Recently, the Hon'ble Bombay High Court in People Interactive (I) Pvt. Ltd. vs. Gaurav Jerry and Ors., dealt extensively with use of trade mark in meta-tags for the first time and also discussed the issue relating to personal jurisdiction in cyberspace. A copy of the order can be found here.
Facts
Plaintiff provides online matrimonial and matchmaking services under the well-known brand Shaadi.com. Plaintiff came across a rival domain name and/or trade mark ShaadiHiShaadi.com in respect of identical services of online matrimonial and matchmaking services and therefore, initiated legal proceedings by filing a suit against the Defendants seeking injunction against them from using the mark and domain name ShaadiHiShaadi.com or any other word or expression identical with or deceptively similar to the Plaintiff's registered trade mark Shaadi.com in respect of matrimonial and matchmaking services, online as well as offline. The rival marks of the Plaintiff and the Defendant are as shown above.
Contentions
The advocates for the Plaintiff contended that the Plaintiff being the owner of registered trade marks Shaadi.com and Shadi.com, the Plaintiff has statutory, proprietary and common law rights in the said marks by virtue of which the Plaintiff is entitled to restrain others from using names or marks that are deceptively or confusingly similar to those of the Plaintiff. It was further contended that the mark of the Defendant is deceptively and confusingly similar to the Plaintiff's marks and Defendants have even adopted a similar tagline which is likely to create confusion in the minds of the public.
Plaintiff also relied upon the web analysis conducted by them of Defendants' impugned domain www.shaadihishaadi.com which showed that Defendants were diverting as much as 10.33% of the internet traffic away from the Plaintiff's website to their website by use of trade mark Shaadi.com and 4.67% of the internet traffic by use of domain name www.shaadi.com.
Judgment
The Plaintiff's application for grant of urgent ad-interim reliefs was heard ex-parte as the Defendants did not appear at the time of hearing in spite of being served with a notice.
Upon hearing the advocates for the Plaintiff, Hon'ble Mr. Justice G.S. Patel compared the rival marks and found that the impugned mark of Defendant No. 1 is bound to create deception and confusion amongst visitors visiting Defendant No.1's website and the visitors are bound to mistake Defendant No.1's website for a branch, division or variation of Plaintiff's reputed website.
Relying on the web analysis conducted by the Plaintiff of the Defendant No.1's infringing domain www.shaadihishaadi.com, the Hon'ble Court observed that Defendant No.1 is illicitly plugging the Plaintiff's mark Shaadi.com and domain name www.shaadi.com in meta-tags of web-pages of its domain name to divert internet traffic away from the Plaintiff's website to his impugned website www.shaadihishaadi.com and such use is nothing but hijacking Plaintiff's reputation and goodwill.
The Hon'ble Court was thus pleased to grant an ad-interim injunction in favour of the Plaintiff in respect of infringement and passing off of Plaintiff's registered trade mark Shaadi.com restraining the Defendant No.1 from using the trade mark and domain name ShaadiHiShaadi.com in any manner, including use in meta-tags. Court further directed the domain name registrar, who was a party to the suit, of the impugned domain name to deregister or terminate the registration of the impugned domain name ShaadiHiShaadi.com.
Comments
The Hon'ble Bombay High Court recognized the importance of meta-tags in this continuously evolving digital era and held that use of trade mark in meta-tags constitutes infringement and passing off. The Hon'ble Court also observed that in an action for passing off, court will have jurisdiction to entertain a suit even if the Defendant resides and carries on business outside the jurisdiction of Court provided the Defendant's website is an interactive website and is globally accessible from anywhere, including the place where the suit is filed. Precedents like this will certainly clear the ambiguity over unchartered issues relating to the use of trade mark in cyberspace especially in meta-tags.
Similar order was subsequently passed in People Interactive (I) Pvt. Ltd. vs. Ammanamanchi Lalitha Rani & Ors. A copy of the order can be found here. In this case, the rival marks were Shaadi.com and Get Shaadi.com. The Hon'ble Bombay High Court upon comparing the marks, found the impugned mark deceptively and confusingly similar to the Plaintiff's mark and thus, restrained the Defendants from using the mark and/or domain Get Shaadi.com and directed the domain name Registrar, who registered the impugned domain name of the Defendant Nos.1 & 2, to deregister or terminate the registration of the impugned domain name www.getshaadi.com.
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