ii. The burden of proof in general rests on the defendant to persuade the court to grant a stay and once the court is satisfied that there is another available forum, which is prima facie the appropriate forum for the trial of the action the burden will then shift to the plaintiff to show special circumstances by reason of which justice requires that the trial should nevertheless take place in the forum state.
iii. In considering whether there is some other forum which is appropriate for the trial of the action, it is pertinent to ask whether the fact that the Page 1722 plaintiff has ex hypothesi founded jurisdiction as of right in accordance with the law of this country, which of itself gives the plaintiff an advantage in the sense that the English Court will not likely disturb jurisdiction so established. The position appears to be such in the United states also where the court hesitates to disturb the plaintiff's choice of forum and will not do so unless the balance of factors is strongly in favor of the defendant. The burden on the defendant is to show that the forum state is not the natural or appropriate forum for the trial and to establish that there is another available forum which is clearly or distinctly more appropriate than the English forum.
iv. Where the question is whether there exists a more appropriate forum, the court will look at factors, which point in the direction of the other forum. The court must also look at connecting factors, such as those affecting convenience or expense as also factors such as the law governing the relevant transactions.
v. If the court concludes that there is no other available forum which is clearly more appropriate for grant of stay, it will ordinarily refuse the stay.
vi. If, however, the court concludes that there is some other forum, which prima facie is more appropriate for the trial of the action ordinarily a stay will be granted unless there are circumstances by reason of which justice requires that a stay should nevertheless not be granted. In this enquiry, all the circumstances of the case are to be considered which include circumstances which go beyond those taken into account while considering factors connected with other jurisdictions. For instance, where it is established objectively by cogent evidence that the plaintiff will not obtain justice in the forum jurisdiction.
54. Learned senior counsel referred to the judgment of the Supreme Court in Kusum Ingots & Alloys Limited v. Union of India and Anr. to advance the proposition that even if a small part of the cause of action arises within the territorial jurisdiction of the High Court, the same by itself may not be considered to be a determinative factor compelling the High Court to decide the matter on merits. In appropriate cases, the Court may refuse to exercise its discretionary jurisdiction by invoking the doctrine of forum conveniens.
55. In ONGC v. Utpal Kumar Basu and Ors. , it was held that the mere fact that the petitioner company which had its registered office at Calcutta and read in a Calcutta newspaper ONGCs advertisement inviting tenders at Delhi for works to be executed in Gujarat and in response thereto the petitioner sent its tenders to the Delhi address from Calcutta and made representations from Calcutta against the non-consideration of its offer would Page 1723 not constitute an integral part of the cause of action. In determining the objection of the lack of territorial jurisdiction, the court must take into consideration all the facts pleaded in support of the cause of action albeit without embarking upon an enquiry as to the correctness or otherwise of the said fact. In other words, the question of territorial jurisdiction must be decided on the facts pleaded in the petition.
56. It was thus contended that the District court of Arizona by reason inter alia of having personal jurisdiction over defendant No. 1 as also the registering authority being defendant No. 3 would be the forum conveniens in the present matter.
57. Learned Counsel for the plaintiff on the other hand contended that this court is the most convenient forum for the parties. Learned Counsel for the plaintiff averred that the cause of action has arisen in India. Further the defendant has enough links with India for this Court to exercise jurisdiction while the plaintiff has an office only in India and does not have offices anywhere else in the world. Learned Counsel contended that in determining the convenient forum for a suit, the court must consider the point of view of the plaintiff as well as the defendant. Learned Counsel for the plaintiff referred to the provisions of Section 134 of the said Act which reads as under:
134. Suit for infringement, etc., to be instituted before district Court.- (1) No suit -
(a) for the infringement of a registered trade mark, or
(b) relating to any right in a registered trade mark, or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered.
Shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of Clauses (a) and (b) of Sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or where there are more than one such person any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation.- For the purpose of Sub-section (2), "person" includes the registered proprietor and the registered user.
58. Learned Counsel for the plaintiff referred to the judgment of learned single judge of this court in Surbhi Kumar v. Nitin Kumar and Ors. CS(OS) 2047/2006 decided on 12.03.2007 wherein in the interim application filed, the relief prayed for was restraining the defendant from proceeding with the divorce petition filed before the Superior Court of the State of California, County of San Diego, USA pending disposal of the suit. The plaintiff had initially participated in the proceedings in California and thereafter filed a suit in India. It was found that the plaintiff had only a dependent visa and Page 1724 had could not effectively represent herself in the US as she had no residence in the US. The defendant on the other hand was an Indian citizen having a permanent residence in India and thus it would be simpler for him to contest the proceedings in India. It was found that the balance of convenience was in favor of the plaintiff and the defendant was restrained from proceeding further in the Superior Court of California, County of San Diego till the disposal of the suit.
59. A perusal of the aforesaid shows that the legal position as regards forum non conveniens is that a stay on the ground of forum non conveniens would be granted where a court is satisfied that there is another available forum having jurisdiction. Also the plaintiff's choice of forum is usually not disturbed unless the balance of convenience is strongly in favor of the defendant. In determining whether a more appropriate forum exists, connecting factors, such as those effecting the convenience of parties, expenses involved and the law governing the relevant transactions are to be looked into. The mere fact that a part of the cause of action has arisen within the jurisdiction of the court may itself not be considered to be a determinative factor compelling the court to decide the matter on merits. In determining which of the available forums is the forum conveniens in a given matter, the convenience of all the parties had to be seen.
