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IN THE HIGH COURT OF DELHI AT NEW DELHI
Vibhu Bakhru, J.
Dr Reddys Laboratories Limited - Appellant
Versus
Chandan M A And Anr. - Respondent
O.M.P. (Comm) 332/2021 and & I.A. No. No. 14554/2021
Decided On : 12-04-2022
Trademark - Arbitration and Conciliation Act, 1996 - Section 34 - INDRP - Sections 4 and 6 - [2 DEGE] - [Trademark Dispute] - [Section 34 of the Arbitration and Conciliation Act, 1996, INDRP Sections 4 and 6] - The court discussed the conflict between the impugned domain name and the petitioner's legitimate rights and interests, the petitioner's use and registration of the trademarks, and the erroneous reasoning of the Arbitral Tribunal in questioning the petitioner's need to use the two trademarks, ultimately setting aside the impugned award.
Fact of the Case:
The petitioner filed a petition under Section 34 of the Arbitration and Conciliation Act, 1996, impugning an arbitral award rejecting its claim for transfer of an impugned domain name, which was deceptively similar to its trademark.
Finding of the Court:
The court found that the impugned domain name was deceptively similar to the petitioner's trademark, and the Arbitral Tribunal's reasoning was erroneous, leading to the setting aside of the impugned award.
Issues: Conflict between impugned domain name and petitioner's legitimate rights, petitioner's use and registration of trademarks, and the erroneous reasoning of the Arbitral Tribunal.
Ratio Decidendi: The impugned domain name was deceptively similar to the petitioner's trademark, and the Arbitral Tribunal's questioning of the petitioner's need to use the two trademarks was erroneous.
Final Decision: The petition is allowed, and the impugned award is set aside.
JUDGMENT
Vibhu Bakhru, J. (Oral). - The petitioner has filed the present petition under Section 34 of the Arbitration and Conciliation Act, 1996 (hereinafter 'the A&C Act') impugning an arbitral award dated 23.07.2021 (hereinafter 'the impugned award') delivered by the Arbitral Tribunal comprising of a learned Sole Arbitrator.
2. In the year 2004, the petitioner adopted and coined the Trademark 2 DEGE'.
3. On 23.08.2004, the petitioner entered into a Memorandum of Understanding (hereafter 'MoU') with the Defence Research and Development Organisation, Ministry of Defence, Government of India(hereafter 'DRDO') for "Technology Transfer Agreement for 2-DEOXY-D-GLUCOSE (2-DG)". In terms of the said MoU, DRDO granted a non-exclusive revocable license to the petitioner to utilize the "Technology" developed by it for manufacturing and selling the said product in India and abroad. It is averred in the petition that the petitioner, working in collaboration with the DRDO, developed the first Indian origin anti-covid medicine under the brand 'D2G'.
4. Thereafter, on 18.11.2004, the petitioner applied for registration of the Trademark 2DEGE' in Class 5 (Medicinal and Pharmaceutical Preparations and Substances) under the number 1320971 and the same was duly registered. Further, on 03.02.2015, the petitioner procured another registration of the mark 2DEGE' in Class 5 (Medicinal and Pharmaceutical Preparations and Substances) under the number 2897647.
5. On 01.05.2021, the license for manufacturing of 2DG' medicines was granted to the petitioner.
6. On 08.05.2021, respondent no.l obtained the registration of 'http://www.2dg.in' (hereafter 'the impugned domain name').
7. On 16.05.2021, the petitioner applied for registration of the mark 2DG' in Class 5 under the number 4974704. Subsequently, the device mark applications for registration of the mark 2DG' were also filed by the petitioner.
8. It is averred in the petition that in the first week of June, 2021, the petitioner came across the impugned domain name of the respondent.
9. Admittedly, disputes arose between the parties with respect to the impugned domain name. In view of the disputes, the petitioner filed a complaint with National Internet Exchange of India (hereafter 'respondent no. 2') and requested that an Administrative Panel be appointed and the impugned domain name be transferred to it in accordance with the. IN Domain Name Dispute Resolution Policy Rules of Procedure (hereafter 'INDRP').
10. Pursuant to the petitioner's request, an Arbitral Tribunal was constituted. Respondent no. 1 did not participate in the proceedings before the Arbitral Tribunal and was not represented before the Arbitral Tribunal. The arbitral proceedings culminated in the Arbitral Tribunal rendering the impugned award exparte.
11. By the impugned award, the Arbitral Tribunal rejected the claim of the petitioner and declined its claim for transfer of the impugned domain name, in its favour. The Arbitral Tribunal held that the petitioner had two types of trademarks mentioned in the complaint and annexures and thus, it could not restrain respondent no.l from using 2DG' as a domain name. The Arbitral Tribunal held that the petitioner was the owner of the Trademark 2DEGE' and considering that the domains were being used by internet users, who were not illiterate, the two Trademarks, that are, 2DG' and 2DEGE' could easily be differentiated.
12. Aggrieved by the impugned award, the petitioner has filed the present petition.
Reasons and Conclusion
13. At the outset, it is relevant to refer to refer to Sections 4 and Section 6 of the INDRP. The same are set out below: -
"4. Class of Disputes
Any Person who considers that a registered domain name conflicts with his/her legitimate rights or interests may file a Complaint to the. IN Registry on the following premises:
(a) the Registrant's domain name is identical and/or confusingly similar to a Name, Trademark or Service Mark etc. in which the Complainant has rights; and
(b) the Regist
The impugned domain name was deceptively similar to the petitioner's trademark, and the Arbitral Tribunal's reasoning was erroneous, leading to the setting aside of the impugned award.
The court upheld the arbitration award canceling a domain name for being confusingly similar to prior registered domain names, emphasizing the importance of preventing confusion in online commerce.
The registration of a domain name incorporating a well-known trademark in bad faith, with no legitimate interests evidenced, constitutes grounds for its transfer to the legitimate trademark owner.
The court established that arbitration awards can only be set aside under Section 34 if they contravene fundamental principles of Indian law or public policy, without delving into the merits of arbit....
The judgment established the importance of protecting domain names and clarified the grounds for setting aside an arbitral award under Section 34 of the Arbitration and Conciliation Act, 1996.
The main legal point established in the judgment is that claims of bias against an arbitrator must be carefully scrutinized, and an arbitrator should not rely upon evidence gathered without giving th....
The main legal point established in the judgment is the duty of the arbitrator to consider responses before passing an award and the need for fresh adjudication in arbitration proceedings.
The judgment emphasizes the limited scope of judicial review of arbitral awards, the requirement to demonstrate patent illegality, and the principles of natural justice and a judicial approach in arb....
In trademark infringement cases, courts cannot grant broad injunctions without identifying specific infringing domains; reliefs must target clearly defined trademarks as per Sections 28(1) and 29 of ....
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