Trade Mark Infringement In Cyberspace
This article provides a comprehensive overview on what trademarks are, the
various classes of trademarks, types of trademark infringement as well as
trademark violation in the cyberspace. It addresses, more specifically various
domain name disputes. Furthermore this article sheds light on the usage of
advertisement words or 'Ad Words' used by the behemoths of commercial world, to
further heighten their sphere of influence, as well as briefly cover emerging
practices that violate business owners trademark rights.
A trade mark is often thought to only be limited to words, designs, images and
packaging. However the scope of trademark is much wider. Anything which can be
used to identify a source is protected under Trade mark laws, this also includes
the look and feel of a product, particular smells, sounds and colours.
Consequently, the number of the areas within which a trademark can be infringed,
Excluding the traditional areas of its use, its scope today has even extended
to the cyber-space. A Trade mark has extensive applicability in the 'cyber
sphere' with its importance ever-growing, it has a significant impact on the
general operation-ability of products. This fast paced economy of ours is
heavily dependent upon the internet and has inextricably bounded itself with it.
From the most rudimentary tasks such as placing an order online, to something as
sophisticated as predicting the future market trend, every aspect is influenced
by the cyber space.
Domain Name:It is the most appropriate example to enable one in understanding the importance
of trade marks in the cyber-space and what the majority of this article will
focus on. Apart from the use of domain names, the usage of digital advertising
tools known as Ad Words offered by the various search engines such
as Google and Yahoo have considerable influence on many of the issues pertaining
to trade marks in the digital context.
Basic Principles Of Trademark Law
Trade Marks Defined Trade Marks Act 1999, defines a trademark as:
"… a mark capable of being
represented graphically and which is capable of distinguishing the goods or
services of one person from those of others and may include the shape of goods,
their packaging and combination of colours."
As is defined in this act, ones
trademark is required to be distinctive or unique, as it determines the strength
of a mark, thereby offering the mark stronger protection against infringement.
Their hierarchy can be classified into three broad types, differentiated on the
basis of the distinctiveness. There are marks which are Inherently distinctive,
there are marks which can be protected, provided the marks have a secondary
meaning behind them and there are those which are not protected as a result of
being generic in nature.
The ones that are not protected by trademark law and can never be used as trade
marks are, Generic marks. These marks typically refer to a particular class of
products with which the consumers identify, and hence cannot be used as
trademarks. Eg. Aspirin, Band-aid, ChapStick etc.
Stronger than those are Descriptive marks. These marks are, as the name
suggests, words merely describing the product. They are seldom identifiable
based on the mark itself and have to be associated with a producer to acquire
the distinctiveness. This is acquired by establishing a secondary meaning for
Fully protected, are the last class of trademarks. These marks are inherently
distinctive and are eligible for being registered. There are three types of
marks which fall under this class of trademarks. Suggestive marks
suggest using the trademark itself, the quality and/or class of the product or
service, thereby suggesting its use.
Marks such as Citibank or Netflix can be classified as such. 'Arbitrary' marks
and fanciful marks similarly, are unique and distinctive allowing a consumer to
associate a trademark with its source.
Trademark InfringementInfringement occurs as a result of confusion and dilution of the mark. Confusion
is more commonly attributed to two reasons. Likelihood of confusion and initial
interest confusion, with both, presently being used as tests to determine the
grounds upon which one may be allowed to register their trade mark. Aside from
confusion, infringement also occurs due to Dilution of the trade mark, however
only in well known trade marks.
Confusion as described above, occurs due to both likely-hood of confusion as
well as initial interest confusion. 'Likelihood of confusion' for the consuming
public occurs when the infringing party, knowingly or unknowingly, uses a mark
which causes, in the mind of the 'reasonable purchaser', confusion as to the
source of the product.
Similarly the Trade Marks Act also provides for
likelihood of confusion as a grounds for refusal for registration. Initial
interest confusion on the other hand does not occur near or at the time of
purchase of the product. This type of infringement is particularly common in the
An example of initial interest confusion is, the consumer
mistaking an infringing product to be original and authentic, however upon
closer inspection the consumer uncovers the veracity of the infringing product
yet, still decides to utilise it for convenience.
