People Interactive (I) Pvt.Ltd vs Vivek Pahwa And 4 Ors on 14 ...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA963511

Filing date: 03/29/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91225201

Party PlaintiffShadi.com division of Ampak Billing Corp.

CorrespondenceAddress

PETER W PETERSONDELIO PETERSON & CURCIO LLC700 STATE STREET SUITE 402NEW HAVEN, CT 06511UNITED [email protected], [email protected]

Submission Plaintiff's Notice of Reliance

Filer's Name Peter W Peterson

Filer's email [email protected], [email protected]

Signature /Peter W Peterson/

Date 03/29/2019

Attachments shad903-4 Rebuttal Notice of Reliance.pdf(24530 bytes )SHAD904-Exhibit-R.pdf(73904 bytes )SHAD904-Exhibit-S.pdf(66331 bytes )SHAD904-Exhibit-T.pdf(2735880 bytes )SHAD904-Exhibit-U.pdf(95845 bytes )SHAD904-Exhibit-V.pdf(130148 bytes )

http://estta.uspto.gov

1


TRADEMARK TRIAL AND APPEAL BOARD

SHADI.COM DIVISION OF AMPAK BILLING CORP.,

Opposer

v.

PEOPLE INTERACTIVE (INDIA) PRIVATE LIMITED,

Applicant.

Consolidated Opposition No.: 91225201 (Parent) Mark: SHAADI.COM App. No.: 86634009 Filing Date: May 19, 2015


Petitioner

v. SHADI.COM DIVISION OF AMPAK BILLING CORP.,

Registrant.

Cancellation No.: 92062719 Mark: SHADI Reg. No.: 3374700 Issued: January 29, 2008

Mark: Reg. No.: 3396843 Issued: March 18, 2008

SHADI.COM DIVISION OF AMPAK BILLING CORP.'S

NOTICE OF RELIANCE AS DEFENDANT IN CANCELLATION

AND IN REBUTTAL AS PLAINTIFF IN OPPOSITION

Opposer/Registrant Shadi.com division of Ampak Billing Corp. (hereinafter

"Opposer/Registrant" or "Ampak") respectfully submits this Notice of Reliance as defendant in

the cancellation and in rebuttal as plaintiff in the opposition and makes of record, offers into

evidence, and intends to rely on the following documents in connection with this consolidated

opposition and cancellation action:

2

The following documents are available in general circulation to the general public and the

users of the parties' services either as printed publications or through Internet websites, or as

official records:

Exhibit R - Status search on U.S. trademark application serial number 78133242. Ampak

hereby makes of record a true and correct copy of a printout from the U.S. Patent and Trademark

Office Trademark Status & Document Retrieval (TSDR) system for U.S. trademark application

serial number 78133242 for the mark "SHAADI" in stylized form, and with a design. The

document in this exhibit will be relied upon to show that application serial number 78133242

was originally filed by Satyanet Solutions Private Limited, a corporation of India, and was

transferred to People Interactive (India) Private Limited, which claimed that it was entitled to use

the mark.

Exhibit S - Status search on U.S. trademark application serial number 78134574. Ampak



serial number 78134574 for the mark "SHADI" in stylized form, and with a design. The

document in this exhibit will be relied upon to show that application serial number 78134574

was filed by Satyanet Solutions Private Limited, a corporation of India, which claimed that it

was entitled to use the mark.

Exhibit T - File history of U.S. trademark application serial number 78134574. Ampak



serial number 78134574 for the mark "SHADI" in stylized form, and with a design. The

3

document in this exhibit will be relied upon to show the statements made under oath by the

signatory of the application, and that it was entitled to use the mark.

Exhibit U - Page from shadi.com website from 1999. Ampak hereby makes of record a

true and correct copy of a printout from the www.shadi.com website from the year 1999, saved

on and printed from the Internet Archives Wayback Machine, www.archive.org. The date of

publication or date that the website was accessed and printed, as well as the URL source of the

webpage, is shown in the header of each page. The document in this exhibit will be relied upon

to show that the registration symbol ® was used adjacent "shaadi.com," which represented that it

owned a U.S. registration for the mark.

Exhibit V - Decision of the Bombay High Court in the case of People Interactive (I) Pvt.

Ltd vs Vivek Pahwa and 4 Ors on 14 September, 2016. Ampak hereby makes of record a true

and correct copy of a printout from the indiankanoon.org website on December 21, 2018, as

indicated on the page footers. The document in this exhibit will be relied upon to show that

People Interactive (India) Private Limited represented to the Bombay High Court that it owned

the shadi.com website.

Respectfully submitted,

SHADI.COM DIVISION OF

AMPAK BILLING CORP

Date: March 29, 2019 /Peter W. Peterson/ Peter W. Peterson Robert Curcio Kelly M. Nowak

Attorneys for Opposer DeLio, Peterson & Curcio, LLC

700 State Street, Suite 402 New Haven, CT 06511 Phone: (203) 787-0595 Facsimile: (203) 787-5818 Email: [email protected] shad903-4 Rebuttal Notice of Reliance.doc

4

CERTIFICATE OF SERVICE

This hereby certifies that the foregoing SHADI.COM DIVISION OF AMPAK

BILLING CORP.'S NOTICE OF RELIANCE AS DEFENDANT IN CANCELLATION

AND IN REBUTTAL AS PLAINTIFF IN OPPOSITION was transmitted electronically to the Trademark Trial and Appeal Board of the United States Patent and Trademark Office through the ESTTA, http://estta.uspto.gov this 29th day of March, 2019.

By: /Peter W. Peterson/ Peter W. Peterson

CERTIFICATE OF SERVICE

This hereby certifies that the foregoing SHADI.COM DIVISION OF AMPAK

BILLING CORP.'S NOTICE OF RELIANCE AS DEFENDANT IN CANCELLATION

AND IN REBUTTAL AS PLAINTIFF IN OPPOSITION was both emailed and mailed this 29th day of March, 2019, by U.S. Postal first class mail, postage pre-paid to:

Naresh Kilaru Attorney for Petitioner FINNEGAN HENDERSON FARABOW GARRETT & DUNNER, LLP 901 New York Avenue, N.W. Washington, D.C. 20001-4413 Phone: 202-408-4000 Email: [email protected]

By: /Peter W. Peterson/

Peter W. Peterson




Opposer

v.


Applicant.



Petitioner


Registrant.



EXHIBIT R

OFFERED BY OPPOSER/REGISTRANT

SHADI.COM DIVISION OF AMPAK BILLING CORP.

STATUS DOCUMENTS Back to Search Print

Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval(TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still needassistance accessing a document, email [email protected] and include your serial number, the document you arelooking for, and a screenshot of any error messages you have received.

Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data throughtsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.

Generated on: This page was generated by TSDR on 2018-12-21 09:39:33 EST

Mark: SHAADI

US Serial Number: 78133242 Application Filing Date: Jun. 05, 2002

Register: Principal

Mark Type: Service Mark

TM5 Common Status

Descriptor:

DEAD/APPLICATION/Refused/Dismissed or Invalidated

This trademark application was refused, dismissed, or inv

and this application is no longer active.

Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further informatio

Trademark Trial and Appeal Board web page.

Status Date: Aug. 28, 2007

Publication Date: Aug. 16, 2005

Date Abandoned: Aug. 28, 2007

Mark Information

Goods and Services

Mark Literal Elements: SHAADI

Standard Character Claim: No

Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

Translation: The foreign wording in the mark translates into English as Wedding.

Design Search Code(s): 24.07.25 - Other decorations or orders

Note:

The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;

Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and

Asterisks *..* identify additional (new) wording in the goods/services.

For: Marriage bureaus, Marriage counseling, Dating services, Matrimonial services for match making through

Status Search SN 78133242 http://tsdr.uspto.gov/#caseNumber=78133242&caseSearchType=US_A...

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Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

print media, television and other media, Providing an on-line computer database in the fields of matrimon

and marriage counseling

International Class(es): 045 - Primary Class U.S Class(es): 100, 101

Class Status: ABANDONED

Basis: 1(a)

First Use: Apr. 15, 1997 Use in Commerce: Apr. 15, 1997

Filed Use: Yes Currently Use: Yes

Filed ITU: No Currently ITU: No

Filed 44D: No Currently 44E: No

Filed 44E: No Currently 66A: No

Filed 66A: No Currently No Basis: No

Filed No Basis: No

Owner Name: PEOPLE INTERACTIVE (INDIA) PRIVATE LIMITED

Owner Address: SHIV-E-NUMH, 2ND FLOOR, 205

DR. ANNIE BESANT ROAD, WORLI

MUMBAI INDIA 400018

Legal Entity Type: CORPORATION State or Country Where

Organized:

INDIA

Attorney of Record - None

Correspondent

Correspondent

Name/Address:

Preeti Narayan, Esq.

