Exxon Mobil Corporation vs Mr. Sajal Banik Trading As M/S Maa ...
2022 Latest Caselaw 3281 Del

                                      Neutral Citation Number : 2022/DHC/005380

                  $~11 (Original)
                  *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                  +        CS(COMM) 117/2022
                           EXXON MOBIL CORPORATION             ..... Plaintiff
                                        Through: Mr. Sumit Wadhwa and Ms.
                                        Saloni Chowdhry, Advs.

                                              Versus

                           MR. SAJAL BANIK TRADING AS
                           M/S MAA USHA MOBIL HOUSE       ..... Defendant
                                         Through: None
                           CORAM:
                           HON'BLE MR. JUSTICE C.HARI SHANKAR

                                           JUDGMENT(ORAL)

% 07.12.2022

1. This suit, instituted by Exxon Mobil Corporation against the defendant Sajal Banik Trading, seeks a decree of permanent injunction, restraining the defendant from using the trademark "MOBIL" as part of the "M/S MAA USHA MOBIL HOUSE", which is the trade name under which the defendant carries on its activities.

Plaint

2. The plaintiff claims to have been incorporated on 15th August 1882 as Standard Oil Company in New Jersey, USA. On 1st January 1973, the company changed its name as Exxon Corporation. Consequent to merger of Exxon Corporation with Mobil Corporation and its affiliates on 30th November 1999, the plaintiff company Exxon Mobil Corporation came into being. The plaintiff/its predecessors claim to have been trading under the word "MOBIL" since 1966.

3. Apropos the word "MOBIL", the plaint asserts that the Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

trademark "MOBIL" was coined and adopted as a trademark by the predecessor company of the plaintiff in 1899 in respect of petroleum and related products. It is further averred, in the plaint, that the trademark "MOBIL" was registered in India as early as in 1942 in relation to, inter alia, fuel oils, lubricating oils and greases, industrial oils (except edible and essential oils) and industrial greases included in Class 4 to the Schedule of the Trademarks Rules. The plaint has provided a tabular depiction of the various registered trademarks of the plaintiff, in para 7, thus:

                     S.No. Registration          Trade Mark         Class    Registered Renewed
                                Number                                          Since        Upto
                        1.         4933          MOBIL OIL            4      09/09/1942 09/09/2026

Goods: Illuminating oils, burning oils; diesel oils and oils for operating internal combustion engines, fuel oils, lubricating oils and greases; motor spirit; dust laying materials and substances; industrial oils (except edible and essential oils); industrial greases included in class 4

2. 131604 MOBIL 4 14/11/1947 14/11/2024 Goods: Illuminating oils, burning oils, ·diesel oils, and oils for operating internal combustion engines fuel oils, lubricating oils and greases, motor spirit, dust laying materials and substances, industrial oils (except edible and essential oils), industrial greases included in Class 4; candles, tapers, nightlights and wicks included in Class 4

3. 131650 MOBILUBE 4 19/11/1947 19/11/2024 Goods: Oils and greases ( other than edible oils fats and essential oils) and fuels (including motor spirits) made from petroleum, with and without the admixture of animal, vegetable and mineral substances, for industrial, illuminating burning, power and lubricating purposes; and candles

4. 285078 MOBILGEAR 4 30/12/1972 30/12/2027 Goods: Lubricants for gears being parts of industrial engines and machinery

5. 726271 MOBILFLUID 4 04/07/1996 04/07/2026 Goods: Lubricating oils

6. 726277 MOBILTAC 4 04/07/1996 04/07/2026 Goods: Gear lubricating oils

7. 726279 MOBILTHERM 4 04/07/1996 04/07/2026 Goods: Industrial lubricating oils

8. 726281 MOBILUX 4 04/07/1996 04/07/2026 Goods: Industrial greases

9. 1320021 4 10/11/2004 10/11/2024

Goods: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminates; candles, wicks Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

10. 1320791 4 17/11/2004 17/11/2024 Goods: Industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminates, candles, wicks

4. All the aforesaid marks are stated to have been renewed from time to time and presently subsisting as on date.

5. The plaint further avers that the trademark "MOBIL" has been in extensive use worldwide since 1899 in respect of lubricating oils and greases for automobile engines and gears. In India, the said mark, it is claimed, has been in extensive use since 1907.

6. The plaintiff claims to be selling its products in India under the trademark of "MOBIL" through its subsidiary Exxon Mobil Lubricants Pvt Ltd.