60. Insofar as Section 134 of the said Act relied on by the plaintiff is concerned, it is only a suit with regard to the infringement of a registered trademark or relating to any right in a registered trademark which can be filed in the District court within the local limits of whose jurisdiction, at the time of institution of the suit or proceeding the person instituting the suit or proceeding actually resides or personally works for gain. In the present matter it is not disputed that the mark of the plaintiff IndiaTv is not registered. It is only the mark India TV's Most Wanted of the plaintiff that is registered. The present suit is in respect of the mark INDIATV which is not registered and thus this provision does not really support the case of the plaintiff.
61. In the present matter, the defendant 1 and 2, as noticed hereinabove, are amenable to the jurisdiction of this Court and have sufficient contacts with the jurisdiction of this court. Defendant No. 1 as per its written statement is based in Delaware(USA) and defendant No. 2 as per the website print outs placed on record has offices in Los Angeles, China and Delhi (India). It may be noticed that the website of defendant No. 2 no more displays the address in India. Thus, even defendants 1 & 2 are not based in Arizona where the subsequent suit has been filed by defendant No. 1. The plaintiff company is based entirely in India with its offices at New Delhi. Thus, neither the plaintiff nor defendants 1 & 2 have any connection with Arizona. It is only defendant No. 3, the Registrar of Domain Names, which is a proforma party, which has its offices at Arizona. Moreover, the claim of the plaintiff has arisen as a result of the fact that the impugned website is accessible in India and any injury alleged to have been caused to the goodwill and reputation of the plaintiff would be in India.
62. It may be noticed that the fact of filing of the suit in Arizona District Court was not disclosed by defendant No. 1 in this Court either in its written statement or in the reply to the application under Order 39 Rules 1 & Page 1725 2 CPC (IA No. 651/2007) although the said suit was filed prior to filing of the written statement and reply. This fact was also not disclosed during submissions made before the court until the filing of the application under Order 39 rules 1 and 2 of the said code by the plaintiff praying for the grant of an anti-suit injunction.
63. The suit of the plaintiff was filed in this court on 18.01.2007 and this court is the forum of choice of the plaintiff and is the court of competent jurisdiction to adjudicate the matter in dispute. The balance of convenience is not so strongly in favor of the defendants as to warrant the stay of the present proceedings.
64. The aforesaid shows that it is this court and not the district court in Arizona that is the forum conveniens in the present matter.
65. Learned Counsel pointed out the WHOIS search results in respect of the website of defendant No. 1 to show that the domain name has been obtained by proxy Inc and information pertaining to the owner etc of the said domain name has not been given. It was further pointed out that the website of defendant No. 1 in the section entitled About Us (as on 16.01.2007) to contend that the website is promoted by Archer Media. The relevant paragraph is as under:
...
IBL, LLC enjoys a strategic relationship with Los Angeles based Archer Entertainment Media Communications Incorporated (OTC: ACRM). Archer (www.archeremc.com) has funded the development, technology integration and launch of www.indiatvlive.com and People of India Origin TV Channel.
66. In this behalf, learned Counsel also relied on an article entitled India Broadcast Live launches five more channels appearing on www.digitalmediasia.com (as on 16.01.2007) to contend that India Broadcast Live i. e. defendant No. 1 is really a division of Archer Media and that the channels carried by the website of defendant No. 1 are directly from India. The relevant paragraph is as under:
India Broadcast Live (IBL), a division of Archer Entertainment Media Communications, has added 5 additional channels bringing the total to 10 live, steaming channels on its platform. India Broadcast Live debuted what is called first Indian IPTV platform India TV Live on 17 August with five channels. This service carries these 10 channels directly from India, in real time, and delivers them worldwide via broadband, to any web enabled device- PCs, Laptops, PDAs and Cell Phones.
The company claims that India TV Live does not directly compete with broadcast, satellite and cable television, but is expected to become an additional platform to provide on the go news, information pertaining to business and investment and entertain.
...
67. Learned Counsel referred to the website of Archer Media, where, in the section entitled About Us, it has been stated inter alia that Archer Media Page 1726 is a vertically integrated global entertainment and media company and its interests are exclusively focused in China, India and the United States. The website of Archer Media in the section entitled Contact US provides addresses in China, India and the United States and the Address provided for India is Shama Broadcast Contents and Services Pvt. Ltd , D-47 Gulmohar Park Delhi. Learned Counsel pointed out that the address herein is the same as the address of Sh. K. N. Gupta, who has signed the written statement filed by defendant No. 1. The plaintiff has thus contended that defendant No. 1 is a division of defendant No. 2.
68. It may be noticed that in the article entitled Archer Entertainment Joins India Minister of Overseas Affairs in Launching IndiaTVlive.com as also other articles including Archer Launches IPTV Platform for Indian Content overseas (http://us.indiantelevision.com/headline … july45.htm) filed by defendant No. 1 with the application under order 39 Rule 4 of the said code mention that IndiaTvLive.com's content and marketing partners include Shama Broadcast & Content Service India Pvt. Ltd. and Creative Content Services India Pvt. Ltd., owned and operated by Mr. Kedar Nath Gupta.
69. In the affidavit filed by Mr. K.N. Gupta, on behalf of defendant No. 1, the stand taken is that defendant No. 2 is a venture capital company, which has loaned funds to defendant No. 1 in early 2006 and defendant No. 1 has no relationship of being a division, affiliate or partner of defendant No. 2. It is also claimed that a letter was sent on 30.10.2006 by defendant No. 1 through its corporate counsel to defendant No. 2 demanding that the said defendant ceases and desists from publishing any statements implying that it owns defendant No. 1 or regarding the operations of defendant No. 1. The letter has been acknowledged and compliance with the demands made therein have been expressed by defendant No. 2 in its E-mail dated 7.11.2006. Insofar as the address given for the parties is concerned, it is stated that the address of D-47, Gulmohar Park, New Delhi is neither the correct address of defendant No. 1 nor of defendant No. 2. However, there is no specific explanation forthcoming regarding the fact of the said address being mentioned on the website of defendant No. 2 except the stand that defendant No. 2 has misrepresented its relationship with defendant No. 1.
