Distinctiveness: The First Decision On The Protection of IP Rights On The Internet

Distinctiveness
Yahoo!, Inc. v. Akash Arora & Anr
The first decision on the protection of IP rights on the Internet.
The first landmark judgment on cybersquatting. The Delhi High Court, for the first time
ever in India, held that a domain name serves the same function as trademark and is
entitled to equal protection. The defendant had a domain name ‘Yahoo India!’ which was
identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!’. The court held that
internet users would be confused and deceived into believing that both the domain
names have the same source. The defendant took a defense that it had put a disclaimer
on its website. However, it was observed that a mere disclaimer was not sufficient
because the nature of the internet is such that use of a similar domain name cannot be
rectified by a disclaimer and it does not matter that ‘yahoo’ is a dictionary word. The
name possesses acquired distinctiveness and uniqueness and was largely associated
with the plaintiff.
the Bombay High Court, in Rediff Communication v. Cyberbooth & Anr 2000 PTC 209 also
observed that the value and importance of a domain name is like a corporate asset of a
company.
Character / artist merchandising
DM Entertainment v. Baby Gift House and Ors.
Daler Mehendi, the famous pop star from Punjab has a large fan base and is extremely
popular amongst Punjabi pop music lovers. DM Entertainment was incorporated in 1996
to manage the artist’s escalating career. The defendant company was making a large
business by selling miniature dolls of the artist and cashing on his popularity. The
plaintiff company was extremely aggrieved and filed for permanent injunction from
infringing the artist’s right of publicity and false endorsement leading to passing off. The
plaintiff company was assigned all rights, titles and interests in the personaliy of the artist
along with the trademark, Daler Mehendi. The plaintiff argued that the unauthorized or
unlicensed use of the artist’s reputation with respect to goods or services will deceive the
public into believing that the goods and services are associated with the singer and
hence, would lead to passing off. The plaintiff further submitted that such use was done
for commercial exploitation without adequate permission from the person or any other
authorized by him and shall constitute infringement of the person’s right to publicity.
Character merchandising is an area of law that is still unexplored in India. This was the
first case that dealt with the issue of celebrity merchandising where the publicity rights of
the artist was given due recognition.
Passing off of an unregistered tm
Cadila Health Care v. Cadila Pharmaceutical Ltd.

The Supreme Court held that it is insignificant whether the plaintiff and the defendant
trade in the same field or in the same or similar products. The court laid down certain
criteria to determine passing off of an unregistered trademark:
• The nature of the marks (word, label or composite);

• The degree of resemblance between the marks;/
• The nature of goods for which the marks are used;
• Similarities in the nature, character and performance of goods of rival traders;
• The class of purchasers who are likely to buy goods bearing the marks;
• The method of purchasing the goods or placing orders; and
• Other circumstances that may be relevant.
PHONETIC SIMILARITY
Gems or James – The Notorious Case of

Phonetic Similarity
Cadbury India Limited and Ors. v. Neeraj Food

Products [142 (2007) DLT 724]
The Plaintiff is a well-known producer and manufacturer of chocolates and
confections and has a trademark ‘GEMS’ registered in its name. The Plaintiff
approached the court for an injunction against the Defendant who was
allegedly selling a product under the mark ‘JAMES BOND’ which resembled
the ‘GEMS’ product of the Plaintiff in packaging and size. The Plaintiff claimed
that the product sold with mark of ‘JAMES BOND’ was deceptively similar to
‘GEMS’. The court held that the products of the Defendant were indeed
deceptively similar to that of the Plaintiff and granted an injunction
restraining the Defendant from selling the said product.
Pidilite Industries Limited v. Poma-Ex Products &

Ors. [2017 (72) PTC 1]
In this case, the Defendant was alleged to have dishonestly used mark
‘KWIK’, a part of Plaintiff’s trademark. The Defendant was using the
trademark ‘KWIKHEAL’ and the packaging of the product was similar to
Plaintiff’s ‘FEVIKWIK’ product. The High Court of Bombay held that the mark
‘KWIK’, being a dominant part of the trademark of the Plaintiff, cannot be
adopted by the Defendant. The court further held that the phonetic similarity
between the marks would easily mislead and deceive the consumers. ‘KWIK’
was held to be a dominant part of the Plaintiff’s trademark and an injunction
was granted restricting the Defendant from using the same.
Patents section 84
Bayer Corporation v. Union of India[1]
This landmark judgment is the first-ever case in India dealing with granting of a compulsory license
under an application made under Section 84 of the Patents Act, 1970
Read more at Legal Bites © Reserved: https://www.legalbites.in/5-leading-cases-intellectual-
property-rights/
https://www.legalbites.in/5-leading-cases-intellectual-property-rights/
Diamond v. Chakrabarty[5]
Roche v Cipla patent infringement battle

In a case involving two pharmaceutical giants, the Delhi high court found Cipla to
be infringing Swiss drug major Hoffman-La Roche’s patent on lung cancer drug
erlotinib hydrochloride sold under Tarceva. Roche, which was granted a patent for
Tarceva in 2007, sued Cipla in 2008 after it began manufacturing a cheaper version
of its cancer drug.
The verdict, which could be seen to have put Indian generic pharma companies at a
disadvantage, brought with itself a strong enforcement of Indian IP regime, which
has often alleged to be favouring only home companies.
DU photocopy case
The Delhi high court was the first to make inroads at interpreting copyright law for
education purposes by allowing a photocopy shop in Delhi University to sell
photocopies of course materials to students. The verdict, which has set a milestone
for the applicability of copyright law in educational cases in India, held that
“copyright in a literary work is not an inevitable, divine or natural right" conferred
on an author. It added that the copyright law is intended to increase and not impede
knowledge.
https://www.livemint.com/Politics/IFsXN8yafdeucQzJkxC6pI/Delhi-HC-turns-50-Five-landmark-
intellectual-property-right.html
whole trademark
https://blog.ipleaders.in/trademark-law-in-india/
section 9 :
refusal and grounds
https://www.legalbites.in/grounds-for-refusal-register-a-trademark/
https://www.intepat.com/blog/trademark/grounds-of-refusal-of-a-trademark-in-india/
https://lawcirca.com/what-are-the-grounds-for-refusal-of-registration-of-a-trademark/
https://www.vakilno1.com/bareacts/laws/trademark-law-in-india-law-and-case-laws.html
well known trademark
https://www.vakilno1.com/legal-news/well-known-trademark-india.html
http://www.legalserviceindia.com/legal/article-3125-well-known-trademark.html
https://www.quickcompany.in/articles/rights-and-protection-of-well-known-trademark-in-india
registered tm and unregistered tm
https://www.intepat.com/blog/trademark/unregistered-vs-registered-
trademark/#:~:text=Registration%20of%20a%20trademark%20gives%20to%20the
%20registered,trademark%20in%20the%20manner%20provided%20by%20the%20Act.
https://blog.ipleaders.in/trademark-law-in-india/

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Distinctiveness

Yahoo!, Inc. v. Akash Arora & Anr

Character / artist merchandising

DM Entertainment v. Baby Gift House and Ors.

Passing off of an unregistered tm

Cadila Health Care v. Cadila Pharmaceutical Ltd.

• The nature of the marks (word, label or composite);

Gems or James – The Notorious Case of

Cadbury India Limited and Ors. v. Neeraj Food

Pidilite Industries Limited v. Poma-Ex Products &

Bayer Corporation v. Union of India[1]

Roche v Cipla patent infringement battle

refusal and grounds

well known trademark

registered tm and unregistered tm

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