PATENT (AMENDMENT) RULES, 2019

PATENT (AMENDMENT) RULES, 2019

The Draft Patents (Amendment) Rules, 2018, as notified on 4th of December 2018, by the Central Government, have now come into force from 17th of September 2019 and are called the Patents (Amendment) Rules, 2019 (“Rules”).

Below are the Amendments as specified in the new Rules:

  • The said Rules now primarily allow the following categories of applicants, eligible for expedited examination of their patent applications:
    1. Start-Up
    2. Small Entities
    3. Natural Person(s)
    4. Female Applicants
    5. Departments of the Government
    6. Institutions established by a Central, Provincial or State Act
    7. Institutions wholly or substantially financed by the Government
    8. Government Company as defined in Section 2(45) of the Companies Act
    9. Applicants of countries whose patent offices have an agreement with the Indian patent office.
    10. Applicant pertains to a sector which is notified by the Central Government
  • As per the previous rules, the Patent Agent of the Applicant was required to submit duly authenticated copies in original e-filing of the same. As per the new Rules, the  originals are required to be submitted by the Patent Agent only upon request by the Patent Office. The duly authenticated originals are to be submitted within 15 days of receipt of such request.
  • As per the previous rules, in case of small entities, every document for which the fee payable in respect of grant of patents, applications and in respect of other matters for which fees are required, is be accompanied by Form – 28. As per the new Rules, it is mandatory for start-ups as well to file Form – 28 with every document for which a fee has been specified.
  • As per the new Rules, no transmittal fee to be paid by the Applicant when filing PCT applications. The transmittal fee previously charged was INR 3200 to INR 17600 depending on the nature of the applicant and the filing mode. Individuals and Start-ups were charged INR 3200 when filing the PCT through the e-PCT filing module, small entities were charged INR 8000 and large entities were INR 16000. If the PCT application is filed physically, the fees as earlier would applicable.
  • There is no fees now for the preparation of certified copy of priority document and e-transmission through WIPO-DAS. Previously Individuals & start-ups were charged INR 1000 along with INR 30 per extra page in excess of 30 for the preparation of certified copy of priority document. MSME’s were charged INR 2500 along with INR 75 per extra page in excess of 30 and the large entities and Companies were charged INR 5000 INR along with 150 INR per extra page in excess of 30, for the preparation of certified copy of priority document.
  • As per the New Rules, amendments have now been made to the format of Form 18A to include the entire category of applicants who are eligible for expedited examination along with the list of documents that each of these types of applicants would have to adduce at the time of making the request.

The said Rules can be accessed at: http://www.ipindia.nic.in/writereaddata/Portal/News/569_1_The_Patent_Amendment_Rules_2019_.pdf

PROTECTION OF “COLOR” UNDER THE TRADEMARK LAW

PROTECTION OF “COLOR” UNDER THE TRADEMARK LAW

Introduction

A trademark is a recognizable signdesign, or expression which identifies products or services of a particular source from those of others. A trademark may be located on a package, a label, a voucher, or on the product itself. Apart from the traditional trademarks like general logos, devices or symbols, there is another category of trademark, which are known as unconventional/non-conventional marks. These are mainly found in the form of smell marks, shape marks, sound marks, or color marks. In order to be irreplaceable one must always be different and distinct. A trade dress of a product comprising of color combinations, is protectable only if it is worthy enough to be recognized by the consumers as unique or pertaining to a particular brand. The Tiffany’s blue, Cadbury’s purple or Ferrero Rocher’s combination of golden and brown are such distinct products which have applied intellectual creativity and skill in order to be known in their respective industry.

Trademark law protects the owner’s exclusive rights to use the mark, thereby preventing any unauthorized use of the mark which shall cause confusion in the minds of the general public. It aims at promotion of goods or services in the market, at the same time restricting competitors from using the mark and gain profits through imitation. It also aspires to protect both the interest of the consumer and the traders in the market.

Under the Trade Marks Act, 1999, (“Act”), as per section 2(1)(zb), “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors and as per section 2(1)(m), “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

This means any word, device, brand, heading, letter, numeral, etc. can be included in the list if distinctiveness and graphical representation are present and hence be registered as a trademark. However, the problem arises in cases which fall outside the ambit of conventional or traditional trademarks, the registration of which becomes difficult to be given exclusive status.

