The Indian judicial system has become more and more proactive with respect to tackling trade disputes, specially domain name disputes. We see an increasing number of engaging disputes surrounding business names and trademarks.
Recently, the Indian Court witnessed a very interesting case, where two parties were in contest for the ‘Kesari TV’ name.
Punjab Kesari Publishing House Ltd. were the plaintiffs in the case. The Plaintiff had started a newspaper by the name ‘Punjab Kesari’ in 1949. The Plaintiff has been continuously using the mark since then for publishing news articles.
The Plaintiff owns different classes of proprietorship over ‘Punjab Kesari’. It acquired Class 35 marks in 1965, Class 9 in 2008 and both of these classes in 2018. It presented its recent financial figures for different years, thus establishing its notoriety and popularity in the Industry.
However, the Plaintiff was disheartened about a different entity using and exploiting the Plaintiff’s mark. The defendant was using a domain name to carry out its promulgation.
The defendant had registered the domain name KesariTV.com. Not only was the domain name similar to the proprietor mark of the Plaintiff, it was also using logos and symbols associated with the Plaintiff as well.
The Plaintiff has been using the domain name Kesari.tv, since 2014. Owing to this and the continuous use of Kesari TV mark, the Plaintiff claims common law rights over the same.
However, the domain name KesariTV.com was registered and used. The Plaintiff observed the counterfeiting domain name in 2022. The Plaintiff claims that the dispute domain name had been registered by a freelance journalist associated with the Publishing company.
The plaintiff asserts that while working with the firm, the freelance reporter maliciously registered the domain name. And now is using the symbols and logos of the Plaintiff to appear as a subsidiary or an entity in association with the Plaintiff.
An interesting point relating to Domain Disputes in India is that the Domain Registrar is also a party to many of these cases. The Plaintiff in this case too had included the Domain Registry services, as one the Defendants. This is done because, the Plaintiff considers the domain registration in consonance and abetting with the Defendant in infringing the trademark rights of the Plaintiff.
The Panel found that the disputed domain name does look very similar to the Plaintiff’s domain name. The Court commented that to a common eye, both of these platforms would appear to be in partnership with each other. Thus, the panel admitted that the domain name and the content of it, both were detrimental to the Plaintiff. The Court mentioned that in case, no action is taken, the grievances of the Plaintiff would continue to grow.
The Panel decided in favour of the Plaintiff. It granted an ad interim (temporary and awaiting a final order) injunction against the Defendants. The court restrained the Defendant from using the domain name and any mark associated with the Plaintiff.
You can read the full text document of the case here.
The HC went on to say that the registered marks of the paper ‘Punjab Kesari’ and its unregistered marks ‘Punjab Kesari TV’ where the paper enjoyed priority of user, were being used by Buland “for the very same purpose”, adding that the nature of services provided by the newspaper under its marks are the same as that provided by the Buland.