Delhi High Court
Exxon Mobil Corporation vs Mobol Armour Corporation Llp on 24 March, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
$~13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 24th March, 2022
+ CS (COMM) 696/2021
EXXON MOBIL CORPORATION ..... Plaintiff
Through: Ms. Anuradha Salhotra, Mr. Sumit
Wadhwa, Ms. Kaveri Jain, Advocates
(M: 9899783837)
versus
MOBOL ARMOUR CORPORATION LLP ..... Defendant
Through: Mr. Rahul Vidhani, Advocate
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Exxon Mobil
Corporation, seeking protection of its trademark 'MOBIL' which is being
used for lubricants internationally since 1882. The Plaintiff is engaged in the
manufacturing and sale of petroleum and related products in more than 160
jurisdictions in the world. The earliest trademark registration for the
trademark 'MOBILOIL' dates back to 9th September, 1942 and thereafter
several registrations have been granted in 1947, 1972, 1996, 2004. The mark
'MOBIL' is stated to be a globally renowned mark. In 1999-2003, sales of
'MOBIL' brand lubricants is stated to have been almost US$402 billion,
throughout the Asia Pacific region. The Plaintiff has received various
recognitions and awards for its lubricants and greases.
3. The present suit has been filed against the Defendants which adopted
and started using the mark 'MOBOL' in respect of similar products, i.e.,
lubricants, motor oils, additives, grease, vehicle care products, etc. The
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
Defendant has incorporated an LLP by the name 'MOBOL ARMOUR
CORPORATION LLP'. The Defendant also applied for a trademark
registration of the mark 'MOBOL' on 23rd January, 2019, which appears to
have escaped the attention of the Plaintiff. The Defendant obtained the trade
mark registration in July 2019, which is in the name of one of the spouses of
the partners of the LLP and started using the said mark for lubricants. The
Defendant is also stated to be using the domain name: http://www.mobol.in/.
4. Ms. Salhotra, ld. Counsel for the Plaintiff, submits that the mark has
been protected against infringement by various orders in respect of various
'MOBIL' formative marks. Mr. Rahul Vidhani, ld. Counsel for the
Defendant, submits that the Defendant started using the mark only after the
registration was granted and after the filing of the suit, the Defendant has
stopped the using the mark 'MOBOL', since 1st April, 2021 onwards. He
further submits that the Defendant has suffered loses and is in fact willing to
suffer an injunction and has no intention to continue the use of the mark
'MOBOL'. Reliance is placed upon a Chartered Accountants' certificate
dated 22nd January, 2022, placed on record, to submit that the Defendant has
in fact been running into losses of around 2 lakhs and around 23 lakhs, over
the past few financial years.
5. Ld. Counsel for the Plaintiff has refuted the Chartered Accountant's
certificate given by the Defendant on record, and argues that as per the
publicly available records of the LLP, the Defendant had revenue of
Rs.24,46,063/- in the year ending on 31st March, 2020, and of
Rs.48,05,395/- in the year ending on 31st March, 2021 and hence the sales
of the infringing products were substantial. The documents handed over with
the financial statements of the Defendant are taken on record.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
6. The Court has perused the record and the documents placed, as also
heard the submissions made by the parties. Insofar as the use of the mark
'MOBOL' is concerned, there is no doubt in the mind of this Court that the
same is almost identical to the Plaintiffs' renowned trade mark 'MOBIL'.
The Defendant's adoption is clearly dishonest and mala fide inasmuch as
'MOBIL' is a mark which is more than 150 years old in the same field of
industrial oils, greases, lubricants, etc. The Defendant cannot be unaware of
the mark 'MOBIL' and its reputation. The various orders placed on record
show that the mark 'MOBIL' has been protected repeatedly. Details of the
same are stated to be as under:
S. Case Date of Impugned Goods/Services
No. Particulars Injunction Mark/Name
1. ExxonMobil March 05, Trading style Lubricants
Corporation v. 2012 "MOBIL
Mobil Refinery Refineries Ltd. and
Ltd. & Anr. MOBIL Securities
Ltd."
[CS(OS)
568/2012]
2. ExxonMobil October 06, MOBOLENE/ Lubricants
Corporation v. 2016
Mandanlal
Khandelwal and
Anr.
[CS(COMM)
1394/2016]
3. ExxonMobil March 28, MOBOLENE/ Lubricants
Corporation v. 2019
Rajiv Kohli and
Anr.
[CS(COMM)
161/2019]
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
4. ExxonMobil April 29, GOLDEN MOBIL Lubricants
Corporation v. 2019
Gaurav Goel
[CS(COMM)
219/2019]
5. ExxonMobil June 21, MOBIL and Lubricants
Corporation v. 2019 Pegasus device,
Bharadwaj Oil i.e.,
& Ors.
