Trademark

A Distinct IP Domain for India?


When a Scandinavian colleague of mine recently opined that Indian IP was “interesting”, I thought it a gross understatement and a rather mild label. For Indian IP is not just interesting: it is highly entertaining, exotic, spicy, quirky, you name it! With each species of IP that we touch upon, we somehow manage to carve out a distinct identity and draw international attention.
Think patents and you have the mysterious section 3(d) that continues to be mired in controversy. With copyrights, we have version recordings and the like. And if the copyright amendment bill finally goes through, we’ll have some unique royalty sharing provisions to contend with…clearly, Indian IP lawyers are blessed with enough intellectual excitement, thanks to these distinctively desi provisions.

The recent addition to the basket is from a rather under-theorised and under-discussed IP species, namely “domain names” (which many see as a subset of “trademark” law). Amlan had already blogged on this curious decision from the Delhi High Court that effectively forced a certain Stephen Koenig to part with his registration of the domain name “internet.in”.

The “internet.in” decision

The courts’ reasoning was that since the complainant had a registered trademark covering the term “internet” and Koenig had no such trademark registration, he ought to be divested of it.

What this decision does is to effectively plunge the threshold for retrieving a domain name to abysmally low levels. Put another way, it converts India’s domain name dispute resolution policy (INDRP) into one of the most “liberal” and trademark owner friendly ones ever known. Let me explain:

Most domain name dispute resolution policies embody norms that are quite distinct from standard trademark jurisprudence in that they redress only a select category of cases that go by the wide epithet of “abusive registrations” i.e. cases representing an intentional use of a domain name with a view to profit from its “trademarked” status, to the detriment of the trademark owner.

WIPO’s pioneering UDRP (uniform domain name dispute resolution policy) set the benchmark in this regard and since then, several national policies have followed suit and crafted abusive registration policies on similar grounds. At its core, a policy meant to curb abusive registrations mandates that the trademark owner must necessarily prove that:

1. the registered domain name embodies a mark, over which he/she has a valid trademark right.
2. the domain name registrant has no legitimate interest in that name.
3. the name has been registered and is being used in bad faith

These 3 pre-requisites are spelt out in ICANN’s UDRP (in paragraph 4 (a)) and explicated in innumerable decisions that have issued forth since the advent of this policy in 1999. While the precise import of each of these criteria is subject to intense debate (eg. binary vs unitary concept of abusive registration), it is widely accepted that all of the 3 pre-requisites have to be shown to exist before a trademark owner can retrieve his/her name from an alleged cyber-squatter.

A trademark dispute policy on the other hand merely requires (for the most part) that the trademark owner establish that he/she has better rights in the name than does the alleged infringer. In other words, in many jurisdictions, the infringer may have no prior notice of the registered trademark, and may have adopted it innocently, but could still be prevented from using it. However, in a domain name dispute, the innocent adoption of a name for a legitimate purpose would create a valid defence in favour of the domain name registrant.

The Delhi High Court has effectively eviscerated this distinction between standard trademark disputes and domain name disputes by holding that all of the 3 pre-requisites need not be shown to exist. Rather any one or more of the criteria is sufficient. Before I extract the courts’ ruling in this regard, it is important to reproduce both the policies here:

UDRP

Para 4(a) of the UDRP reads thus:

“You (the domain name registrant) are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which
the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

INDRP

Para 4 of the INDRP which corresponds to Para 4 (a) of the UDRP reads as under:

“Any person who considers that a registered domain name conflicts with his legitimate rights or interests may file a complaint to the .IN Registry on the following premises:

(i) the Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;

(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) the Registrant’s domain name has been registered or is being used in bad faith.”

And now for the courts’ problematic extract which effectively places India’s policy on a separate pedestal than most other domain name dispute resolution policies, most notably that of WIPO’s UDRP. In the courts words:

“Para 4 INDRP is different from Para 4 (a) UNDRP in a significant way. While each of the sub-paras (i) to (iii) of Para 4 (a) of UNDRP are required to be ‘proved’ by the complainant cumulatively, as far as Para 4 INDRP is concerned the complainant can file a complaint on the ‘premises’ outlined in sub-paras (i) to (iii) of Para 4. There is no requirement that “each of the three elements” are shown to exist. If this is understood in light of the fact that the conjoint “and” is missing at the end of sub-para (i) of Para 4 INDRP, then it is possible to interpret Para 4 INDRP to mean that a complainant can succeed if he proves that the ground in sub-para (i) exists by itself. Alternatively he can succeed if he proves that the grounds in sub-paras (ii) and (iii) exist.”

