Banyan Tree Holding (P) Limited v. A.

Murali Krishna Reddy, 2009 SCC OnLine Del

3780 (2010) 42 PTC 361
The Plaintiff maintains the websites www.banyantree.com and www.banayantreespa.com
since 1996. The said websites are accessible in India. It is not in dispute that the Plaintiff
does not a registration for the said mark and device in India. Its application for registration is
stated to be pending. Since the year 2002, the Plaintiff has, in collaboration with the Oberoi
Group, been operating 15 spas across India. In October 2007, the Plaintiff learnt that the
Defendants had initiated work on a project under the name ‘Banyan Tree Retreat’. The
Plaintiff has averred that the word mark and the device adopted by the Defendants in relation
to their retreat is deceptively similar to that of the Plaintiff. The Plaintiff states that the
Defendants have advertised their project on their website www.makprojects.com/banyantree.
The Plaintiff alleges that the use of the said mark and device by the Defendants was dishonest
and was an attempt to encash on the reputation and goodwill of the Plaintiff and was
calculated to cause confusion and deception among the public by passing off the services of
the Defendants as that of the Plaintiff. Accordingly, the present suit was filed by the Plaintiff
for an injunction to restrain the Defendants from the use of the said mark and device.

the division bench decided over few question that were raised by the bench. For the purposes
of a passing off action, or an infringement action where the Plaintiff is not carrying on
business within the jurisdiction of a court, , in order to satisfy the forum court that it has
jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant
"purposefully availed" itself of the jurisdiction of the forum court. For this it would have to
be prima facie shown that the nature of the activity indulged in by the Defendant by the use
of the website was with an intention to conclude a commercial transaction with the website
user and that the specific targeting of the forum state by the Defendant resulted in an injury or
harm to the Plaintiff within the forum state

Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119 (W.D.Pa.1997)

Zippo Manufacturing filed a five-count complaint against Dot Com alleging trademark

dilution, infringement, and false designation under the Lanham Act and state law trademark
dilution claims. Manufacturing's basis of the trademark claims was Dot Com's use of the
word "Zippo" in the domain names in numerous locations in its website and in the heading of
Internet newsgroup messages that were posted by Dot Com subscribers. Dot Com moved to
dismiss for lack of personal jurisdiction.
Plixer International, Inc. v. Scrutinizer GMBH, No. 18-1195 (1st Cir. 2018)

The First Circuit affirmed the decision of the district court that the exercise of specific
personal jurisdiction against a German corporation did not offend the Fifth Amendment’s
Due Process Clause, holding that on the facts of this case the exercise of jurisdiction would
not violate due process. Plaintiff, a Maine corporation, sued Defendant, a German
corporation, in federal district court in Maine for trademark infringement. As a basis for
personal jurisdiction over Defendant, Plaintiff said that Defendant’s nationwide contacts with
the United States supported specific jurisdiction under Fed. R. Civ. P. 4(k)(2). On prima facie
review, the district court concluded that it could constitutionally exercise specific personal
jurisdiction over Defendant under Rule 4(k)(2). The First Circuit affirmed, holding that
Plaintiff met all three requirements to establish personal jurisdiction.

Hennes & Mauritz Ab & Anr vs Hm Megabrands Pvt. Ltd. 2018 SCC OnLine Del 9369

As far as the question of the plaintiffs' presence in India at the time of adoption of the
defendants' mark was concerned, the Court noted that for an international mark/brand to have
reputation or goodwill in India, setting up of a shop or sale in India is no longer a necessity
and the introduction of web-based sales has increased the familiarity of international marks
and brands in the Indian market The court held that the plaintiff either must show that he or
she carried on a business within the jurisdiction of the court and if not, he or she should show
that the injury arose within the jurisdiction of the court where the plaintiff has filed the case.

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

This was the first on its kind case where an Indian Company got relief under ICANN’s
UDRP mechanism. The complainant company was engaged in the publication of Articles in
Daily newspapers like “The Economic Times' ' and “The Times of India”. The complainant
also published online versions of their respective newspapers under the domain name
“economicstimes.com” and “timesofindia.com” The respondents registered domain names
“theeconomictimes.com” and “thetimesofindia.com”. The complainant contended that the
SLD of the respondent company was the same as theirs and that it was meant to attract
customers using the complainant's goodwill. Hence, the use of the respective domain names
similar to that of the complainant was in bad faith.
Rediff Communication Limited v. Cyberbooth, 1999 SCC OnLine Bom 275: AIR 2000
Bom 27: (1999) 4 Bom CR 278: (1999) 101 (2) Bom LR 860: (1999) 3 Arb LR 636
A judge of Bombay High Court stated “A Domain Name is more than an internet address and
is entitled to equal protection as a trademark”. The case was of “deceptive similarity”
wherein the plaintiff filed the case claiming that the domain name “radiff.com” of the
defendant was deceptively similar to theirs “rediff.com”. The Court recognized that there was
common “intention to deceive”. The Court held that the domain name is definitely an
infringement of the plaintiff’s trademark and that it was used by defendants in bad faith.

