M/S. Online India Capital Co. Pvt. ... vs M/S. Dimention Corporate
2000 Latest Caselaw 534 Del

ORDER

K.S. Gupta, J.

1. Suit was filed seeking to restrain the defendant permanently from using the website under the name of WWW. MUTUAL FUND INDIA. COM or in any other identical name, inter alia, alleging that plaintiff No.2 acquired the proprietory rights of WWW. MUTUAL FUNDS INDIA. COM and assigned it in favour of plaintiff No.1 company. Website WWW. MUTUAL FUNDS INDIA. COM was created on 5th May, 1999. It is alleged that this website provides most comprehensive data on mutual funds. Finding it to be highly informative, knowledgeable and useful the Templeton Mutual Fund, DSP Merill Lynch Mutual Fund, Kotak Mahindra Mutual Fund, Alliance Capital Mutual Fund and Taurus Mutual Fund are advertising on the said website. Prudential ICICI Mutual Fund has also agreed to advertise for one year beginning May 1, 2000. SIDBI Venture Capital Co. Ltd., has offered to participate in the share capital of Plaintiff No.1 to the tune of Rs. 1.5 crores. Other leading companies of North India dealing in shares, securities and debentures too have approached plaintiff No. 1 for investing in its share capital.

2. It is pleaded that eleven member team of FORBES, a magazine of USA has listed 150 sites as 'Best of Web' after considering 1500 websites all over the world and the plaintiffs' said website is one amongst four indian websites included in that list. The defendant has fraudulently and mischievously developed websites with almost identical name WWW. MUTUAL FUND INDIA. COM deleting alphabet 'S' after the word FUND. It is alleged that the unwary persons from Trade, Industry, Commerce and Investors are likely led to believe that the said website of defendant which has practically no information is that of the plaintiffs. The plaintiff No. 1 called upon defendant to change the name of its website through the letter dated 25th March, 2000 Directors of plaintiff NO. 1 - company also spoke to the directors of defendant to change the name but to no effect.

3. In the suit. IA No. 3708/2000 under Order XXXIX, Rules 1 & 2 read with Section 151 CPC was also filed by the plaintiffs for issue of ad interim injunction seeking to restrain the defendant from running of the website under the said name WWW. MUTUAL FUND INDIA. COM or in any other deceptively similar name.

4. When the case was taken up on 2nd May, 2000, Sh. Rahul srivastava, Advocate put in appearance and stated that he has instructions to appear on behalf of the defendant and sought time for filing written statement and reply Accordingly, defendant was allowed three days time for filing written statement and reply and the case was postponed to 8th May, 2000 for hearing on said IA. Defendant has filed reply only on 6th May, 2000.

5. In short, it is alleged in the reply that the MUTUAL FUND is a descriptive/generic word and no monopoly can be claimed relation thereto by any person. The documents filed alongwith The plaint do not indicate the name of owner of website WWW. MUTVAL FUNDS INDIA. COM. on the date the defendant applied for registration of the domain name in question, it was not even aware of the existence of the plaintiffs. The plaintiffs are a new company in existence for less than one year. The defendant has been in existence for more than six years and has an enviable track record in the corporate finance and allied services with a very impressive list of clientele. Plaintiffs said domain name was registered six to seven months prior to the registration of the defendant's above name Defendant's website is still under construction. It is stated that as a part of its business development programme, the defendant planned a series of websites on financial services and M/s. First Online Ltd., was incorporated in 1996 by the defendant in collaboration with Thapar Group. Sites already launched by the defendant are being managed by M/s. First online Ltd., under licence from the defendant. Names of some of the websites for which the defendant has registered domain names have been disclosed in para No. XXVI of the preliminary submissions of the reply. It is denied that the plaintiffs at any point of time spoke to any of the Directors of defendant, as alleged. Letter dated 25th March, 2000 or any other letter as notice was never received by the defendant. It is asserted that there is no question of the public associating the word MUTUAL FUND with that of the plaintiffs, as alleged.

6. It was urged by Sh. Vinay Bhasin, Sr. Advocate appearing for the plaintiffs that admittedly plaintiff No 1 company has been using the domain name of WWW. MUTUAL FUNDS INDIA. COM, six or seven months prior to the use of trade nameof WWW. MUTUAL FUND INDA. COM. by the defendant and this use of name by the later is likely to deceive or cause confusion and divert the business of the plaintiffs to the defendant and the plaintiffs are, therefore, entitled to the ad interim injunction prayed for. In support of the submission reliance was placed on the decisions in Yahoo Inc. Vs. Akash Arora, 1999 PTC (19) 201 rendered by this Court and Rediff Communication Limited Vs. Cyberbooth and Anr., AIR 2000 Bombay 27. On the other hand, it was contended by Sh. A.S. Chandhiok, Sr. Advocate for the defendant that the said domain name of plaintiffs is completely descriptive/generic in nature and they are thus not entitled to the interim protection prayed for. Reliance was placed on the decisions in Office Cleaning Services, Ld. Vs. Westminster Window and General Cleaners Ld., LXIII RPC 39, J.R. Kapoor Vs. Micronix India, 1994 Supp (3) SCC 215, Lloyd Insultations (India) Limited Vs. Punj Lloyd Insulations Pvt. Ltd., 1999 PTC 449, Bharathiya Coffee Workers Catering Services (P) Ltd. Vs. Indian coffee Workers Coop. Society Ltd., 1999 PTC 431 and an unreported judgement of Bombay High Court in Investmart India Ltd., Vs. ICICI Ltd. and Anr., dated 10th March, 2000.

