
dilution and infringement, ‘willful copyright violation’ and other tortious acts such as false
52
advertising. In a single sentence, the plaintiffs challenge the Total News practice:
‘Defendants have designed a parasite Web site that republishes the news and editorial
content of others' Web sites in order to attract both advertisers and users.’ The case was
ultimately settled on the basis that Total News, Inc. would not use framing and use only
simple linking without use of logos, etc. of the linking website. (See Mary M. Luria,
Controlling Web Advertising: Spamming, Linking, Framing, And Privacy, The Computer
Lawyer, Vol. 14, No. 11; Pg. 10, November, 1997)
EXTRAS:
1. ICANN Glossary
2. WIPO’s Frequently Asked Questions (FAQ)
3. ICANN’s Internationalised Domain Name (IDN)
53
Geographical Indications
Contents
1) Part I: Background and Definition
2) Part II: Conditions, Procedure and Duration of Registration
3) Part III: Effect of Registration
4) Part IV: Offences, Penalty and Procedure for Seeking Relief
5) Websites
6) References
Part I: Background and Definition
Introduction
The Geographical Indications of Goods Registration and Protection Act, 1999, (the ‘Act’)
which was recently enforced in India provides a statutory mechanism for registration and
protection of Geographical Indications (GIs) for the first time in India. GIs as a form of
intellectual property has now been subject matter of debate at international level, the basic
reason being the value addition it gives to a product and therefore the importance of GIs as
valuable commercial assets. The basic function of a GI is to protect the goodwill of a
producer or a section of producers and imparting consumer information.
We all know products like ‘Bikaneri Bhujia’, ‘Alphonso Mango’, ‘Kolhapuri chappal’,
‘Darjeeling Tea’, ‘Champagne’, ‘Havana’, ‘Tequila’, ‘Scotch Whisky’, ‘Bordeaux’,
‘Burgogne’, ‘Irish Whisky’, ‘Porto’, ‘Cognac’, ‘Sherry’, ‘Camembert’, ‘Gouda’ and many
others. Often we purchase these products simply for their qualitative properties attributing
the same to their geographical origin. Not just today but from ancient times every region
had its claim to fame for its products for example Arabia for horses, China for its silk,
Dhaka for its muslin, Venice for glass, India for its spices and many others, painstakingly
developed and handed over from one generation to the next for centuries. Gradually a
specific link between the goods and the region/place evolves resulting in growth of what
we term as today in legal sense (a part of the intellectual property laws bouquet) as
“Geographical Indication’.
54
Intellectual properties are intangible assets that are developed over a period of time and
involve considerable investment and GIs are no different and therefore laws national or
international are harmonizing and tightening the protection regime. GIs as a form of
intellectual property have been accorded protection in the now universally accepted
Agreement on Trade – Related Aspects of Intellectual Property Rights popularly known as
the TRIPS Agreement. Many countries like India, Singapore, Thailand, Trinidad, the
European Union through its Council Regulations and others have enacted specific
enactments to protect GIs.
Our discussion herein will basically revolve around the new Indian Act on the subject. We
shall start with understanding the definition and concept of GIs touching in Part I, then look
in to the procedure and duration of registration in Part II. In Part III we shall discuss the
effects of registration of a GI and finally in Part IV discuss the remedies and reliefs as
enumerated in the Act for infringement of GIs and any offences committed with respect to
a GI.
Definition
According to Section 2(e) of the Act “geographical indication”, in relation to goods,
means an indication which identifies such goods as agricultural goods, natural goods or
manufactured goods as originating, or manufactured in the territory of a country, or a
region or locality in that territory, where a given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical origin and in
case where such goods are manufactured goods one of the activities of either the
production or of processing or preparation of the goods concerned takes place in such
territory, region or locality, as the case may be.
Explanation: - For the purposes of this clause, any name which is not the name of a
country, region or locality of that country shall also be considered as the geographical
indication if it relates to a specific geographical area and is used upon or in relation to
particular goods originating from that country, region or locality, as the case may
be;”
(http://www.patentoffice.nic.in/ipr/gi/gi_act.PDF)
Therefore in general to qualify for protection an indication must:
A. Identify the good and its area of geographical origin.

B. Possess a given quality, reputation or other characteristics which
C. Is essentially attributable to its area of geographic origin.
The definition as given in the Act is in consonance with the definition of GI as given in the
TRIPS Agreement (Article 22(1)) and rather is more specific and exhaustive. The Indian
definition explicitly extends the protection to GIs not only for agricultural products but also
for manufactured goods. Though the use of GIs is predominantly with respect to
agricultural products typically having qualities attributable to the specific geographical
area, influenced by factors such as climate, soil etc. however, certain geographical locality
or region may also highlight specific qualities of a product, due to human factors found in
the place of origin of the products, such as specific manufacturing skills and tradition. Such
55
a place of origin may be a village or town, a region or a country. For example ‘Switzerland’
or ‘Swiss’, which is often perceived as a GI for products like chocolate and watches made
in Switzerland. Back home ‘Kolhapuri’ for a particular kind of ‘chappals’ made in
Kolhapur district of Maharashtra, ‘Bikaneri’ for a specific kind of snack called Bhujia
made in Bikaner district of Rajasthan, ‘Kanjeevaram’ for a specific kind of silk saris made
in Kanjeepuram in South India can be such examples of manufactured goods. It should be
understood that the function of a GI is that it points to a specific place or a region of
production that determines the characteristic qualities of a product that originates form
there. It is important that the product derives its qualities and reputation from that place.
Since those qualities depend on the geographical place of production, a specific “link”
exists between the products and their original place of production. In case of manufactured
goods the link develops over a period of time. Though it is easy to imagine this concept of
GI with respect to agricultural goods as the specific link can be easily seen, understood or
perceived. For example ‘Darjeeling’ for tea known for its flavour and aroma grown in the
Darjeeling area of Eastern India, ‘Basmati’ known for a kind of rice having long grain and
sweet aroma grown in the sub Himalayan regions of India and Pakistan and many other
examples of such GIs can be given.
Prior to specific provisions as to protection of GIs this form of collective goodwill was in
many jurisdictions protected under the trademarks law namely by registration as
‘Certification Marks’, or ‘Collective Marks’. Even today countries like US, Australia and
others, since they lack a specific legislation on this subject protects GIs through registration
as ‘Certification or Collective Marks.’ A ‘Collective Mark’ as defined in the English Trade
marks Act 1994, means “a mark that distinguishes the goods or services of members of the
association which is the proprietor of the mark from those of other undertakings”.
Therefore ‘Collective Marks’ are owned by associations whose members use them to
identify themselves with a level of quality and other requirements set by the association.
Examples of such associations would be those representing accountants, engineers, or
architects. While a ‘Certification Mark’ as defined in the English Trade Marks Act, 1994,
means a “mark indicating that the goods or services in connection with which it is used are
certified by the proprietor of the mark in respect of origin, material, mode of manufacture
of goods or performance of services, quality, accuracy or other characteristics.” Therefore
these marks are granted for compliance with definite standards, for example as to material
or quality, but are not confined to any membership. They may be granted to anyone who
can certify that the products involved meet certain established standards. ‘Woolmark’, the
‘Kite’ mark of the British Standards Institutes and the mark ‘Stilton’ for a particular variety
of cheese produced in the area around the English village of Melton Mowbray are some of
the very popular examples of this category of marks. The internationally accepted "ISO
9000" quality standard is also an example of such certification marks.
Also unregistered GIs were and also today protected at common law by an action of
‘extended passing off’ a variant of the classic passing off action, first recognized by
Danckwerts J in Bollinger v Costa Brava wine Co. [1960] RPC 16. Under an action of
extended passing off it is recognized that a class or group of traders may share goodwill in a
name or some other indicator that is distinctive of a particular class of goods such as
‘Champagne’ or ‘Scotch Whisky’. Therefore what is recognized is some kind of collective
56
goodwill and of course GI too is a form of collective goodwill. In Bollinger v Costa Brava
wine Co. case the plaintiffs were members of a group of producers from the Champagne
district in France who made a naturally sparkling wine, popularly known as ‘Champagne’,
brought an action of passing off against the defendant for selling a product called ‘Spanish
Champagne’. The court observed that passing off would restrain a trader who sought to
attach to their product a name or description with which they have no natural association,
“so as to make use of the reputation and goodwill which has been gained by a product
genuinely indicated by the name or description”. Danckwerts J further added that it did not
matter “that the persons truly entitled to describe their goods by the name and description
are a class producing goods in a certain locality and not merely one individual”. Therefore
in essence the court recognized that the plaintiffs along with other members of the class had
the requisite goodwill in the name ‘Champagne’. This was because the name ‘Champagne’
indicated a sparkling wine that came from the Champagne district in France, was made by
a particular method, and from grapes sourced from this Champagne region. As such, the
word ‘Champagne’ denotes a distinctive reputation which could only be used by producers
from “Champagne’ region. The Bollinger decision was followed in other cases namely in
Vine Products v Mackenzie [1969] RPC 1 (sherry – wine produced by the Solera process in
the province of Jerez de la Fontera in Spain); John Walker & Sons v Henry Ost [1970]
RPC 489 (Scotch Whisky distilled, but not necessarily blended, in Scotland); Taittinger SA
v Allbev [1993] FSR 641 (champagne); Consorzio del Prosciutto di Parma v Marks &
Spencer [1991] RPC 351; Consorzio del Prosciutto di Parma v Asda Stores [1988] FSR
697 (parma ham).
[1998] RPC 117; [1999] RPC 826 and recently in Chocosuisse v Cadbur [1998] RPC
117; [1999] RPC 826 wherein Laddie J. recognized that the Swiss Chocolate Industry had
collective goodwill in the words ‘Swiss Chocolate’.
Though the phrase ‘Geographical Indications’ was for the first time used in the TRIPS and
also given a broad interpretation, the concept however is very old and dates back to 14th
century when a specific legislation was passed on ‘appellations of origin’ in relation to
‘Roquefort Cheese’ in France. In brief the concept of GIs essentially originated in Europe
where it has been mainly related to agricultural products and foodstuffs, and eventually
expanding to certain industrial products, for example, ‘Swiss watches’. Till TRIPS the
terminology used was ‘indications of source’ and ‘appellations of origin’. Section 3
(Article 22 to 24) of the TRIPS Agreement contains provisions in relation to GIs and the
section was essentially included due to powerful European influence while countries like
USA, Australia, Canada, Japan and others were against its inclusion. (As one commentator
has commented on the inclusion of Section 3 in the TRIPS Agreement that ultimately
‘important European movement to protect traditional foods from the galloping globalism
that threatens the entire world of food and wine’ emerged triumphant in the fight to achieve
a higher level of protection for geographical indications).
The Paris Convention for the Protection of Industrial Property, 1883 (hereinafter
‘Paris Convention’) was the first multilateral agreement, which provided protection for
indications of source and appellations of origin. Article 1(2) lists the kinds of industrial
property to be protected by the Convention and includes, among others, ‘indications of
source’ and ‘appellations of origin’ and this means these properties would also benefit from
57
the principle of national treatment pursuant to Article 2 of the Convention. Sanctions have
also been prescribed for falsifying indications of source. However, the protection was
considered rudimentary and weak and therefore countries entered in to the Madrid
Agreement for the Repression of False or Deceptive indications of Source on Goods of
1891(hereinafter the ‘Madrid Agreement’), the 1958 Lisbon Agreement for the Protection
of Appellations of Origin and Their International Registration (hereinafter the ‘Lisbon
Agreement’), and the bilateral agreements for the protection of GIs as concluded between
the countries. It should be mentioned that all these agreements were entered within the
broad ambit of the Paris Convention pursuant to Article 19.
The Madrid Agreement further obliges member countries to protect indications of source
against false and misleading use and lays down that that such goods bearing false and
misleading indications of use must be seized on importation by the contracting states.
The Lisbon Agreement was the first attempt to achieve effective and enforceable
protection o GIs through an international registration system. Briefly for an appellation of
origin to be protected, in accordance with the terms of this Agreement: (i) the appellation
of origin should be protected in its country of origin, and (ii) the appellation of origin
should be registered in the International Register of WIPO. However, the definition of
appellation of origin as given in the Lisbon Agreement was narrow and limited registration
of appellations with respect to agricultural goods and excluded industrial goods from the
purview. Also the Agreement required that for an appellation of origin to be protected it
should be first protected in its country of origin through a specific official Act (a legislative
or administrative provision, or a judicial decision or a registration). However, till date only
19 counties have signed the agreement due to its narrow definition of appellation of origin
basically designed to protect wines. Therefore countries entered in to bilateral agreements
to achieve a higher level of protection, for example the European Union – Australia Wine
Agreement, European Union- Mexico Agreement and the European Union - South Africa
Agreement.
Useful Links:
1. http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm
2. http://www.jurisint.org/pub/01/en/doc/139_1.htm
3. http://www.wipo.int/treaties/en/registration/lisbon/index.html
4. http://www.awbc.com.au/Content.aspx?p=47
5. http://www.google.co.in/search?hl=en&ie=UTF-8&q=+EU+-
+Mexico+Wine+Agreement&btnG=Search&meta=
6. http://www.dti.gov.uk/ewt/safrica.htm
7. http://www.southcentre.org/publications/geoindication/TopOfPage
58
8. http://www.american.edu/projects/mandala/TED/basmati.htm
9. http://www.bitlaw.com/source/treaties/paris.html
10. http://europa.eu.int/scadplus/leg/en/s05033.htm
11. http://europa.eu.int/comm/trade/issues/bilateral/countries/mexico/docs/en2_decision
_goods.pdf
12. http://timesofindia.indiatimes.com/articleshow/228868.cms
13. http://www.realbikaner.com/industry/
14. http://www.travelmumbai.com/html/arts___crafts.html
The definition of GIs as in TRIPS Agreement is more comprehensive and includes

