Delhi High Court - Orders
Oracle America Inc vs Sonoo Jaiswal And Ors on 12 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 2/2024, I.A. 60/2024
ORACLE AMERICA INC. ..... Plaintiff
Through: Ms. Shwetasree Majumdar,
Ms. Tanya Varma, Mr. Prithvi Gulati
and Mr. Srinivas Venkat, Advocates.
versus
SONOO JAISWAL AND ORS. ..... Defendants
Through: Mr. Varun Dhingra and Mr. Tapan
Mittal, Advocates with Mr. Soono
Jaiswal in person.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 12.02.2024 I.A. 57/2024 (under Order XXXIX Rules 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908) The Case set out by Plaintiff
1. The facts and contentions presented by Ms. Shwetasree Majumdar, counsel for the Plaintiff, are set out as follows:
The Plaintiff and their trademarks 1.1 The Plaintiff is a corporation existing and incorporated under the laws of California, United States of America, and is a part of the Oracle group of companies ["Plaintiff Group"]. The Plaintiff Group operates in over 175 CS(COMM) 2/2024 Page 1 of 19 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 14/02/2024 at 21:29:51 countries across the world. They have a large number of trademarks which are used for variety of goods and services pertaining to, inter alia, computer hardware and software. Some of the Plaintiff's trademarks include 'ORACLE', 'JAVA' and 'PEOPLESOFT'.
1.2 Plaintiff is one of the leading and foremost names in the field of database software and technology, cloud-based engineering system, enterprise software products, etc. The Plaintiff Group's services have acquired considerable reputation and goodwill, having received extensive coverage as well as achieved astounding commercial success, evidenced by the annual revenue of Oracle Corporation for the last 10 years, which is set out as follows:
FISCAL YEAR GLOBAL REVENUE
2014 38 billion USD
2015 38 billion USD
2016 37 billion USD
2017 38 billion USD
2018 40 billion USD
2019 40 billion USD
2020 39 billion USD
2021 40 billion USD
2022 42 billion USD
2023 50 billion USD
1.3 Plaintiff offers one of the most widely sold software products and
services for application development and deployment, under the trademark 'JAVA'. Today, billions of devices around the world operate with technology under the 'JAVA' trademark. Plaintiff uses the trademark 'JAVA' on a standalone basis and also as a part of their other trademarks in the form of a prefix or suffix, such as 'JAVASCRIPT', 'JAVADAY' and 'GOJAVA'.
CS(COMM) 2/2024 Page 2 of 19This 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 14/02/2024 at 21:29:51 1.4 In India, the Plaintiff has secured registrations for the following 'JAVA' trademarks under the Trademarks Act, 1999 ["the Act"]:
Trade Mark Class Date of Registration No.
Registration
JAVASCRIPT 9 06/02/1996 697361
9, 38 & 42 28/10/2003 1246392
JAVA 35, 38, 41 27/09/2006 1491786
& 42
JAVA 42 10/08/2015 3028558
GO JAVA 35, 41 & 16/08/2016
42 3338534
JAVA 35 and 41 02/12/2015 3113728
JAVA 16, 35, 36, 31/01/2018 3741038
37, 38, 41,
42, 45
JAVA 9 30/03/1995 661023
JAVA DAY 41 30/11/2018 IRDI-4063635
1.5 The Plaintiff's 'JAVA' trademarks are well-known marks as they are
instantly identifiable as being distinctive of the business, goods and services of the Plaintiff Group. They have acquired immense reputation and goodwill owing to long standing and extensive use, and have been widely publicized in various forms of media, including magazines having international circulation and around the world. Moreover, the Plaintiff's JAVA trademarks are well-known in India on account of their extensive and exclusive use.
Crux of the Dispute
1.6 The Plaintiff's grievance which has led to filing of the instant suit is
the adoption of the trademark ' ' by the Defendants
CS(COMM) 2/2024 Page 3 of 19
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 14/02/2024 at 21:29:52 ["Impugned Mark"], which they are using in relation to a variety of software training services, including training and manuals on JAVA programming language. Defendants also operate a website under the domain name www.javatpoint.com, through which the aforenoted services are offered. Notably, Defendants have even purported to offer an "Oracle- certified training" on their website, despite having no association with the Plaintiff Group, who in fact independently offer their own educational and training services.