Meister Seelig & Fein LLP

140 East 45th Street

19th Fl

New York, NEW YORK UNITED STATES 10017

Phone: 212-655-3500 Fax: 212-655-3535

Correspondent e-mail: [email protected] Correspondent e-mail

Authorized:

Yes

Domestic Representative


Name:

H. VASANDANI


e-mail:

[email protected] Domestic Representative

e-mail Authorized:

Yes


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Prosecution History

Date Descript ion Proceeding Number

Aug. 28, 2007 ABANDONMENT NOTICE MAILED - INTER PARTES

DECISION

Aug. 28, 2007 ABANDONMENT - AFTER INTER PARTES DECISION

Jun. 22, 2007 OPPOSITION TERMINATED NO. 999999 168261

Jun. 22, 2007 OPPOSITION DISMISSED NO. 999999 168261

Apr. 03, 2007 OPPOSITION SUSTAINED NO. 999999 168260

Dec. 27, 2005 OPPOSITION INSTITUTED NO. 999999 168261

Dec. 27, 2005 OPPOSITION INSTITUTED NO. 999999 168260

Sep. 14, 2005 EXTENSION OF TIME TO OPPOSE RECEIVED

Aug. 16, 2005 PUBLISHED FOR OPPOSITION

Jul. 27, 2005 NOTICE OF PUBLICATION

May 02, 2005 LAW OFFICE PUBLICATION REVIEW COMPLETED 70629

Apr. 29, 2005 ASSIGNED TO LIE 70629

Apr. 22, 2005 APPROVED FOR PUB - PRINCIPAL REGISTER

Apr. 22, 2005 EXAMINERS AMENDMENT E-MAILED 6328

Apr. 22, 2005 EXAMINERS AMENDMENT -WRITTEN 67512

Apr. 15, 2005 TEAS/EMAIL CORRESPONDENCE ENTERED 76538

Apr. 04, 2005 CORRESPONDENCE RECEIVED IN LAW OFFICE 76538

Apr. 04, 2005 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Apr. 04, 2005 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Oct. 05, 2004 CONTINUATION OF FINAL REFUSAL E-MAILED

Oct. 05, 2004 ACTION CONTINUING A FINAL - COMPLETED 67512

Sep. 14, 2004 TEAS/EMAIL CORRESPONDENCE ENTERED 70629

Sep. 01, 2004 CORRESPONDENCE RECEIVED IN LAW OFFICE 70629

Sep. 01, 2004 EMAIL RECEIVED

Aug. 12, 2004 ASSIGNED TO EXAMINER 67512

Aug. 09, 2004 AMENDMENT FROM APPLICANT ENTERED 70997

Aug. 04, 2004 UNRESPONSIVE/DUPLICATE PAPER RECEIVED 70997

Aug. 04, 2004 EMAIL RECEIVED

Jul. 29, 2004 AMENDMENT FROM APPLICANT ENTERED 70629

Jul. 28, 2004 UNRESPONSIVE/DUPLICATE PAPER RECEIVED 70629

Jul. 29, 2004 AMENDMENT FROM APPLICANT ENTERED 70629

Jul. 29, 2004 UNRESPONSIVE/DUPLICATE PAPER RECEIVED 70629

Jul. 29, 2004 EMAIL RECEIVED




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TM Staff and Location Information

Assignment Abstract Of Title Information

Jun. 27, 2004 FINAL REFUSAL E-MAILED

May 03, 2004 CORRESPONDENCE RECEIVED IN LAW OFFICE

May 03, 2004 PAPER RECEIVED

Mar. 30, 2004 CORRESPONDENCE RECEIVED IN LAW OFFICE

Apr. 07, 2004 CASE FILE IN TICRS

Mar. 30, 2004 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Feb. 29, 2004 NON-FINAL ACTION E-MAILED

Feb. 29, 2004 PREVIOUS ALLOWANCE COUNT WITHDRAWN

Feb. 29, 2004 APPROVED FOR PUB - PRINCIPAL REGISTER

Feb. 10, 2004 PETITION TO REVIVE-GRANTED 69690

Jan. 30, 2004 PAPER RECEIVED

Aug. 29, 2003 PAPER RECEIVED

Aug. 25, 2003 PETITION TO REVIVE-RECEIVED

Aug. 25, 2003 FAX RECEIVED

May 16, 2003 ABANDONMENT - FAILURE TO RESPOND OR LATE

RESPONSE

Oct. 01, 2002 NON-FINAL ACTION MAILED

Sep. 24, 2002 ASSIGNED TO EXAMINER 69249

TM Staff Information

TM Attorney: BELENKER, ESTHER ANN Law Office Assigned: LAW OFFICE 111

File Location

Current Location: TTAB Date in Location: Aug. 28, 2007

Summary

Total Assignments: 1 Applicant: SATYANET SOLUT

Assignment 1 of 1

Conveyance: CHANGE OF NAME

Reel/Frame: 3058/0663 Pages: 3

Date Recorded: Apr. 04, 2005

Supporting Documents: assignment-tm-3058-0663.pdf

Assignor

Name: SATYANET SOLUTIONS PRIVATE LIMITED Execution Date: Nov. 27, 2003


Organized:

INDIA

Assignee

Conv


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Name: PEOPLE INTERACTIVE (INDIA) PRIVATE LIMITED


Organized:

INDIA

Address: SHIV-E-NUMH, 2ND FLOOR, 205, DR. ANNIE B ESANT ROAD, WORLI

MUMBAI, INDIA 400018

Correspondent

Correspondent Name: PREETI NARAYAN

Correspondent Address: 140 EAST 45TH STREET, 19TH FLOOR

NEW YORK, NY 10017

Domestic Representative - Not Found

Proceedings - Click to Load


5 of 5 12/21/2018, 9:48 AM




Opposer

v.


Applicant.



Petitioner


Registrant.



EXHIBIT S



STATUS DOCUMENTS Back to Search Print

Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval(TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still needassistance accessing a document, email [email protected] and include your serial number, the document you arelooking for, and a screenshot of any error messages you have received.

Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data throughtsdrsec.uspto.gov. There are two alternative ways to receive bulk data from TSDR.

Generated on: This page was generated by TSDR on 2018-12-21 09:30:08 EST

Mark: SHADI

US Serial Number: 78134574 Application Filing Date: Jun. 11, 2002

Register: Principal

Mark Type: Service Mark

TM5 Common Status

Descriptor:

DEAD/APPLICATION/Refused/Dismissed or Invalidated

This trademark application was refused, dismissed, or inv

and this application is no longer active.

Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view a

the Trademark Document Retrieval link at the top of this page.

Status Date: Feb. 14, 2005

Date Abandoned: Jan. 18, 2005

Mark Information

Goods and Services

Mark Literal Elements: SHADI

Standard Character Claim: No

Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

Disclaimer: "SHADI"

Design Search Code(s): 09.03.08 - Ascots; Bandannas; Neckerchiefs; Scarves

09.05.08 - Women's hats other than bonnets

Note:

The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;

Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and

Asterisks *..* identify additional (new) wording in the goods/services.


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Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

For: Marriage bureaus, Marriage counselling, Dating services, Matrimonial services for match making through

print media, television and other media, Providing an on-line computer database in the fields of matrimon

marriage counselling

International Class(es): 045 - Primary Class U.S Class(es): 100, 101

Class Status: ACTIVE

Basis: 1(b)

Filed Use: No Currently Use: No

Filed ITU: Yes Currently ITU: Yes

Filed 44D: No Currently 44E: No

Filed 44E: No Currently 66A: No

Filed 66A: No Currently No Basis: No

Filed No Basis: No

Owner Name: SATYANET SOLUTIONS PRIVATE LIMITED

Owner Address: 1ST FLOOR, 27/29 VANKA MAHOLLA, DR. M. B . VELKAR STREET, CHIRA BAZAR

MUMBAI INDIA 400002


Organized:

INDIA

Attorney of Record - None

Correspondent

Correspondent

Name/Address:

H VASANDANI

6829 MEADOW CREEK DR # 205

COLUMBUS OH, OHIO UNITED STATES 43235

Correspondent e-mail: [email protected] Correspondent e-mail

Authorized:

Yes



Name:

H. VASANDANI


e-mail:

[email protected] Domestic Representative

e-mail Authorized:

Yes

Date Descript ion Proceeding Number

Feb. 14, 2005 ABANDONMENT NOTICE MAILED - FAILURE

TO RESPOND


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TM Staff and Location Information

Assignment Abstract Of Title Information - None recorded

Feb. 14, 2005 ABANDONMENT - FAILURE TO RESPOND OR

LATE RESPONSE

Aug. 12, 2004 ASSIGNED TO EXAMINER 67512

Jul. 19, 2004 NON-FINAL ACTION E-MAILED

Apr. 02, 2004 CORRESPONDENCE RECEIVED IN LAW

OFFICE

Apr. 22, 2004 CASE FILE IN TICRS

Apr. 02, 2004 TEAS RESPONSE TO OFFICE ACTION

RECEIVED

Feb. 29, 2004 NON-FINAL ACTION E-MAILED

Feb. 10, 2004 PETITION TO REVIVE-GRANTED 69690

Jan. 30, 2004 PAPER RECEIVED

Aug. 29, 2003 PAPER RECEIVED

Aug. 25, 2003 PETITION TO REVIVE-RECEIVED

Jun. 25, 2003 ABANDONMENT - FAILURE TO RESPOND OR

LATE RESPONSE

Nov. 08, 2002 NON-FINAL ACTION MAILED

Oct. 30, 2002 ASSIGNED TO EXAMINER 69249

Sep. 30, 2002 ASSIGNED TO EXAMINER 74663

TM Staff Information

TM Attorney: BELENKER, ESTHER ANN Law Office Assigned: LAW OFFICE 111

File Location

Current Location: TMO LAW OFFICE 111 - EXAMINING ATTORNEY

ASSIGNED

Date in Location: Feb. 14, 2005

Proceedings - None recorded


3 of 3 12/21/2018, 9:30 AM




Opposer

v.


Applicant.



Petitioner


Registrant.



EXHIBIT T



Side - 1

NOTICE OF ABANDONMENT

ISSUE DATE: 02-14-2005

The trademark application identified below was abandoned because a response to the Office Action mailed on 07-19-2004 was not received within

the 6-month response period.

If the delay in filing a response was unintentional, you may file a petition to revive the application with a fee. If the abandonment of this application

was due to USPTO error, you may file a request for reinstatement. Please note that a petition to revive or request for reinstatement must be

received within two months from the issue date of this notice.

For additional information, go to http://www.uspto.gov/teas/petinfo.htm. If you are unable to get the information you need from the website, call the

Trademark Assistance Center at 703-308-9000.

SERIAL NUMBER: 78134574

MARK: SHADI

Side - 2

UNITED STATES PATENT AND TRADEMARK OFFICECOMMISSIONER FOR TRADEMARKSP.O. BOX 1451ALEXANDRIA, VA 22313-1451

FIRST-CLASS MAIL

U.S POSTAGE

PAID

H VASANDANI


COLUMBUS OH , OH 43235

To: SATYANET SOLUTIONS PRIVATE LIMITED ([email protected])

Subject: TRADEMARK APPLICATION NO. 78134574 - SHADI - N/A

Sent: 7/19/04 9:22:32 PM

Sent As: ECom111

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/134574

APPLICANT: SATYANET SOLUTIONS PRIVATE LIMITED

*78134574* CORRESPONDENT ADDRESS:

H. VASANDANI

6829 Meadow Creek Drive # 205,

Columbus OH OH 43235

RETURN ADDRESS: Commissioner for Trademarks2900 Crystal DriveArlington, VA 22202-3514

MARK: SHADI

CORRESPONDENT’S REFERENCE/DOCKET NO : N/A

CORRESPONDENT EMAIL ADDRESS:

[email protected]

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.

