Delhi High Court: A suit was filed by Yahoo Inc. (plaintiff) seeking permanent injunction restraining the infringement of trademark, passing off, unfair competition, tarnishment, dilution, damages, rendition of accounts of profits, etc alleging unauthorized use of its well-known “YAHOO!” trademark by the defendant in the brand name “YAAHOO! Mouth Freshener”. Mini Pushkarna, J., held that the defendant was liable for trademark infringement and granted Yahoo Inc. both compensatory and punitive damages, thereby reaffirming the protection of well-known trademarks from unauthorized commercial exploitation.
Yahoo Inc., a globally recognized internet services company with a well-established and registered trademark, argued that the defendant’s use of a similar mark on a commercial product amounted to blatant trademark infringement and passing off. According to Yahoo Inc., the defendant’s choice of branding appeared intended to capitalize on the reputation and established goodwill of the “YAHOO!” trademark, which is distinct and widely associated with the plaintiff’s services and products.
The dispute led to legal action after an independent investigator, hired by Yahoo Inc., discovered “YAAHOO! Mouth Freshener” product in the market. The investigator learned from the defendant’s representative that they had been using the name “YAAHOO!” for their mouth freshener for approximately nine years, despite having no authorization or affiliation with the Yahoo brand. Additionally, the plaintiff presented evidence, including product samples and photographs, to support their claim of trademark infringement. The defendant, however, did not respond to the suit and failed to file a written statement, which allowed the case to proceed ex parte.
Yahoo Mouth Freshner
The Court examined the evidence and determined that the defendant’s usage of “YAAHOO!” was likely not a coincidence but rather an intentional act to gain commercial benefit from Yahoo Inc.’s trademark. The Court emphasized that the defendant’s logo and stylized font resembled Yahoo’s earlier brand design, which further indicated bad faith and dishonesty. Since the defendant’s trademark application for “YAAHOO!” had previously been refused, the Court found this continued use demonstrated a clear disregard for trademark law and underscored the defendant’s mala fide intentions.
The Court also referenced previous judgments to support its decision to grant punitive damages. Reliance was placed on Times Incorporated v. Lokesh Srivastava and Microsoft Corporation v. Rajendra Pawar, which held that punitive damages are warranted to prevent trademark infringers from evading legal consequences simply by absenting themselves from court proceedings. The Court observed that if defendants could avoid accountability by not appearing in Court, it would disincentivize lawful business practices and promote willful infringement.
Thus, the Court held that Yahoo Inc. had established a strong case of trademark infringement and was entitled to a decree in its favor. The plaintiff was awarded compensatory damages of ₹8,92,451, corresponding to documented costs incurred, and further sought punitive damages. Recognizing the need to penalize the defendant for their conduct and deter similar infringements, the court awarded punitive damages of ₹27,00,000, aligning with the precedent that such damages serve as both corrective justice and a preventive measure against future misconduct.
[Yahoo Inc. v. Omkar Cottage Industries, 2024 SCC OnLine Del 7404, decided on 23-10-2024]
Advocates who appeared in this case:
Mr. Pravin Anand, Mr. Dhruv Anand, Ms. Udita Patro, Ms. Nimrat Singh, Ms. Sampurnaa Sanyal and Mr. Dhananjay Khanna, Advocates for plaintiff
