As shaadi season is underway (albeit less festive this year), we bring you another development in the business of the Big Fat Indian Wedding; the judgement in People Interactive (India) Pvt. Ltd. v Vivek Pahwa & Ors. This judgement pertains to a passing off dispute between shaadi.com and secondshaadi.com. It makes some rather astute observations about the nature and level of protection granted to domain names, reading down the level of protection granted by earlier cases, such as Yahoo Inc. v Akash Arora & Anr., and Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd.
Facts and Contentions
The Plaintiff, shaadi.com, sought to restrain the defendants, secondshaadi.com from using the said domain name, claiming that the defendants were passing off their website as that of the plaintiff.
The plaintiff has been using the shaadi.com mark since 2001 in relation to online matrimonial services and had 20 million registered users. It was thus argued that it had acquired substantial goodwill and repute. The defendants had been using the mark for about 8 years and catered to a much more select group. However, it had gained substantial popularity within its segment.
In 2007, the plaintiff had sent the defendant a “cease and desist” notice which the defendant refused to comply with. After six years, in 2013, the plaintiff sent another demand. The defendant replied, refuting the plaintiff’s claim and contending that the words “shaadi” and “shadi” are generic.
There were two issues here, first, the matter of acquisition of a ‘secondary meaning’ of the plaintiff’s mark; and, second, whether a domain name always assumes the features of a trade mark.
The plaintiff contended that even though the mark “shaadi” is not inherently distinctive, it had acquired a secondary meaning with extensive and continuous usage. Thus, the defendant’s adoption of domain name was not bona fide and meant merely to free ride on the plaintiff’s success. Moreover, it was alleged that the defendants used meta tags to drive traffic to them from the plaintiff’s site as a Google search of the plaintiff’s mark also listed the defendants, causing further confusion to customers.
The defendants contended that the term “shaadi” is generic and since “shaadi.com” is a non-unique combination of words that merely indicates function. They argued that the situation was entirely covered by sections 30(2)(a) and 35 of the Trade Marks Act 1999. Section 30(2)(a) lays down that that a registered mark is not infringed where the use indicates the characteristics of the goods and services. Section 35 provides that a registered user may not interfere with the use by any person of any bona fide description of the character of quality of his goods or services. Further, the defendants raised the claim of acquiescence, as the plaintiffs took action a full six years after the initial correspondence.
The Court’s Decision and Reasoning
The court ruled in favour of the defendants and held that the word “shaadi” is generic and commonly descriptive as it meant matrimony or marriage. The court held that generic or commonly descriptive words such as “necktie”, “plastic”, “soda” etc. are used to name or describe the goods in question and could never become trade marks on their own as they cannot acquire distinctiveness or indicate origin. It further remarked that words of the common tongue are not allowed to be monopolized. Relying on the Indchemie case (read our previous post here), the court held that acquiring a secondary meaning would necessarily imply that the word has transcended its original connotation and references exclusively in the public mind the particular holder of the mark; the primary meaning must have been lost. This was not the case here, said the court, as the only primary meaning was the destination on the internet.
The court considered “shaadi.com” taken as a whole, and found that the real difficulty was that shaadi.com is an address. It observed that a domain name was merely an internet equivalent of a terrestrial address; a place where the registrant stores and displays his information, or offers services. It is technically, a mnemonic, an easy to recall replacement for the complex IP address of the website. And since physical mailing addresses, such as “10, Downing Street” could never be trademarks on their own, the same went for domain names.
Here, it disagreed with the Delhi High Court judgement of Yahoo Inc. v Akash Arora & Anr., which held that a domain name is never merely an address and is entitled to equal protection as trademark. It stated that the domain name is primarily an address, which may, in addition enjoy protection as a mark. The domain names of, for eg. Kodak and Xerox enjoy full protection as these are fanciful words and their use as a domain name does not erode their trademark status. However, the reverse was not true; every domain name does not receive the full protection of a trade mark as this would lead to a monopoly over words of common parlance, such as investment, grocery etc.
Thus, the court rejected the plaintiff’s argument and observed that even if people associate “shaadi.com” with the plaintiff, the same is not true for the word “shaadi”. The defendant’s arguments under sections 30(2) and 35 of the Act were also accepted by the court. Both shaadi.com and secondshaadi.com were held to be descriptive marks, which commonly describe the nature of their services.
In addition, Justice Patel referred to an injunction he himself granted to shaadi.com, against the proprietors of getshaadi.com. He observed that the factual matric in both the cases is different, and in that case, the attempts of the defendants therein were deceitful as they tried to divert traffic from the plaintiff’s site to theirs. Similarly, he also previously granted interim reliefs to the plaintiff against ShaadiHiShaadi.com, as they were using a tagline far too similar to the plaintiff’s and used a code to divert traffic from the plaintiff’s website. Read our post on this order here. He distinguished these two cases from the one at hand, and held that they did not set any precedent as in both those cases, the plaintiff’s claims were undefended.
With respect to the claim of acquiescence, the court held that this was not a case of mere delay. As per the plaint, the plaintiffs did not initiate any action against the defendants earlier as the use of the offending mark was insignificant and minimal at the time, and did not affect the business of the plaintiff. This contention was rejected by the court, on the ground that the trademark holder who sits by idly as the alleged infringement takes place, cannot later claim exclusivity if he feels threatened by his rivals.