Yahoo Trademark - Infringement - CS(COMM) 668/2016 : YAHOO INC vs. MR. RINSHAD RINU & ORS. : Judgment by High Court of Delhi

The present suit had been filed for permanent injunction restraining infringement of Yahoo trademarks, passing off, dilution and tarnishment, unfair competition, etc.  Despite service of summons and orders, Defendants did not enter appearance and they were proceeded ex parte vide order dated 26th October, 2016 and the ex parte interim injunction was confirmed.

The Plaintiff claimed to be the owner of registered trade mark YAHOO and YAHOO formative trade marks in various classes including Class 39 and further claimed that its YAHOO trademark is a well-known trade mark and is included in the list of well-known trademarks maintained by the Trade Marks Registry.

The Plaintiff filed the suit as Defendants were infringing the Plaintiff's trade mark by using the website-www.yahookochi.com and also placed certain photographs of Defendants' premises and the business card to show that they were using the old YAHOO logo of the Plaintiff.

A Cease and Desist notice were also sent by the Plaintiff to the Defendants and in reply the Defendants had refused to change their name on the ground that they had spent huge amount of money and time in promoting and advertising the mark in question.

 

The Hon’ble Court also observed that the services offered by the Defendants fall under Class 39 of the Nice Classification in which the Plaintiff has trade mark registration for YAHOO formative marks. The Plaintiff also operates various websites under its YAHOO trademark providing information on travel and tourism services.

After considering the above facts, the Hon’ble Court held as under:

“That the adoption of the YAHOO mark by the Defendants is dishonest as is evident from the fact that the font used by the Defendants to represent YAHOO in their trading name is identical to the unique stylized font which the Plaintiff used to represents its YAHOO trade mark till 2014. There is also no plausible explanation for the adoption of the identical mark as part of trading name and domain name of the Defendants. Further, the Defendants cannot have any justification for the adoption of the mark YAHOO. The potentiality of harm is enormous on the internet as the Plaintiff has a very wide internet presence and operates various YAHOO formative websites.

 

In any event, as the averments in the plaint have not been rebutted by the Defendants inspite of ample opportunities given by this Court, they are deemed to have been admitted.”

While decreeing the present suit as per the prayer of the Plaintiff and awarding damages,  the Hon’ble Court noted that the websites of the Defendants was operational for six months, therefore, the Hon’ble Court awarded cost to the Plaintiff assessed at Rs.4,91,114/-, along with the compensatory damages of Rs.2 lacs and punitive damages of Rs.3 lacs.

https://indiankanoon.org/doc/137919738/

 
Analyzed and Posted by
 
Vijay Pal Dalmia, Advocate
 
vpdalmia@gmail.com
 
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