Delhi High Court
Meta Platforms,Inc. vs Noufel Malol on 6 July, 2022
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 06.07.2022
+ CS(COMM) 499/2020 & IA 8765/2021
META PLATFORMS, INC. ..... Plaintiff
Through: Mr.Pravin Anand, Ms.Vaishali
Mittal, Mr.Siddhant Chamola,
Mr.Shivang Sharma, Advs.
(Mobile-9999052646)
versus
NOUFEL MALOL & ANR ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
NAVIN CHAWLA, J. (Oral)
1. This suit has been filed by the plaintiff praying inter-alia for a
decree of permanent injunction restraining the defendants from using
the mark „Facebake‟ and/or the domain name www.facebake.in; the
email IDs [email protected]; [email protected], as
also for seeking rendition of accounts.
2. This Court, vide order dated 12.11.2020 was pleased to pass the
following ad-interim order:
"6. In the meanwhile, the defendant, his
agents and employees are restrained from
using the mark "FACEBAKE" or any other
mark, which is deceptively similar to the
plaintiff's trademark.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
6.1 The injunction will also operate vis-a-
vis the logo(s) represented by the letter 'f' i.e.
6.2 Furthermore, the defendant is also restrained from
operating his website i.e. www.facebake.in."
3. As none appeared for the defendant no.1, (who was the sole
defendant till that date), this Court confirmed the ad-interim order
dated 12.11.2020, vide the order of this Court dated 21.01.2021, and
further passed the following directions:
"3. The interim order dated 12th November,
2020 is confirmed. The Registrar of the
domain name www.facebake.in namely Crazy
Domains FZ-LLC is directed to suspend the
domain and transfer the domain name owned
and registered by the Defendant comprising of
the marks/designation FACEBAKE,
FACEBOOK or any other mark/designation
similar thereto to the plaintiff within four
weeks."
4. The plaintiff thereafter filed an application under Order XXXIX
Rule 2A of the Code of Civil Procedure, 1908 (in short, the „CPC‟),
being IA No.8765 of 2021, alleging therein that despite the above
orders being passed by this Court, the defendant no.1 incorporated a
company by the name of „Ehrlich Foods and Beverages Pvt. Ltd' on
27.01.2021, and is one of its directors. The said company has
preferred a trade mark application bearing no. 4926784 under Class
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BATRA
Signing Date:11.07.2022
30, seeking the registration of a deceptively-similar mark
dated 30.03.2021.
5. The plaintiff also filed another application, being IA No. 10045
of 2021, under Order I Rule 10 of the CPC praying to implead the said
company as defendant no.2 in the suit.
6. The said company was then impleaded as the defendant no.2 in
the suit vide the order of the learned Joint Registrar (Judicial) dated
11.08.2021.
7. None appeared for the defendant no.2 in spite of service, thus,
even the defendant no.2 was proceeded ex-parte vide an order of this
Court dated 10.11.2021.
8. It is the case of the plaintiff that the plaintiff-company has been
incorporated in the United States of America and adopted Facebook,
which is a world-famous, social networking service. It also launched a
mobile application and website under the mark „Facebook‟ in 2004.
Some key products/features of the plaintiff under the mark „Facebook‟
include, for example, Facebook Profile, Facebook News Feed,
Facebook Messenger, Facebook Groups, Facebook Events, Facebook
Video, Facebook Photos, Facebook Pages, Facebook Shops (launched
in May, 2020) and Facebook Marketplace (launched in October,
2016).