3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-mail

address.

OFFICE ACTION

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS

OF OUR MAILING OR E-MAILING DATE.

Serial Number 78/134574

This letter responds to the applicant’s communications filed March 30, 2004 and May 3, 2004.

Resolved Issues: Disclaimer; Amendment to Recitation of Services

Outstanding issues:

(1) The applicant was asked to provide the significance of the term SHADI. The applicant has failed to provide any information regarding this

matter, accordingly, the requirement is maintained. If SHADI translates to mean wedding the applicant should provide the following statement to

be entered into the record.

The following translation statement is added to the record:

The English translation of the <specify language> wording “SHADI” is “WEDDING.”

37 C.F.R. §2.61(b); TMEP §809.

New Issues:

ATTEMPT TO AMEND FROM 1(B) BASIS TO 1(A) BASIS

mailto:[email protected]

The applicant in their response has submitted specimens and dates of use. However, the current application was filed under Section 1(b).

Applicant may not amend an application filed under Section 1(b) (intent to use in commerce) to assert a Section 1(a) (use in commerce) basis

unless applicant also files an allegation of use under Trademark Act Sections 1(c) or 1(d), 15 U.S.C. §§1051(c) or (d). 37 C.F.R. §2.35(b)(8).

Thus, the dates of use and specimen submitted with this response are unacceptable.

OWNERSHIP

The applicant has amended the application to change the ownership of the application from “Satanet Solutions Private Limited” to “PEOPLE

INTERACTIVE (INDIA) PRIVATE LIMITED.” The applicant has not provided an explanation as to why the ownership of the application has

change. Additionally, the applicant has provided no documentation supporting said change. If the application has been assigned the following

information is applicable.

In order to record an assignment of a trademark or service mark with the Office, applicant must submit the assignment documents along with a

cover sheet and the required fees. The Office will accept for recording an original document, a copy of an original document, a copy of an

extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving

the interest explaining how the conveyance affects title. 37 C.F.R. §3.25.

The fee for recording a trademark assignment is $40.00 for the first mark in a document and $25.00 for second and subsequent marks in the

same document. 37 C.F.R. §2.6(b)(6). Each document submitted for recording must be accompanied by a properly completed cover sheet. 37

C.F.R. §§3.28 and 3.31.

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.uspto.gov/.

/Darlene D. Johnson/

Trademark Examining Attorney

Law Office 111

(703)308-9111 ext. 145

(703)746-8111 (fax)

How to respond to this Office Action:

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and

follow the instructions.

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law

office and examining attorney’s name on the upper right corner of each page of your response.

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at

http://tarr.uspto.gov/

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at

http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING

http://etas.uspto.gov/

http://www.uspto.gov/teas/index.html



ATTORNEY.

PTO Form 1966 (Rev 9/2002)

OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action

The table below presents the data as entered.

Input Field Entered

SERIAL NUMBER 78134574

MARK SECTION (no change)

OWNER SECTION (current)

NAME SATYANET SOLUTIONS PRIVATE LIMITED

STREET1ST FLOOR, 27/29 VANKA MAHOLLA, DR. M. B. VELKAR STREET,

CHIRA BAZAR

CITY MUMBAI

ZIP/POSTAL CODE 400002

COUNTRY IN

OWNER SECTION (proposed)

NAME PEOPLE INTERACTIVE (INDIA) PRIVATE LIMITED

INTERNAL ADDRESSSHIV-E-NUMH, 2nd FLOOR, 205, DR. ANNIE BESANT ROAD,

WORLI

CITY MUMBAI

ZIP/POSTAL CODE 400018

COUNTRY IN

EMAIL [email protected]

LEGAL ENTITY SECTION (current)

TYPE CORPORATION

LEGAL ENTITY SECTION (proposed)

TYPE CORPORATION

STATE/COUNTRY OF INCORPORATION INDIA

GOODS AND/OR SERVICES SECTION (class deleted)

INTERNATIONAL CLASS 042

DESCRIPTION

MATRIMONIAL SERVICES FOR MATCH MAKING THROUGH WEBSITES, THROUGH PERSONAL INTERACTION,

PRINT MEDIA, TELEVISION AND OTHER MEDIA. A SITE CONTAINING A SEARCHABLE DATABASE OF

MEMBERS AS WELL AS INFORMATION AND CONTENT IN RESPECT TO LOVE, INTERPERSONAL

RELATIONSHIPS, MATRIMONY, SELF HELP, FAMILY MATTERS, FASHION, HONEYMOON DESTINATIONS,

COUNSELLING, DIRECTORY SERVICES AND ASTROLOGY; HOSTING THE WEB SITES OF CLIENTS VIA

ELECTRONIC COMMUNICATIONS NETWORKS; COMPUTER SERVICES, NAMELY, PROVIDING SEARCH

ENGINES FOR LOCATING INFORMATION AVAILABLE BY MEANS OF ELECTRONIC COMMUNICATIONS

NETWORKS; WEBSITE DESIGN AND DEVELOPMENT AND WEBCASTING. PROVIDING COUNSELLING AND

COACHING RELATED TO RELATIONSHIPS AND MATRIMONY IN TEXT, AUDIO, AND VIDEO FORMATS VIA A

GLOBAL COMPUTER NETWORK

FILING BASIS Section 1(b)

GOODS AND/OR SERVICES SECTION (class added)

INTERNATIONAL CLASS 045

DESCRIPTION

Marriage bureaus, Marriage counselling, Dating services, Matrimonial services for match making through websites, personal

interaction, print media, television and other media, Providing an on-line computer database in the fields of matrimonial

services, Dating Services & marriage counselling

FILING BASIS Section 1(a)

FIRST USE ANYWHERE DATE 10/10/2001

FIRST USE IN COMMERCE DATE 10/10/2001

STATEMENT TYPEThe substitute specimen(s) was in use in commerce as of the filing date of

the application.

SPECIMEN FILE NAME(S) \\ticrs\EXPORT9\IMAGEOUT9 \781\345\78134574\xml4\RO A0002.JPG

SPECIMEN DESCRIPTION News Paper / magazine advertisement

ADDITIONAL STATEMENTS SECTION

DISCLAIMERNo claim is made to the exclusive right to use SHADI apart from the mark

as shown.

SIGNATURE SECTION

SIGNATURE /AM/

SIGNATORY NAME ANUPAM MITTAL

SIGNATORY POSITION CEO

SIGNATORY DATE 04/02/2004

SIGNATURE /AM/

SIGNATORY NAME ANUPAM MITTAL

SIGNATORY POSITION CEO

SIGNATORY DATE 04/02/2004

FILING INFORMATION SECTION

SUBMIT DATE Fri Apr 02 08:45:11 EST 2004

TEAS STAMP

USPTO/OA-XXXXXXXXX-200404

02084511722002-78134574-2

00abc3c415f9c4441939220f9

f324c16-N-N-2004040208413

7200006

PTO Form 1966 (Rev 9/2002)

OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78134574 is amended as follows:

Classification and Listing of Goods/Services

../ROA0002.JPG

Applicant hereby deletes the following class of goods/services from the application.

Class 042 for MATRIMONIAL SERVICES FOR MATCH MAKING THROUGH WEBSITES, THROUGH PERSONAL INTERACTION,

PRINT MEDIA, TELEVISION AND OTHER MEDIA. A SITE CONTAINING A SEARCHABLE DATABASE OF MEMBERS AS WELL

AS INFORMATION AND CONTENT IN RESPECT TO LOVE, INTERPERSONAL RELATIONSHIPS, MATRIMONY, SELF HELP,

FAMILY MATTERS, FASHION, HONEYMOON DESTINATIONS, COUNSELLING, DIRECTORY SERVICES AND ASTROLOGY;

HOSTING THE WEB SITES OF CLIENTS VIA ELECTRONIC COMMUNICATIONS NETWORKS; COMPUTER SERVICES,

NAMELY, PROVIDING SEARCH ENGINES FOR LOCATING INFORMATION AVAILABLE BY MEANS OF ELECTRONIC

COMMUNICATIONS NETWORKS; WEBSITE DESIGN AND DEVELOPMENT AND WEBCASTING. PROVIDING COUNSELLING

AND COACHING RELATED TO RELATIONSHIPS AND MATRIMONY IN TEXT, AUDIO, AND VIDEO FORMATS VIA A GLOBAL

COMPUTER NETWORK

Applicant hereby adds the following class of goods/services to the application:

New:

Class 045 for Marriage bureaus, Marriage counselling, Dating services, Matrimonial services for match making through websites, personal

interaction, print media, television and other media, Providing an on-line computer database in the fields of matrimonial services, Dating

Services & marriage counselling

Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or

licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the

identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used on 10/10/2001 and first used in commerce

on 10/10/2001, and is now in use in such commerce.

Applicant hereby submits a specimen for Class 045.

The specimen(s) submitted consists of News Paper / magazine advertisement.

For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the

application."

Specimen-1

Procedural Matters/Informalities

Applicant proposes to amend the following:

Original: SATYANET SOLUTIONS PRIVATE LIMITED, having an address of 1ST FLOOR, 27/29 VANKA MAHOLLA, DR. M. B.

VELKAR STREET, CHIRA BAZAR MUMBAI, IN 400002.

Proposed: PEOPLE INTERACTIVE (INDIA) PRIVATE LIMITED, a corporation of INDIA, having an address of SHIV-E-NUMH, 2nd

FLOOR, 205, DR. ANNIE BESANT ROAD, WORLI MUMBAI, IN 400018, whose e-mail address is [email protected].

Additional Statements

No claim is made to the exclusive right to use SHADI apart from the mark as shown.

Declaration Signature

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both,

under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting

registration, declares that he/she is properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the

applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in

commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is

being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and

that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in

connection with the goods and/or services listed in the application; to the best of his/her knowledge and belief no other person, firm,

corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto

as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or

to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are

believed to be true as set forth within the original application and/or the submitted amendment/response.