70. The plaintiff in its reply has averred that defendant No. 1s plea is malafide. The earlier statement in the section About us on the website of defendant No. 1 has been amended as under:
India Broadcast Live, INC, is a vertically integrated global entertainment and media company engaged in the production, acquisition, delivery, distribution and exhibition of digital content through various platforms including the Internet, IPTV, Video-On-Demand (VOD), Pay-Per-View (PPV) and other electronic means and methods currently available and those in the future.
IBL, INC, has created a digital infrastructure leveraging existing Internet assets and resources providing a secure, complete, end-to-end digital solution positioned to capture the global audience. IBL, INC members have extensive experience in content production, aggregation, acquisition, distribution and delivery of entertainment product in Page 1727 addition to talent management and studio administration. IBL currently operates this Web site.
71. Learned Counsel for the plaintiff contended that all available public documents show the relationship between defendants 1 & 2. It is alleged that the fact that these documents find mention in the letter dated 30.10.2006 indicates an attempt to create evidence to escape liability. The fact that defendant No. 1 shares a strategic relationship with defendant No. 2 was mentioned on the website of defendant No. 1 itself and not only of defendant No. 2.
72. It may also be noticed that the articles filed by defendant No. 1 along with IA 1366/2007 also support the contention of the plaintiff that there is some connection between defendants 1 and 2. In the article entitled Archer Entertainment Joins India Minister of Overseas affairs in launching IndiaTvLive.com (http://in.sys-con.com/read/243792.htm), defendant No. 1 has been described as an Archer supported company. The article also quotes Munish Gupta, the COO of Archer Entertainment (also a promoter of defendant No. 1) as stating that teaming up with Abhesh Verma (the other promoter of defendant No. 1), Archer was able to put together a state of the art digital platform to broadcast Indian Channels from India. The relevant paragraph is as under:
Teaming up with Abhesh, Archer was able to put together a state-of-the-art digital technology platform to broadcast the top channels from India. We will deliver channels real time and live from one of the fastest growing and dynamic countries in the world but also guarantee terrific consumer experience in terms of quality. This is the first time that the world will watch news and events as they unfold in India on any device connected by high speed Internet. This is just the beginning of what Archer and http://www.indiatvlive.com/ intend to deliver.
73. Another article Archer launches Indian IPTV Platform for Expats (http://www.iptv-news.com/content/view/742/64/) states that LA based Archer Entertainment Media Communications Incorporated conceived and developed India TV live after investing $ 1.5 million. It quotes Paul Ebeling, Chairman of Archer Entertainment Media Communications Inc as saying that Archers relationship with IBL is a strategic one as well as an investor. Also, in an article Archer Entertainment Media to Gain Revenue From Advertising as India Broadcast Live launches Ten Channels (http://www.prnewswire.com/cgi-bin/stories.pl?ACCT = 109&StorY = /www/story/09-11-200...) filed by the plaintiff again, defendant No. 1 has been described as a division of Archer Media.
74. Insofar as the aspect of the connection between defendant No. 1 and 2 concerned, the material relied on by learned Counsel for the plaintiff prima facie shows that there is a connection between defendants 1 and 2. The website of defendant No. 1 itself at the time of the filing of the suit stated that the development, technology integration etc of the impugned website was funded by Archer Media. Also, the contact address provided by Archer Media for India is the address of the authorized signatory of defendant No. 1. This along with the articles relied upon by the plaintiff and filed by defendant No. 1 Page 1728 along with its application under Order 39 Rule 4 shows a connection between defendants 1 and 2.
75. It may however be noticed as pointed out by learned Counsel for the plaintiff that subsequently the About Us section of the website of defendant No. 1 was amended and Archer Media is no more mentioned therein. The website of defendant No. 2 has also been amended subsequently and the contact address for India has been omitted. It cannot be disputed that there was a connection between defendants 1 and 2. The copies of emails filed with the affidavit of Sh. K.N. Gupta merely show that defendant No. 1 demanded that defendant 2 cease and desist from making any statement that it is the owner of defendant No. 1 or as to the operations of defendant No. 1. These emails do not clearly show that there has been any severance of ties between defendants 1 and 2 and when such severance if any took place. There is no other material on record which shows severance of ties between defendants 1 and 2. There is no material on record which shows the nature of the relationship between defendants 1 and 2 besides the affidavit of Sh. K.N. Gupta in which the stand taken is that defendant No. 2 is a venture capital company, which has loaned funds to defendant No. 1. This aspect can thus really be decided only after trial where evidence is led in this behalf.
REMEDY UNDER UDRP:
76. Defendant No. 1, in its written statement has averred that the remedy provided by ICANN would be an equally efficacious and appropriate remedy and the plaintiff has approached this court mala fide instead of approaching ICANN.
77. Learned Counsel for the plaintiff submitted that domain name disputes are governed by the Uniform Domain Name Dispute Resolution Policy (for short UDRP). It is noted in the policy that the same has been adopted by all accredited domain name registrars for domain names ending in .com, .net and .org besides certain managers of country code domains including .nu, .tv and .ws. Para 3 of the said policy deals with cancellations, transfers and changes. Para 3 (b) of the same stipulates as under
3. Cancellations, Transfers and Changes We cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:
(b) our receipt of an order from a court or an arbitral tribunal, in each case of competent jurisdiction, requiring such action.