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
9. The plaintiff has given details of registrations obtained by it in
its marks (hereinafter referred to as „Facebook marks‟) as under:
Sl. No. Trademark Class Reg. No. Reg. Date Valid upto
1. FACEBOOK 35 & 38 1436663 22 March 22 March
2006 2026
2. THE FACEBOOK 35 & 38 1436949 23 March 23 March
2006 2026
3. FACEBOOK 25 1535619 28 February 28 February
2007 2027
4. FACEBOOK 9, 38 & 42 1622925 20 November 20 November
2007 2027
5. 9,35, 36, 38, 1971560 26 May 2010 26 May 2030
41 & 42
6. FACEBOOK 16, 35, 40 & 2309997 3 April, 2012 3 April, 2022
7. 16, 35, 40 & 2309996 3 April, 2012 3 April, 2022
8. FACEBOOK 16 2399531 20 September 20 September
2012 2022
9. 43 3296117 28 June 2016 28 June 2026
10. FACEBOOK 36 3552373 19 May 2017 19 May 2027
11. FACEBOOK 43 3552374 19 May 2017 19 May 2027
12. 9,38, 41, 42 3749225 9 February 9 February
& 45 2018 2028
13. FACEBOOK 41 3913396 10 August 10 August
2018 2028
14. FACEBOOK 45 4029140 17 December 17 December
2018 2028
15. FACEBOOK 9, 35,38, 41, 1855761 27 August 27 August
DEVELOPER 42 & 45 2009 2029
GARAGE
16. FACEBOOK 41 2433338 26 November 26 November
STUDIO EDGE 2012 2022
17. FACEBOOK 35 2433337 26 November 26 November
STUDIO EDGE 2012 2022
18. FACEBOOK 9, 35, 38, 41, 2585835 26 August 26 August
HOME 42 & 45 2013 2023
19. FACEBOOK GO 35 3032256 13 August 13 August
2015 2025
20. WORKPLACE BY 9, 38,42 & 45 3520314 5 April 2017 5 April, 2027
FACEBOOK
21. FACEBOOK 9 & 38 3911866 9 August 9 August
EXPRESS WIFI 2018 2028
22. 9, 35, 36, 38, 3714920 29 December, 29th
41, 42, 45 2017 December,
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BATRA
Signing Date:11.07.2022
23. 9, 35, 36, 38, 4007876 26 November 26 November
41, 42, 45 2018 2028
24. 9, 35, 36, 38, 1969520 21 May, 2010 21 May, 2030
41, 42
25. 9, 35, 36, 38, 1656325 20 February, 20 February,
41, 42 2008 2028
10. The trade dress of the plaintiff‟s „Facebook‟ marks, of its social
networking services, has a distinct colour scheme of blue and white,
which is also reflected in the stylistic representation of the device
mark along with a distinctive layout, font, and overall
visual impression (hereinafter referred to as the „Facebook Visual
Representation‟).
11. The plaintiff further asserts that as of June, 2020, there were 2.7
billion monthly active users of „Facebook‟ worldwide, and an average
of 1.79 billion daily active users of the same worldwide. It further
asserts that according to App Annie, an independent app market data
and analytics source, „Facebook‟ is the most downloaded iOS mobile
application of all times (based on the data collected between July 2010
and May 2018) and as of June, 2020; „Facebook‟, in India, was ranked
2nd in the „Social Networking‟ Category for the iOS app downloads for
iPhone and 12th overall; 5th in app downloads from the Google Play
Store in the „Social Applications‟ category; and 5th in the app
downloads for iPad in the „Social Networking‟ category.
12. The plaintiff further submits that it is ranked amongst the ten
most famous brands in India across all segments of business. It places
reliance on various annual lists taken out by reputed publications such
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BATRA
Signing Date:11.07.2022
as Forbes and Fortune, as also rankings by brand consultancy and
market research organisations such as Interbrand and Millward Brown
Optimor in support of its assertion.
13. The plaintiff further asserts that it has 17000 trade mark
registrations or pending applications for registration of the „Facebook‟
marks in about 130 countries, covering 45 international classes. It
asserts that the „Facebook‟ marks as also other marks containing the
formative word „Facebook‟ have been recognised as being famous or
„well-known‟ in several international jurisdictions such as the
European Union, Brazil, Sudan, Portugal, France, the United States of
America, Spain, Germany, South Korea, and Turkey. The plaintiff has
also successfully enforced its rights in the „Facebook‟ marks in
context of opposition or other challenges filed by the plaintiff against
third parties, including with respect to food and/or food services. The
plaintiff asserts that it is a „well-known trade mark‟ as defined under
Section 2(1)(zb) read with Section 2(1)(zg) of the Trade Marks Act,
1999 (hereinafter referred to as „the Act‟).
