TMI Blog2019 (7) TMI 1640X X X X Extracts X X X X X X X X Extracts X X X X ..... at 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 c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nMobil 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. dollars and in the U.S.A., the average sales of EXXON branded fuel - related products and services for 2002-2014 are over 18 billion U.S. dollars. The Plaintiff's R D centre is located in Bangalore from where it provides business and technical support services for its global operations. The advertising figures of the Plaintiff have also been mentioned in the plaint. The Plaintiff has consistently been amongst the top five Fortune 500 companies in the world since 1967. The current ranking in 2018 of the Plaintiff Company is at serial no. 2. The Plaintiff's business and operations are supported by its website www.exxonmobil.com. It has constantly taken actions to protect the 'EXXON' mark. Various suits have been filed seeking protection against the use of the mark 'EXXON' or 'EXON'. 4. The Plaintiff came across the Defendant - M/s. Exoncorp Technology Solutions, which was operating its website - www.exoncorp.com, sometime in November 2 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... m 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 permitted to serve the Defendant by email. Defendant to put in a reply to the interim injunction application within 10 days of service. 5. Thus, no ad-interim order was granted as the Court had perused the claim of the defendant that it had 500-1000 employees, and summons/notices were issued. On 3rd April, 2019, time was granted to the Defendant to file its written statement and parties were directed to address submissions for disposal of the suit under Order XIII A CPC as introduced by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015. 6. The Defendant has filed its written statement. The primary objections/defences raised by the Defendant are - i) that this Court does not have territorial jurisdiction; ii) that the mark 'Exoncorp' has been coined from a scientific term; iii) that the Plaintiff's wordmark Exxon is not registered in Class 42 which relates to IT services and hence on the above ground, it is submitted th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... reply. ... 8. That the contents are correct and admitted. It is pertinent to mention that though the plaintiff mark is registered as trademark in approx. 160 jurisdiction of the world, but the same wordmark as Exxon is still not registered as trademark by the Plaintiff's company and is under objection vide application no. 3321481 in Class 42. That plaintiff's have provided the list registration of mark EXXON , wherein non of the registration is done under class 42 in which defendant mark lies. Moreover, the defendants claims the word EXONCORP as a whole and in entirety. It is additionally submitted that a company under the name Exxon Electricals private limited having Registered address at Delhi and incorporated in the 1986 is running its business since 33 years with a wordmark exxon and not an single objection have been taken with respect to the same. ... 10. That the contents are matter of record, needs no reply. ... 12. That the contents are matter of record. 13. That the plaintiff through its subsidies are functioning in different parts of India, rest contents are matter of record. 14. That the contents are matter of record. ... 1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aintiffs' and defendants customers are different, interlocutory injunction may not be granted. 24. That the letter to Ms. Sivapriya through registered post was received undelivered for the reason the Ms. Sivapriya was expecting a child was in her last weeks and was at her cousin's place which was about 2 hours away from the office and was on leave. 25. That the contents are admitted that communications was done with Mr. Selvarathinam Murugaiyan but no such grave apprehension was shown, the reason he could not properly communicate due to the fact that his wife namely Ms. Sivapriya was expecting in a weeks time and various medical complexities were prevailing that point of time. 26. That the plaintiff did not received any response in a month of January on account of ill health of Ms. Sivapriya as she delivered a child on the last week of December, 2018. The non-responsiveness by the defendant was not deliberate or intentional. 27. That plaintiff was fully occupied in caring of his child as her wife was in not a stage to perform any task properly. Thus, there were genuine reasons existed for the same. 10. The Defendant in fact admits the origin of the Plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n; b) that the logo used by the Defendant is not deceptively similar; c) that the Plaintiff's wordmark Exxon is not registered in Class 42; d) that the Plaintiff and the Defendant's area of business and services are different. 12. A perusal of the documents filed shows that the Plaintiff company has filed several actions seeking protection of the mark 'EXXON'. The Plaintiff has been able to successfully obtain injunctions against the mark 'EXON' in respect of oil products, weighing scales, purchase and sales of chemicals, laser engraving, tour and travel, etc. 'EXON LIFE SCIENCES', a third party has been injuncted from using the mark in respect of pharmaceutical products, lab equipments, and scientific operators. The trademark 'EXXONE' has also been injuncted in respect of electric products such as UPS, solar panels, LED lights, etc. The products/services in respect of which the Plaintiff's mark 'EXXON' has been protected include aluminium foils/laminates, packing system, hospitality, auto electrical, engineering services, CAD/CAM programs, website development, training, data entry and IT services, fans, coolers, bat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tected. Thus, the objection of the Defendant that the Plaintiff is in a different area of business and hence the Defendant's mark/name is not liable to be injuncted is therefore untenable. Further, the Defendant Company was incorporated only in 2018. The Plaintiff, though commenced its activities in the area of petroleum and oil, is also providing various other services including business support services and IT services. Thus, the area of business/services of the Plaintiff and Defendant are also not different as is made out to be. The Plaintiff has an Indian subsidiary Exxon Mobil Services and Technology Private Limited which was incorporated in 2015 in India. Prior to that, the Defendant admits that the Plaintiff has been using the mark 'EXXON' in India since 1982. 