78. Learned Counsel further submitted that the only remedies available to a complainant in case of a proceeding before an administrative panel provided for under the UDRP shall be limited to cancellation of the domain name or transfer of the domain name registration to the complainant. It was thus submitted that the Panel provided for in the policy can only provide for cancellation or transfer of the impugned domain name and not damages or rendition of accounts as has been prayed for by the plaintiff in the present suit.
Page 1729
79. In this behalf it may be useful to reproduce some provisions of paragraph 4 of the UDRP. The same are as under:
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/udrp/approved-providers.htm (each, a "Provider").
a. Applicable Disputes. You 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.
...
(i)Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.
80. Learned Counsel for the plaintiff placed reliance on the judgment of the learned single Judge of this Court in Citi Corporation and Anr. v. Todi Investors and Anr. 2006 (33) PTC 631 in support of the proposition that online resolution does not offer a complete alternative to passing off actions. In this case, the Court considered that the '.IN' Domain Name Dispute Resolution Policy (INDRP) for inquiring whether the remedies provided therein are adequate and sufficient. It was observed that the remedies available under the INDRP are limited to requiring the cancellation of the registrants domain name. The scope of the suit where the relief claimed is for infringement of trademark and passing off is far greater than the disputes that could be adjudicated by the Tribunal. The Court further noticed that the INDRP was not a statutory remedy and the arbitrator provided for under that policy is not a Judge/Judicial Officer. Section 134 of the said Act empowers a District Court to deal with suits for infringement of trademark or passing off.
81. The remedy provided in the UDRP of the ICANN is restricted to cancellation, transfer or changes in domain names and not for actions for passing off or damages. This is apparent from para 4(i) of the UDRP. Para 3(b) of the UDRP shows that such cancellation, transfer or change can also be made pursuant to an order of a court of competent jurisdiction requiring such an action. Para 4 (k) of the said policy clearly provides that the mandatory administrative proceeding does not prevent either party to the dispute from submitting the Page 1730 dispute to a court of competent jurisdiction for independent resolution before the commencement of such proceeding or after the conclusion thereof. The judgment in Citi Corporation and Anr. case (supra) is to the effect that the reliefs in a suit for passing off are wider than the mere cancellation or transfer of a domain name, which is envisaged in the UDRP. The plaintiff in the present suit has prayed for include a permanent injunction restraining defendants 1 and 2 from operating any website under the impugned domain name and damages besides the transfer of the said domain name to the plaintiff. I am thus of the view that the present suit filed by the plaintiff is the most appropriate remedy in the light of the reliefs that have been claimed therein.
Injunction from using the domain name indiatvlive.com Domain names dealt with differently
82. Learned Counsel for the plaintiff contended that the Internet is to be dealt with differently and separately from trademarks used in the ordinary course and that the concept of honest concurrent user which is applicable to trademarks would not be applicable to domain names. In this behalf, learned Counsel placed reliance on the judgment of the Apex Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd (2004) 28 PTC 566. It was observed in this case that a domain name is used as a business identifier to identify and distinguish the business itself or its goods and services and to specify its corresponding online Internet location. The court observed at para 11 as under:
The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain-name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(1)(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.
As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large Page 1731 number of trade marks containing the same name can comfortably coexist because they are associated with different products, belong to business in different jurisdictions, etc., the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value.
The answer to the question posed in the preceding paragraph is therefore in the affirmative.
83. It was thus contended by learned Counsel for the plaintiff that the use of a same or similar domain name to that of the plaintiff would mislead consumers. As defendant No. 1s website is a subscription site, it was submitted that the same is being used to earn revenue and the defendants are attempting to ride piggyback on the goodwill of the plaintiff.
84. There is no doubt that with the development of e commerce, domain names have gained greater importance and have become business identifiers. It is also not disputed that on the Internet, no two domain names can be identical unlike in the case of trademarks where even two identical marks can co-exist.
85. Insofar as the aspect of revenue being earned by the defendants from the impugned website, at this stage there is no material on record which shows the revenues from the impugned website either totally or from India. This aspect would thus have to be considered after evidence is led in this regard.
Geographical Name
86. Learned senior counsel for defendant No. 1 submitted that a geographical name cannot be registered as a trademark. In support of his submission, learned senior counsel referred to the judgment of a division bench of the Calcutta High Court in Imperial Tobacco Co. of India Ltd. v. The Registrar of Trademarks and Anr. which involved the trademark 'SIMLA' in respect of manufactured tobacco (cigarettes). Some relevant observations in respect of the registration of geographical names as trademarks are as under:
25. A geographical name according to its ordinary signification is such mark inherently or otherwise incapable of registration subject to such minor exceptions in regard to other aspects as noticed in judicial decisions referred hereinafter. In Corpus Jurisdiction Vol. 63 (1933 Edn.), in Chapter of Trade Marks etc. Article 53 (pp. 356-7) it is stated:
Geographical terms and words in common use to designate a locality, a country, or a section of country cannot be monopolised as trade marks; but a geographical name not used in geographical sense to denote place of origin, but used in an arbitrary or fanciful way to indicate origin or ownership regardless of location, may be sustained as a valid trade mark.
Page 1732 According to Section 9 Sub-section (1) Clause (d) of our Act, a trade mark for registration in 'A' part of the Register must contain one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name.
...
