Exxon Mobil Corporation Vs. Exoncorp Private Limited - (High Court of Delhi) (16 Jul 2019)
A well-known mark is entitled to protection even in respect of unrelated goods and services
Intellectual Property Rights
The present suit is filed by the Plaintiff - Exxon Mobil Corporation against the Defendant - Exoncorp Private Limited seeking permanent injunction restraining infringement of trademark, passing off, delivery up and rendition of accounts. The suit concerns the trademark 'EXXON' and the use of the mark 'EXON' by the Defendant as part of its corporate name and trading style for rendering information technology services.
The Plaintiff commenced its business in 1882 and adopted the word 'EXXON' as its trademark since 1967 in the U.S.A. It changed its corporate name from Standard Oil Company of New Jersey to Exxon Corporation in 1972 and ultimately 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.
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.
Further, 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) of Trademarks Act, 1999 makes it 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 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.
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.
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, has arisen in Delhi.
Thus, 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. 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. The stand of the Defendant that, the services are distinct and different from that of the Plaintiff cannot 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. In view of admissions made by the Defendant and the lack of any plausible defence, the suit is liable to be decreed.
Tags : INFRINGEMENT INJUNCTION GRANT