ReOppedahl & Larson v. Advanced Concepts

Oppendahl and Larson was a famous law firm with the domain name “patents.com”. They
filed a case against three companies contending that the companies used Meta tagging of the
words “Oppehdahl '' and “Larson” to drive traffic to their sites. Court regarded this act of the
defendant as trademark infringement and unfair competition.

Allergan Inc. v. Milmet of the Industries, 1997 SCC OnLine Cal 34

In the present case the Appellant Allergan Inc., a company manufacturing pharmaceutical
products in different countries but not in India, sought to restrain the respondent company,
carrying on business of manufacturing pharmaceutical products in India from using the mark
‘OCUFLOX’ in respect of a medicinal preparation manufactured and marketed by the
respondents.  It was held that the Appellant had sufficient worldwide reputation connecting
the name ‘OCUFLOX’ and that it was entitled to seek protection in respect of the said name
to medicinal products against the respondent.

Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145

The Hon’ble Supreme Court of India has laid down three elements that need to be fulfilled in
order to institute a passing off action by the plaintiff. The defendant must have sold its goods
or offered its services in a manner which has deceived or would be likely to deceive the
public into thinking that the defendant’s goods or services are the plaintiffs. The likelihood of
confusion in the minds of the public that the goods or services offered by the defendant are
the goods or the services of the plaintiff. The likelihood of confusion in the minds of the
public that the goods or services offered by the defendant are the goods or the services of the
plaintiff.
Kraft Jacobs Sucharc Ltd. v. Government of India by Secretary, 2004 SCC OnLine IPAB
10

A combined hearing was held for 6 appeals filed between the parties. The registrar came to
the conclusion that the plaintiff has failed completely to establish the reputation of their mark
in India. Also, the test laid down in section 12(1) of trademarks act 1999, which talks about
honest concurrent use or other circumstances on which the registrar can allow registration,
was not met. Lastly the legal precedence relied upon by the appellant was rejected as in all
those cases the authority was established by manufacturer, sale or at least publicity. Thus, the
rejection by the registrar was held valid and the applications of respondents were allowed.

N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714

The suit is a passing off action brought by the plaintiff-respondents to restrain the defendant
appellants from manufacturing, selling, advertising or in any way using the trade mark
'WHIRLPOOL' in any other trade mark deceptively or confusingly similar to the trade mark
of 'WHIRLPOOL’ in respect of their goods. The subject matter of this appeal is the
manufacture, sale and advertisement of washing machines by the defend ants-appellants
using the mark 'WHIRLPOOL' as a part of the name by which they had recently commenced
marketing the washing machines manufactured by them. In short, the claim of the plaintiff-
respondents is based on prior user of the mark 'WHIRLPOOL' and a trans- border reputation
indicating that any goods marketed with the use of the mark 'WHIRLPOOL' gives the
impression of it being a goods marketed by the plaintiffs; and the washing machines
manufactured, sold and advertised by the defendants give that impression resulting in
confusing the intending buyers with the impression

Tata Sky Limited v. National Internet Exchange of India, 2019 SCC OnLine Del 7931

In the case of Tata Sky Limited vs. National Internet Exchange of India & Ors6, Tata Sky
Limited ("Tata Sky") had filed a suit seeking permanent injunction against an individual's
unauthorised use of its trademark 'TATA SKY' as part of trade mark, trade name, corporate
name, domain name etc. In addition to the above relief, Tata Sky also arraigned the National
Internet exchange of India ("NIXI") and Go Daddy LLC as defendants seeking injunction
against them from registering domain names which were identical/deceptively similar to its
trademark 'TATA SKY'. The Delhi High Court directed NIXI to extinguish the domain name
specified in the plain.
Kamal Trading Co v Gillette UK Ltd

