Technological advancement has compelled businesses to shift from physical markets to electronic e-commerce models. This includes operating through various e-commerce portals, websites etc. this shall be circumscribed under domain names. This raises a fundamental question, what exactly are domain names?
Domain names are IP addresses of the websites through with the businesses operate through. Now, this is just a rough idea. Still, its significance with regard to IP shall be explored through the case filed by Living Media India Ltd. against rogue websites infringing upon their Trademark using it as their domain name. Domain names can become identifiers of a source in the realm of e-commerce. It can work as a unique identifier in the World Wide Web (WWW).
Before we get into the case analysis, it is imperative to briefly understand the concept of domain names.
How a domain name is constructed?
They consist of two parts second-level name and top-level name. Second-level name is the unique name chosen by the entity. The top-level name is the part that comes after the unique name adopted by the entity.
How does domain names come under the purview of the Trade Marks Act, 1999?
Section 2(1) (m) of the Act includes the term “name” under its definition. Thus, Second-level names are included under the purview of Section 2(1)(m), making it registrable under the TM Act, 1999.
Additionally, the purpose of both trademark and domain name are similar, i.e. source identification of goods or services.
Case Details
- Case Name: Living Media India Limited and Anr. v. news-aajtak.co.in & Ors.
- Case Number: CS(COMM) No. 395/2020
- Court: Delhi High Court
- Coram of recent order: Justice Suresh Kumar Kait
- Status of the present case: Pending
Case Analysis
Facts
- Mark infringed- Aaj Tak
- Registered under- Class 38
- Proprietor- Living Media India Limited
- Intermediaries involved- Google, Instagram, Twitter, LinkedIn, YouTube and Facebook
The plaintiffs hold a device and composite mark of “AAJ TAK”. This mark is registered as a wordmark. They alleged that the defendants have been using the mark as part of their domain names. The Domain Name Registrars (DNRs) were also made a parties to this suit of infringement.
The main contention of the plaintiffs were that these websites have been masquerading itself as “AAJ TAK”, thus creating confusion in the general public and taking advantage of this confusion in order to exploit the reputation of the coveted news agency. These websites were operating anonymously.
Arguments so Far
The Counsel for the plaintiffs have come up with some interesting arguments. Firstly the Domain Name Registrars were made a party to the infringement suit. This will allow the court to question the administrative authority which allowed the registration of “AAJ TAK” as a secondary-level name in a domain name without checking its background properly.
The counsel further drew the attention of the court towards the fact that rogue websites such as the defendants keep emerging from time to time, causing disruption of business and legal interests of the plaintiffs. Therefore, leave shall be provided to the plaintiffs to approach the Court, with an appropriate application, seeking similar orders against such websites.
In one of its later applications, the plaintiffs prayed that the defendants must be suspend the use of their domain names that contain “AAJ TAK” as their secondary-level name. This application was made in order to implead newer defendants who were alleged of infringing the plaintiffs’ mark. The plaintiffs then sought for an extension on the interim injunction, which was granted by the Court.
Order of the Delhi HC
So far, the Delhi High Court has correctly analysed this case. In one of its orders passed, the HC determined the goodwill of the news agency by looking into the figures concerning turnover and advertisement spending. After determining their reputation, the Court agreed with the counsel for the Plaintiffs that the unprecedented use of the mark by the defendants will impact the statutory and commercial rights of the plaintiffs and will cause irreparable damage to their brand.
The Court ordered the defendants to take down the uploads of their ads on various social media platforms such as Facebook, Instagram, LinkedIn, Twitter etc., in case they contain any infringing material containing the plaintiff’s mark or trade device or any deceptively similar mark. The HC also made it clear that their order can be served to any such intermediary platform stated above in order to put an end to the indiscriminate practice of infringement by rogue websites.
It is imperative to note that the Court considered the “balance of convenience” of the prima facie facts, which means that the prima facie case established seemed to be in favour of the plaintiffs by way of “balance of convenience”. Thus an interim injunction was passed.
In the present case, it is imperative to note that the only “distinction between domain names and trademarks is their scope of protection.”[1]
In other words, domain names, when registered, are applicable universally, but trademarks, on the other hand, operate within the national jurisdiction of a country.
Comment on certain aspects
1. Concept of Acquired Distinctiveness and Secondary Meaning w.r.t the present case
Before we get into the important aspects of this case, it is imperative that an older Case by Living Media questioning the mark itself is analysed briefly.
In Living Media India Limited v. Jitender v. Jain and Anr., the issue raised was whether the name and style of “AAJ TAK” and its logo shall be considered a generic term. Further, whether such a generic term shall be registered under the name of a particular person either in relation to the news programme or otherwise to create a monopoly.
