Tata Sons Limited v. Mr. Manu Kosuri & Ors.
2001 PTC 432 (Del)
• The Plaintiff was the Registered Proprietor of the trademark ‘TATA’ since 1917 and is one of the oldest and largest business conglomerates in India and its reputation spilled globally.
• The Defendants’ misappropriated the Plaintiff’s trademark TATA as part of a series of domain names that have been registered by them incorporating trademark TATA. The domain names involved were jrdtata.com, ratantata.com, tatahoneywell.com, tatayodogawa.com, tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestide.com, tatatimken.com etc.
• Plaintiff instituted a suit seeking permanent injunction, restraining the defendants from passing off, dilution of trademarks and for rendition of accounts, damages, delivery-up, etc.
• As the Defendants were duly served but did not enter appearance, they were proceeded ex-parte.
• The Plaintiff relied upon the judgments reported as Yahoo Inc! v. Akash Arora; 1999 PTC 201; British Telecom Plc. v. One in a Million 1999 FSR 1 & Rediff Communications Ltd. v. Cyberbooth; AIR 2000 Bombay 27 to submit that the trademark law applies with equal force on the Internet as it does in the physical world.
• The entire series of domain names that have been registered by the Defendants incorporate the trademark TATA of the Plaintiff and the Defendants cannot claim any rights in the trademark TATA as the Plaintiff has not authorized it’s use by the Defendants in any manner.
• The Defendant’s use of the impugned mark is aimed at diverting the business of the Plaintiff and would irreparably damage the reputation and goodwill of the Plaintiff.
The court relied upon Yahoo Inc! v. Akash Arora; 1999 PTC 201 where it was held that considering the vast import of Internet and its user, several Internet users are not sophisticated enough to distinguish between the domain names of the parties. It was also held that Courts should take a strict view of copying as the potentiality of the harm is far greater because of the easy access and reach by any one from every corner of the globe.
A name which would by reason of similarly to the name of another, inherently leads to passing off. Internet domain names are of importance and can be a valuable corporate asset and such domain name is more than an Internet address and is entitled to protection in equal manner as a trade mark. With the advancement and progress in technology the services rendered by an Internet site have also to be recognized and accepted and are being given protection from passing off. It is a settled law that with the advent of modern technology particularly that relating to cyberspace, domain names or Internet sites are entitled to protection as a trade mark because they are more than a mere address. The rendering of Internet services is also entitled to protection in the same way as goods and services are, and trade mark law applies to activities on Internet.
Resultantly, an order of permanent injunction was passed in favor of the Plaintiff and against the Defendants.
Author: Anjali Bisht, Law College, Dehradun