industrial products. Apart from provisions as to special protection for wines and spirits,
review, overlapping trade marks and others the Agreement pursuant to Article 24(9) clearly
lays down that there is no obligation on any member country to protect a GI if the same is
not or cease to be protected in the country of its origin or have fallen in disuse in its country
of origin. Therefore given this provision in the TRIPS and the Basmati rice controversy in
the US Patent and Trade Mark Office there was considerable pressure and lobbying in
India to have an enactment to protect its GIs. Hence the Geographical Indications of Goods
Registration and Protection Act, 1999, was enacted and now enforced. The Geographical
Indications Registry exercising all India jurisdictions is currently operating form Chennai.
Before going in to the registration procedure it is pertinent to point at this stage the function
of GIs, its difference with trademarks since both being overlapping subjects and its
growing importance now.
Briefly, GIs essentially fulfills two main functions namely, protecting the goodwill of a
producer or a section of producers and imparting consumer information. Often promotion
of products having certain characteristics is of considerable benefit to the region or area
where the products are manufactured and to the area where they are marketed. GIs protect
producers of these regions or areas against unauthorized exploitation of the goodwill
created by the quality of the products and the advertising appeal of the respective locality
or region by competitors and their products. It should be pointed out that effective GI
protection is very important to industries like that of wine making. In SMW Winzersekt
GmbH v Land Rheinland – Pfalz [1995] 2 CMLR 718 the European Court of Justice
dismissed the appeal of a German wine grower’s association challenging the validity of
European Council Regulation that prohibited them from designating their sparkling wine as
‘Champagne’ or indicating that the wine was produced using the ‘Champagne Method’.
The court in its opinion clearly indicated that GIs have a purpose beyond that of protecting
the consumer against confusion about the origin of goods and that pertains to protection of
the ‘goodwill investment’ of a region, which produces genuine goods against
59
misappropriation by others who have not made the same investment in the goodwill. The
court held that the words ‘Champagne’ or ‘Champagne Method’ has a value because of the
investment of French sparkling wine producers in producing their product, and German
wine producers cannot be allowed to have a free ride on this investment.
But then the question arises as to the difference of GIs from trademarks as both perform the
function of identifying good; both are industrial property and perform overlapping
functions. GIs act as source identifiers - In effect GIs act as source identifiers – they
identify goods as originating in a particular territory, or a region or locality in that territory.
Also they act as indicators of quality as they let consumers know that the goods come from
an area where a given quality, reputation or other characteristic of the goods is essentially
attributable to their geographic origin. In addition GIs are business interests as they help to
promote the goods of a particular area. While a trademark serves as a ‘badge of origin’, i.e.
a sign or combinations of signs, such as words, numerals, figurative elements, etc., capable
of distinguishing goods or services of one undertaking from those of others. Further, a
single person legal or natural is entitled to use a trademark, the right being accorded in
accordance to the principle of ‘first in time, first in right’ and the first user or first registrant
will generally take precedence. While in case of a GI all producers belonging to the
particular region or locality are entitled to use it. There is no precedence. Therefore the
notion of trademarks implies individual production of goods while the notion of GIs
implies collective production of goods coming from the same geographical region and
having the same quality, reputation or characteristic attributable to its geographic origin.
Trademarks are easier to protect internationally though it requires active role of the owner
who acquires this right through registration with a competent domestic authority, while in
case of GIs the state or an association of producers has to play a prominent role in its
protection. Also a trademark is a personal property, which can be transferred by way of
assignment, licensing or any other means, while a GI by its very nature cannot be subject
matter of licensing or assignment. For example, the know-how for producing Champagne
or Cognac may be, in principle, transferred to a person producing sparkling wine or brandy
outside the region of Champagne or Cognac, but the right to label the licensed product as
Champagne or Cognac cannot be transferred.
And lastly question as to the sudden realization of GIs as form of intellectual property too
has to be answered satisfactorily. In the last quarter of the twentieth century international
trade has grown tremendously thereby affecting intellectual property rights in all aspects.
Nations, communities and individual manufacturers have realized that GIs, intended to
designate product quality, highlight brand identity, and preserve cultural tradition, allows
producers to obtain market recognition and often a premium price. For example French GI
cheeses are sold at a premium of two euro, Italian ‘Toscano’ wine is sold at a premium of
20% since its registration as a GI in 1998. Further, the EU, the biggest producer of wines
and spirits, annually exports wine to a total value of EUR0 250 billion and spirits to EUR0
660 billion (all based on 1997 as the reference year). French wines like ‘Bordeaux’ and
‘Burgundy’ are well known world over and off course Champagne that has become a
symbol of victory and celebration. Therefore these huge stakes were the basic reason to
force EC to enter in to bilateral agreement with Australia in 1994 to prevent it from using
GIs such as ‘Burgundy’ or ‘Chablis.’ It is stated that in case of wines and in general GIs
60
and the country where a product originates makes a big difference to sales. Australian wine
industry thereafter devised their own regional names for wine like ‘coonawarra’ or
‘Barossa’ and stressed grape varieties like ‘Chardonnay’ and ‘Shiraz’ and built one of the
most dynamic wine industry ready to outsell the French both in Britain and United States
this year. As of date 85% of French wine exports use GIs and 80% of EU exported spirits
use GIs. GIs are the lifeline for 138000 farms in France and 300000 Italian employees.
Apart from wines and spirits GIs are also very important to the food products like cheese,
tea, coffee, rice and many others. The recent ‘Basmati’ rice controversy in US, which
would be referred to in detail in later parts of this paper, save for mentioning herein that at
stake are exports worth $600 million from India and Pakistan, only further carried the
debate on GI. Further the US - EU WTO dispute as to protection of GI involving issues of
reciprocity and trademarks has drawn considerable attention.
Therefore given the stakes involved nations whether developed or developing are
negotiating on further providing enhanced protection to GIs within the TRIPS and not just
limiting it to wines and spirits.
Useful Links:
http://geographicindications.com/index.htm
http://europa.eu.int/comm/trade/miti/intell/argu_en.htm
http://www.economist.com/displaystory.cfm?story_id=1958256
http://usinfo.state.gov/topical/econ/wto/03040401.htm
Websites
1. www.patentoffice.nic.in
2. www.wipo.org
3. www.wto.org
4. www.geographicindications.com
5. www.southcentre.org
6. www.europa.eu.int
7. www.uspto.gov
8. www.ictsd.org
9. www.awbc.com.au
Part II: Conditions, Procedure and Duration of Registration