1.7 The Plaintiff's registered trademark 'JAVA' is entirely contained as part of the Defendant's domain name and also in the Impugned Mark/ logo ' '. The extracts from the website are as follows:
CS(COMM) 2/2024 Page 4 of 19This 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 14/02/2024 at 21:29:52 CS(COMM) 2/2024 Page 5 of 19 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 14/02/2024 at 21:29:52 1.8 The micro-website https://training.javatpoint.com/ within the Defendants' website https://javatpoint.com hosts various courses, training programs, internship programs, etc. The same also permits users to contact the Defendants to enrol themselves as teachers/ instructors and work as employees of the Defendants. Further, the said micro-website also contains a payment portal via which payments can be made by potential customers to avail the services of the Defendants. Extracts from the micro-website are as follows:CS(COMM) 2/2024 Page 6 of 19
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 14/02/2024 at 21:29:52 CS(COMM) 2/2024 Page 7 of 19 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 14/02/2024 at 21:29:52 CS(COMM) 2/2024 Page 8 of 19 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 14/02/2024 at 21:29:53 1.9 Additionally, Defendant No. 1 has also used the Plaintiff's registered trademark 'JAVA' in their corporate names, having established the companies Javatpoint Limited (Defendant No. 2) and Javatpoint Tech Private Limited (Defendant No. 3). Such use categorically amounts to infringement under Section 29(5) of the Act.
1.10 On 4th December, 2019, the Plaintiff issued a cease-and-desist notice to the Defendants, however, despite service, the Defendants did not reply thereto. Thereafter, on account of COVID-19 pandemic, the Defendants' establishment was shut and no courses were being offered. Upon the Defendants subsequently reviving their business, the Plaintiff issued another notice on 19th October, 2020 urging them to comply with the previous notice. However, the Defendants again chose to neither respond to nor comply with the same.
1.11 Upon deputing an investigator, Plaintiff received information that the CS(COMM) 2/2024 Page 9 of 19 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 14/02/2024 at 21:29:53 Defendants are continuing their services through the online mode using the Plaintiff's trademark 'JAVA'. Further, they are attempting to expand their business by misrepresenting themselves as being associated with the Plaintiff Group. In such circumstances, Plaintiff has approached this Court to enforce their rights and seek interim protection. 1.12 Pertinently, it is emphasised that the Plaintiff does not intend to monopolise the use of JAVA or even the offering of training services in respect of JAVA. In fact, the Plaintiff Group's website www.oracle.com clearly sets out 'Third Party Usage Guidelines for Oracle Trademarks', which delineate what constitutes permissible as well as prohibited use of the Plaintiff Group's trademarks. The relevant portions thereof are extracted as under:
"Third Party Usage Guidelines for Oracle Trademarks Oracle®, Java, MySQL, and NetSuite are registered trademarks of Oracle and/or its affiliates. Other names may be trademarks of their respective owners.
... xxx ... ...xxx... ...xxx...
Permissible Use
You may generally use Oracle trademarks to refer to the associated Oracle products or services. For instance, an authorized reseller can note in its advertisements that it is selling the Oracle application server. Similarly, an Oracle customer may issue a press release stating that it has implemented Oracle software.
Relationship of Products or Services You may indicate the relationship of your products or services to Oracle products or services by using accurate, descriptive tag lines such as "for Oracle database," "for use with Oracle E-Business Suite applications," and "works with Oracle software" in connection with your product or service name. Within text or body copy, such tag lines may appear in the same type as your product or service name. On product, packaging, advertising and other collateral where your product or service name is displayed apart from CS(COMM) 2/2024 Page 10 of 19 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 14/02/2024 at 21:29:53 body copy, make sure that the tag line appears in significantly smaller type than your name. You should also distinguish the tag line from your mark by using a different font or color. However, Oracle or the tag line should never appear in the Oracle red color. This is important to avert any implication that your product or service is produced or endorsed by Oracle.
Titles Oracle permits use of its marks in single volume book titles (not magazines or periodicals) where such use is descriptive or referential. To avoid misleading the public as to Oracle sponsorship, affiliation or endorsement, the Oracle mark must not appear more prominently than the rest of the title, and do not use Oracle logos on the cover. In addition, we request that you include a disclaimer of association with Oracle on the copyright page.
