2019 (7) TMI 1640 - HC - Indian Laws

Permanent injunction restraining infringement of trademark, passing off, delivery up and rendition of accounts - HELD THAT - The Defendant clearly reached out not only to Indian customers but global customers as well. A perusal of the website extract and the social media platforms representations clearly show that the Defendant was offering its services and IT products across the country and globally - After the filing of this suit, the Defendant has made a mala fide attempt to change the status of its website. Documents have been filed on record to show that the online payment facility has been deactivated. In the LinkedIn page, instead of 501-1000 employees, the Defendant now claims that it only has 2-10 employees. However, the representations made by the Defendant that it provides services throughout India continues to exist even today. 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 - 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. The Plaintiff is entitled to protect the mark EXXON even in respect of IT services. Plaintiff itself has a technology company providing IT services. This issue does not require any evidence to be led. Moreover, the nature of IT services in current day and age are such that the same are used in every area of business whether it is manufacturing of goods or providing services. IT services have become an integral part of every business. Information Technology permeates every walk of life and every business. IT services in that sense are now the foundation of every office and no business can be successfully run without a supporting IT framework. Thus, the stand of the Defendant that the services are distinct and different from that of the Plaintiff is not liable to be accepted. Thus, in view of the various admissions by the Defendant, and the admitted facts relating to the Defendant's website, it is clear that the Plaintiff is entitled to an injunction. Suit disposed off.

Summary

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 ?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.