Full Text
HIGH COURT OF DELHI
Date of Decision: 06.07.2022
META PLATFORMS, INC. ..... Plaintiff
Through: Mr.Pravin Anand, Ms.Vaishali Mittal, Mr.Siddhant Chamola, Mr.Shivang Sharma, Advs.
(Mobile-9999052646)
Through: None
JUDGMENT
1. This suit has been filed by the plaintiff praying inter-alia for a decree of permanent injunction restraining the defendants from using the mark „Facebake‟ and/or the domain name www.facebake.in; the email IDs facebake.mail@gmail.com; facebake649@gmail.com, as also for seeking rendition of accounts.
2. This Court, vide order dated 12.11.2020 was pleased to pass the following ad-interim order:
3. As none appeared for the defendant no.1, (who was the sole defendant till that date), this Court confirmed the ad-interim order dated 12.11.2020, vide the order of this Court dated 21.01.2021, and further passed the following directions:
4. The plaintiff thereafter filed an application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (in short, the „CPC‟), being IA No.8765 of 2021, alleging therein that despite the above orders being passed by this Court, the defendant no.1 incorporated a company by the name of „Ehrlich Foods and Beverages Pvt. Ltd’ on 27.01.2021, and is one of its directors. The said company has preferred a trade mark application bearing no. 4926784 under Class 30, seeking the registration of a deceptively-similar mark dated 30.03.2021.
5. The plaintiff also filed another application, being IA No. 10045 of 2021, under Order I Rule 10 of the CPC praying to implead the said company as defendant no.2 in the suit.
6. The said company was then impleaded as the defendant no.2 in the suit vide the order of the learned Joint Registrar (Judicial) dated 11.08.2021.
7. None appeared for the defendant no.2 in spite of service, thus, even the defendant no.2 was proceeded ex-parte vide an order of this Court dated 10.11.2021.
8. It is the case of the plaintiff that the plaintiff-company has been incorporated in the United States of America and adopted Facebook, which is a world-famous, social networking service. It also launched a mobile application and website under the mark „Facebook‟ in 2004. Some key products/features of the plaintiff under the mark „Facebook‟ include, for example, Facebook Profile, Facebook News Feed, Facebook Messenger, Facebook Groups, Facebook Events, Facebook Video, Facebook Photos, Facebook Pages, Facebook Shops (launched in May, 2020) and Facebook Marketplace (launched in October, 2016).
9. The plaintiff has given details of registrations obtained by it in its marks (hereinafter referred to as „Facebook marks‟) as under:
┌────────────────────────────────────────────────────────────────────────────────────────────────┐ │ Sl. No. Trademark Class Reg. No. Reg. Date Valid upto │ ├────────────────────────────────────────────────────────────────────────────────────────────────┤ │ 1. FACEBOOK 35 & 38 1436663 22 March 22 March │ │ 2006 2026 │ │ 2. THE FACEBOOK 35 & 38 1436949 23 March 23 March │ │ 2006 2026 │ │ 3. FACEBOOK 25 1535619 28 February 28 February │ │ 2007 2027 │ │ 4. FACEBOOK 9, 38 & 42 1622925 20 November 20 November │ │ 2007 2027 │ │ 5. 9,35, 36, 38, 1971560 26 May 2010 26 May 2030 │ │ 41 & 42 │ │ 6. FACEBOOK 16, 35, 40 & 2309997 3 April, 2012 3 April, 2022 │ │ 7. 16, 35, 40 & 2309996 3 April, 2012 3 April, 2022 │ │ 8. FACEBOOK 16 2399531 20 September 20 September │ │ 2012 2022 │ │ 9. 43 3296117 28 June 2016 28 June 2026 │ │ 10. FACEBOOK 36 3552373 19 May 2017 19 May 2027 │ │ 11. FACEBOOK 43 3552374 19 May 2017 19 May 2027 │ │ 12. 9,38, 41, 42 3749225 9 February 9 February │ │ & 45 2018 2028 │ │ 13. FACEBOOK 41 3913396 10 August 10 August │ │ 2018 2028 │ │ 14. FACEBOOK 45 4029140 17 December 17 December │ │ 2018 2028 │ │ 15. FACEBOOK 9, 35,38, 41, 1855761 27 August 27 August │ │ DEVELOPER 42 & 45 2009 2029 │ │ GARAGE │ │ 16. FACEBOOK 41 2433338 26 November 26 November │ │ STUDIO EDGE 2012 2022 │ │ 17. FACEBOOK 35 2433337 26 November 26 November │ │ STUDIO EDGE 2012 2022 │ │ 18. FACEBOOK 9, 35, 38, 41, 2585835 26 August 26 August │ │ HOME 42 & 45 2013 2023 │ │ 19. FACEBOOK GO 35 3032256 13 August 13 August │ │ 2015 2025 │ │ 20. WORKPLACE BY 9, 38,42 & 45 3520314 5 April 2017 5 April, 2027 │ │ FACEBOOK │ │ 21. FACEBOOK 9 & 38 3911866 9 August 9 August │ │ EXPRESS WIFI 2018 2028 │ │ 22. 9, 35, 36, 38, 3714920 29 December, 29th │ │ 41, 42, 45 2017 December, │ │ 2027 │ │ CS(COMM.) 499/2020 Page 4 of 18 │ │ 2022:DHC:2524 │ │ 23. 9, 35, 36, 38, 4007876 26 November 26 November │ │ 41, 42, 45 2018 2028 │ │ 24. 9, 35, 36, 38, 1969520 21 May, 2010 21 May, 2030 │ │ 41, 42 │ │ 25. 9, 35, 36, 38, 1656325 20 February, 20 February, │ │ 41, 42 2008 2028 │ │ 10. The trade dress of the plaintiff‟s „Facebook‟ marks, of its social │ └────────────────────────────────────────────────────────────────────────────────────────────────┘
