Research Note on Infringement of unregistered trademark

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the unregistered trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.[2]

To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of rebuttal on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

C. Registered and Used in Bad Faith

Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).[3]

Indian Cases

(a) The first element in an action for passing off, as the phrase ‘passing off itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff’s. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant’s goods or services are the plaintiff’s.

(b) The second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the imperfect recollection of a person of ordinary memory.

(c) The third element of a passing-off action is loss or the likelihood of it.

14. In a decision of the Delhi High Court reported in 1997 PTC 347 in the case of Bimal Govindji Shah v. Panna Lal Chandu Lal the effect of Section 28 sub-sections (1) and (2) of the said Act have been explained and it has been held amongst others that, “in other words registration of trade mark does not provide a defence to the proceeding for passing off as provided for under Section 27(2) of the said Act the prior user of a trademark is entitled to maintain an action against a subsequent user of identical trademark including register user thereof.”

[1] Mesuma Sports Sdn Bhd v. Majlis Sukan Negara Malaysia, 2015 SCC OnLine MYFC 26

[2] Gregor Fisken Limited v. Private Registrations Aktien Gesellschaft CNR of Granby & Sharpe St., 2009 SCC OnLine WIPO 1120

[3] ETH Zürich (Swiss Federal Institute of Technology in Zurich) v. John Shao, 2016 SCC OnLine WIPO 106

[4] Satyam Infoway Ltd. Case, 2 (2004) 6 SCC 145

[5] Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 3 (2001) 5 SCC 73

[6] SRMB Srijan Private Ltd. v. Super Smelters Ltd., 2019 SCC OnLine Cal 2444

[7] Cutis Biotech Sole v. Serum Institute of India Pvt. Ltd., 2021 SCC OnLine Bom 616

[8] SMS Formulations Pvt. Ltd. v. Sahib Singh Agencies (Bom.) Ltd., 2012 SCC OnLine Bom 1167

[9] EMCEE Pharmaceuticals Pvt. Ltd. v. Centaur Laboratories Pvt. Ltd., 2002 SCC OnLine Cal 617

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