Dilution, occurs when the trademark is used in a way that diminishes its
distinctiveness. As established in American federal law, this is owed to mainly
two reasons. Blurring and Tarnishment. Blurring occurs when there is similarity
between the source of one product and the trademark of a different product
thereby impairing its distinctiveness.
Tarnishment, on the other hand, occurs
when the reputation of a famous product is tarnished due to the actions of
another producer bearing a similar mark as them. Section 29(4) of the Trade
Marks Act states:
… the use of the mark without due cause takes unfair advantage
of or is detrimental to, the distinctive character or repute of the registered
trade mark constitutes infringement.
Infringement w.r.t domain namesAs mentioned, the scope of trademark law, presently, has increased from what it
was ten years ago. However, the scope of infringement has also increased
concurrently and has even extended to the cyber sphere, resulting in the
emergence of a plethora of legal issues. Some of these issues pertain to the
domain names used by enterprises to identify themselves online. In some ways,
the domain names are of virtually the same importance to enterprises as their
trademarks. Thus, in order to protect the brand image the trademark has, they
spare no expense and even purchase similar domain names to their own.
What are Domain Names?To gain a clear understanding of what a domain name is, one first needs to
understand what an Internet Protocol (IP) address is. An IP address can be
understood as a unique name representing a device or a local network, allowing
information to be transferred between them. The unique name is in the form of a
string of four sets of numbers ranging between 0 and 255, allowing for the
differentiation between various devices. For Eg. 18.104.22.168 is a widely used public
address created by Google.
However due to the lacking practicality in typing an IP address to visit a
website, the domain name system was introduced. The domain name system or a DNS,
is the main component upon which lies the foundation of the web. Unbeknownst to
many, from checking up on their emails to spending time on social media
platforms and getting their daily dose of internet, it is possible only because
of the DNS system. In the most basic terms, the DNS is a name which corresponds
to the IP address, which is used to communicate with other computers, similar to
a phonebook of the internet.
Thus, when the user enters a domain name on the internet, it locates the IP
address corresponding to the particular website and connects the device to the
specific servers. This helps in easily locating information online. The domain
name is often worded such that the user is able to link the owner of the website
to the owner of a business. The domain name, thus, essentially bears the
trademark of the owners business.
An example of such a domain name is: apple.com
A domain name has, at the minimum, two levels. These levels are referred to as
top-level domain (TLD) and second level domain (SDL). The top level domains are
the last part of a domain name. In the domain name 'apple.com', '.com is the top
level domain name. There are several types of TLDs, each denoting the nature of
the domain name, country codes (.uk, .eu) , 'generic top level domains' (.edu,
.gov) and several others such as '.net' or '.org'. The second level domain names
are often the subject matter of domain disputes. Laying directly below TLDs in
hierarchy, they consist of the name of the organisation which registered them.
As such 'apple' in 'apple.com' is the SLD.
How are domain names infringed?About ten years ago one would have generally assumed, any activity they conduct
online to remain safe and secure. During this period, the internet was in its
infant stage and not much was known about its potential. Nevertheless, people
took full advantage of its facilities. However, a mere decade later people's
knowledge about the internet had grown to a relatively high level. To avoid
probable negative repercussions authorities also restricted, to a large extent,
the freedom people once enjoyed. Implementation of a variety of laws to curb
unlawful activities on the net indeed proved to be effective but not entirely
Unlike a trademark, a domain name can be obtained by simply purchasing and
registering it. The registry, when registering a mark, does not prohibit anyone
from purchasing one that is deceptively similar to a registered domain name or
even one that is in existence as a trademark. That is to say, a first come first
serve basis system.
This, however, is subject to legal action. The action of purchasing a domain
name in bad faith and attempting to profit from the others identity is known as
cybersquatting, and is often the main source for infringement. Although this is
heavily discouraged, this practice has become more common in the recent years.
