2019 (7) TMI 1640 - HC - Indian Laws

Exxon wins trademark case, injunction granted against Exoncorp. Costs awarded.

The court ruled in favor of the Plaintiff, Exxon Mobil Corporation, granting an injunction against the Defendant, Exoncorp Private Limited, for infringing ... Well-known trade mark - protection of a well-known mark in respect of unrelated goods or services - deceptive similarity - use of a mark in relation to services (including use as part of a corporate or trade name) - territorial jurisdiction under Section 20 CPC - interactive website - purposeful availment/targeting test for jurisdictionTerritorial jurisdiction under Section 20 CPC - interactive website - purposeful availment/targeting test for jurisdiction - use of a mark in relation to services (including use as part of a corporate or trade name) - Whether the Delhi High Court has territorial jurisdiction to entertain the suit - HELD THAT: - The Court held that Section 20 CPC can be invoked where some part of the cause of action arises in the forum and that jurisdictional provisions in the Trade Marks Act are in addition to, and do not exclude, Section 20 CPC. Applying the settled law on internet-based disputes, the plaintiff need only prima facie show that the defendant purposefully availed of the forum by targeting users in that forum for commercial transactions. The defendant's interactive website and representations on social media, including claims of offering services 'throughout India', provision for online payment, banking details and prior representations (including an earlier LinkedIn claim of 501-1000 employees), established prima facie that the defendant was targeting and carrying on commercial activity beyond Chennai and into Delhi. The defendant's subsequent unilateral modification of its website and social-media statements after institution of the suit did not negate the earlier use and targeting. On these facts the Court concluded that part of the cause of action arose in Delhi and rejected the plea of lack of territorial jurisdiction. [Paras 27]Jurisdictional objection under Section 20 CPC rejected; Delhi High Court has territorial jurisdiction.Well-known trade mark - protection of a well-known mark in respect of unrelated goods or services - deceptive similarity - use of a mark in relation to services (including use as part of a corporate or trade name) - Whether the defendant's use of 'EXON'/'EXONCORP' infringes or passes off the plaintiff's 'EXXON' mark and entitles the plaintiff to injunctive relief - HELD THAT: - The Court noted that the plaintiff's mark 'EXXON' had been declared well-known in prior orders and explained that a well-known mark is entitled to protection even in respect of goods or services unrelated to those for which it is used. The defendant admitted many material facts including the plaintiff's use and registrations, and its own use of the domain, website and social-media presence. Although the defendant relied on differences in logo and on the absence of registration in Class 42, the Court held that the anti-dissection rule and the defendant's adoption of 'EXON' (together with 'CORP') does not avoid confusion with 'EXXON' and that use as part of a corporate/trade name and via online promotion constitutes 'use' in relation to services. Given the admissions and the pleaded material, and in light of prior injunctions restraining similar uses by third parties, the Court found no plausible defence on deceptive similarity or distinctness of services and concluded that the plaintiff was entitled to an injunction without further evidence. [Paras 14, 28, 29]Plaintiff entitled to injunction restraining defendant's use of the impugned mark/name as pleaded; defendant's defences on distinct logo, different services and non-registration in Class 42 rejected.Well-known trade mark - relief and costs in interlocutory/summary disposal under Order XIII-A CPC - Reliefs to be granted on summary disposal under Order XIII-A CPC and award of costs - HELD THAT: - Having found that material facts were admitted and no plausible defence remained, the Court exercised the power under Order XII Rule 6 CPC and Order XIII-A (Commercial Courts procedure) to pass final judgment at the summary stage. The suit was decreed in terms of the principal prayers for injunction and related reliefs specified in the plaint (paragraphs 43(i) and 43(ii) as referred to in the judgment). Considering the defendant's conduct and that the plaintiff had incurred costs, the Court awarded costs in favour of the plaintiff to cover court fee and awarded a sum as costs. Other ancillary reliefs claimed by the plaintiff were rejected on the facts. [Paras 