CENTRAL UNIVERSITY OF SOUTH, BIHAR

A PROJECT REPORT

ON

TRADEMARK INFRINGEMENT ISSUES IN CYBER SPACE

SUBMITTED BY- UNDER SUPRIVISION OF-

NAME:-YASHASAVI SINGH Dr. Digvijay Singh {Asst.Prof.cusb}

E. N: - CUSB1513125050

SEM-9th

COURSE: B.A.LLB (H)

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 INDEX

NUMBER TOPICS PAGE

1. AKNOWLEDGMENT 03

2. INTRODUCTION 04-07

3. FUNCTION OF TRADEMARK 07

4. DOMAIN NAME AND TRADEMARK 08

4. VARIOUS FORMS OF INFRINGEMENT 09-10

5. LANDMARK JUDGNMENT 10-11

6. LOOPHOOLES AND TRADEMARK, IT, 11

CPOYRIGHT
7. CONCLUSION AND SUGGESTION 12

8. BIBLIOGRAPHY 13

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 ACKNOWLEDGMENT

At the outset, I would like to express my heartfelt gratitude and thank my teacher, Dr.
DIGVIJAY SINGH Sir for putting his trust in me and giving me a project topic on
“TRADEMARK INFRINGEMENT ISSUES IN CYBER SPACE” such as this and for having
the faith in me to deliver. sir, I wholeheartedly thank you for giving me an opportunity which
helped me to develop my knowledge in this interesting subject as well as to grasp a better
approach in dealing with this important branch of Law.
My gratitude also goes out to the staff and administration of CUSB for the infrastructure in the
form of library and IT Lab which was a source of great help for the completion of this project.

In the end, I feel it my utmost duty to extend my thanks to all my friends for helping me every
time when I found myself in some difficulties while completing this project. I am also indebted
to the ideas of various seniors whose works have been the source of inspiration and dedication in
completing this paper.

YASHASAVI SINGH

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INTRODUCTION:-CYBERSPACE AND TRADEMARK INFRINGEMENT
The cyberspace serves as an unfettered medium of information and unsolicited medium of
communication; hence the inherent difficulty of controlling content upon the virtual world has
become a major cause of concern for Intellectual Property right (IPR) owners. Though IPR
violations over the cyber space take place in numerable ways, the ambit of this Article is
confined to violations of copyright and Trademark in the cyberspace with special emphasis on
the Indian scenario. During the course of the Article reasons of rampant IPR violations, laws
regulating the cyber space, possible safeguards and case Laws on the subject will be discussed
and analyzed.

Creative work in the field of arts, music, literature, cinematography etc. find protection under the
Indian Copyrights Act, 1957 and anything falling within the definition of Section 13 of the Act is
entitled to copyright protection under the Act. The object of the copyright Law is to promote,
protect and reward creativity and it is to achieve these objections, the Indian Copyrights
Act,1957 provide for stringent punishment for violation as defined under the Act. The violation
of Copyright in India is covered under Section 67 of the Act which provides for a minimum
punishment of 6 months extendable upto 3 years and fine upto Rs. 50,000. Recently the
Copyright Act has been amended by the Amendment Act of 2012. Vide the said amendment,
Section 14 relating to exclusive right in the copyright work is been amended which now provides
that rights in artistic works, cinematography films, and sound recording now includes ‘storing’ of
it in any medium by electronic or other means. The purpose of the amendment is to cover the
copies that get created at multiple locations, including the transmitting network and user’s
computer. Hence, all such ‘storages’ have been rendered illegal and in violation of the Act by
virtue of the 2012 amendment. The Act has also created liability for internet service providers
and further provides protection of the digital media by providing penalties for circumvention.
The objective of the said amendment is to make the Indian Law compliant with International
internet treaties such as WIPO Copyright Treaty, WIPO Performance and Phonograms Treaty.

