Trademark Infringement – Decision of the Delhi HC in case of use of deceptively similar mark in the area of IT Services
The Delhi High Court (“Delhi HC”) in Exxon Mobil Corporation v. Exoncorp Private limited (Decided on July 16, 2019. Click here to view judgment) decided on granting a permanent injunction for infringement of trademark ‘EXXON’ of Exxon Mobil Corporation.
Exxon Mobil Corporation is in the business of gas exploration, oil production, refining and marketing of petroleum products, chemical products, research and development. It offers various services related to the petroleum, chemicals, oil industry and also has an IT services company. Exoncorp Private limited was using of the mark ‘EXON’ as part of its corporate name and trading style for rendering information technology services. It was operating its website – www.exoncorp.com since November 2018. It also had social media presence.
Exoncorp Private Limited had objected the injunction on the ground that both the parties were offering distinct services and that Delhi HC did not have the territorial jurisdiction to entertain the instant case as Exoncorp Private Limited was based in Chennai, it had no operations and neither had an office in Delhi.
Delhi HC highlighted that the mark ‘EXON’ was almost identical to ‘EXXON’. It further held that Exxon Mobil Corporation was entitled to protect the mark EXXON even in respect of IT services. Exxon Mobil Corporation had a technology company providing IT services. Also holding that IT services have become an integral part of every business and are used in every area of business whether it is manufacturing of goods or providing services. Thus, a distinction was not drawn on the type of IT Service provided, Delhi HC considered all kinds of IT services provided to be of like nature. Holding that Exxon Mobil Corporation was entitled to an injunction.
Delhi HC held that the nature of IT services is such that it can be provided from any place in the world. The question was whether the impugned infringing mark is being used within the territorial jurisdiction of this Court. Operating through a website and through social media platforms amounts to reaching customers throughout India and world over, there is clear use of the mark within the territorial jurisdiction of Delhi HC, as the effect of the same could be experienced in Delhi.
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This judgement is important for entities providing IT services as the Delhi HC has categorized all IT services under a single category of services for the purpose of trademark infringement. As IT services is part of most industries today (including industries not providing IT services directly), it becomes important for an IT service provider to carry out a due diligence ensuring that it is not infringing the trademark of any other entity.