7. Passing off action is a Common law remedy. In Office Cleaning Services case (supra), the trade name of plaintiffs/appellants was "Office Cleaning Services, Ld." while that of defendants/respondents "Office Cleaning Asso ciation". The question which arose for determination before the House of Lords in appeal was have the appellants proved that use by the respondents of trading style "Office Cleaning Association" was calculated to lead to the belief that their business was the business of the appellants. While dealing with that aspect of the matter at page 42 of the report, it was held :-

"In the present case there are certain considerations to which I think it worth while to call particular attention.

Foremost, I put the facts that the appellants chose to adopt as part of their title the words "Office Cleaning" which are English words in common use, apt and more apt than any other words to describe the service that they render. This is a trade name, not a trade mark, case, but I would remind your Lordships of the close analogy between the two classes of case found by Farwell J., in Aerators Limited Vs. Tollitt ([1902] 2 Chancery 319) and by Parker, J., in the Vacuum Cleaner case (ubi supra). So it is that just as in the case of a the use of descriptive words is jealously safeguarded, so in the case of trade names the Courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to case confusion and will easily accept small differences as adequate to avoid it. It is otherwise where a fancy word has been chosen as part of the name. Then it is that fancy word which is discriminatory and upon which the attention is fixed, and if another trader takes that word as part of his trade name with only a slight variation or addition, he may well be set to invite confusion. For why else did he adopt it? ....... ............ .......... ............ ........ .......... .....

Thirdly, your Lordships will note that the Appellants do not claim that the words "Office Cleaning" have acquired a secondary meaning by which I understand them to mean that they do not claim that these words mean a service of cleaning officers as rendered by them and them alone. Such a claim would indeed be impossible to maintain, But, While making this disclaimer, they nevertheless contend that as a trade name "officers cleaning" is so much identified with their business that any trader who ventures to use these words as part of his trade name must clearly differen tiate. This seems to me to be no more than a restatement of the familiar problem. The Court will undoubtedly take into consideration long user of a descriptive name but will not forget that, since it is descriptive, small differences may suffice.

These, my Lords, are the broad considerations which must govern this case and, as it is succinctly stated in the judgement of the Court of Appeal, "the question to be determined" is narrowed down to whether the word 'Association' when used in connection with the "descriptive words 'office cleaning' is sufficient to distinguish the Defendants' title from "that of the Plaintiffs' 'Office Cleaning Services Ltd." My conclusion agrees with that of the Court of Appeal. The distinctive word in the Appellants' title is "Services", that in the Respondents' is "Association" I think that that is a differentiation which should avert any confusion that might otherwise arise from the common use of ordinary descriptive words."

8. At page 43 of the report, it was further held :-

"It comes in the end, I think, to know more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion."

9. In J.R. Kapoor's case (supra), injunction had been granted against the defendant from using the trade mark 'Microtel'. The plaintiff's mark was 'Micronix'. While setting aside the order of injunction, the Supreme Court held:-

"Thus microchip technology being the base of many of the products the word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix 'micro' in the trade name Once, therefore, it is held that the word 'micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misquided or confused by the said word."

10. In Bharathiya Coffee Workers Catering Service (P) Ltd. s case (supra), the competing trade names were 'Indian Coffee House.' The plaintiff claimed that nobody else can use that name. Learned Single Judge of Kerala High Court dismissed the suit on merits holding that the said name was descriptive in nature and there could be no monopoly over the same by the plaintiff despite use thereof by it for over 26 years.

11. Likewise is the view taken in the remaining two decisions referred to above as regards legal position on use of trade name of descriptive natue.

12. Word 'MUTUAL FUNDS' forming part of the plaintiffs domain name of WWW. MUTUALFUNDS INDIA. COM. is the description of the character of the services offered by it. The material placed on record by the plaintiffs prima facie falls short of indicating that the aforesaid word has acquired a secondary meaning which is a pre condition for granting protection to a descriptive name. Considering the ratio of the aforementioned decisions relied on behalf of the defendant, the plaintiffs cannot be said to have prima facie made out a case for grant of the ad interim injunction prayed for. In Yahoo Inc. and Rediff Communication Ltd. cases the domain names in question were not descriptive in nature.

13. Consequently, IA No. 3708/2000 is dismissed.