7. In order to evince the goodwill and standing that it commands in the market, the plaintiff has provided, in para 11 of the plaint, its annual sale figures from the years 2003 to 2020:

                           Year                               Sales (barrels per year)
                           2003                                       136,860
                           2004                                       122,597
                           2005                                       137,385
                           2006                                       101,248
                           2007                                       111,527
                           2008                                       145,183
                           2009                                       149,894
                           2010                                       160,804
                           2011                                       174,519
                           2012                                       176,200
                           2013                                       175,823
                           2014                                       187,709
                           2015                                       194,324
                           2016                                       218,202
                           2017                                       244,485
                           2018                                       306,191
                           2019                                       319,077
Signature Not Verified
                           2020                                       243,046
Digitally Signed
By:KAMLA RAWAT

Signing Date:08.12.2022
11:48:58

Neutral Citation Number : 2022/DHC/005380

8. The plaintiff also claims to be owning and maintaining the websites i.e. websites www.mobil.com, www.exxonmobil.com, www.mobil.co.in and www.mobil.in, which set out the details of the plaintiff and its activities.

9. The plaint also provides details of earlier orders passed by this Court in which the plaintiff's marks have been protected by grant of injunctions against the defendant in those cases. It is further pleaded, in the plaint, that "MOBIL" forms a distinctive part of the plaintiff's trading style and corporate name. The plaintiff also claims to have the following four wholly owned subsidiaries in India:

(a) ExxonMobil Lubricants Private Limited, incorporated in the year 1994;

(b) ExxonMobil Company India Private Limited, incorporated in the year 1996;

(c) ExxonMobil Gas (India) Private Limited incorporated in the year 2003;

(d) ExxonMobil Services and Technology Private Limited incorporated in the year 2015.

10. The brands MOBIL, EXXONMOBIL, MOBIL 1, MOBILUBE, MOBIL SUPER and MOBIL SUPER MOTO under which the plaintiff deals with its goods are stated to have acquired tremendous goodwill in the market and to be associated exclusively with the plaintiff and its affiliates, distinguishing the plaintiff's products from the products of others. As such, the plaint essentially avers that the "MOBIL" appellation, when used as a mark, has become distinctive and a source identifier of the plaintiff and its products.

Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

11. The plaintiff is aggrieved by the use, by the defendant, of the word "MOBIL" as a part of the defendant's trade name "M/S MAA USHA MOBIL HOUSE". It is also alleged that the said mark is prominently displayed on the signboards and other advertising hoardings of the defendant. Photographs, supporting the assertion, have also been provided with the plaint.

12. In these circumstances, on 1st November 2021, the plaintiff issued a notice to the defendant calling upon the defendant to seize and desist from using the word "MOBIL" as part of its trade name and to remove, from references to its trade name, the word "MOBIL", wherever it appeared on the internet, including on third party websites.

13. Alleging, therefore, that the use by the defendant of the word "MOBIL" as part of the trade name under which it carries on its activities constitutes infringement of the plaintiff's registered trademark within the meaning of Section 29 of the Trademarks Act, 1999, the plaintiff has, by means of the present suit, sought (i) a decree of permanent injunction against the defendant from using the word "MOBIL" as part of its trade name, either by itself or in conjunction with any other name or mark so as to cause infringement of the plaintiff's registered "MOBIL" mark/marks, (ii) a direction to the defendant to delete from all its domain names and references on its own as well as on third party websites of the word "MOBIL", as part of the domain names, (iii) a direction to the defendant to withdraw any application filed by it for registration of the mark/trade name "M/S MAA USHA MOBIL HOUSE" or any other identical/deceptively similar mark/trade name, (iv) delivering up, to the plaintiff, of all products, labels, stickers, signs, stationery, business cards, prints, Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

packages, plates, dyes, wrappers, receptacles, materials and advertisements in its possession or under its control, bearing the trade mark/trade name "M/S MAA USHA MOBIL HOUSE" or "MOBIL" by itself or in conjunction with any other word, apart from other reliefs.

14. While issuing summons in the suit on 18 th February 2022, this Court granted an ex parte ad interim injunction in favour of the plaintiff and against the defendant in the following terms:

"26. Upon hearing, this Court finds that a prima facie case to grant interim injunction in favour of plaintiff and against the defendant is made out. Accordingly, till further orders, defendant, its successors, franchisees, licensees, distributors, representatives, assignees, agents, and anyone acting for and/or on its behalf are restrained from using the mark MOBIL as part of the impugned trade name M/S MAA USHA MOBIL HOUSE and/ or any other mark deceptively similar to the plaintiffs trade mark MOBIL either by itself or in conjunction with any other word and/or in any manner whatsoever amounting to infringement of plaintiffs trademark and/or passing off goods."