14. The plaintiff is aggrieved of the adoption of the mark
„Facebake‟ by the defendant no.1, which as per the submission of the
plaintiff is mimicking the visual presentation by copying the colour
scheme, font, commercial impression, and overall look and feel, and
thus intentionally trading off the significant goodwill that the plaintiff
has established in its „Facebook‟ marks. The plaintiff has filed the
representation of the marks (hereinafter referred to as „Facebake
marks‟) by the defendant no. 1 as under:
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BATRA
Signing Date:11.07.2022
(i) FACEBAKE
(ii)
(iii)
(iv)
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BATRA
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(v)
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(vi)
15. The plaintiff asserts that it gained knowledge of the defendant
no. 1‟s activities when it came across the advertisement of the
application in the Trade Marks Journal filed by the defendant no. 1
seeking registration of its mark „Facebake‟. The plaintiff has filed an
opposition against the said application. The plaintiff asserts that the
use of the similar mark by the defendants is an infringement of its
statutory as well as common law rights as also results in passing off,
dilution and unfair competition by the defendants.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
16. The plaintiff asserts that on service of the ad-interim order of
injunction, the defendant no. 1 not only incorporated the defendant no.
2, but also changed its mark to , which is equally
deceptively-similar to the plaintiff‟s „Facebook‟ marks.
17. As noted hereinabove, the defendants have been proceeded ex-
parte in the suit (the defendant no.1 vide order of this Court dated
21.01.2021 and the defendant no.2 vide order of this Court dated
10.11.2021).
18. The plaintiff, in support of its assertions has filed an affidavit as
well as a supplementary affidavit by way of evidence of Ms. Kathryn
Duvall, as well as an affidavit of Mr.Subroto Panda, in support of its
course.
19. The learned counsel for the plaintiff asserts that the
aforementioned marks of the plaintiff are „well-known‟ as defined
under Section 2(1)(zg) of the Act and are entitled to protection, even
though the use of the said marks by the defendants is for different
goods. In support of his submission, he places reliance on the
judgment of the Supreme Court in Renaissance Hotel Holdings INC.
v. B.Vijaya Sai & Ors. in Civil Appeal No.404 of 2022; and of this
Court in Tata Sons Ltd. v. Manoj Dodia & Ors., CS(OS) No.264 of
2008 and Ford Motor Company & Anr. v. Mrs. C.R.Borman & Anr.,
FAO(OS) No.9 of 2008.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
20. I have considered the submissions made by the learned counsel
for the plaintiff.
21. Section 2(1)(zg) of the Act defines a „well-known trade mark‟
as under:
"2. Definitions and interpretation.--(1) In
this Act, unless the context otherwise requires,
--
xxxx
(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."
22. The test for recognition of a trade mark as a „well-known trade
mark‟ is that such mark, in relation to any goods or services, must
have become, to the substantial segment of the public which uses the
goods or receives the services in relation to which such mark is used,
so well-known that the use of the said mark in relation to their goods
of 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 goods or
services for which it is well-known.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
23. Section 11(2) recognizes the fact that a mark is a „well-known
trade mark‟ for the purposes of relative grounds for refusal of
registration of a trade mark. It reads as under:
"11. Relative grounds for refusal of
registration.---
xxx
(2) A trade mark which--
(a) is identical with or similar to an
earlier trade mark; and
(b) is to be registered for goods or
services which are not similar to those
for which the earlier trade mark is
registered in the name of a different
proprietor,
shall not be registered if or to the extent the
earlier trade mark is a well-known trade mark
in India and the use of the later mark without
due cause would take unfair advantage of or be
detrimental to the distinctive character or
repute of the earlier trade mark."
