People Interactive India Private Limited, proprietor of the well-known trademark "Shaadi.com" for matrimonial and matchmaking services since 1996, filed a suit in 2015 against defendants for infringement and passing off by using the deceptively similar domain and mark "getshaadi.com" for identical services, including embedding "Shaadi.com" as meta-tags to divert over 73% of internet traffic. Despite service, defendants did not appear, leading to an ex-parte proceeding; interim injunction was granted in 2014 and confirmed in 2019.
The court reasoned that the marks are deceptively similar with "Shaadi.com" subsumed in the impugned mark, causing confusion, and defendants' dishonest adoption, bad faith use of meta-tags, and traffic diversion amounted to infringement under Sections 28-29 of the Trade Marks Act, 1999, passing off, and dilution, while "Shaadi.com" qualifies as a well-known mark under Section 2(1)(zg) due to extensive use, reputation, and awards.
The suit was decreed with permanent injunction restraining use, directing domain deregistration, ordering delivery up of infringing materials, and awarding costs of Rs. 25 lakhs to plaintiff, with 8% interest if unpaid within 12 weeks.
- Domain names function as business identifiers and are protectable under passing off laws even without specific legislation, as they can lead to consumer confusion: Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145 (Para 24).
- Dishonest adoption of a mark warrants injunction regardless of delay, as mala fides vitiates the defendant's claim: Midas Hygiene Industries Pvt. Ltd. & Anr. v. Sudhir Bhatia & Ors., (2004) 3 SCC 90 (Para 26).
- Use of another's trademark as meta-tags or keywords constitutes infringement and passing off by diverting traffic and hijacking goodwill: Observations from prior order in Suit (I) No. 622 of 2014 (Para 21-22).
- A mark qualifies as well-known under Section 2(1)(zg) of the Trade Marks Act, 1999, if it has long, exclusive use, high reputation, substantial advertising, and public association transcending its field: Applied criteria from Sections 11(6)-(7) (Para 33F-G).
- In commercial suits under the Commercial Courts Act, 2015, courts must award realistic, compensatory costs considering parties' conduct, including exemplary costs for dishonesty: Section 35 CPC as amended (Para 33H).
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
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