34. As we have seen, the mark 'Simla' is a geographical name and the snow-clad hills in outline in the mark indicates its use in ordinary or geographical signification, so that the mark is neither a fancy or invented word nor one with a secondary meaning. As has been observed in Karly's Treatise (10th Edition):
8.51. A word is not debarred from registration under Section 9(1)(e) as a distinctive word merely because it is geographical and so cannot be registered under Section 9(1)(d). Some geographical names can be inherently adapted to distinguish the goods of particular traders, but only if it can be predicated that they are such names as it would never occur to any other trader in such goods to use. At the other extreme, the name of a major industrial area of city will be totally unregistrable in respect of almost any goods. In between come the marks calling for more or less evidence that they are distinctive in fact....It may tip the balance that the applicant can show that he has a natural or legal monopoly of the production of goods concerned in the place concerned; but that alone will not make a geographical name registrable without substantial evidence of distinctiveness.
Though Clause (d) of Section 9(1) which refers to geographical name in ordinary signification relates to registration in Part A of the register, the distinctiveness of the trade mark which makes it capable of distinguishing the applicant's goods, as required in Clause (b) of Section 9(5) in respect of registration in Part B of the register, it is a vital and essential element for the purpose. Such distinctiveness is not possible for any geographical name in its ordinary or geographical signification. Though the rule has been relaxed in respect of small and insignificant place or where there is no geographical significance of the mark, if the geographical name propounded for registration is the name of an important country or a large district, county or city of commercial importance or has a geographical signification, the mark will be refused registration notwithstanding evidence of long and extensive use....
87. Learned senior counsel drew the attention of this court to the decision in Liverpool Electric Cable Co Ltds case (1929) 46 RPC 99 referred to in Imperial Tobacco Co case (supra) in which registration was sought for the trademark Liverpool in both parts A and B of the trademark register. It was held that the name of an important commercial centre as Liverpool, even though it may in fact be distinctive of the goods in respect of which it is sought to register is not registrable.
88. In the Matter of Sir Titus Salt, Bart., Sons and Co. s Application XI. (1894) 26 RPC 518, the mark sought to be registered by the applicants was Page 1733 Eboline for silk piece goods. It was observed that Eboli is the name of an Italian town and the mere addition of the common English Termination ne is not sufficient to make this word an invented word. What the Act requires is that the word should be an invented word in fact and not merely in the belief of the person claiming to register it as a trademark. It was further held that the prohibition extends to a noun substantive, the adjective as well as to the name of a place to which an ordinary English suffix has been added so as to impart to it an adjectival form. The object of the legislature was observed to be of preventing a trader from acquiring a monopoly in the name of a place, and thereby suggesting that the goods had a local origin or local connection, which in fact it may not have.
89. It was thus contended that the plaintiff cannot claim exclusive use over the word 'INDIA'.
90. Learned Counsel for the plaintiff submitted that though the mark 'INDIA TV' consists of the word 'India' which has a geographical connotation in the context of news channels, 'INDIA TV' as a combination is distinctive and is, thus, entitled to protection. Distinctiveness of such a mark can be recognized and protected even at the prima facie stage.
91. Learned Counsel referred to the judgment of this Court in Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd. 2006 (32) PTC 192 (Del). The plaintiff company was in the business of manufacturing and selling steel pipes etc. under the mark 'GUJRAT' while the defendant was selling 'MS ERW' pipes under the mark 'GUJARAT'. It was observed that the important aspect to be considered is whether the word 'Gujarat' has acquired secondary significance and has distinctiveness in respect of the steel pipes produced by the plaintiff. It was further observed that both the marks 'Gujrat' and 'Gujarat' are similar if not identical and the only issue is whether the plaintiff can abrogate to itself the use of the said trademark for its steel pipes or preclude the defendant from using the same in respect of the same product on the ground that such sale is an attempt by the defendant to pass off its goods as that of the plaintiff since by consistent prior use, the mark is associated with the product of the plaintiff. It was observed that similar protection was granted in respect of the mark 'CHAMBAL' in Geepee Ceval Protiens & Investment Private Limited v. Saroj Oil Industry 2003 (27) PTC 190 (Del.). The Court referred to the judgment of the learned single Judge of the Gujarat High Court in Bharat Tiles and Marble Private Ltd. v. Bharat Tiles Manufacturing Co. 1978 GLR 518 wherein it was held that merely because a trade name is geographically descriptive, it does not imply that an action for passing off cannot be maintained provided the plaintiff is able to establish the requisite grounds of deceit by use of similar name.
92. Learned Counsel for the plaintiff submitted that geographical names have been granted protection in a number of other cases, such as, the mark 'BHARAT' in Bharat Tiles and Marble Private Ltd. case (supra) and 'HINDUSTAN' in respect of radiators in Hindustan Radiators Co. v. Page 1734 Hindustan Radiators Limited 1987 PTC 73 and 'CHAMBAL' in Geepee Ceval Protiens & Investment Private Limited case (supra).
93. The legal position as set out in the various judgments referred to by learned Counsels for the parties is that ordinarily geographical names are incapable of registration as trademarks. The rule has however been relaxed in respect of small and insignificant places or where there is no geographical significance of the mark. (Imperial Tobacco Company of India case (supra). Even if the name may be distinctive of the goods in respect of which it is sought to be registered, registration of a geographical name may be refused, as was the case in Liverpool Electric Cable Co Ltd. case (supra). The addition of an ordinary English suffix to a geographical name may not be sufficient to to permit registration of the word as a trademark (Sir Titus Salt, Bart Sons and Co's Application case [supra]).
94. It must however be borne in mind that, the present action as was the case in Hi Tech pipes case (supra), is really in the nature of an action for passing off and what is being sought is not the registration of the impugned mark. It is not the case that a geographical mark cannot be granted protection in an action for passing off (Bharat Tiles and Marbles Private Ltd's case [supra]). Where a mark having a geographical connotation has acquired secondary significance and distinction, such a mark may be granted protection in a passing off action (Hi Tech Pipes case [supra]).