The court observed that the word mark in question may be descriptive in nature. Yet, by virtue of its individual dictionary meaning, when the terms “AAJ” and “TAK” are put together and viewed in its entirety or in its composite form, it is still a coined word of the plaintiff. Therefore, the term “AAJ TAK” has acquired a certain level of distinctiveness owing to its public image and a secondary meaning by virtue of “prior, continuous and extensive use”. Therefore, the term “AAJ TAK” as a combination cannot be used by any other user.[2]
The key takeaway from the above discussion is that the words “AAJ” and “TAK” may be individually descriptive and, by virtue of its plain dictionary meaning, cannot be monopolized by any particular user. However, together the combination of words has acquired distinctiveness by virtue of “prior, continuous and extensive use” and therefore must be protected.[3]
In the present case, the word mark itself was not questioned in any manner. However, it was important to justify as to how generic terms such as “AAJ and “TAK” are monopolised as a combination. The concept of acquired distinctiveness and secondary meaning have a reverse impact on descriptive trademarks. In other words, when the absolute grounds of refusal under Section 9 of the Trade Marks Act of 1999 are considered, even the combination of the words should have been rejected long back. However, the plaintiffs have built a reputation over the years and when “AAJ TAK” is understood in the term, so the plaintiff’s services, the acquired secondary meaning of the words come alive.
The Delhi HC has been passing various similar dynamic injunctions to prevent infringement by domain names.[4]
2. Intermediary Liability
Social media platforms are well understood as intermediaries, especially through their participation in the advertising and marketing of their various goods and services. The standard of due diligence to be observed by Intermediaries have gone through some extensive changes ever since the 2011 guidelines provided an unfair safe harbour protection to intermediaries under Section 79 of the Information Technology Act of 2000. More particularly, Rule 3(2) (d) Intermediary guidelines (Amendment) Rules of 2018 needs to be expanded upon owing to the scenario in the case at hand,
Rule 3(2) (d) states that intermediaries must inform users (public at large) to not “host, display, upload, modify, publish, transmit, update or share any information that infringes any patent, trademark, copyright or other proprietary rights.”
In the present case, we see that the court has ordered the platforms to take down the infringing material. The catch is the 2011 guidelines stated that such infringement must be brought to the “actual knowledge” of the intermediaries only then they can take it down within 36 hours.
Now what constitutes “actual knowledge” was not defined under the act or rules. Now the 2018 guidelines clarified that “actual knowledge” can only be accepted in the form of a court order.[5]
Why was such a change made?
Intermediaries are ill-equipped to pre-screen content and determine intellectual property infringement. Further, it would be an unreasonable interference upon the rights of the intermediary to carry on its business. It would adversely affect free speech and would cast an undue and tedious obligation on the intermediaries. He Delhi HC gave a very interesting judgement discussing this issue in Kent RO Systems Ltd & Anr. v. Amit Kotak & Ors.[6]
Thus, this goes on to show that intermediaries have to show some responsibility in taking Court orders into consideration. However, it is ironical that the only liability placed upon intermediaries is that of following court orders and no other responsibility that would compel them to have more effective takedown policies.[7]
Suggestions and Conclusion: The distinction between domain name protection and trademark protection may cause some hindrances now, but it may be only a matter of time before this distinction slowly withers away with the emergence of the principle of cross-border reputation in the current digital age.
I believe that the standard of registration of domain names needs to be revisited as they are given on a “first-come, first-serve” basis. This case is a perfect example of what happens when domain name registration is so liberally and rather callously granted.
A fallacy of law must be pointed out, under Copyright Law in India, when a work is seeking copyright protection, and this work can also operate as goods and services, then a clearance has to be obtained from the Trademark Registry to ensure that the work does not conflict with existing trademarks. However, domain names are not under the purview of this requirement. Such an exemption will create a way for infringers to thrive on e-commerce platforms. This also means that disputes relating to domain names will multiply in number. Thus, it is suggested that the link between domain name registration, trademark and copyright law in terms of registration needs to go hand in hand and, therefore, needs to be revisited by the legislative.
Lastly, it is abundantly clear that the Delhi HC has assessed the present case in the right direction so far. This case remains pending, and hopefully, the plaintiffs will see the light at the end of the tunnel. This case, however, has the potential to become a noteworthy one if it compels judiciary or legislative to revisit the domain name registration procedure and make changes to the same to harmonise it with the rest of the IP provisions to reduce the multiplicity of disputes relating to domain names and infringement of IP thereof.
References:
[1] https://cn.lakshmisri.com/MediaTypes/Documents/L&S-IPR-Amicus-November-2021.pdf
[2] Living Media India Limited v. Jitender V. Jain and Anr., 2002 VAD (Delhi) 161.
[3]https://www.manupatrafast.com/NewsletterArchives/listing/SAIPTech%20Singh%20Associates/2018/Jul/IPR-July-18.pdf
[4] https://induslaw.com/app/webroot/publications/pdf/alerts-2020/Induslaw-Infolex-IP-October-2020.pdf
[5]https://www.meity.gov.in/writereaddata/files/Addendum1_Public_comments_on_draft_intermediary_guidelines.pdf
[6] Kent RO Systems Ltd & Anr. v. Amit Kotak & Ors, CS(COMM) 1655/2016 (Del) (India)
[7] https://www.mondaq.com/india/social-media/794624/analysis-of-the-information-technology-intermediaries-guidelines-amendment-rules-2018
Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.