Signature: /AM/ Date: 04/02/2004

Signatory's Name: ANUPAM MITTAL

Signatory's Position: CEO

Response Signature

../ROA0002.JPG

Signature: /AM/ Date: 04/02/2004

Signatory's Name: ANUPAM MITTAL

Signatory's Position: CEO

Serial Number: 78134574

Internet Transmission Date: Fri Apr 02 08:45:11 EST 2004

TEAS Stamp: USPTO/OA-XXXXXXXXX-20040402084511722002-

78134574-200abc3c415f9c4441939220f9f324c

16-N-N-20040402084137200006

To: SATYANET SOLUTIONS PRIVATE LIMITED ([email protected])

Subject: TRADEMARK APPLICATION NO. 78134574 - SHADI - N/A

Sent: 2/29/04 1:52:20 PM

Sent As: ECom111

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/134574

APPLICANT: SATYANET SOLUTIONS PRIVATE LIMITED

CORRESPONDENT ADDRESS:

H. VASANDANI

6829 Meadow Creek Drive # 205,

Columbus OH OH 43235

RETURN ADDRESS: Commissioner for Trademarks2900 Crystal DriveArlington, VA 22202-3514

[email protected]

MARK: SHADI

CORRESPONDENT’S REFERENCE/DOCKET NO : N/A

CORRESPONDENT EMAIL ADDRESS:

[email protected]

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.

3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-mail

address.

OFFICE ACTION

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS

OF OUR MAILING OR E-MAILING DATE.

Serial Number 78/134574

The assigned examining attorney has reviewed the referenced application and determined the following.

SIGNIFICANCE OF MARK

The applicant must indicate whether “SHADI” has any significance in the relevant trade, any geographical significance, or any meaning in a

foreign language. 37 C.F.R. §2.61(b).

If the word SHAADI translates to mean “weddings” then the following disclaimer requirement is made.

DISCLAIMER

The applicant must disclaim the descriptive wording “SHADI” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056;

TMEP §§1213 and 1213.03(a). The word is merely descriptive because the SHADI is phonetically equivalent to SHAADI which translates to

mean wedding, which is the subject matter of the applicant’s services.

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A

properly worded disclaimer should read as follows:

mailto:[email protected]

No claim is made to the exclusive right to use SHAADI apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

SERVICES ID

The wording in the recitation of services is unacceptable as indefinite. The applicant must amend the recitation to specify the common

commercial name of the services or to indicate their nature. TMEP §1402.11. The applicant may adopt the following if accurate: on-line

business directories featuring [indicate subject matter, e.g., restaurants and bars], in class 35 and/or web casting services in class 38 and/or

providing travel information services, relation to honeymoons, in class 39 and/or providing information in the field of self awareness via the

internet, in class 41 and/or hosting the web sites of others on a computer server for a global computer network, computer services namely,

providing search engines for obtaining data on a global computer network, computer services namely, designing and implementing web sites for

others, in class 42 and/or dating services namely, computer dating services, video dating services, providing information in the field of dating via

the internet, providing fashion information, marriage counseling, and astrology consultation, in class 45.

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37

C.F.R. Section 2.71(b); TMEP section 804.09. Therefore, the applicant may not amend to include any services that are not within the scope of

the services recited in the present identification.

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable

Identifications of Goods and Services at http://www.uspto.gov/web/offices/tac/doc/gsmanual/.

COMBINED CLASS INFORMATION

The application identifies services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the

application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R.

§2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications

as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).

If the applicant prosecutes this application as a combined, or multipleâ€‘class, application, the applicant must comply with each of the following:

(1) The applicant must specifically identify the services in each class and list the services by international class with the classes listed in

ascending numerical order. TMEP section 1113.01.

(2) The applicant must submit a filing fee for each international class of services not covered by the fee already paid. 37 C.F.R.

Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01. The fee for filing a trademark application is $335 for each class.

(3) The applicant must submit:

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in

commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application. 37

C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date

of the application, and/or

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in

each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act

Section 1(b).

(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above. 37

C.F.R. Sections 2.59(a) and 2.71(c).

SPECIMEN

The specimen does not show use of the mark for any goods/services identified in the application. The applicant must submit a specimen

showing use of the mark for the goods/services specified. 37 C.F.R. §2.56; TMEP §904. The applicant must verify, with an affidavit or a

declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37

http://www.uspto.gov/web/offices/tac/doc/gsmanual/

C.F.R. §2.59(a); TMEP §904.09.

SEARCH RESULTS

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under

Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

/Darlene D. Johnson/

Trademark Examining Attorney

Law Office 111

(703)308-9111 ext. 145

How to respond to this Office Action:

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and

follow the instructions.

To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and follow the instructions.

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law

office and examining attorney’s name on the upper right corner of each page of your response.

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at


For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at


FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING

ATTORNEY.

http://www.uspto.gov/teas/index.html

http://www.uspto.gov/web/trademarks/tmelecresp.htm



*** User:dbullock ***

# Total Dead Live Live Status/ Search

Marks Marks Viewed Viewed Search

Docs Images Duration

01 1479 N/A 0 0 0:02 *SHAD{"IYE"}*[bi,ti]

02 1 0 1 1 0:01 *SHAAD{"IYE"}*[bi,ti]

03 93 0 93 34 0:02 1 AND 035[cc] not dead[ld]

04 1386 N/A 0 0 0:02 090308[DC]

05 314 0 2 314 0:02 4 AND 035[cc] not dead[ld]

Session started 2/28/04 8:32:54 PM

Session finished 2/28/04 8:37:35 PM

Total search duration 0 minutes 9 seconds

Session duration 4 minutes 41 seconds

Defaut NEAR limit=1ADJ limit=1

Sent to TICRS as Serial Number: 78134574

Commissioner for Trademarks2900 Crystal Drive

Arlington, VA 22202-3514www.uspto.gov

NOTICE OF REVIVAL OF APPLICATION

H. VASANDANI6829 Meadow Creek Drive # 205,Columbus OH OH 43235

SERIAL NUMBER:MARK:OWNER:REVIVAL DATE:

78/134574SHADI AND DESIGNSATYANET SOLUTIONS PRIVATE LIMITEDFebruary 10, 2004

The above referenced application was revived on the date shown above.

The file will be forwarded to the appropriate section of the Office for further action. For example, if the abandonment resulted from failure to timely file a response to an OfficeAction, your file will be forwarded to the Examining Attorney; if the abandonment resulted from a failure to timely file a Statement of Use or Extension of Time to File aStatement of Use, your file will be forwarded to the Intent to Use Section.

To verify the status and location of your application, please wait approximately three weeks, then check the Trademark Application and Registration Retrieval (TARR) systemlocated at the USPTO website: www.uspto.gov, or call the Trademark Status Line at 703-305-8747.

ORIGINAL

Side - 1

NOTICE OF ABANDONMENT

ISSUE DATE: 06-25-2003

The trademark application identified below was abandoned because a response to the Office Action mailed on 11-08-2002 was not received within

the 6-month response period.

If the delay in filing a response was unintentional, you may file a petition to revive the application with a fee. If the abandonment of this application

was due to USPTO error, you may file a request for reinstatement. Please note that a petition to revive or request for reinstatement must be

received within two months from the issue date of this notice.

For additional information, go to http://www.uspto.gov/teas/petinfo.htm. If you are unable to get the information you need from the website, call the

Trademark Assistance Center at 703-308-9000.

SERIAL NUMBER: 78134574

MARK: SHADI

Side - 2

UNITED STATES PATENT AND TRADEMARK OFFICECOMMISSIONER FOR TRADEMARKS2900 CRYSTAL DRIVEARLINGTON, VA 22202-3513

FIRST-CLASS MAIL

U.S POSTAGE

PAID

H VASANDANI


COLUMBUS OH , OH 43235




Opposer

v.


Applicant.



Petitioner


Registrant.



EXHIBIT U



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Help us improve Shaadi.com Send us your feedback

Shaadi.com, one of India's best known brands and the world's largest matrimonial service was founded with a simple objective - to help people find

happiness. The company pioneered online matrimonials in 1996 and continues to lead the exciting matrimony category after more than a decade. By

redefining the way people meet for marriage, Shaadi.com has created a world-renowned service that has touched over 20 million people. Learn More

India | USA | Canada | UK | Singapore | Australia | More

Copyright © 1996-2009 Shaadi.com Matrimonials - The No.1 Matrimonial Services Provider™ All Rights Reserved.

Only site to be ISO 9001:2000, VeriSign, TRUSTe Certified Existing Members

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1 2 3 4

Matrimonial - Indian Matrimonials - Marriage - Shaadi.com http://web.archive.org/web/20091031004224/http:/www.shaadi.com:80/

1 of 1 12/21/2018, 9:25 AM




Opposer

v.


Applicant.



Petitioner


Registrant.



EXHIBIT V



Mobile ViewMain Search Premium Members Advanced Search Disclaimer

Cites 3 docsThe Companies Act, 1956Section 35 in The Trade Marks Act, 1999Section 30(2)(a) in The Trade Marks Act, 1999

Get this document in PDF Print it on a file/printer View the actual judgment from court

Try out our Premium Member services: Virtual Legal Assistant, Query Alert Service and an ad-free experience.

Free for one month and pay only if you like it.

Bombay High Court

People Interactive (I) Pvt.Ltd vs Vivek Pahwa And 4 Ors on 14 September, 2016

Bench: G.S. Patel

People Interactive v Vivek Pahwa

NMS 1687-15-SHAADI-DOT-COM-F4.doc

MP/RB/GSP

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION NO. 1687 OF 2015

IN

SUIT NO. 846 OF 2015

PEOPLE INTERACTIVE (INDIA)

PRIVATE LIMITED

a Company incorporated and registered

under the Companies Act, 1956 having its

registered office at 205, Shiv-e-Numh, Dr.

