Tea company ordered to drop 'Yahoo' name

India

In Yahoo! Inc v Agarwal (Case 345/2003), the Delhi High Court has granted Yahoo! an interim injunction preventing Sarda Trading Company from marketing, distributing or selling tea under the brand name 'Yahoo'. Yahoo!'s suit for a permanent injunction on the grounds of passing off and dilution will be heard in the near future.

To stop the Mumbai-based tea company from using its brand name, Yahoo! submitted that the YAHOO trademark and trade name are not restricted to computer and internet-related services, but extend to books, magazines and collateral goods such as clothing and computer accessories. The US company said that it has licensed the YAHOO mark for use in connection with a variety of goods such as candies, chocolate, mints and ice cream pursuant to co-branding agreements with reputed multinational firms such as Ben & Jerry's and 7-Eleven.

Yahoo! contended that it was clear from Sarda's use of an identical mark that it was attempting to sell its inferior-quality product using Yahoo!'s international reputation and goodwill. The result, argued Yahoo!, would be irreparable damage to both.

Sarda did not respond to Yahoo!'s complaint and did not appear at the trial.

Accordingly, Justice Manmohan Sarin issued an interim injunction in favour of Yahoo!, stating that it was clear that Sarda wanted to pass off its tea as belonging to Yahoo! in order to cash in on Yahoo!'s goodwill and reputation. He also accepted that such illegal activity would result in the dilution of the YAHOO mark.

Pravin Anand, Anand & Anand, New Delhi

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