61
As mentioned earlier that unless a GI is protected in the country of its origin there is no
obligation under the TRIPS Agreement for other member states to extend reciprocal
protection and therefore to protect its GIs India enacted the Geographical Indications of
Goods (Registration and Protection) Act, 1999 (hereinafter ‘the Act’). The Act provides a
mechanism for registration of GIs and establishes a GI registry, a statutory body to give
effect to the provisions of the Act. It should be also noted that prior to this Act, the
producers of these kinds of goods were protected under the common law, the English
precedents and under the trademarks law. Also the subject overlaps with trademarks and
hence incase of any confusion or discrepancy the Trade and Merchandise Marks Act, 1958
and the newly enforced Trade Marks Act, 1999 should be looked in to.
Infrastructure
The Act is divided in to 9 chapters, containing 87 sections. Chapter I, the preliminary
section gives a short title, the area of operation, date of commencement and definitions of
expressions like Intellectual Property Appellate Board, authorized user, deceptive
similarity, Geographical Indication, goods, indication, producers etc. Chapter II deals with
Registrar and the conditions of Registration. Chapter III provides for registration of
Homonymous GIs. Chapter IV deals with the procedure for registration, Chapter V deals
with special provisions relating to trade marks and prior users, Chapter VI with
rectification and correction of the register, Chapter VII with appeals and the appellate
Board, Chapter VIII with offences and penalties and finally Chapter IX contains
miscellaneous provisions like powers of central government to make rules and others.
Coming to Chapter II, pursuant to Section 3 of the Act the Controller General of Patents,
Designs and Trademarks has been appointed the Registrar of GIs who will discharge his
functions through his officers as appointed therein. At the moment the GIs Registry has
been established in Chennai with all India jurisdiction. A Register of GIs will also be kept
at the GI registry under the superintendence and control of the Registrar of GIs (Section 6)
in which details of all registered GIs with names, addresses and descriptions of the
proprietors, the names, addresses and descriptions of authorized users and such other
details would be entered. This register is divided in to two parts namely, Part A in which
details as to the registration of the GIs has to be entered and Part B will contain particulars
as to the registration of authorized users (Section 7).
Like trademarks the Act pursuant to Section 8 registration of a GI shall be with respect to
any or all of the goods comprised in such class of goods as may be classified by the
Registrar and in respect of a definite territory of a country, or a region or locality in that
territory of a country, or a region or a locality in that territory as the case maybe. This
implies that the application for registration will have to indicate precisely the goods to
which the GI shall apply. The goods are divided in to 34 classes and are mentioned in the
Fourth Schedule to the Geographical Indications of Goods (Registration and Protection)
Rules, 2002 (hereinafter ‘the Rules’). It should also be noted that if the goods for which
registration has been applied for fall in more than 1 class and for which only one
application fees has been paid, the applicant may have either to restrict the specification of
goods included in one class or pay the appropriate additional class fee. The decision of the
62
Registrar as to which class any goods fall in to shall be final. It should be further noted that
like the classification of goods under the Trade Marks Act 1999, the classification as given
under the Act in the Fourth Schedule, is based on the International Classification system
established under the Nice Agreement of June 15th, 1957.
Registrability
For Registrability the GI must fall within the scope of the definition of the expression
‘Geographical Indication’. In addition such a GI should not fall within the purview of
prohibitions as contained in Section 9 and they are: -
(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court; or
(f) which are determined to generic names or indications of goods and are, therefore, not
or ceases to be protected in their country of origin, or which have fallen in to disuse in
that country; or
(g) which, although literally true as to the territory, region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another
territory, region or locality, as the case may be.
(a) the use of which would be likely to deceive or cause confusion; or

Deception or confusion need not be actual. It may be probable. As under trademarks law
protection of public interest is the primary consideration before the Registrar. (As
mentioned earlier since this branch of law is new and overlapping with the trademarks law
reference shall be made of trademark cases wherever required.)
What the Registrar has to see is whether looking at the circumstances of the case a
particular trademark (in our case GI) is likely to deceive or cause confusion (National
Sewing Thread Company Ltd. V James Chadwick & Co. Ltd and others Air 1953 SC 357,
pg 364). The court must be satisfied that there is a real tangible danger of confusion if the
mark, which is sought to register, is put on the Register (William Bailley (Burmingham)
Ltd.’s Application (1935) 52 RPC 136, pg. 153). However, the Registrar ought not to refuse
to register a mark as calculated to deceive where there is no evidence, intrinsic or extrinsic,
of a design to pass off goods as those of another man’s where the marks are distinct, and
where registration would be permitted, but for the mere possibility o confusion by
inexperienced people (Reddaway & Co. Ltd.’s Application (1925) 42 RPC 397, Pg. 401:
Ch. 393.
Therefore in general the Registrar of GIs as the registrar of trademarks has to see each case
on its own facts and circumstances with the overriding consideration being public interest.
(b) the use of which would be contrary to any law for the time being in force; or
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The Trade Marks Act, 1999 prohibits registration of marks that are prohibited under the
Emblems and Names (prevention of Improper Use) Act, 1950, the law relating to copyright
and the common law tort of Passing –off. Similarly in case of GIs registration of such GIs
is prohibited under these laws with the Trade Marks Act, 1999 in addition.
(c) which comprises or contains scandalous or obscene matter; or

The same is the law relating to trademarks. Whether a GI that has been applied for
registration is scandalous or obscene has to be decided by the tribunal in the facts and
circumstances of each case. The onus is on the applicant to show that the GI applied for
registration is not scandalous or obscene.
(d) which comprises or contains any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India; or
Again as in trademarks in case of GIs too each case has to be seen in its own peculiar facts
and circumstances. Use of pictures of Gods, Goddesses and other religious heads as
trademarks or GIs per se is not objectionable. However, some sign or word or particular
usage may hurt the religious and moral susceptibilities and hence such trademark or GI
falls under his prohibition.
For example the use of Hindu Gods in respect of beef or meat products or such use of
Muslim Saints for pork products would offend the religious susceptibilities of the
respective sections of public and therefore registration of such GIs would fall under the
purview of Section 9 (d). Registration of the mark ‘HALLELUJAH’ in respect of articles
of clothing for women was refused as offending against morality and religious
susceptibilities of certain people (Hallelujah TM (1976) RPC 605).
(e) which would otherwise be disentitled to protection in a court; or