95. Thus, what has to be seen is whether the plaintiff's mark which is comprised partly of a geographical name 'India' has acquired any secondary significance or distinction and is thereby entitled to protection. The plaintiff claims that its mark is distinctive and a unique combination which has been used for the first time by the plaintiff. No other TV channel adopted the said mark till the plaintiff in the year 2004. It is also the claim of the plaintiff that being a 24 hour 365 days channel by its very nature the reputation and goodwill of the plaintiff is unparalleled compared to any other trademark. The plaintiff's contention is that being a TV channel which is viewed and heard by consumers in different parts of the country and on which the logo of the plaintiff is continuously displayed there is no need for the plaintiff to show the amount of investment etc. made in advertising as is necessary in the case of FMCG or like products and services.
96. The plaintiff's channel is stated to be amongst the top three news channels of the country. In this behalf, learned Counsel placed reliance on TAM Peoplemeter system ratings for the breaking news band (week 44, 2006) wherein the plaintiff's channel has been rated among the top Hindi news channels in the said segment. Similar ratings of the TAM peoplemeter system carried out in Hindi speaking markets have been placed on record in respect of other programs of the plaintiffs channel. The plaintiff has also placed on record certain other ratings of the TAM peoplemeter system which rates the channel among the top three Hindi news channels in India. The plaintiff has also placed reliance on articles/clippings regarding the launch of the plaintiff's channel.
97. Learned senior counsel for defendant No. 1 drew the attention of the Court to the application for registration of the plaintiffs mark 'INDIA TV' Page 1735 which is dated 22.1.2004 while the channel of the plaintiff was launched only in March 2004. Learned senior counsel, thus, contended that since the registration was sought even prior to the launch of the plaintiff's channel, the plaintiff cannot claim that they achieved distinctiveness at that stage. It was further contended that it is claimed in paragraph 6 of the plaint that the plaintiff started using the mark since 1.12.2002, there is no evidence on record in support of the same. There is also no plea regarding how the mark acquired distinctiveness prior to the date of the application. In the case of Hi-Tech Pipes case (supra) referred to by the plaintiff, registration was applied for nine years after the first use of the mark and thus it was pleaded that the mark has achieved distinctiveness.
98. As noted earlier the plaintiff in the present action is not seeking registration of the mark. Thus, the court is not to determine whether or not the mark is capable of registration and has to only look into the aspect whether the mark has acquired a secondary significance which entitles it to protection in an action for passing off. Any objections as regards registration would have to be raised by the said defendants in the relevant proceedings.
99. The TAM ratings for the years 2006- 2007 on which reliance has been placed by learned Counsel for the plaintiff prima facie does indicate that the channel of the plaintiff is rated among the top Hindi news channels in various time bands. The other articles etc placed on record by the plaintiff are with regard to the proposed launch of the plaintiffs channel INDIA TV and show that the same is being promoted by Sh. Rajat Sharma, a well known journalist. It is not disputed that the channel of the plaintiff was launched in March 2004 and has been continuously in operation in then. Prima facie, the material placed on record does indicate the popularity of he plaintiff's channel. However as evidence is still to led, a conclusive finding in this regard can be reached after trial.
100. Further, in the present case, as the plaintiff is seeking directions with regard to the domain name Indiatvlive.com owned by defendant No. 1 which contains the suffix Live along with the mark of the plaintiff India TV, it would have to be determined whether the suffix live in the domain name of defendant No. 1 is sufficiently distinguishes the domain name from the mark of the plaintiff.
101. It may be noticed that the impugned website does not carry the logo of the plaintiff or any other mark which would mislead persons browsing to believe that the same is that of the plaintiff. The objection of the plaintiff is only as regards the use of the mark as part of the domain name of the defendant. While the words IndiaTvLive do appear on the website of the plaintiff, the same merely provides a link to the website of jumptv.com which site broadcasts the plaintiff's channel as also other television channels from various countries on subscription. The plaintiff's website provides information about the plaintiff's channel and programs as also news updates etc.
102. As evidence is still to be led, at this stage, extra precautions would have to be taken so as to distinguish the website of defendant No. 1. It cannot be Page 1736 lost sight of that on the Internet the options available for domain names are limited since no two identical domain names can coexist, and thus, the plaintiff cannot really be permitted to claim exclusive rights over the name indiatv used in any combination with any prefix or suffix whatsoever. Learned senior counsel for the defendant proposed that this may be done by displaying a disclaimer prominently on the website of defendant No. 1 which would clearly show that the said website has no connection with the plaintiff company or the plaintiff's channel. In support of this contention reliance was placed on the judgment of the Apex Court in West inn Hospitality Services Ltd. v. Ceasar Park Hotels & Resorts Inc 1999 (19) PTC 430 wherein the petitioner was permitted to use the word Westinn as part of its corporate name with the rider that the letterheads, advertisements etc of the petitioner company would contain the words- NO CONNECTION WHATSOEVER WITH WESTINN HOTELS AND RESORTS. It is thus contented that use of the mark as part of a corporate name can be permitted if it is used with a disclaimer clearly showing that there is no connection with the mark of the complainant.
103. Learned Counsel for the plaintiff on the other hand, in this regard referred to the judgment of the Supreme Court in Registrar of Trademarks v. Chandra Rakhit Ltd. in which it was observed that if the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not in any way affect those rights.