15. Additionally, an Advocate of this Court was appointed as the Local Commissioner/Court Commissioner to visit the premises of the defendant and carry out search and seizure of allegedly infringing goods, associated moulds, cartons, packaging material, advertisement material, labels, logos, stationery, bills/invoices, stickers, publicity material, other material etc. The commission, as directed, was executed.

16. No written statement has been filed by the defendant by way of response to the suit and no response has been filed to any of the applications filed by the plaintiff, including the application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC). The defendant has remained continuously absent despite Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

service of summons in the suit and despite having admittedly been involved, after issuance of summons to it, in attempts to settle the dispute with the plaintiff, which have not fructified.

17. In these circumstances, the right of the defendant to file the written statement was closed and the defendant was proceeded ex parte on 3rd November 2022.

18. The defendant is unrepresented today as well.

19. In such circumstances, coordinate Benches of this Court have, invoking, for the purpose, the provision of Order VIII Rule 10 of the CPC1, held in, inter alia, Aktiebolaget Volvo v. Hari Satya Lubricants2, The Indian Performing Right Society Ltd v. Gauhati Town Club3, United Coffee House v. Raghav Kalra4 and Sun Pharmaceutical Industries Ltd v. Punam Devi5 that the suit could be decreed straightaway without requiring the plaintiff to file an affidavit in evidence in support of its stand.

20. The word "MOBIL" has no etymological significance. It is, therefore, a term coined by the plaintiff and used by the plaintiff as well as its predecessor-in-interest since 1899. It stands registered, in India, by itself as a word mark as well as device marks in various forms as already captured in the table contained in para 3 supra. The

10. Procedure when party fails to present written statement called for by Court. - Where any party from whom a written statement is required under rule 1 or rule 9 fails to present the same within the time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgment against him, or make such order in relation to the suit as it thinks fit and on the pronouncement of such judgment a decree shall be drawn up:

Provided further that no Court shall make an order to extend the time provided under Rule 1 of this Order for filing of the written statement.

2016 SCC OnLine Del 5787 : 2016 (234) DLT 524

2013 SCC OnLine Del 382 : 2013 (134) DRJ 732

2013 SCC OnLine Del 2133 : (2013) 55 PTC 414

2022 SCC OnLine Del 1838 Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

plaintiff is, therefore, clearly entitled to proprietorial rights in respect of the mark "MOBIL", either when used by itself or in conjunction with any other party as part of the mark.

21. Any such use, as the plaint correctly suggests, would tantamount to infringement of the plaintiff's registered "MOBIL" mark within the meaning of sub sections (1) and (2) of Section 29 of the Trade Marks Act6.

22. All assertions in the plaint are, on facts, deemed to have been admitted, as there is no written statement filed in response to the plaint, and the defendant has not chosen to enter appearance.

23. In that view of the matter, following the precedent set by this Court in the decisions cited in para 19 supra, the plaintiff is entitled to the reliefs claimed in the plaint.

24. Accordingly, suit stands decreed in the following terms:

(i) The defendant is injuncted, permanently, from using the mark "MOBIL" as part of the impugned trade name "M/S MAA USHA MOBIL HOUSE" and/or any other trade

29. Infringement of registered trade marks. -

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of -

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58 Neutral Citation Number : 2022/DHC/005380

name/domain name, which is identical or deceptively similar to the plaintiff's registered "MOBIL" marks in respect of its goods or services.

(ii) There shall be a decree of mandatory injunction, directing the defendant to delete all references to the trademark "MOBIL", from its third party listings as set out in prayer (ii) as well as any third party listing on which the defendant's goods or services are reflected.

(iii) The defendant is directed to deliver up, to the plaintiff, all the goods seized by the Local Commissioner and kept with the defendant under Superdari.

25. The plaintiff shall be entitled to actual costs in the suit. For computation of costs, let the matter be listed before the competent Taxation Officer in the Registry of this Court on 21st December 2022.

26. This decree shall be binding on the defendant, as well as its partners, successors, franchisees, licensees, distributors, retailers, representatives, assignees, agents and anyone acting for and/or on its behalf.

27. The suit stands decreed accordingly. The Registry is directed to draw up a decree-sheet in terms of the judgment passed today.

C.HARI SHANKAR, J DECEMBER 7, 2022/rb Signature Not Verified Digitally Signed By:KAMLA RAWAT

Signing Date:08.12.2022 11:48:58