Madras High Court
M/S.Exxon Mobil Corporation vs M/S.Exon Biosciences Private Limited on 24 September, 2019
Equivalent citations: AIRONLINE 2019 MAD 924, 2020 AIR CC 64 (MD)
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
O.A.Nos.720 & 721 of 2019
Reserved on : 17.09.2019
Pronounced on :24.09.2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
CORAM
THE HONOURABLE MR.JUSTICE N.SATHISH KUMAR
Original Application Nos.720 & 721 of 2019
in
C.S.No.455 of 2019
M/s.Exxon Mobil Corporation,
5959 Las Colinas Boulevard
Irving, Texas 75039-2298, U.S.A.
Through its Power of Attorney Agen
Ms.Poulami Laskar
residing at H/30, First Floor,
Mahavir Enclave, Palam Dabri Road,
New Delhi – 110 045. ... Petitioner
Vs
1. M/s.Exon Biosciences Private Limited,
No.14/11A, Ground Floor, Ratha Nagar,
1st Main Road,
Velachery, Chennai – 600 042.
2. M/s.Good Domain Registry,
34-A, Main Road, Kennedy Square,
Perambur, Chennai – 600 011. ... Respondents
Prayer :- This Original application has been filed under Order 14 Rules 8 of
Madras High Court Original Side Rules read with Order XXXIX Rule 1 and 2 of
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O.A.Nos.720 & 721 of 2019
CPC to pass an Order of ad interim injunction restraining the 1st respondent/1st
defendant, its directors, successors, franchisees, licensees, distributors,
representatives, assignees, men, servants, agents, retailers, sister concerns,
affiliates and/or any other person acting and/or claiming under/through the 1st
respondent/1st defendant from in any manner using the mark/trade name EXON
by itself and/or in conjunction with any other word, and/or any other trade
name/trade mark/trading style/domain name/ email address identical/deceptively
similar to the Applicant/plaintiff's well known EXXON trade mark as a trade mark
or part of a trade mark, trade name or part of a trade name, corporate name or
part of a corporate name, domain name or part of a domain name, or in any
manner whatsoever in relation to its goods, services or in any manner
whatsoever, thereby passing off its products and/or services as that of the
Applicant/Plaintiff and which would amount to infringement of the registered
trademarks of the applicant/plaintiff as shown in para 11 of the plaint pending
disposal of the instant suit.
For Petitioner : Mrs.Anuradha Salhotra
for Mr.R.Palaniandavan
For Respondents : Mr.R.Sathish Kumar
ORDER
These applications have been filed for temporary injunctions restraining the first respondent and his men from in any way passing off its products and/or services as that of the Applicant/Plaintiff and which would amount to infringement of the registered trademarks of the applicant/plaintiff till the disposal of the suit. 2/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019
2. Brief facts leading to filing of this application is as follows :
The plaintiff has filed the suit against the first defendant for permanent injunction not to use the mark EXXON of the plaintiff and also passing off and mandatory injunction and other reliefs. These applications have been taken out for temporary injunctions. It is the case of the applicant that the plaintiff was formed on August 5th, 1982 as Standard Oil Company of New Jersey. After various changes, the company adopted the trade name 'Exxon Corporation' in 1972. The main business activities of the applicant/plaintiff is with regard to the upstream and gas exploration and production, downstream refining and marketing of petroleum products, chemical products and technological research and innovation. The word 'EXXON' was adopted and first used as a trademark by the applicant/plaintiff and first used as a trademark by the applicant/plaintiff on October 6, 1967 in the United States of America after a study in United States of America. The word 'EXXON' is a registered mark in at least 160 jurisdictions of the world, including India. In India there are over 38 registrations for the word 'EXXON' for a vide variety of goods and services falling in 20 classes, namely classes 1, 2, 3, 4, 5, 6, 9, 11, 12, 16, 17, 19, 22, 23, 24, 25, 27, 29, 30, 31 and
39. The 'EXXON' branded products have been marketed and sold in India as early as 1982. They also have Research Development and Technology Center at Bangalore. The 'EXXON' trade mark has been extensively and widely used in 3/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 connection with the applicant/plaintiff's goods and services worldwide. The applicant/plaintiff has filed a number of cases against various defendant in respect of the trademark. In January 2019, the applicant found a listing of the 1st respondent/defendant – EXON BIOSCIENCES PVT. LTD. in the website of Ministry of Corporate Affairs. The first respondent/first defendant had a website at the link – www.exonbiosciencs.in and using the mark. The word and are identical on the website. The above domain name has been created on April 02, 2018 and registered in the name of the first defendant. The above website reveals that the first defendant is engaged in the business of shrimp framing and marketing of health care products in aquaculture within the boundaries of India.
