INDRP & Well-known trademarks

IT.com

Ceres

New Member
Here's the Macmillan.in decision. I thought the case raised a few interesting topics…

Macmillan.in was ordered to be transferred to the complainants who own the mark MACMILLAN.

The important thing to note is that the complainant claimed that MACMILLAN is not an ordinary trademark, but it is a 'well-known trademark' within the meaning of Section 2 (1) (zg) of the Trademarks Act, 1999 and is entitled to be treated differently from ordinary trademarks:

(zg) “well Known trade mark”, in relation to any goods or services, means an mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services
[emphasis added]

(See: Trade Marks Act, 1999)

The Arbitrator suggested that the respondent Macmillan Insulations should have registered the domain 'Macmillan Insulations' and not 'Macmillan.' Ordinarily, I would not agree with such a statement! However, we are dealing a famous trademark that enjoys special protection. Macmillan has been used since 1843 and its reputation and products are known worldwide. Therefore, the Arbitrator's statement does makes sense.

For example, if you decided to register Starbucks Computers, consumers would likely get confused and think there was a connection with the well-known Starbucks beverage company (even though you are dealing in different channels of trade).

Instead of Macmillan Insulations being listed on the Whois, it was a web design/development firm. Therefore, both companies ended up as respondents in this case. The complainants accused the respondents of filing false Whois. This highlights how important it is to register your domain directly with a registrar and not a third party. Unfortunately, many web development companies are known to deliberately register domains under their own name so that they can retain a hold over clients.

What do you think of the Macmillan decision?
 
Last edited by a moderator:

whois



Forums dedicated to Indian domain names, including buying, selling, appraising, developing, and monetizing.

About Us

Threads
29,388
Messages
76,792
Members
7,945
Latest member
nilamburfurniture
Top Bottom