Author: Hemant Goyat
Background and Facts of the case:
Recently, the Bombay High Court delivered a judgement in the favour of People Interactive (India) Pvt. Ltd., over the infringement of their trademark “SHAADI.COM” by Ammanamanchi Lalitha Rani and three others. The Bombay High also declared “SHAADI.COM” a well-known mark.
A well-known trademark which has been envisaged under Section 2 (1) (zg) of the Trade Marks Act, 1999 means a mark that has gained widespread recognition among a substantial segment of the public that uses the relevant goods or services.
Well-known trademarks enjoy enhanced and exclusive legal protection. Such protection prevents unauthorized use of the mark even on dissimilar or unrelated products or services. It also prohibits the registration of identical or deceptively similar marks into company or business names without proper authorization.
In September 2013, the plaintiff discovered that the defendants were operating a matrimonial website under the domain name www.getshaadi.com, using the mark “GETSHAADI.COM” for identical services. The defendants were also found to be using “Shaadi.com” as a meta-tag and keyword, resulting in diversion of internet traffic from the plaintiff’s website to the defendants’ website.
Despite issuance of a cease-and-desist notice, the defendants did not respond. The plaintiff therefore filed a commercial intellectual property suit before the Bombay High Court seeking permanent injunction, damages, and ancillary reliefs. The defendants failed to appear or contest the proceedings, and the suit proceeded ex parte.
Issues before the court:
The main issues pertaining before the court were:
Whether “GETSHAADI.COM” is identical or deceptively similar to the plaintiff’s registered trademarks “SHAADI.COM/SHADI.COM”.
Whether the defendants’ use of the impugned domain name and mark amounted to trade mark infringement under Section 29 of the Trade Marks Act, 1999.
Whether the defendants’ conduct constituted passing off and dilution of the plaintiff’s well-known trade mark.
Whether the use of the plaintiff’s mark as meta-tags and keywords amounted to actionable “use” under trade mark law.
Whether the plaintiff was entitled to permanent injunction, damages, and costs.
Pleadings by the Plaintiff:
Well-known registered trade mark: The plaintiff argued that “Shaadi.com” is a registered and well-known trade mark with long, continuous, and extensive use, enjoying massive goodwill in matrimonial services.
Deceptive similarity and infringement: The mark “getshaadi.com” wholly incorporated the plaintiff’s mark, with the addition of “get” being insignificant, thereby causing infringement under Section 29 of the Trade Marks Act.
Passing off and consumer confusion: The defendants used the impugned mark for identical matrimonial services, leading consumers to believe there was an association with the plaintiff.
Dishonest use of meta-tags: The defendants used “Shaadi.com” as meta-tags and keywords, diverting about 73% of web traffic, amounting to online piracy and bad faith.
Entitlement to injunction and costs: Due to dishonest and mala fide adoption of defendants, the plaintiff sought permanent injunction, damages, and exemplary costs.
Judgement by the Court:
Infringement and passing off established: The Court held that “getshaadi.com” is deceptively similar to “Shaadi.com” and its use for identical services constituted infringement and passing off.
Meta-tag use amounts to trade mark use: Use of the plaintiff’s mark as meta-tags and keywords was held to be actionable “use” causing actual consumer confusion and diversion of traffic.
com declared a well-known trade mark: The Court recognised “Shaadi.com” as a well-known trade mark under the Trade Marks Act, 1999.
Permanent injunction granted: Defendants were restrained from using the impugned mark, domain name, and related infringing material.
Exemplary costs awarded: Defendants were directed to pay ₹25 lakhs as costs, reflecting the dishonest conduct and commercial nature of the suit.
Conclusion:
The Bombay High Court’s decision reinforces strong protection for well-known trade marks in the digital environment. By holding that the use of a registered mark as a domain name and meta-tag constitutes infringement and passing off, the Court addressed modern forms of online piracy. The recognition of “Shaadi.com” as a well-known trade mark and the award of exemplary costs underline the judiciary’s firm stance against dishonest commercial practices and brand dilution.