104. Learned Counsel for the plaintiff contended that initial confusion between the marks of the parties may cause the potential purchaser to preclude the services/goods of the complainant/opposer in making his decision. In this behalf learned Counsel referred to McCarthy on Trademarks and Unfair Competition (3rd Edition Volume 3). The relevant extract is as under:
b) Initial Interest Confusion Infringement can be based upon confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion. For example, the likelihood that a potential purchaser of a specialised computer program may be drawn to the junior user, thinking it was the senior user, is actionable confusion even if over the course of several months of the purchasing decision-making process, the buyer's confusion is dissipated. Such a senior user who is the opposer may suffer injury if a potential purchaser is initially confused between the parties' respective marks in that opposer may be precluded from further consideration by the potential purchaser in reaching his or her buying decision.
The analogy to trademark initial interest confusion is a jobseeker who misrepresents educational background on a resume, obtains an interview and at the interview explains that the inflated resume claim is a mistake or a typo. The misrepresentation has enabled the Page 1737 job-seeking to obtain a coveted interview, a clear advantage over others with the same background who honestly stated their educational achievements on their resumes. In such a situation, it is not possible to say that the misrepresentation caused no competitive damage.
105. I am inclined to accept the contention of the learned senior counsel for defendant No. 1 that at least at the interim stage, the said defendant may be permitted to operate its website with the disclaimer which clearly shows that the same has no connection with the plaintiff company. Such a disclaimer if appropriately placed on the impugned website would convey to the browsers that the website has no connection with the plaintiff company or services provided by them. Once the person browsing is aware of the fact that there is no connection between the impugned website and the plaintiff company, if he chooses to subscribe to the services being provided by defendant No. 1 he would not be doing so under any misconception or confusion. As the person visiting the impugned website would immediately become aware that the impugned website is not the website of the plaintiff, if he still consciously chooses to subscribe to the services, he cannot really be prevented from doing so.
106. As far as the creation of initial confusion is concerned any such confusion that may initially arise would be dissipated as soon as the browser visits the website as a disclaimer would be clearly displayed therein. It is not that there would be any time gap between accessing the website and discovering that the same is not that of the plaintiff. The impugned website does not carry the logo of the plaintiff or any other misleading information. Thus, defendant No. 1 may be permitted to continue operating the website with a disclaimer.
Descriptive names
107. Insofar as the plea of defendant No. 1 that the mark of the plaintiff INDIATV is descriptive, learned Counsel for the plaintiff submitted that even descriptive words that have acquired distinctiveness and significance to be associated with the business of the company whose mark it is would be entitled to protection. In support of her plea, learned Counsel referred to the judgment of the Supreme Court in Godfrey Phillips India Ltd. v. Girnar Food and Beverages (P) Ltd 2005 (30) PTC 1 in which the trademark involved was SUPER CUP in respect of tea. It was held that a descriptive trademark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.
108. Reliance was also placed on the judgment of a learned single judge (as he then was) of this court in Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr. 2002 (24) PTC 255 (Del). The case was with regard to the domain name naukri.com. The defendants had registered a similar domain name naukari.com. It was observed that it is a well settled legal position that when a defendant does business under a name sufficiently close to the name under which the plaintiff is trading and the name has acquired a reputation, the public at large is likely to be deceived and mislead that the Page 1738 defendants business is the business of the plaintiff or is a branch or department of the plaintiff. It was also observed that it is a well settled law that the distinction between the generic word and descriptive word is very thin and such word could also assume a secondary meaning by its long user by a person who establishes his reputation in the market. The court also noted that even if the word in question is generic, yet, if it is found by the court that such mark has attained distinctiveness and is associated with the business of the plaintiff for a considerable time and thereafter the defendant adopts a similar word as one of his marks to induce innocent Internet users to come to his website, the same establishes dishonest intention and bad faith, the court would grant injunction to protect the business of the plaintiff. The defendant had contended in this case that there were other websites with almost similar names against which the plaintiff had not proceeded for similar reliefs. The court found that there is neither any occasion or immediate necessity for the plaintiff to proceed against those domain names as the same were either non functional or non relatable to the plaintiffs business. It was held that the plaintiff cannot be denied relief and an injunction only because it has not proceeded against other similar names. Further it was noted that if two contesting parties are involved in the same area or similar line of business, there is grave and immense possibility for confusion and deception.
109. Learned Counsel further contended that even if words are descriptive in nature, if they are identified with the business of the plaintiff, protection may be given to combination though individually the words may not be permitted to be monopolized. In Living Media India Ltd. v. Jitender v. Jain and Anr. 2002 (25) PTC 61 (Del), the plaintiff was the producer of a news program under the name and style of AAJ TAK while the defendants had adopted the name Khabarein AAJ TAK in respect of newspapers. The mark used by the defendant was found to be the exact reproduction of the mark of the plaintiff. In this case, learned single judge of this court observed that that while the words aaj and tak may be individually descriptive and dictionary words and may not be monopolized by any person but their combination does provide protection as a trademark if it has been in long, prior and continuous user in relation to particular goods manufactured or sold by a particular person and by virtue of such user, the mark gets identified with such person. It is so irrespective of the fact whether such combination is descriptive in nature and even has a dictionary meaning. In such a case, any person can use any of the two words as their trade mark or mark but has to be prohibited from using the words as a combination.
110. Learned senior counsel for defendant No. 1 referred to the provisions of the Section 9 of the said Act to contend that registration of the mark of the plaintiffs can be refused on use of descriptive words which describe the kind and character of goods.
