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07 October 2016

Trademarks – Not every domain name entitled to trademark protection

Bombay High Court has refused to grant an interim injunction in a suit for trademark infringement and passing off in favour of the plaintiff, who is the registered proprietor of the mark and domain name “shaadi.com”. The Defendant, was sought to be restrained from using the domain name secondshaadi.com in any manner, including as part of the domain name for their web-based matrimonial services. The Court in this regard on 14-9-2016 held that word ‘shaadi’ is nothing but generic, referring to marriage and not anything else. It was held that it was incorrect to take a generic or commonly descriptive expression as part of a mark, and then, by process of deconstruction, lift the generic expression out of the mark, claim that it is ‘prominent’ or ‘essential’ or ‘leading’, and then lay claim to exclusivity it could never have had if used on its own. Deliberating on entitlement of trademark protection to domain names, the High Court was of the view that every domain name, even non-distinctive or descriptive ones, are not be entitled to trade mark-level protection. The Court found it incorrect to say that every domain name, because it is a domain name, will automatically receive full-blown protection of a mark.

Further, laying down a test - whether rivals have attempted to use the same commonly descriptive or generic (class 1) expression, the Court observed that if it is shown that they have, then the claims to exclusivity and to a secondary meaning must both fail. It was noted that since there were number of rival users, against whom the plaintiff had moved, it showed non-exclusivity, and established that there were many who used the word. Lastly, while dismissing the notice of motion, the Court was of the view that there was sufficient variation in the domain names, tag lines were not similar, fonts and stylization were different along with the get up and look and feel of the websites.

 

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