With the increasing trend of IPR Awareness drive, the concept of getting one’s rights registered under the IP law is growing day by day, but what actually boosts such growth is strict opinions & judgements given by the Hon’ble Forum upholding and recognizing the rights of the actual owner of the IP Asset by punishing the offender for encashing on someone else’s reputation. One such progressive opinion was given by the Hon’ble Delhi High Court when the US based Yahoo! Inc. (hereinafter as Yahoo!) filed a suit against a 12-year-old Indian Company - M/s Apricot Foods Pvt. Ltd. (hereinafter as “AFPL”).
Yahoo‘s Proactive Action
In 2015, one of the tech giant’s – Yahoo! which is worldwide famous for its mail repository and Internet services sued a growing Indian Co. AFPL. and its agents/distributors for taking undue advantage of well known – “Yahoo!”Mark. The prime allegation was linked to the increasing sales of AFPL merchandise - “YAHOO MASALA CHAKRA” AND “YAHOO TOMATO TANGY”. On the very first hearing, Yahoo! established the dishonest use of their mark by AFPL and attained an interim injunction against AFPL& its agent. In 2016, the Hon’ble Delhi High Court while observing the queer sense of culpability which AFPL had projected with the use of the mark YAHOO! provided a favorable permanent injunction. Therein, Justice Murlidhar not only observed how the mark was used and linked with Yahoo! (when even AFPL displayed its contact information at email@example.com) but also detected the guilt on the part of AFPL which despite several notices, did not even enter any appearance. Moreover, the Hon’ble Court also observed the proactive attitude of Yahoo! Inc. which is registered as a well-known mark and appears in the list at S.no. 54. Thus, perceiving the aforesaid remarks, the Hon’ble Court to set an example along with a favorable permanent injunction also directed payment of Rs 32 lakh towards damages and Ra 6.44 lakh as cost.
Relevance & Applicability
What makes this litigation relevant is the prompt action taken by Yahoo! against the wrong doers which are seen comparatively less in the Indian Corporates. The favorable interpretation has drawn by the Hon’ble Court that, ‘the mark should not be just restricted to computers & internet services’ (which was the prime business activities of Yahoo!). This positive interpretation, in itself, is a reward to one who is not merely sitting on its rights and waiting for the time the infringer/ wrong doer would eventually stop it.
Another crucial factor which every company must denote is the significance /implications of having a status of Well-Known Mark. From a business perspective, filing an application/ suit might just seem an immediate expense for the Company but what needs to be inculcated is the necessity attached to this step. It is important to understand that the implication of attaining a status of a well- known mark in itself is a prima facie evidence to suggest that the mark is “well- known” to the general public and enjoys a relatively high reputation. Thus a company needs to understand, that its ultimate objective of not merely getting their mark registered but also it must try to attain such reputed recognition.
In conclusion, what the Indian corporates are still to imbibe from the western culture is that creating a parity between both its Fictitious as well as other Immovable Assets. Thus, every corporate should understand the importance that when it values these assets especially its goodwill on the balance sheet then it has the duty protect the same from infringers & wrong doers against such inappropriate use. Thus merely filing an application for registration or even getting your mark registered would not suffice the duty unless and until every possible mechanism for getting their mark the required protection is being taken.