Law pertaining to ‘Color’ Trademarks

The definition of the word “mark” and “trademark” as laid down in the Act provides for “combination of colors” or “any combination thereof”. Under Trademark law, color is inherently indistinct, but a combination of colors, with sufficient acquired meaning can gain distinctiveness and is capable of being registered as a trademark.  A combination of colors may be considered distinctive for the purposes of trademark protection only when it can be demonstrated that the combination of colors is so closely associated with a product or brand that the product or brand can be recognized by the particular combination of colors only.

To prove distinctiveness of a color trade mark, the colors should be used in a specific manner to perform the trade mark function of uniquely identifying the commercial origin of products or services. Use of distinctive combination of colors helps customers or the general public to relate the goods to their source which helps to increase the market of a particular source and also excludes others from deriving any benefit accrued from this unique mark.

 

While filing for a color trademark, an applicant is required to submit evidence to show that the said color combination or color that has been claimed is solely associated with the applicant and the public associates the color with the goods mentioned in the application. The evidence can be in the form of such as public surveys demonstrating association of the combination of colors with the applicant’s product or brand. However, without sufficient supportive evidence, acquiring protection in this way may be difficult. The burden lies on the applicant to prove that the particular combination of colors has acquired distinctiveness in course of trade or has acquired secondary meaning due to bonafide uninterrupted usage. For example, Orange as a trademark for a drink may be distinctive but when the color orange is claimed for packaging of those bottles would be non-distinctive.

View of the Indian Courts

In the case of Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd. 2003 (27) PTC 478 Del, Colgate sought ad interim injunction against the use of trade dress and color combination of one third red and two third white, in that order, on the container of its product viz. Tooth Powder as by adopting the similar trade-dress particularly the color combination of “red and white” Anchor was “passing off” the goods of Colgate as its own. The court held that it is the overall impression that a customer get as to the source and origin of the goods from visual impression of color combination, shape of the container, packaging etc. If illiterate, unwary and gullible customers get confused as to the source and origin of the goods which they have been using for longer periods by way of getting the goods in a container having particular shape, color combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the color combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter. In the said case the Indian judiciary acknowledged color as a part of trade dress and provided protection to it in in the present case by injuncting Anchor from using the color combination of red and white in that order as trade dress on the container and packaging.

 Also in the famous Cadbury case, Cadbury Uk Limited V. The Comptroller General Of Patents Designs And Trademarks & Société Des Produits Nestlé S.A. (Case No: A3/2016/3082), Cadbury proved that it’s distinctive shade of purple (Pantone 2865C) on the wrappers packaging for its milk chocolates had gained a distinctive character. Public survey was submitted as a proof to this assertion and the same was granted on 1st October 2012 after a long drawn out legal battle with Nestle.

In the case of Deere & Co. & Anr vs. Mr. Malkit Singh & Ors. (CS (COMM) No. 738/2018), the  Delhi High Court in 2018 granted protection to the Plaintiff’s green and yellow color combination used uniquely on its tractors manufactured for agricultural use on the basis of reputation, distinctiveness and instant source of identification of plaintiff’s products, more so as such color combination was in use for 100 years and the public at large had come to associate the yellow wheels and green body with Deere tractors.

The Delhi High Court in one of its recent judgment on May 25, 2018, in the case of Christian Louboutin v Abu Baker CS (COMM) No.890/2018, refused the trademark of red colour on the sole of heeled shoes on the point that, the mark was just consisting of a single colour red which is invalid as per the definition of a mark under Section 2(1)(m) of the Trademarks Act, 1999 as it requires a mark to be a ‘combination of colours’.  ‘Combination of colours’ is sine qua non, meaning thereby, a single colour, as contra-distinguished from combination of colours, cannot be a mark, falling in the definition of “mark” as well as a “trademark”’. The Court pointed out that the usage of the phrase ‘combination of colours’ in Section 2(1)(m) shows the intention of the legislature to not allow single-colour trademarks. The Court distinguished this case from the previous Deere & Company & Anr. v. Mr. Malkit Singh & Ors., and Christian Louboutin Sas v. Mr. Pawan Kumar & Ors., stating that in both the cases, the provisions of Section 2(1)(m) and Section 30(2)(a) were not taken into consideration. Section 30(2)(a) precludes a claim for infringement, stating that, when a person other than the registered owner of a trademark uses the mark to indicate a characteristic of a good or service, the trademark is not infringed. Here, the court appears to have misinterpreted the provision to mean mark ‘in relation to’ a characteristic instead of mark ‘indicating’ a characteristic. Moreover, the court refused the passing off remedy which is a common law remedy and independent of Indian statutes also, on similar grounds, in spite of Section 27(2) of the Trade Marks Act, 1999 mandating that nothing in the statute shall affect the rights of a person filing for passing off.

