Delhi High Court: In a trade mark infringement suit filed by Adobe Inc. for protection of its marks ‘ADOBE’, ‘PHOTOSHOP’ and ‘SPARK’, the Single Judge Bench of C. Hari Shankar, J. permanently restrained Namase Patel, a habitual cyber squatter from registering any domain names which incorporated or used trade marks ADOBE’, ‘PHOTOSHOP’ and ‘SPARK’ in a manner which would result in infringement of Adobe’s marks. Further, the Court granted Rs. 2 Crore damages to Adobe.
Background
Adobe Inc. (plaintiff) was founded in 1982 and was the second largest US based personal software company. The present suit was concerned with ‘ADOBE’, ‘SPARK’/‘ADOBE SPARK’ and ‘PHOTOSHOP’ trademarks, which were registered in favour of the plaintiff and were being infringed by Namase Patel (Defendant 1). Plaintiff claimed to have adopted the word mark ‘ADOBE’ in 1986 and had been using it for its products and services worldwide. The Court in Adobe Systems Inc. v. Rohat Rathi, 2008 SCC OnLine Del 697 recognized ‘ADOBE’ to be a well-known trade mark within Section 2(zg) of the Trade Marks Act, 1999 (Act).
Plaintiff asserted that the use of mark ‘ADOBE’ commenced in India in 1993 and ‘ADOBE’ formed part of the domain names www.adobe.com, www.adobe.net and www.adobe.in, which wereowned by the plaintiff. Further, plaintiff claimed proprietorial rights in respect of the trade mark ‘SPARK’/’ADOBE SPARK’, which though not registered in India, was used by the plaintiff to its suite of mobile and web tools used to create visual content.
Submissions on behalf of the Plaintiff
Plaintiff submitted that Defendant 1 infringed the plaintiff’s ‘ADOBE’ mark by his domain names www.addobe.com and www.adobee.com and was using several sub-domains related to well-known trademarks of the plaintiff such as ‘PHOTOSHOP’ and ‘SPARK’ which were being used for the purpose of infecting an unsuspecting user’s computer with malware and thus, infringing the marks ‘PHOTOSHOP’ and ‘SPARK’ as well. Moreover, Defendant 1 was using the ‘catch-all’ e-mail service provided by Above.com, through which the defendant was securing access to confidential e-mails including e-mails of her client. Therefore, plaintiff prayed for permanent injunction restraining Defendant 1 from registering any domain names which incorporate ‘ADOBE’ or any similar variant thereof which would amount to infringement of the trade marks of the plaintiff.
Analysis, Law, and Decision
The Court noted that plaintiff placed on record an affidavit, which deposed on oath that forensic investigation revealed that the domains www.addobe.com and www.adobee.com had been configured with the brands of ‘ADOBE’ products, such as ‘PHOTOSHOP’ and ‘ADOBE SPARK’. The Court also noted that the plaintiff placed on record the orders passed by the National Arbitration Forum and the WIPO Arbitration and Mediation Center, which revealed that Defendant 1 was habitually involved in cyber-squatting and infringing of domain names of various entities. Thus, the Court opined that “the orders indicated that Defendant 1 was an inveterate cyber squatter, whose main sphere of activities involved infringing well-known domain names by using deceptively similar domain names and thereafter indulging in further misuse and infringing activities”.
The Court relied on Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145 and had passed the following order in Adobe, Inc. v. Namase Patel, CS (COMM) 159 of 2022 on 11-03-2022:
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Defendant 1 and anyone else acting on behalf of Defendant 1, was restrained from using the infringing domains being www.addobe.com and www.adobee.com and from registering any domain name, which incorporated the plaintiffs trade mark ‘ADOBE’ or ‘PHOTOSHOP’ or ‘SPARK’ or any other variants thereof.
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Defendants were directed to block the infringing domains, www.addobe.com and www.adobee.com.
The Court noted that the order passed earlier by this Court had been complied with and the infringing domains www.addobe.com and www.adobee.com had been blocked. Thus, the Court held that:
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Defendant 1 as well as his employees, servants, agents, representatives and other associated with him shall stand permanently restrained from registering any domain names which incorporated or otherwise used the plaintiff’s trade mark ‘ADOBE’, ‘PHOTOSHOP’ or ‘SPARK’ in a manner which would infringe the plaintiff’s registered trade marks or would otherwise infringe the said trade mark.
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Access to the websites www.addobe.com and www.adobee.com shall remain blocked.
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Defendants were directed to transfer the domain names www.addobe.com and www.adobee.com to the plaintiff, to avoid their misuse after expiry of their term.
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A decree of permanent injunction was passed to restrain Defendant 1 from disclosing any confidential material received by him relating to the plaintiff or any third party.
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The plaintiff was entitled to the damages of Rs. 2,00,01,000.
[Adobe, Inc v. Namase Patel, 2022 SCC OnLine Del 4190, decided on 29-11-2022]
Advocates who appeared in this case:
For the Plaintiff: Advocate Shwetasree Majumder;
Advocate Tanya Varma;
Advocate Prithvi Gulati;
For the Defendants: CGSC Harish Vaidyanathan Shankar;
Advocate Azhar Qayum;
Advocate Srish Kumar Mishra;
Advocate Sagar Mehlawat;
Advocate Sagar Mehlawat.
