Delhi High Court extends scope of trademark law to cover cybersquatting

In Tata Sons Ltd v Arno Palmen (CS (OS) 563/2005), the Delhi High Court has issued a permanent injunction restraining the defendants from using the plaintiffs’ well-known trademark TATA/TATA INFOTECH, as well as the domain name 'tatainfotech.in'. The second defendant - the registrar of the domain name - was directed to cancel the registration of the domain name. The plaintiffs were Tata Sons Ltd, the holding company of the Tata Group, and Tata Infotech Ltd.

The first defendant registered the domain name 'tatainfotech.in', which incorporated the plaintiffs’ well-known trademark TATA, as well as the service mark TATA INFOTECH. The first defendant thereafter contacted the plaintiffs, stating: “just five minutes ago I got an email from an Indian business man who wanted to buy the domain name for a large sum of money... before I turn over the domain name I wanted to inform you... if I receive no mail from you I will sell the domain name”. The plaintiffs immediately instituted a civil suit before the Delhi High Court, seeking a permanent injunction restraining the infringement of its registered trademark, as well as damages.

On April 29 2005 when the matter was first listed before the Delhi High Court, the court, after hearing the preliminary arguments, issued an ex parte ad interim injunction in favour of the plaintiffs freezing the domain name 'tatainfotech.in' so that it could not transferred to any third party. The court also restrained the defendants from using any mark/name/domain name which might be deceptively similar to the plaintiffs’ well-known trademark TATA/TATA INFOTECH. Even after the successful service of court summons and notice, the defendants did not appear before the court; they were ordered to be proceeded ex parte by a vide order dated March 23 2009.

The court, taking into consideration case law such as Satyam Infoway Ltd v Sifynet Solutions Pvt Ltd (AIR 2004 SC 3540), and Marks & Spencer PLC v One-in-a-Million Ltd ([1998] FSR 265), accepted the plaintiffs’ argument that domain names should be protected in the same way as trademarks. For this purpose, trademark law, which is usually applied to the real world, should be stretched to cover the virtual world so as to prevent cybersquatting. The Delhi High Court reiterated the view taken in Jaitley v Network Solutions Pvt Ltd (181 (2011) DLT 716), in which it held that it was incumbent upon it to protect domain names, so that the names of companies and individuals which are distinct in the marketplace did not fall into the hands of individuals who had no genuine rights in such names.

Indian courts - especially the Delhi High Court - have been interpreting the existing law to meet the various consequences that have come about as by-products of the advancement in science and technology. In this respect, the Delhi High Court has been referring to the best practices from international trademark jurisprudence.

With regard to domain name squatting, the most important aspect is to prevent harm, rather than taking damage control steps or remedial measures. Australia has a requirement under its internal laws that any person applying for a “.au” domain name containing a particular name should first register that name under an Australian business number issued by the Australian Taxation Office. The Canadian legislation contains similar provisions.

On July 8 2011 the Ministry of Corporate Affairs of India issued General Circular 45/2011. In this circular, which was addressed to all the regional directors and the registrar of companies, the ministry set forth guidelines under Section 20 of the Companies Act whereby companies should not be registered under names that are identical to a registered trademark or a mark which is the subject matter of an application for registration (under the Trademarks Act 1999). Therefore, any party which applies for the registration of a company name with the Ministry of Corporate Affairs must obtain a 'no-objection' certificate from the Trademarks registry.

The case shows that the fight against internet torts, such as cybersquatting, will yield best results if the various players - for example, the courts, the domain name registrars, government bodies, non-governmental organisations and trademark practitioners - work together.

Achuthan Sreekumar, Anand and Anand, Noida