The passing off action is a well-established legal weapon in the armory of business establishments in their fight against trademark pirates. Basically, a passing off action prevents Trader A from passing off his goods as that of Trader B in the market. There are three basic constituents in an action for passing off. They are
The plaintiff must have good will for his goods/services in the market;
There must be a misrepresentation by the defendant; and
The misrepresentation must have caused damage to the reputation or goodwill of the plaintiff.
But one of the questions that may arise in this cyber age is whether the action for passing off can be extended to the protection of valuable domain names which works as a platform for new age business transactions. Recently, the Delhi High Court gave answer to this important question through the case of Tata Sons Limited and another v. Fashion ID Limited [2005 (30) PTC 182 (Del)].
Tata Group of Companies is one of the biggest industrial groups in India and is claimed to have a total turn over of more than USD9 billion. The word ‘TATA’ is one of the most distinctive words in Indian market place and is considered as a perfect example of a well-known mark. TATA INFOTECH, which is a part of TATA GROUP of companies, is a pioneer in the field of information technology and its activities include software consulting, hardware manufacture, offshore software development, systems integration and education services. In the year 2000, TATA registered the domain name ‘tatainfotecheducation.com’. But due to a brief internal lapse, renewal date was missed and the defendant misappropriated the domain name and snapped it up. The defendants started offering gambling and other nefarious activities under the domain name ‘tatainfotecheducation.com’ and this resulted in considerable harm to the corporate image of the plaintiffs. As a result the plaintiffs approached the Delhi High Court under the laws of passing off and trade mark infringement to refrain the defendant from causing damage to its hard earned reputation.
The well-established legal principles in trademark jurisprudence and valuable evidences in this regard clearly guided the Court to proceed to grant permanent injunction against the defendant. Referring to various decisions of Indian Judiciary relating to domain name disputes, the Court pointed out that it is obvious that principles of passing off would fully apply to an infringement of a domain name. The Court was of the view that passing off action must be available in the case of a distinctive domain name. In arriving at this decision the Court took note of the fact that internet is like a market place where people buy and sell articles of merchandize and services. In the light of these considerations, the Court restrained the defendants from using the domain name-‘tatainfotecheducation.com’ and ordered to transfer the domain name to the Plaintiffs. The Court also awarded cost of the suit to the Plaintiff.
The case before the Court was a clear case of dishonest adoption of a distinctive domain name. This case reinstates the faith of business establishments in the Indian Judiciary, which has always come to the rescue of the protection their hard-earned, valuable goodwill and reputation. This case shows the real scope of an action for passing off in the virtual world.
The territorial jurisdiction to institute a trade mark infringement or copyright infringement case is turning into a battleground with contrary views being taken by the Delhi High Court and the Bombay High Court.
At least the Delhi High Court thinks so. In a recent judgment passed by the Delhi High Court in the case of The Chancellor, Masters & Scholars of the University of Oxford & Others Vs. Rameshwari Photocopy Services & Another, . . .
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