India: Adobe Awarded Remedy: Rathi To Render Damages

Last Updated: 1 September 2008

Deceptive Similarity now extends itself beyond trademarks to the realm of domain names as well. While the principles that apply to both are similar, the jurisprudence to extending such principles seems to lie in the fact that web addresses are increasingly becoming an extension of a product or brands identity. The recent case of Adobe Systems v. Rohit Rathi 2008 (37) PTC 523 is a witness to these very dicta.

Adobe, in the present suit moved to Delhi High Court in an attempt to obtain a decree of permanent injunction to restrain Mr. Rohit Rathi and others from using the domain name "www.adobeinc.org" and the trademark "ADOBE" or any other deceptively similar variant, on the internet or otherwise, so as to the same amounting to infringement .

It was submitted that the physical address of Mr. Rathi given in the "WHOIS search" was apparently fictitious and incomplete and so was the mobile number, in as much as it contained only seven digits instead of ten. Adobe also submitted that the summons had been sent to Mr. Rathi on the aforesaid e-mail address.

Adobe employing more than 3700 people around the world and having acquired over 250 patents creates popular software applications include ADOBE PHOTOSHOP, ADOBE PAGE MAKER, ADOBE ILLUSTRATOR and ADOBE PREMIER. One of the key witnesses also substantiated that Adobe caters to design professionals a complete design environment in its product the ADOBE CREATIVE SUITE which combines a range of software. Adobe Systems India Pvt. Ltd was established in 1998, with distributors to market and sell their products.

The witness also stated vide an affidavit that Adobe is known by its corporate and house name which doubles as a flagship and primary trademark for most products. Adobe has its trademark registered in India with respect to its plethora of products, while enjoying trans-border reputation. It was submitted that the mark had become synonymous with Adobe. The domain names held by Adobe include www.adobe.com; www.adobemagazine.com; and www.adobeindia.com.

Adobe in August, 2007, discovered that the domain name www.adobeinc.org had been registered by Mr. Rathi (through his co-defendant the registering authority) without any authorization or permission from them. Adobe learnt that through the website www.adobeinc.org, deceptive commercial activities relating to their products were being carried out using the deceptive and confusing name 'Adobe Inc' on the internet.

The original computer printout of the WHOIS search showing the details of the registration of Mr. Rathi was presented. The same revealed the details of the domain name registration. It was contended that the adoption of the said domain name by the defendants was clearly a mala fide attempt to ride on the popularity that Adobe had acquired. It was also averred that the inclusion of the mark 'ADOBE' in the domain name using the suffix 'inc' had been designed to indicate to some affiliation or association with the plaintiff. The fact that while using the internet, users are accustomed to
reaching the websites of well-known brands by keying in the specific words identifying those brands, would return all web pages which include the said word in the domain names. They propounded that a person trying to misappropriate the goodwill and reputation of another's trademark can misdirect traffic intended for that person to his website, by incorporating the trademark in the domain
name of his website. They substantiated their stand by stating that several domain names include the mark 'ADOBE' and that a legitimate right vested in Adobe Systems.

Considering the pleadings, the evidence and the arguments advanced by the Counsel for Adobe systems, the High Court of Delhi decreed punitive damages amounting to Rs 5 Lakhs in favour of Adobe Systems.

© Lex Orbis 2008

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