24. Sub-section (6) and (7) of Section 11 of the Act set out the
criteria that inter-alia shall be taken into account by the Registrar for
determining whether a trade mark is a „well-known trade mark‟. It
reads as under:
"11. Relative grounds for refusal of
registration-
xxx
(6) The Registrar shall, while determining
whether a trade mark is a well-known trade
mark, take into account any fact which he
considers relevant for determining a trade
mark as a well-known trade mark including--
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Signing Date:11.07.2022
(i) the knowledge or recognition of that
trade mark in the relevant section of the
public including knowledge in India
obtained as a result of promotion of the
trade mark;
(ii) the duration, extent and
geographical area of any use of that
trade mark;
(iii) the duration, extent and
geographical area of any promotion of
the trade mark, including advertising or
publicity and presentation, at fairs or
exhibition of the goods or services to
which the trade mark applies;
(iv) the duration and geographical area
of any registration of or any application
for registration of that trade mark under
this Act to the extent that they reflect the
use or recognition of the trade mark;
(v) the record of successful enforcement
of the rights in that trade mark; in
particular, the extent to which the trade
mark has been recognised as a well-
known trade mark by any court or
Registrar under that record.
(7) The Registrar shall, while determining as
to whether a trade mark is known or
recognised in a relevant section of the public
for the purposes of sub-section (6), take into
account--
(i) the number of actual or potential
consumers of the goods or services;
(ii) the number of persons involved in
the channels of distribution of the goods
or services;
(iii) the business circles dealing with the
goods or services, to which that trade
mark applies."
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
25. Sub-section (9) of Section 11 of the Act states that for
determining whether the trade mark is a „well-known trade mark', the
Registrar shall not require as a condition any of the following, namely:
"(i) that the trade mark has been used in
India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of
the trade mark has been filed in India;
(iv) that the trade mark--
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application
for registration has been filed in, any
jurisdiction other than India; or
(v) that the trade mark is well-known to the
public at large in India."
26. Section 29 of the Act also provides a special status to a „well-
known trade mark‟ in Sub-section (4) of Section 29, which reads as
under:
"29. Infringement of registered
trademarks.--
xxxx
(4) 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--
(a) is identical with or similar to the
registered trade mark; and
(b) is used in relation to goods or
services which are not similar to those
for which the trade mark is registered;
and
(c) the registered trade mark has a
reputation in India and the use of the
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BATRA
Signing Date:11.07.2022
mark without due cause takes unfair
advantage of or is detrimental to, the
distinctive character or repute of the
registered trade mark."
27. This Court in Tata Sons Ltd. (supra) has held that a well-
known trade mark is a mark which is widely known to the relevant
general public and enjoys a comparatively high reputation amongst
them. It further held that when a person uses another person‟s „well-
known trade mark‟, he tries to take advantage of the goodwill that
such a „well-known trade mark‟ enjoys. Such an act constitutes as
unfair competition. It also causes dilution of a „well-known trade
mark' as it loses its ability to be unique and distinctively identified and
distinguish as one source and consequent change in perception which
reduces the market value or selling power of the product bearing the
well-known mark. The Court further laid down the factors that a
Court needs to consider for determining whether the trade mark is a
„well-known trade mark‟ or not, as under:
"13. Trademarks Act, 1999 does not specify
the factors which the Court needs to consider
while determining whether a mark is a well
known mark or not, though it does contain
factors which the Registrar has to consider
whether a trademark is a well known mark or
not. In determining whether a trademark is a
well known mark or not, the Court needs to
consider a number of factors including (i) the
extent of knowledge of the mark to, and its
recognition by the relevant public; (ii) the
duration of the use of the mark; (iii) the extent
of the products and services in relation to
which the mark is being used; (iv) the method,
frequency, extent and duration of advertising
and promotion of the mark; (v) the
geographical extent of the trading area in
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Signing Date:11.07.2022
which the mark is used; (vi) the state of
registration of the mark; (vii) the volume of
business of the goods or services sold under
that mark; (viii) the nature and extent of the
use of same or similar mark by other parties;
(ix) the extent to which the rights claimed in
the mark have been successfully enforced,
particularly before the Courts of law and
trademark registry and (x) actual or potential
number of persons consuming goods or
availing services being sold under that brand.
