Refusal to Participate in INDRP Proceedings may be inferred as Lack of legitimate Interest

In the matter of Ziprecruiter Inc. v. Manish Rawat [INDRP/1261], the Sole Arbitrator,  Harshvardhan Sancheti, vide Order dated October 5, 2020, transferred the domain name <ziprecruiters.in> to the Complainant, under the .IN Domain Name Dispute Resolution Policy (INDRP)

The Complainant claimed to be using the mark ZIPRECRUITER for providing recruitment services internationally. Although the mark was not registered in India, the Complainant claimed to be the owner of the domain names <ziprecruiter.in> and <ziprecruiter.co.in>. The Complainant filed a complaint against the domain registration of <ziprecruiters.in> by the Respondent.  The Complainant contended that mere addition of the letter “s” to  the disputed domain name was sufficient to make a finding of confusing similarity with the Complainant’s mark. The Complainant also stated that the Respondent was unable to meet the criteria set for establishing legitimate interest and lack of bad faith. The Respondent declined to participate in the instant INDRP proceeding.

In the absence of evidence to show that the Respondent intended to sell the disputed domain name or prior pattern of such conduct, the Arbitrator was not entirely convinced that the registration of the disputed domain name was in bad faith. The Arbitrator expressed that if a mark is not registered in India, it does not necessarily foreclose an Indian business from using a similar mark. Further, commenting upon the Complainant’s mark, the Arbitrator noted that the mark comprised of common English words “ZIP” and “RECRUITER” and therefore stated, “Companies that choose to incorporate as common English words should be aware that such a choice does not license them to colonize the English language.” 

Notwithstanding above, the Arbitrator took a note of the fact that the Respondent had failed to participate in the instant INDRP proceeding. The Arbitrator stated “The Respondent has not participated in these proceedings, and produced no evidence that it has any legitimate interest with the domain name ZIPRECRUITERS whatsoever. As such, the inference is overwhelming that it was simply engaged in cyber-squatting and has decided to abandon the domain name in the face of this action.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Generic Marks not Protectable as Trademark

In Delhivery Private Limited v. Treasure Vase Ventures Private Limited [CS (COMM) 217/2020, I.As. 5109/2020, 6523/2020 and 6572/2020], a Single Judge [V. Kameswar Rao, J.] of the High Court of Delhi vide an order dated October 12, 2020, allowed the Defendant’s prayer by vacating its earlier ex-parte interim order dated July 03, 2020, injuncting the Defendant from using the mark DELIVERE/ 

The Plaintiff alleged deceptive similarity of the Defendant’s mark

with its registered mark ‘DELHIVERY’. The Defendant argued, inter alia, that the Plaintiff’s mark is descriptive to the delivery business and a commonly used term in delivery trade. The Defendant placed reliance on various third-party registrations and use to substantiate its argument. The Plaintiff contended that the mark ‘DELHIVERY’ is a combination of two words ‘DELHI’ and ‘VERY’ and that it does not claim any right over the word ‘delivery’ used in a generic sense. The Plaintiff also contended that the mark ‘DELHIVERY’ at best can be termed as ‘Suggestive’.

While concluding the Plaintiff’s mark ‘DELHIVERY’ to be a phonetically a generic word, the court held that “The position of law is well settled that a generic word cannot be registered, that is, a generic word cannot be appropriated by one party to the exclusion of others. If the registrations are wrongly granted when applied for in respect of a completely generic expression, the Court cannot ignore the generic nature of marks and confer monopoly on the same in favour of any party.” Further, denying the Plaintiff’s plea of ‘DELHIVERY’ being a suggestive mark the court held that, “the mark which is phonetically similar to the English word ‘delivery’ do not require any imagination, thought and perception, more so for delivery services….in the case in hand, the mark ‘DELHIVERY’ is immediately connectable to the delivery services and cannot be termed as a suggestive mark.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Export From India Constitutes Use Of Trademark Irrespective Of Commercial Sale In India

In the matter of UFO Contemporary, Inc. v. Creative Kids Wear (India) Pvt. Ltd. & Ors. [CS (Comm) 375/2020], a Single Judge [V. Kameswar Rao, J.] of the High Court of Delhi vide an order dated November 23, 2020, granted an interim injunction against the Defendants from using the mark   or any other mark deceptively similar to Plaintiff’s  mark.

The Plaintiff contended that it has adopted the mark  “UFO” for clothing in the year 1968 and is also the registered proprietor of the mark in Class 25. It was submitted that the Defendants were licensees for the Plaintiff, for manufacturing clothing under the trademark “UFO” in India, from 1970 to 2011. 

In January 2019, on discovering online sale of the Defendant’s products under the mark (hereinafter referred to as impugned mark), which incorporated the Plaintiff’s mark, the Plaintiff sent the Defendants a cease and desist letter. The Defendants agreed to stop using the mark. However, despite repetitive assurances, the Defendants continued to use the impugned mark, which prompted the present suit for infringement and passing off.

