Sec b group6_carlsbergvsradico & satyamvssiffy.ppt (1)

RADICO KHAITAN LTD VS CARLSBERG INDIA PVT LTD

AND

SATYAM INFOWAY LTD. VS SIFYNET SOLUTIONS PVT. LTD

12PGP059 – Aditi Chauhan

12PGP075 – Kaveri Sapra

12PGP097 – Soumya Ch

12PGP104 – Vikas P Singh

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THE TRADEMARK ACT 1999

Trademark Act, 1999 is an Act to amend and

consolidate the law relating to trade marks, to

provide for registration and better protection of

trade marks for goods and services and for the

prevention of the use of fraudulent marks.

Definition of Trademark includes:

Shape of the goods

Packaging of the goods

The combination of colors

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INTRODUCTION

Sections used in the analysis of the case:

Section 15 of the Trademarks Act 1999.

Registration of parts of trademarks and of trademarks as a series


Effect of registration of parts of a mark


Infringement of Registered Trademarks


Limits on effect of registered trade mark

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CASE SUMMARY

Radico Khaitan Limited

Carlsberg India Private Limited

Issue

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ARGUMENT BY PLAINTIFF- RADICO KHAITAN

LIMITED

Trade Mark Infringement

Passing Off

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ARGUMENTS BY DEFENDANT – CARLSBERG

INDIA PVT. LTD

Non exclusiveness in the registered Trademark

Cardinal Number-Not a valid Infringement.

Distinct goods – Thus Trademark infringement is

not valid.

No separate registration for numeral “8”.

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JUDGMENT- ORDER OF SINGLE JUDGE

BENCH

Ascertained that numeral 8 does not give right to

Radico to claim exclusive use for the same.

Granted Carlsberg to use “PALONE” with numeral 8

in different font and color.

Has given time for Carlsberg to change its

packaging style.

Reason: To avoid slightest chances of

misrepresentation.

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QUESTIONS IN FRONT OF DIVISION BENCH OF

DELHI HIGH COURT

Can a single numeral be used as a trademark?

To what extent did Carlsberg try to copy the “Look

and Feel” of the numeral 8?

Did Radico made any specific claims on color and

font for “8” within “8PM” while registering for the

trademark.

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JUDGMENT- ORDER OF DIVISION BENCH OF

DELHI HIGH COURT

Section 30 of the Trademarks Act 1999

Numerical 8 does not give sufficient grounds for Radico

to claim injunction.

Quoted Example: Colgate Palmolive vs Patel (2005

(31) PTC 583 (Del))

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DELHI HIGH COURT


Radico has registered for a composite trademark for

“8PM”

No individual trademark neither for the font nor for the

color of numeral “8”.

“8PM” text by Radico had been registered as a

word mark but not a label mark.

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DELHI HIGH COURT


A composite mark cannot seek exclusivity with respect to

individual components of trademark.


No likelihood of any consumer confusion to Radico by

the slogan “8 KA DUM”.

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REFERENCES

Trademarks Act 1999

http://www.nishithdesai.com/New_Hotline/IPLit/IP%20LIT%20HOTLINE_Jan0212.htm

http://indiankanoon.org/doc/49386818/

http://indiacode.nic.in/fullact1.asp?tfnm=199947

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http://www.nishithdesai.com/New_Hotline/IPLit/IP LIT HOTLINE_Jan0212.htm

http://indiankanoon.org/doc/49386818/

http://indiacode.nic.in/fullact1.asp?tfnm=199947

CASE 2

SATYAM INFOWAY LTD. VS SIFYNET

SOLUTIONS PVT. LTD.

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PARTIES TO THE LAW SUIT

Satyam Infoway Ltd.

It is an Indian broadband internet provider established

in 1998, based in Chennai.

it has 840 cyber cafes, 5 lakh subscribers and 54 units

present all over India.

Claims to be the first Indian internet company to be

listed on NASDAQ stock exchange in 1999

Sifynet Solutions Pvt. Ltd.

In 1999,had a customer base of about 50,000

members for the business.

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LAWS COVERED

• India’s Trade Marks Act (1999) section 2(zb)

" trade mark" means a mark capable of being

represented graphically and which is capable of

distinguishing the goods or services of one person

from those of others and may include shape of

goods, their packaging and combination of colours;

• Trade Marks Rules, 2002

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FACTS OF THE CASE

Satyam Infoway alleged that Sifynet Solutions was

attempting to pass off its services as those belonging to

Satyam Infoway by using a deceptively similar word as

part of its domain name.

Satyam Infoway Ltd., alleged that Sifynet Solutions Pvt.

Ltd., had intentionally registered and operated a domain

name that was confusingly similar to one owned by

Satyam Infoway.

Satyam Infoway claimed that it had in 1999, registered

several domain names pertaining to its business:

sifynet.com, sifymall.com, sifyrealestate.com, with the

ICANN and the WIPO.

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It submitted that the word "Sify" – was an amalgam

of elements of its corporate name "Satyam Infoway“.

Meanwhile, Sifynet Solutions had started using the

word "Siffy" as part of the domain names under

which it carried on internet marketing (namely

siffynet.com and siffynet.net), claiming to have

registered them with ICANN in 2001.

