* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 4th March, 2014.
+ CS (OS) No. 906/2009
YAHOO INC. .....Plaintiff
Through: Ms Tusha Malhotra & Ms.
Udita M. Patro, Advocates
Versus
FIROZ NADIAWALA & ORS ......Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1.
The present suit instituted by the plaintiff is in the nature of a qua timet action on the apprehension that the defendants are going ahead with the release of the cinematographic film titled "YAHOO", which is an infringement of the Plaintiff's well-known trademark and also amounts to an act of passing off by the defendants.
2. The plaintiff has instituted this suit (on 16th May, 2009) claiming:
(a) Permanent Injunction restraining the defendants from manufacturing, selling, offering for sale, distributing, advertising including on the internet and in any other manner using the trademark "YAHOO!" or any other deceptively similar trademark amounting to infringement of the Plaintiff's registered trademarks; CS(OS) No.906/2009 Page 1 of 11
(b) Permanent Injunction restraining the defendants from passing off their film or other production, using the mark YAHOO or any other deceptively similar mark, or in any other manner associating their film or other production with the Plaintiff's well-known trademark "YAHOO!", as to pass off or enable others to pass off the defendants production or film as emanating from the plaintiffs;
(c) Permanent Injunction restraining the defendants from passing off their film or any other production, using the mark "YAHOO!" or any other deceptively similar mark, or by associating their film or any other production with the Plaintiffs well known trademark "YAHOO!", leading to dilution of the distinctiveness of the said trademark and tarnishing the reputation of the Plaintiffs trademark "YAHOO!";
(d) Delivery of all infringing materials of the defendants; and
(e) Damages.
3. The case of the plaintiff in the plaint is:
(I) that the Plaintiff, YAHOO! Inc is a corporation, organised and
existing under the laws of the state of Delaware, USA having its CS(OS) No.906/2009 Page 2 of 11 registered office at 701 First Avenue, Sunnyvale, California 94089, USA;
(II) that the Plaintiff was amongst the first in the field to start a web directory and provide search services. It started in early 1994 and was initially called "Jerry and David's Guide to the World Wide Web" named after it two founders, David Filo and Chihyuan "Jerry" Young; (III) that however, a short time later, in June 1994, the name was changed to "YAHOO!". The word "YAHOO" in its dictionary connotation is "a person who is variously thought of as being coarse, uneducated, unrefined, crude, etc." The Plaintiff's founders also coined a phrase from the acronym "YAHOO!" to describe their web directory and search services as "Yet Another Hierarchical Officious Oracle" The "!" (Exclamation mark) was added to signify high energy and the joy of user on discovering information on the web using the YAHOO! search engine;
(IV) that subsequently, it began using various other YAHOO- formative marks including, but not limited to, MY YAHOO!, DO YOU YAHOO!?, YAHOO! GO, YAHOO! GROUPS and YAHOO 360 in connection with its wide array of products and services. The CS(OS) No.906/2009 Page 3 of 11 YAHOO! name and mark and YAHOO formative marks are collectively referred to as "Plaintiff's YAHOO! Marks"; (V) that the plaintiff is a registered proprietor of the trademarks bearing nos. 1357437 - Y! MUSIC (LABEL), 766143 - YAHOO!, 1311393 - Y! (DEVICE OF OVAL DESIGN), 978422 - YAHOO! GROUPS, 956495 - YAHOO!, 1361856 - YAHOO;
(VI) that the Plaintiff, YAHOO! Inc together with its consolidated subsidiaries, is a leading global internet brand and communications, commerce and media company that connects people to their passions, their communities and world's knowledge by offering a comprehensive branded network of searching, directory, information, communication, shopping, electronic commerce and other online services to millions of users daily;