The established principle of law is that the protection is not to be extended “ to persons
whose case is not founded in truth” (Eno v Dunn 7 RPC 311, pg. 318).
Apart from equity as mentioned earlier a trademark or GI will not be registered if it violates
laws relating to copyright, tort of passing off, Emblems and names and other laws.
(f) which are determined to generic names or indications of goods and are,
therefore, not or ceases to be protected in their country of origin, or which have
fallen in to disuse in that country; or
The sub clause, i.e. Section 9 (f) has to be read in conjunction with Explanation 1 and 2 as
given. According to Explanation 1 ‘generic names or indications’ means the name of a
goods which, although relates to the place or the region where the goods was originally
produced or manufactured, has lost its original meaning and has become the common name
of such goods and serves as a designation for or indication of the kind, nature, type or other
property or characteristic of the goods. In other words the name has ceased to be distinctive
of a particular source and has become common to the trade. This provision corresponds to
Article 24(9) of the TRIPS Agreement, which declares “there shall be no obligation under
this agreement to protect GIs which are not or cease to be protected in their country of
origin, or which have fallen in to disuse in that country”. Article 6 of the Lisbon
Agreement clearly states that an appellation of origin will not be deemed to have become
generic as long as the same is protected in its country of origin.
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According to Explanation 2 which states that in determining whether the name has become
generic, account shall be taken of all factors including the existing situation in the region o
place in which the name originates and the area of consumption of the goods.
It need not be mentioned that the value of a GI diminishes if the product has no longer the
exclusive meaning and its origin loses relevance. The GI no longer indicates to the market
place the source of the product and instead it is considered the common general name of
the product. Intellectual properties are valuable assets and owners make great efforts to
prevent their trademarks and GIs from becoming generic. Example can be given of Basmati
rice, which has become generic in USA and is a common term used for all long grain
aromatic rice. The Indian government is fighting a legal battle to restore the same as a GI
(g) which, although literally true as to the territory, region or locality in which the
goods originate, but falsely represent to the persons that the goods originate in
another territory, region or locality, as the case may be,
Geographical indication, which falsely represents to the persons that the goods originate in
a locality other than of its origin, though literally true as to the locality of origin, cannot be
registered. Therefore this provision intends preventing deception and falsification of GIs.
Falsity of representation, in absence of any fraud, does not depend upon the meaning which
the maker intended or believed it to have or upon the construction which the court itself
puts upon it, but upon the way in which it could be reasonably understood by the person to
whom it is addressed. In Parker Knoll Ltd v. Knoll International Ltd. [1962] RPC 265, it
was observed, “It is literally truthful for the appellants to say that their furniture is
manufactured by Knoll International, but if that statement conveys to a member of the
public that the furniture is manufactured by Parker –Knoll, it is a false representation”.
Further, Section 10 of the Act provides for registration of homonymous, i.e. similar GIs
subject to the satisfaction of the Registrar. The Registrar after considering the practical
conditions under which the homonymous indications will be differentiated form other such
homonymous indication, the need to ensure equitable treatment of the producers of the
goods concerned and after satisfying that the consumers of such goods will not be confused
or misled should permit registration of such homonymous GIs. The onus is on the applicant
to show that the consumers of such goods are not confused or misled due to registration of
such homonymous GIs. This section is in consonance with Article 23(3) of the TRIPS
Agreement, which permits each member to “to determine the practical conditions under
which the homonymous indications in question will be differentiated from each other
taking in to account the need to ensure equitable treatment of the producers concerned and
that consumers are not misled”.
The example of homonymous indications are Rioja, - wines produced in Argentina and
Spain and Basmati – rice produced form India and Pakistan.
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Procedure for Registration

The procedure for registration of a GI is prescribed in Chapter III of the Act read with
Chapter II of the Rules. Section 11 of the Act deals with application for registration, its
contents, making and filing, acceptance or refusal. It should be noted that unlike an
application for registration of a trade mark where an application may be made by any
person, an application for registration of a GI pursuant to Section 11(1) can be made only
by an “association of persons or producers or any organization or authority established by
or under any law for the time being in force representing the interests of the producers of
the concerned goods, who are desirous of registering a GI in relation to such goods”.
Bodies like the Tea Board, Coffee Board, and the Spices Board are some such examples of
such associations or organization.
Pursuant to Section 11(2) read with Rule 32 an application for registration of GI has to be
filed on Form GI-1 in triplicate along with 5 representations of the said GI and the official
fees prescribed in the First Schedule is Rs.5000/- only. The application should also contain
a statement of case showing as to how the concerned GI serves to designate the goods as
originating from the concerned territory of the country or region or locality in the country
as the case may be, the class of goods to which it relates, the geographical map of the
territory of the country or region or locality in the country in which the goods originate or
are being manufactured, particulars of the producers of the goods and other related details.
The rules further prescribes that the applicant has to file an affidavit alongwith the
application clearly stating as to how the applicant claim to represent the interest of the
producers, association of persons or producers or organization. Also the application should
clearly state the standards benchmark for the use of GI or the industry standard as regards
production, exploitation, making or manufacture of the goods having specific quality,
reputation or other characteristic of such goods that is essentially attributable to its
geographical origin, the particular human skill involved, the uniqueness of the geographical
environment or other inherent characteristics associated with the GI to which the
application relates, of course the name and address of the applicants and all other related
details.
It should be noted that a single application can be made with respect to different classes of
goods though the applicants have to pay fees with respect to each such class. The
application can be filed in the office of GI registry within whose territorial jurisdiction the
place mentioned in the address of service in India as disclosed in the application is situated.
As mentioned above that so far the GI Registry has been established in Chennai with all
India jurisdiction.
On receipt of the application the Registration shall cause the application to be examined as
to whether the said application meets the requirements of the law. For purposes of
examination the Registrar under his chairmanship constitute a consultative group of not
more than seven persons well versed in that particular field. Thereafter the Registrar will
communicate his objections to the applicant who within a stipulated time has to meet these
objections and if necessary request for hearing for satisfying the Registrar as to the merits
of the application. Incase no response is received to the objections or the applicant fails to
attend hearing the application will be dismissed. Thereafter the Registrar may propose to
accept the application subject to conditions, amendments, modifications, or any other
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limitations as he deems fit and direct the same to be advertised in the GI Journal (Gazette
Publication).
As seen in trademarks section the procedure of registration of a GI is similar to that of a

trademark. After the GI proposed to be registered has been advertised any person within
three months and within a further period not exceeding one month give his or her
opposition in writing to the Registrar, of opposition to the said registration pursuant to
section 14 of the Act. Thereafter the procedure is similar as followed in case of registration
of the trademarks. The Registrar shall cause the Notice of Opposition to be served on the
Applicant and within a stipulated time the Applicant has to file his counter statement to this
Notice. Thereafter within a certain time frame as enumerated in the Act the parties have to
file their evidences and after that the Registrar shall hear the parties if required. The
Registrar then on basis of these documents and hearings take a decision as to whether the
registration is to be permitted or not and if yes than subject to what conditions or
limitations. The application, if accepted, than proceed to registration and a Registration
Certificate will be issued pursuant to section 16 of the Act.
Registration of ‘Authorised User’

As mentioned previously the Act make provisions for two parts namely Part A and Part B
in the GI Register. Registration details of ‘Authorized Users’ have to be recorded in Part B
of the Register. The Act defines Authorised User in Section 2(1) (a) as a person who is the
authorised user of a GI registered under section 17 of the Act. Section 17 states that any
person who claims to be the producer of goods in respect of which a GI has been registered
under section 6, may apply in writing to the Registrar for registering him as an authorized
user of such a GI. The registration procedure of an ‘Authorized User’ is broadly similar to
the procedure for registration of a GI as discussed above. The application should be on
Form GI-3 alongwith prescribed fees and has to be accompanied by the following
documents, namely:
1. Statement of case of how the applicant claims to be the producer of the registered
GI alongwith an affidavit which should include inter alia since when he has been a
producer, the turnover, the extent of cultivation of agriculture land where
applicable, the volume of processing, packaging, exploitation, production or
manufacture of the gods, as the case may be, the extent of export, the regulation
governing cultivation or the accepted method of cultivation, production,
exploitation, manufacture or the making of the goods may also be relevant.
2. The applicant should also furnish any copy of agreement between the registered
proprietor and the proposed authorised user or a copy of the letter of consent from
the registered proprietor of the GI. (Where such consent letter is not appended then
a copy of the application has to be endorsed to the registered proprietor for
information and the applicant has to intimate the Registrar as to service of the
application on the proprietor of the registered GI.
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Section 17(3) makes it clear that the provisions of Chapter III of the Act relating to-
(a) the filing and examination of the application;
(b) the refusal and acceptance of registration;
(c) withdrawal of acceptance of application;
(d) advertisement of application;
(e) opposition to registration;
(f) correction or error in an amendment of the application and;
(g) registration
shall apply in respect of the application and registration of authorised users in the same
manner as they apply for the application for registration of the GI.
Duration
Section 18(1) of the Act provides that registration of a GI shall remain valid for a period of
10 years, which may be renewed from time to time. Pursuant to Section 18(2) registration
of authorized user too shall valid for 10 years or for the period till the date on which the
registration of the GI in respect of which the authorised user is registered expires,
whichever is earlier. Therefore registration of the authorised user depends on the
registration of the GI and is co-terminus with the same.
An application for renewal of registration of a GI or an authorized user of a GI the

