A registrable trademark must be able to differentiate between the products or services of one person and those of another. In the age of technology the proprietor of a registered trade mark has to take some safeguards to

CS Professional · Intellectual Property Rights - Law and Practice · PYQS · June 2024
A registrable trademark must be able to differentiate between the products or services of one person and those of another. In the age of technology the proprietor of a registered trade mark has to take some safeguards to protect his rights. A domain name is a unique name that identifies a website. It was intended to provide specific address on the internet. The internet has however developed from a mere means of communication to a mode of carrying on commercial activity. Domain names are more than just addresses, since they can be selected by the 'addressee' and are usually closely associated with a particular service or product. The value of domain names cannot be under estimated. Recent statistics indicate that most expensive domain names [Cars.com) and (Voice.com) were sold at a price of ₹872 million and as well as ₹30 million in 2019. It is common-place for traders to have their electronic mail address and use the same in respect of their goods/services as trade name. In other words, the domain name is being used as a trade name or trademark. The Registrar subject to the usual criteria of the Act, permits domain names to be registered as trademarks if otherwise registerable. Elements of the domain name such as '.com' or '.co.in' are considered to be totally non-distinctive, much in the same way as 'Ltd' and 'Ple': Questions: (b) The Supreme Court pointed out that 'where common marks are included in the common trademarks, more regard is to be paid to the parts not common and the proper course is to look at the marks as a whole'. Discuss.

Answer & Explanation:

Answer 3(b) In Dyechem Ltd. v. Cadbury (India) Ltd. the Supreme Court seems to have departed from the principles laid down by the Court in earlier cases. It was observed that 'where common marks are included in the common trademarks, more regard is to be paid to the parts not common and the proper course is to look at the marks as a whole but at the same time not to disregard the parts which are common'. Commenting on these observations the Supreme Court held in the instant case that the principle applied in Dyechem was not correct for the reason that the 'dissimilarities have to be more important than the phonetic similarity in the use of the words Piknik and Picnic. The Court disagreed with the view that 'the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this court in Amritdhara case where the phonetic similarity was applied by judging the two competing marks'. The Court held that the decision in Dyechem did not lay down the law correctly.

Topics: Trademarks

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