Open Source Software Most open source licenses do not grant, and many exclude, a license of trademark rights. Do not assume you can use the name of a source code base in the name of your distribution developed from that code base. Without a license or permission, you may not incorporate Oracle trademarks in the name of your distribution or other products that incorporate open source elements. Truthful statements incorporating a trademark are generally allowed (for example, in the format "MyImplementation, derived from Trademarked ProductName"), but you should check the terms of the license for the original source code or any posted trademark guidelines for the project.
User Groups Oracle generally permits use of its marks in groups name that include phrases such as "user group," "special interest group," "lobby," etc., that clarify the relationship between Oracle and the group and do not create confusion about the source of products. This applies only to user groups that are not formally doing business as commercial entities. If you are administering a user group that includes an Oracle trademark in its name, do not claim any trademark rights in the name or attempt to register the name or your logo with a trademark office, and do not register the name as a trade name or business name, or conduct any business under the name.
Prohibited Use You may not use Oracle trademarks in a manner which could cause confusion as to Oracle sponsorship, affiliation or endorsement. Take particular care not to use Oracle marks as set out below.
Company, Product or Service Names Do not use Oracle trademarks or potentially confusing variations as all or CS(COMM) 2/2024 Page 11 of 19 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 14/02/2024 at 21:29:53 part of your company, product or service names. If you wish to note the relationship of your products or services to Oracle products or services, please use an appropriate tag line as detailed above. For example, "XYZ for Oracle database" not "OraXYZ or XYZ Oracle"
Logos For more information regarding use of Oracle logos, please review the Third Party Usage Guidelines for Oracle Logos.
Trade Dress You must not imitate Oracle trade dress, type style or logos. For instance, do not copy Oracle packaging for use with your product or display your product name in the distinctive logotype associated with the Oracle logo.
Domain Names Do not use Oracle trademarks or potentially confusing variations in your Internet domain name. This helps prevent Internet users from being confused as to whether you or Oracle is the source of the Web site."
[Emphasis Supplied] Submissions on behalf of Defendant
2. Mr. Varun Dhingra, counsel for the Defendants, appearing via video conferencing mechanism, has strongly controverted the aforenoted contentions. He is accompanied by Defendant No. 1/ Mr. Sonoo Jaiswal, who is also appearing virtually. Mr. Dhingra's submissions are summarized as follows:
2.1 The Defendants' use of the Impugned Mark ' ' is by no stretch of the imagination visually, structurally or phonetically similar to the Plaintiff's mark 'JAVA'. In fact, the Plaintiff and Defendants' marks are clearly displayed on their respective websites, which allows customers to differentiate between the two marks.
Thus, there is no scope of any confusion between the two marks or CS(COMM) 2/2024 Page 12 of 19 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 14/02/2024 at 21:29:53 deception that is likely to arise out of the same.
2.2 JAVA is a technology consisting of both, a programming language and a software platform, which runs on billions of devices and is used for, inter alia, Mobile applications (especially Android apps), Desktop applications, Web applications, Web servers and application servers. Thus, it cannot be permitted to be solely associated with and monopolised by one particular entity.
2.3 The name of a programming language cannot be claimed as a trademark. In support of this contention, reliance is placed on an article titled 'Can programming language names be trademarks?'1, published on 'Opensource.com', a copy whereof has been handed over across the board and is taken on record. The said article comments that trademark registrations are not granted for language names per se as a language is neither a good or a service that can be used in trade, but rather an abstraction.
2.4 The word 'JAVA' is a generic word and thus cannot be claimed as a trademark as no one can be permitted to have a monopoly over the same. In this regard, reliance is placed on the judgment of this Court in Institute of Directors v. WORLDDEVCORP Technology and Business Solutions Pvt Ltd & Ors2.