26. Section 29 of the Act also provides a special status to a „wellknown trade mark‟ in Sub-section (4) of Section 29, which reads as under:
27. This Court in Tata Sons Ltd. (supra) has held that a wellknown trade mark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. It further held that when a person uses another person‟s „wellknown trade mark‟, he tries to take advantage of the goodwill that such a „well-known trade mark‟ enjoys. Such an act constitutes as unfair competition. It also causes dilution of a „well-known trade mark’ as it loses its ability to be unique and distinctively identified and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well-known mark. The Court further laid down the factors that a Court needs to consider for determining whether the trade mark is a „well-known trade mark‟ or not, as under:
28. Applying the above test and parameters to the facts of the present case, it cannot seriously be disputed that the marks of the plaintiff are well-known in India. Its user base and its reach are evident from the documents that have been filed by the plaintiff. The plaintiff also has obtained registrations of its marks for various classes of goods and the use of a similar mark without due cause would certainly amount to unfair competition, which is detrimental to the distinct character and reputation of the plaintiff‟s „Facebook‟ marks.
29. The plaintiff therefore, has been able to make the test as set out in Section 11(6) and Section 11(7) of the Act as also by this Court in Tata Sons (supra) for it to be declared as a „well-known trade mark‟, as defined under Section 2(1)(zg) of the Act.
30. Section 29(4) of the Act, which has been reproduced hereinabove, states that a registered mark is infringed by a proprietor or a person who uses the same or a similar mark without the permission of the registered proprietor in relation to goods or services which may not be similar to those for which the trade mark is registered, however, because of such mark being a well-known mark, obtains an unfair advantage as the use of such mark is detrimental to the distinct character or reputation of the registered trade mark.
31. In the present case, though there is some distinction between the marks of the plaintiff and of the defendants, the overall visual representation adopted by the defendants, clearly depicts the mala fide intent of the defendants in obtaining unfair advantage by the use of the mark similar to that of the plaintiff and also leads to the dilution of the mark of the plaintiff. It can lead to an unwary consumer being at least interested in taking note of the defendants as having some kind of connection with the plaintiff. The mala fide intent of the defendants is also evident from the fact that upon the knowledge of the ad-interim injunction passed by this Court, the defendants changed the mark from „facebake‟ to „facecake‟ thereby changing only one alphabet, however, chose not to appear before this Court to defend the suit in spite of service.
32. In view of the above, the suit is decreed as under:
(i) The defendants, its directors, proprietors, subsidiaries, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on its behalf are permanently restrained from using the Facebake marks; the domain name www.facebake.in; the email ids facebake.mail@gmail.com; facebake649@gmail.com; the mark Facecake; the Facebook marks, the Facebook Visual Presentation, and any other „Facebook‟ formative trade marks of the plaintiff, or any other mark deceptively similar thereto in relation to products and services related to confectionary items, or any other goods or services, in any manner, including on social media; and
(ii) For a decree of delivery up of all finished and unfinished materials including locks, signage, cards, stationary, accessories, packaging, labels, and other material bearing the Facebake marks or any mark deceptively similar to the plaintiff‟s Facebook marks, by the defendants to the plaintiff for the purpose of erasure or destruction.
(iii) As far as the prayer for rendition of accounts of profits and damages is concerned, though the plaintiff has not led any substantial evidence for the said relief, nominal damages of Rs.50,000/- (Rupees Fifty Thousand only) are awarded in favour of the plaintiff and against the defendants.
(iv) The defendants shall also pay cost of the suit to the plaintiff.
33. Let a decree sheet be drawn accordingly.
NAVIN CHAWLA, J JULY 6, 2022 RN/AB