Delhi High Court - Orders
Exxon Mobil Corporation vs M/S Xcel Automotives Pvt. Ltd. & Anr on 30 September, 2020
Author: Rajiv Shakdher
Bench: Rajiv Shakdher
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 600/2019, I.A. No. 6501/2020 & I.A. No. 631/2020
EXXON MOBIL CORPORATION .....Plaintiff
Through Ms. Anuradha Salhotra, Mr. Sumit
Wadhwa, Ms. Saugaat Khurana and
Ms. Aditi Menon, Advs.
versus
M/S XCEL AUTOMOTIVES PVT. LTD. & ANR. .....Defendants
Through Ms. Meenakshi Ogra and Ms.
Niharika Sanadhya, Advs. for D-1
[now discharged].
Mr. Om Maurya, AR of D-1 in
person.
Mr. Rohan Ahuja and Mr. Aadhar
Nautiyal, Advs. for D-2.
CORAM:
HON'BLE MR. JUSTICE RAJIV SHAKDHER
ORDER
% 30.09.2020 [Court hearing convened via video-conferencing on account of COVID-19] I.A. No. 8777/2020
1. This is an application moved by the counsel on record who appears on behalf defendant no. 1.
2. The substantive prayer made in the application is as follows:
" a) permit the Applicant to withdraw its vakalatnama filed on behalf of Defendant no.1 Company and consequently discharge the Applicant i.e. Khurana and Khurana, advocates and IP Attorneys as counsels for Defendant No.1 Company in the present suit;"
3. Ms. Meenakshi Ogra, who appears, today, in support of the application, says that since clear instructions were not being given by Signature Not Verified Digitally Signed CS(COMM) 600/2019 By:VIPIN KUMAR RAI Signing Date:01.10.2020 Page 1 of 8 23:04:29 defendant no. 1, in particular, after the hearing held on 09.09.2020, a decision was taken to seek discharge in the matter.
4. There is an averment in the application to the effect that an email was sent to the authorised representative of defendant no. 1 on 10.09.2020 informing him about the difficulties faced.
4.1 There is also an assertion in paragraph 4 of the captioned application that Mr. Om Maurya, who is one of the directors on the board of defendant no. 1 was clearly informed about the decision of the counsel on record to withdraw the Vakalatnama.
4.2 Mr. Om Maurya has joined the virtual-court hearing today. He is identified by Ms. Ogra.
5. Thus, having regard to the averments made in the captioned application, the prayer made therein is allowed. 5.1 Khurana and Khurana, advocates and IP Attorneys are discharged from their obligation to appear on behalf of defendant no. 1.
6. The application is disposed of in the aforesaid terms.
I.A. No. 633/20207. Pursuant to the order dated 09.09.2020, an affidavit dated 15.09.2020 has been filed on behalf of the plaintiff.
7.1 Via the aforementioned affidavit, documents supporting the live demonstration given by Ms. Anuradha Salhotra, who appears on behalf of the plaintiff, with regard to consummation of sale with Amazon and Pay with IndiaMart have been placed on record.
7.2 Ms. Salhotra informs me that she has received intimation for cancellation of the order placed on Amazon.
7.3 It is also stated by Ms. Salhotra that the ordered goods have not been Signature Not Verified Digitally Signed CS(COMM) 600/2019 By:VIPIN KUMAR RAI Signing Date:01.10.2020 Page 2 of 8 23:04:29 received from Pay with IndiaMart. According to Ms. Salhotra, Pay with IndiaMart is a wholly-owned subsidiary of defendant no. 2. 7.4 Mr. Rohan Ahuja, who appears for defendant no. 2, says that he would like to file an affidavit-in-reply to explain the transaction which was sought to be carried out on the portal of Pay with IndiaMart. 7.5 Mr. Ahuja says that he wishes to file an affidavit to show that defendant no. 2 is not a platform on which the sale transaction takes place. According to Mr. Ahuja, defendant no. 2 is only a content aggregator and a listing platform.
