Trade Mark Merchandise Act (India)
YI, a well known internet service provider, was the proprietor of 69 trade marks worldwide for the mark YAHOO! and had a pending application application in India. YI sought a temporary injunction against AA, restraining it from using the domain name YAHOOINDIA.COM, claiming that AA was passing off its services and goods as those of YI. A domain name, YI submitted, was entitled equal protection from passing off as that afforded to trade marks. AA contended that 1) there could be no passing of YI’s services because the service rendered by them could not be said to be goods within the meaning of the Trade Marks Merchandise Act (India), which only dealt with goods and not services, and 2) Yahoo was a dictionary word which was not distinctive and since AA has been using a disclaimer there could be no chance of deception and therefore no passing off.
Held: granting the temporary injunction, that 1) there were several cases where services had been included with the scope of passing off. Accordingly, services rendered had come to be recognised for an action in passing off, Reddaway v . Banham [1896] AC 199, Ellora Industries v. Banarsi Dass & Ors [1981] PTC 46 considered; 2) a domain name served the same function as a trade mark and was entitled to equal protection as a trade mark. Cardservice International Inc v. McGee 42 USPQ 2d 1850 considered; 3) the two marks were identical, save for the word INDIA, and there was every possibility of an Internet user being confused that both domain names came from a common source. This was particularly so since YI itself had used regional names after the word YAHOO; 4) the disclaimer used by AA was of no relevance because, due to the nature of Internet use, AA’s appropriation of YI’s mark as a domain name and home page address could not be adequately communicated by a disclaimer, and 5) dictionary words could attract distinctiveness.
Yahoo! Inc. v. Akash Arora [1999] FSR 931
“Current Law”
