The present suit had been filed by the Plaintiffs against the Defendants for using the domain name “CLICK2SHINE.COM” which was deceptively similar to the registered trademark of the Plaintiffs’, “SHINE.COM”. The suit was decreed in favor of the Plaintiffs’ because the Plaintiffs’ were able to prove that the Defendant’s adoption and using of counterfeit trade name or registered trademark, domain name, trade dress deceptively similar domain name, unequivocally amounts to infringement of the Plaintiff’s registered trademark and amounts to passing off of their goods and business as it was without authorization/affiliation by the Plaintiffs.

Brief Facts         

  • M/S. H.T. Media Ltd & Anr (hereinafter referred to as the ‘Plaintiff no.1’) is a media house engaged in the business of print media, radio and internet services and enjoyed a leadership position in the English and Hindi newspaper market. The Plaintiff no. 2 was a subsidiary of the Plaintiff no. 1 and had acquired and adopted the domain name “SHINE.COM”.
  • The Plaintiffs were registered proprietors of the trademarks “SHINE” and “SHINE.COM”.
  • Susheel Kumar & Ors (hereinafter referred to as the Defendants no. 1, 2 and 3) were entities/companies engaged in the business of providing education, training, jobs via the website www.click2shine.com, www.success4career.in and www.success4career. Defendants no. 4 and 5 were managing and operating the said domain name.
  • An ad-interim ex-parte injunction order was passed by this Court on May 30, 2014, in favor of the Plaintiffs and against the Defendants.
  • Upon receiving knowledge of the Defendant’s domain name “CLICK2SHINE.COM”, the Plaintiffs sent a legal notice dated January 28, 2014 upon whose receipt the Defendants ceased to use the domain name and deactivated the website.
  • In April 2014, the Plaintiffs found the Defendants have restored the website www.click2shine.com, and it again sent a legal notice calling upon the Defendant no. 4 to cease and desist from using the mark “CLICK2SHINE” in any manner.

Plaintiff’s Contentions

  • The Plaintiff contended that the Defendants have made money at the expense of the Plaintiff by charging money from the interested subscribers.
  • The Plaintiffs contended that irreparable damage had been caused to the Plaintiff’s goodwill and reputation.
  • The Plaintiff contended that the Defendants are liable to pay punitive damages for the obvious and willful infringement of the Plaintiff’s trademark for its contemptuous conduct. The Plaintiffs used the precedent set in the case of Hindustan Unilever Limited vs Reckitt Benckiser with reliance on Rookes v Bernard.
  • The Plaintiff contended that the acts of the Defendants in adopting and using the identical/deceptively similar impugned mark and web address in respect of identical services had caused and would continue to cause irreparable damage and loss to the Plaintiffs’ business.
  • The Plaintiff contended that the impugned website which forms a part of their trading name, infringes the rights of the Plaintiffs under Section 29 (5) of the Trademarks Act, 1999.
  • The Plaintiff used the precedent set in the case of Kaviraj Pandit Durga Dutt Sharma vs Navarattana Pharmaceutical Lab, which held that, if the Defendant’s mark is closely, visually and phonetically similar, then no further proof is necessary in infringement cases.

Defendant’s Contentions

The Defendants chose to stay away from the proceedings of the Court, and thus the matter proceeded ex parte.

Court’s Decision

  • The Court relied on the precedent set in the case of Mex Switchgears Pvt Ltd v Max Switchgears Pvt Ltd which stated that “the essential features of rival marks are to be considered in determining infringement”.
  • The Court held that from the perusal of the record and available evidence, the Defendant’s use of the counterfeit domain name or registered trademark amounted to infringement of the Plaintiff’s registered domain name or trademark. 
  • The Court held that the Defendants are guilty of infringing the Plaintiff’s trademark by using the domain name “CLICK2SHINE.COM” and that it amounts to infringement and passing off of their goods and business as it is without authorization or affiliation.
  • The Court held that the Plaintiffs are entitled to a decree of permanent injunction restraining the Defendants from using the mark “CLICK2SHINE.COM” or any deceptive variant thereof which is identical/similar to the Plaintiff’s trademark “SHINE” and “SHINE.COM” in respect of their online job portal services or any other products or services thereby amounting to infringement/passing off. The Court held that the Plaintiffs are entitled to their prayer.
  • The Court held that the Plaintiffs are entitled to a grant of damages not only in terms of compensatory damages but also in the form of punitive damages for the immense loss to goodwill and reputation.
  • The Court held that where the Defendants reclused themselves from the proceedings, they cannot be permitted to enjoy the benefits of evasion or covert priorities as has been using the domain websites and have been infringing the Plaintiffs’ trademark certainly makes the Defendants liable to pay the damages to the Plaintiffs. Hence, a decree for a sum of INR 10 lakhs in favor of the Plaintiffs and against Defendants, is passed on account of infringing the registered marks, trade dress and violating interim order.
  • The Court held that the Plaintiffs shall also be entitled to interest @ 10% pa on the damages so awarded from the date of filing of the suit till the date of ealization.
  • The Court awarded the costs of the suit to the Plaintiffs and against the Defendants. The Defendants were held to be jointly and severally liable to pay the damages and costs to the Plaintiff.