What is trademark infringement in cyberspace?

A trademark infringement is frequently mistakenly believed to be restricted to certain words, designs, images, and packaging. But a trademark has much more potential. Trademark laws protect anything that can be used to distinguish a source, including a product’s appearance, feel, and certain sounds, colors, and smells. This expands the range of instances in which a trademark may be violated.

In addition to its traditional applications, it is now even used in cyberspace. A trademark has a wide range of applications in the “cyber sphere,” and as its significance rises, so does its influence on the general usability of products. Our modern, fast-paced economy relies on the internet and is inseparably linked to it. Every aspect is influenced by the internet, from the most basic tasks, like placing an order online, to more complex ones, like predicting future market trends.

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How is the jurisdiction decided in trademark infringement in cyberspace?

There is no specific rule for regulating trademark infringement matters when the parties belong to different countries. Regardless of whether the products were sold in India, the Indian judiciary has established precedents that offer relief for infringement of foreign trademarks in India. The courts have ruled that the plaintiff is not required to conduct business in India. He only has to prove that he has otherwise acquired a reputation in India.

India has applied this in two of these famous cases.

Case 1: Bulgari SPA vs. Notandas Gems Pvt. Ltd

The plaintiff filed the lawsuit against the defendants to prevent them from violating its trademark and design because the parties involved in the current dispute dealt in high-end luxury jewelry. In its counterclaim, the defendant contested the Delhi High Court’s geographical jurisdiction and cited Section 17 of the Trade Marks Act, 1999, to claim that Bulgari was not entitled to exclusivity regarding the word “SERPENTI,” which was a part of the composite mark (a mark made up of several different elements), since it was a part of the mark. The Delhi High Court, which also dismissed the application, issued an interim injunction prohibiting the defendant from using the trademark “SERPENTINE” in connection with any of its products in this case.

Regarding territorial jurisdiction for online intellectual property infringement claims, the court’s ruling helped to restate any confusion.

Arguments in the Case

Issue in the case	Plaintiff	Defendant
If there is no territorial jurisdiction, is the complaint invalid?	The plaintiff argued that the mark “SERPENTI” has become inextricably linked to their jewellery and that the defendant’s trademark is similar enough to the plaintiff’s mark to cause misleading, exempt from the provisions of Section 17 of the Trade Marks Act, 1999, which forbids an applicant from asserting exclusivity over a component of a composite mark if the same has not been registered separately.	While disputing the plaintiff’s arguments, the defendant asserted that because the plaintiff’s trademark is a composite mark, no exclusivity can be stated on any particular portion of it. Using Section 17 of the Trade Marks Act, 1999 (Act), the defendant argued that Bulgari was not entitled to exclusivity in respect of “SERPENTI” alone, as it was a component of the composite mark (a mark made up of several elements). Words, devices, shapes, sounds, smells, and colours are examples of these elements.
Whether Is there a strong case for trademark infringement in the first instance?	The plaintiff claimed that since the word “SERPENTI” became well-known in the 1940s and is a significant component of their composite mark, it qualifies as an infringing use and can be used as evidence of infringement.	The defendant further cited Section 30(2) of the Act to argue that because “serpentine” is an adjective form derived from “serpent,” Bulgari could not assert exclusivity in respect of it. The defendant also argued that the marks used by the plaintiff and defendant are Since many jewellery manufacturers use the serpent/snake form, the word “SERPENTI” is both phonetically similar to and descriptive of the shape of the goods in question.
Whether a case of design infringement is evident at first glance?	The plaintiff further contended that the defendant had violated his rights by using the trademark “SERPENTI” for products that are neither generically used in the industry nor illustrative of the goods they are used for.	The defendant argued that because their design for a snakehead was entirely distinct from the plaintiff’s, they were not violating the plaintiff’s patent.
Is there sufficient evidence to demonstrate that the defendant misrepresented the plaintiff’s trademark?	The plaintiff argued that the similarity in overall appearance between the defendant’s and plaintiff’s logos was sufficient to establish trademark infringement.	The defendant further argued that the Delhi High Court lacked territorial jurisdiction to decide the case because their only store in Delhi had been closed and that the mere interactivity of their website was sufficient to establish the Court’s jurisdiction.

In this matter, the Court, on the point of territorial jurisdiction, depended on the precedents to clarify the issue and pointed out that interactive websites can be divided under two divisions, namely:

websites that only offer information.
sites where products or services can be purchased or accessed for a fee.

When a website falls into the first category (a), the court lacks territorial jurisdiction unless and until it can be proven that someone who was in the court’s jurisdiction at the time the information was accessed. The defendant, who falls under the second category (b), is presumed to have intentionally taken advantage of the jurisdiction of Courts in all territories to handle a case of trademark infringement where such transactions can be carried out and completed once it has made its goods or services available for consideration online.

The Court noted that the words “SERPENTI” and “SERPENTINE” have a similar phonetic pronunciation about trademark infringement. Regarding relying on Section 17 of the Act, the Court noted that Section 17 contains a prohibition against asserting exclusivity over a component of a composite mark unless that component has been separately registered as a trademark. The Court pointed out that Notandas violated Bulgari’s registered marks by using “SERPENTINE” as their mark for their upscale jewelry line, as “SERPENTI” is a prominent/dominant mark in those marks.

Case 2: Tata Sons Private Limited v Hakunamatata Tata Founders & Ors

In a case involving allegations of trademark infringement on the internet, the Delhi High Court dealt with the issue of determining jurisdiction. Due to the defendants’ location outside the court’s jurisdiction, the court declined to issue the requested directions against them. The defendants were based in the USA and the UK, respectively. They operated as “TATA coin/$TATA” and dealt with cryptocurrencies. None of the defendants had any physical locations in India, and the plaintiff had no evidence that they were engaging in overt manufacturing or marketing activities there.

The plaintiff requested a long-term injunction to prevent the defendants from using the trademark “TATA” as part of the name their cryptocurrency was made publicly available under or as part of their corporate name or domain name. The plaintiff claimed that there had been “purposeful availment” of the court’s jurisdiction because anyone in India could buy the defendants’ cryptocurrency on their website, and people from India had posted inquiries on the defendants’ Twitter page. There was a lot of traffic to the site from India. The court determined that, despite the defendants’ website being accessible to people in its jurisdiction, that fact alone did not establish jurisdiction.

It was necessary to provide convincing proof of actions taken against people under the court’s jurisdiction. Indian courts do not have extraterritorial jurisdiction over non-resident defendants. They only do so if their activities sufficiently relate to India, if those activities give rise to the cause of action, and if exercising that jurisdiction is reasonable. The fact that the defendant’s website was interactive and accessible to visitors who were physically present in the court’s jurisdiction was significant but insufficient. The primary deciding factors in the case were the defendants’ interactive website and disclosure of an overt intention to target the Indian market.

The court determined that the defendants’ conscious choice to pursue India as a potential market was not proven in this instance because the court did not find the combination of these factors to be present. The court declined to grant the plaintiff an interim injunction because the website’s mere accessibility in India was insufficient.