Introduction
The position of Internet in commerce and commerce, not solely as a medium
for doing enterprise and rising outreach, but in addition as a platform
for selling manufacturers, can’t be underestimated in at the moment’s
actuality of the digital world. It follows that domains assume
nice significance on the planet of manufacturers and, consequently, within the
contours of commerce mark legislation.
Being a standard legislation nation, a side that centres round commerce
mark safety in India, is its “use”. It is
uncontentious that the incorporation of a commerce mark as a part of a
area title that resolves to an lively web site constitutes use of
the mark underneath Indian legislation. Does the identical, nonetheless, maintain true even
if the area title in query is parked?
Domain title parking happens when a website title registrant
deposits its area title with a registrar or parking service
supplier who creates placeholder pages, versus a completely
useful and developed web site.1 In different phrases, the
observe of an individual or entity getting a website title registration
and easily holding it in his/her/its title, to the exclusion of
others, with out pointing it to an lively web site, known as
‘area title parking’. While it’s settled legislation that,
registration and use of a website title which includes a mark
similar or deceptively just like another person’s commerce mark,
can injure the rights of the proprietor of such a mark2, this
article goals to discover whether or not mere parking of a website by the
proprietor of a commerce mark qualifies as “use” of the mark
included within the area title.
“Use” of a Mark: Interpreting the related provisions
of legislation in India and the US
India
In India, Section 2(2)(c)(i) and (ii) of the Trade Marks Act,
1999 (hereinafter the “TM Act”) defines use of a mark as
follows:
“Unless the context in any other case requires, any reference
to using a mark
(i) in relation to items,
shall be construed as a reference to using the mark upon,
or in any bodily or in another relation by any means, to such
items;
(ii) in relation to companies,
shall be construed as a reference to using the mark as or
as a part of any assertion concerning the availability, provision or
efficiency of such companies.”
The wording “in another relation by any means” opens
the above definition to broad interpretation. Indian courts, in
quite a few circumstances3, have held that ‘use’ doesn’t
essentially imply and indicate precise bodily sale; even mere
commercial with out having even the existence of the products will be
mentioned to be a ‘use’ of the mark.4 Thus, the
interpretation of ‘use’ of a mark, in India, as famous
above, is broad sufficient to incorporate commercial and promotional
actions inside its ambit, with out requiring precise bodily use
of the mark on items. The above interpretation broadens the scope
of commerce mark safety to situations of use which can not
basically represent use of a mark on the involved items within the
literal/bodily sense.
The ambit of commerce mark safety in India, nonetheless, doesn’t
prolong to a situation the place there isn’t any bona fide intention
to make use of the mark on or in relation to the involved items or
companies. In the case of Vishnudas v. The Vazir Sultan Tobaco
Ltd.,5 the Hon’ble Supreme Court of India held
that, if a dealer has no bona fide intention to commerce in
sure items, he shouldn’t be permitted to take pleasure in monopoly over
the commerce mark in respect of these items even when the dealer owns a
commerce mark registration for a broad specification of products protecting
these items. Further. within the case of Unichem Laboratories Ltd.
v. Ipca Laboraties & Ors.6, it was held that
“no court docket of legislation permits anyone to nook or site visitors any commerce
mark with naked registration with out bona fide intention to
use”.7
From these circumstances, it’s clear that mere registration of a commerce
mark, devoid of any bona fide intention to make use of it in
respect of the products and companies lined by the registration, does
not entitle the registrant to take pleasure in monopoly over the commerce mark in
respect of these items and companies.
The United States
In the United States, the understanding of use of a mark,
embodied within the definition of “use in commerce”, is extra
expressly topic to a qualification that such use be industrial in
nature. §1127 of the Lanham Act, 19468 defines
“use in commerce” as solely ‘bona fide use
made within the strange course of commerce, and never made merely to
reserve a proper in a mark.’ It follows that use of a commerce mark
shouldn’t be bona fide if the underlying transactions should not
genuinely industrial.9
Token Use
The time period “token use” refers to makes use of of a commerce mark
which are purely for the aim of securing rights in a mark, as
opposed to make use of in furtherance of any true curiosity in or
expectation of creating industrial gross sales.10
In Laboratoire De La Mer Trade Marks11, the
query for willpower earlier than the court docket was, what quantity of use
was required to show that the mark was put to real use. It was
held that, if the use was solely slight, relying on circumstances,
it would present that the dealer was not real in its actions. If
the primary or principal motive was commerce mark safety, relatively than
making gross sales underneath the marks, the use was not bona fide.
The commerce mark proprietor ought to show that use was not merely
“colourable” or “token” however bona fide
use of a mark within the strange course of commerce.
All in all, it’s obvious that use of a mark should be a bona
fide one, and never a token or colourable one, merely to achieve
safety underneath commerce mark legislation, to ensure that it to take pleasure in
safety underneath the US commerce mark legislation regime.
Commercial Magnetism
To help the competition that “use” should be a
bona fide use or use in commerce, the doctrine of
‘industrial magnetism’ deserves a point out.
The doctrinal expression of the “industrial magnetism”
precept underlying all of commerce mark legislation is the requirement that
a commerce mark be utilized in commerce. This requirement permeates all
aspects of widespread legislation commerce mark legislation and of the Lanham Act, and it
holds that any conduct to which commerce mark legislation is to use should
contain using an emblem in a method that buyers can understand
the image in order that it may exert its industrial magnetism on them.