On the other hand, the Cyber space in India is regulated by the Indian Technology Act, 2000( IT
Act, 2000) which defines various offences in the cyber space as well prescribes their punishment.
What is noteworthy, is that the IT Act, seriously falls short to protect IPR violations on the
internet and no provisions exists in the Act dealing exclusively with IPR violations. This has led

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to an unregulated and unprecedented growth of copyright violations on the internet mostly
common in the form of piracy. In the physical world, re-publication, distribution, transmission
of author’s copyrighted work attracts stern consequences; however, the same is rampant on the
internet without any adverse consequences owing to the following reasons:

a. Quality Control: Unlike the physical world, where a copied material for ex. a book
copied from a photocopy machine suffers quality limitation vis a vis the original one, no
such limitation exists in the cyberspace and even the 100th copy of a song, photo, video
on the internet is exactly the replica of the original one. Hence, quality is never
compromised in online piracy.
b. No Cost of Reproduction: Piracy in the physical world may entail serious expenses in
the form of making replicas of books, CD’s etc. however, the cyberspace is free from
such fetters and replicas can be created, uploaded, published and distributed at the click
of a button.
c. Hard to Track Offender: In the virtual world, with the use of appropriate technology,
act of piracy can be committed without facing the risk of identity revelation or tracking.
This defeats any possible action which might be taken against the offender.
d. Jurisdiction Issues: Since, Internet has no origin and no end, many a times violaters
escape Legal action owing to lack of territorial jurisdiction of the Court to try the
Offender.

The most celebrated case worldwide about copyright violation is the Napster Case1, where
the Plaintiff was sued by the Defendant for P2P sharing, Napster here was a company
providing a software whereby the user can share media files stored in his computer with
other user of Napster. The Companies whose copyrights had been violated demanded $
1,00,000 from Napster for each violation of copyright. In a settlement arrived between the
Parties, Napster agreed to pay, one third of all future profits to the settling firms. Ultimately
Napster was forced shut in 2000.

Similarly, Trademark violation in the cyber space is another grave area of concern. Section
28 of the TradeMark Act 1999, grants exclusive right to the owner of the Trademark to use

1 11 A&M Records; Inc. v. Napster; Inc. 2000 WL 573136, I (N.D. cal 2000)

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 the Trademark and also to protect his trademark by way of suit for injunction, damages,
rendition of accounts etc. The Indian Courts have recognized the importance of protection of
trademarks in the virtual world. In Yahoo.com V. Akash Arora2, it was held that domain
names serve the same function as a trademark, is not merely an address and are entitled to
equal protection as a trademark. Violation of the trademark in the form of copying of the
brand name on the internet is popularly known as ‘cybersquatting’ whereby the violator
intentionally registers a domain name which includes trademarked words, company names,
brand names etc. In Google V. Racha Ravinder3, the Defendant got registered
googlenetbiz.com. Google Inc being the owner of well-known trademark ‘Google’ filed a
complaint. It was held that the Defendant with ulterior motives to reap upon the established
goodwill of the Complainant registered the said domain name and hence it was ordered that
the domain name be transferred to the Complainant, Google Inc.

The biggest challenge the owners of Intellectual Property face is the enforcement of their
rights in case of violation in the cyber space. In the real world, it is easy to determine the
Court having necessary territorial jurisdiction to adjudicate the matter, in case of violation
over the internet, since the user maybe situated in some other country (bound by different
laws), IPR owner in some other and Internet provider in some third country, the question
arises as to which Court will have the territorial jurisdiction to entertain the matter. Though,
the question of jurisdiction is still debatable, the Indian Law has attempted to put rest the
controversy vide virtue of Section 62 of the Copyright Act and Section 134(2) of the
Trademark Act. Though Section 20 of the Civil Procedure Code entails territorial
jurisdiction only upon a Court where the Defendant resides or personally works for gain or
the Court within whose jurisdiction, cause of action has taken place, this bar has been done
away with Section 62 of the Copyright Act and Section 134(2) of the Trademark Act which
provide that the Plaintiff can sue at the place where he resides or works for gain irrespective
as to whether the defendant resides or not and irrespective of the cause of action. However,
the Delhi High Court in Microsoft Corporation V. Pradeep Khanna4 interpreting Section
62 and 134(2) has held that “the intention of section 62 and 134(2) is to enable the Plaintiff to

2 1999 PTC (19) 201

3 WIPO D2009-1454
4 CS(OS) 2027/2009

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initiate litigation at a forum convenient to it, it is not open to the Plaintiff to choose a forum
which is not convenient to either of the Parties.CPC, however constitutes a grand norm, the
ethos and essence of which percolates through all other statues.”

Thus, Indian Legislature has made a commendable effort to clarify the jurisdiction issue in
case of violation of IPR in the cyber space.