30]Suit decreed on merits at summary stage; injunction granted as claimed in principal prayers and costs awarded to the plaintiff; remaining reliefs refused.Final Conclusion: The Delhi High Court upheld its territorial jurisdiction under Section 20 CPC, found the defendant's use of 'EXON'/'EXONCORP' to be deceptively similar to the well-known 'EXXON' mark and liable to be restrained, decreed the suit on summary disposal and awarded costs in favour of the plaintiff. Issues Involved:1. Infringement of the trademark 'EXXON'.2. Territorial jurisdiction of the court.3. Deceptive similarity of the marks.4. Different business areas of Plaintiff and Defendant.5. Defendant's conduct and bona fides.6. Relief and costs awarded.Issue-wise Detailed Analysis:1. Infringement of the trademark 'EXXON':The Plaintiff, Exxon Mobil Corporation, filed a suit against the Defendant, Exoncorp Private Limited, seeking a permanent injunction to restrain the Defendant from infringing its trademark 'EXXON'. The Plaintiff has been using the 'EXXON' mark since 1967 and has registered it in over 160 jurisdictions, including India. The Defendant's use of 'EXON' in its corporate name and domain name was alleged to be deceptively similar to 'EXXON', causing confusion and misleading the public. The Plaintiff's mark 'EXXON' has been declared a well-known trademark, which entitles it to protection even in unrelated goods and services.2. Territorial jurisdiction of the court:The Defendant argued that the court lacked territorial jurisdiction since it did not conduct operations in Delhi. However, the Plaintiff claimed jurisdiction based on the Defendant's interactive website and social media presence, which allowed users from all over India, including Delhi, to interact and avail services. The court held that the Defendant's website and online presence constituted purposeful availment, thereby giving rise to jurisdiction under Section 20 CPC. The court rejected the Defendant's objection to territorial jurisdiction, noting that the Defendant was offering its services in Delhi and the cause of action had arisen in Delhi.3. Deceptive similarity of the marks:The Defendant contended that its logo, derived from a DNA structure, and the term 'technology solutions' made its mark distinct from 'EXXON'. However, the court found that the marks 'EXON' and 'EXXON' were almost identical, and the use of 'EXON' did not eliminate the likelihood of confusion. The court emphasized that the Plaintiff's mark 'EXXON' had been declared a well-known mark, warranting the highest level of protection, and the similarity between the marks could cause confusion among consumers.4. Different business areas of Plaintiff and Defendant:The Defendant argued that the Plaintiff's mark 'EXXON' was not registered in Class 42, which relates to IT services, and that the Plaintiff and Defendant operated in different business areas. The court rejected this argument, noting that the Plaintiff's well-known mark 'EXXON' was entitled to protection across different goods and services. The court also highlighted that IT services are integral to various business operations, and the Plaintiff's subsidiary, Exxon Mobil Services and Technology Private Limited, provided IT services in India.5. Defendant's conduct and bona fides:The Plaintiff alleged that the Defendant's conduct was not bona fide, as evidenced by the Defendant's changing claims about its number of employees and disabling its online payment gateway after the suit was filed. The court found that the Defendant's actions were misleading and lacked bona fides. The Defendant's written statement admitted most of the Plaintiff's claims, including the Plaintiff's global and Indian registrations, sales figures, and advertising expenditures.6. Relief and costs awarded:The court granted the Plaintiff an injunction restraining the Defendant from using the mark 'EXON' or any deceptively similar mark. The court decreed the suit in favor of the Plaintiff, awarding costs of Rs. 2 lakhs to the Plaintiff for the court fee paid. The court emphasized that the Plaintiff was entitled to protect its well-known mark 'EXXON' even in respect of IT services, and the Defendant's objections were untenable.Conclusion:The court ruled in favor of the Plaintiff, Exxon Mobil Corporation, granting an injunction against the Defendant, Exoncorp Private Limited, for infringing the 'EXXON' trademark. The court also awarded costs to the Plaintiff, emphasizing the well-known status of the 'EXXON' mark and rejecting the Defendant's objections regarding territorial jurisdiction and different business areas. The suit was disposed of with the decree sheet to be drawn accordingly.