application has to be made in the prescribed manner along with the prescribed fees i.e. on
Form GI-3 or Form GI-4 as the case may be and may be made at any time not more than
six months before the expiration of the last registration. The renewal shall be for a further
period of ten years. The person who is proprietor of the registered GI failing which by any
of the authorised users on record as the case may be must file such an application for
renewal. (Section 18(3) Rule 60 (1) & (2)). In case no request on Form GI-3 or Form GI-4
is received within 3 months of the date of expiration then the Registrar shall issue a notice
to the registered proprietor or the authorised user as the case may be about the date of the
registration and the conditions upon which the renewal of the registration must be obtained.
If no such request for renewal is obtained from the registered proprietor or the authorised
user the registrar shall remove the registration or the name of the authorised user from the
register provided that the Registrar shall not take recourse to such a drastic action if such an
application along with the surcharge for renewal is received within six months from the
expiration date. Similarly even on expiry of this grace period of six months and within one
year from the date of expiration the Registrar on receipt of an application for renewal along
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with prescribed fees and subject to his satisfaction may renew the same. Every restoration
or renewal of a GI will be advertised in the journal.
Section 19 of the Act highlights the effects of removal form the register of a GI due to non-
payment of renewal fees. Where the GI has been removed from the register for failure to
pay the prescribed renewal fee, it shall nevertheless, for the purpose of any application for
the registration of another GI during one year after the date of removal be deemed to be a
GI already on the register. Therefore for the purposes of Section 9(a) it will continue to be
conflicting registration for any new application for registration of any identical or similar
GI. However, there are exceptions to this general rule when the Registrar is satisfied either
(a) that there has been no bonafide use of the GI which has been removed within the
two years immediately preceding its removal, or
(b) that no deception or confusion would be likely to arise from the use of the GI which
is the subject of the application for registration of any previous use of the GI which
has been removed.
It should be mentioned that the Registrar’s satisfaction would be based on evidence

brought before him by an applicant whose registration is blocked by the registration,
which has been removed from the register.
Links
http://www.patentoffice.nic.in/ipr/gi/geo_ind.htm
Part III: Effect of Registration
Chapter IV (Sections 20 to 24) of the Act deals with the effect of registration of GIs.
Before going in to effects of registration it should be noted that unlike a trademark a GI
cannot be assigned, transmitted, licensed, pledged mortgaged or transferred in any
manner. The reason being is that it is a collective goodwill over which a group of
producers or an association or an organization of such producers or any authority has
proprietary rights and not just one single individual. Pursuant to Section 11 a GI is
registered in name of such association or organization and therefore having regard to
such communality of interests the Act vide section 24 expressly forbids and disables the
registered proprietor to assign, transmit, license, pledge, mortgage or do any such act to
alienate the right in the common property. However, the proviso to Section 24 makes it
clear that on the death of an authorised user his right in a registered GI shall devolve on
his successor in title under the time being in force, so that he could be brought on
record as the subsequent user in respect of the GI.
In the case of an unregistered GI section 20(1) clearly states that no person shall be
entitled to institute any proceeding to prevent or to recover damages for the
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infringement of an unregistered GI. Subsection (2) however clearly states that nothing
in this Act shall be deemed to affect rights of action against any person for passing off
goods as the goods of another person or the remedies in respect thereof. In other words,
while no infringement action will lay in respect of an unregistered GI, the common law
rights of the owner of the collective goodwill to take civil and criminal action against
any person for passing off goods of another person or the remedies thereof.
Passing Off
The expression ‘passing off’ has not been defined in the Act or in the Trade Marks Act,
1999 though it has been used at various places. As propounded by James L.J. in Singer
Manufacturing Co. v Loog (1880) 18 Ch. D.395, p 412 an action for passing off is
based on common law of tort and is founded on the principle that “ no man is entitled to
represent his goods as being the goods of another man; and no man is permitted to use
any mark, sign or symbol, device or means, whereby without making a direct
representation himself to a purchaser who purchases from him, he enables such a
purchaser to tell a lie or to make a false representation to somebody else who is the
ultimate purchaser”. In Kerly’s law of trademarks and trade names it is stated, “the law
of passing off can be summarized in one short general proposition – no man may pass
off his goods as those of another. More specifically it may be expressed in terms of the
elements, which the plaintiff in such action has to prove in order to succeed. These are
3 in number:
Firstly, he must establish a goodwill or reputation attached to the goods or services

which he supplies, in the mind of the purchasing public by association with the
identifying get – up (whether it consists of a brand name or a trade description, or the
individual features of labeling or packaging) under which his particular goods or
services are offered to the public, such that the get up is recognized by the public as
distinctive specifically of the plaintiff’s goods or services. Secondly, he must
demonstrate a misrepresentation by the defendant to the public (whether intentional or
not) leading or likely to lead the public to believe that the goods or services offered by
him are the goods or services of the plaintiff. And thirdly he must demonstrate that he
suffers or in quia timet action, that he is likely to suffer damage by reason of the
erroneous belief engendered by the defendant’s misrepresentation that the source of the
defendant’s goods or service is the same as the source of those offered by the plaintiff.”
It should be mentioned that the subjects trademarks and GIs are overlapping and
therefore principles laid down in a passing off action based on a right in a trademark
would be equally applicable in protecting an action based on a right in a GI and
therefore as above we often refer to principles as enunciated in the trademarks law. In
Baltimore v Moses 59 US PQ 409 Para. 16.02 it was observed that the law in respect of
trademarks and GIs both in letter and spirit is laid upon the premise that while it
encourages fair trade in every way and aims to foster and not to hamper competition, no
one especially a trader, is justified in damaging or jeopardizing another’s business by
fraud, deceit, trickery or unfair method s of any sort. This necessarily precludes the
trading by one dealer upon the good name and reputation built up by another.
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Passing off versus Infringement

Before going further it is pertinent to outline the conceptual difference between passing
off and infringement. As discussed earlier passing off action is based on well-
established common law principle that no one has any right to represent his goods as
somebody else’s, while an action for infringements is based on the right acquired by the
registration under the statute. An action for infringement is statutory right. In Durga
Dutt v/s Navratna Pharmaceuticals Laboratory AIR 1965 SC 980, Pg 990, the
Supreme Court has observed as follows “ while an action of passing off is an common
law remedy being in substance an action for deceit, that is passing off by a person of
his own goods as goods of another, that is not the gist of an action for infringement.
The action for infringement is statutory remedy conferred on the registered proprietor
of a registered Trade mark for the vindication of the exclusive right to the use of the
trade mark in relation to those goods. The use by the defendant of the trade mark of the
Plaintiff is not essential in action for passing off but is that Sine qua non in the case of
an action for infringement”. Since as discussed earlier the subjects of GI and Trade
Marks are overlapping the same observation would apply in an action for passing off or
infringement in case of GIs.
Coming back to the Act Section 21 outlines the rights conferred by registration of the
GI. Subclause (1) (b) states that a GI once registered and if valid gives both the
registered proprietor and all the authorized users thereof exclusive right to the use of
the GI in relation to the goods in respect to which it is registered. Subclause (1) (a) lays
down that the registered proprietor of the GI and the authorised user or users thereof
can initiate an action for infringement in respect of the GI in the manner provided by in
this Act. However, it should note that the rights are subject to other provision of the
Act. Further pursuant to sub clause (3) when two or more authorized users are
registered for identical or nearly resembling GI, the exclusive right to the use of GI
does not operate against each other.
It should be mentioned that the words “if valid” circumscribe the rights of the
proprietor. Section 23 clearly states that in all legal proceedings related to GI the
certificate of registration shall be the prima facie evidence of the validity thereof and be
admissible in all courts and before the Appellate court without proof or production of
the original. Therefore the words “ if valid” imply the fact of registration of a GI and
existing on the register.
Section 22 outlines the circumstances when a registered GI is infringed. Subclause (1)

