The WIPO forum is proving to be an effective means for
trademark owners to assert and claim their rights over
infringing domain names. In an era where e-trading and
e-commerce are gaining prominence day in and day out, the link
between the two is getting closer than ever. It seems that soon
enough trademarks and domain names will become so inextricably
linked that the two shall mirror each other in terms of rights
The Uniform Domain Name Dispute Resolution Policy created by
ICANN, lends trademark owners an opportunity to assert their
rights against existing deceptive domain names. The elements to
be proved in order to assert their rights include:
The trademark owner owns the trademark
The domain name has been registered by a party having no
legitimate rights or interest in the domain name
The domain name was registered in bad faith.
Trademark owners are increasingly approaching the WIPO
Arbitration and Mediation Center in order to assert their
rights. One of the earlier cases involved Tata Tea Co. whereby
the dispute revolved around the use of "TATA" by a
Scottish enterprise Gem Lifts Ltd. (Tata Tea ltd. V. Gem
Lifts Ltd Case No D2000-1823). The domain name was
transferred in favour of Tata. An identical dispute arose in
Sukhsagar Enterprises v. Sanskruti
International [2008 (36)PTC 653 (WIPO)]
Sukhsagar Enterprises is a partnership firm running a
vegetarian restaurant chain under the trademark SUKHSAGAR,
having multiple branches in Bangalore and Mumbai. They asserted
that their marks had been renewed from time to time, being
valid and subsisting and that they would be in continuous use.
Sukhsagar maintains that the disputed domain name, held by
Sanskruti International is identical or confusingly similar to
their trademark. They also maintained that the same was never
used in connection with bona fide offering of goods
and services. Sukhsagar also stated that Sanskruti had not
responded to their notice. Sukhsagar also averred that
Sanskruti was not a commonly recognized by its domain name.
Sanskruti enterprise on the other hand conveyed through a
presumed representative that he had held the domain name for
several years. The WIPO Arbitration and Mediation Center opined
such an informal communication as being insufficient for
Paragraph 4 of the Uniform Domain Name Dispute Resolution
Policy (UDNDRP) was examined. The Administrative panel Decision
scrutinized and rendered the matter on the count of the
disputed mark and domain name being identical or confusingly
similar, rights or legitimate interests of the parties and
registration and use in bad faith. Reviewing the late filed
response of Sanskruti, the Panel noted that Sukhsagar referred
to the term 'Happy Ocean', and that several
enterprises existed in the name around the world.
They further concluded that although the term was common and
that did not vest a legitimate interest in Sanskruti to use the
domain name. The Panel also took note of the fact that
"SUKH SAGAR" was a mark used by a global chain. The
Panel observed that the Sukh Sagar chain, also owners of www.sukhsagarworld.com was established in
1962, while that of Sukhsagar Enterprises was established in
Sanskruti averred that they were running hsagar.com for the
last seven years and that as an Internet business. The Panel in
an attempt to decide the matter attempted to access the domain
name repeatedly, but without success. The Panel opined that the
submissions made by the parties were patchy. The Panel also
stated that omitting the meaning of the word
"Sukhsagar" had not only made their job difficult but
also raised a suspicion that such an omission may have been
made selectively by Sukhsagar Enterprises to favor their case.
However, the panel on balance of the record forth it affirmed
its previous order to transfer the domain name to Sukhsagar
enterprises, while noting that nothing would prevent third
parties from asserting their Trade Mark rights with respect to
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
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.
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).