A trademark being well known in one country
is not necessarily determinative of its being
well known and famous in other countries, the
controlling requirement being the reputation
in the local jurisdiction."
28. Applying the above test and parameters to the facts of the
present case, it cannot seriously be disputed that the marks of the
plaintiff are well-known in India. Its user base and its reach are
evident from the documents that have been filed by the plaintiff. The
plaintiff also has obtained registrations of its marks for various classes
of goods and the use of a similar mark without due cause would
certainly amount to unfair competition, which is detrimental to the
distinct character and reputation of the plaintiff‟s „Facebook‟ marks.
29. The plaintiff therefore, has been able to make the test as set out
in Section 11(6) and Section 11(7) of the Act as also by this Court in
Tata Sons (supra) for it to be declared as a „well-known trade mark‟,
as defined under Section 2(1)(zg) of the Act.
30. Section 29(4) of the Act, which has been reproduced
hereinabove, states that a registered mark is infringed by a proprietor
or a person who uses the same or a similar mark without the
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BATRA
Signing Date:11.07.2022
permission of the registered proprietor in relation to goods or services
which may not be similar to those for which the trade mark is
registered, however, because of such mark being a well-known mark,
obtains an unfair advantage as the use of such mark is detrimental to
the distinct character or reputation of the registered trade mark.
31. In the present case, though there is some distinction between the
marks of the plaintiff and of the defendants, the overall visual
representation adopted by the defendants, clearly depicts the mala fide
intent of the defendants in obtaining unfair advantage by the use of the
mark similar to that of the plaintiff and also leads to the dilution of the
mark of the plaintiff. It can lead to an unwary consumer being at least
interested in taking note of the defendants as having some kind of
connection with the plaintiff. The mala fide intent of the defendants is
also evident from the fact that upon the knowledge of the ad-interim
injunction passed by this Court, the defendants changed the mark from
„facebake‟ to „facecake‟ thereby changing only one alphabet, however,
chose not to appear before this Court to defend the suit in spite of
service.
32. In view of the above, the suit is decreed as under:
(i) The defendants, its directors, proprietors, subsidiaries,
affiliates, franchisees, officers, servants, agents, distributors,
representatives and anyone acting for or on its behalf are
permanently restrained from using the Facebake marks; the
domain name www.facebake.in; the email ids
[email protected]; [email protected]; the mark
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Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
Facecake; the Facebook marks, the Facebook Visual
Presentation, and any other „Facebook‟ formative trade marks
of the plaintiff, or any other mark deceptively similar thereto in
relation to products and services related to confectionary items,
or any other goods or services, in any manner, including on
social media; and
(ii) For a decree of delivery up of all finished and unfinished
materials including locks, signage, cards, stationary,
accessories, packaging, labels, and other material bearing the
Facebake marks or any mark deceptively similar to the
plaintiff‟s Facebook marks, by the defendants to the plaintiff for
the purpose of erasure or destruction.
(iii) As far as the prayer for rendition of accounts of profits
and damages is concerned, though the plaintiff has not led any
substantial evidence for the said relief, nominal damages of
Rs.50,000/- (Rupees Fifty Thousand only) are awarded in
favour of the plaintiff and against the defendants.
(iv) The defendants shall also pay cost of the suit to the
plaintiff.
33. Let a decree sheet be drawn accordingly.
NAVIN CHAWLA, J
JULY 6, 2022
RN/AB
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:11.07.2022