(a) states that a registered GI is infringed by a person who not being an authorised
person user uses such indication on the goods or suggests that such goods originate in
some other geographical area other than the true place of origin of the goods which
misleads the public. This clause is in consonance with Article 22(2)(a) of the TRIPS
Agreement, which lays an obligation on members to provide legal means to prevent
persons to use GIs that are false and misleading as to the true place of origin of the
goods with respect to which they are used.
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Sub clause (1)(b) states that a GI is also infringed when a person who is not an
authorised user thereof uses the GI in such manner which constitutes an act of unfair
competition including passing off in respect of registered GI. Explanation I as
contained in this section defines “act of unfair competition’ as any act of competition
contrary to honest practices in industrial or commercial matters. Further, Explanation II
lists certain acts which can be termed as acts of unfair competition, namely:- all acts
which are calculated to create confusion with the establishment, the goods or the
industrial or commercial activities of a competitor, false allegations in the course of
trade of such a nature so as to discredit the establishment, the goods or the industrial or
the commercial activities of a competitor, the use of GIs with respect to goods in the
course of trade in such a manner so as to mislead the public as to their nature, their
manufacturing process, characteristics, suitability of their purpose or their quantity.
This provision is designed to give effect to Article 22 (1) (b) of the TRIPS Agreement,
which states that members should provide legal means for interested parties to prevent
any use of an GI which constitutes an act of unfair competition within the meaning of
Article 10bis of the Paris Convention (The acts of unfair competition as listed in the
Act are similar to ones as listed Article 10bis in the Paris Convention).
Further, pursuant to sub clause (1) (c) a GI is also infringed by a person, who not
being the registered proprietor or an authorized user uses another GI to the goods which
although literally true as to the territory, region, or locality in which the good originate,
falsely represent to the public that the goods originate in the region, territory or a
locality in respect of which such registered GI relates. This provision is designed to
give effect to Article 22 (4) of the TRIPS Agreement which mandates that the legal
provisions for the protection of GIs will also apply in case of a GI which although
literally true as to the territory, region it locality in which the goods originate, falsely
represents to the public that the goods originate in another territory.
Article 23 of the TRIPS Agreement obliges members to provide the legal means to
prevent the use of GIs identifying wines or spirits not originating in the place indicated
by the GI in question even when the true origin of the wines and spirits concerned is
indicated or the GI is used in translation or is accompanied by expressions such as
“kind”, “type”, “style”, “imitation”, or the like. Thus ‘Champagne style sparkling wine,
Made in the USA’ would be prohibited even though this is clearly not deceptive (We
can also refer to the European Court’s decision in SMW Winzersekt GmbH v Land
Rheinland – Pfalz [1995] 2 CMLR 718, as discussed in preceding part). In short Article
23 outlines additional and enhanced protection for wines and sprits. This provision
shows the strong European influence during negotiations of the Agreement though as of
today it has become a highly controversial issue as developing countries like India are
lobbying for enhanced protection for other products as well. Section 22 (2) empowers
the Central Government, if it thinks necessary, may notify in the Official Gazette the
goods or class of goods to which such kind of additional protection may be extended.
Pursuant to subsection (3) such additional protection as outlined in Article 23 of the
TRIPS Agreement extends to goods as notified.
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Finally Section 22 (4) enacts by way of an exception that where the goods in respect of
which a GI has been registered are lawfully acquired by a person other than the
authorised user of such GI, further dealings in those goods by such person including
processing or packaging, shall not constitute an infringement, unless the condition of
the goods are impaired after they have been put in the market.
Therefore in short the Indian GI Act outlines a comprehensive protection mechanism to

prevent infringement both of registered and unregistered GIs in consonance with the
TRIPS Agreement and in addition empowers the Central Government to notify goods
for which additional or higher level of protection can be given apart from wines and
spirits, which it is obliged to give.
Important links:
1. http://www.bitlaw.com/source/treaties/paris.html
Part IV: Offences, Penalty and Procedure for Seeking Relief
As discussed in the preceding part that although the registered proprietor of a GI cannot
alienate the GI by way of assignment, mortgage, licensing or any other means, the
proprietor and the authorised user can certainly institute a suit for infringement to
protect the collective goodwill and in case of unregistered GI a suit for passing off. The
Act like the Trade Marks Act, 1999 and the Copyright Act, 1957 contains specific
provisions as to the place, procedure and also the relief that can be craved form the
courts in such a suit for infringement and passing off. The Act also provides for
criminal prosecution of persons who indulge in falsification of GIs. Firstly, we shall
discuss the remedy of suits and passing off and thereafter discuss the provisions as to
criminal prosecution with a reference to rectification proceedings when required.
Suit for infringement and passing off

A suit for infringement or relating to any other right in a registered GI pursuant to
Section 66 of the Act is to be instituted before a court not inferior to a District Court.
Similarly a passing off action too has to be initiated before the District Court.
Subsection (2) clearly states that the ‘District Court having jurisdiction’ shall mean a
district court within the local limits of whose jurisdiction, at the time of the institution
of the suit or other proceedings, the person instituting the suit or proceeding, i.e. the
plaintiff voluntarily resides or works for gain. This is in contrast to Section 20 of the
Civil Procedure Code, 1908 (CPC) which lays down that a suit shall be instituted in a
Court within the local limits of whose jurisdiction the defendant at the time of the
commencement of the suit actually or voluntarily resides or works for gain. Therefore
this jurisdictional clause is a departure form the normal law as contained in the CPC
and is based on Section 62 of the Copyright Act, 1957 and section 134 of the Trade
Marks Act, 1999. With this clear provision the combination of the three causes of
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action, viz infringement of GI, passing off and copyright infringement has now become
easy. It should also be noted that the jurisdiction for filing a suit for infringement or
passing off is not based on or linked with the operative jurisdiction of the GI Registry
whether head office or branch office as held in P.M. Diesels Ltd v Patel Field Marshal
Industries (1998) PTC 260 Del (DB). Also the place where the cause of action arose
will determine the jurisdiction of the court. This implies that the Court in a district
where spurious goods were sent for sale on a commercial scale has jurisdiction to
entertain the suit.
The period of limitation for filing a suit for infringement and passing off is three years
from the date of the impugned act under the Limitation Act, 1963. However, the
Supreme Court in Bengal Waterproof v Bombay Waterproof AIR 1997 SC 1398 held
that as an act of passing off is an act of deceit and tort and every time when such
tortuous act or deceit is committed by the defendant the plaintiff gets a fresh cause of
action to come to the Court by appropriate proceedings. Similarly infringement of a
registered trademark would also be a continuing wrong so long as the infringement
continues. Therefore, whether the earlier infringement has continued or a new
infringement has taken place cause of action for filing a fresh suit would obviously
arise in favour of the plaintiff who is aggrieved by such infringements of trademark or
passing off actions alleged against the defendant.
Section 67 outlines the relief, which a Court may give to the plaintiff in such a suit for
infringement and passing off. Such relief may include an order for injunction (subject
to such terms which the court may think is fit in the facts and circumstances of the case)
and at the option of the plaintiff either damages or accounts of profits, together with or
without any order for the delivery – up of the infringing labels and indications for
destruction or erasure. Subclause (2) clearly states that the order for injunction may be
made ex parte and may include interlocutory orders on the following matters namely: -
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related
to the subject matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a
manner, which may adversely affect plaintiff’s ability to recover damages, costs
or other pecuniary remedies which may be finally awarded to the plaintiff.
Clearly no distinction is made as to kind of relief granted in a suit for infringement or a

passing off. Also it is pertinent to note that the explicit provision as to the exparte relief are
in nature of Anton Pillar Orders or Mareva Injunction as granted in U.K and other common
law countries.
Subsection (3)(a) lists the defences, which the defendant may plead to avoid paying
damages (other than nominal damages) or an account of profits in a suit for infringement
74
and they are: -
Where the defendant satisfies the Court-
(i) that at the time he commenced to use the GI complained of in the suit he
was unaware and had no reasonable ground for believing that the GI of the
plaintiff was on the register; and
(ii) that when he became aware of the existence and nature of the plaintiff’s
right in the GI, he forthwith ceased to use the GI in relation to good in
respect of which it was registered.
Similarly as per subclause (b) such defence can be pleaded in a suit for passing off.
It should also be mentioned that generally in such suits for infringement whether copyright
or trademarks or GI a successful plaintiff is entitled to either an inquiry as to damages or at
his election an account of profits. i.e., at his choice or election he is entitled to any one of
these remedies. The reason is that since account of profits is more in the nature of an
equitable remedy, the plaintiff by taking the profits made by the infringer by use of his
property condones the acts of infringement. (Caxton publishing Co. Ltd V Sutherland
Publishing Co. Ltd [1939] A.C. 178 at 198, De vitre v Betts (1873) L. R. 6 H. L. 319;
Island Records Ltd v Tring International Plc. [1995] F.S.R. 560)
Criminal Prosecution
Chapter VIII of the Act details certain acts as offences punishable by imprisonment or with
fine or with both. The following are the acts deemed as offences: -
1. Falsifying and falsely applying GIs as listed in Section 38.
2. Selling goods to which false GI is applied as outlined in Section 40.
3. Falsely representing a GI as registered as listed in Section 42.
4. Improperly describing a place of business as connected with the GIs Registry as listed
in Section 43.
5. Falsification of entries in the Register as listed in Section 44.
The chapter apart from listing penalties for the above-mentioned offences also details the
penalty and procedure of prosecution. In the context of offences under this chapter an
important question is as to what constitutes meaning of ‘applying geographical indication’.
The expression geographical indication has been defined in Section 2 (1) (e). Section 37
elaborates the meaning of expression ‘applying geographical indication’ and accordingly a
person is deemed to apply a GI to goods when he: -
(a) applies it to the goods themselves; or