Conclusion

When allowing non-conventional trademarks such as combination of colours as trademarks, the courts ensure that the test of distinctiveness is very strict. It is therefore, clear that for registrability of combination of colors as trademarks there needs to be a ‘plus’ factor or a secondary meaning to the color when it is attached to the product. However, there is no exhaustive test as to whether the combination of colors have acquired distinctiveness and it all depends upon how the customers perceive the combination of colors and how the court is able to capture it.

NO COPYRIGHT PROTECTION FOR TITLE OF LITERARY WORK

NO COPYRIGHT PROTECTION FOR TITLE OF LITERARY WORK

The Supreme Court in a landmark judgement in the matter of Krishika Lulla & others Vs Shyam Vithalrao Devkatta held that no copyright subsists in the title of a literary work and no such relief is available except in an action for passing off or in respect of a registered trademark comprising such titles. However, such protection can be claimed in exceptional circumstance, where the title is of inventive nature.

The main issue before the court was whether copyright subsist in the title of the literary work “Desi Boyz”.

The facts of the case were that the Respondent Shyam Vithalrao Devkatta, had written a story with the title “Desi Boys” and had got the synopsis of the story registered with the Film Writers Association. He mailed his concept in the form of synopsis titled as “Desi boys” to two persons, through his friend, who were in the process of making a comedy story. However, he did not received any reply but, then the Complainant saw promos of a film named ‘Desi Boyz’ which was subsequently released throughout India on 25. 11. 2011. According to him, the adoption of the title “Desi Boyz” is a clear infringement of the copyright in the film title “Desi Boys”. No claim was made by the Complainant with respect to the film infringing upon his copyright in the story ‘Desi Boys’.

The court noted that Section 13 of the Copyright Act, 1957 provides protection for original literary work. The court stated that a title by itself cannot be considered as complete by itself without the work that follows. It further stated that the title ‘Desi Boys’ is the combination of the two words ‘Desi’ and ‘Boys’ which are very commonly used words in India and that has nothing original in it. The mere use of common words as used here cannot qualify for being described as ‘literary’. Therefore, no copyright subsist in the title ‘Desi Boys’ under Section 13 of the Copyright Act, 1957.

The Supreme Court while deciding the issue referred to judgement given by Delhi High Court in Kanungo Media (P) Ltd Vs RGV Film Factory & others where the court declined injunction against the defendant for using the brand name and title “Nishabd” alleging similar to the film of the plaintiff therein. It was observed in the said case that if a junior user uses the senior user’s literary title as the title of a work that by itself does not infringe the copyright of a senior user’s work since there is no copyright infringement merely from the identity or similarity of the titles alone. The Court also referred to judgement given by the Madras High Court in the R. Radha Krishnan v. Mr. A.R. Murugadoss & others where the Madras High Court followed the decision of the Delhi High Court in the Kanungo Media Case and rejected an injunction for restraining the defendant from using the title of the plaintiff’s film ‘Raja Rani’. The Madras High Court considered various other decisions and held that the words ‘Raja Rani’ are words of common parlance which denote the king or the queen and cannot be protected under the law of copyright.

Therefore, it is now clear that there can be no copyright protection for titles of works under normal circumstances. The protection by way of registering a trade mark may be available, provided, the title is distinctive. “The appropriate remedy in such cases will be an action for passing off,” said the Court.

STANDARD ESSENTIAL PATENTS

STANDARD ESSENTIAL PATENTS

Introduction

Recent wars between the smartphone giants over the patent issues have brought into focus the importance of Standard Essential Patents (SEPs). SEPs are patents essential to implement a specific industry standard. This implies that to manufacture standard compliant mobile phones, tablets and other electronic devices, such manufacturers will have to use technologies that are covered by one or more SEPs. Standards are technical requirements or specifications that seek to provide a common design for a product or process. Patents which are essential to a standard and have been adopted by a Standard Setting Organization (SSO) are known as SEPs.

The concept of SEPs evolved in India when Ericson in 2011 objected to the importation of handsets by Kingtech Electronics (India), claiming that the  handsets infringed several of their SEPs in AMR Codec (Adaptive Multi-Rate) technology. This was the starting point for SEP litigation in India. The Indian Patents Act, 1970 (the “Act”) does not contain any special provision for SEPs.  Further, the Act does not lay down any specific criteria or terms and conditions to be complied with while licensing a patented technology.

