Delhi High Court awards eBAY Rs 2 lakh in a Trademark Infringement Case

The Delhi High Court, in case of trademark infringement, awarded relief to eBAY after concluding that the use of the claimed trademark “SHOPIBAY,” which is similar to the mark of the other party mark “eBay/EBAY was likely to mislead unwary consumers about the affiliation of these organisations.

The present suit was decided in the plaintiff’s favour by a single-judge bench of Justice Navin Chawla, who observed that the defendant’s use of the mark was dishonest and meant to mislead consumers. As a result, the court held that plaintiff was  entitled to costs of the suit in addition to damages of Rs 2 lakh.

E-BAY INC VS MOHD. WASEEM[Image Source: Shutterstock]

It was claimed by the plaintiff that through their e-commerce platform, which makes use of the domain name www.ebay.com, the plaintiff offers an online marketplace for the sale of products and services. The domain name was registered in 1995, and is accessible to users globally, including in India. According to the claim, the plaintiff’s website, “www.ebay.com,” was listed as the eleventh most visited website in the United States of America and the forty-second most visited website worldwide at the time the current suit was filed.

It was claimed by the plaintiff that a trade mark application submitted by the defendant to register the mark “SHOPIBAY” before the Trade Marks Registry on January 30, 2017, was discovered by the plaintiff in May 2017. The plaintiff objected to the application on June 20, 2017.According to Section 21(2) of the Act and Rule 44 of the Trade Marks Rules, 2017, the defendants’ right to file a counter-statement to the notice of opposition in the foregoing proceedings before the Trade Marks Registry was closed.

Investigation revealed that the second defendant was the one who registered the domain names www.shopibay.com (registrant country: United Kingdom) and www.myshopibay.com (registrant region: Haryana, India). According to a more detailed inquiry presented to the Ministry of Corporate Affairs, the Government of India it was revealed that the first defendant was one of the directors of the defendant numbers second and third.

The plaintiff claimed that during this time the defendants increased the scope of their business and in addition to offering e-commerce services, the defendants also opened a retail outlet in Lucknow, Uttar Pradesh, and started advertising their business on www.indiamart.com.

After considering the submissions from both the sides, the Court held that the plaintiff was able to prove that it is the registered owner of the ‘eBay Marks’.

The Court stated that the mark used by the defendants, “shopibay,” was identical  to the plaintiff’s mark and was plainly intended to capitalise on its goodwill and reputation. Additionally, it amounted to passing off the defendants’ goods and services as the plaintiff’s by infringing on the plaintiff’s trademarks. The defendants misled consumers about their affiliation with the plaintiff while also unfairly exploiting the plaintiff’s goodwill and reputation. Such actions of defendants would ultimately damage the plaintiff’s mark.

The Court also stated that the defendants’ domain name was confusingly similar to the plaintiffs in terms of spelling, and therefore, there was large probability of consumers being misled about the defendants’ affiliation with the plaintiff. The Court relied on “Anugya Gupta v. Ajay Kumar”[1] wherein the Court had held that the right of a proprietor in a domain name was entitled to equal protection, applying the principles of the trade mark law. The use of a similar domain name might lead to diversion, or misleading, of users, which could result from the user mistakenly accessing one domain name instead of the other. Therefore, a domain name might have all the characteristics of a trade mark and can therefore, result in an action for passing off.[2]

The court said “As far as the claim on the corporate names of the defendant no. 2 and 3, in my opinion, again the plaintiff is entitled to succeed. The use of ‘SHOPIBAY/ ’, phonetically similar to the mark of the plaintiff is likely to deceive unwary consumer of the association of these companies with the plaintiff.”[3]

The court, in its ruling placed reliance on Hindustan Lever Ltd. and Anr. V. Satish Kumar[4],  held that because the defendants initially declined to respond to the cease-and-desist notices sent by the plaintiff’s lawyer and instead expanded the scope of their commercial activity from the e-commerce space to brick-and-mortar stores, the plaintiff was entitled to damages in the amount of Rs. 2 Lakh (Rupees Two Lakh only) in addition to the costs of the suit. Accordingly, a permanent injunction was granted in plaintiff’s favour prohibiting the defendants from using the mark that was identical to the plaintiff’s mark.

Conclusion

Court awarded Rs. 2 lakhs damages to eBAY after concluding that the use of the claimed trademark “SHOPIBAY,” which is similar to the mark of the Plaintiff’s mark “eBay/EBAY, was likely to mislead unwary consumers about the affiliation of these organisations.

Author: Smriti, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] SCC OnLine Del 1922

[2] Ebay Inc v. Mohd Waseem T/AS Shopibay & Ors 2022, para 23

[3]Ibid., para 24.

[4] Hindustan Lever Ltd. and Anr. V. Satish Kumar, 2012 SCC OnLine Del 1378.

Leave a Reply

Archives

  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010