Article
Domain Name Registrars and their role in domain name infringement suits
By Godhuli Nanda and Vaishali Joshi
The article in this issue of IPR Amicus analyses a recent decision of the Delhi High Court wherein the Court determined as to whether the Domain Name Registrars (Defendants) can be categorised as alleged infringers, by virtue of them offering, for registration, domain names that were similar to the Plaintiff’s registered trademarks. The Court in this Order refused to grant the prayer seeking issuance of an omnibus order restraining the Defendants from offering domain names containing the word ‘SNAPDEAL’. Yet, the Court held that the Defendants will not be granted the ‘safe harbour’ protection under Section 79 of the Information Technology Act, 2000 if they continue to provide alternate domain names, for commercial profits, which infringe the registered trademarks. According to the authors, the Order of the Court leaves a gap between its direction and the possible execution of said direction. In such a situation, the legislation imposing a statutory duty on the Defendants to make such modulations can be a viable path. They suggest that the Domain Name Registrars can also be directed to self-regulate themselves and make such modulations or create a profile for an ombudsman to resolve such issues...
Ratio decidendi
- Copyrights – Mere similarities will not come under the purview of copyright – Kerala High Court
- Trademarks – Phonetic identity is an important index of similarity; Tests of phonetic, visual, and structural similarity are disjunctive – Delhi High Court
- Patents revocation application – No limitation is prescribed – Limitation under the Limitation Act, 1963 is not applicable – Delhi High Court
- Designs – Reliance on print-outs from e-commerce website to prove prior publication – Mere speculation that images could have been changed later, not material – Delhi High Court
- Trademarks – Use of mark in Ads Program prima facie amounts to infringement and passing of – High Court notes that the search engine was encashing goodwill of the trademark owner – Delhi High Court
News Nuggets
- ‘LIMCEE’ and ‘LICMEE’ are almost identical to each other – Defendant directed to pay litigation cost
- Arcuate stitching design on Levi’s jeans is a ‘well known mark’
- Confusion between the marks ‘Blue Heaven’ and ‘Marc Heaven’
- Trademarks – Nominative fair use is permissible
- No patent for method for preparation of tablet comprising Tofogliflozin from powder mixture by direct compression