8. Even if I were to assume all that Mr. Ahuja says to be correct, insofar as the transaction with Amazon is concerned, clearly, that occurred in the live demonstration given to the Court by Ms. Salhotra.
9. To my mind, this Court has jurisdiction in the matter. The transaction which was consummated fulfils the "purposeful availment test" enunciated in Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2009 SCC OnLine Del 3780. The relevant observations made, in this behalf, are extracted hereafter.
"58.
xxx xxx xxx Question (ii): In a passing off or infringement action, where the defendant is sought to be sued on the basis that its website is accessible in the forum state, what is the extent of the burden on the Plaintiff to prima facie establish that the forum court has jurisdiction to entertain the suit? Answer: For the purposes of Section 20 (c) CPC, in order to show that some part of the cause of action has arisen in the forum state by the use of the internet by the Defendant the Plaintiff will have to show prima facie that the said website, whether euphemistically termed as "passive plus" or "interactive" was specifically targeted at viewers in the forum state for commercial transactions. The Plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by the Defendant with a user of its website within the forum state resulting in an injury or harm to the Plaintiff within the forum state."Signature Not Verified
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By:VIPIN KUMAR RAI
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9.1 The principle set forth in Banyan Tree Holding case, when
juxtaposed with the assertions made in paragraph 39 of the plaint1, persuade me to hold, as indicated above, that the plaintiff has been able to show that there are enough ingredients to trigger the jurisdiction of this Court. 9.2 The transaction referred to in the order dated 09.09.2020 was carried out via a third-party e-commerce platform which was certainly not a trap order.
10. Mr. Om Maurya, who, as indicated above, has joined the proceedings seeks further time.
11. In my view, no further time can be given as the advocates for defendant no. 1 had given him adequate notice of seeking discharge in the 1 "39. This Hon'ble Court has territorial jurisdiction to entertain and try the present suit on account of the following -
(a) the first Defendant is situated in Gurgaon and further operates in the National Capital Region (NCR) of Delhi. Further, on the website of the second Defendant, the first Defendant claims to be one of the leading automotive parts manufacturing companies in India. It therefore is strongly apprehended that they are selling the impugned product in New Delhi and would be available within the jurisdiction of this Hon'ble Court. It is submitted that the threat that the first Defendant will sell and / or offer for sale the impugned product within the jurisdiction of this Hon'ble Court is credible and imminent: especially, since the consumer base for lubricant products is extremely high in Delhi (NCR);
(b) the first Defendant has on its website www.xcelautomotives.com stated in the Company Profile as "Xcel Automotives Pvt. Ltd. is one of the leading automotive parts manufacturing company in India, located in Gurgaon, Haryana..... Xcel provides the widest range of solutions to the Indian automotive industry." The said website also has a Contact Us section wherein customers from all over India including New Delhi Can submit queries regarding their requirements. In addition, on the website http://www.getindustrialproducts.com/sellers/Xcel-Automotives-Pvt-Ltd~44022/, the first Defendant states that "Xcel Automotives Pvt. Ltd. is one of best manufacturer &supplier of Gurugram Haryana, but we can supply our product all over India." There is thus an obvious imminent threat of the first Defendant to expand its market base of the impugned products even in Delhi which is a commercial hub and caters to a substantial market of loyal consumers of the Plaintiffs products. The Plaintiff, thus, has a very strong apprehension of infringement of its sole and exclusive rights occurring in Delhi i.e. within the jurisdiction of this Hon'ble Court; ..."Signature Not Verified
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instant case. Alternate arrangements ought to have been made. Besides this, the matter was argued at length on the previous dates [i.e. 14.08.2020 and 09.09.2020] by Ms. Ogra on behalf of defendant no. 1.
11.1 It was only when, on 09.09.2020, a live demonstration was given by Ms. Salhotra to the Court that goods of defendant no. 1 bearing the impugned mark were available within its jurisdiction, albeit via platforms such as Amazon, that defendant no. 1 is seeking to avoid closure of the hearing in the captioned application. Mr. Maurya's request is not bona fide.