3. The first respondent has applied for registration of EXON in Class 31 in respect of 'foodstuff for animals'. The application was filed on February 02, 2019 bearing application number 4074954. Whereas, the same was objected and the application bearing registration Nos.245177 and 275881 for marks EXXON and EXXON were cited as a ground for refusal of the registration of the first respondent/defendant's application under section 11 of the Trade Marks Act, 1999. The plaintiff has sent a legal notice dated 01.03.2019 and no reply has 4/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 been sent by the defendants. Despite legal notice, the respondents are continuing to infringe the trademark of the applicant/plaintiff. Hence, these applications have been filed for interim injunction
4. The first respondent filed a common counter contending that the first respondent is a registered company incorporated in 2018 under the Companies Act, 2013 and named their company 'Exon Biosciences Private Limited'. They are one of the premier aquaculture companies in India, primarily dealing with manufacturing foodstuff for aquatic animals. The word 'EXON' is coined with logical meaning and purpose referring to both the coding DNA sequence and its corresponding RNA transcript. They are using the trade mark since 2018 or thereabouts for their sustainable aquaculture products wherein trade mark EXON is a prominent and indispensable part thereof. They have also applied for registration of trade mark device EXON under No.4074954 in Class 31 for 'food stuffs for animals' and the same is pending. The applicants are not in the business of the first respondent. The first respondent's activities are restricted to aqua culture and as such they are not in any of the ventures/activities that the applicant is in and undertakes that they would not use the trademark EXON for any other products or services. It is his further contention that the trademark EXXON in Class31 under 275881 is only an associated mark and as such the 5/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 principal mark on which the trade mark is associated seems to have lapsed/refused. Hence, there is no right over the registration of the trademark EXXON in class 31. The trademark EXXON is being used in India or abroad only for the products that are dissimilar and unconnected with the first respondent's activities.
5. The learned counsel appearing for the applicant would submit that the plaintiff company is the registered owner of the trade mark EXXON and the trademark is registered under registration No.2413177 on 19.10.1971. It is valid upto 21.06.2019. Similarly, the trademark 245163 is registered on 05.02.1972 and is valid upto 2029. The registration is provided for food stuff for animals Mark etc. and registration No.2454177 was registered on 28.10.1967 and renewed and valid up to 28.10.2029. Whereas the first defendant has registered the company in the year 2018 and adopted the trade mark 'EXON', the trademark of the plaintiff, similar to that of the plaintiff except word 'x' interlocking, has been adopted by the respondent. The application was given on 02.02.2019, which was kept pending since, similar trademark is already available in respect of service of food and to food stuff etc. Hence, it is her contention that when the registered trademark of the plaintiff has been infringed, the plaintiff is certainly entitled to statutory protection under the Trade Marks Act. It is further 6/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 contented that the trademark of the plaintiff is well known mark and recognized by the various Courts in India. As per Section 29 of the Trade Marks Act, he is entitled for protection to the trade mark. Further, it is the admitted case of the defendant that he made an application only in the year 2019 and started the company in the year 2018 in the name of EXON, whereas the plaintiff's trademark was registered in the year 1967 and 1971 for food stuff for animals. Hence, submitted that the plaintiff has made out prima facie case and balance of convenience is also in favour of the applicant. If the injunction is not granted, irreparable injury will be caused to them. It is also brought to the notice of this Court that the judgment of the Calcutta High Court in Exxon Mobil Corporation & another Vs. P.K.Sen reported in 2018 (76) 263 Calcutta wherein the Calcutta High Court has held that the plaintiff's trade mark is a well known trade mark. The defence of the respondent that the word EXXON is a protein coding sequence of DNA which is part of RN transcript or group sequence was taken into consideration in the above case and the Calcutta High has held that the plaintiff's trademark is a well known trade mark. The learned counsel also relied upon the judgment of the Division Bench of this Court in Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and others reported in 2011 (4) CTC 417. 7/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019
6. Whereas, the learned counsel appearing for the respondents submitted that the trademark was registered in the name of the plaintiff in the year 1967 and 1971. The goods relate to the food stuff for animals and the same was not used by the plaintiff after the registration of the trade mark, it is his contention that the trademark cannot exist without any goods The plaintiff has to show that they are selling any goods. Even in the plaint, it is stated by the plaintiff that the plaintiff's services and defendant's goods and services have no connection with the plaintiff whatsoever. It is his further contention that as per Section 47 of the Trademarks Act, when the trade mark was not registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods or services covered under the certificate, the certificate can be removed from the registration of trademarks. Hence, it is his contention that he has a right to approach the Trademark Registrar for removal of the trademark since the goods or service covered under the registration certificate has not been used from their registration. Hence, it is his contention that as long as the goods are no way connected to the plaintiff and the business is totally different, there cannot be injunction against the defendant. It is further contended that clause 29 (4) of the Act is not applicable to the plaintiff since the goods of the respondent is not similar and not identical to the goods or service of the applicant. Further, whether or not there is infringement is 8/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 a matter of evidence and the same cannot be gone into at this stage. Therefore, it is his contention that Section 29(5) of the Trademarks Act also cannot be pressed into service. In support of his submissions, he has relied upon the Full Bench Judgment of the Bombay High Court reported in Cipla Limited Vs Cipla Industries Private Limited and another, reported in 2017 (69) PTC 425
