Yahoo! or Yahoo India?

This case illustrates the level of protection enabled by a successful trademark registration against providers of similar services that seek to pass off of the good name of this business.

By

Igor Demcak

Yahoo Inc has successfully registered a trademark Yahoo! and established its domain yahoo.com. This registration was over time extended to 39 countries [1], including India where a copycat attempt in the form of Akash Arora emerged. This Indian provider of software solutions has registered a domain name yahooindia.com, and this action was immediately met with a strong opposition from Yahoo Inc [2]. The principal argument made by Yahoo Inc was that the Indian competitor is passing off of the good name. The ruling of the intellectual property office supported these allegations, recognising the acquired distinctiveness of the word Yahoo and hence concluding that the domain in fact “leads to passing off of the business of Yahoo as his own and hence it shall be permanently discontinued” [3].

The lesson drawn in this case study is very clear. The protection enabled by a successful trademark registration extends to the online environment and allows companies to ensure sufficient protection against copycat attempts. The hosting domain yahooindia.com is no longer active and the good reputation of Yahoo! remains protected.

[1] Sharma, P. (2010), “India: Domain name - potential trade mark”, Mondaq, available from: https://www.mondaq.com/india/trademark/103086/domain-name--potential-trade-mark

[2] Lawcutor (2020), “Yahoo! Inc vs Akash Arora & Anr”, available from: https://lawcutor.com/2020/06/06/yahoo-inc-vs-akash-arora-anr/

[3] Bisht, A. (1999), “Yahoo! Inc. v. Akash Arora & Anr”, Indian Case Laws, available from: https://indiancaselaws.wordpress.com/2015/07/15/yahoo-inc-v-akash-arora-anr/

Igor Demcak

Igor Demcak

Trademark Attorney

Filed over 150 trademarks as a trademark attorney

UPJS Kosice

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