In this post, I shall discuss the Madras High Court judgment dated 28th March, 2011 which decided on an appeal directed against Single Bench Order. The judgment is available here.
Facts
The Appellant/Plaintiff Malar Network (P) Ltd., with an intention to engage in the business of Telecommunications, T.V. Channels, websites and related fields, registered the domain names “MALARTV.COM” and “MALARTV.IN” in 2005 and 2007 respectively under Class 38. The appellant, however, did not put them into use in the public domain. In the meanwhile, the Respondent registered “MALAR.TV” as its domain name with ICANN in 2009 and started using the mark.
The Appellant / Plaintiff sought interim injunction restraining the Respondent / Defendant from passing the products and services off as “MALAR TV” or “MALAR.TV” or “MALARTV.IN” or “MALARTV.COM”. The Single Bench declined to grant injunction on the ground that the defendant was the prior user of the trade name “MALAR.TV”. However, the defendant was asked to modify his website as “ARUN’S MALAR.TV”. Aggrieved by the above orders of the learned single Judge, the Plaintiff filed the instant appeals.
Arguments of Appellant
It was contended that the respondent infringed the trademark “MALAR TV” by using “MALAR.TV” with a similar emblem in the internet. The respondent did not have the right to infringe the trademark of the appellant on the ground that he had been using the mark “MALAR.TV” since 2009. It was also submitted that prefixing “ARUN’S” before “MALAR.TV” would not change the character of the said usage.
Arguments of respondent
The defendant contended that the appellant had not used the domain names “MALARTV.IN” and “MALARTV.COM” in the public domain. Since they were never placed in public domain, the right over the trademark did not accrue to the appellant. Further, as he was the prior user of the domain name “MALAR.TV” and had been in business since May, 2009, injunction should not be granted. Further, exclusivity could not be claimed over “Malar” & “Television” which were generic words in print and electronic media. The respondent’s domain name had a dot in between “MALAR” and “TV” whereas the Appellant’s domain name had a dot between “MALAR TV” and “COM”, “MALAR TV” and “IN”. Furthermore, pursuant to the orders of the learned single Judge, the Respondent added the word “ARUN’S” to his website “MALAR.TV”. Therefore, in appearance, the present domain name of the Respondent was quite different from its earlier appearance when it was just “MALAR.TV”
Judgment
It was held that any word, abbreviation or acronym which had become ‘publici juries’ could not be exclusively claimed by anyone. The Court held “MALAR” and “TV” to be generic terms. Further, it was held that a mere presence in the register would not prove that the mark had been used (citing Corn Products Refining Co. v. Shangrilla Food Products Ltd, AIR 1960 SC 142 (SC)) It was noted that the appellant did not commence any business under the name “MALAR TV”. Since the domain names “MALARTV.COM” & “MALARTV.IN” or trade name “MALAR TV” did not earn goodwill or reputation as a result of non-use, “passing off” could not be held against the respondent
Considering the aforesaid aspects, the Court refused to hold a prima facie case in favour of the Appellant / Plaintiff. Further, the Appellant had not commenced the business so as to sustain any loss either towards infringement or towards passing off. Therefore, the balance of convenience was held to be in favour of the Respondent. Further, in the absence of non-commencement of business, the issue of irreparable injury caused to the appellant did not arise. The High Court, therefore, upheld the Singh Bench Order directing the dismissal of applications and modification of “MALAR.TV” to “ARUN’S MALAR.TV” which was complied by the Respondent.
Some brief comments:
Firstly, from a legal perspective, is “ARUN’S MALAR.TV” different from “MALAR TV”? In Times Internet v. M/s Belize Domian Whois Service Ltd & Others, the Delhi High Court held that “indiatimes” which was the essential component of the domain name, was used by the defendant without any explanation. This could confuse an ordinary netizen and could result in associating defendant’s portal with that of the plaintiff company [covered here]. A prefix or suffix, addition or deletion of dot, plurality or singularity of a registered mark would not create a distinct mark. It was, however, pertinent to note that the instant order for modification was only an interim measure.
Secondly, while denying prima facie case for infringement, Court made an observation which was quite incoherent: “Since the class of people who are browsing internet as well as website are literate persons, who would not likely to be carried over the different names of the Appellant and Respondent, we are of the firm view that there is no prima – facie case for infringement.” Unfortunately, this observation was made without any reasoning whatsoever and evidently prejudicial to the interests of rapidly growing netizens. A reasoned approach would have been definitely appreciated.
Note: Trademark search shows that a rectification application has already been filed against “MALAR TV”.
I believe the judgment of the Court is correct in view of the facts and circumstances in this case. The appellant’s mere registration of the tradename and non-use of the name tilts the balance quite favorably towards the respondent’s side. This decision is fortified by reason that ‘malar’ and ‘tv’ are generic terms.
I agree that the non-use tilted the balance in favour of respondent.
But is “malar” actually a generic word?? Just because it is a common word, it doesnt mean that it should be a generic word..For instance, “Apple” is a commonly used word which acquired distinctiveness as far as computers, Ipods are concerned..
The instant judgment was only an interim judgment. So, we have to wait for the final judgment which shall be a conclusive determination of the issue.
Thanks Mathews, your response is quite convincing. Looking forward to the final judgment.
According to me the judgement given was proper when we look at the facts..I agree with the first comment..