People Interactive (I) Pvt.Ltd vs Vivek Pahwa And 4 Ors on 14 Septembe... https://indiankanoon.org/doc/9121927/

1 of 15 12/21/2018, 9:22 AM

Annie Besant Road, Worli, Mumbai

Highway, Vile Parle (East), Mumbai 400 018

...Plaintiff

versus

1. VIVEK PAHWA

an inhabitant of India having his

office at 21-C Sector 18, Udyog Vihar,

Gurgaon, Haryana-122016

2. ACCENTIUM WEB PRIVATE

LIMITED

a Company incorporated and

registered under the Companies Act,

1956, and having its registered office

at 21-C Sector 18, Udyog Vihar,

Gurgaon, Haryana-122016

3. DEEPAK PAHWA


address at 20 Rajpur Road, Civil

Lines, Delhi- 110054.

Page 1 of 29

14th September 2016

::: Uploaded on - 14/09/2016 :::

Downloaded on - 15/09/2016 00:45:59 :::

People Interactive v Vivek Pahwa

NMS 1687-15-SHAADI-DOT-COM-F4.doc

4. VARUN PAHWA



2 of 15 12/21/2018, 9:22 AM

address at 20 Rajpur Road, Civil

Lines, Delhi- 110054.

5. DREAMHOST LLC

a Company incorporated under the

law of the United States of America,

having its registered office at 417,

Associated Road #324, Brea, CA

92821

...Defendants

A PPEARANCES

FOR THE PLAINTIFF Mr. V. R. Dhond, Senior Advocate, a/w

Mr. Rashmin Khandekar, a/w Mr.

Hemant Thadani & Mr. Anshul

Saurashtri i/b Krishna &

Saurashtri

Associates.

FOR DEFENDANTS Dr. V. V. Tulzapurkar, Senior Advocate

NOS. 1 TO 4 a/w Mr. Ashish Kamat & Mr.

Srivardhan Deshpande i/b M/s

Desai

& Diwanji.

CORAM : G.S.Patel, J.

JUDGMENT RESERVED ON : 15th July 2016

JUDGMENT PRONOUNCED ON : 14th September 2016

JUDGMENT:


3 of 15 12/21/2018, 9:22 AM

1. The Plaintiff seeks to restrain Defendant Nos. 1 to 4 (collectively, "the contesting Defendants") from

using the domain name secondshaadi.com in any manner, including as part of the 14th September 2016

People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-COM-F4.doc domain name for their

web-based matrimonial services. The Plaintiff also seeks to restrain the contesting Defendants from

"passing off" their website as that of the Plaintiff. The final relief sought is to restrain Defendant No. 5,

a webhost and a domain name registrar, from hosting the contesting Defendants' website, and to direct

it to de-register or terminate the contesting Defendants' domain name registration.

2. When the suit was first filed, there was a complaint that the contesting Defendants had used articles

and material from the Plaintiff's website. This has been resolved since. Both sides accept this.

3. The Plaintiff belongs to the People Group of Companies. It owns several well-known websites,

brands and trade marks. Among these are the marks Shaadi.com and Shadi.com. The 1st Defendant is

registrant of the domain name www.secondshaadi.com.

Defendant Nos. 1, 3 and 4 are Directors of the 2nd Defendant. The website is operated through the 2nd

Defendant.

4. In 1996, one Siddharth Mehta, the Plaintiff's predecessor-in- title adopted the mark Shaadi.com in

relation to online matrimonial services. The Plaintiff acquired Mehta's rights in the mark and the

domain name under an Assignment Deed dated 9th October 2001. From that time, the Plaintiff has

used the mark and domain name to provide online matrimonial and matchmaking services. The device

14th September 2016 People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-COM-F4.doc

and label mark SHAADI.COM1 and the word mark SHADI.COM2 were registered in 2004 in Class

42. The Plaintiff's other word marks SHAADI.COM3 and SHADI.COM4 (not used by the Plaintiff )

were subsequently registered in 2009 in Class 45. The registration certificates of all these marks claim

user since 1996. Apart from its online services, the Plaintiff has bricks-and-mortar establishments for

similar services offered in person. It also has registrations for the marks Shaadi.com Centre,5 Shaadi

Times,6 Shaadi Point,7 Shaadi Mobile8 and Shaadi TV.9 Shaadi Times carries a disclaimer of non-

exclusivity over the word Shaadi.

5. Exhibit "C" to the Plaint lists the Plaintiff's annual worldwide sales and promotional expenses under

the mark Shaadi.com since 2000.10 These are substantial. Its gross revenue increased from

approximately Rs. 32 Lakhs in 2000-2001 to about Rs. 141 crores in 2014-2015. Promotional expenses

for 2014-2015 stood at Rs. 45 crores. Some promotional material is on record.11 The Plaintiff claims it

has 20 million registered users for its various services, and that since January 2007, its primary website

1. Plaint, Exhibit "E2", p. 91.









10. Plaint, p. 58.

11. Plaint, Exhibit "B" p. 54; Plaint, Exhibit "D", p. 59.



4 of 15 12/21/2018, 9:22 AM

www.shaadi.com has had 12.4 billion recorded visitors. The Plaintiff has won many awards. Therefore,

the Plaintiff claims that its services under this mark and domain name have acquired substantial

goodwill and repute.

6. The contesting Defendants launched their website at the domain name www.SecondShaadi.com on

25th January 2006. This website caters to those seeking to marry again; hence the name. The

contesting Defendants' website has a very different market position from that of the Plaintiff. It caters

to a much more select group, not quite as large as the Plaintiff's. The contesting Defendants have used

the mark secondshaadi.com for almost eight years. They say they have gained much popularity within

their segment. They also claim to have spent much money on advertising and promotion. They market

and promote their platform on social media too.

7. The Plaintiff says that in July 2007 it came across the 1st Defendant's www.secondshadi.com. On

27th July 2007, the Plaintiff sent the 1st Defendant a cease-and-desist notice.12 The 1st Defendant

declined to comply.13 It was only on 28th September 2013, i.e., a good six years after the 1st

Defendant's reply to the Plaintiff's cease-and-desist notice, that the Plaintiff sent it another demand.14

This is of some consequence since a defence of acquiescence is raised. The 2nd Defendant replied on

15th October

12. Plaint, Exhibit "H", pp. 132-137.

13. Plaint, Exhibit "I", pp. 138-142.

14. Plaint, Exhibit "J", pp. 143-145.


2013, refuting the Plaintiff's claim, and, inter alia, specifically contending that the words 'shaadi' and

'shadi' are generic.15 The defences in the correspondence are also the defences to the present Motion.

8. Mr. Khandekar for the Plaintiff says that it is now settled law that a domain name has all the

characteristics of a trade mark. The Defendants' domain name is deceptively similar to the Plaintiff's

registered marks Shaadi.com and Shadi.com. He says the whole of the Plaintiff's mark is subsumed in

that of the contesting Defendants. The Plaintiff's mark, he says, has now gained a 'secondary meaning'.

9. In fairness, Mr. Khandekar concedes that the mark Shaadi.com (in any of its various iterations) is

not inherently distinctive: 'shaadi' is a transliteration of the Hindi word for marriage. Considered in a

vacuum, he says, it is purely descriptive of the services in question. This does not, he submits, by itself

preclude the Plaintiff from claiming a monopoly over the mark, since it is well-settled that even a

descriptive mark can attain distinctiveness, and is, therefore, capable of being used as a trade mark. For

this, he relies on the judgments in T.V. Venugopal v Ushodaya Enterprises Ltd,16 Godfrey Philips

India Ltd v Girnar Food and Beverages Pvt Ltd,17 ITC Ltd v Nestle India Ltd,18 Indchemie

15. Plaint, Exhibit "K", pp. 146-150.

16. (2011) 4 SCC 85.

17. (2004) 5 SCC 257.

18. MIPR 2015 (2) 40.


Health Specialities Pvt Ltd v Intas Pharmaceuticals Ltd,19 Hi-Tech Pipes Ltd v Asian Mills Pvt Ltd,20

and Info Edge (India) Pvt Ltd v Shailesh Gupta.21 Mr. Khandekar submits that the Plaintiff's mark, by

reason of extensive and continuous use, has achieved the necessary distinctiveness. It is, he says, a

'household name', and has achieved a 'secondary meaning'. According to Mr. Khandekar, the word

'shaadi' is the 'essential feature' of the Plaintiff's mark, and when used in relation to matrimonial

services is associated with the Plaintiff's website alone. This is evidenced by the substantial

promotional expenses and revenue generated. There are also the numerous awards and accolades


5 of 15 12/21/2018, 9:22 AM

received by the Plaintiff for the services provided under the mark, and reviews carried in leading

magazines, newspapers and on web-portals. All of this, Mr Khandekar says, shows that the Plaintiff's

mark is ubiquitous and well-known. Therefore, he submits, Defendant No. 1's adoption of the domain

name www.secondshadi.com is not bona fide, but merely an attempt to ride the wave of the Plaintiff's

success. There is every chance that the general public would confuse the contesting Defendants' mark

with the Plaintiff's. There have, in fact, been instances, he says, where the Plaintiff has received

inquiries and complaints from the contesting Defendants' customers regarding services rendered under

the mark SecondShaadi.com.22 He claims that the contesting Defendants use meta-tags to drive traffic

to them from the Plaintiff's site.23 A Google search of the Plaintiff's mark

19. 2015 (63) PTC 391 (Bom).

20. (2006) 126 DLT 353.

21. ILR (2002) 1 Delhi 2.

22. Plaint, Exhibit "L", pp. 151-187.

23. Plaint, Exhibit "N", p. 189-194.


also lists that of the contesting Defendants; and this only makes confusion more imminent.24

10. I find it difficult to accept this formulation, and must agree with Dr. Tulzapurkar for the

Defendants, when he says that the word 'shaadi' is generic and commonly descriptive. That word lends

itself to no meaning other than its ordinary lexical one. 'Shaadi' (and synonyms such as 'vivah') mean

matrimony or wedding. The word, as Dr. Tulzapurkar says, is generic. He points out that there are any

number of entities that use the word to provide similar services: he has a list of 29 websites that all use

'shaadi' in their domain name, and 10 companies that also prefix 'shaadi' to their names.25 Whether or

not this list is accurate is largely irrelevant, for 'shaadi.com' is a non-unique combination of words that

clearly indicates the function and purpose of the website.