(VII) that YAHOO! is one of the most trafficked internet destinations worldwide and one of the most recognized brands worldwide and has twenty- five international web properties, and offices in the United States, Europe, the Asia Pacific region, and Canada and its web sites are available in 13 languages. The main YAHOO! Web site in the United States can be accessed at http://www.yahoo.com; CS(OS) No.906/2009 Page 4 of 11 (VIII) that the Plaintiff offers a wide variety of services using the YAHOO! Mark together with a descriptive name of its services, including but not limited to, YAHOO! Mail, YAHOO! Search, YAHOO! News, YAHOO! Video, YAHOO! Shopping, YAHOO! Travel, YAHOO! Small Business, YAHOO! Finance, YAHOO! Address Book, YAHOO! Calendar, YAHOO! Answers, YAHOO! Personals, YAHOO! Sports, YAHOO! Games, YAHOO! Maps, YAHOO! Music, YAHOO! TV, YAHOO! Autos, YAHOO! Real Estate, YAHOO! Food, YAHOO! Tech, YAHOO! Health, YAHOO! Mobile and YAHOO! Movies;
(IX) that the Plaintiff's use of the YAHOO! mark is not restricted to its computer and internet-related services, but also extends to clothing sporting goods, books, office supplies, house wares, mp3 players, and more, including collateral goods such as computer accessories. It has also used directly or through a licensee, the YAHOO! mark in connection with candles, chocolate, mints, nuts, gourmet cakes, and barbecue sauce, and pursuant to co-branding agreements with well- known companies such as Ben & Jerry's and 7-Eleven convenience stores, the YAHOO! mark has appeared on packaging for products CS(OS) No.906/2009 Page 5 of 11 such as Ben & Jerry's Ice Cream and 7-11 Slurpee beverages. The same has been done in connection with clothing and clothing accessories such as T-shirts, Jackets and caps and with various sporting goods such as baseballs, basketballs, soccer balls, snowboards and volleyballs;
(X) that sometime in May, 2008 on reading certain articles the plaintiff found out that the defendants were proposing to release a film based on the theme of "music and dance" under the title "YAHOO";
(XI) that the plaintiff carried out inquiries to ascertain in whose name the title "YAHOO" was registered with the Association of Motion Pictures and TV Programme Producers (AMPTPP) and on the basis of the information received, the plaintiff learned that the title of the proposed film YAHOO was registered with the AMPTPP in the name of Defendant No. 1 Mr. Firoz Nadiadwala;
(XII) that the plaintiff addressed a cease and desist notice to defendant no. 1 requesting him to immediately cease and desist from using the trademark YAHOO! in relation to films or in any manner CS(OS) No.906/2009 Page 6 of 11 whatsoever. The defendants however denied the same vide reply dated 2nd September, 2008;
(XII) that the Plaintiffs trademark YAHOO! has become a household name in India and has acquired the status of a well known trademark by virtue of long and continuous use, extensive advertising and sales promotion and has become easily identifiable by the members of the public and trade, as originating from the Plaintiff; (XIII) that exhibition of any films by the defendant under title YAHOO! would cause enormous confusion amongst the members of the public causing them to believe that the defendants' production is in some way endorsed, sponsored and associated with the Plaintiff; (XIV) that the defendants if permitted to release the film under the Plaintiffs trademark, will dilute the distinctiveness of the Plaintiffs trademark by smearing the link between the Plaintiffs goods and services and the plaintiffs brand YAHOO!
4. Summons of the suit and notice of the application for interim relief were issued and the plaintiff being able to make out a prima facie case regarding infringement of his trade mark and passing off services by the defendant as that of the plaintiff, the defendants were restrained from using CS(OS) No.906/2009 Page 7 of 11 the mark "YAHOO" and associating the trademark "YAHOO" in their film or releasing the film having the name "YAHOO" till the next date of hearing.
5. Though the counsel for the Defendant No.1 & 2 entered appearance on 18th August, 2009 and appeared on the next date of hearing i.e. 4th November, 2009 but thereafter stopped appearing. Further despite several opportunities being given, the defendant nos. 1& 2 failed to file the written statement and finally on 21st October, 2010 they were proceeded against ex- parte.