7. It is not in dispute that the plaintiff has registered the trademark in their name. The plaintiff's trade mark is 'EXXON'. It is originally registered on 28.10.1967 covered for various products including the food stuff for animals, etc. Their registration has been renewed upto 28.10.2019. Similarly another registered trademark in registration No.275881 on 29.10.1971 and the trade mark in registration No.329348 has been registered on 29.09.1977, which also includes food stuff for animals. These facts are not in dispute. The trademark for registration No.275881 is EXXON and the trade mark for 32938 is EXXON. From the above two registration certificates, it can be seen that the trademark EXXON has been registered in the name of the plaintiff. It is not in dispute that the first defendant has given an application on 02.02.2019 for trademark EXON in which the word 'X' has been differently styled. This application is pending registration on the ground that similar trade mark has already been registered in 9/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 respect of food stuff for animals etc. These facts are also not disputed. It is also not disputed that the first defendant has adopted such trade mark in the year 2018 as per his counter affidavit.
8. No doubt, the plaintiff has also stated in the plaint that the goods dealt by the respondent is for fish food and the same is not similar to the plaintiff's business. Section 47 of the Trademarks Act deals with the removal of the mark which was registered without any bonafide intention of the applicant without using in relation to the goods or service covered under the certificate. The fact remains that no such application is pending.
9. Be that as it may. Though the power to cancel is available under Section 47 of the Trade Marks Act, such exercise has not been made by the respondent. Section 28 of the Trade Marks Act deals with the rights of the registered owner of the trademark. Subject to the other provisions of the Act, registration of the trademark shall, if valid, give to the registered owner exclusive rights to the use of the trademark. Section 29 of the Trade Marks Act deals with infringement of the trademark. Section 29 of the Act reads as follows : 10/23
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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. 11/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(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 mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
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(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising—
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
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10. A careful perusal of S.29(4) of the Act, it is seen that when a person uses the mark which is identical with or similar to the registered trade mark, the said trademark is infringed. Similarly Sub clause (5) of 29 of the Act deals with a person uses such registered trademark, as a part of his trade name, or name of his business concern or part of the name of the business concern dealing in goods or services in respect of which the trade mark is registered. Sub Clause 5 of the Section 29 say that when the trademark registered is used as a trade name or part of the name of his business concerned in respect of trade mark, there is an infringement. But Sub Section 4 of 29 of the Act makes it clear that when the registered trade mark is used by any other persons in the course of trade, there is an infringement of the registered trade mark.
11. In this regard, it is relevant to extract the relevant portion judgment of the Full Bench of the Bombay High Court in Cipla Limited Vs Cipla Industries Private Limited and another, reported in 2017 (69) PTC 425 “23. Sub-Section (4) is crucial for our consideration. It brings about a major departure from the old Act. It applies in case of a mark which is used during the course of trade in relation to goods or services which are not similar to those for which the 14/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 trade mark is registered provided other conditions in the Sub- Section are fulfilled. The said conditions are (i) the mark used is identical with or similar to the registered trade mark , (ii) the registered trade mark has a reputation in India and (iii) by the use of the mark without due cause, the user takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
24. Thus for attracting Sub-Section (4), it is not necessary for the Plaintiff to show possibility of confusion by the use of a mark which is identical to or similar to the registered trade mark in relation to goods or services which are not similar to those for which the trade mark is registered.
and finally summarised in para 51 as follows :
"51. The legal position emerging as a result of the above discussion may be summarised as under:
(a) Section 29(5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of 45 of 50 46 nms-
2463.12 in suit-1906.12 his business concern or part of the name, 15/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered.
(b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29(5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern.
(c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29(5) is not fulfilled. Where the registered trade mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, the owner or proprietor of the registered trade mark is not precluded from seeking a remedy under Section 29(4) 16/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 of TM Act 1999 if the conditions attached to Section 29(4) are fulfilled.
(d) Given the object and purpose of Section 29(1) to (4), Section 29(5) cannot be intended to be exhaustive of all situations of uses of the registered mark as part of 46 of 50 47 nms-2463.12 in suit-1906.12 the corporate name. Section 29(5) cannot be said to render Section 29(4) otiose. The purpose of Section 29(5) was to offer a better protection and not to shut the door of Section 29(4) to a registered proprietor who is able to show that the registered mark enjoying a reputation in India has been used by the infringer as part of his corporate name but his business is in goods and services other than that for which the mark has been registered.
