Update: A follow up post, with Flipkart’s response, here.
Update: While we’re discussing trademark infringement, Ebay had begun proceedings for trademark infringement against Foodiebay, which was later rebranded as Zomato. A copy of the filing here, via TechCorpLegal.
Update: Sachin Bhatia, co-founder of TrulyMadly and MakeMyTrip, and former CMO of MakeMyTrip reminds us of when the Tata Group took OkTataByeBye away from MakeMyTrip. Details of that case here.
Update: Prashant Singh, Founder of Shifu, points us towards the case of FedExFurniture.com, where FedEx used the DMCA to get an ISP to take down a site which featured furniture made from FedEx boxes.
Earlier: Technology journalist Amit Bhawani, the Editor in Chief of tech sites like PhoneRadar.com, AndroidAdvices.com and GizmoReport.com, as well as the YouTube channel PhoneRadar, received an elaborate legal notice from Flipkart for using their logo in a poll that Bhawani was running on a URL named AmazonVsFlipkart.com.
Apart from trademark violation, Flipkart has also alleged cybersquatting, given that the name flipkart is mentioned in the URL, and given Bhawani seven days to: stop using the Flipkart logo, stop using ‘flipkart’ in the domain name AmazonVsFlipkart.com, and remove all marks ‘identical or deceptively similar’ to Flipkart’s trademark.
This is a particularly problematic development: Bhawani has taken the website down following the legal notice, and it’s not lost on us that this can have a chilling effect on the usage of names and trademarks in polls, and possibly news and works of parody. We’ve used the Flipkart logo on MediaNama several times in the past, when writing about the company. The notice, a copy of which is with MediaNama, has alleged that:
1. Users would get confused about something, stating that “an enormous likelihood of confusion amongst the relevant section of public connected” to Flipkart’s trademark is anticipated’.
We’ve written to Flipkart for a clarification on what kind of confusion they anticipate among users. Please note that the site uses logos from both Amazon and Flipkart.
It’s bizarre of Flipkart to suggest that consumers might believe that a site that features both Flipkart and Amazon, and is conducting a poll between them, is going to be confused or be seen as being synonymous with Flipkart.
2. Publishing: “…no third party can reproduce, communicate and publish (the flipkart logo) without due permission or authority of our Client. In fact, it is pertinent to state that you have blatantly copied our Client’s artistic work and made illegal use of the same for commercial gains.”
We’ve asked Flipkart to explain how conducting a public poll does not constitute journalist research; shouldn’t the usage of the trademark for journalistic purposes be covered under ‘fair usage’? Many many sites have used the Flipkart logo without express permission from the company. A google image search points us towards many such sites.
Please note that even if it were for parody or criticism, the usage of trademarks is allowed. Incidentally, in case of Tata Sons vs Greenpeace International, Saikrishna Rajagopal, of Saikrishna & Associates, the very same firm which sent the legal notice to Bhawani on behalf of Flipkart, argued and won on the usage of trademarks for parody:
To quote from that judgment (link):
“the use of a trademark, as the object of a critical comment, or even attack, does not necessarily result in infringement.”
— Amit (@amitbhawani) August 31, 2015
3. What commercial gains? Flipkart is alleging that Bhawani used the trademark for commercial gains. We’ve asked Flipkart about how Bhawani is earning from running this poll.
In addition, the Tata Sons vs Greenpeace case also states that,
“The mere fact that the expressive activity has a commercial element should not be determinative itself.”
The Tata Sons vs Greenpeace judgment also cites a US Supreme Court judgment, which reference to copyright:
“If, indeed, commerciality carried presumptive force against a finding of fairness, the presumption would swallow nearly all of the illustrative uses listed in the preamble … including news reporting, comment, criticism, teaching, scholarship, and research, since these activities ‘are generally conducted for profit in this country’”
3. What services? The legal notice also mentions that there is great likelihood that actual or potential customers of Flipkart may be induced into believing that “services offered by you (Bhawani) command the same level of reliability that is synonymous with the services of” Flipkart.
Bhawani wasn’t offering any services on AmazonVsFlipkart.com: only a poll.
For that matter, AmazonVsFlipkart.com could be a perfectly legitimate price comparison website for customers who want to compare prices of products between the two companies.
4. Cybersquatting? The legal notice also indicates that there is cybersquatting, with the usage of the domain name AmazonVsFlipkart.com.
We’ve asked Flipkart to indicate how exactly this is a case of cybersquatting. Even a site with the domain name ‘FlipkartsLawyersAreBullies.com’ should be protected under free speech laws.
Please note that we’ve sent questions to Flipkart for clarifying some of the issues mentioned. Calls made to company execs for comments are yet to be returned. We’ll update when we hear from Flipkart.
Updates: Changed the list of sites that Bhawani runs following an update from him.