Saturday, September 10, 2005

It a domain-name a trademark in India? The implications, if it is a trademark, is that it can be registered, and a suit for infringment can be filed if the trademark is violated by a third person. And an action for "passing off" can also be inititated against a third party who is intentionally misleading potential clients by a domain designed to sound similar.
The Supreme Court of India has held in 2004 that a domain is not a trademark, but it is "like a trademark." This decision confirmes that a domain name owner can sue for passing off.
But are all domains "like a trademark"? If not, then the domain-name is not entitled to proceed under a theory of passing off. This case hints otherwise. However, it endoreses other Indian cases which seem to suggest that the answer is yes. This decision, like most recent decisions on technology law, relies of principles developed by US courts.
Though this isssue is not discussed in the Indian Supreme Court decision, courts in the US have have mostly used a functional analysis to determine if a domain has the characteristics of a trademark. If a domain serves just as a phone number, then some courts have held that it is not like a trademark, and accordingly is not protected as such. There are a few rulings which indicate that the website should be given a prominet place in marketing materials including a place of prominence in business cards of employees, so the domain name rises beyond a source of information such as a telephone address- and swims into the terriotory of a trademark.
The same approach would seem to work in India, after the recent Supreme Court decision.

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