Similarly, one will be held accountable for passing off one's trademark even
when the goods or services in question are different in nature than as protected
by an act. Such an argument was relied upon by the defending counsel in Yahoo!,
Inc. vs Akash Arora & Anr. The counsel 'submitted that the trademark laws in
India relate to goods and, therefore, the provisions of Indian Trade Marks Act
are not applicable to the facts and circumstances of the present case which
deals only with goods'. The court, however, passed an ad intern injunction in
favour of the plaintiffs' thereby restraining the defendants from further
passing off as the plaintiffs' mark.
What action can be taken against it?As across several countries, there are specific laws penalising cybersquatting.
For eg. the United States, according to the Anti-cybersquatting Consumer
Protection Act (ACPA), holds a person liable in a civil action by the owner of
mark for infringing as having a bad faith intent to profit from that mark.
In India, although protection of domain names is not explicitly mentioned in the
Trade Marks Act and there are no specific legislations pertaining to such, the
courts do refer to the Trade Marks Act to resolve such issues, generally giving
preference to the protection of the trademark.
The Supreme Court in Satyam Infoway Ltd vs Sifynet Solutions Pvt Ltd has
observed that "the distinction lies in the manner in which both, the trademark
and a domain name operate. A trademark is protected by the laws of a country
where such trademark may be registered. On the other hand, a domain name is
potentially accessible irrespective of the geographical location of the
The outcome of this potential for universal connectivity is not only
that a domain name would require worldwide exclusivity but also that national
laws might be inadequate to effectively protect a domain name……. although the
operation of the Trade Marks Act, 1999 itself is not extra territorial and may
not allow for adequate protection of domain names, this does not mean that
domain names are not to be legally protected to the extent possible under the
laws relating to passing off."
Additionally, several global organisations are also committed to protecting the
security of domain names and have also provided for actions that can be taken
against infringers. The Internet Corporation for Assigned Names and Numbers
(ICANN) is one such organisation, and is responsible for maintaining the central
repository for IP addresses and helps coordinate their supply. All the
registrars, which are responsible for providing a generic top level domain name
(gTLD, .edu;.gov) must be first accredited by ICANN.
If someone has registered a domain name in a generic top-level domain (gTLD)
operating under contract with ICANN that may be infringing on ones' trademark,
they may be able to file a Uniform Domain Name Dispute Resolution Policy (UDRP)
proceeding against the registrant.
However, the UDRP is only available for gTLDs
operated under contract with ICANN. Similar to this, another organisation known
as the world intellectual property organisation (WIPO) which is one of the
fastest growing ICANN-accredited dispute resolution service providers also aims
at resolving domain name disputes through its arbitration and mediation centre.
Ad-WordsSimilar to domain names, there exist another form of online identification, the
string of words that are input in the search bar. The words serve as a key to
opening the path to a variety of search results. This process is influenced
based on ones location, language or previous queries allowing the user to choose
form an array of appropriate choices. However it is not necessary that products
of only a single business will appear even when explicitly searched for.
The cognisance of Ad-Words
Despite its unassuming exterior, Google ad words or simply ad-words is an
advertising system wherein businesses are able to reach their target audience in
the online market by making use of the search engine as well as its partner
sites via advertisements. The businesses buy a specific word or usually a
string of words associated with what they wish to advertise.
when searched for, directs the user to appropriate sites related to their
queries but also shows advertisements for products of the same class but
belonging to a different brand. For eg. when searching for "Pepsi cola" one will
also find advertisements belonging to different brands of cola, such as
Additionally this word or string of words is not necessarily relevant to
their own product and brand. Unlike with a domain name where, if one purchases a
domain in bad faith, they risk losing the rights to it, an ad-word is subject to
no such penalties. Being privately owned, Google sells the word(s) to the
highest bidder thereby allowing the one with the deepest pockets to prevail over
It results in a select few being in an advantaged position, while leaving
similar small businesses and enterprises to subsist. While this is not limited
to merely Google, as it is the biggest operating engine with a significantly
larger user base than its competitors it is not unnatural for it to be the
unceasing target of legal disputes.