The prospect of licensing of SEPs plays a vital role in a company’s incentive to invest in standardization activities, besides other motivations such as directing the standard development towards technological solutions where the respective company is strong and can offer specific services or infrastructure. However, the exclusive rights conferred by patents on inventors may defeat the object of making standards available to all for public use. In order to address this problem, most SSO’s have defined IPR policies where SSO members must commit to licensing their SEPs on terms and conditions that are “Fair, Reasonable and Non-Discriminatory” (FRAND). These commitments are meant to protect technology implementers while ensuring that Patent holders receive an appropriate reward for their investment in research and development.

Standard Setting Organization and Standard Essential Patents Framework

SSOs can be governmental, quasi-governmental or private. These are responsible for setting, developing, coordinating, interpreting and maintaining standards. The Bureau of Indian Standards is India’s national SSO. In the Information and Communications Technologies sector the Telecom Engineering Centre is the only formally recognized telecom standards/ specification/type approval body in India. Global ICT Standardization Forum for India, Telecommunications Standards Development Society, India (TSDSI), and Development Organization of Standards for Telecommunications in India are private SSOs in the Indian ICT sector.

The Institute of Electrical and Electronic Engineers and International Telecommunication Union are prominent SSOs in the cellular and Wi-Fi space. The TSDSI is the first SSO which was established in India in 2013 with an aim to develop and promote India specific requirements in the field of telecommunications.

The SSO-SEP framework confers considerable power on the SEP holder. An entity that wishes to use a technological standard must obtain permission from an SEP holder, which the latter may choose to withhold by refusing to license its Patent. The FRAND declaration attempts to balance inequalities with the idea that an entity should have the right to obtain a license to desired technology on FRAND terms. However, working out a FRAND-encumbered agreement and determining what constitutes a FRAND practice is controversial. Also, in practice, it is almost impossible to determine what a FRAND royalty actually amounts to.

The important conditions with respect to adoption of SEPs are that,

  • Firstly, the members must disclose, prior to the adoption of a standard, IP rights that would be essential to the implementation of a proposed standard, and
  • Secondly, that members must commit to license their SEPs to third parties at FRAND rates.

These policies have to be adhered to ensure the widespread adoption of standards, the very purpose for which a SSO is made. Therefore, licensing SEP on FRAND terms is a voluntary contract between the SSO and the SEP holder. However, the meaning of FRAND has not been defined by SSOs; it depends upon the nature of the transactions between the SEP holder (“licensor”) and the SEP implementer (“licensee”).

Major issues involved in SEP litigation

  1. Patent holdup:

Once a patent is adopted as a standard and achieves commercial acceptance, it becomes ‘locked-in’. It is necessary for a manufacturer to use the same; otherwise his product would be incompatible with other companies’ products and hence unmarketable. Such a situation strengthens the SEP holder’s bargaining power because the licensee does not have alternatives to the same technology. Patent holdup occurs when a SEP holder takes advantage of a locked-in patent by trying to impose unreasonable royalty rates. Unless constrained by a SSO to comply with FRAND licences, the SEP holder can exploit the locked in position to obtain significantly higher royalties than it would have obtained before the patent was incorporated as a standard. However, even after committing to FRAND such a situation arises due to the vague nature of FRAND.

In the cases of Micromax and Intex the CCI[1] noted, “hold-up can subvert the competitive process of choosing among technologies and undermine the integrity of standard-setting activities. Ultimately, the high costs of such patents get transferred to the final consumers.”

Further, in such cases the licensor binds the licensee by a non-disclosure/confidentiality agreement with respect to the terms of the license which restrains the other licensees from acquiring knowledge of the royalty rates imposed on such previous licenses. This acts as an impediment in the conduct of licensing negotiations between the parties and thus leads to major competition concern in FRAND litigations.

  1. Royalty base

The reasonableness of a royalty amount depends on the correct selection of the royalty base. The SEP holders tend to impose the royalty rate on the net sale price of the final product rather than only on the component which comprises the infringed patent. This means even if SEP is used in a single component of a multi component product, the implementer would be liable to pay the royalty on the components which do not include the SEP. In such cases, the whole idea of FRAND diminishes as calculating a royalty on the entire product carries a considerable risk that the patentee will be improperly compensated for non-infringing components of that product.