2.5 Defendants have spent considerable time and effort in building their business, which has independently gained its own reputation. Thus, directing them to shut down their services would cause undue harm. Accordingly, while they have expressed a willingness to make changes to the corporate 1 Pam Chestek, 'Can programming language names be trademarks?' (Opensource.com, 31 August 2010) <https://opensource.com/law/10/8/can-programming-language-names-be-trademarks> CS(COMM) 2/2024 Page 13 of 19 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 14/02/2024 at 21:29:53 names of Defendants No. 2 and 3 as reflected in the Register of Companies, however, the Defendants must be allowed to continue using the website www.javatpoint.com and also the logo ' ' on their website which shall be used only for the purpose of describing the services, the Defendants are rendering.
Analysis and Findings
3. The Court has considered the aforenoted submissions. The Plaintiff is the registered proprietor of the trademark 'JAVA'. The Defendants' Impugned Mark/ Logo 'JAVA T POINT' / ' ' utilizes the Plaintiff's trademark entirely, and the same is also part of their domain name and tradename. Further, they have also incorporated two companies which utilise 'JAVA' in their corporate names, i.e. Defendant No. 2/ Javatpoint Limited and Defendant No. 3/ Javatpoint Tech Private Limited. In the opinion of the Court, the mere addition of the word 'TPOINT' as a suffix to the Plaintiff's trademark 'JAVA' does not take away from the fact that 'JAVA' is the prominent part of the Defendant's Impugned Mark, which is evidently being used purely in a trademark sense. Therefore, such use amounts to prima facie infringement under Section 29(5) of the Act. Moreover, the Plaintiff Group also has a registration of the trademark 'JAVA' in, inter alia, Class 41, and are offering the same services as those offered by the Defendants. Thus, the Defendants' use is also prima facie infringing under Section 29(1) of the Act.
22023 SCC Online Del 7841 CS(COMM) 2/2024 Page 14 of 19 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 14/02/2024 at 21:29:53
4. The Court finds the Defendants' argument, positing that 'JAVA', being the name of a programming language, is ineligible for trademark protection, to be without merit. The Defendants' argument in this regard stems from an article which serves as a piece of opinionated discourse rather than a definitive scholarly work with conclusive insights on the matter. The article primarily raises concerns about the potential for trademark holders to overly police the use of a language name, thereby impacting free speech and limiting the language's usage. However, this scenario does not apply to the current dispute as the Plaintiff has expressly stated its intention not to enforce the 'JAVA' trademark in a manner that would unduly restrict third- party use of the term in its descriptive sense related to programming. The crux of the Plaintiff's complaint lies not in the generic use of 'JAVA' but in its specific application as a trademark by the Defendants, which is precisely the case here. The law of trademark protects against the use of a mark in a way that could cause confusion among consumers regarding the source of goods or services. Therefore, if 'JAVA' is being used by the Defendants in a way that capitalizes on its trademark value established by the Plaintiff Group, and not merely in reference to the programming language, then it constitutes infringement. In the present case, the Court finds that the Defendants' utilization of the Impugned Mark ' ' as a logo goes beyond generically referencing the programming language in a descriptive or educational context. Instead, it adopts 'JAVA' in a trademark capacity, thereby directly infringing upon the Plaintiff's rights over their registered trademark.
5. At this juncture, Mr. Dhingra, on instructions and without prejudice to CS(COMM) 2/2024 Page 15 of 19 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 14/02/2024 at 21:29:53 his rights and contentions, agrees and undertakes that the corporate names of Defendant No. 2 (Javatpoint Limited) and Defendant No. 3 (Javatpoint Tech Private Limited) will be altered to exclude the word/term 'JAVA'. This commitment extends to undertaking all necessary legal steps to effectuate this name change and to ensure that these amendments are duly registered in the records of the Register of Companies.
6. The Defendants mentioned above are directed to file affidavits confirming this undertaking within ten days from the date of this order. Additionally, in response to the request made, a period of two months is granted to the Defendants to complete the necessary formalities to make the changes in accordance with the undertaking.
