Before the age of the internet, businesses used to flourish using conventional methods of sales such as in-store sales and customers shopping through catalogues where paper was the main mode of communication. Trade over the internet was comparatively new and an alien concept. Nowadays, especially with the ongoing pandemic, and increasing use of E-commerce sites, there has been a major alteration in business models. With almost everyone having a presence online, the current age of constantly evolving internet and its increasing traffic has also facilitated counterfeit goods to enter the market, depriving consumers of authentic goods, creating profit for infringers and violating the rights of trademark owners. According to the Authentication Solution Providers’ Association (ASPA), counterfeiting costs the Indian economy approximately INR 1 trillion every year, and one in three Indian adults have been prey to online counterfeiting. Internet platforms that are intended to provide legitimate products are now increasingly trading counterfeit goods. This is just one example of how brand owners are becoming vulnerable and professional online counterfeiters are continuing to grow.

In an ongoing pandemic where the internet has wide influence in our day to day lives, domain names also have increasing importance and chance for disputes is high. In Satyam Infoway v. Sifynet Solutions[1] the Supreme Court was of the view that the original role of the domain name was to provide an address for computers on the internet. But the Court further said that because of the development of the internet from being a mere means of communication to a place where commercial activities are carried out, the role of domain names has changed drastically. It no longer is a mere address but has in fact come to be associated with the goods or services provided by a particular person through a particular website. Cybersquatters often register domain names similar to third party trademarks, with the aim of selling them at an inflated price. Such malafide registrations infringe the IP rights of the actual owner and can cause confusion among the minds of the public. The Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain-Name Dispute Resolution Policy (UDRP) based on recommendations from WIPO[2]. This Policy provides for resolution of domain name conflicts through approved dispute resolution service providers, irrespective of the location of the domain registrar, trademark owner or the registrant of the domain. ICANN has also adopted a mechanism called the Trademark Clearinghouse, a centralized database of verified trademarks, where trademark owners can record their marks. There are different kinds of services offered to verified trademark holders in the internet such as priority access to request new domains and notification of registration of similar domains.

Trademark infringement on the internet is not confined to cybersquatting or domain name infringement alone. The courts have taken note of various other infringements such as phishing, metatag misuse etc. Meta tags are HTML codes that are used to describe the contents of a particular website when a user searches for websites of that description. It has been acknowledged by the Court in Samsung Electronics Co. Ltd. v. Kapil Wadhwa[3] that use of similar words as meta tags with registered trademarks would result in loss of business due to diversion of users over the internet. Undoubtedly, infringement under the Trademarks Act 1999, covers every kind of unauthorized use of a registered mark or using any mark identical to the original to confuse the customer and to gain unfair profit.

The more recent types of infringement of trademarks are seen in social media platforms. Similar to cybersquatting, hashtag infringement is a significant issue on social media platforms such as Twitter and Instagram. Hashtags are used by placing words in profiles which allow them to be viewed in search engines. The free and extensive usage of brand names in the form of hashtags such that it is being used in respect of rival brands or by infringers, makes the trademark generic and lose its distinctiveness. Though registration of hashtag trademarks is still in the nascent stages in India, the increasing expansion of market and strong social media presence will ultimately lead to a change in this.

Social media networks have proven to be very beneficial to brand owners as it provides a platform to showcase their goods and services to their customers. Despite having a verification tag in popular social media websites, a very common infringement that occurs today is brandjacking. Brandjacking occurs when an account is created in order to impersonate a known account without authorization, whereby the infringer can easily make use of the account to pass off his services as that of the original owner. Even though courts have not decided cases specific to brandjacking, we may rely on precedents set by various courts while deciding unauthorized use of a trademark in relation to phishing, spamming and cybersquatting.

Social media in this day and age has become a powerful tool for building one’s brand by continuously engaging directly with the customer, so much so that the narrative has shifted from the hands of the brand owner to the consumers. While this change has a lot of benefits like getting a direct view into consumer perceptions and thereby enhancing e-commerce, it is also necessary that brands on the internet are safeguarded through concrete laws so that infringers do not get away. The difficulty arises due to the complexity of the internet and hence finding an infringer online is similar to finding a needle in a haystack. Businesses often apprehensively register common misspellings of their original trademarks so as to prevent infringers from doing the same and make sure that the misspelled versions are directed to their domain so as to not cause confusion. IP management softwares would also to an extent help business monitor their marks and identify potential violators and help them take action. New laws and specialized courts that address the more complex disputes that arise in respect of IP in the internet would help adapt to the changing circumstances and ensure better protection of brands. Centralized databases akin to the Trademark clearing house and even more contemporary and advanced solutions to monitor infringements are the way forward for brand protection in the new digital age.

By

Shilpa U Iyer

www.puthrans.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

[1] (2004) 6 SCC 145

[2] https://www.icann.org/resources/pages/help/dndr/udrp-en

[3] 2012(49)PTC571(Del)