In Virnetx Inc. v. Cisco Systems[2], the US Court of Appeals for the Federal Circuit held that the royalty base must be closely tied to the claimed invention rather than the entire value of the product.

  1. Royalty Stacking

Royalty stacking is the situation where royalties are layered upon each other leading to a higher aggregate royalty. This happens when different SEP holders impose similar royalties on different components of same multi component product, leading the royalties to exceed the total product price.

This concern was raised by the CCI in the cases of Micromax and Intex[3] wherein the Delhi High Court had ordered Micromax to pay royalty to Ericsson on the basis of net sale price of the phone rather than the value of technology used in the chipset incorporated in the phone which was said to be infringed. CCI noted that “For the use of GSM chip in a phone costing Rs. 100, royalty would be Rs. 1.25 but if this GSM chip is used in a phone of Rs. 1000, royalty would be Rs. 12.5. Thus increase in the royalty for patent holder is without any contribution to the product of the licensee. Higher cost of a smartphone is due to various other softwares/technical facilities and applications provided by the manufacturer/licensee for which he had to pay royalties/charges to other patent holders/patent developers. Charging of two different license fees per unit phone for use of the same technology prima facie is discriminatory and also reflects excessive pricing vis-a-vis high cost phones.”

  1. Availability of Injunctive relief

Threat of injunction becomes a powerful weapon when used by a SEP holder for enforcing its royalty rates, as in such a case an SEP implementer would think that accepting an unreasonable royalty would be less risky than curbing an action of infringement. The use of injunctive relief against willing licensees is prima facie breach of FRAND commitment as the FRAND royalty rates by itself are an adequate remuneration to the SEP. Such an action is also considered to be abusive of dominant position and hence a violation of competition laws. Therefore, an injunction should only be claimed when the licensee is unwilling to pay the judicially determined FRAND royalty or where monetary compensation is not an adequate remedy.

The underlining principle behind granting of injunction is that a party must suffer an irreparable damage if the same is not granted. The law on injunction in India is based on the principles of equity. In the said case, the remedy available to the SEP holder is in the form of royalty. The only thing which is to be determined is whether the quantum of the same is adequate. Further, a SEP holder indulging in setting up a SSO,  inevitably accents to license the technology on FRAND terms.  In such a case,  even if the royalty is low, injunction should not be granted unless there is irreparable injury caused to the SEP holder.

Conclusion

The law with respect to SEP is unclear and judgements with respect to the same have differed from territory to territory. It has to be realised that SEPs are not used by the licensees due to a lack of choice of alternatives, but the same is done in order to maintain operability and compatibility between the symbiotic technologies. It has to be realised that a country such as India cannot afford to lose its global image on the basis of lack of development of IPR jurisprudence. While companies must be mandated to pass their technology on the basis of FRAND commitments, it is also pertinent to note that rights of the patent holder are also to be safeguarded. Therefore, in the disputes related to SEP it would be prudent if adequate trial is given to both the parties and rates are determined by the Court without prejudice to any party and keeping in mind the interests of the end consumers at large.

 

[1] Micromax v Ericsson, Case No. 50/2013, Competition Commission of India, (November 12, 2013)

[2] No.13-1489 (Fed. Cir. 2014).

[3] Ericsson v Micromax, CS(OS) 442/2013 (12 November 2014).

 

DOMAIN NAME SQUATTING IN INDIA

DOMAIN NAME SQUATTING IN INDIA

A domain name is a string of typographic characters used to describe the location of a specific location online. Formally known as the Uniform Resource Locator or URL, it is often considered to be the address of a certain website. A domain name is a unique name that identifies a website.

The existence of domains without specific requirements for the registration brought a concept of “first come, first serve”. This has created many disputes with trademark owners. Since the 1990s, many speculators have started to register domain names in order to resell them for a much higher price to trade mark owners and new businesses. Problems arose with trade mark owners because of their entitlements to IP rights which make them feel ripped off by this new practice called “cybersquatting”.

Obtaining fraudulent registration with an intent to sell the domain name to the lawful owner of the name at a premium price is called “Cyber-squatting”. Cybersquatting has been an active threat since the early 1990’s and has increased in severity ever since. Cyber-squatters sometimes register variants of popular trademarked names, a practice known as typo-squatting. This is a type of cybersquatting which relies on typographical errors internet users make while entering website address into a web browser. Typo squatters takes benefit of misspellings. In such cases they divert the traffic of the target site to their website and in course of an electronic transaction, the potential customer might end up making an alternative purchase from competitors’ company. Not only this, they also tarnish the image of the company. For e.g. PETA used by cyber-squatter as “People Eating Tasty Animal”.

