IN THE HONORABLE

HIGH COURT OF DELHI

In the matter of

Modicare Ltd.
Vs.
Shankar Narayan Sagari

Memorandum on behalf of the Respondent

Counsel for Respondent

SApoorva Chandra

Sem 6th Section-C

Roll no.25

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 TABLE OF CONTENTS

1. Index of Abbreviations................................................................................3
2. Laws and Provisions applied.......................................................................3
3. Index of Authorities.....................................................................................5
4. Statement of Jurisdiction.............................................................................6
5. Statement of Fact.........................................................................................7
6. Questions Presented....................................................................................8
7. Summary of Pleadings................................................................................9
8. Written Pleadings........................................................................................10
9. Prayer for Relief.........................................................................................13

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 INDEX OF ABBREVIATIONS

& And
AIR All India Reporter
Anr Another
Art. Article
Co. Company
Corp. Corporation
Ed. Edition
Hon'ble Honorable
J. Justice
ILLJ Indian Labor Law Journal
L Ed Law Edition
Ltd. Limited
Mad. Indian Law Reports, Madras Series
ORS Others
Pvt. Private
SC Supreme Court
SCC Supreme Court Cases
SCR Supreme Court Reports
TR Durnford and East's Term Reports
UOI Union of India
V Versus
VOL. Volume

BOOKS AND JOURNALS

P. NARAYANAN, INTELLECTUAL PROPERTY LAW (3RD EDITION, EASTERN
PUBLISHING COMPANY)
V.K. AHUJA, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS (2ND
EDITION, LEXIS NEXS BUTTERWORTHS WADHWA)
P. NARAYAN, PATENT LAW(4TH EDITION, EASTERN LAW HOUSE)

Webliography

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 www.manupatrafast.in
www.scconline.com
www.indiankanoon.org

RULES AND STATUTES REFERRED

1.Code of Civil Procedure (CPC) - Order 8 Rules 1 Written statement.- The defendant
shall, within thirty days from the date of service of summons on him, present a written
statement of his defence. Provided that where the defendant fails to file the written
statement within the said period of thirty day, he shall be allowed to file the same on such
other day, as may be specified by the Court, for reasons to be recorded in writing, but
which shall not be later than ninety days from the date of service of summons.

2.Code of Civil Procedure (CPC) - Order 8 Rules 9 Subsequent pleadings.- No pleading

subsequent to the written statement of a defendant other than by way of defence to set-off
or counter-claim shall be presented except by the leave of the Court and upon such terms as
the Court thinks fit: but the Court may at any time require a written statement or additional
written statement from any of the parties and fix a time of not more than thirty days for
presenting the same.

3.Code of Civil Procedure (CPC) - Order 8 Rules 10 0. Procedure when party falls to
present written statement called for by Court.- Where any party from whom a written
statement is required under rule 1 or rule 9 fails to present the same within the time
permitted or fixed by the Court, as the case may be, the Court shall pronounce judgment
against him, or make such order is relating to the suit as it thinks fit and on the
pronouncement of such judgment a decree shall be drawn up.

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 STATEMENT OF FACTS

1. The plaintiff is the proprietor of the trade mark and trade name 'MODICARE'. The mark
'MODICARE' has been in extensive and continuous use since the year 1996. The name
MODI is a household name synonymous with quality, reliability and excellence. The
activities of the MODI group spread in several areas of activities, including steel, sugar,
Chemicals, tobacco, tea, tyres etc.

2.The use of trademark 'MODICARE' and domain name by any other person is likely to
cause confusion and deception. The defendant has registered the domain name

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'modicarenetwok.com' without obtaining any permission from the plaintiff in the year
2000.

3.There is a letter dated 15th January, 2002 which was addressed to counsel for the plaintiff
by the defendant in reply to letter dt. 10428(G-1) dated 27.10.2000. In the said letter the
defendant admits that he has registered the domain name 'modicarenetwok.com' without
obtaining permission from the plaintiff as he was not aware that he should not use
modicare trade mark or name.

4.The defendant has dropped his intention to develop that website. The defendant has not
renewed that domain name for further year

ISSUES RAISED

1. Whether the use of domain name by the defendant amounted to infringement of trademark
of the plaintiff or not?

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 SUMMARY OF PLEADINGS

I. The domain did not cause infringement of trademark of plaintiff

According to section 29 of the act an act infringes the registered trademark of a company
only if it is infringed by a person who applies such registered trade mark to a material
intended to be used for labeling or packaging goods, as a business paper, or for advertising
goods or services, provided such person, when he applied the mark, knew or had reason to

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believe that the application of the mark was not duly authorized by the proprietor or a
licensee.
In this case the domain wasn't used in bad faith and was not being
used for selling trading labeling or purchasing the products or services of the registered
trademark company. mere creation of a domain network by the respondents cannot be said to
have infringed the trademark.
In Hasbro v. Clue Computing The court held that "if another internet
user has an innocent and legitimate reason for using the famous mark as a domain name and
is the first to register it, that user should be able to use the domain name, provided that it has
not otherwise infringed upon or diluted the trademark.

ARGUMENTS ADVANCED

I. THE USE OF DOMAIN NAME BY THE DEFENDAMT DID NOT AMOUNT TO

INFRINGEMENT OF TRADEMARK

Section 29 which was elaborately considered by the High court runs in these terms:

29. Infringement of registered trade marks.

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as to render the use of the mark likely
to be taken as being used as a trade mark.