[CS(COMM)
322/2019] for
counterfeit
products
6. ExxonMobil September MOBILO/ Lubricants
Corporation v. 16, 2019
Alinaki
Gulamali
Meghani & Ors.
[CS(COMM)
505/2019]
7. ExxonMobil November MOBILLEX/ Lubricants
Corporation v. 14, 2019
Dharmendra
Parekh and
Anr.
[CS(COMM)
624/2019]
8. ExxonMobil December Trade name Lubricants
Corporation v. 14, 2020 MOBIL HOUSE
M/s. Mobil
House Through
its proprietor
Mr. Naresh
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
Agarwal
[CS(COMM)
145/2020]
9. ExxonMobil November MOBIL FUELS/ Used as a trade
Corporation v. 29, 2021 mark, trade
Mobil Fuels name, trading
Private Limited style and
domain name in
[CS(COMM) respect of door
608/2021] to door delivery
of fuels
10. ExxonMobil November MOBIL SUPER Lubricants
Corporation v. 26, 2021 MOTO/
Ms. Bike Zone
Siddhivinayak
Autoline
for counterfeit
[CS(COMM) products
606/2021]
7. Moreover, in the opinion of this Court, the mere showing of losses
also ought not to deter this Court from awarding costs/damages, so long as
illegal and unlawful use of an identical/deceptively similar trade mark is
admitted or proved on record. Accordingly,
(i) The Defendant, its promoters, their family members and any other
party acting for or on its behalf, are restrained by an order of
permanent injunction, from using the mark or name 'MOBOL' or
any other mark or name identical or deceptively similar to the
Plaintiff's mark 'MOBIL' in respect of any products or for its
manufacture and sale, including for industrial oil, greases,
lubricants, etc.
(ii) The Defendant is also restrained from using the word 'MOBOL' as
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
part of its incorporated name for the LLP. Accordingly, the
Defendant shall apply for either a name change of the LLP or
closure of the LLP within a period of one month from today.
(iii) Insofar as the trademark registration is concerned, the trademark
application no.4064869 granted in favour of Mr. Rajesh Sethi, who
is the spouse of one of the partners of the Defendant, i.e., Ms. Preeti
Sethi, shall be cancelled as the same is identical and deceptively
similar to the registered trademark 'MOBIL' of the Plaintiff. The
orders of cancellation shall be passed by the Trademark Registry,
within two months upon receiving the communication of this order.
(iv) The domain name www.mobol.in which has been registered by the
Defendant shall be transferred in favour of the Plaintiff.
(v) If the Defendant has registered any domain name or any other
entity bearing the mark 'MOBIL', the said domain name shall also
be surrendered and the said trade name/trading style shall also be
given up and shall not be used.
8. It is made clear that the present order shall bind the Defendant, its
partners, their family members and all others acting for and on their behalf.
9. Since the Defendant has already agreed to give up the use of the mark
'MOBOL', no further order of damages or delivery up are being passed.
However, in the facts and circumstances of this case, this Court deems it fit
to direct the Defendant to pay a sum of Rs.1 lakh towards costs. Ld. Counsel
for the Plaintiff submits she has no objection if the same is deposited with
the DHCBA Pandemic Relief Fund [A/c No.15530110152195, IFSC Code-
UCBA0001553, UCO Bank, Delhi High Court] within four weeks. The said
amount shall be utilised only for the purposes of distribution to lawyers and
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:29.03.2022
08:36:06
their families who have deceased/suffered, during the pandemic. Hony.
Secretary, Delhi High Court Bar Association to confirm receipt of the said
amount, on the next date. The proof of costs deposited, shall be filed by the
Defendant before the Registry, with confirmation to the Plaintiff as well.
10. The Registry to put up a note after two months as to the confirmation
of payment of costs. If the same is not deposited, then the Plaintiff has
liberty to move an application seeking restoration of the suit and trial in the
said suit shall continue, insofar as relief of rendition of accounts and
damages is concerned.
11. Since the matter has not proceeded to trial, the Plaintiff is granted a
refund of 50% of the Court fees. The plaintiff being a US corporation, the
said refund shall be issued to the Plaintiff, through its Counsel.
12. Accordingly, the present suit is decreed in the above terms. All
pending applications are disposed of in the above terms.
13. Copy of today's order be supplied to the Trademark Registry
(Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: cgoffice-
[email protected], [email protected]).
14. The digitally signed copy of this order, duly uploaded on the official
website of the Delhi High Court, www.delhihighcourt.nic.in, shall be treated
as the certified copy of the order for the purpose of ensuring compliance. No
physical copy of orders shall be insisted by any authority/entity or litigant.
PRATHIBA M. SINGH
JUDGE
MARCH 24, 2022/aman/ms
(corrected & released on 28th March, 2022)