(e) A passing off action is maintainable in the case of a well known mark even if the goods and services being dealt with by the parties are not similar." ( Emphasis added) For the reasons which we have set out earlier, we are unable to concur with the view expressed in the aforesaid highlighted portions of paragraphs 45.4 and 51 of the Judgment which otherwise is a very erudite opinion of the learned single Judge of 17/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 the Delhi High Court. He has read into Sub-Section (4) the use of a trade mark as a part of corporate/trade/ business name. With greatest respect, Sub-Section (4) applies only when a mark is used during the course of trade in relation to goods or services which are not similar to those for which the trade mark is registered. By way of illustration, we may say that when a trademark "XYZ" is registered in respect of goods "A" is used while selling goods of the category "B" which are not similar to "A", Sub-
47 of 50 48 nms-2463.12 in suit-1906.12 Section (4) will apply if the other conditions are satisfied. Sub-Section (5) will apply when a trademark "XYZ" is registered in respect of the goods "A" and the Defendant uses "XYZ" as a part of the name of his business concern dealing in the goods similar to the goods in respect of which the trade mark is registered
12. The Division Bench of this Court in Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and others reported in 2011 (4) CTC 417 has held that when the plaintiff's trademark is a registered, his statutory right has to be protected. Once infringement of trade mark is established normally injunction 18/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 must follow. The plaintiff has also obtained Orders from various court. In one of the Order, wherein, the plaintiff as themselves as a party, Calcutta High Court in Exxon Mobil Corporation & another Vs. P.K.Sen reported in 2018 (76) 263 Calcutta has held as follows :
119. It is significant to note that by the time the respondent decided to start its business under the trading name "Exon Engineering Corporation", the trade mark "Exxon" was a shining star in the horizon and already having significant presence in the world market. It also had a significant presence in India. It had world-wide reputation and goodwill including in India.
120. The very fact that the respondent has applied for registration of the mark "Exon" in 1989 as "proposed to be used" shows that the respondent never treated and/considered the word "Exon" as something which is common, ordinary and not registrable. An attempt has been made by the learned Counsel representing the respondent that the word "Exon" is a common dictionary word and hence not registrable. Further, no application for rectification or cancellation of the mark "Exxon" 19/23
http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 has been initiated. A word not so commonly used or known but found in the dictionary still can acquire distinctiveness through secondary meaning if such word is exclusively, uninterruptedly and extensively used by the claimant. In such a situation it becomes associated with the claimant and acquires distinctiveness. The dictionary meaning of the word "Exon" is "in bio-chemistry: a segment of a DNA or RNA molecule containing information coding for a protein or peptide sequence" (Oxford English Dictionary, Tenth Ed. Revised). It is not one of such words which one would ordinarily look for in the dictionary or commonly used. It is not a common word. It has no connection with any fire extinguisher or a fire extinguishing composition. The word "Exxon" does not describe the character or quality of the goods. The said mark is distinctive per se. If a word is invented, it must, for practical purpose, be considered as original as stated by Justice Graham in Exxon Corporation & Ors. (supra).
122. Like the English case, here also the defendant has 20/23 http://www.judis.nic.in O.A.Nos.720 & 721 of 2019 no connection with the petitioners or any of them but nonetheless the defendant has adopted the petitioners' name "Exon" as part of trading name. The mere omission of the alphabet 'X' by the defendant cannot absolve the defendant of his liability to explain the adoption of the said mark. Since very registered trademark has been infringed and the first defendant started the business not only infringing the trademark of the plaintiff business but also contained the name of Exxon. The word ' and are identical and phonetically same and deceptively similar. Though the goods dealt by the respondent is dissimilar to the goods covered under the plaintiff, the plaintiff had gained lot of reputation in the trade name. Considering the fact that the plaintiff has made out prima facie case and balance of convenience is also in favour of the plaintiff, their right has to be protected. Similarly, the defendants, despite their application was not registered and pending on the ground that similar trademark is already available in respect of similar goods, still continuing business infringing the mark of the plaintiff which is also recognized as a well known mark and the same will give unfair advantage to the defendant. In view of all these facts, the applicant/plaintiff is certainly entitled to injunctions as prayed for.
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13. According, both the applications are Ordered as prayed for.
24.09.2019
Index : Yes/ No
Internet : Yes
Speaking/Non-speaking Order
vrc
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N.SATHISH KUMAR, J.
vrc
Order in
Original Application Nos.720 & 721 of 2019
in
C.S.No.455 of 2019
24.09.2019
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