Delhi High Court

Exxon Mobil Corporation & Anr vs Shailesh H Mehta & Anr on 14 July, 2016

$~11
*    IN THE HIGH COURT OF DELHI AT NEW DELHI

+      CS(OS) 2562/2015 & IAs No.17826/2015 (u/O 39 R-1&2 CPC),
       23396/2015 (of defendants u/O 39 R-4 CPC), 494/2016 (u/O 39 R-2A
       CPC), 3582/2016 (u/S 124 of Trademarks Act) & 6735/2016 (of
       defendants for recall of order dated 18th March, 2016)

       EXXON MOBIL CORPORATION & ANR             ..... Plaintiffs
                    Through: Ms. Anuradha Salhotra, Mr. Sumit
                             Wadhwa and Ms. Abhilasha Jindal,
                             Advs.

                                Versus

    SHAILESH H MEHTA & ANR                     ..... Defendants
                  Through: Mr. Rodney D. Ryder, Mr. Ravi
                            Goyal and Mr. Raghuvendra P. Singh,
                            Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
                          ORDER

% 14.07.2016

1. The two plaintiffs Exxon Mobil Corporation and Exxonmobil

Lubricants Private Limited have sued the two defendants Mr. Shailesh H.

Mehta and Exon Solutions Private Limited for permanent injunction

restraining infringement of trademark 'EXXON' of the plaintiffs by the

defendants by using and adopting the trade name / trademark 'EXON' and

for ancillary reliefs.

2. The suit was entertained and vide ex-parte ad-interim order dated 31st

August, 2015, the defendants were restrained from using the trademark

'EXON' or any other mark deceptively similar / identical to the plaintiffs'

registered trademark 'EXXON' and from using the domain name 'EXON' in

relation to their goods/products/services and in relation to their corporate

name. However, two months time was given to the defendants to do the

needful.

3. The defendants filed IA No.23396/2015 under Order XXXIX Rule 4

of Code of Civil Procedure, 1908 (CPC) and though notice thereof was

issued but the ex-parte ad-interim injunction not vacated.

4. The plaintiffs filed IA No.494/2016 under Order XXXIX Rule 2A

CPC contending that the defendants had not complied with the ex-parte ad-

interim order aforesaid. The said application came up before this Bench on

18th March, 2016 when the defendants admitted having not discontinued the

use of the mark 'EXON' as part of their corporate name and sought to justify

the same by contending that they had applied under Order XXXIX Rule 4

CPC. Observing that since ex-parte ad-interim order had continued, the

defendants were required to comply therewith, the personal presence of the

defendant No.1 was directed before this Court and the defendants were

restrained from carrying on business in the name of 'Exon Solutions Private

Limited'.

5. The defendants filed IA No.6735/2016 seeking recall of the order

dated 18th March, 2016 and notice whereof was issued.

6. The counsels have been heard on the pending applications.

7. It is the contention of the counsel for the plaintiffs (i) that the name

'EXXON' which is coined/invented by the plaintiffs was adopted by the

plaintiffs as far back as in the year 1967; (ii) that the plaintiff No.1 has been

in the list of Fortune 500 Companies since the year 1980; (iii) that the

plaintiff No.1 has trademark registration in as many as 160 jurisdictions all

over the world and though the plaintiffs are primarily in the business of

petroleum and gas but have also diversified into retail stores and rubber

products and have as many as 39 registrations in India; (iv) that the plaintiff

No.1 has a subsidiary in India since 1985 and earlier also had a presence in

India in the name of 'ESSO'; (v) that though the defendants are in the

business of conducting online examination which is not the business of the

plaintiffs but the use by the defendants of the name / trademark 'EXON'

which is similar in pronunciation to the trademark 'EXXON' of the plaintiffs

will result in dilution of the plaintiffs trademark.

8. Per contra, it is the contention of the counsel for the defendants (a)

that the defendant No.1 had commenced carrying on business of conducting

online examination in the year 2001 and got incorporated the defendant No.2

Exon Solutions Private Limited in the year 2008 and as per the

Memorandum of Association of the defendant No.2 Company, it can carry

on only the business of conducting online examination and online tests and

has been carrying on the said business only; (b) that the business of the

defendants is separate and distinct from the business of the plaintiffs; (c) that

the defendants have registration in Classes 9 & 16 since the year 2005 with

effect from the year 2002 and which registration were not opposed by the

plaintiffs; (d) that the defendants are willing to give an undertaking to this

Court not to carry on any other business and not to use the trade name /

trademark 'EXON' for any other business; (e) that though the defendants

admit that the plaintiffs and their trademark 'EXXON' is famous and

powerful but that does not entitle the plaintiffs to so restrain the defendants;

(f) that the plaintiffs have already caused immense loss to the defendants by

obtaining ex-parte ad-interim order against the defendants.

9. Since the defendants also claim a registered trademark, I have

enquired from the counsel for the plaintiffs as to how the defendants can be

held to be guilty of the infringement under Section 29 of the Trademarks

Act, 1999.

10. The counsel for the plaintiffs has contended that the plaintiffs have

prior registration also under Classes 9 & 16 and in fact the Registrar of

Trademarks ought not to have granted registration of identical trademark in

favour of the defendants. Reliance is also placed on Section 29(4)(b) & (c)

of the Trade Marks Act, 1999 and it is contended that the registered

trademark of the plaintiffs has reputation in India.

11. I have drawn the attention of the counsel for the defendants to the fact

that India now has a Petroleum University which till recently was located at

Delhi though is now stated to have shifted to Dehradun, Uttrakhand and have

enquired whether not the presence of the defendants, even if in the field of

conducting online examination and online testing, is likely to convey an

impression that the defendants have the support of the plaintiffs.