Members of the Internet community asked the courts

to apply trade mark law as an effective avenue of

redress for their disputes.

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CLAIMS OF BOTH PARTIES

Satyam’s Claim

Sifynet Solutions was attempting to pass off its services as

those belonging to Satyam Infoway by using a deceptively

similar word as part of its domain name.

Satyam Infoway claimed that this would cause confusion

in the minds of the relevant consumers

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SIFFYNET’S CLAIM

Sifynet Solutions contended that unlike a trade mark, the

registration of a domain name did not confer an

intellectual property right in the name.

It averred that a domain name is merely an address on

the computer

Confers no comparable property rights in the same.

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ORDER OF THE SINGLE JUDGE BENCH

The city civil court, Bangalore, ruled in favour of Satyam

Infoway

It granted a temporary injunction against Sifynet

Solutions.

It accepted the fact that Satyam Infoway is the prior user

of the word “sify” and it has gained goodwill

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Moreover, it stated that Sifynet’s domain name is

confusingly similar to Satyam’s and would create a

confusion regarding the ownership of the services

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DECISION OF BENCH OF HIGH COURT

Sifynet Solutions appealed to the Karnataka High

Court.

The High Court based its decision on a

consideration of where the balance of

convenience lay.

Balance of Convenience:

An objective test applied by the courts to each

party's circumstances to establish who is more

inconvenienced with having to travel to court.22

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The High Court stated that Sifynet Solutions had

already invested heavily in securing a customer

base for the business

It would consequently suffer immense hardship and

irreparable injury if the court found in Satyam

Infoway's favour.

It noted that the business that the two parties were

involved in were disparate

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Since Satyam Infoway also had that name to use

in trade, the High Court believed that it would not

cause them considerable hardship to deny the

temporary injunction.

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SUPREME COURT JUDGEMENT

Bench: Ruma Pal, P V Reddi

The Supreme Court overturned the judgement of Karnataka High Court

It declared that domain names are subject to the regulatory framework that is applied to trade marks (i.e. the Trade Marks Act, 1999).

, taking cognizance of the fact that there was no law that would directly relate to domain name but that should not prevent protection of domain names under the aegis of Trade Marks Act.

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The Supreme court compared domain name with

Trade Marks and felt that the domain name is

analogous to Trade Marks.

The court stated that the domain has evolved from

a business address to a business identifier.

It is not just a portal for web navigation but a

symbol, identifier and a distinguishing factor for the

goods and services of a business.

This feature of domain names in the modern era

allows them to be likened to trademarks, and

concomitantly to be included within the purview of

the Trade Marks Act. 26

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Passing Off

The court delineated the elements of an action for

passing off that satyam infoway would have to prove

in order to succeed.

Satyam Infoway argued that it had 840 cyber

cafes, 5 lakh subscribers and 54 units present all

over India.

They have spend huge amount of money towards

the getting listed to NASDAQ.

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Satyam Infoway had to establish that Sifynet

Solutions has misrepresenting the facts such that a

confusion is created regarding the ownership of

services.

It also had to establish if this confusion would lead

to a loss to Satyam Infoway and cause a

quantifiable injury to the consumers.

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Domain Name and Trademark differentiation

The court discussed the differences between a trade

mark and a domain name.

It stated that a clear differentiation is important to

determine the scope of protection under the present

laws

The distinction lies in the manner in which the two

operate.

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a trade mark may have multiple registrations in many

countries throughout the world on the other hand a

domain name is potentially accessible irrespective of

the geographical location of the consumers.

A domain name would require worldwide exclusivity

but also that national laws might be inadequate to

effectively protect it.

The court informed that the international

Registrars, i.e., WIPO and ICANN had provided a

modicum of effective protection to domain names.

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Balance of Convenience

The Supreme Court did not agree with the High Court

on the issue of where the balance of convenience lay.

The court states that there will be no irreparable injury

to Sifynet Solutions if it is prevented from using the

domain name in from here on.

It believed that Satyam Infoway had garnered

immense goodwill with respect to its business

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The Supreme Court also ruled that none of the two

partied could be conferred the right to use similar

domain names

based on evidence adduced during the proceedings

it was reasonable to conclude that dishonest

intentions were involved on part of Sifynet Solutions

to paas off its services as those of Satyam by using

the similar domain name.

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REFERENCES

http://www.indiankanoon.org/doc/21075/

http://www.nishithdesai.com/New_Hotline/IPLit/IP%

20LIT%20HOTLINE_Jan0212.htm

http://www.digestiblelaw.com/blog.aspx?entry=416

http://www.wipo.int/wipolex/en/details.jsp?id=2400


http://articles.economictimes.indiatimes.com/2004-

06-06/news/27368514_1_domain-names-satyam-

infoway-satyam-first

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http://www.digestiblelaw.com/blog.aspx?entry=416

http://www.wipo.int/wipolex/en/details.jsp?id=2400


http://articles.economictimes.indiatimes.com/2004-06-06/news/27368514_1_domain-names-satyam-infoway-satyam-first















THANK YOU

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Sec b group6_carlsbergvsradico & satyamvssiffy.ppt (1)

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Transcript of Sec b group6_carlsbergvsradico & satyamvssiffy.ppt (1)