Gillette U.K, a subsidiary of America based company Gillette company, carries a worldwide
business of manufacture and sale of safety razor, safety razor blades, shaving cream etc. The
Respondent has been using a registered trademark ‘7 O’CLOCK’ in connection with its
goods since 1913. In 1958 Indian Shaving Products Limited, an Indian company, entered
collaboration with the respondent, and were entitled to use the trade mark ‘7 O’ CLOCK’ but
with the addition of the word ‘EJTEK’. In 1985 the respondent noticed that Kamal Trading
were selling toothbrush under the entitled trademark. The District court granted an interim
injunction in favour of respondent, which was appealed in the High Court. The Court held the
use of mark by the appellants clearly resulted in deceiving customers with impression that
toothbrush came form the house of Gillette. The court also observed that even though the
good are not available in the country, the goodwill acquired is not limited to country where
goods are available and the goods and the mark under which they are sold acquires wide
reputation. Thus there exist a likelihood of deception. Therefore the appeal was dismissed.

Allergan Inc. v. Milmet of the Industries, 1997 SCC OnLine Cal 34

In the instant case, both the Appellant and the Respondent were a Pharmaceutical company
involved in the manufacturing of pharmaceutical products in various countries. Allergan used
the mark “OCUFLOX” for a medicine, prepared and manufactured by them, as an eyecare
product which contained OFLXACIN. Allergan was marketing the product in countries like
Europe Australia, South Africa, USA etc under the said mark since 1992. On the other hand,
Milmet, an Indian Pharmaceutical company, sold a medicinal product used for eye and ear
called “OCUFLOX”. The application for registration of the mark “OCUFLOX” applied in
September of 1993 and was also still pending. An interim injunction was given to the
petitioner in 1996. The High Court vacated the injunction, stating that since the product of
Allergan was not sold in India and since the product was first introduced by Milmet, the
petitioners were not entitled to an injunction.

Jolen Inc. v. Shobanlal Jain, 2010 SCC OnLine Del 1747

The Petitioner Jolen Inc., was formed as a partnership firm in the year 1955 in USA and later
incorporated as a company in 1964. The Petitioner states that it is the proprietor of the
invented trademark JOLEN coined from the names of the founders of the Petitioner company
John & Evelyn. Its trademark JOLEN has been registered in more than 40 countries all over
the world. In 1990, The Petitioner applied for registration of the trademark JOLEN in India.
In 1991, Shobanlal Jain also applied for registration of the trademark JOLEN. The Assistant
Registrar by an order dated 11th October 2000 dismissed the Petitioner's application and
allowed the Respondent's application for registration. The Court held it is the Petitioner
which is first both in the international and the domestic market as its products with the mark
JOLEN are shown to be available in India and prior to the use of the mark JOLEN on
cosmetic products by Respondents in India.

Baring Asset Management Limited v. Jibril Shehu D2020-1733

The Complainant was originally established as a firm of merchants and merchant bankers in
London in 1762, and operated as one of the oldest investment bank in the United Kingdom
until 1995. Furthermore, the Complainant is an affiliate firm of Barings LLC, a global
financial services firm formed in 2016 as a result of a merger of four affiliated investment
firms, including the Complainant. Since this merger, the Complainant and Barings LLC have
operated jointly under the BARINGS trademark. It is further asserted by the Complainant that
it is the registered owner of several trademarks consisting of or containing the term
BARINGS, covering amongst others Latvia (European Union), where the Respondent is
located. Furthermore, the undisputed evidence provided by the Complainant proves that the
Disputed Domain Name currently resolves to a default hosting parking page, featuring
multiple links to commercial website. The Panel orders that the Disputed Domain Name
<baringsuk.com> be transferred to the Complainant

Consim Info Pvt Ltd v. Google India Private Limited & Ors. [2013 (54) PTC 578 (Mad)]

The Appellant in this case, that is Consim Info Private Limited is an entity engaged in
providing online matrimony services for which it had adopted various trade marks, including,
inter alia, Bharat matrimony, Telegu Matrimony, Assamese Matrimony etc. The Appellant
had filed a suit for permanent injunction against, inter alia, Google India Private Limited to
restrain it from offering the its trade marks as Ad-Words by making the same available for
bidding by third parties on its Ad-Word Program and to restrain the other Respondent, which
had successfully bid for the said trade marks as Ad-Words from bidding for the same. The
Hon’ble Division Bench, concurring with the Single Judge of the Madras High Court
observed that the Plaintiff is entitled to injunction. However, the Court observed that since
Google India already given an undertaking that it shall not act in a manner so as to infringe
the trade mark of any entity, pursuant to its Trade Marks Policy, there was no requirement of
disturbing the arrangement among the parties
Jurin v. Google, Inc.