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(2) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which because of

(a) its identity with the registered trade mark and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or
services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered
by such registered trade mark, is likely to cause confusion on the part of the public, or which
is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is
likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or
a person using by way of permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the
registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as
his trade name or part of his trade name, or name of his business concern or part of the name,
of his business concern dealing in goods or services in respect of which the trade mark is
registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those
purposes under the registered trade mark, or offers or supplies services under the registered
trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to
a material intended to be used for labelling or packaging goods, as a business paper, or for
advertising goods or services, provided such person, when he applied the mark, knew or had

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reason to believe that the application of the mark was not duly authorised by the proprietor or
a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such
advertising
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the
trade mark may be infringed by the spoken use of those words as well as by their visual
representation and reference in this section to the use of a mark shall be construed
accordingly.

Domain Name
In very simple words domain names can be termed as the address of computers connected to
the internet. Just as every office or residence in the real world has an address, each server
permanently connected to the internet has a unique identification number called the internet
protocol address. In order to make the internet system user friendly, the numeric IP address
system has been overlaid with a system of easily remembered mnemonic domain names.
Thus an internet user enters an easy to remember mnemonic domain into the unique numeric
address that corresponds to the relevant computer site and then uses that particular numeric
address to seek out the relevant computer site.
III. Non-competing Use - Legitimate Claims

The area of legitimate competing claims is the most complex in this field. Consequently, it
remains more unresolved than other domain name disputes. Because the trademark system is
divided territorially and by industry, many companies can use the same name as a trademark
without causing infringement. For example, the trademark United is used by United Van
Lines, United Airlines, the United Way, and many other organizations. Only one of these
entities, however, can register united.com.

While courts have seemingly stretched trademark law in cyber squatting or competing use
cases, that trend is not mirrored in legitimate claims cases. Thus, in legitimate claims cases,
courts have emphasized that mere registration of domain name without more (such as an offer

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to sell or an intent to block the trademark holder from using the name) is not sufficient to
constitute commercial use. In HQM v. Haftield, the court held that mere registration or
activation of a domain name does not constitute commercial use even when the domain name
includes the .com designation.

In Gateway 2000 v. Gateway.com, Inc., Gateway.com, Inc. reserved the domain name
gateway.com years before the mega computer maker Gateway 2000 attempted to register the
name. Gateway 2000 sued but lost because the court found that Gateway.com had a
legitimate reason for owning the domain name and had chosen it six years earlier - long
before domain names had the value that they do today and before Gateway 2000 became a
well-known trademark. One of the keys to the decision was that the defendant was not
opportunistically trying to capture value by seizing a well-known mark.

In Data Concepts, Inc. v. Digital Consulting, Inc. both entities had trademark rights in DCI.
Data Concepts registered the domain name dci.com in 1993. Digital Consulting attempted to
retrieve the <dci.com> domain name from Data and the dispute ended up in court. It would
seem in these cases (where both parties have trademark rights) that the first to register the
domain name would be able to keep it. The Sixth Circuit, however, ruled that there was a
possibility of infringement. Since trademark infringement is a mixed question of fact and
law, the dispute must go to a full trial for an infringement determination.

In dilution cases courts are more likely to resolve the issue themselves. In Hasbro v. Clue
Computing - one of the most recent cases - the court ruled that holders of a famous mark are
not automatically entitled to use that mark as a domain name. The court held that "if another
internet user has an innocent and legitimate reason for using the famous mark as a domain
name and is the first to register it, that user should be able to use the domain name, provided
that it has not otherwise infringed upon or diluted the trademark."

Of course, it isn't always easy to determine who has a legitimate competing claim and who is
simply creating the appearance of such a claim. Consider the following example where
apparently a high school senior created a web site located at msdwonline.com to share his
passion for mountain-bike racing. The site is entitled Mud Sweat's Downhill World (msdw)
after a local cycling shop named Mud Sweat. While at first glance, the story seems like one of
a legitimate use by an innocent youth, Morgan Stanley Dean Witter filed suit contending that
the bicycle site is merely a front for a cybersquatter. Once you look deeper, it is clear that

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there are some cybersquatting elements to the case. For one, the biking theme did not appear
on the web site until 10 days after the suit. The web site creator's father has registered many
domain names derived from the names of investment banks. These names include
goldmansachsdirct.com, jpmorganonline.com and others. Additionally, when Morgan
Stanley discovered that the domain name they desired was taken, they offered $10,000 for the
name, but the sellers demanded $75,000. While this case turns out to be a thin veil for
cybersquatting, it is likely that the cover ups will become more clever. With courts ruling
against cybersquatting in every instance while legitimate use is often protected, there is
significant value in establishing a legitimate competing claim. The emphasis on legitimate
claims in the UDRP and the new legislation have increased the value in establishing such a
claim.

PRAYER FOR RELIEF

In light of the facts stated, issues raised, arguments advanced and authorities cited, it is
submitted that the honorable Supreme Court of India, be pleased

1. To Quash the application for injunction by the plaintiffs on the defendents.

All of which is respectfully prayed.

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PLACE: NEW DELHI COUNSEL FOR THE

RESPONDENTS
DATE: 6TH APRIL 2017 APOORVA CHANDRA

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