The logic behind the requirement is straightforward: with out use of a
image, customers can’t understand it; with out client notion,
the image can’t exert no matter industrial magnetism it might have
over customers; with out industrial magnetism, the image doesn’t
operate as a commerce mark.12
As per the doctrine of business magnetism, as soon as the image is
utilized in commerce, solely then can there exist a “client
hooked up to that commerce mark” who can understand the mentioned
mark. Once perceived, the mark can exert magnetism or entice the
client in direction of the nice(s) or service(s) that the mark pertains
to. Simply put, the doctrine contends {that a} commerce mark attains its
id solely due to its notion, recognition and
attractiveness to a client. In different phrases, a commerce mark acts as
a magnet to the patron to purchase a product. Undoubtedly, this
utility of a commerce mark will be mentioned to be industrial in nature. It
follows that “use” should be a bona fide use or a
use in commerce to achieve commerce mark safety.
Analysis: Parked Domain Name
As famous above, a parked area title is a registered area title
that isn’t linked to a web site or e mail internet hosting
service.13 In easier phrases, a parked area is only a
title/handle on the Internet owned by a person or an entity.
This is akin to a state of affairs the place a dealer obtains a commerce mark
registration with none bona fide intention to make use of the
commerce mark. In such a state of affairs14, the place other than
registration of area title, no substantial steps are undertaken
in direction of industrial use of the mark,15 monopoly over the
mentioned parked area title shouldn’t consequence within the registrant
claiming exclusivity over the mentioned area title or commerce marks
similar or deceptively just like the mentioned area title.
Considering each subclauses of Section 2(2)(c) the TM Act
point out “in relation to items/companies”, to be able to
represent ‘use’ throughout the definitions supplied underneath
these provisions, there should be a connection between the situations
of use of the mark being relied on, and the products or companies on or
in relation to which such use is sought to be established.
Clearly, mere parking of a website title fails to ascertain any such
reference to the products or companies. Hence, merely parking a
area title wouldn’t qualify the definition of “use” of
a mark underneath the TM Act.
Thus, a parked area can, on the most, be understood to be a
token use, versus a industrial one. Since a parked area is
not related to any web site or internet hosting service, thereby missing
any reference to items or companies, the necessities of
‘industrial magnetism’ can’t be mentioned to be met. Further,
no client will be mentioned to be visiting the parked area for any
industrial purpose.
Conclusion
In view of the above, except confirmed in any other case, mere parking of a
area title shouldn’t fulfil the criterion of bona fide
use of the commerce mark it incorporates. Therefore, to be able to
safe rights in a commerce mark, it should be utilized in a fashion that it
attracts industrial magnetism. Given this, within the authors’
opinion, mere parking of a website title doesn’t allow its
registrant to assert ‘use’ of the commerce mark it
incorporates.
Footnotes
1 Elizabeth M. Flanagan, No Free Parking: Obtaining
Relief from Trade mark Infringing Domain Name Parking, 2007
Minnesota Law Review (92) 498, <https://www.minnesotalawreview.org/wp-content/uploads/2012/01/Flanagan_final.pdf>
2 HT Media v. Brainlink International,
Inc. CS COMM 119/2020, Delhi High Court; see also Maruti Udyog
Limited. v. Maruti Software Private Limited Case No. D2000-1038,
<https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1038.html>
3 J N Nicholas Ltd v Rose and Thistle AIR 1994 Cal 43,
para 20; Hardie Trading Ltd. and Anr. V. Addisons Paint and
Chemicals Ltd. 2003 Supp(3) SCR 686
4 Thilini Kahandawaarachchi, A Study of Indian and US
Trade mark Law Relating to the Effect of ‘Non-Use’ of a
Trade mark, 2007 JIPRS (12) 236-243
5 1996 SCALE (5) 627
6 2011 (45) PTC 488 (Bom) /2011
7 Unichem Laboratories Ltd. vs. Ipca Laboratories Ltd.
and Ors., 2011 (45) PTC 488 (Bom)
8 § 45 (15 U.S.C. § 1127), https://www.uspto.gov/sites/default/files/trade
marks/law/Trade mark_Statutes.pdf (final accessed on
17/02/2020).
9 Thilini Kahandawaarachchi, A Study of Indian and US
Trade mark Law Relating to the Effect of ‘Non-Use’ of a
Trade mark, 2007 JIPRS (12) 236-243
10 Margeth Barrett, Finding Trade mark Use: The
Historical Foundation for Limiting Infringement Liability to Uses
“within the method of a mark”, 2009 Wake Forest Law
Review (43) 954, < http://wakeforestlawreview.com/wp-content/uploads/2014/10/Barrett_LawReview_12.08.pdf
>
11 2002 F.S.R. 51
12 Uli Widmaier, “Use, Liability, and the Structure
of Trade mark Law”, Hofsta Law Review(Volume 33 Issue 2),
2004, web page 606, <
https://scholarlycommons.legislation.hofstra.edu/cgi/viewcontent.cgi?article=2433&context=hlr>
(final accessed on 17/02/2020).
13 Jamie, “What Is A Parked Domain? – Guide To
Parked Domain Names”, <https://makeawebsitehub.com/parked-domains/>
(final accessed on 17/02/2020)
14 Unichem Laboratories Ltd. vs. Ipca Laboratories Ltd.
and Ors., 2011 (45) PTC 488 (Bom)
15 Rajat Agarwal and Ors. v. Spartan Online Pvt. Ltd. and
ORs. CS No. 35/2017, Calcutta High Court
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