Author: Aditi Roy Chowdhury
It is often seen that domain names made up of common and descriptive words are the most sought after and hence most valuable. According to Business Insider, <cameras.com> was sold for $1,500,000, <ticket.com> for $1,525,000, <datarecovery.com> for $1,659,000, <auction.com> for $1,700,000, etc. Since it is an established principle that domain names are regarded as trademarks in India, the question then arises – can domain names made up of common and descriptive words be granted protection as trademarks as well?
Common and Descriptive Marks vis-à-vis Trade Marks Act, 1999
Section 9(1) of the Trade Marks Act, 1999 (“Act”) deals with marks comprising of common and descriptive words, in the sense that it states that marks which are devoid of any distinctive character or which consist exclusively of marks or indications which denote the kind, quality, quantity, intended purpose, etc. are not to be granted registration. The provision also provides an exception to the above rule, i.e., such marks can be granted registration if it has acquired a distinctive character as a result of use or is a well-known trade mark.
Further, Section 32 of the Act provides that a mark registered in contravention of Section 9(1) can be maintained on the Register, if it has acquired distinctiveness on account of use after its registration and before commencement of any legal proceedings questioning its validity.
Judicial Precedents in India
Indian courts and tribunals have adopted varied stances while dealing with the issue of enforceability and registrability of common and descriptive words in domain names. Some judicial pronouncements state that domain names containing common or descriptive words are not suitable for protection as a trademark unless they successfully meet the threshold of reputation and acquired distinctiveness. On the other hand, there have been judicial decisions wherein the courts have held that domain names made up of combinations of common or descriptive words can be granted trademark protection. For instance, in the case of Indian TV Independent News Services Pvt Ltd v. India Broadcast Live LLC [2007 (35) PTC 177 Del], the combination of ordinary words ‘India’ and ‘tv’ in the domain name <indiatvnews.com> was observed to be unique by a Single Judge Bench [Sanjay Kishan Kaul, J.] of the High Court of Delhi.
In 2002, in the case of Info Edge (India) Pvt. Ltd. v. Shailesh Gupta [(2002) ILR 1 Delhi 220], a Single Judge Bench [Mukundakam Sharma, J.] of the High Court of Delhi restrained the defendant from using the mark/domain name “Naukari.com” on account of the plaintiff’s mark “Naukri.com”. While acknowledging the distinctiveness acquired by the plaintiff’s mark “Naukri.com”, the High Court of Delhi also held the mark to be inherently distinctive on account of use of a Hindi word in the domain name. The High Court of Delhi stated “There is definitely peculiarity in the aforesaid domain as the plaintiff has adopted a Hindi word with English script. Thus, a distinctiveness could be attributed to the said domain name of the plaintiff.”
However, similar relief was not granted to the owners of other domain names with Hindi words. For instance, in the case of Manish Vij and Ors. v. Indra Chugh and Ors. [AIR 2002 Del 243], a Single Judge Bench [S.K. Agarwal, J.] of the High Court of Delhi did not enforce the plaintiff’s trademark “kabadibazaar.com” against the defendant’s similar domain name “kabaribazaar.com”. Even in the case of People Interactive (India) Pvt. Ltd. v. Vivek Pahwa & Ors. [2016 (68) PTC 225 (Bom)], a Single Judge Bench [G.S. Patel, J.] of the High Court of Bombay refused to enforce rights in the mark “shaadi.com” on account of lack of distinctiveness and descriptiveness of the mark.
Domain names with common and descriptive words are particularly useful for businesses and have been granted trademark protection in India. However, these registrations could be susceptible to cancellation owing to lack of distinctive character and descriptiveness (in absence of sufficient use of the mark to show acquired distinctiveness). Judicial precedents make it clear that enforceability of such descriptive domain names is weak as well. It seems that extensive use of the domain names and consequently acquired distinctiveness, goodwill and reputation are the best means to obtain as well as maintain registration of domain name names comprised of common and descriptive words under the Trade Marks Act, 1999.
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