Since, more often than not, the victims of IPR violations specially trademarks are corporate
entities, it is utmost important that necessary safeguards are taken by the companies before
going online. One such mechanism is digital watermark which allows copyright owners to
track distribution, access and payment of its material. In addition to this, various methods
such a providing free trial version of software, free upgrades, sale of complimentary
technology etc are also vouched by corporations as attempts to retain customers and also
protect their valuable intellectual property over the internet at the same time.

Trademark Law & Domain Names Issues in Cyberspace

Definition of Trademark- “a mark capable of being represented graphically and which is

capable of distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours”.

Functions of a Trademark

A trademark serves the purpose of identifying the source of origin of goods. Trademark
performs the following four functions:-

i. It identifies the product and its origin.

ii. It guarantees its quality.

iii. It advertises the product

iv. It creates an image of the product in the minds of the public, particularly consumers or
the prospective consumers of such goods. Examples of trademark- Lee, Skoda, Colgate,
Pepsi, Brooke Bond, Sony etc.

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What is a domain name?

Every computer on the Internet is assigned a unique address called an Internet Protocol
Address (IP Address). A typical IP address looks like this:

67.19.217.53

The above IP address belongs to a web server on which the official website of Asian School
of Cyber Laws (ASCL) is hosted. If you use an Internet browser and type in
http://67.19.217.53 in the address bar, you will reach the ASCL website. However, it is very
inconvenient to remember such numbers. It is much easier for humans to remember names
(asianlaws.org is a domain name). This is why the domain name system (DNS) was
developed.

Are domain names trademarks?

A domain name is not itself a trademark. A trademark is a right, granted under law, to use a
mark in commerce to represent a product (or a business, in the case of a trade name). A
domain name is a word or phrase registered in the domain name registration system. A
domain name may be a company’s expression of its trademark. The use of a trademark in a
domain name, for instance, is the equivalent of using the trademark on a billboard, or in
advertising. For example, the trademark “data64” can be used in magazine advertising, or in
the domain name, data64.com. The use of the domain name may be the way in which a
company initially establishes its rights to a trademark.

Illustration

The use by Data64 LLC of the domain name data64.com was one way in which Data64 LLC
established its right to the “data64” trademark.

Domain name disputes often arise when “cyber-squatters” intentionally register domain
names that include a trademarked word, company name, name brand of a product, or even
names of film stars. However, these disputes are not always between a person with a purely
speculative reason for registering the domain name and a person with a legitimate reason to

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want the domain name. Sometimes both parties have a legitimate use and right to the domain
name.

Cybersquatting is the registration of a domain name by someone who lacks a legitimate claim
with the intent to:-

1. Sell the name,

2. Prevent the trademark holder from gaining access to the name, or

3. To divert traffic

Domain Name Disputes in India

India’s top level domain is “.in”. The sunrise period for the “.in” domains was from 1st
January, 2005 to 21st January, 2005. During this period owners of registered Indian
trademarks or service marks were given an opportunity to apply for “.in” domains. The
booking was opened to the public from 16th February, 2005. IN Registry is the official “.in”
registry. INRegistry is operated under the authority of NIXI (National Internet exchange of
India) NIXI is a not-for-profit company registered under section 25 of the Indian Companies
Act. NIXI has been set up to facilitate improved Internet services in India.

Various Forms of Infringement of Trademark through Cyberspace

A. Cybersquatting

Various types of domain names disputes come for consideration before the courts all over
world. One of the most serious kinds of disputes has been about ‘Cybersquatting’ which
involves the use of a domain name by a person with neither registration nor any inherent
rights to the name. Trademarks and domain names being similar, have been exploited by
some people who register trademarks of others as domain names and sell those domain
names back to the trademarks owners or third parties at a high profit. This is known as
‘cybersquatting’ which means some person sitting on the property of another person. The
practice of ‘cybersquatting’ is abusive whereby one entity registers a domain name that
includes the name or the trademarks of another. This practice shows the importance of the
role played by domain names in establishing online identity. This practice is usually famous

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in order to either block the legitimate user registering its most sought after domain name or
hoping to sell the names for profit in the market. Such a trend of cybersquatting has led the
courts to consider the relationship between trademarks and domain names. To file a
complaint to prevent cybersquatting, the complainant will have to prove the dishonest
intention, lack of legitimate rights and interests and similarity of domain name with the
trademark.