11. There are two issues here: first, the matter of acquisition of a 'secondary meaning'; and, second,

whether a domain name always assumes the features of a trade mark. As to the first, in Indchemie --

a decision that does not, in my view, support Mr. Khandekar at all

-- Gupte J referenced Miller Brewing Company v G. Heileman Brewing Company Inc.26 and noted the

'spectrum' of degrees of distinctiveness: (1) generic or commonly descriptive; (2) merely descriptive;

(3) suggestive; (4) arbitrary or fanciful. Generic or commonly descriptive words -- examples such as

'necktie',

24. Plaint, Exhibit "M". p. 188.

25. Written Statement, pp. 261-262.

26. 561 F.2d 75.


'plastic', 'soda', 'perfect', 'best', 'No.1' come to mind -- are used to name or describe the goods in

question. These can never become trade marks on their own. They never acquire distinctiveness or a

secondary meaning. They do not tell one man's goods from another's. They do not indicate origin. An

expression in the second category, a merely descriptive term, is often used to describe some particular

characteristic or ingredient: 'airtight', perhaps. Ordinarily, even these are not registrable unless they

have acquired a secondary meaning and refer exclusively to one particular trader's goods. In the third

category we have suggestive words. These only hint at a feature or a specialty. The consumer must, in

his mind, make the necessary link between the word and the goods. This class of expression requires

no proof of acquisition of a secondary meaning to proceed to registration; it may, however, be hedged

with a disclaimer regarding the manner of use. A wholly arbitrary or fanciful word is always


6 of 15 12/21/2018, 9:22 AM

registrable, and it always separates or distinguishes one person's goods from another's.

12. As a general rule, it seems to me that the principle is of obviousness. The degree of distinctiveness,

and, therefore, the possibility of registration as a trade mark, is inversely proportional to the degree of

obviousness: the more obvious the word, the less the degree of distinctiveness and the chances of its

registration. I use the word 'obvious' here to mean not 'evident' but commonplace.

13. Words in everyday language, words of the common tongue are not to be allowed to be

monopolized. Expressions that find themselves at the lower end of this four-position fretboard cannot


easily be shifted higher up the scale. To make that ascent, it will not do to misspell the word. That, it is

settled, is of no aid to the applicant. Indchemie discusses this aspect of the law.27

14. In my view, in Indchemie Gupte J did not advocate an overly rigid demarcation between these four

classes. The law in the US might be different from the English common law and from our own

adoption (and adaptation of it), and from our statutory provisions as well. In an outlying case, it may

yet be possible for a mark to move from a lower class to a higher class of distinctiveness. The four-fold

classification is a broad one; it is by no means the intellectual property or trade mark equivalent of an

ancient, immutable and highly stratified caste system of any kind, where a mark is doomed to remain

forever in the category in which it, on adoption, falls.

15. That takes us directly to the question of 'secondary meaning' or 'secondary significance'. When

does an expression acquire a 'secondary meaning' and how does it acquire it? Again, this is a phrase

much bandied about, and I do believe we need to pause to consider what is meant by all this. What do

we mean when we say that an expression has 'acquired a secondary meaning'? This must

27. I do not think it is necessary to consider the other aspect that arose in Indchemie, viz., the question

of the breadth or narrowness of the statutory use of the word 'similarity'. It is enough, I think, to note

that Gupte J held, and I am not only bound by his view but also agree whole-heartedly with it, that the

statutory expression is not so elastic as to always allow trade mark protection granted to a narrowly

defined class to be broadened to goods demonstrably distinct in character, quality and purpose. This

rubber-band approach of stretching statutory rights to include, willy-nilly, all circumstances without

heed to particularity of registration is without basis in trade mark jurisprudence.


necessarily mean that the primary meaning of the expression, the one with which it began, has been

lost. It is left behind. The expression no longer means what it once did. It has assumed a new avatar. It

has transcended its original connotation and now references exclusively in the public mind the

claimant's products, goods or services, i.e., that there is an identification of the mark with the claimant

rather than with the goods or services in and of themselves.28 The claim of a 'secondary meaning'

posits a priori that the expression once had a more commonplace, ordinary meaning --

this is the meaning that is now lost. In its first iteration, the expression found place lower on the

Indchemie/Miller Brewing scale. It has since moved upward by acquiring a secondary meaning. That is

the claim.

16. How is the acquisition of a secondary meaning to be shown or established? Does commercial

success, even a high degree of success, always result in the acquisition of a 'secondary meaning'? I do

not believe this can be so. There is no presumption of secondary meaning acquisition. That needs

proof; and the proof must be of uninterrupted use of considerable longevity without a competitor

attempting to use it.29 When a person uses a common phrase, he runs the risk that others might also

use the same expression or another very like it. In British Vacuum Cleaner Company Limited v New

Vacuum Cleaner Company Limited,30 on which Dr. Tulzapurkar relies, Parker J held that there is a

distinction between ordinary

28. Nestle India Ltd v Mood Hospitality Pvt Ltd, (2010) 42 PTC 914 (Del).


7 of 15 12/21/2018, 9:22 AM

29. Marico Ltd v Agro Tech Foods Ltd, 2010 (44) PTC 736 (Del).

30. 1907 (2) Ch. D. 312, 328.


descriptive words and a 'fancy word', one that does not primarily relate to the article, but perhaps to the

person manufacturing it. There can be no restraint against the use of general words. The decision in

Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd,31 too, supports Dr.

Tulzapurkar's contention. The expression in dispute was 'office cleaning'. The appellants claimed the

expression was identified with their business to such an extent that any other traders who wished to use

the expression as part of their trade name would have to differentiate it. Simons J held that where a

trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that

risk must be run, or else the first user would be allowed to unfairly monopolise the words. In matters of

this nature, courts accept even the smallest differences sufficient to avert confusion.

17. As to this question of risk of similar use by others, the material on record is, in my view, against the

Plaintiff. Annexed to the Affidavit in Reply is a very long list of rival or competing marks, at various

stages. All use the word shaadi in some form or the other. Many are opposed by the Plaintiff. Several

use the name of a community before the word shaadi (agarwalshaadi, konkanishaadi, patelshaadi and

so on).32 I do not think Mr. Khandekar's response is of much use; he says that the Plaintiff has

obtained domain name registrations for a very large number of variants. This is hardly evidence of

exclusivity. In fact, it points to the contrary, viz., that others have, and continue to, use the word shaadi

almost at will. The

31. (1946) 63 R.P.C 39, 43.

32. Notice of Motion paper book, Exhibit "D-6", pp. 372-404.


Affidavit in Rejoinder does not further matters when it says that many of these users have been issued

cease-and-desist notices by the Plaintiff.33 The fact is that there are many ventures, including online

ones, that use the word 'shaadi' as part of their corporate or trading name or as their domain names.

Paragraph 12 of the Affidavit in Rejoinder tabulates companies that use the word 'shaadi' in their

names.34 I do not think it is at all possible for a claimant to say that there are no competitors or rival

users because the claimant has moved against or restricted virtually every rival user. The test in such

cases must be whether rivals have attempted to use the same commonly descriptive or generic (class 1)

expression. If it is shown that they have, then the claims to exclusivity and to a secondary meaning

must both fail. This is axiomatic: these rival uses show non-exclusivity, and establish that there are

indeed many who use the word. This is precisely the risk the law says an adopter of a generic or

commonly descriptive expression must expect to suffer.

The test of exclusivity, an essential ingredient of the claim based on a 'secondary meaning' can hardly

be said to be satisfied.

18. Exclusivity claims based on secondary meaning acquisition must be established by cogent material.

References to sales and promotional expenses may be used to establish the acquisition of reputation

and goodwill, i.e., to show the popularity of a mark. Mere use and statements of sales and expenses do

not, of their own,

33. Notice of Motion paper book, pp. 411-414.

34. Notice of Motion paper book, pp. 415-416.


establish the acquisition of a secondary meaning.35 That proof is always required of goods or services

in the second category, 'merely descriptive' expressions; for these are not ordinarily registrable without

such proof. That proof must be directed to establishing that the 'merely descriptive' expression in

question is now firmly established in the public imagination with the claimant and its goods and


8 of 15 12/21/2018, 9:22 AM

services. High sales and expenses will not do; the claimant must show from carefully neutralized

market surveys, etc., that this is indeed how the public perceives the mark -- not as a mere description,

but a pointed reference to the origin, viz., the claimant.

Use itself does not establish distinctiveness. The extent to which a mark has lost its primary meaning

and the extent to which it has acquired a secondary one are conclusions to be drawn from evidence.36

That evidence, showing the displacement of the primary meaning by the secondary meaning, must be

of the members of the public as well, not merely those specially placed to attest to its uniqueness.37

19. I will pause here for a moment to consider what it is precisely over which this claim of exclusivity

is made. Is it 'shaadi' or is it

35. In Stokely Van Camp, Inc & Anr v Heinz India Pvt Ltd, 2010 (44) PTC 381 (Del). Rajiv Shakhder

J held: "There is no evidence in the form of consumer survey or otherwise which would at least prima

facie have me believe that the registered mark 'Rehydrate Replenish Refuel' has achieved trade mark

significance in as much as the use of the expression brings to mind the trade origin of the product.

Mere use of the mark alone does not necessarily translate in the mark obtaining 'secondary distinctive

meaning'." The appeal failed: Stokely Van Camp, Inc & Anr v Heinz India Pvt Ltd, MIPR 2010 (3)

273.

