Trade Marks on the Internet

In one line

Trade mark law assumes a territory and a shop, and the internet supplies neither, so the Indian courts have applied the ordinary provisions to online use and left the hard questions of jurisdiction to the general law.

The three problems

Territory. A mark is a national right. Toyota Jidosha Kabushiki Kaisha v Prius Auto Industries Ltd., (2018) 2 SCC 1, holds that the territoriality doctrine governs and the universality doctrine does not, so a mark has a separate existence in each sovereign country. A website is accessible in all of them at once.

Use. Section 29 requires use in the course of trade. A website is a shop window that is always open, everywhere. Whether displaying a mark on a site accessible in India is use in the course of trade in India is the question every online case begins with.

Attribution. Marks online are used by people the proprietor cannot find: anonymous sellers, offshore registrants, automated listings. Chapter 1470 works the liability of the platform.

What the Act already covers

Section 29(6)(d): a person uses a registered mark if he "uses the registered trade mark ON BUSINESS PAPERS OR IN ADVERTISING". A website, a listing, a sponsored advertisement and an email signature are all within it.

Section 29(6)(b): "offers or exposes goods for sale, PUTS THEM ON THE MARKET, or stocks them for those purposes." An online listing offers goods for sale.

Section 29(8): infringement by ADVERTISING which takes unfair advantage and is contrary to honest practices, or is detrimental to the mark's distinctive character, or is against its reputation. This is the provision for keyword advertising and for online comparative claims.

Section 29(9): where the distinctive elements of a mark consist of or include WORDS, the mark may be infringed by the SPOKEN USE of those words as well as by their visual representation. Drafted for radio and television, and now the provision that reaches a voice assistant and an audio advertisement.

Section 2(2)(c)(ii): use in relation to SERVICES means use as or as part of any STATEMENT ABOUT THE AVAILABILITY, PROVISION OR PERFORMANCE of the services. That is what a website does.

So the Act does not need new provisions for most online use. What it needs, and does not have, is a rule about where such use happens.

The Supreme Court's approach

Satyam Infoway Ltd. v Siffynet Solutions Pvt. Ltd., (2004) 6 SCC 145.

Facts. Satyam Infoway had registered sifynet.com and other domains in 1999, SIFY being coined from its corporate name. The respondent began internet marketing under siffynet.net and siffynet.com in 2001.

Held. The injunction was restored. A domain name began as an address but now identifies and distinguishes a business and describes its goods or services, so it has all the characteristics of a trade mark and passing off lies. And confusion on the internet is particularly damaging, because a user who reaches the wrong site may never return.