12. The counsel for the defendants and the defendant No.1 present in

person have stated that the business / vocation of the defendants is a highly

skilled one and the defendants are known for their skill set and have large

corporates as their clients.

13. The counsel for the plaintiffs has also contended that the defendants

though claim registration in Classes 9 & 16 but are not using the trademark

with respect to the said Classes and are instead using the trademark as stated

by them also, for rendering services.

14. Classes 9 & 16 are as under:

"9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operate apparatus; cash registers, calculating machines, data processing equivalent and computers; fire extinguishing apparatus.

.......

16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book-binding material; photographs; stationery; adhesives for stationery or household purposes; artists, materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers type; printing blocks."

15. On enquiry, as to in which Class the business as carried on by the

defendants would fall, the counsel for the plaintiffs has drawn attention to

Class 41 under the head 'Services' which is as under:

"41. Education; providing of training; entertainment; sporting and cultural activities."

16. The counsel for the defendants on enquiry as to how the business of

conducting online examination and online tests for corporate clients, which

the defendants claim to be carrying on, falls in Classes 9 & 16 in which the

defendants have registration has not been able to give a proper answer except

for stating that the defendants devised the software for conducting the online

examination. The defendant No.1 present in person also states that the

defendants also sell the software to the clients who want to conduct the

online examination themselves. However, no pleadings to the said effect are

being shown.

17. On enquiry, as to why the defendants have chosen the name 'EXON',

it is stated the word 'EXON' had been adopted as an abbreviation for

'Examination Online'. On enquiry as to under what name the business was

carried on from 2001 to 2008, the defendant No.1 states that he has another

company and was carrying on the subject business though in the name of

'EXON' but as a division of that other company.

18. On the arguments aforesaid, particularly when there is an admission,

of the trademark of the plaintiffs being famous and powerful, I am of the

prima facie view that a case for continuation of the injunction orders as have

already been granted and as recorded above, is made out. However, in an

endeavour to settle the matter, I have enquired from the defendant No.1 that

if the defendant No.1 settles, the plaintiffs can be directed to bear the costs of

affecting the changes which the defendants will have to make and a time

period of six months can be granted to the defendants to affect the changes,

so that the defendants have ample time to inform their customers / clients of

the impending change and can in the said time use both the names. I am also

of the opinion that in the nature of the business which the defendants are

carrying, it is the skill of the defendants, as the defendants themselves have

claimed and not the brand of the defendants which would be relevant. Prima

facie it also appears that the registration of the defendants will not come to

the rescue of the defendants, as the business which the defendants claim to

be carrying on at least at this stage cannot be said to be the business in the

Classes in which the defendants claim registration.

19. However, the defendant No.1 states that since the turnover of his

business ranges Rs.6-8 crores, he expects Rs.4-5 crores from the plaintiffs

for stopping using the said name.

20. The demand made by the defendant No.1 indicates that the attempt of

the defendant No.1 is to extract money by adopting the trademark of the

plaintiffs, though for a different business. The contention that the words

'EXON' and 'EXXON' are different cannot be accepted. A customer of the

plaintiffs may not have paid attention whether the brand of the plaintiffs uses

the alphabet 'X' singly or in double. What stays in the mind would be the

word 'EXXON', the pronunciation of which remains the same, irrespective

of whether the alphabet 'X' is used singly or doubly.

21. Accordingly the ex-parte ad-interim orders dated 31st August, 2015

and 18th March, 2016 are made absolute.

22. IA No.17826/2015 of the plaintiff under Order XXXIX Rules 1&2

CPC is allowed in the said terms and IA No.23396/2015 of the defendants

under Order XXXIX Rule 4 CPC is dismissed.

23. IA No.6735/2016 of the defendants is also disposed of in above terms.

24. On enquiry, it is stated that the defendants have since complied with

the order dated 31st August, 2015 but are continuing to use the company

name and no steps for change thereof have been taken.

25. Though the defendants are in violation of the order dated 31 st August,

2015 but it is deemed appropriate to dispose of IA No.494/2016 under Order

XXXIX Rule 2A CPC by granting yet further time of fifteen days to the

defendants to initiate steps to have the name of the defendant No.2 company

changed, so that the word 'EXON' therefrom is deleted. If the steps are so

initiated, the Registrar of Companies concerned is requested to expedite the

change of name and to ensure that the same is done within a period of three

months from the date of making of the application. The plaintiffs shall take

all steps for ensuring that the name is so changed within the said time and

will comply with all the requirements of the Registrar of Companies. If the

defendants do not take the steps in this regard within the time aforesaid, the

question of orders to be passed for violation of the orders will be considered.

26. IA No.494/2016 under Order XXXIX Rule 2A CPC is disposed of on

above terms.

27. On the pleadings of the parties, the following issues are framed:

(I) Whether the use by the defendants of the trademark 'EXON' as

part of their trade name and for their business amounts to infringement

of the registered trademark of the plaintiffs? OPP

(II) Whether the registration obtained by the defendants of the

trademark 'EXON' is invalid? OPP

(III) If the above issues are decided in favour of the plaintiffs, to

what reliefs, if any are the plaintiffs entitled to, including of damages

and against which of the defendants? OPP

(IV) Relief.

28. No other issue arises or is pressed.

29. The plaintiffs have also applied under Section 124 of the Trademarks

Act pleading that the plaintiffs, before the institution of the suit have

instituted proceedings for rectification of the Register of Trademarks in

relation to the defendants mark and the said proceedings are pending before

the Registrar of Trademarks.

30. The counsel for the defendants also admits the same.

31. Accordingly, in accordance with Section 124(1)(b)(i) of the

Trademarks Act, the proceedings in the present suit are stayed pending the

disposal of the proceeding before the Registrar of Trademarks.

32. Liberty is given to the counsels to apply for revival, as and when need

arises.