Delhi High Court - Orders
Oaktree Capital Management, L.P vs Oaktree Capital Llp, & Anr on 8 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~36
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 483/2023 & I.A. 13200/2023
OAKTREE CAPITAL MANAGEMENT, L.P. ..... Plaintiff
Through: Ms. Nancy Roy & Ms. Nida Khanam,
Advs. (M: 8743904084)
versus
OAKTREE CAPITAL LLP, & ANR. ..... Defendants
Through: Mr. D. Bhattacharyya and Ms. Deeti
Ojha, Advs. (M: 9818499377)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 08.12.2023
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Oaktree Capital Management, L.P. seeking permanent injunction and damages for infringement of trade mark 'OAKTREE', passing off and unfair competition against Defendant No.1- Oaktree Capital LLP, and Defendant No.2- Oaktree Money Private Limited.
3. The Plaintiff is a leading global alternative investment management firm with expertise in investing in credit, real estate, private equity, and listed equity. The case of the Plaintiff is that it adopted the mark 'OAKTREE' in the year 1995 globally and has been rendering a large range of financial services under the said mark. The said mark is also registered both as a word mark and in logo form in India. The details of the registrations are as under:
CS(COMM) 483/2023 Page 1 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:32 S. No. Trademark Reg. No. Date Class 1 OAKTREE 3954185 September 36 24, 2018, Filed with a claim of use since June 08, 2000.
Goods & Services Details- Financial services; asset management; corporate finance; insurance services; investment services; distress debt investment services; corporate debt investment services; financial portfolio management; monetary affairs; real estate affairs; real estate investment services.
2 September
24,
2018,
3954184 36 Filed with a
claim of use
since
November
14, 2007.
Goods & Services Details- Financial services; asset management; corporate finance; insurance services; investment services; distress debt investment services; corporate debt investment services; financial portfolio management; monetary affairs; real estate affairs; real estate investment services.
4. The Plaintiff had earlier filed trademark applications in 2016 for the said marks on a 'proposed to be used' basis. The same were, however, given up and were replaced by the new applications.
5. The case of the Plaintiff is that the mark 'OAKTREE' is used by it in respect of services which are rendered in the area of investment, credit, private equity, real estate and listed equities. The Plaintiff claims to be a global leader in alternative investment management. The total assets which were claimed to be under the Plaintiff's management, as per the plaint, are to CS(COMM) 483/2023 Page 2 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:32 the tune of USD 172 Billion. It also has offices in 20 cities in the world and 1100 personnel, with Los Angeles, USA being its headquarters. The world- wide revenues of the Plaintiff are to the tune of USD 1.5 Billion as set out in the plaint. Plaintiff's services are also published and advertised through the domain name www.oaktreecapital.com which was registered on 26th March, 1999. The claim of the Plaintiff is that the mark 'OAKTREE' has become a well-known mark. The Plaintiff also claims to have substantial presence on social media and is the winner of various awards and recognitions. The mark OAKTREE has been recognised and registered in favour of the Plaintiff in various countries of the world including in Taiwan where the Plaintiff was successful in an opposition proceeding.
6. The grievance of the Plaintiff, in the present case, is that Defendant No.1- M/s Oaktree Capital LLP, a partnership firm of Mr. Manish Agrawal and Mr. Neeraj Bhatia, use the website www.oaktreemoney.com and provide financial services. It is averred in the plaint that use of the said mark 'OAKTREE' by the Defendants would completely violate the common law rights and statutory rights of the Plaintiff. It is submitted by Ms. Roy, ld. Counsel for the Plaintiff that the Defendants also have a mobile app OAKTREE MONEY which is being used.
