Delhi High Court
Yahoo Inc. vs Firoz Nadiawala & Ors on 4 March, 2014
* 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;
(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
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
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;
(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
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
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
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.
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.
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
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
