NATIONAL LAW INSTITUTE UNIVERSITY, BHOPAL – 462044

PROJECT: INTELLECTUAL PROPERTY LAW IN CYBERSPACE

FIRST SEMESTER (BATCH 2020-2021)

DRAFT COPY

TOPIC:
CASE ANALYSIS OF DR. REDDY’S LABORATORIES LTD. V MANU KOSURI &
ANR. (2001 (58) DRJ 241)

SUBMITTED TO: SUBMITTED BY:

Dr. Atul Kumar Pandey Khushboo Saraf
Assistant Professor, NLIU

DATE OF SUMISSION OF SOFT COPY: 30/12/2020

 TABLE OF CONTENTS

ACKNOWLEDGMENT………………………………………………………………...….…….3

DECLARATION………………………………………………………………………………….4

OBJECTIVE……………………………………………………………………………................5

SCOPE OF STUDY……………………………………………………………………………….6

INTRODUCTION………………………………………………………………………………...7

BENCH AND ADVOCATES……………………………………………………………...……..7

MATERIAL FACTS OF THE

CASE……………………………………………………………..8

ISSUES……………………………………………………………………………………………8

CONTENTIONS………………………………………………………………...………………..9

PROVISIONS, DOCTRINES AND

PRINCIPLES……………………………………………...10

BOOKS AND OTHER LITERATURE CITED..….………………………………………….…10

JUDGMENT………………………..…………………………………………………...…….…10

CONCLUSION…………………………………………………………………………...……...11

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 ACKNOWLEDGMENT

This project on the study and analysis of the judgment of the Hon’ble Bombay High Court in the
matter of Dr. Reddy’s Laboratories Ltd. v Manu Kosuri & Anr. (2001 (58) DRJ 241) has been
made possible by the help of Assistant Professor, Dr. Atul Kumar Pandey in Intellectual
Property Law in Cyberspace. He has been kind in helping us choose our cases for this subject
and have been very helpful for us in understanding how a case analysis has to be done.

I would utilize this opportunity to extend my gratitude to everyone who have played a part in
completion of this project.

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 DECLARATION

I hereby declare that this project is not plagiarised and has been duly completed with the use of
available resources. I also declare that all the authorities cited in this project work are duly
acknowledged.

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 OBJECTIVES

The primary objectives of the present project are to:

 Analyse the judgement and to chalk out the contents of the judgment under various
heads in a brief manner for better understanding and efficiency.
 To study the various principles enumerated in the judgement and their application.
 To view the judgment from a critical view and different perspective and give my
opinion.

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 SCOPE OF STUDY

This project will focus at the judgment of the Hon’ble Bombay High Court in the matter of Dr.
Reddy’s Laboratories Ltd. v Manu Kosuri & Anr. (2001 (58) DRJ 241). The study will limit
itself to a critical analysis of the judgment by separating out the judgment into specific categories
for referential purposes. The judgment will be evaluated in terms of statutory law that is
applicable in the present matter and will also try to look at some of the other judgments, principle
and provisions dealt under this case.

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 INTRODUCTION

The growth of online commercial activities has been significant and domain names have
acquired the place for business identifiers. In India, domain names can be registered by ‘first
come first serve’ basis, and there has been significant growth on this concept which has led to
more disputes relating to domain names. Although we do not have any specific law pertaining to
this, Indian courts have played a significant role determining and establishing principles around
the problems of cyber-squatters and protecting trademark and registered domain names.

This is a 2001 judgment where, Dr Reddy’s (‘Plaintiff’) is a pharmaceutical organization,

established in 1984 for research and development activity in the field of medicine. It has a very
strong distribution network in India and also abroad in USA, France, Singapore, Hongkong and
presence in 50 other countries. It is a leader in organic synthesis and also is a proprietor of the
trademark ‘Dr. Reddy’s’. Mr. Manu Kosuri and his online business (Defendants) are a in
business of registering domain names in India, who used domain name ‘drreddyslab.com’ which
was deceptively similar to the Plaintiff’s trademark. This was brought to the courts notice that
such an infringement would come at the cost of Plaintiff’s reputation and create confusion
among consumers as to the origin of the goods and services.

This case was decided by using the provisions of The Trade and Merchandise Act, 1958. After
this law was repealed by the new Trade Marks Act, 1999 the domain name disputes were
resolved by passing off. There is a need for an exclusive enactment on the issues of
cybersquatting and domain names to make it stricter to register domain names as I the present
scenario, internet is a bigger market and due to globalization, a reputation is built through
internet. Such domain name disputes can cause huge damages to the reputation and profits of the
company doing e-Commerce.

BENCH AND COUNSELS

 Single Bench in the High Court of Delhi: Hon’ble Justice N.G. Nandi
 Counsels:

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 o For Plaintiff: Advocate Praveen Anand

MATERIAL FACTS

 The application for registration of trademark Dr. Reddy’s by the company is pending but
the company has a registered domain name ‘drreddys.com’.
 Plaintiff came to know about the activities of the Defendants, which were to block
domain names consisting well-know trademarks and personalities on the Internet and sell
for large amounts. In January, 1999, Plaintiff learned that the Defendants have registered
a domain name ‘drreddyslab.com’ which shown the caption ‘welcome to the future
Website on drreddyslab.com’.
 A suit for permanent injunction was instituted by the Plaintiff against the defendants for
passing off along with the relief of restraining them from the use of domain name
‘drreddyslab.com’ or any identical or deceptively similar trademark to that of the
Plaintiff’s.