12. The captioned application, to my mind, is unmerited given the facts which emerged in the matter. The same is, accordingly, dismissed.
I.A. No. 14951/201913. To be noted, notice in the captioned application was issued on 24.10.2019.
14. A perusal of the record would show that the plaintiff sought injunction against defendant no. 1 inasmuch as it made use of a deceptively similar device mark i.e. Mirvin accompanied by a picture of a horse. The said device mark, for the sake of convenience, is set forth hereinafter:
15. It is not in dispute that defendant no. 1 is, inter alia, in the same line of business as the plaintiff which is manufacture and sale of lube oils.
16. The plaintiff claims that it has been using its well-known registered device mark Pegasus which includes a horse as well. 16.1 It is the assertion of the plaintiff that the aforementioned device mark has been in use since 1942.
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16.2 Both, in the captioned application as also in the plaint, details are given as to the extent of business carried out in India by the plaintiff by reference to its revenue. For this purpose, Ms. Salhotra has, illustratively, drawn my attention to paragraph 12 of the captioned application. 16.3 A perusal of the same shows that it is claimed by the plaintiff that its annual sales, in India, of MOBIL branded lubricants bearing the Pegasus device mark and industrial oil products averaged, approximately, 170,000 barrels between 2003 and 2017. It is further asserted by the plaintiff that this resulted in average annual revenue of approximately USD 72 million. 16.4 Insofar as the advertising spend, in India, in respect of the plaintiff's Pegasus device mark is concerned, my attention has been drawn to the figures set out in paragraph 14 of the captioned application. 16.5 I must also indicate that there is also an assertion with regard to sales in other jurisdictions and the amounts spent on promotion and sales in these jurisdictions. However, for the sake of brevity, these figures are not referred to herein. To be noted, though, information concerning these aspects is provided in paragraph 12 and 14 of the captioned application.
17. To my mind, prima facie, at least at this stage, I am persuaded to hold that the impugned device mark used by defendant no. 1 is deceptively similar to that of the plaintiff's registered device mark. 17.1 The balance of convenience also appears to be in favour of the plaintiff given the extent of its turnover in India and abroad and the money spent by it on sales promotion.
17.2 Ms. Salhotra is right in her contention that continued sale of its goods by defendant no. 1 under the impugned device mark is likely to cause confusion as to the source of goods.
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18. Therefore, I am of the view that irreparable harm will be caused to the plaintiff's business interests and statutory rights if defendant no. 1 is permitted to sell its goods under the impugned device mark or any other mark(s) which is deceptively similar to the plaintiff's registered device marks.
19. Thus, till further orders of this Court, defendant no. 1, its agents, employees, distributors, franchisees and assignees are restrained from selling their goods under the impugned trademark or any other mark which is deceptively similar to the plaintiff's registered device marks. 19.1 Defendant no. 1 is also directed to file an affidavit with regard to the goods held by it and/or its distributors, franchisees and assignees which bear the impugned trademark. The affidavit will disclose the location of such goods. This affidavit will be filed within 10 days from today; a copy of which will be furnished to Ms. Salhotra via e-mail. 19.2 Furthermore, defendant no. 1 will also remove the impugned device mark from its web-page, which is available on defendant no. 2's platform, as also from its corporate name, domain name and email address.
20. List the captioned application on 18.12.2020.
I.A. No. 7455/202021. Ms. Salhotra says that this application is not pressed.
22. The application is, accordingly, closed.
CS (COMM) 600/2019
23. I am informed that pleadings in the suit are complete and admission/denial of documents via affidavits has also taken place.
24. List the matter for framing of issues on 18.12.2020.
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25. Counsel will place before the Court, draft issues, on the next date of hearing.
RAJIV SHAKDHER, J
SEPTEMBER 30, 2020
rb/KK
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Signature Not Verified
Digitally Signed CS(COMM) 600/2019
By:VIPIN KUMAR RAI
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