Exxon Mobil Corporation vs. Mr. Joseph Sebastian(Alias Joji)
Original PDF →Facts
The plaintiff, Exxon Mobil Corporation, filed a suit claiming ownership of the trademark 'EXXON', registered in India since 1967. The plaintiff alleged that the defendant, trading as M/s. New Exon Batteries and similar names, infringed upon their trademark and engaged in passing off. The defendant appeared in court and submitted an affidavit stating they had changed their firm's trade name to 'Nithin Batteries' and obtained necessary licenses and GST registration under the new name. Copies of these documents were provided. The defendant also undertook not to use the mark 'EXON' or 'EXXON' in any manner for their goods and services.
Held
The Court decreed the suit in favour of the plaintiff. Based on the defendant's undertaking to permanently cease using the mark 'EXON' and 'EXXON' in any form for their goods and services, and having changed their trade name to 'Nithin Batteries' with updated GST registration, the Court found no further dispute. The plaintiff, in light of this undertaking and the defendant's changed business name, agreed to a decree of permanent injunction in terms of prayers (i) and (ii) of the suit, while giving up other prayers. The application for injunction was disposed of as infructuous, and the show cause notice for violation of an earlier order was discharged due to the defendant's undertaking and unconditional apology. The Court directed the return of court fee to the plaintiff's representative.
Key Issues
1. Whether the defendant's use of the trade name 'New Exon Batteries' and its variations infringed the plaintiff's registered trademark 'EXXON' and constituted passing off, contrary to Section 29 of the Trademarks Act, 1999. The plaintiff argued that the defendant's trade name was deceptively similar to their registered trademark, leading to confusion and dilution of their brand. The plaintiff contended that the defendant's actions amounted to infringement and passing off. The defendant, through their affidavit, admitted to having changed their trade name to 'Nithin Batteries' and obtained new GST registrations, effectively ceasing the alleged infringing activity. The defendant also provided an undertaking to permanently refrain from using the impugned mark.
Sections Cited
Section 29
AI-generated summary — verify with the full judgment below
Cause title — parties, addresses and appearances
O R D E R %
2020
The present suit has been filed by the plaintiff-Exxon Mobil Corporation claiming itself to be the owner the trademark ‘EXXON’ registered in its favour in number of classes. The earliest registration of Exxon as a trademark in India being in the year 1967. 2. The grievance of the plaintiff is that the defendant had been trading under the name M/s. New Exon Batteries, M/s. New Exon Batteries and Auto Electricals and M/s. New Exon Auto Electricals, thereby infringing the plaintiff’s registered trademark and passing of the goods of the defendant as that of the plaintiff.
Defendant is present in Court and has handed over an affidavit, which is taken on record. As per the said affidavit, the defendant has already changed the trade name of his proprietorship firm from ‘New Exon Batteries’ to ‘Nithin Batteries’ and has also obtained necessary licenses and GST registration in the said new names. Copies of the licenses and registration certificate have also been enclosed therewith.
The defendant undertakes to suffer a decree of permanent injunction against the use of the mark EXON and EXXON either as a trademark, trade name or corporate name, domain name, email address or in whatsoever manner in respect of his goods and services.
In view of this undertaking by the defendant, who is also present in Court and identified by the learned counsel, learned counsel for the plaintiff submits that the suit be decreed by passing a decree of injunction in terms of prayers (i) and (ii) in the suit and she gives up the prayers (iii), (iv), (v) and (vi) in the suit. Consequently, the suit is decreed in favour of the plaintiff and against the defendants in terms of prayers (i) and (ii).
Since the suit has been decreed at the preliminary stage itself Court fee be returned to the Authorized Representative of the plaintiff under Section 16 A of the Court Fee Act. Registry will issue necessary certificate in this regard. IA 2895/2019 (u/O XXXIX R 1 & 2 CPC)
Application is disposed of as having become infructuous. I.A. 6908/2019 (u/O XXXIX R 2A CPC) In view of the undertaking given by the defendant and the unconditional apology tendered, the show cause notice issued to the defendant is discharged.
MUKTA GUPTA, J. JANUARY 23, 2020/Aj
Reproduced from the public record of the Delhi High Court. Verify against the court's own copy before relying on it. Income tax judgments are on bharattax.net.