7. The comparative marks are set out below:
CS(COMM) 483/2023 Page 3 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:33 Particulars Plaintiff Defendants Corporate Oaktree Capital Management, Oaktree Capital LLP, Oaktree Name L.P. Money Private Limited Trade Mark Business Financial Services Financial Services Website httns://www.oaktreecapital.com http://www.oaktreemoney.com/
8. In the present case, vide order dated 26th July, 2023, the Court had granted an injunction in the following terms:
"22. Under such circumstances, in the opinion of the Court, use of the mark OAKTREE in the financial services segment by the Defendants is liable to cause confusion and deception to the consumers and public. Moreover, when financial services are availed of by customers through online platforms the confusion between www.oaktreecapital.com and www.oaktreemoney.com is a very realistic possibility. The nature of services in fact persuades this Court to hold that even a remote possibility of confusion should be avoided inasmuch as it involves investment of monies.
23. Use of the identical word 'OAKTREE' with the tree device, especially, in case of consumers who may be fleetingly browsing clearly shows that the Plaintiff makes out a prima facie case for grant of an injunction. In view of the above discussion, the Court is further of the opinion that the balance of convenience lies in the favour of the Plaintiff and irreparable harm CS(COMM) 483/2023 Page 4 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:33 would be caused to the Plaintiff and innocent consumers if the Defendants are allowed to use the impugned mark in the long term. Accordingly, the Defendants are restrained from using the mark OAKTREE either as a mark or as a name or as a domain name in respect of financial services or any other services which the Defendants may be rendering. However, considering the fact that the first cease and desist notice was sent by the Plaintiff in 2021, it is deemed appropriate to grant the Defendants three months' time i.e., till 31st October, 2023 to change their mark/name. Thus, the injunction granted shall come into operation with effect from 1st November, 2023. "
9. As per the above order, the injunction was to come into operation with effect from 1st November, 2023. Vide the same order, parties were also referred to mediation under the aegis of the Delhi High Court Mediation and Conciliation Centre
10. Today, the parties report that they have entered into a settlement agreement dated 19th October, 2023 under the aegis of the Delhi High Court Mediation and Conciliation Centre. The terms of settlement are contained in paragraphs (a) to (t) of the said agreement.
11. Broadly, the Defendants have acknowledged the Plaintiff's rights in the mark 'OAKTREE' and have agreed not to use the said name or any other mark which is similar to the Plaintiff's mark 'OAKTREE'. The various assurances and undertakings given are recorded in the settlement agreement.
12. As per the settlement, the Defendants' name has now been changed to "OAK WIZ CAPITAL LLP" which has been approved by the MCA with effect from 4th December, 2023. In view of the name change having CS(COMM) 483/2023 Page 5 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:33 already been effected, the Defendants have now started using the said new name with effect from 4th December, 2023 instead of 1st November, 2023.
13. The settlement agreement has been signed by both the parties digitally, by their counsel as well as the ld. Mediator.
14. The Court has perused the settlement. The terms contained therein are lawful and there is no impediment in recording the same. Parties and all other acting for or on their behalf shall be bound by the terms of the settlement agreement.
15. The Defendants have agreed to pay a sum of Rs.1 lakhs to the Plaintiff by way of costs in two instalments. The first instalment was paid by demand draft. The second instalment was paid by a post-dated cheque. The demand draft has been encashed and the post-dated cheque is lying with the Plaintiff's Counsel. It is assured by the Defendants that the said payment shall be honoured.
16. At this stage, it is submitted by ld. Counsel for the parties that one of the links referring to the Defendant as "OAK TREE MONEY PVT LTD"
continues to remain on the website of `insiderbiz'.
17. Ld. counsel for the Defendant submits that his client has already written to the said entity on four occasions.
18. It is directed that the said portal shall, upon receiving an email from the Plaintiff or Defendants take down the said listing within a period of 72 hours failing which the Plaintiff may approach this Court by way of application. Action would be liable to be taken if the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021 are not followed and the present order is not given effect to.
19. The suit is decreed in terms of the settlement. Decree sheet be drawn CS(COMM) 483/2023 Page 6 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:33 accordingly. All pending applications are disposed of.
20. In view of the fact that the disputes have been amicably settled through mediation at an early stage, 50% court fee is directed to be refunded to the Plaintiff.
PRATHIBA M. SINGH, J.
DECEMBER 08, 2023 dj/kt CS(COMM) 483/2023 Page 7 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 12/12/2023 at 00:38:33