36. Kerly on Trade Marks, 14th Ed., Sweet & Maxwell, 2005-2007.

37. Narayanan on Trade Marks, 6th Ed., pp. 272-275, ¶ 10.21-10.24.


'shaadi.com' (as in, shaadi dot com)? If it is the first, the claim fails entirely on the Indchemie/Miller

Brewing four-part formulation, for the word falls firmly in the first category. To the end, I was unclear

where exactly Mr. Khandekar placed his claim. The Plaint makes an express claim over the word

'shaadi', saying not only is this part of the marks registered for real-world bricks-and-mortar services

(such as 'Shaadi Centre'), but that 'shaadi' is the 'essential and prominent' feature of the Plaintiff's

marks.38 The claim in the plaint is, thus, for exclusivity over 'shaadi'. But this falls within the first

Indchemie/Miller Brewing class of generic or commonly descriptive words. This is the lowest end of

the distinctiveness spectrum; and, absent other proof, it is entirely immobilized, incapable of moving

anywhere further up that scale. Shaadi is nothing but generic: it refers to marriage, not bicycles,

pressure cookers or potato chips. I think it is wholly incorrect to take a generic or commonly

descriptive expression as part of a mark, and then, by this process of deconstruction, lift the generic

expression out of the mark, claim that it is 'prominent' or 'essential' or 'leading', and then lay claim to

an exclusivity it could never have had if used on its own. This seems to me to be a roundabout way of

trying to achieve that which is impossible to begin with. I am unable to accept Mr. Dhond's submission

in a late rejoinder, when I placed the matter for further arguments, that the word 'shaadi' in relation to

the Plaintiff's business, is inherently unique and not commonplace. That seems to me to be a wholesale

abandonment of the manner in which the Plaint is laid. Mr. Dhond correctly says there is no claim over

the

38. Plaint: paragraph 39, pp. 32-33; paragraph 19, pp. 17-18; paragraph 20, p. 18; paragraph 21, p. 21.


'dot-com' part of it taken separately; but he insists that the use of the word 'shaadi' uniquely connotes

the Plaintiff, and always has done, in relation to online matrimonial services. What the Plaintiff

provides is a matchmaking service. They are not wedding planners. The word 'shaadi' is, therefore, in

his submission distinctive. That, however, is not the basis on which his plaint proceeds. If Mr. Dhond is

correct, no question would arise of the Plaintiff's mark needing to acquire 'secondary significance'; it

had the necessary distinctiveness to begin with.

20. Given this, I will take it that the claim is over 'shaadi.com', taken as a whole. Undoubtedly this is

registered. Let us, however, consider what it is the Plaintiff does when it applies for and secures such a

registration? It takes a commonly descriptive or generic word and tacks on a technically necessary


9 of 15 12/21/2018, 9:22 AM

suffix to it: .com. Every domain name needs some Top Level Domain ("TLD") suffix such as .com,

.net, .org, .in, .gov and so on. Without one of these, the website and its related services do not function.

These are, therefore, also entirely generic. They have no distinctiveness at all. No one can claim

exclusivity in any TLD or any domain suffix of any level (such as .gov.in or .net.in), nor does the

Plaintiff claim it. The result, possibly, is that if we follow Mr. Khandekar and Mr. Dhond down this

path of deconstruction, then we are left with nothing that is on its own registrable and it then might

well be perfectly legitimate to contend that neither shaadi nor dot-com are ever registrable. Therefore,

what remains is the combination taken as a whole, and it is over this that the Plaintiff claims dominion:

shaadi.com. But this surely begs the question; if both constituent integers are entirely 14th September

2016 People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-COM-F4.doc commonplace,

and one must look only to the mark or domain name as a whole, then the slightest differentiation must

also surely be sufficient.

21. The real difficulty is that shaadi.com is an address. It is the Internet equivalent of a physical or

terrestrial address. It directs a user to a particular part of the Web where a domain name registrant

stores and displays his information, and offers his services. A physical mailing address can never be a

'trade mark', properly so-

called. "10 Downing Street" or "1600 Pennsylvania Avenue" are not trade marks. A web address is,

technically, a mnemonic, an easy- to-recall replacement for a complex string of numbers that represent

the actual Internet Protocol address (or addresses) where the website in question is to be found. It is

impossible to remember something like http://115.112.2.29.39 Mr. Dhond's argument is that having

adopted the 'shaadi.com' as a domain name, a trade mark and a corporate name, the Plaintiff is entitled

to the fullest of protection.

22. Every domain name that incorporates a trade mark enjoys the same protection as the mark, neither

more nor less. In other words, use as a domain name does not diminish a trade mark. The proposition,

often attributed to Yahoo Inc v Akash Arora & Anr.,40 that a domain name is never 'merely' an

address, seems to me to be incorrect. It is primarily an address; but it may also enjoy protection as a

mark. Every domain name, no matter how non-distinctive or

39. That, as it happens, is the IP address of shaadi.com, the website.

40. 1999 (19) PTC 201 (Del).


how descriptive, is not per se entitled to trade mark-level protection.

A domain name that uses, say, 'Xerox' or 'Kodak', enjoys the full protection afforded to both

expressions qua trade marks, simply because these are fanciful words capable of the highest level of

trade mark distinctiveness. These domain names are not mere Internet addresses for finding a string of

numbers. Their use in domain names does not alter or erode their trade mark status. The reverse,

however, is untrue: it is incorrect to suppose that every domain name, because it is a domain name,

automatically receives the full-

blown protection of a mark. If courts allow monopolies of this exclusivity claims nature, then we

should expect, and sooner rather than later, over words like 'grocery', 'secretary', 'investment' and so on

because some persons have set up domain names using those words: 'grocery.com', 'secretary.com' and

'investment.com'. This is inconceivable, and it is not the law. Where a person uses a suitably distinctive

trade mark, and has protection of it, his use of a domain name that has the same trade mark carries with

it the same degree of protection. The fundamental requirement of distinctiveness remains true for both.

An example, as an illustration, might suffice: using wildebeest.com for job hunting, for instance; there,

the use of the expression is sufficiently distinctive.

23. In Info Edge (India) Pvt. Ltd. & Anr. v Shailesh Gupta & Anr.,41 a learned single Judge of the

Delhi High Court had before him a case where the plaintiff had the mark and domain name naukri.com

in relation to employment placements and job hunting. The defendant seems to have used a domain


10 of 15 12/21/2018, 9:22 AM

name naukari.com and

41. 98 (2002) DLT 499 : (2002) ILR 1 Delhi 220.


diverted traffic to his website jobsourceindia.com.42 There again, the argument of 'secondary

significance' was made and, on the material before the Court, seems to have been accepted. That,

however, was a clear-cut case of an attempted hijacking of the plaintiff's business. The defendant did

contend that the expression naukri.com was generic, incapable of protection, that evidence was

required and that there was no evidence of bad faith. Info Edge referenced the decision in Marks &

Spencer v One-in-a-Million,43 but that again is distinguishable, because the offending mark used the

plaintiffs' distinctive mark, first adopted for off-line use, and already a bricks-

and-mortar mark, Marks & Spencer for the well-known and highly reputed chain.44 Info Edge is also

not an authority for the proposition that every single domain name, by virtue of it being that and

nothing else, and no matter how utterly descriptive and non-distinctive, automatically qualifies for

protection as a trade mark. To accept that would be to elevate domain names to a position far higher

than trade marks. The same tests apply to both. In any case, Info Edge clearly says that the view was a

prima facie and tentative view.

24. There is the additional factor glossed over in the more generalized (and incorrect) assertion that all

domain names are trade marks that domain names are not owned; they are more in the nature of a

rental. Like trade marks, they require periodic renewal or

42. There seems to be some confusion in the Manupatra report on the precise domain name that the

defendant used.

43. 1998 FSR 265.

44. Other decisions cited in Info Edge do not carry us further. Rediff Communications Ltd v

Cyberbooth & Anr., (2000 PTC 209), was a case where the competing domain names were rediff.com

and radiff.com.


continued registration. This was noticed recently by a learned single Judge of this Court (A. K. Menon,

J) in Raymond Limited v Raymond Pharmaceutical Pvt. Ltd.:45

63. Once registered a domain name constitutes an address in cyberspace where the registrant's website

can be reached. Thus the coordinates and the location of a domain in cyberspace will be governed by

the internet local authority and a domain can easily be identified by such coordinates. The domain

name is an address which is not a permanent one. Once registered the registration lasts for a specific

duration of time and subject to payment of registration fees for the specified duration if on or before

the specified duration the domain name registration is extended the domain name will remain alive and

accessible during such renewed period. If, however, renewal is not effected the domain and the website

will not be accessible in cyberspace. Registration of trade-marks and domain names are not permanent.

Trademarks registration can also be cancelled if improperly obtained or the failure to use a trade-mark

may also result in its cancellation. However, failure to use a domain name will not necessarily result in

its cancellation. The failure to renew the registration of a domain name will result in loss of the domain

name.

(Emphasis added)

45. MANU/MH/1271/2016.


This actually presents a conundrum for the Plaintiff before me; for, should that domain registration

lapse or be cancelled for any reason, nothing at all will remain of the trade mark itself, since the mark

is nothing but the domain name.


11 of 15 12/21/2018, 9:22 AM

25. In paragraphs 76 and 77 of Raymond Ltd,46 Menon J said:

76. In India in absence of legislation expressly dealing with dispute relating to domain

name leads such disputes to be taken up for adjudication in the Court including by way of

action of passing off. The Statement of Objects and reasons of the Trade Mark Act, 1999

does not reveal any intention to widen the scope of amended Act so as to specifically cover

the protection of trade-marks in domain names. The aforesaid mentioned standards of the

UDRP will be useful as a guide for the appropriate tests to be applied.

In my prima facie view, the use of the impugned domain name in the present set of facts is

neither such as to take unfair advantage nor is it detrimental to the distinctive character of

the plaintiff's registered Mark. Section 29(4) requires criteria all three sub-clauses to be

satisfied unlike Section 29(8) referred to by Mr. Khandekar. Although trade-marks may be

used as domain name(s) unless an impugned domain name is identical to a registered mark

or the two are so alike so as to cause initial interest confusion to a man of ordinary

intelligence, the domain name need not result in infringement of the mark or passing off.

46. Paragraph numbers are from the Manupatra report.

14th September 2016 People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-

COM-F4.doc Every domain name cannot therefore form subject of trade-mark protection. I

may add a word of caution here by clarifying that to reach a conclusion on this aspect the

facts of a case are material.