Domain names hold an elevated level of importance for the reason that there can be only one user of a domain name unlike two or more users of a same or similar trademark under the trademark law, for various classes of goods/services or under honest concurrent use. The domain registration system follows the “first come, first serve” policy. So, once a person registers a domain name similar to a trademark, any other person using a similar mark is denied registration of another domain name similar to that trademark.

In India, there is no legislation which explicitly refers to dispute resolution in connection to Cybersquatting or other domain name disputes. There is no provision in the current Information Technology Act to punish cyber-squatters. Therefore, in India the issues of cybersquatting are mainly governed by principles of passing off. However, it has also adopted a policy, called INDRP in line with the UDRP.

Yahoo!, Inc. v. Akash Arora & Anr – This was the first case on domain law protection in India. The plaintiff was the owner of the trademark YAHOO!. It filed a suit against the defendants, with the remedy of permanent injunction, in order to restrain the defendants, from carrying any business related to services or goods, under the domain name “yahooindia.com”, on the ground that the name incorporated was deceptively similar to the plaintiff’s trademark. The plaintiff’s domain name“yahoo.com” was registered with the Network Solutions Inc. and was registered in 69 countries. The Delhi High Court held that the marks were confusingly similar with the well-known trademark of the Plaintiff.

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd – The Respondent had registered domain names www.siffynet.com and www.siffynet.net which were similar to the Plaintiff’s domain name www.sifynet.com. Satyam (Plaintiff) had an image in the market and had registered the name Sifynet and various other names with ICANN and WIPO. The word Sify was first coined by the plaintiff using elements from its corporate name Satyam Infoway and had a very wide reputation and goodwill in the market. The Supreme Court held that “domain names are business identifiers, serving to identify and distinguish the business itself or its goods and services and to specify its corresponding online location.” The court also observed that the domain name had all the characteristics of a trademark and an action of Passing off can be found where domain names are involved. The decision was in favor of the plaintiff.

The disputes involving the registration of “.in” domain name are resolved in accordance with the .IN Dispute Resolution Policy (INDRP) and the INDRP Rules of Procedure. As per INDRP, if a person considers that a registered domain name conflicts with his legitimate rights or interests, he may file a complaint with the .IN Registry on the following premises:

  1. Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights,
  2. Registrant has no rights or legitimate interests in respect of the domain name,
  3. Registrant’s domain name has been registered or is being used in bad faith.

To bring a proceeding under the INDRP, Complainant needs to file the complaint with the .IN Registry along with the relevant fees. .IN Registry then appoints an Arbitrator out of the list of Arbitrators maintained by it. The complaint and documents are forwarded to the Respondent and the Arbitrator by the .IN Registry. Arbitrator then conducts Arbitration proceedings in accordance with the Arbitration and Conciliation Act 1996,

Rules thereunder, and the Dispute Resolution Policy & Rules. Arbitrator is required to pass an award within 60 days of the complaint and forward a copy of the same immediately to the complainant, respondent, and the .IN Registry.

Going through the majority of INDRP cases, it can be assessed that the arbitrators, in substantial number of cases have gone in the favor of the trademark holders for e.g. In the Vodafone Group Plc v. Rohit Bansal case, the Arbitrator found that the element of bad faith is established on the part of the Respondent if the Complainant is able to prove his rights in the trademark VODAFONE. The panel held that the Respondent had registered the domain name “vodafone.co.in” intentionally for selling it to the Complainant and making money from such sale. It ordered the transfer of the domain name to the Complainant.

It is also important to note that both UDRP and INDRP does not ouster the jurisdiction of civil court and, therefore, if the aggrieved party intends to seek compensation, then the complaint can be filed with the appropriate civil court as the remedies available under common law are exhaustive.

In the light of the above, in India, in order to settle dispute relating to domain names in the generic Top Level domain like .com, .org, .net etc. you have the option to resort to UDRP. In case of dispute relating to registration of “.in” domain name, a person may approach INDRP. Indian companies may also resolve their grievances relating to domain names by filing a suit in a civil court of competent jurisdiction. The civil court may pass an order under the Common law of passing off, and grant a permanent injunction against the wrongful user of the domain name. Such judgments are mostly in favor of the trademark owners discouraging cyber-squatters from hoarding domain names for their benefit.