111. Further, reference was also made to the judgment of learned single judge of the Kerala High Court in Bhartiya Coffee Workers Catering Service (P) Ltd. v. Indian Coffee Workers Cooperative Society Ltd. . Page 1739 The plaintiff society was running Indian Coffee Houses right from their inception and brought an action against the defendants who also named their establishment Indian Coffee House. The court noted that the only infringement set up by the plaintiff is that the defendant has also used the name Indian Coffee House for its catering establishments and there is no case that the set of words has come to be associated with a particular product manufactured or marketed by the plaintiff. The court further observed that while it may be true that the India Coffee House run by the plaintiff might have earned a name and goodwill due to the services rendered by them in their catering establishments, that itself would not enable the plaintiff to prevent any other owner of the establishment from running the establishment under the said name. The name was a generic name being used by all cooperative societies of ex employees of the Coffee Board who function independently of each other. It was sought to be emphasized by learned senior counsel that despite usage for a number of years, due to the nature of the name, the mark of the plaintiffs in that case could not be protected.
112. In Online India Capital Co. Pvt. Ltd and Anr. v. Dimension Corporate (2000) V AD (Del) 860, the plaintiff company was running the website www.mutualfundsindia.com while the defendant had created a similar website www.mutualfundindia.com. The contention was that mutual fund is a generic term and no monopoly can be claimed in relation thereto by any person. It was observed that the expression mutual funds forming part of the plaintiffs domain name is the description of the services being offered by the plaintiff. The material placed on record failed to show that the said expression had acquired a secondary meaning which is a precondition for grant of protection to a descriptive name. It was thus held that no prima facie case was made out for the grant of interim injunction prayed for by the plaintiff.
113. In this behalf reference was also made to the judgment of a learned single judge of this court in Manish Vij and Ors v. Indra Chugh and Ors. AIR 2002 Del 243 which was again a case concerning similar domain names. The plaintiff was the proprietor of a website dealing with second hand goods on the Internet under the domain name www.kabadibazaar.com. The defendants owned a similar domain name www.kabaribazaar.com, the only distinction being the use of the letter 'r' instead of letter 'd' in the word 'KABARI/KABADI'. It was observed that a trademark is descriptive if it imparts information directly which may concern some characteristic or ingredient of the product. The term kabari bazaar is descriptive and requires no imagination to connect the same with second hand goods. It was further observed that it is true that descriptive words can be used at times as trademarks where they acquire distinctiveness and signify that particular goods are manufactured or services rendered by a particular person, it may be said that the mark has acquired a secondary meaning. This can be demonstrated by proving advertisements, promotions and sales. It was found that there was no such material to show that the website of the plaintiff had acquired such a secondary meaning.
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114. In Digital City, Inc v. Smalldomain Case No. D2000-1283, the complainant before the WIPO Administrative Panel alleged that the domain name of the respondent being digitalcitymap.com was confusingly similar to the digital city mark of the complainant. The argument of the respondent was that the addition of the word map rendered the name different from the marks of the plaintiff. It was observed by the panel that consumers are not likely to be confused where (1) a domain name comprises a mark and a suffix; (2) where the mark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection and (3) where the suffix or the domain name as a whole does not relate specifically to the business of the complainant. The nature of business of the parties was also taken into account. The complainant was in the business of providing city information and not maps as the respondent. The domain name was held not to be confusingly similar.
115. Learned senior counsel further contented that the word INDIA is common to the trade of communication and is used extensively by numerous domain name owners and publications as part of the trade names used and the plaintiff cannot claim a monopoly over the use of the word INDIA. In this behalf learned senior counsel referred to judgment in J.R. Kapoor v. Micronix India 1994 supp. (3) SCC 215 wherein the mark of the appellant was 'MICROTEL' while that of the respondent was 'MICRONIX'. The court observed that the word 'MICRO' is being descriptive of the micro technologies used for the production of many electronic goods which daily come into the market no one can claim monopoly over the use of the said word. Anyone producing a product with the use of microchip technology would be justified in using the said word as a prefix to its trade name. Similarly, in Kewal Krishan Kumar v. Kaushal Roller Flour Mills Pvt. Ltd. PTC (suppl.) (1) 217 (Del.) learned single Judge of this Court (as he then was) observed with regard to the word 'SHAKTI' which formed part of both plaintiff's and defendant's trademark that prima facie it appears that the term 'SHAKTI' is commonly used in business parlance as would appear from the few pages of the telephone directory produced in the present case and the word 'MAHASHAKTI' is descriptive in nature. The words 'SHAKTI BHOG' are also descriptive. The Court referred to the case of F. Hoffmann La. Roche & Co. Ltd. v. Geoffery Manners & Co. AIR 1997 SC 2062 where it was held that where two words have a common suffix, the uncommon prefix of the words is a natural mark of distinction.
116. Learned Counsel for the plaintiff drew the attention of this Court to the print outs taken from the website of the US Patent & Trademark Office, which show that defendant No. 1 has filed applications for the registration of the marks 'INDIABROADCASTLIVE' and 'INDIATVLIVE' in the United States. The applications have been filed only on 11.5.2007. Learned Counsel thus contended that while on the one hand defendant No. 1 is averring that the mark of the plaintiff is incapable of being registered on the ground of it having a geographical name as also on the ground of it being descriptive of the nature of the plaintiff's business, on the other hand, defendant No. 1 Page 1741 itself has applied for registration thereof. The plaintiff has sought to contend that in such a case it does not lie in the mouth of defendant No. 1 to raise the plea of the mark being descriptive. In support of her contention learned Counsel has relied upon the judgment of the learned single Judge of this Court (as he then was) in Automatic Electric Limited v. R.K. Dhawan and Anr. (1999) PTC (19) 81. The marks involved in this matter were 'DIMMER DOT' and 'DIMMER STAT'. It was found that the defendants had got their mark 'DIMMER DOT' registered in Australia and as the defendant itself sought to claim trade and proprietary rights and monopoly in the mark 'DIMMER DOT' it does not lie in their mouth to say that 'DIMMER' is a generic expression.