In a significant Judgement dated August 02, 2024, the District Judge (Commercial Court) New Delhi has decreed a permanent injunction in favour of Exxon Mobil Corporation (hereinafter referred as the Plaintiff or Exxon Mobil), a global energy behemoth, against Mr. Jaydeb Saha (hereinafter referred as the Defendant or Saha), proprietor of M/s Mamani Mobil House, for egregious trademark infringement and passing off. This seminal case underscores the paramount importance of trademark protection and the imperative need for businesses to respect the intellectual property rights of others. The judgment is a testament to the efficacy of trademark law in shielding brand legacy and preventing infringement.
Background
Exxon Mobil, a venerable energy giant with a rich history spanning over a century, had instituted a lawsuit against Saha for unauthorised appropriation of its registered trademark “MOBIL” in his business name. Exxon Mobil had been using the trademark since 1899 and had secured registration in over 163 jurisdictions, including India. The word ‘MOBIL’ has been a predominant part of the corporate name and trading style of the plaintiff and its predecessor since 1966. The plaintiff has been amongst the top ten in the world on the list of Fortune 500 companies. The Trademark MOBIL was coined and adopted in 1899 with respect to petroleum and related products. In India, the trademark ‘Mobil’ was registered as early as 1942 and has otherwise been extensively used by plaintiffs since 1907. The plaintiff is also the owner of several domain names featuring the trademark MOBIL, www.mobil.com, www.exxonmobil.com and www.mobil.co.in, which are the host websites for the domain www.mobil.in. The trademark “MOBIL“ is synonymous with quality and excellence in the energy industry, and Exxon Mobil has invested significant resources in building and maintaining its brand reputation. Saha’s unauthorised use of the mark “MOBIL” was likely to cause consumer confusion and damage Exxon’s reputation.
The Plaintiff’s Case
Exxon Mobil alleged that Saha’s use of the mark “MOBIL” as part of his business name, M/s Mamani Mobil House, was unauthorised and infringed upon its trademark rights, and it was likely to cause confusion among consumers and damage Exxon’s reputation.
Defendant’s Actions
In the 2nd week of November 2021, the plaintiff discovered that the defendant is a proprietorship concern trading as M/s Mamani Mobil House, and Mr. Joydeb Saha is the sole proprietor. The defendant is primarily engaged in the automotive lubricants business and uses Plaintiff’s Mobil marks as part of its trade name, M/s Mamani Mobil House. Despite receiving a cease-and-desist letter from Exxon Mobil, Saha continued to use the mark “MOBIL” without permission. An investigation revealed that Saha’s business was supplying products all over India, including Delhi-NCR.
Plaintiff’s arguments:
– The plaintiff’s testimony remains unchallenged and unrebutted by the defendant, entitling the plaintiff to a decree.
– The plaintiff’s trademarks are registered in 163 jurisdictions, including India, and enjoy huge goodwill and reputation worldwide.
– The defendant’s use of the mark “MOBIL” as part of their trade name is likely to cause confusion and damage the plaintiff’s reputation.
– The Local Commissioner’s report provides evidence of the defendant’s infringing activities.
– The defendant’s use of the impugned marks amounts to fraud and infringement of the plaintiff’s registered trademarks under Sections 29(1), 29(2), and 29(5) of the Trade Marks Act, 1999.
– The plaintiff seeks a permanent injunction restraining the defendant from using the impugned trademarks and damages
Court’s Decision
The court granted a permanent injunction in favour of Exxon Mobil, restraining Saha from using the mark “MOBIL” or any deceptively similar mark as part of their trade name or any other similar mark. The defendant is also restrained from using any other trademark, trade name, domain name, or email address that is identical or deceptively similar to the plaintiff’s “MOBIL” mark. The defendant was also directed to deliver all goods bearing the infringing trademark/label to the plaintiff for destruction and erasure.
The court also awarded exemplary damages of Rs. 1,00,000 (Rupees One Lakh only) in favour of the plaintiff, considering the defendant’s blatant refusal to cease business operations under the impugned trade name despite receiving cease-and-desist letters.
The court’s decision is based on the plaintiff’s successful proof of trademark infringement and the defendant’s failure to contest the claims.
Legal Significance
This case reinforces the principle that trademark infringement can cause irreparable harm to a company’s reputation and goodwill. The court’s decision highlights the importance of trademark protection and the need for businesses to respect the intellectual property rights of others. The ruling serves as a reminder to businesses to prioritise trademark protection to maintain their brand identity and reputation.
Trademark law is designed to protect consumers from confusion and deception. When a business uses a trademark without permission, it can lead to consumer confusion and damage to the reputation of the trademark owner. In this case, Saha’s use of the mark “MOBIL” was likely to cause consumer confusion and damage Exxon’s reputation.
The court’s decision also highlights the importance of registering trademarks. Exxon Mobil had registered its trademark “MOBIL” in over 163 jurisdictions, including India. This registration provided Exxon Mobil with exclusive rights to use the mark and prevented others from using similar marks.
Implications
This ruling serves as a reminder to businesses to respect registered trademarks and avoid unauthorised use. Failure to do so can result in legal action, permanent injunctions, and damages. Companies must prioritise trademark protection to maintain their brand identity and reputation.
Key Takeaways
– Trademark infringement can have serious consequences for businesses.
– Companies must respect the intellectual property rights of others.
– Unauthorised use of registered trademarks can lead to legal action.
– Permanent injunctions can be granted to prevent further infringement.
– Exemplary damages can be awarded to compensate for losses.
Conclusion:
In conclusion, the judgment is a significant victory for trademark protection and brand legacy. The case highlights the importance of respecting intellectual property rights and the consequences of unauthorised use. Businesses must prioritise trademark protection to maintain their brand identity and reputation. The court’s decision serves as a reminder of the efficacy of trademark law in shielding brand legacy and preventing infringement.
Authors: Manisha Singh and Anju Agrawal
First Published by: Lexology here