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TMI Blog2019 (7) TMI 1640X X X X Extracts X X X X X X X X Extracts X X X X ..... ation 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. dollars and in the U.S.A., the average sales of EXXON ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as 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 permitted to serve the Defendant by email. Defendant to put in a reply to the interim in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ran 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 approx. 160 jurisdiction of the world, but the same wordmark as "Exxon" is still not registered as trademark by the Plaintiff's compa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lement 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ties 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 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 compan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ction 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 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 petrole ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 held that 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 the subordinate office 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 ou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... " 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 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 wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... orm 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 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 in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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