Matrimony.com Ltd. recently obtained an interim injunction in its favour (CNR Number: HCMA01-069473-2019) from the Madras High Court against Kalyan Matrimony and others for violation of its trademark (TamilMatrimony, TeluguMatrimony, KeralaMatrimony and KannadaMatrimony) through Search Engine Optimization and Google Adwords Programme.
As per a press release from Matrimony.com, the injunction has been obtained against bharatmatrimony.org, reddytelugumatrimony.com, telugumatrimony.com, vanjaritelugumatrimony.com, snkeralamatrimony.com, alltelugumatrimony.com as well as the mobile application Bharatcommunitymatrimony. The order is yet to be uploaded by the concerned court.
A spokesperson for Kalyan Matrimony has said that the contention of infringement was denied and also that a detailed reply was sent to the legal notice issued by Matrimony.com.
II. Similar Cases of the Plaintiff
A. Matrimony.com has in January 2019 secured a judgment in its favour against Thodu Needa Telugu Matrimony along with costs and damages of Rs. 10,00,000/- (Rupees Ten Lacs only).
The suit was filed before the Commercial Division of the Madras High Court after issuing several Cease and Desist notices to the defendant. The Defendant had been accused of allegedly infringing the Plaintiff’s trademark (TeluguMatrimony) and domain name (TeluguMatrimony.com) through search engine optimization.
B. In 2012, a Division Bench of the Madras High Court ruled in a matter wherein the Plaintiff had raised similar issues against competitors allegedly infringing its trademark and also the role of search engines in its abetment.
The key points discussed in the ruling are as under:
(i) The Division Bench had opined on Google adopting double standards and bias against the Plaintiff in offering its services.
(ii) The use of a descriptive word along with a generic word collectively as a trademark and its enforceability (i.e. ability to monopolize such term).
(iii) The use of a domain name as a trademark.
III. Similar Cases of Trademark Infringement
MakeMyTrip filed suit against EaseMyTrip over trademark violation
MakeMyTrip has noticed that upon searching for MakeMyTrip on the Google search engine a sponsored result for EaseMyTrip also appears, this is a violation of the trademark of MakeMyTrip and has led to filing of the suit which is now listed for hearing in May, 2019.
It would be interesting to see how Kalyan Matrimony fights it out with Matrimony.com once other documents are also made available through the court website i.e. the aforementioned order along with the cease and desist notice issued to Kalyan Matrimony and their reply.
The use of a domain name as a trademark has not been clearly settled by the Indian courts and with growing awareness of intellectual property rights these litigations are likely to surface more often.
V. Additional Read
- Matrimony.com had reported the bias practice of Google to the Competition Commission of India, which in 2018 imposed a hefty penalty on Google. You can read the detailed order passed by the Competition Commission here.
2. Trademark infringement through keyword advertising in India: issues and challenges.
Image source – here