Through this action Plaintiff Daniel Jurin ("Plaintiff") alleges violations of state and federal
laws arising out of the use of the trademarked name "Styrotrim" as a suggested keyword in
the "AdWords" program operated by Defendant Google, Inc. ("Defendant"). Defendant is an
internet search engine provider. In this dispute, Plaintiff challenges the lawfulness of
Defendant's Keyword Suggestion tool in its for-profit "Google AdWords" program Defendant
is an internet search engine provider. In this dispute, Plaintiff challenges the lawfulness of
Defendant's Keyword Suggestion tool in its for-profit "Google AdWords" program. The court
held Plaintiff has offered no evidence that his mark is famous. Plaintiff had also failed to
make a showing sufficient to establish the existence of an element essential to his claim for
dilution, and Plaintiff will bear the burden of proving this element at trial. Accordingly, there
was no genuine issue for trial as to this claim, and Defendant's motion for summary
judgement on Plaintiff's trademark dilution claim was GRANTED.

People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & ors., NMS (L) NO. 1504 of 2014 in SUIT
(L) NO. 622 OF 2014

The plaintiff, People Interactive (I) Pvt. Ltd., was the registered proprietor of the trademarks
‘shaadi.com’ and ‘shadi.com’ and was carrying on the business of providing matrimonial
services in India and abroad. The defendant in this case was Gaurav Jerry who was carrying
on a rival service under the domain name ‘ShaadiHiShaadi.com. The plaintiff moved a
notice of motion (interim application) in the Bombay HC seeking to restrain the defendant
from using the domain name ShaadiHiShaadi.com or any word/expression which would be
confusingly similar to plaintiff’s own registered domain name; the plaintiff alleged that the
defendant was trying to pass off his website as that of the plaintiff. The court held, Meta-tags
being special lines of code are embedded in webpages and are often used by search engines in
deciding the relevant websites to show in a search result. Accordingly, the Court granted
interim injunction in favour of the plaintiff.

Belgacom v. Intouch

The Defendant alleged that since the meta-tags and its contents are deliverables of the web
designer to the defendant, the defendant was not the appropriate authority to decide the
contents of the meta-tags; the Belgian Courts firmly held that even so, the website owner is
the sole proprietor of the website and besides, the contract executed between the website
owner and the web designer exempted the latter from any liability related to the contents of
such meta-tags. The liability shifts to Defendant to check whether the metatag was already in
use by Plaintiff.

Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir.
2004)

The defendants have various terms for which they key advertisers’ banner ads. PEI had
trademarks for words ‘playboy’ and ‘playmate’ which the defendants were tracking under the
‘click rate’. PEI filed a suit stating that the defendants were using PEI’s Marks in a manner
that infringed upon and diluted them. The District Court dismissed the suit in favor of
defendants stating that companies sometimes buy the open space which displays the banner
of their ad randomly rather than buying keywords.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1

In this Supreme Court judgment, the appellant claimed that they were the proprietor of the
well-known brands Toyota, Innova and Prius and that the respondents were selling auto-parts
and accessories in India by using the appellant's registered marks, especially the mark
"PRIUS" on their products. In a path-breaking development for Indian trademark law, the
Supreme Court reiterated yesterday that IP rights are “territorial” and not “global”. The court
was deciding a matter involving “Prius”, the brand under which Toyota sells its leading
“hybrid” car.The court held that merely because Prius is well known outside India does not
mean that it enjoys a “reputation” in India as well. That has to be independently established!
The court’s decision is a delight to read, not least because of its lucidity. However, I have a
few issues (minor ones) with some jurisprudential aspects of the ruling. Fortunately, this is
one of those rare IP cases, which managed to swim past the “interim” stage. Indeed, this
dispute filed way back in 2009 underwent a full length trial before it made its way to the
Supreme Court.

YAHOO INC. VS AKASH ARORA

The plaintiff Yahoo Inc. was the owner of the trademark Yahoo and the domain Yahoo.com
which are both well-known marks and have a distinctive reputation throughout the world.
They have been a registered company since 1995 and had their trademark registered in 69
countries, India not being one of them. The defendant started a company with the domain
name of Yahoo India which offered internet services similar to Yahoo Inc. Aggrieved by this,
Yahoo Inc. filed a suit seeking permanent injunction to restrain the defendants to continue
their business under the impugned domain name of ‘Yahooindia.com’ or any other similar
name In the judgment, the Court, having established that domain name of companies was
their way of creating their presence on the Internet, noted that Yahoo.com was the domain of
the plaintiff which was not registered in India but was popular in India for being one of the
first to provide web directory services.

