India: Hijacking Of Identity: Initial Interest Confusion

INTRODUCTION:

Whenever a person wants to buy something, he starts with searching for the best option available in the market. There are various mediums of doing so in the contemporary time as compared from the time when the mediums were limited. Now a person has an option of window shopping, searching for the same through magazines, relying on the advertisement and promotion of the company related to the product and then he also have an option of searching on the internet and website of the particular brand. The choice of product depends upon various ingredients which are involved in a process of buying like the qualities of a product, budget of the person etc but one of the ingredient which is not involved earlier but with the emergence of time it has become one of the most important factor in the choice of the product i.e. initial interest involved.

A product sale apart from the other factors is also dependent upon the initial interest of the consumer involved in a product. Although a product has its sales because of its quality then also a share of the sale is because of reason of the initial interest of the consumer in the product. The initial interest confusion should not be baffled with the confusion related to the identity of the two trademarks. It is related to the confusion related to the time of searching for a product. The initial period when a person is looking for a product is very crucial and it is during this period that the initial interest confusion has its origin. The way by which a seller is able to draw attention of a consumer towards its product and how genuine his efforts are in drawing the consumer towards its product would help in deciding whether the same is infringement or not.

ORIGIN:

The initial interest theory has its origin from the judicial interpretation provided by the various courts around the world. The interest developed in a product because of its own qualities and the goodwill of the product itself is not a wrong in the legal sense but when the initial interest developed is because of unlawful use of the trademark, goodwill and name of a product then it would be treated as an infringement as held in the various cases around the world.

The initial interest confusion is related to the confusion before the time of purchase, it should not be mystified with the confusion at the time of purchase. It involve the time when a person has decided that he needs something and has not reached the place from where he has to buy that product hence the initial interest confusion does not come into picture when the person has reached the place from where he needs to buy that product and has got confused because he saw two marks similar to each other.

JUDICIAL UNDERSTANDING AND PRONOUNCEMENTS:

The use of others trademark as a metatags in drawing the consumers towards its own website is a common case these days.

In case of Consim Info Pvt. Ltd Vs. Google India Pvt. Ltd. and Ors.1 while discussing various cases the court observed in regards to the initial interest theory that "in the early stages, courts perceived the unauthorised use in metatags, by a person, of someone else's trademark, as creating confusion in the minds of the consumers. This doctrine, identified as a doctrine of initial interest confusion posits that trademark infringement results when a consumer has been confused prior to purchase. But in normal circumstances, the likelihood of confusion would occur at the time of purchase. All over the world, the Courts have struggled hard, as pointed out above, to grapple with this problem of "initial interest confusion" in the internet context, where internet users seeking a trademark owner's website are diverted (i) either by identical or confusingly similar domain names to websites in competition with the trademark owner or (i) by a competitor's unauthorised use of another's mark as the keyword to generate banner or pop-up advertisements for its products and services."

In US, the use of another's trademark in meta-tags to capture initial consumer attention was also regarded as a potential infringement of a trademark.

In Brookfield Communications, Inc. v. West Coast Entertainment Corp.2 the defendant West Coast Entertainment used the plaintiff's "moviebuff" mark in the metatags of its website. The Court analogised it to the use of a Bill Board bearing the plaintiff's mark to attract consumers interested in the plaintiff's products or services. Although the consumers would ultimately realise that the defendant was not the provider they initially sought, they might decide instead to patronise the defendant's website. The Court held that using another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store. Elaborating this illustration, the 9th Circuit Court said, "Using another's trademark in one's meta-tags is much like posting a sign with another's trademark in front of one's store...... Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill".

The Bill Board analogy used in Brookfield was again considered in Playboy Enterprises, Inc. v. Netscape Communications Corporation3. The District Court rejected the plaintiff's request for a preliminary injunction and the Court of Appeals, Ninth Circuit confirmed the same. Subsequently, the District Court granted summary judgment (akin to rejection of plaint) in favour of the defendants.

