The case concerns a dispute of the domain name "philipscis.com". The plaintiff is an individual, Haixin Jiang ("Jiang"), from Shanghai, PRC and the defendant is Koninklijke Philips Electronics N.V. ("Philips"), the Dutch consumer electronics company. Jiang sought to set aside a decision by the World Intellectual Property Organisation ("WIPO") to transfer the disputed domain name to Philips, which was made on 19 September 2002.
Philips owns a number of registrations for the trademark PHILIPS in China and has registered the domain name to host a website for communication, security and imaging (CSI) products. On 1 March 2002, Jiang registered the domain name . This domain name resolves to a website which is an almost identical reproduction of the Philips CSI website but for some minor variations.
The WIPO panel found that i) the disputed name was confusingly similar to Philip's registered trademark; ii) Jiang had no legitimate reason to register a domain name containing the marks PHILIPS; and iii) Jiang had registered the domain name in bad faith. As a result, the WIPO panel ordered the transfer of the disputed domain name to Philips.
Jiang put forward the following arguments before the Shanghai Court:
The domain name was not identical or confusingly similar to Philips';
Jiang had legitimate interests in the disputed domain name, Jiang contended that the disputed domain name was composed of:
'philip'- his English name;
'sc'- standing for Shanghai, China; and
'is'- standing for internet system/server.
Jiang did not register the disputed domain name in bad faith;
Philips had the intention of infringing the domain name deliberately;
The panellist in the WIPO was from Singapore. Jiang alleged the expert might have been biased or erred in his decision.
Jiang asked the court to set aside or suspend the execution of the WIPO decision and make an order that he was the legitimate owner of the disputed domain name.
The Second Shanghai Intermediate People's Court handed down its decision on 24 December 2003 and concurred with WIPO that:
the mark "PHILIPS" is a legitimate and valid trade mark;
the disputed domain name was confusingly similar to Philips' registered trade mark which was sufficient to give rise to confusion amongst the public;
Jiang had no rights or legitimate interests in respect of the domain name; and
Jiang had registered the disputed domain name in bad faith, with the intent of creating confusion and attracting Internet users to his website so as to gain a commercial benefit.
The court dismissed Jiang's application and upheld WIPO's decision. Philips was awarded costs in the amount of RMB1,000. The significance of this case is that it was the first Internet domain name dispute involving a .com domain name accepted by the Second Shanghai Intermediate People's Court.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Lupin Limited is an innovation led transnational pharmaceutical company which develops and offers a wide range of branded & generic formulations, biotechnology products...
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).