The Defendants, on the other hand, argued that the mark is merely an abbreviation for the term “Under Fourteen Only”. It was also contended that the Plaintiff has no locus to file the present suit for injunction, as products under its word mark UFO do not have any commercial presence in the Indian market. It was argued that the Plaintiff’s products are manufactured for the purpose of export to various countries such as Japan, USA, Canada, etc., and not for sale in India.

 The court accepted the Plaintiff’s plea that the adoption of impugned mark by the Defendants is malafide and held that“… the fact that the clothes / garments are being manufactured by putting trademark UFO and exported outside India, the parameters of Section 56 are satisfied inasmuch as there is a Brand in India of the trade mark although goods to be exported from India is deemed to constitute the use of the trade mark in relation to goods. So, it is inconsequential that there is no commercial sale of goods of the plaintiff in India.” 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Ban On Firecrackers Is Not Violative Of The Fundamental Right To Carry On Business

In Ram Babu Dusad and Ors. v. State of Rajasthan and Anr. [D.B. Civil Writ Petition No. 13327/2020] and Rajasthan Fire Work Dealers And Manufacturers Association and Anr. v. State of Rajasthan & Anr. [D.B. Civil Writ Petition No. 13240/2020], a Division Bench [Pankaj Bhandari, J. and Chandra Kumar Songara, J.] of the High Court of Rajasthan, vide its order dated November 10, 2020, dismissed the Petitioners’ writ petitions seeking quashing of ban on sale of firecrackers. 

The Petitioners were aggrieved by prohibition on issuance of licenses for manufacture and sale of fireworks and imposition of a complete ban on sale of fireworks in Rajasthan till December 12, 2020 and approached the Court.

The Petitioners contended that the ban was in contravention of Article 19(1)(g) of The Constitution of India (“the Constitution”) which guarantees the fundamental right to practise any profession, or to carry on any occupation, trade or business. The Petitioners argued that the State Government does not have the right to completely ban a profession, and at most, it can only impose reasonable restrictions under Article 19(6) of the Constitution. The Petitioners argued that this could have been done by allowing use of eco-friendly crackers. The Petitioners also pointed out that a complete ban on firecrackers would affect the livelihood of 20 lakh workers engaged in the manufacture of firecrackers. The Petitioners further argued that they had already placed orders for firecrackers based on the reasonable legitimate expectation that licenses would be issued. 

Rejecting the Petitioners’ contentions, the Court observed that the Petitioners’ expectations could not be a basis for quashing the government’s orders or imposing reasonable restrictions. The Court noted that before issuing its directions, the State government had duly considered the representation of experts as per which use of firecrackers could seriously affect patients with asthma, COVID-19 and chronic obstructive pulmonary disease. 

The court held that the Government’s decision to ban firecrackers is not violative of the fundamental rights of the Petitioners. The Court observed, “Right to life embodies a constitutional value of supreme importance and stands on a higher pedestal than the right to practice any profession, as right to carry any business comes with a rider and Clause (6) of Article 19 permits the Government to impose reasonable restrictions. Pollution is bound to have an effect on the patients who are already suffering from Covid-19 and may also result in spreading of Covid-19 from asymptomatic patients.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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“Reasonable Restrictions” On Trade Can be Imposed As A Relief In An IP Infringement Suit

 In Refread Solutions Private Limited v. Scientific EResource Productions & Ors. [TM No. 20/2018], the Additional District Judge of the Central Tiz Hazari Court, Delhi, vide an order dated October 13, 2020, imposed punitive damages amounting to Rs. 5 lakh on the Defendant, along with a 3 years’ restriction on the Defendant’s trading activities in India.

 The Plaintiff claimed to be engaged in the business of providing digital/online libraries. Towards this, the Plaintiff claimed to have launched its web-based software product under the name “Refread”.

 As per the Plaintiff, the Defendants, in 2017, had approached the Plaintiff to inter alia represent the Plaintiff before the end client/customers. Thereafter, as claimed, the Plaintiff and one of the Defendants entered into an Agency Representation Agreement. In October 2017, the Plantiff claims to have been made aware of the Defendant promoting a product under “Read Smart Digital” in an international book fair. On investigating further, the Plaintiff claims to have found that the Defendant had duplicated and copied content from the Plaintiff’s website/product under “Refread”. The Plaintiff instituted the present suit inter alia for breach of Agreement and copyright infringement. The proceedings took place ex parte.

After a thorough consideration of the evidence placed on record by the Plaintiff, the Court decreed the suit in favour of the Plaintiff while awarding Rs. 5 lakhs as punitive damages. On the Plaintiff’s prayer vis-à-vis restraining the Defendants from engaging in any business similar to theirs, the Court held “…as per Section 27 Indian Contract Act reasonable restrictions for a reasonable period of time can be imposed upon the defendant… So far as imposition of restriction of 3 years is concerned such restriction seems to be reasonable…such restrictions…should be according to the territorial jurisdiction of the court…so far as imposition of restriction for a period of three years upon the defendant is concerned, it would be appropriate that it should be extended only to the Indian market.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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