B. Reverse domain name hijacking

It is also known as reverse cybersquatting. It happen when a trademark owner tries to secure
a domain name by making false cybersquatting claims against a domain name’s rightful
owner through legal action. Sometimes, domain names owner has to transfer ownership of
the domain name to the trademark owners to avoid legal action and costly expenses, particularly
when the domain names belong to the smaller organisations or individual who are not economically
sound to fight the case. Reverse domain name hijacking is most commonly done by larger
corporations and famous wealthy individuals.

C. Meta tags

Meta tags are an element of web pages that is also known as Meta elements. Meta tags provide
information about page descriptions, key words and other relevant data. Originally, Meta tags were
used in search engines to define what the page was about when the internet was in the early stages,
Meta tags were used to help the place web pages in the correct categories. Nowadays, people
began abusing Meta tags to build false page rankings for web pages that were poorly constructed.
Meta tags can be categorised into title, description and keywords.

Landmark Judgments on Trademark and Domain Names Issues

1) Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620

(Delhi High Court) The first case in India with regard to cyber squatting was Yahoo Inc. v.
Aakash Arora & Anr., where the defendant launched a website nearly identical to the
plaintiff’s renowned website and also provided similar services. Here the court ruled in

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favour of trademark rights of U.S. based Yahoo. Inc (the Plaintiff) and against the defendant,
that had registered itself as YahooIndia.com. The Court observed, “It was an effort to trade
on the fame of yahoo’s trademark. A domain name registrant does not obtain any legal
right to use that particular domain name simply because he has registered the domain
name, he could still be liable for trademark infringement.”

2) Tata Sons Ltd & Anr. v. Arno Palmen & Anr 563/2005

(Delhi High Court) The Delhi High Court, in its recent judgment dealt with trademark
protection for domain names. The suit was instituted by the plaintiffs against the
defendants seeking permanent injunction against the defendants from using the
trademark/domain name “WWW.TATAINFOTECH.IN” or any other mark/domain name
which is identical with or deceptively similar to the plaintiffs’ trademarks – “TATA” and
“TATA INFOTECH”

Loopholes under the IT, Trademark and Copyright Act

There is no provision in the current or proposed Information Technology Act in India to

punish cyber-squatters, at best, the domain can be taken back. Though there is no legal
compensation under the IT Act, .IN registry has taken proactive steps to grant compensation
to victim companies to deter squatters from further stealing domains. Most squatters however
operate under guise of obscure names. Under NIXI (National Internet Exchange of India), the
.IN Registry functions as an autonomous body with primary responsibility for maintaining
the .IN cc-TLD (country code toplevel domain) and ensuring its operational stability,
reliability, and security. It will implement the various elements of the new policy set out by
the Government of India and its Ministry of Communications and Information Technology,
Department of Information Technology. The Information technology Act lack somewhere in
respect of jurisdiction issues, cybercrimes related to IPR, cyber stalking, cyber defamation
etc. etc. Likewise, the Indian Trademark Act, 1999 and Copyright Act, 1957 are also silent
on issues arising out of online Trademark and Copyright infringement. Though computer
programmes are protected under the Copyright Act but it does not provide remedies for
online software piracy.

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Conclusion and suggestion:

Protection of intellectual property in the cyberspace is indispensible for growth of e-

commerce. Corporations, authors, musicians etc. must be given adequate protection to reap
benefits of their hardwork. It should act as an important weapon for trademark holders in
protecting their intellectual property in the online world. In United States, they have special
legislation for prevention of cybersquatting i.e. “U.S. Anti-Cybersquatting Consumer
Protection Act, 1999” which protects the interest of owners of both registered and
unregistered trademarks against use of their marks within domain names and also safeguards
living persons against use of their personal name under certain circumstances. So it’s a high
time for India to enact such a suitable legislation which will protect the rights of copyright,
trademark owners.

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 BIBLIOGRAPHY

1. Dr. Farooq Ahmad, Cyber Law in India, New Era Law Publications, Edition 4th, 2011

2. www.org/wiki/Copyright_aspects_of_hyperlinking_and_ Framing

3. www.wipo.int/

4. www.makeinindia.com/intellectual property facts/

5. www.saraswatnet.com/article5.html • www.indiankanoon.org

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