Bloomberg Finance LP v Prafull Saklecha and Others

Bloomberg Finance LP (BFL) – a multi-national financial news corporation established in the

United States in 1982 – brought a suit for trademark infringement and passing off in the Delhi
High Court in 2012 against 36 parties, alleging that they had incorporated 23 companies
using the trademark/trade name BLOOMBERG as their corporate name for different services.
Bloomberg Finance has been using the BLOOMBERG mark worldwide, including in India,
since 1996 and launched Bloomberg UTV (a television news channel in India) in 2008. It was
the registered owner of the BLOOMBERG mark in India. The defendants were using the
term ‘Bloomberg’ in their company names, operating in the fields of construction and realty,
food and entertainment, among others.The court was of the view that the defendants'
explanation for adopting the BLOOMBERG mark was unconvincing and held that
BLOOMBERG is a well-known brand name. The court restrained the defendants from using
the word ‘Bloomberg’ as a part of any trademark, corporate name or domain name, as well as
in advertising material or in any manner whatsoever.

Shreya Singal v. UOI

In the case on Whether Section 79(3)(b) and Information Technology “Intermediary

Guidelines” Rules, 2011  is constitutionally valid or not? Court held that Section 79 is valid
subject to Section 79(3)(b) being read down to mean that an intermediary upon receiving
actual knowledge from a court order or on being notified by the appropriate government or its
agency that unlawful acts relatable to Article 19(2) are going to be committed then fails to
expeditiously remove or disable access to such material. Similarly, the Information
Technology “Intermediary Guidelines” Rules, 2011 are valid subject to Rule 3 sub-rule (4)
being read down in the same manner as indicated in the judgment.

AcquaMinerals Ltd v Pramod Bose

In the case of “AcquaMinerals Ltd v Pramod Bose”, which was concerning the domain name
of ‘bisleri’, the Delhi High Court opined that: “with the progression of web correspondence,
the domain name has achieved as much legitimate rational and a legality as the Trademark
has. Since the administrations rendered in the web are central for any business, the domain
name should be safeguarded in order to ensure and avoid infringement. The court further held
that: “A domain name is more than an internet address and is entitled to equal protection as a
trademark. 

  Kent RO Systems Ltd &Anrs. Vs Amit Kotak & Ors

Kent RO Systems Ltd. Alleged to infringe its registered designs under the Designs Act, 2000
(“Designs Act”) were hosted on eBay.in, belonging to eBay India Private Limited. Goods
sold on the platform by a merchant, Mr. Amit Kotak (“Merchant”) was one of the many
others that allegedly infringed upon the Kent RO Systems’ registered water purifier designs.
Kent RO Systems sought an injunction against the Merchant to restrain him from selling the
allegedly infringing goods on eBay.in.Kent RO Systems’ bone of contention before the Delhi
HC was that an intermediary’s liability extends to not just an effective response to a
complaint pertaining to infringing material. .The Delhi HC reaffirmed that under the IT Act,
an intermediary is obligated to remove / disable the goods / information hosted on its portal
only on receipt of an order from the relevant governmental agency or pursuant to a court
order. The Delhi HC held that an intermediary should not “on its own, screen all information
being hosted on its portal for infringement of the rights of all those persons who have at any
point of time complained to the intermediary”.

Mobil Oil Corp. v. Pegasus Petroleum Corp.

Mobil Oil Corporation (plaintiff) was one of the largest companies in the world. Mobil sold
petroleum products to industry and to the public. Mobil had a registered trademark for its
well-known flying-horse logo. The logo represented Pegasus, a mythological winged horse.
Oil trading was one part of Mobil’s business, but Mobil did not use the flying-horse logo in
connection with its oil trading. Generally, oil trading was conducted first with a cold call, and
success was based heavily on the seller’s reputation in the market. Those in the oil-trading
business were sophisticated purchasers. In 1981, Pegasus Petroleum Corporation (defendant)
started an oil-trading business. Pegasus used a logo with interlocking Ps. Pegasus did not sell
any products directly to the public. Mobil sued Pegasus for trademark infringement. The
parties each submitted consumer surveys on the issue of actual confusion. The district court
ruled in favor of Mobil. Pegasus appealed The Delhi High Court in Apple Computer Inc. Vs.
Apple Leasing & Industries,1993 IPLR 63 DEL,held that it is not necessary in the context of
the present day circumstances the free exchange of information and advertising through
newspapers, magazines, video television, movies, freedom of travel between various parts of
the world, to insist that a particular plaintiff must carry on business in a jurisdiction before
improper use of it’s name or mark can be restrained by the court.