The internet has played an important role in the advancement of technology, and has had a pervasive impact on daily life and business transactions. With the advent of the internet began a transformation in the methods of buying, selling and advertising goods and services and in the exchange of information. As a byproduct of the non-conventional business methods offered by the internet, a host of legal issues arose which had no statutory provisions in India and were not previously dealt with by Indian courts. Violation of intellectual property rights was rampant as the internet provided a plethora of options for individuals and companies to indiscriminately upload copied and illegal content on their websites and interfaces without being liable for any legal action. This article seeks to examine the approach of the Indian Courts in dealing with the various issues arising out of internet-related disputes.
Cases of infringement or violation of rights in trademark and copyright are most prominent among the intellectual property violations on the internet. Trademark violations on the internet have been seen, inter alia, in the use of identical or similar domain names and metatags. The decision of the Supreme Court of India in the matter of Satyam Infoway Ltd v. Sifynet Solutions Pvt Ltd (2004) was a landmark judgment of the Apex Court, as it applied the law of trademark and passing off to domain names even when the rival businesses were of different nature. The Supreme Court held that “since use of same or similar domain name may lead to diversion of users which could result from such users mistakenly accessing one domain name instead of another, a domain name may have all the characteristics of a trade mark and could found an action for passing off.”
An interesting domain name dispute between Tata Sons Limited and Bodacious Tatas involved an issue of infringement of the trade mark “Tata” by use in the form of meta tags, which are tags that are used by search engines to index a web page so that the page is cited in the search results of any search containing a particular word on the website or domain name. In the Tata matter, the Defendant used the well-known trading name and mark “Tata” in his domain name. The impugned website of the Defendant featured at the top in the internet search results for the word tata, which showed that the word was also used by the Defendant as a meta tag. The Delhi High Court restrained the Defendant from using the mark “Tata” not only in the domain name but also as a meta tag.
Newer platforms for trademark infringement on the internet include the social media and social networking websites. This issue was dealt with by the Delhi High Court in the matter of Mattel Inc and Ors v. Jayant Agarwalla and Ors (2008), wherein the Defendants had launched an online version of the popular board game Scrabble under the name and mark “Scrabulous” as an application on the social networking website Facebook. The online version was also promoted through the Defendant’s websites, www.scrabulous.com, www.scrabulous.info and www.scrabulous.org. The Plaintiff argued that apart from adopting a deceptive mark, the Defendant also infringed the Plaintiffs’ mark by using the mark in meta tags. The Plaintiff claimed that use of the deceptively similar mark “Scrabulous” clearly amounted to infringement and passing off, since the Defendant, through such tags, diverted internet traffic away from the Plaintiff’s websites and misled the public that the Defendant’s products were associated with the Plaintiff. The Delhi High Court in the said case restrained the Defendant from infringing the Plaintiff’s trademark by using it in any manner including as a part of a domain name, hyperlink, meta tag, advertisement, or in any other form of use.
However in most cases of infringement on the internet, it has been very difficult to determine the jurisdiction of Courts. The Delhi High Court has, however, attempted to resolve this issue in the case of (India TV) Independent News Service Pvt Limited v. India Broadcast Live LLC and Ors (2007) where it was held that “the mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely 'passive' but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different.”
Subsequently, the issue was also examined by the Delhi High Court in the case of Banyan Tree Holding (P) Limited v. A Murali Krishna Reddy and Anr (2009), where the Court had held that “for the purposes of a passing off action, or an infringement action where the Plaintiff is not carrying on business within the jurisdiction of a court, in order to satisfy that the court has jurisdiction to entertain the suit, the Plaintiff would have to prima facie show that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.”
These court decisions, which have set forth guidelines to determine the territorial jurisdiction of courts in internetrelated disputes, have helped litigants take action in India against websites and other internet media hosting infringing content. However there is still a need to create awareness and educate policy makers and the judiciary about the diverse forms of infringement of intellectual property rights on the internet.
Krishna & Saurastri
K.K. Chambers, 1st Floor,
Sir P.T. Marg, Fort,
Mumbai 400 001, India
T: +91 22 2200 6322
F: +91 22 2200 6326
E: info@krishnaandsaurastri.com
W: www.krishnaandsaurastri.com
About the Author
.jpg)
Kavita Mundkur is an associate attorney at Krishna & Saurastri. Her practice areas include trademark prosecution and oppositions, copyright, design, domain names, technology transfer and IP licensing. She also deals with matters relating to infringement, passing off, counterfeiting and due diligence. She has worked on projects relating to company mergers and acquisitions, private equity, project finance and foreign investment. Mundkur holds a Bachelor’s degree in law from Government Law College, Mumbai, and a Bachelor’s degree in commerce from Narsee Monjee College of Commerce & Economics. She also holds a diploma in cyber laws from the Asian School of Cyber Laws, Pune.