75
(b) applies it to any package in or with which the goods are sold, or exposed for
sale, or had in possession for sale or for any purpose of trade or manufacture;
or
(c) places, encloses or annexes any goods which are sold, or exposed for sale, or
had in possession for sale or for any purpose of trade or manufacture, in or
with any package or other thing to which a GI has been applied; or
(d) uses a GI in any manner reasonably likely to lead to the belief that the goods in
connection with which it is used are designated or described by that GI; or
(e) in relation to the goods uses a GI in any sign, advertisement, invoice,

catalogue, business letter, business paper, price list or other commercial
documents and goods are delivered to a person in pursuance of a request or
order made by reference to the GI as so used.
Subsection (2) further clarifies that a GI shall be deemed to be applied to goods, whether it
is woven in, impressed on, or otherwise worked in to, or annexed or affixed to, the goods or
to any package or other thing. The term ‘package is defined in the Act in Section 2(1) (i).
Section 38 list two kinds of offences namely:-
(a) falsifying a GI and
(b) falsely applying a GI.
Subsection (1) states that a person shall be deemed to falsify a GI who,
(a) without the assent of the authorised user of the GI makes that GI or deceptively
similar GI
(b) falsifies any genuine GI, whether by alteration, addition, effacement or otherwise.
The section is applicable to both registered and unregistered GI. In the case of the
registered GI, the complainant may obtain from the Registrar a certified copy of entry in
the register in respect of the GI to establish proprietorship. The request has to be made on
Form GI-7, along with the copy of the registered GI as per Rule 96. In case of unregistered
GI the Proprietor has to establish his title by evidence of prior use.
Subsection (2) further states that a person shall be deemed to falsely apply to goods a GI
when he without the assent of the authorised user of the GI: -
(a) applies such GI or a deceptively similar GI to goods or any package containing

goods;
76
(b) uses a package bearing a GI, which is identical with or deceptively similar to the GI
of such authorised user, for the purpose of packing, filling or wrapping therein any
goods other than the genuine goods of the authorized user of the GI.
Any GI falsified as mentioned above is a “false GI” and the onus lies on the prosecution of
proving the offence as committed by the accused as mentioned above. However, the burden
of proving the assent of the proprietor lies on the accused.
The penalty for falsification of GIs and the circumstances in which a person applies false
GI are enumerated in Section 39 which states that any person –
(a) who falsifies any GI;
(b) falsely applies to goods any GI, or
(c) makes, disposes of, or has in his possession, any die, block, machine, plate or other
instrument for the purpose of falsifying or of being used for falsifying, a GI; or
(d) applies to any goods to which an indication of the country or place in which they
were made or produced or the name and the address of the manufacturer or person
for whom the goods are manufactured is required to be applied under section 71
(Power to require goods to show indication of origin), a false indication of such
country, place, name or address; or
(e) tampers with, alters or effaces an indication of origin which has been applied to any
goods to which it is required to be applied under Section 71 ; or
(f) causes any of the things as detailed above,
If proven, the accused shall be punished with imprisonment for a term not less than six
months which may extend to three years and with a fine not less than fifty thousand
rupees which may extend to two lakh rupees. The court for special reasons recorded in
writing may sentence the accused to imprisonment less than three years or with a fine
less than fifty thousand rupees. The accused may take the defence that he acted “
‘without intent to defraud’ and if proven he shall be absolved of the liability.
A person who sells goods to which false GIs have been applied pursuant to section 40
shall be punishable with imprisonment or with fine unless he proves that he –
(a) he has taken all reasonable precautions against committing an offence and that he at
the time of commission of the offence had no reason to suspect the genuineness of
the GI or that any offence has been committed in respect of the goods; or
(b) that on demand of the prosecutor he gave all the information with respect to the
person form whom he had acquired such goods; or
(c) that he had acted innocently

77
It was held in Shantilal Uttamram Mehta v Dhanji Kanji Shah (1961) 63 Bom LR 69 that
whether an accused took all “reasonable precautions” against committing an offence
against this section is one of fact and will have to be determined with reference to the
circumstances of each case.
Section 41 clearly states that a person who has already been convicted for the aforesaid
offences of falsifying, falsification of GIs or selling goods with false GIs shall be liable for
enhanced penalty for subsequent convictions for the same offence. Employees if charged
of the above said offences can take the defence as enumerated in Section 47. Also when a
person is accused of the above said offences namely under Sections 39 or Section 40 or
Section 41 he may plead that the registration of the GI, infringement of which he has been
accused, is invalid pursuant to Section 48. Once the Court is satisfied that this defence is
tenable then it may stop further proceedings in the prosecution to enable the accused to file
an application before the Appellate Board under the Act, for the rectification of the register.
However, the accused has to make such an application within a period of three months
failing which the case against him will proceed, i.e. the prosecution will be allowed to go
ahead from the stage where it was stopped. Incase before the initiation of the prosecution
the accused has already made an application for rectification of the register concerning the
GI on the ground of invalidity of registration and the same is pending before the tribunal
then in such a situation too the prosecution proceedings will remain suspended till the final
disposal of such rectification application.
Section 50 (2) clearly lays down that no court inferior to that of a Metropolitan Magistrate
or Judicial Magistrate of first class shall try an offence under this Act and Subsection (3)
lays down that the above stated offences under Sections 39, 40 and 41 are cognizable. Sub
section (4) enacts that a police officer not below the rank of Deputy Superintendent of
Police or equivalent, if he is satisfied that a cognizable offence has been committed or is
likely to be committed, may search and seize – without warrant- the goods, die, block,
machine, parts, plates or other instruments or things involved in the commission of the
offence, and whenever found shall be produced before the magistrate at the earliest.
However, the proviso to Sub section (4) clearly mandates that the police officer before
making any search and seizure, shall obtain the opinion of the Registrar on the facts
involved in the offence relating to the GI and shall abide by the opinion of the Registrar.
This proviso clause corresponds to that of the proviso clause to Section 115(4) of the Trade
Marks Act, 1999 which mandates such prior opinion of the Registrar. Often aggrieved
parties have objected to this clause as to the Registrar’s opinion before police action as it
might delay the proceedings. The reason can be found in the fact that since courts have
differed in the matter of determining similarity between two marks, the legislature
apparently thought it necessary not to leave the question entirely on the police officer,
before making any search and seizure, is required to obtain the expert opinion of the
Registrar of Trade Marks on the facts involved in the offence and abide by such expert
opinion. However, what is needed is a judicial application of the mind by the police officer
concerned aided by the expert opinion of the Registrar.
78
Any person aggrieved by such seizure of goods or the machine parts or has any interest in
the same may apply to the Judicial Magistrate for restoration and the Magistrate after
hearing the applicant and the Prosecution shall make appropriate orders.
It should also be mentioned that in all such offences the goods on which false GIs have
been applied are liable to be forfeited and the court may order their destruction or disposal
as it thinks fit though certainly the accused whether convicted or acquitted may appeal
against such forfeiture (section 46).
Other offences are enumerated in Sections 42, 43 & 44 and basically pertain to misleading
the public as to the status of the GI. Section 42 lays clearly prescribes imprisonment or fine
or both for anybody who misrepresents that a GI which is not registered is a registered GI
or is registered with respect to class of goods when infact it is not or misrepresents that
registration of a GI gives him or her an exclusive right to use the same when infact the
registration does not. Subsection (3) also indicates that while using a GI to indicate
registration the words “registered geographical indication” or any other expression, symbol
or sign like “ R.G.I” may be used. Section 43 prescribes penalty for improperly describing
a place of business as connected with the GI Registry and Section 44 for falsification of
entries in the register. However, no court shall take cognizance of these offences under
Sections 42, 43 or 44 except on complaint in writing made by the Registrar or any other
officer authorised by him in writing.
Often such offences of infringement and piracy are committed by corporate and to fix
responsibility for the same becomes a little difficult and hence, Section 49 has been
inserted which clearly lays down that if such offence is committed by an company every
person in charge of and responsible to the company for the conduct of its business at the
time of the commission of the offence shall be deemed to be guilty of the offence and shall
be liable to be proceeded against and punished accordingly.
No doubt infringement, piracy, falsification, misrepresentation has been made now serious
offence and the legislature as can be deduced from the foregoing discussion taken a strong
view of the same and made them penal offences.
Conclusion
Clearly the Indian legislation on the GI exhaustively outlines the registration and protection
mechanism for GIs in consonance with the prevailing framework created through the
TRIPS Agreement. The Basmati rice case may have given the impetus to enact such
legislation but increasingly there was realization as to the economic benefits, which can be
derived from effective protection of GIs. The international regime does lay down certain
framework for effective protection if intellectual property but ultimately this framework
depends on the domestic legislation of a country. India too like other countries have no
created an extensive and comprehensive framework for protection of intellectual property
rights.
79
References
Books
1) Alan S Gutterman, Bentley J Anderson, Intellectual Property in Global markets A

Guide for Foreign Lawyers and Managers, 1997 Kluwer Law International The
Hague / London / Boston.
2) Amanda Michaels, A Practical Guide to Trade Mark Law, Second Edition, 1996
Sweet & Maxwell London.
3) Carlos M. Correa, Intellectual Property Rights, the WTO and Developing Countries
The TRIPS Agreement and Policy Options, 2000 Zed Books Ltd. London & New
York.
4) Daniel Gervais, The TRIPS Agreement Drafting History And Analysis, 1998 Sweet
& Maxwell London
5) David I. Bainbridge, Intellectual Property, 2002 Longman New York; Harlow

England.
6) Duncan Matthews, Globalising Intellectual Property Rights The TRIPS Agreement,