77. On analysis of the judicial pronouncements that have been pressed into service on

behalf of the Plaintiffs it would require the Plaintiffs to establish that the defendant's use of

the mark should be demonstrably not in accordance with honest practice in commercial

matters and take unfair advantage or detrimental to the Plaintiffs' mark. In the context of

the allegations of passing off the registration of the impugned domain name and use of

Email-id must have resulted in misrepresentation in the course of trade to customer of the

defendants and/or the plaintiffs, Apart from being calculated to injure it must also cause

actual damage to the Plaintiffs. In the present case, I find no such evidence to indict the

defendants. It is the Plaintiffs stated case and as argued before me that the Plaintiffs' mark

is infringed by virtue of Section 29(4). Although I do not find merit in Mr. Khandekar's

submission that the plaintiff's mark lacks distinctive character, I am of the prima facie view

that the domain name has not been adopted without due cause or to take unfair advantage

or cause any detriment to the distinctive character or repute of the Plaintiffs mark

"Raymond" especially in the light of fact that the Plaintiffs case under Section 29(5) has

been negated at the interim stage. Absence of sales figures of the defendants is not so

critical in the present facts.

14th September 2016 People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-

COM-F4.doc

26. At this stage, the material before me is insufficient to support, prima facie, Mr. Dhond's argument

that 'people associate shaadi.com with my website'. They may, and many possibly do. I just do not

know if that is because shaadi.com is the Plaintiff's website address, or because they link 'marriage' or

shaadi exclusively with the Plaintiff or its services. That argument is also a mite self-defeating. If

shaadi-dot-com is a destination for Indians seeking matrimony, then, by the same token, secondshaadi-

dot- com must be the destination for those seeking to repeat the experience.

27. Mr. Kamath carries this further. If this be so, he says, then shaadi.com as a word or an expression is

incapable of registration. Its constituent integers are both entirely generic. Their combination is a mere

address. None may pillage or use that address, but that is because the domain name is registered to the

Plaintiff, not because it is a trade mark. That registration is, he submits, vulnerable. He invites a

finding to this effect. I notice that the certificate notes that a rectification application has been filed.47 I

am not required to consider whether this registration as a word mark is liable to cancellation within the


12 of 15 12/21/2018, 9:22 AM

narrow exceptions in paragraph 59 of the Full Bench decision in Lupin Ltd v Johnson & Johnson,48

and I will, therefore, leave it at that. Certainly, though, this does not seem to me a case where an

injunction should be granted. That would lead to highly inequitable results.


48. 2015 (1) Mh. L. J. 501.


28. There is, of course, an additional complication to the Plaintiff's secondary-meaning argument.

When Mr. Khandekar says shaadi.com has acquired a 'secondary meaning', he must say what precisely

was the primary meaning now said to be lost. That is not explained. It cannot be explained. The reason

is plain and direct. That primary and only meaning was nothing more than a destination on the Internet.

It was never first a trade mark later used to signpost an Internet destination, which is a very different

thing and is true of other marks such as, say, kodak.com, nikon.com, polaroid.com or xerox.com.

Shaadi.com came into being only as an Internet address, and there it remains. That is its primary and

only connotation. It has none other. It is not the Plaintiff's case that shaadi-dot-com was conceived and

adopted for offline use. Apart from the conflict between the oral arguments and the Plaint, I do not

believe there is any evidence of shaadi.com having acquired a secondary meaning.

29. Dr. Tulzapurkar is also correct in submitting that Sections 30(2)(a) and 35 of the Trade Marks Act,

1999 ("TMA 1999") entirely cover the situation.

"30. Limits on effect of registered trade mark.

(1)....

(2) A registered trade mark is not infringed

where--

(a) the use in relation to goods or services

indicates the kind, quality, quantity, intended 14th September 2016 People Interactive v

Vivek Pahwa NMS 1687-15-SHAADI-DOT-COM-F4.doc purpose, value, geographical

origin, the time of production of goods or of rendering of services or other characteristics

of goods or services"

"35. Saving for use of name, address or description of goods or services Nothing in this

Act shall entitle the proprietor or a registered user of a registered trade mark to interfere

with any bona fide use by a person of his own name or that of his place of business, or of

the name, or of the name of the place of business, of any of his predecessors in business, or

the use by any person of any bona fide description of the character or quality of his goods

or services."

(Emphasis added)

30. Once, therefore, we find that both shaadi.com and secondshaadi.com are generic or

commonly descriptive of their services (and each service is distinguishable), then Section

30(2)(a) must apply. Further, if these expressions commonly describe the nature of the

services, then this use is also protected by Section 35.

31. In Notice of Motion (L) No. 2312 of 2014, I granted the Plaintiff an injunction against the

proprietors of www.getshaadi.com.49 That relief, however, was in passing off. On those defendants'

website, the emphasis was on the words 'shaadi.com', and the word 'get' was set off above the word

'shaadi'.


13 of 15 12/21/2018, 9:22 AM

49. Plaint, Exhibit "F1", p. 107-120.


The attempt was ex facie deceitful: those defendants attempted to divert traffic from the Plaintiff's site

to theirs. This is certainly not so in the present case. The contesting Defendants place the word 'second'

prominently above 'shaadi.com'. The domain name is secondshaadi.com, a sufficient variation. There is

also a device of what is presumably a leaf placed by the word 'second'. Below the expression

'shaadi.com' is the tagline "Start a New Life", which is in no manner similar to the Plaintiff's tagline

"The World's No.1 Matchmaking Service". The font and stylization of the contesting Defendants' mark

is completely different from that of the Plaintiff.

So, too, is the get up and look-and-feel of the two websites.

32. In Notice of Motion (L) 1504 of 2014, where the offending website was ShaadiHiShaadi.com, I

granted the Plaintiff interim reliefs since, on comparing the two websites, I found very many

similarities.50 Although the get up of the two websites was not identical, the defendants used the

tagline "World's Biggest Matrimonial Service", which was far too similar to the Plaintiff's tagline (as it

then was), "The World's Largest Matrimonial Service". Evidently, this was merely an attempt by those

defendants to create an illicit association with the Plaintiff's website, since those defendants' website

was nowhere close to being the "World's Biggest Matrimonial Service". Those defendants used code to

divert traffic headed for the Plaintiff's site to their own, a case that is pleaded but not pressed in the

present case, and which, in any case, is unsupported by any cogent material.

50. Plaint, Exhibit "F2", pp. 121-129.


33. In any case, I do not see how either the getshaadi.com or the shaadihishaadi.com cases constitutes

any kind of precedent. The latter was an ex parte ad-interim order. In fact, that defendant has never

appeared. The former was after notice, but there again the defendant did not appear. There was no

contest and the Plaintiff's claim was undefended.

34. The Plaintiff's claim fails on all counts. Mr. Khandekar begins, as I have noted, with the statement

that shaadi is purely descriptive, an argument that Mr. Dhond later attempted to step back from,

contending that the mark is inherently distinctive, i.e., not descriptive. I believe, prima facie, that the

Plaintiff's mark is generic and commonly descriptive, and it is an address of an Internet destination.

There is no question of it 'now' referring exclusively to the Plaintiff's website; it never pointed to

anything else. But that does not make it a trade mark. Being generic, commonly descriptive and an

Internet address, the slightest differentiation is enough. Absent any proof of passing off or deceit (as in

the other two cases), I do not see how the Plaintiff is entitled to an injunction. On the question of proof

of passing off and deceit, I am bound by the decision of Menon J in Raymond Ltd.

35. Dr. Tulzapurkar also claims there is sufficient acquiescence in this case to dislodge the Plaintiff's

claim. The contesting Defendants began operating their website in 2006. The Plaintiff, by its own

admission, was aware of the contesting Defendants' website since 2007. It sent the contesting

Defendants a cease-and-desist notice on 27th July 2007. The contesting Defendants responded on 14th

September 2016 People Interactive v Vivek Pahwa NMS 1687-15-SHAADI-DOT-COM-F4.doc 13th

August 2007, refusing to cease-and-desist. The Plaintiff did not reply. It was only on 28th September

2013, i.e., a full six years after the initial correspondence, that the Plaintiff sent the contesting

Defendants another notice. That, too, met a denial. For those intervening years, the Plaintiff sat by idly

and allowed the contesting Defendants to build their trade until it felt threatened. Indeed, Mr.

Khandekar says precisely this, when he argues that in 2007, the contesting Defendants were too

insignificant to merit legal attention or action; and that it is only now, when the contesting Defendants'

operations have attained a certain critical mass, that the Plaintiff feels the threat. The contesting

Defendants invested substantial sums of money to popularize and market their website. They amassed

a significant client-base. The Plaintiff stood by with full knowledge of its rights and did nothing. This

is not a case of a mere delay.51


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36. Acquiescence is a species of estoppel, and that makes it both a rule of evidence and a doctrine in

equity. Where a party with knowledge of its rights stands silent and watches another deal with the

property in a manner inconsistent with the claimant's right; and where the claimant makes no objection

while the act continues, progresses and grows, he cannot later be heard to complain. A trade mark

proprietor who, not ignorant of his rights, sits on his hands and watches his competitor grow in the

market, taking no action while the other does not, can claim no exclusivity. He must be

51. Midas Hygiene Industries Pvt Ltd v Sudhir Bhatia, (2004) 3 SCC 90.


deemed to have affirmed his rival's use of the mark. Paragraph 27 of the Plaint is fatal to the Plaintiff's

case.52 The Plaintiff submits that subsequent to the said letter dated 13th August, 2007 sent by

Defendant No.1's Advocate to the Plaintiff, the Plaintiff did not initiate any action against the

Defendants as at the relevant time the use by the Defendants of the offending mark was insignificant

and/or minimal and/or small and/or intermittent and/or sporadic without affecting the business and/or

interests of the Plaintiff and/or diluting and/or tarnishing and/or blurring its mark. However, the

Plaintiff in or around September, 2013 learnt that the Defendants have started using the impugned

mark SecondShaadi.com in relation to their impugned services in a commercial and full- fledged

manner in the course of the trade which is in direct conflict with the Plaintiff's rights and interests in

and to the said mark Shaadi.com.

(Emphasis added)

37. For the foregoing reasons, the Notice of Motion fails. It is dismissed, with no order as to costs.

(G.S. PATEL, J.)

52. Plaint, pp. 22-23.

14th September 2016


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