Yahoo Incorporation is a very well known company providing a wide array of web-based services under the Trademark name Yahoo! And domain name yahoo.com. Both the label and the domain name were as famous and successful as they are today in the year 1999. Yahoo had it’s trademark registered in around 69 countries by then but was not registered in India.
One Akash Sharma smelling an opportunity started a web-based service providing company under the name Yahoo India and started providing similar types of services. Yahoo Inc sued upon Akash Arora for passing off on the name of Yahoo Inc, using a deceptive and a very closely identical name to misappropriate undue profits from the famous name of Yahoo!
The court faced an issue, whether Akash Arora was liable under the relevant sections of the Trademark Laws for using a similar name and providing similar services? The lawyers engaged by the defendant argued that the audience was literate enough on the internet to distinguish between Yahoo and Yahoo India. Yahoo is not registered in India and the word Yahoo is a general exclamation in the dictionary and could not have attained distinctiveness. They also argued that the Indian Trademarks Acts was applicable only to goods and the site operated by the defendant catered a service that is far away from the definition of ‘Goods’.
The court met all the doubts and arguments boldly and it was observed that Yahoo had a good reputation in the market and the name chosen by the defendant was a deceptive one and could mislead the general public into using the services of Yahoo India believing it to be Yahoo Inc, causing damage to the reputation of Yahoo Inc and generating undue profits for Yahoo India. The 4 essentials enshrined in the case of Monetary Overseas v. Montari Industries Ltd.; 1996 PTC 42 were fulfilled in the present case too.
Thus the court restrained Akash Arora from using the deceptively similar domain name which could help him encash the goodwill generated by Yahoo Inc over the years and pass it off.
The judgment is counted amongst one of the torch-bearing judgments in the cases involving passing off. Due application of mind and reason has been exhibited in the case. Not only the case was handled effectively by the Hon’ble Delhi High Court but was also passed efficiently, without any drag. Though the arguments forwarded by the defendant were edgy and logical enough for a layman, the deeper logic could be dug only by the Hon'ble court after due application of mind. The principle of ‘No pain no gain’ was applied and the judgment was rightly passed in the favor of the plaintiff, Yahoo Inc.