ISSUES

 Whether the Defendants have infringed Plaintiff’s trademark by registering a similar

domain name?
 Can a domain name be protected by a user of the similar trademark?

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 CONTENTIONS OF PETITIONER

 The word ‘Dr. Reddy’s’ is an essential feature in carrying out its business operations in
the country and abroad. The domain name used by the defendants can cause confusion in
the minds of the consumer and think that it is an authorized business of the Plaintiff’s.
‘Dr. Reddy’s’ is always perceived as the source of the company and is a highly valuable
intangible asset which can clearly distinguish its activities from those of other traders.
 The Defendants are in the business of registering domain names in India and their
purpose appears to be to block well known trademarks and even names of well-know
personalities on the internet. Once the domain name is registered then the Defendants
give it for sale for large amounts. Such a practice is unethical and commercially unfair
and it is evident that the Defendants don’t have any connection to the parties.
 The registration procedure for domain names, on the internet is on a ‘first come first
served’ basis and is recorded without seeking any opposition or notice to third parties.
Such a registration would enable the defendants to open a website where their business
profile and objectives would appear.
 The function of a domain name is similar to a trademark on the internet and necessary for
e-commerce. The potential for confusion or deception caused on account of adoption of
the impugned trademark by the defendants and the likelihood of damage to plaintiff’s
company business, goodwill and reputation is enormous.

*The Defendants did not appear before the court despite service of summons and no written
statement on their behalf was filled.

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 PROVISIONS, NOTIFICATIONS/ ORDERS, DOCTRINES/ PRINCIPLES

The Trade and Merchandise Marks Act, 19581:

 Section 11: Prohibition of registration of certain marks

 Section 12: Prohibition of registration of identical or deceptively similar trademarks.

BOOK, ARTICLES, ANY OTHER LITERATURE CITED:

No reference has been made regarding this in the judgment.

JUDGEMENT

 Dr. Reddy’s trademark id ‘Dr. Reddy’s’ and the domain name ‘drreddyslab.com’ is used
unfairly by the Defendants. Dr. Reddy is the original registered owner of the said
trademark by virtue of its continuous and extensive use, advertising and the reputation
and goodwill it enjoys as result of being in existence for a considerable amount of time.
 Since the function of a domain name is akin to a trademark on the Internet it is of vital
importance in e-commerce as it can affect online trade. The potential for confusion or
deception being caused can in all likelihood cause damage to Dr. Reddy’s business and
reputation in the market.
 It is a settled legal position that when a company does business under a name which
another company has been carrying out its business transactions, the public at large is
likely to be misled that the business of the former is the business of the latter.
 Defendants were restrained by a permanent injunction from registering a domain name or
operating any business on the internet and anywhere else under the domain name
‘drreddyslab.com’ or any other identical and similar trademark. Payment of the cost of
the suit and other profits made as a result of using Plaintiff’s trademark must be paid to
the Plaintiff.

1
This Act is now repealed and replaced by Trade Marks Act, 1999 which came in force since 15th September 2003.

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 CONCLUSION

This case was decided by the Delhi High Court in 2001, although the court analyzed the issue
using principles of trademark law and a remedy was provided to the Plaintiff. The court was
convinced that damages should be provided to the Plaintiff and granted permanent injunction
against the Defendant, Manu Kosuri and restrained them from using the contentious domain
name.

In this case the Court recognized that the defendant had a business of registering domain names
in India and even mentioned that they offered it for sale but this case was not distinguished from
a case of ‘cybersquatting’. Cybersquatting is a phenomenon several domain names with
prospective demand from commercial enterprises are registered by individuals or firms with a
motive of earning profit by selling them to those enterprises in future.2

It is very clear from the judgment that the introduction to internet and its dispute was still
evolving in the Indian scenario. The courts are still the one to interpret these disputes as unlike
US and other countries, the only enactment governing such disputes is the Information
Technology, 2000. With the absence of any specific law addressing this issue of cybersquatting
and domain name registration, the Court take the route of granting permanent and temporary
injunctions ad relying on trademark law in India, they are often granted ex parte and punitive
damages have been allotted, as in this case.

In the present day, although there is a presence of some international bodies like WIPO and the
foundation of Internet Corporation for Assigned Names and Number (ICANN), India is a
member of WIPO. Considering these issues, the .IN Registry also came up with .IN Dispute
Resolution Policy for registering domain names and is in line with the international guidelines.
But there is still need for proper legislative action in this regard as cases are decided with taking
trademark law in consideration and remedy of passing-off has to be relied upon.

2
Papiya Ghosh, Domain Name Disputes: An Economic Analysis of Some Court Cases in India, Economic and
Political Weekly Vol. 47, No. 51, 52-58 (2012).

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