Other forms of digital trademark infringement
Meta TaggingA form of trademark infringement that has yet to be considered as a threat
having potentially hazardous effects on a businesses' digital persona, is Meta
Tagging. A type of trademark infringement that is more common than people
believe, meta tagging uses a series of tags to describe the contents of a
particular website in addition to the HTML code of that particular website.
Simply put, these tags describe the contents of a particular website (hosting a
business) which are added to the code (HTML) used to create said website.
Website owners generally employ descriptive (short summary of a website) and
keyword (a word or phrase) meta tags in their websites. This allows a user to
identify from a rank of appropriate websites, decided based upon the keywords
input by them in contrast to the keywords of the websites.
A website pertaining to custom phone cases uses the keywords
custom; cases; phone; designs. A user searches using the keywords, custom case design for phones. Said website will rank among the top in the
list of websites the user could choose from.
This, however, leads to a major issue. To say least, the ease of embedding
trademarks puts, at risk, the businesses of many. One may simply use the the
trademark of any business in their website code, allowing them to successfully
profit from the exposure as well as misdirected sales as a result of initial
interest confusion. The difficulty in identifying such bogus websites is can
prove to be a herculean task, leading to its rampant misuse.
Hyper-linking (deep linking)The concept of hyper linking is rather practical. One simply needs a link of any
webpage entered into the search engine and the user will be taken directly to
said page, without having the need to navigate the entire website. All websites
with multiple webpages will provide their users with quick access links in order
to provide the information they desire, more swiftly. Nevertheless, to access
these links one will need to go to a website's homepage, wherein they are
located. This function is made use of by all website owners to facilitate easier
access of information. Occasionally these links are also used by other website
owners to provide additional information pertaining to what may be discussed on
Traditionally, one may assume hyper-linking to only benefit website owners who
are being linked to, as it only stands to increase their own website traffic.
However, a number of lawsuits pertain specifically to the practice of linking
websites without any prior permission.
As it stands, websites where daily traffic is above a certain number, are sought
after by advertisers looking to advertise their own content. This acts as a form
of revenue for the website owners. Hence advertisers look to advertise on the
most strategically appropriate page, the homepage. It is the most frequently
visited webpage of a website and anyone searching for information has to visit
However, if other website owners start linking the webpages of websites it leads
to dilution in ad-revenue as a result of fewer people visiting the homepage to
access the information. This practice is known as deep linking. Additionally,
this also raises concerns among webs owners of, diluting their brand or misuse
of information as well as people making unauthorised use of their work, all
contributing toward the issue of linking without prior permission.
FramingAnother practice widely in use is framing. At some point or another everyone
reading this article has come across the use of framing by one website or
another. This simply involves using window screens as frames, for any webpage
of a differently owned website. The frame remains static while the content on
the original website can be freely viewable, hence said portion of the screen
will remain while the user can view other information on the website they
visited originally, creating an effect similar to screen-on-screen provided by
modern televisions. The website link, however does not change, thereby
lessening the traffic, reducing revenue and unjustly benefiting from another's
intellectual property, violating rights of the website owner.
The scope of intellectual property law, today, is vastly grater compared to a
decade ago. Since it's inception, intellectual property law has been used to
foster and promote creativity, and provide protection, to the product of that
Its applicability and scope, of course, has also taken a considerable leap. From
protecting just the 'subject matter ' to protecting its imitations, the laws
have evolved to what they are now. However the same is not for all three of its
components. Unlike patents and copyrights, trade marks have a different purpose
than just protection of the subject matter. Trademark rights ensure, the areas
surrounding a particular product also remain protected, wether it be the
descriptive attributes or issues regarding its virtual presence.
One may be correct in believing that the web is an indescribably vast and
esoteric field, however the rights of every individual are also guaranteed by
special organisations devoted to maintaining order and offer redressal to
anyone, provided they seek it.
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