7. Thus, the Court is left to consider the Defendant's request for allowing them to use 'JAVA' as part of their domain name as well as the use of their logo on their website for describing their services. On this aspect, it is pertinent to again note that the Plaintiff allows the use of their trademark 'JAVA' by the developer community if such use is descriptive of their knowledge of, proficiency, or use of JAVA programming language. The averments to this effect have been specifically urged by Ms. Majumdar, and are also set out at Paragraph No. 22 of the plaint as follows:
"22. It is submitted that the Plaintiff does not object to the use of its trademark JAVA by the developer community insofar as it is descriptive of their knowledge of, proficiency in, or use of the JAVA programming language. However, its statutory and common law rights are infringed when the mark JAVA is used as a trade or business name or in any other commercial manner which clearly amounts to trademark use and creates confusion and deception in the minds of consumers. Given that the Defendants' use of the Plaintiff's trademarks is clearly infringing, the Plaintiff sent a cease-and-desist notice dated 04.12.2019 to them drawing their attention to the fact that the use of the impugned mark 32 CS(COMM) 2/2024 Page 16 of 19 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 14/02/2024 at 21:29:53 JAVATPOINT and logo as also the trade name/domain name containing JAVA are impermissible."
8. In the opinion of the Court, the Defendant's use of JAVA as part of their domain name and also in relation to their services, would not align with the Plaintiff's policy of permitted use, as has been set out above. Thus, their use of the Plaintiff's trademark on the website and as part of their domain name would continue to amount to an infringement. On this issue, it would be profitable to refer to the judgment of the Supreme Court in Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.3, wherein the Court analysed the question relating to infringement pertaining to the use of a mark as part of a domain name and observed as follows:
"11. Analysing and cumulatively paraphrasing the relevant parts of the aforesaid definitions, the question which is apposite is whether a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the internet.
12. The original role of a domain name was no doubt to provide an address for computers on the internet. But the internet has developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for internet communication but also identifies the specific internet site. In the commercial field, each domain-name owner provides information/services which are associated with such domain name. Thus a domain name may pertain to provision of services within the meaning of Section 2(1)(z). A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location [Ryder, Rodney D.: Intellectual 3 (2004) 6 SCC 145 CS(COMM) 2/2024 Page 17 of 19 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 14/02/2024 at 21:29:53 Property and the Internet, pp. 96-97.] Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.
"As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trade marks containing the same name can comfortably coexist because they are associated with different products, belong to business in different jurisdictions, etc., the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value [ See Rowland, Diane and Macdonald, Elizabeth:
Information Technology Law, 2nd Edn., p. 521.]."
The answer to the question posed in the preceding paragraph is therefore in the affirmative.
xx...............xx..............xx
16. The use of the same or similar domain name may lead to a diversion of users which could result from such users mistakenly accessing one domain name instead of another. This may occur in e-commerce with its rapid progress and instant (and theoretically limitless) accessibility to users and potential customers and particularly so in areas of specific overlap. Ordinary consumers/users seeking to locate the functions available under one domain name may be confused if they accidentally arrived at a different but similar website which offers no such services. Such users could well conclude that the first domain-name owner had misrepresented its goods or services through its promotional activities and the first domain-owner would thereby lose its custom. It is apparent, therefore, that a domain name may have all the characteristics of a trade mark and could found an action for passing off."
9. In view of the above, Defendant No. 1's aforenoted request cannot be allowed. Therefore, since Plaintiff has made out a strong prima facie case, an injunction is granted in favour of the Plaintiff by directing the Defendants, and/or any person on their behalf, not to use the Plaintiff's trademark 'JAVA' as part of their domain name 'javatpoint.com', and also in relation to the services they are offering. If at all the Defendants were to CS(COMM) 2/2024 Page 18 of 19 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 14/02/2024 at 21:29:53 use the mark 'JAVA', such use must be done strictly in terms of the 'Third Party Usage Guidelines for Oracle Trademarks', which are stated on the Plaintiff's website www.oracle.com and have been reproduced above.
10. Furthermore, Ms. Majumdar also presses that the Defendant is claiming to be offering Oracle-certified courses, although no such authorization has been given by the Plaintiff. This again is prima facie not permissible and would amount to infringement, as it is likely to mislead the general public and create a false impression of association of the Defendants' services with the Plaintiff Group. On this aspect, Mr. Dhingra, on instructions, states that no such claims are being made, however, nonetheless undertakes not to make any such claims.
11. The application is disposed of in the above terms.
SANJEEV NARULA, J FEBRUARY 12, 2024 nk CS(COMM) 2/2024 Page 19 of 19 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 14/02/2024 at 21:29:53