The net impact of the courts’ jurisprudence is this:

Imagine a doctor who registers the domain name “apple.in” to showcase her personal orchard where she grows apples and dispenses them for therapeutic properties (in keeping with the age old wisdom that an “an apple a day keeps the doctor away”). Under this ruling, Apple computers, the makers of ipad, ipod and several other i-candy gizmos can wrest away the domain from the poor doctor on the ground that the company has a trademark registration in its favour (and the doctor does not). It does not matter that the good doctor has a legitimate interest in the name or that she has not registered it or used it in bad faith.

The result is truly astounding and once again puts India on the IP map, for having struck a different chord, albeit a highly discordant one!

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

7 comments.

  1. AvatarAnonymous

    Shamnad, A very good study particularly with respect to the anomaly that you have shown with respect to the domain name apple.in. Similar examples can be quoted.
    I remember having faced with an opposition from HUGO BOSS (registered in class: 25) whereby I wanted to register BIG BOSS (label with device of a man wearing a hat) in Class: 32 (Hugo Boss is not into any goods falling in class: 32). The argument was that the mark/word BOSS has become a WELL KNOWN trade mark and that no one can use word BOSS for any goods/services whatsoever. That means HUGO BOSS has become the BOSS of everyone for whole of the mankind till infinity.

    Reply
  2. Avatarrajeev

    Dr. Shammand Basheer
    Nice to see the comparison between UDRP and INDRP. The basic difference is ‘AND’ at the statements (i) in both the policies. Pondering over your post made me recall that not having an ‘AND’ at the end of INDRP(i) statement implies an ‘OR’. This is akin to BOOLEAN algebra in Digital electronics wherein replacing an ‘AND’ gate with an ‘OR’ gate leads to vastly different electronic results.
    While you sympathized with the doctor growing apples, I smell a big business opportunity specially for legal angels. Put it this way if I have two domain registered (a) ‘SPICY IN’ and (b) ‘SPICED OUT’.
    Under UDRP I will have no chance protecting my Domain ‘SPICY IN’ from ‘SPICY IP ‘challenge. And ‘SPICY OUT’ will be safe because of lack of similarity.
    But under INDRP by virtue of statement (i) ‘SPICY IN’ is challengeable from ‘SPICY IP’ on similar name basis only. No need to see the applicability of statement (ii) and (iii).
    And ‘SPICED OUT’ . With great difference in domain name from ‘SPICY IP’ it will not be challenged under similar name statement. But because of an implied ‘OR’ therein ‘SPICY OUT’ will still be challenged on account of statement (ii) and (iii). ‘SPICY IP’ can go on to challenge that I have no legitimate interest in the domain ‘SPICY OUT’ and is using it in bad faith even though there is no confusing similarity between the names. It means the locus standi of ‘SPICY IP’ is not supposed to existential.
    And extrapolating all dissimilar domain names are now open to challenge and at mercy of all active legal eagles. And at the cost of being called prejudiced I say this is not to make INDRP ‘interesting’ but was perhaps ‘intentional’ to generate a prospective business opportunity. You never know how Indian ingenuity works.
    R.K.Jain
    Patent Agent

    Reply
  3. AvatarAnonymous

    As anonymous @9.15AM has correctly said, now Mr. R. K. Jain has supported it with a very good example. Similarly many similar and even worse situations can be thought of. The opinion of Dr. Shamnad, the initiator will be very useful.

    Reply
  4. AvatarShamnad Basheer

    Thanks for all your comments. Anon: I hope you managed to win that opposition. i wonder if they also attempted to restrain the makers of bigg boss from using boss in their name?

    Dear Mr Jain: you’re absolutely right…if what the judge states is true, i need to show only bad faith/lack of legit interest. however, not sure what happens to the name then. is it meant to be cancelled. or transferred? since the person seeking the divestiture is also not the trademark owner over that specific name, no? interesting quandary….as for spicy ip and UDRP, even under the UDRP, if you spicy for curry, you’re entitled to keep it….

    Reply
  5. AvatarAnonymous

    Dr. Shamnad,
    It may be interest to you that the order in the opposition is yet to be pronounced after reserving it more than 7 years ago. No suit has been filed to restrain the use of the word BOSS. However, we got the mark registered by filing another application. I was only showing the over zealousness of the opposing party. In fact MNCs have gone too far and many innocent traders have been restrained for many marks which should not have been restrained. This is because of the mischievous language of Section 29(4) of TM Act, 1999. This section is creating havoc.
    You are very liberal when you say that if Rajeev spices for curry, he is entitled to keep it.

    Reply
  6. Avatarrajeev

    Dr Basheer
    Thanks for offer of spicy for curry. but no matter what curry I make I wont be able to make it as spicy as can do it.
    R.K.Jain
    patent agent

    Reply
  7. AvatarShamnad Basheer

    Thanks for the compliment RKJ,

    Thankfully, the UDRP does not discriminate based on the quality of the curry…so long as you use the domain to showcase your curry, you’re safe…none of us can snatch the name away from you….so curry on and do feel free to register….

    Reply

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