While reversing the order granting summary judgment in favour of the defendants and remanding the matter for further proceedings, the Court of Appeals, Ninth Circuit applied an eight-factor test, originally set forth in AMF Inc. v. Sleekcraft Boats4 viz., (1) strength of the mark (2) proximity of the goods (3) similarity of the marks (4) evidence of actual confusion (5) marketing channels used (6) type of goods and the degree of care likely to be exercised by the purchaser (7) defendant's intent in selecting the mark and (8) likelihood of expansion of the product lines.

Thereafter, the Court accepted the argument of "initial interest confusion" advanced by the plaintiff, on the ground that the choice of keywords, presented to the advertisers by the search engine and the use of clickthrough rates as a way to gauge the success of advertisements, showed intent to confuse. Since intent to confuse constituted probative evidence of likelihood of confusion, the Court held that the summary judgment issued in favour of the defendants by the District Court was wrong.

After the 'Bill Board' analogy in Brookfield and 'highway sign post'' analogy in Playboy, the Courts extended the "initial interest confusion doctrine" to correspond to a broader reading of Brookfield, under which real confusion is not required, but a probability of confusion was enough.

In People for the Ethical Treatment of Animals v. Doughney,5 the Court found initial interest confusion based on the use of the domain name peta.org to link to a site entitled "People Eating Tasty Animals", a parody of the "People for the Ethical Treatment of Animals" website that visitors were presumably trying to reach. Once visitors reached the page, there is no way they could have been confused given the very different title and the obviously parodic message of the page. Nonetheless, the Court found the instant of confusion created before visitors saw the content of the website to be actionable.

In case of Warner Bros. Entertainment Inc. vs Harinder Kohli And Ors6

It was observed by the Hon'ble High Court of Delhi on the basis of the explanation provided in McCarthy on Trademarks and Unfair Competition, Fourth Edition, Volume 3, pages 23-19:

"Infringement can be based upon confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion ....................... ....................................? ?The analogy to trademark initial interest confusion is a job-seeker who misrepresents educational background on a resume, obtains an interview and at the interview explains that the inflated resume claim is a mistake or a typing mistake. The misrepresentation has enabled the job-seeker to obtain a coveted interview, a clear advantage over others with the same background who honestly stated their educational achievements on their resumes. In such a situation, it is not possible to say that the misrepresentation caused no competitive damage. Initial interest confusion can be viewed as a variation on the practice of bait and switch."

Section 29(1) of the Trade Marks Act, 1999 requires the similarity of the trademark to result in likelihood of confusion for claiming infringement. In case of likely hood of confusion, the confusion is related to the time when a person is buying a product and the infringer has taken the advantage of the reputation of the well established trademark whereas in case of initial interest confusion it is related to the confusion before the time of purchase of product and the person has realised before purchase that he is not buying the same product what he had thought about but then also he has developed a liking for the product due to the initial interest developed due to one reason or other. The use of others trademark as a meta tag is the most common way of doing the same and the same has been taken as an infringement by the various courts in various judgments mentioned above.

CONCLUSION:

The initial interest confusion phenomenon is a recent development due to the development of modern mode of sales and purchase specially internet. The way of purchasing the product is changed with the passage of time and so is the way of selling a product. The latest development in the marketing has also led to the vigorous competition between the rival brands. The line between the fair use of others trademark or trade name and unauthorized use of the same is very thin. The development of provision of the trademark law has led to the establishment of the new theories related to the modern use of the trademark. Initial interest confusion doctrine is the development of the contemporary interpretation of the trademark law. Initial interest confusion has its origin from the use of other's rights for own benefits. It is related to the time period wherein the consumer has decided to buy a particular product. While he is searching for his choice of product he came across other products similar to the one he was searching for and instead of buying the product of his choice at the first instance he ends up buying another one due to the reason of his interest developed for the other product due to the method adopted by the others to promote his product. The use of the others trademark for the promotion of one's own product would decide whether the method used is infringement or not. Initial interest confusion is been treated as infringement in various cases around the world.

Footnotes

1.MANU/TN/1816/2010

2. 174 F.3d 1036-9th Cir. 1999,

3. 354 F.3d 1020

4. 599 F.2d 341 (9th Cir. 1979)

5. 263 F.3d 359 (4th Cir. 2001)

6. IA No.9600/2008 in CS(OS) No.1607/2008

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions