TaxTMI 
TaxTMI 
2019 (7) TMI 1640
X X X X Extracts X X X X
X X X X Extracts X X X X
....imately changed its name to Exxon Mobil Corporation after it acquired Mobil Corporation in 1999. The word 'EXXON' is also a prominent part of its trading style. The said mark is used in combination with various other marks. The Plaintiff is in the business of gas exploration, oil production, refining and marketing of petroleum products, chemical products, research and development. It offers various services related to the petroleum, chemicals and oil industry. The mark 'EXXON' is also a registered trademark in over 160 jurisdictions, including in India. 3. The details of the registrations are set out in paragraph 8 of the plaint which shows that the mark has been registered for a large range of products. In India, the mark 'EXXON' has been in use since 1982 and the Plaintiff has also established various subsidiaries i.e. ExxonMobil Lubricants Pvt. Ltd., ExxonMobil Company India Private Limited, ExxonMobil Gas (India) Private Limited, ExxonMobil Services & Technology Private Limited for carrying on its businesses and services in India. The average sales of the Plaintiff for EXXON branded butyl products from 2006-2018 in India are over 73 million U.S. dolla....
X X X X Extracts X X X X
X X X X Extracts X X X X
....claims to be the owner of the well-known trademark 'EXXON'. The mark has been in use since 1882. The grievance of the Plaintiff in the present case is that the Defendant - Exoncorp Private Limited is using the mark in its corporate name 'EXONCORP' and the domain name www.exoncorp.com. Ld. counsel for the Plaintiff submits that the Defendant registered the domain name in February, 2017 but the company with the name 'EXONCORP' has been registered as of December, 2018. Ld. counsel further submits that the website of the Defendant shows that the Defendant claims to be an IT services, IT support, IT training company. Reliance is placed on the fact that the mark 'EXXON' has been declared to be a well-known trademark in a judgment passed by this Court. The Plaintiff had issued cease and desist notice in November, 2018 but the Defendant has chosen not to respond. 6. Considering the fact that the Defendant claims to have 500-1000 employees, the prayer for ad-interim injunction shall be considered after issuing notice to the Defendant. Summons in the suit and notice in the application be issued to Defendant upon filing of process fee. Plaintiff is per....
X X X X Extracts X X X X
X X X X Extracts X X X X
....tled to the highest level of protection. 8. On the other hand, Ld. counsel appearing for the Defendant - Mr. Karan Johri submits that the Defendant does not conduct any operations in Delhi. It does not have any branch office in Delhi. It is only based out of Chennai and thus this Court has no territorial jurisdiction. It is further submitted that there is no online payment gateway and the same has been deactivated. It is further submitted that under Section 134 of the Trademarks Act, 1999 the settled legal position as held in Exxon Mobil Corporation & Anr. v. P.K. Sen, [CS (OS) No. 2375/2015, decided on 22nd July, 2016] by judgment dated 22nd July, 2016, is that this Court would not have jurisdiction under Section 134. 9. This Court has considered the rival submissions. First and foremost fact is that the Defendant does not dispute most of the pleadings in the plaint. The relevant paragraphs of the written statement are set out below: "3-6. That the contents of the para are matter of record, thus needs no reply. ... 8. That the contents are correct and admitted. It is pertinent to mention that though the plaintiff mark is registered as trademark in ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....distinct essential features. In White Horse Distillers v. Upper Doab and Tatem v. Gaumont, it has been held that the presence of a common element that is not very distinct does not bar the other entities from incorporating the element as part of their trade marks. Therefore, defendant mark is distinguishable from the plaintiff's mark. The subject mark is a wordmark with distinct logo, font and style - an original creation by the defendant. Hence, the mark on whole is distinct and is capable of stand out. As such, it does not develop any confusion among the public, who can easily distinguish applicants mark from that of plaintiff's. Moreover, granting injunctions the court shall consider the reputation of the plaintiff's in their own particular filed, nature of goods or services in defendants are dealing and the nature of the goods in which the plaintiff are dealing and propose to deal and whether their filed of operation are likely to overlap. The same was held in "LRC V Lilla Edets [1973] RPC 560 AT 563,567". Also, in Chandra Bhan v Bharat Sewing AIR 1982 DEL 230 AT 232 upheld that "Where the plaintiffs' and defendants customers are different, interlocutory injunct....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ff are also not denied. The various write ups and articles about the Plaintiff are "admitted to the extent which are matter of record". The existence of www.exxonmobil.com and the various actions taken by the Plaintiff against the Defendant and the third parties for use of the word 'EXXON' and 'EXON' are stated to be a "matter of record". The correspondence which ensued, including the issuance of the cease and desist letter and the Defendant's website are all not denied. The various social media platform links of the Defendants are also not denied. It is stated by the Defendant that it booked the domain name www.exoncorp.com on 5th May, 2014. The fact that the Plaintiff opted to reach out to the Defendant to resolve the dispute is also not denied. The telephonic conversation with one of the Directors of the Defendant is also admitted. It is claimed that the Defendant was busy in taking care of his child and hence could not revert to the Plaintiff. 11. Thus, broadly, while admitting the case of the Plaintiff on most of the fronts, the arguments raised by the Defendant are: a) lack of territorial jurisdiction; b) that the logo used by the Defe....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... orders have been placed on record. In some orders passed by the Calcutta High Court and the Delhi High Court, 'EXXON' mark of the Plaintiff has been declared as a 'well-known mark'. 14. The effect of a mark being declared as a well-known mark is that it is entitled to protection even in respect of unrelated goods and services. The definition of a well-known trademark under Section 2(1) (zg) reads as under: "(zg) ? "well known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services." From the above definition it is clear that upon being declared as a well-known mark, even if the mark is used in respect of other goods or services for which it may not be registered or for which the Plaintiff is not using the same, the mark is liable to be protected. Thus, the obj....
X X X X Extracts X X X X
X X X X Extracts X X X X
....n Section 134 of the Trademarks Act, 1999 as in the case of Exxon Mobil Corporation & Anr. v. P.K. Sen (supra). It is based on Section 20 CPC on the ground that the Defendant is offering services through an interactive website and is promoting its business and services through various social media platforms. On the said social media platforms, the Defendant claims to be openly offering services in all parts of India. Thus, according to the Plaintiff, the cause of action has arisen within Delhi. 16. The judgment relied upon by the Defendant i.e. Exxon Mobil Corporation & Anr. v. P.K. Sen (supra), was based on a completely different fact situation. In the said suit, the Plaintiff had claimed rights to sue on the basis of Section 134(2) of the Trademarks Act, 1999. The judgment in Surendra Kumar Maingi v. Dodha House, AIR 1998 All 43 also related to Section 105 of the Trade and Merchandise Marks Act, 1958 and Section 62 of the Copyright Act, 1957. In Gupta Bros Conduit Pipe Manufacturing Co. v. Anil Gupta, 2001 (24) PTC 159 (Del), the Plaintiff could not show any document to establish that the Defendant was carrying on business in Delhi. Under those circumstances, the Court had hel....
X X X X Extracts X X X X
X X X X Extracts X X X X
....orporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of....
X X X X Extracts X X X X
X X X X Extracts X X X X
..... For the purposes of a passing off or an infringement action (where the plaintiff is not located within the jurisdiction of the court), the injurious effect on the Plaintiff's business, goodwill or reputation within the forum state as a result of the Defendant's website being accessed in the forum state would have to be shown. Naturally therefore, this would require the presence of the Plaintiff in the forum state and not merely the possibility of such presence in the future. Secondly, to show that an injurious effect has been felt by the Plaintiff it would have to be shown that viewers in the forum state were specifically targeted. Therefore the 'effects' test would have to be applied in conjunction with the "sliding scale" test to determine if the forum court has jurisdiction to try a suit concerning internet based disputes. ... 45. This court holds that in order to prima facie establish that the Defendant purposefully availed of the jurisdiction of this court, the Plaintiff would have to show that the Defendant engaged in some commercial activity in the forum State by targeting its website specifically at customers within that State. This is co....
X X X X Extracts X X X X
X X X X Extracts X X X X
....Collection, particularly to paras 2, 6, 8, 17, 18 and 22 to 25 thereof, where an order of return of plaint was set aside and it was inter alia held that with the advent of e-commerce, the expression 'carries on business' at a certain place, has been impacted and is much wider than the other expressions used in Section 20 of the CPC. ... 24. In continuation of what was held by the Division Bench in World Wrestling Entertainment, Inc., I may state that the mode of booking/reserving rooms and other facilities particularly of dining therein, in hotels/resorts/spas, has changed over the years with maximum number of bookings/reservations being made through such third party websites, so much so that the rates available on the third party websites are also found to be considerably lower than the rates offered through traditional mode of agents or offices in major cities. Judicial notice can be taken of the fact that much of the volume of businesses of hotels is now through such third party websites, in comparison to the business through direct bookings and/or through travel agents. Thus, if the Courts at Delhi will have jurisdiction over subject matter of suit owi....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade" any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM Act is as under: "(2) In this Act, unless the context otherwise requires, any reference - ... (c) to the use of a mark- (i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; (ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;" 20. This provision stipulates that use of a mark in relation to goods could be either in any physical or in ....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... use on business papers [Section 29(6)(d)]; * use in comparative advertising which is detrimental to distinctive character or repute of the mark [Section 29(4)] * use in advertising [Section 29(7)]. * Applying a mark in a territory for purposes of export of goods/services [Section 56(1)] * Use by which a trade connection is created between the user and the proprietor [Section 56 (2)]. 23. Thus, when Section 20 of the CPC provides that a suit could be filed in any place where the cause of action arises, in a suit involving rights in a trademark, cause of action arises in each and every place where there is any form of use of the said mark. Principles which apply to infringement, actions to determine 'use' would equally apply to passing off actions." 22. In the present case, the Defendant's website and links on social media platforms which existed when the Plaintiff filed the present suit clearly show that the Defendant claimed to be carrying on business throughout India. The extract of the Defendant's website is set out herein below: "Overview Exon Corp is a leading Information Technology Solutions pro....
X X X X Extracts X X X X
X X X X Extracts X X X X
....hat it only has 2-10 employees. However, the representations made by the Defendant that it provides services throughout India continues to exist even today. 26. The nature of IT services is such that the same can be provided from any corner of the globe. The question is whether the impugned infringing mark is being used within the territorial jurisdiction of this Court. The above facts go to show that the Defendant is not limited in its business operations only to Chennai or to the state of Tamil Nadu, but it has been marketing its services to Indian and International customers. The Defendant has not only reached out through its website but through its YouTube channel, Twitter and other platforms. Thus, there is clear use of the mark within the territorial jurisdiction of this Court. 27. Under these facts and circumstances, the objection as to territorial jurisdiction is not maintainable and is liable to be rejected as the Defendant is clearly offering its services in Delhi and the cause of action, inter-alia, has arisen in Delhi. 28. Coming to the question of relief, the Defendant's written statement almost fully admits to the case of the Plaintiff. It admits the exis....