15. Insofar as territorial jurisdiction is concerned, the Plaintiff, in the present case, claims jurisdiction on various grounds. The paragraph relating to jurisdiction in the plaint is set out herein below: 35. This Hon'ble Court has territorial jurisdiction to entertain and try the present suit on the following grounds - a. The Defendant is primarily offering its services through its website ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat the Court lacks territorial jurisdiction. 17. This Court, in Burger King Corporation v. Techchand Shewakramani Ors., (2018) 253 DLT 93, has clarified the relation between Section 134 of the Trademarks Act, 1999, Section 62 of the Copyright Act, 1957 and Section 20 CPC to hold that Section 134 and Section 62 are in addition to and not in exclusion of Section 20. The relevant portion of the judgment is extracted below: 16. The judgments relied upon by the Defendants i.e. IPRS v. Sanjay Dalia (supra) and Ultra Home (supra) deal with a situation where jurisdiction is claimed only on the basis of Section 134 of the TM Act and Section 62 of the Copyright Act, 1957 (hereinafter, Copyright Act ). In IPRS v. Sanjay Dalia (supra), the Supreme Court was considering a case where the Plaintiff had filed a suit before the Delhi High Court, invoking Section 134 of the TM Act, on the ground that it had a branch office in Delhi. The Supreme Court in the said judgment observed that Section 62 of the Copyright Act and Section 134 of the TM Act provided an additional forum. 17. ... The remainder of the judgment in IPRS v. Sanjay Dalia (supra) primarily deals with and interprets the ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ce but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity S.No. Place of Plaintiff's Principal Office (Sole Office in s.no.1) Place of Plaintiff's Principal Subordin ate/Bran ch Office Place where cause of action arose Place where Plaintiff can addition ally sue under Section 134(2) and Section 62(2) 1 A -- C A 2 A B A A 3 A B B B 4 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erning 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 consistent with the law laid down in Cybersell and reiterated later in Toys R Us. It is also consistent with the application of the 'tighter' version of the 'effects' test which is 'targeting'. In any action for passing off or infringement, it would have to be shown that the Defendant by using its mark intended to pass off its goods as that of the Plaintiff's. A mere hosting of a website which can be accessible from anyone from within the jurisdiction of the court is not sufficient for this purpose. Also a mere posting of an advertisement by the Defendant depicting its mark on a passive website which does not enable the Defendant to enter into any commercial transaction with the viewer in the forum state cannot satisfy the requirement of giving rise to a cause of action in the forum state. Even an i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... onal 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 owing to defendants having interactive website accessible at Delhi and enabling defendants situated outside Delhi to carry on business at Delhi, I see no reason to hold that it will not be so where the defendants, instead of hosting its own interactive website, avails the service of third party websites to carry on business at Delhi. There is no rationale for carving out such a distinction. Certainly, making a booking/reservation, even if the same does not subsequently materialise, is part of carrying on business, inasmuch as the hotel which has taken the booking, even if has not received any payment, being unable to turn back a customer if shows up in pursuance to such booking. The defendants, by showing on their websites, their location to be at Delhi, are also found to be attracting and luring the customers, otherwise intending to visit Delhi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ch 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 any other relation whatsoever to such goods. In Kerly's Law of Trade Mark and Trade Names, use of a mark is meant to include the following: 13-24 It has never been the law that the spurious mark should be actually affixed to the goods, provided it was so used in relation to them as to be calculated to lead to the belief that the goods were designated by the mark. This position is maintained under the 1994 Act which, in section 10(4) and (5), follows the permissive provisions of Article 5(3) of the TM Directive in identifying the various activities which constitute use of a sign for the purposes of the infringement provisions. 13-33 It is an infringement to use an offending sign on business papers on in advertising: this has always been the law. But with the wider definition of use including oral use of a trade mark it will now be an infringement to advertise using ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat 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 provider. Exoncorp had wide range of expertise include Hardware Solutions, Server, Security and Networking Services. We are Technical Service Providers and also provide Quality Training. Description We provide creative, flexible and advanced training to corporate and public throughout India. We focus on advanced technologies. Over the past Ten years we have trained numerous software developers and IT managers of some of the largest companies in the world. Our ever-growing client list just goes to show our dedication to quality and client satisfaction. Exoncorp is a leading provider of quality consultancy services and world class education in the computer networking infrastructure. We specialize in providing premium training in the areas of Internet Technologies (including Convergent Networks using Data/Voice technologies, Wireless/Optical Networks and Storage Area Networks), and Security/Firewalls. We not only provide quality training but also help students in st ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ia, 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 existence of the Plaintiff, its origin, its adoption of the mark 'EXXON', history of use globally and in India, sales figures, publicity figures, etc. The correspondence between the parties is also accepted. In the context of the written statement filed by the Defendant, the objections raised are legal in nature. The question of deceptive similarity in the present case is not a factual issue inasmuch as despite the difference in the logo, the mark 'EXON' is almost identical to 'EXXON'. Use of the 'EXON' logo does not obviate the chances of confusion as the Plaintiff's name also is Exxon Mobil Corporation. The word 'CORP' read with 'EXON' in fact adds to the confusion and can conflict between the Plaintiff and the Defendant. The only question that remains is the nature of services. The Plaintiff's mark EXXON has been declared as a well-known mark in ExxonMobil Corporation Anr. v. Ankit Sukhuja, CS (OS) No. 2078 of 2015. The relevant extract is set out below: ..... 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