2002 Routledge London and New York.
7) D.P. Mittal: Trade Marks, Passing Off & Geographical Indications of Goods, Law
and Procedure (September 2002 Taxmann Allied Services (P) Ltd. New Delhi)
8) Dr. Raghbir Singh: Law Relating to Intellectual Property (A complete

comprehensive material on Intellectual Property Covering Acts, Rules,
Conventions, treaties, Agreements, Case-Law and much more) Volume 1 (2004
Edition, Universal Law Publishing Co. Pvt. Ltd., Delhi)
9) Fredrick Abbott, Thomas Cottier & Francis Gurry, The International Intellectual
Property System: Commentary and Materials, Part One, 1999 Kluwer Law
International The Hague / London / Boston.
10) Friedrich- Karl Beier and Gerhard Schricker (ED.), IIC Studies Studies in
Industrial Property and Copyright Law, Volume 18, From GATT to TRIPS – The
Agreement on Trade Related Aspects of Intellectual Property Rights, 1996 Max
Planck Institute for Foreign and International Patent, Copyright and Competition
Law, Munich.
11) J. Audier, TRIPS AGREEMENT Geographical Indications, 2000 European

Commission.
80
12) Jayashree Watal (Ed.), Intellectual Property Rights in the WTO and Developing
Countries, 2001 Kluwer Law International The Hague / London / Boston.
13) John Revesz, Trade Related Aspects of Intellectual Property Rights, Productivity
Commission Staff Research Paper, AGPS, Canberra.
14) K.C. Kailasam, Ramu Vedaraman: Law of Trade Marks & Geographical
Indications (Exclusive Commentary on the Trade Marks Act, 1999 & Geographical
Indications of Goods (Registration and Protection Act), 1999) Law, Practice &
Procedure
(2003 Edition, Wadhwa and Company Nagpur, India)
15) Lionel Bently and Brad Sherman, Intellectual property law, 2001 Oxford
University Press Oxford.
16) Marshall A. Leaffer (Ed.), International Treaties on Intellectual Property, 1990 The
Bureau of National Affairs, Inc. Washington, D.C.
17) Melvin Simensky, Lanning G. Bryer, The New Role of Intellectual Property in
Commercial Transactions,1996 Supplement John Wiley & Sons, INC. New York /
Chichester / Brisbane / Toronto / Singapore.
18) P. K. Mittal & O. P. Chadha, Supreme Court on Trade Marks, Copyright, Patents &
Designs 1950-2004. (2004, Om Law Book House Delhi)
19) Ray Steinwall, Trade Practices Act 1974, Butterworths Annotated Acts, 2003
LexisNexis Butterworths, Australia.
20) Taxmann’s, Trade Marks Act 1999, Geographical Indications of Goods

(Registration and Protection) Act 1999, Copyright Act as amended by Copyright
(Amendment) Act 1999, Taxmann Allied Services (p.) Ltd. New Delhi.
21) WIPO Intellectual Property Handbook: Policy, Law and Use, 2001 WIPO
Publication no. 489(E).
Articles
1) WIPO, International Framework for the Protection of Trademarks and

Geographical indications, 2003 WIPO/TM/BEY/03/1
http://www.wipo.org/arab/en/meetings/2003/tm_bey/doc/wipo_tm_bey_03_1.doc
> (31/10/2003)
2) WIPO National Seminar on the Protection of Trademarks and Geographical

Indications, Economic Importance of Trademarks and Geographical indications
and their use in commerce, 2003 WIPO/TM/BEY/03/3
81
http://www.wipo.org/arab/en/meetings/2003/tm_bey/doc/wipo_tm_bey_03_3.doc >
(31/10/2003)
3) Sergio Escudero, International Protection of Geographical Indications and

Developing Countries.
http://www.southcentre.org/publications/geoindication/toc.htm#TopOfPage > (30/10/2003)
4) Sabrina Lucatelli, Appellations of Origin and Geographical Indications in OECD

Member Countries : Economic and Legal Implications,
COM/AGR/APM/TD/WP(2000)15/FINAL
http://www.olis.oecd.org/olis/2000doc.nsf/4f7adc214b91a685c12569fa005d0ee7/c1
25692700623b74c12569ba00439046/$FILE/00087299.DOC >(4/11/2003)
5) Eleanor K. Meltzer, Geographical Indications and Trademarks: Intellectual

Property Any Way You Slice It, (WIPO/GEO/SFO/03/3, June 30), 2003, Worldwide
Symposium on Geographical Indications organized by WIPO & USPTO)
http://www.wipo.org/meetings/2003/geoind/en/documents/doc/wipo_geo_sfo_03_3
.doc > (30/10/2003)
6) Intellectual Property why do Geographical Indications matter to us?

http://europa.eu.int/comm/trade/miti/intell/argu_en.htm > (1/11/2003)
7) WTO talks: EU steps up bid for better protection of regional quality products,
http://www.ictsd.org/ministerial/cancun/docs/EC_GIs.pdf > (4/11/2003)
8) TED Case Studies, Basmati Case Number: 493; Case Mnemonic: Basmati; Case
Name: India-US Basmati Rice Dispute,
http://www.american.edu/projects/mandala/TED/basmati.htm > (5/11/2003)
9) Geographical Indications: Background - Definition - Importance - Issues - US

Protection – Contact,
http://www.uspto.gov/web/offices/dcom/olia/globalip/geographicalindication.htm >
(28/10/2003)
10) Review under Article 24.2 of the Application of the Provisions of the Section of the
TRIPS Agreement on Geographical Indications. Checklist of Questions Responses
from Australia, Documents IP/C/13 and IP/C/13/Add.1,
http://www.dfat.gov.au/ip/gi_response.pdf > (6/11/2003)
Online Resources and Websites:

1. www.lexisnexis.com
2. www.webspirs.informit.com.au
3. www.wipo.org
4. www.wto.org
5. www.geographicindications.com
82
6. www.southcentre.org
7. www.europa.eu.int
8. www.patentoffice.nic.in
9. www.uspto.gov
10. www.ictsd.org
11. www.google.com.au
12. www.rediff.com
13. www.bitlaw.com
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Prof. KN Chandrasekharan Pillai

Asst. Res. Prof., ILI & Programme Co-ordinator

Indian Law Institute

Contents of this Part

Trademarks help promote economic efficiency. If trademarks are not allowed to be

Trademark Infringement as Unjust Enrichment

PROCEDURE FOR REGISTRATION

1. Application for Registration

Essential Ingredients for registration:

(i) Any person

Any person includes individual, partnership firm, association of persons, a company

(ii) Claiming to be proprietor

A person may obtain proprietorship in a trademark either by use or by registration under

(iii) Used or proposed to be used

REGISTRABILITY OF THE MARK AS TRADEMARK:

Absolute Grounds for Refusal of Registration under Section 9

Capability to Distinguish Section 9(1)(a)

Indicating Nature or Characteristics under Section 9(1)(b)

Indications of quantity or standard weights or measures or numbers of contents such as

Marks common to trade Section 9(1)(c)

Proviso to Section 9(1)

Other Relevant English cases on this point are given as under:

Marks deceiving the public or cause confusion: Section 9 (2)(a)

Relative Grounds for Refusal of Registration under Section 11

having earlier priority date or is entitled to protection by virtue of being well-known

Identity or Similarity of Marks

Test for determining Identity or similarity of Marks

Identity or similarity of goods or services

Likelihood of confusion [Section 11(1)]

The purpose of this remedy is three fold39:

(i) Marks are remembered by general impressions or by some significant details

INFRINGEMENT UNDER THE ACT

The protection afforded to a well-known trademark is on territorial basis. So the person

(ii) Number of persons involved with the channels of distribution.

Sub-section (8) of section 11 says that the determination of trademark as well-known

Subsection (10) of section 11 casts an obligation on Registrar to protect well-known

TRADEMARKS ON THE INTERNET

Internet Corporation for Assigned Names and Numbers

ICANN is governed by an internationally diverse Board of Directors overseeing the policy

.name: It is an open gTLD for registration of personal names or names of ficticious

ICANN is currently exploring possibilities to add additional gTLDs. See a Report on

See policies governing the establishment, delegation and operation of ccTDLs.

Following are key points of the liberalized policy:

For further details, visit http://domain.ncst.ernet.in.

Importance of Domain Names

“The original role of a domain name was no doubt to provide an address

“So far as the Registering Authority of the domain name is concerned it

the Registering Authority which happens to be trade name of some other

Check www.greatdomains.com for an interesting value-analysis of various domain names.

Another indicator of importance of domain names is the availability of a number of popular

Legal Status of Domain Names in India

(A) Yahoo Inc. v. Akash Arora, (1999) 19 PTC 201 (Del)

(B) Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27

Interlocutory injunction was thus granted.

The suit was thus decreed on ground of bad faith registration.

The defendants had chosen not to appear and contest.

This case involved the following domain names: jrdtata.com, ratantata.com,

The defendants did not put in their appearance despite service.

A trademark defence of ‘operating in different fields’ was taken by the respondent.

Practical difficulties with traditional litigation

i) The difficulty of detecting the wrong defendants or of serving the defendants;

Dispute Resolution through UDRP – the ICANN policy