6. As far as the other defendants are concerned, Defendant Nos. 3 & 4 filed a joint written statement which is on record and on 22nd July, 2011 on the statement of the counsel for the Defendant Nos. 3 to 5, the same was also adopted by Defendant No. 5. However, on 27th November, 2012 the suit was decreed in terms of the compromise and the suit stood disposed of qua the defendants no. 3 and 5 and thus need is not felt to refer to the written statement filed by the aforesaid defendants. On the same date, despite service defendant no. 6 failed to enter an appearance and was also proceeded against ex-parte.
CS(OS) No.906/2009 Page 8 of 11
7. Thereafter, the matter was listed for ex-parte evidence qua the defendants' No. 1, 2, and 6. Col. J.K. Sharma, the Authorized Representative of the Plaintiff tendered his affidavit in ex-parte evidence as PW-1.
8. Col. J.K. Sharma in his affidavit tendered in evidence before this Court has reiterated the averments in the plaint, as reproduced above, and proved the following documents:
I. Trade Mark Registration Certificates of the plaintiffs bearing Exhibit PW-1/3 to PW-1/8.
II. List of Well Known Marks as per the Trade Marks Registry of India containing Plaintiff's Trademark "YAHOO!" bearing Exhibit PW-1/19.
III. Articles on the internet that reported on the Yahoo film bearing Exhibit PW-1/21 to PW-1/30.
9. I have thus, apart from examining the averments made by the plaintiff in the plaint, as culled out above, as well as the affidavit by way of examination in chief also referred to the documents and the case laws filed by the plaintiffs to support its case, in order to ascertain whether the plaintiffs are entitled to a decree forthwith.
CS(OS) No.906/2009 Page 9 of 11
10. In support of its submission, the learned counsel for the plaintiff has relied upon Tata Sons Ltd vs Manoj Dodia 2011 (46) PTC 244(Del.) wherein it was held that the mark TATA whether word mark or device or when used in conjunction with some other words, is a well-known trade mark, within the meaning of Section 2(z)(b) of the Trade Marks Act, 1999. The use of the trade mark TATA even in respect of goods or services, which are not similar to those of the trademark owner, is therefore, likely to be taken as a connection between House of Tata and the goods or services, which are sold under this trade mark or a trade mark which is similar to it and may cause confusion and damage the reputation of the trademark owner.
11. As far as the relief of damages is concerned, the counsel for the plaintiff has handed over judgments of this Court in Hero Honda Motors vs Laxmikant Patel MANU/DE/3116/2005, The Heels vs V.K.Abrol MANU/DE/1559/2006, Disney Enterprises vs Rajesh Bhaarti 2013(54) PTC 373(Del.) and Microsoft Corporation vs Rajendra Pawar & Anr. 2008 (36) PTC 697 (Del.) relying upon Time Incorporated vs Lokesh Srivastava 116(2005) DLT 599 wherein compensatory as well as punitive damages CS(OS) No.906/2009 Page 10 of 11 have been awarded to the plaintiff for flagrant violation of its intellectual property rights.
12. In my view the plaintiff's are right in their contention that YAHOO! has become a household name in India and has acquired the status of a well known trademark by virtue of long and continuous use and that the defendant by making a film under title YAHOO! would cause the members of the public believe that the defendants' production is in some way endorsed, sponsored and associated with the Plaintiff.
13. A decree is accordingly passed, in favour of the plaintiff and against the defendants in terms of prayer paragraphs (A), (B) and (C) of the plaint. As far as the relief of damages is concerned I am however of the opinion that the present case does not call for award of compensatory or punitive damages. Plaintiff is awarded costs of the suit. Counsel's fee assessed at Rs.20,000/-.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
MARCH 04, 2014.
sk CS(OS) No.906/2009 Page 11 of 11