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People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors. (14th Sept 2016) (Bombay HC)


Posted By Shrihar on 01 Aug 2017

FACTS

  • The plaintiffs belong to the People Group of Companies which owns various trademarks, brands and well known websites.
  • One of such websites is www.shaadi.com and www.shadi.com. Both of these domain names are registered by the plaintiff.
  • The defendants were engaged in the use of website named ‘www.secondshaadi.com
  • Plaintiff has been using the domain names to provide online matrimonial and matchmaking services since 1996.
  •  The Plaintiff's other word marks SHAADI.COM3 and SHADI.COM4 (not used by the Plaintiff ) were subsequently registered in 2009 in Class 45. 
  • Apart from its online services, the Plaintiff has bricks-and-mortar establishments for similar services offered in person. It also has registrations for the marks Shaadi.com Centre, Shaadi Times, Shaadi Point, Shaadi Mobile and Shaadi TV. Shaadi Times carries a disclaimer of non-exclusivity over the word Shaadi.
  • The defendants launched their website www.SecondShaadi.com in 2006 catering to the people who seek to marry again.
  • The plaintiff sent a cease and desist notice to the defendant which was declined by the defendant.
  • In 2013, another demand was made by the plaintiff. The defendant declined the demand again claiming that the words ‘shadi’ and ‘shaadi’ are generic.

PLAINTIFF’S CONTENTIONS

  • The plaintiff contended that even if the word ‘shaadi/shadi’ is descriptive in nature it has acquired distinctiveness and has gained a secondary meaning.
  • Plaintiff also contended that the defendant’s use of the word ‘second shadi’ is not bona fide and is an attempt to ride on the wave of success of the defendant.
  • Plaintiff claimed that the contesting Defendants use meta-tags to drive traffic to them from the Plaintiff's site.

DEFENDANT’S CONTENTIONS

  • The defendant claimed that the word shaadi/shadi is generic in nature.
  • The defendant also pointed out that there are any number of entities that use the word to provide similar services: he has a list of 29 websites that all use 'shaadi' in their domain name, and 10 companies that also prefix 'shaadi' to their names.
  • Defendants submitted that Sections 30(2)(a) and 35 of the Trade Marks Act, 1999 entirely cover the situation because the mark is used in relation to goods and services.

ISSUES

  • Whether the word shadi/shaadi has acquired a 'secondary meaning'?
  • Whether a domain name always assumes the features of a trade mark?

DECISION

The court held that the word shaadi/shadi is generic and descriptive and it has not acquired any distinctiveness as claimed by the plaintiff. The court also held that Section 30(2)(a) will apply to the given situation. The court also held that it is not necessary for a domain name to be a trademark.

OBSERVATION

The court observed that the proof of secondary meaning must be of uninterrupted use of considerable longevity without a competitor attempting to use it.  The court pointed out that for a word to acquire secondary meaning it must necessarily mean that the primary meaning of the expression, the one with which it began, has been lost. It is left behind. The expression no longer means what it once did. It has assumed a new avatar. It has transcended its original connotation and now references exclusively in the public mind the claimant's products, goods or services, i.e., that there is an identification of the mark with the claimant rather than with the goods or services in and of themselves. In the present case these essentials are not fulfilled.

As far as the domain name is concerned, the court observed that a web address is, technically, a mnemonic, an easy- to-recall replacement for a complex string of numbers that represent the actual Internet Protocol address (or addresses) where the website in question is to be found which is not replaceable with physical address. The court observed that a domain name is primarily an address which enjoys protection of the trademark. It is incorrect to suppose that every domain name, because it is a domain name, automatically receives the full blown protection of a mark. Therefore the domain name does not automatically receives protection under the trademark law.

CONCLUSION

The court rightly held that the word shaadi/shadi has neither assumed distinctiveness nor has it acquired a secondary meaning because it is still used to refer to a wedding or marriage and not to the website. The observations made on domain name are slightly shaky and opposite to the view taken by the courts in general. However, due to lack of laws on domain names, the jurisprudence has to be developed by the courts only.

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