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14 September 2016

Trademarks in domain name – Bonafide adoption of corporate name as domain name, correct

In a suit alleging trademark infringement, dishonest adoption and passing off, where the cause of action arose out of use of a domain name, the Bombay High Court on 20-7-2016 has held that every domain name cannot form subject of trade-mark protection. The Court was of the view that use of the mark “Raymond” by the defendants in its domain name “raymondpharma.com” would not lead to “initial interest confusion” inasmuch as no netizen who comes across the said domain name be so confused initially that she or he would mistake the site as that of the plaintiff. It was held that the defendant had bonafidely adopted the domain name because they were using the name ‘Raymond Pharmaceuticals Ltd.’ as their corporate name since long and that the domain name clearly identifies the business which is not carried on by the plaintiff.

The fact that the Court has already held that use of the word “Raymond” and the defendants corporate name is not actionable as infringement of the mark, was also taken note of by the Court here, while it observed that words ‘raymondpharma’ and ‘Raymond’ cannot be said to be corresponding names.

Additionally, the Court in this regard was of the view that a domain name may also constitute a trademark if used for the purposes of identifying the source of goods or services, but every domain name which is registered does not necessarily have to correspond with trade-marks. Noting that the plaintiffs had not sought prayer for transfer of the defendants’ domain name, it was held that it was not a case of cybersquatting but of alleged misuse of the Plaintiffs registered mark.

 

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