YAHOO INC Vs. SANJAY V SHAH

JUDGEMENT

(1.) The plaintiff is stated to be a corporation organized and existing under the laws of the State of Delaware, USA with its office at California, USA. Ms. Sunita K. Sreedharan is the constituted attorney of the plaintiff and is duly authorized by and under a power of attorney to sign and verify the pleadings and to institute the present suit. The present plaint has been signed and verified by the said Ms. Sunita K. Sreedharan. The plaintiff is a global internet media company that offers a branded network of comprehensive information, communication and shopping services to millions of users under its unique and highly distinctive trademark 'YAHOO!' since June, 1994. It is the case of the plaintiff that the services provided by the plaintiff enables internet users, even nontechnical ones, to find information relevant for their purposes out of the plethora of contents of the worldwide web. The plaintiff was amongst the first in the field to start a web directory and provide search services. Earlier this directory was called 'Jerry and David's Guide to the Worldwide Web'. But later on the name was changed to 'YAHOO!' as it fit in with the founder's perception of the internet as an uncivilized terrain. 'YAHOO!' web site of the plaintiff has become incredibly popular with the traffic of internet users to the site increasing rapidly. Various services are being offered from different times by the plaintiff. Use of the internationally famous YAHOO! trademark is not restricted only to computer and internet related services but extends to books, magazines and many collateral goods. The plaintiff has licensed the mark YAHOO! for use in connection with candies, chocolate, mints, nuts and such other like products as well. As stated inthe plaint, the annual revenue of Yahoo! for the years 1995 to 2002 is as under: <FRM>JUDGEMENT_488_DLT128_2006Html1.htm</FRM>

(2.) The plaintiff has spent huge sums on advertising and sales promotion and has earned extensive goodwill and reputation. In fact YAHOO! mark has become easily identifiable by the members of the public and trade, as originating from the plaintiff. The growing popularity of YAHOO! website has engendered imitations by third parties who have at various points in time attempted to illegally appropriate the goodwill and reputation in the said mark by using it as a key and essential part of the names of their products/services. YAHOO! has prevailed in legal actions and trademark office opposition and cancellation proceedings against the third party in various countries. In paragraph No. 15 of the plaint, the plaintiff has referred to various suits which were filed by the plaintiff for protection of the trademark YAHOO! against different parties right from the year 1998 to 2003 in which the Court had granted ad interim injunction in favour of the plaintiff. Defendant No. 1 is stated to be in the business of manufacturing Sunari, Gutkha and chewing tobacco. In December, 2000, the plaintiff was informed of the advertisement of five applications for a label bearing trademark YAHOO! that had been advertised in the Trademarks journal No. 1232 dated 8th October. 2000. The defendant No. 1 was listed as the Applicant with respect to the said applications. Photocopies of the relevant advertisements have been filed in the present proceedings by the plaintiff. The applications of defendant were opposed by the plaintiff who filed the opposition proceedings against the said marks on 8th February, 2001. In May, 2002, the plaintiff is stated to have learnt about the manufacturing and selling of Supari and other aforementioned items under the impugned mark YAHOO! to which the plaintiff reacted by sending a legal notice dated 6th May, 2002 obviously of not any consequence. In response to the said notice, the defendants had informed the plaintiff that the trademark YAHOO! was adopted by the defendants because of their customers exclaim "YAHOO!" Despite best efforts of the plaintiff, the defendants still displayed samples of fruit juices, beverages, etc. bearing the YAHOO! trademark. Even after having been put on notice of the plaintiff's rights, the defendants have, with mala fide intentions, continued to use the plaintiff's trademark YAHOO! The defendants have even been inspired by plaintiff's global reputation and goodwill under the trademark YAHOO! which promoted them to adopt an identical mark for the products of their manufacture and they are passing off their goods and business as that of the plaintiff's and are misusing the trademark YAHOO! of the plaintiff. This is likely to cause further confusion as the plaintiff has licensed use of trademark YAHOO! for food items. It is stated that the plaintiff has approached the Court without any delay.

(3.) On the above averments, it is pleaded by the plaintiff that the defendants are affecting and in fact foreclosing the right of the plaintiff to legitimate expansion of their business to include manufacture and/or marketing of beverages and wafers, etc. and are eroding the goodwill of the plaintiff which is distinctively known as plaintiff's mark. It is averred by the plaintiff that the legislative intent and concern to specially protect piracy relating to pharmaceutical and food preparations, is reflected in Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 in the form of an enhanced sentencing policy. It is necessary that the defendants be restrained from using the said trademark in relation to such goods. The cause of action arose in favour of the plaintiff and against the defendants in December 2000 when the plaintiff came to know about the trademark applications pending, then in September. 2002 when the defendants responded to the notice and refused to give up the use of the impugned mark and even in October, 2002 and April, 2003 when the plaintiff became aware of the trademark application filed by the defendants in Pakistan as well. This has compelled the plaintiff to file the present suit praying for a decree for permanent injunction restraining the defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in Gutkha, Supari. beverages fruits juices or any other product under the trademark YAHOO! or any other mark deceptively similar thereto. They also pray for a decree for damages amounting to Rs. 5,05,000/- on account of the use of the impugned mark and for delivery up of all the impugned materials of the defendants including the goods, stickers, cartons, etc. which bear the impugned mark YAHOO!