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IN THE HIGH COURT OF DELHI
Navin Chawla, J.
Meta Platforms, Inc. - Appellant
Versus
Noufel Malol - Respondent
CS(COMM) 499 of 2020 & IA 8765 of 2021
Decided On : 06-07-2022
Facebook - Trademark Infringement - Trade Marks Act, 1999 - Section 2(1)(zg), Section 11, Section 29 - The court discussed the legal provisions of well-known trade marks under Section 2(1)(zg) and the criteria for determining a well-known trade mark under Section 11(6) and Section 11(7) of the Trade Marks Act, 1999. The court also highlighted the infringement of registered trademarks under Section 29(4) and the factors to be considered for determining a well-known mark as established in previous judgments.
Fact of the Case:
The plaintiff filed a suit seeking a permanent injunction restraining the defendants from using the mark 'Facebake' and related domain names and email IDs. The defendants were found to have intentionally mimicked the plaintiff's 'Facebook' marks, leading to infringement of statutory and common law rights, passing off, dilution, and unfair competition.
Finding of the Court:
The court found that the plaintiff's 'Facebook' marks were well-known in India and that the defendants' use of a similar mark without due cause amounted to unfair competition and was detrimental to the distinct character and reputation of the plaintiff's marks. The defendants' mala fide intent was evident from their actions, including changing the mark after knowledge of the injunction and failing to appear before the court.
Issues: The issues involved infringement of well-known trade marks, passing off, dilution, unfair competition, and the defendants' intentional use of a deceptively-similar mark to the plaintiff's 'Facebook' marks.
Ratio Decidendi: The court applied the legal principles of well-known trade marks as defined in the Trade Marks Act, 1999 and previous judgments to establish the plaintiff's rights and the defendants' infringement, mala fide intent, and unfair competition.
Final Decision: The court decreed in favor of the plaintiff, permanently restraining the defendants from using the infringing marks, domain names, and email IDs, and awarding nominal damages and costs to the plaintiff.
JUDGMENT
Navin Chawla, J. (Oral)--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:
"6. In the meanwhile, the defendant, his agents and employees are restrained from using the mark "FACEBAKE" or any other mark, which is deceptively similar to the plaintiff's trademark.
6.1 The injunction will also operate vis-a-vis the logo(s) represented by the letter `f' i.e.
6.2 Furthermore, the defendant is also restrained from operating his website i.e. www.facebake.in."
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:
"3. The interim order dated 12th November, 2020 is confirmed. The Registrar of the domain name www.facebake.in namely Crazy Domains FZ-LLC is directed to suspend the domain and transfer the domain name owned and registered by the Defendant comprising of the marks/designation FACEBAKE, FACEBOOK or any other mark/designation similar thereto to the plaintiff within four weeks."
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. | 35 & 38 | 1436663 | 22 March 2006 | 22 March 2026 | |
| 2. | THE FACEBOOK | 35 & 38 | 1436949 | 23 March 2006 | 23 March 2026 |
| 3. | 25 | 1535619 | 28 February 2007 | 28 February 2027 | |
| 4. | 9, 38 & 42 | 1622925 | 20 November 2007 | 20 November 2027 | |
| 5. |  | 9, 35, 36, 38, 41 & 42 | 1971560 | 26 May 2010 | 26 May 2030 |
| 6. | 16, 35, 40 & 45 | 2309997 | 3 April, 2012 | 3 April, 2022 | |
| 7. |  | 16, 35, 40 & 45 | 2309996 | 3 April, 2012 | 3 April, 2022 |
| 8. | 16 | 2399531 | 20 September 2012 | 20 September 2022 | |
| 9. |  | 43 | 3296117 | 28 June 2016 | 28 June 2026 |
| 10. | 36 | 3552373 | 19 May 2017 | 19 May 2027 | |
| 11. | 43 | 3552374 | 19 May 2017 | 19 May 2027 | |
| 12. | | 9, 38, 41, 42 & 45 | 3749225 | 9 February 2018 | 9 February 2028 |
| 13. | 41 | 3913396 | 10 August 2018 | 10 August 2028 | |
| 14. | 45 | 4029140 | 17 December 2018 | 17 December 2028 | |
| 15. | FACEBOOK DEVELOPER GARAGE | 9, 35, 38, 41, 42 & 45 | 1 | ||
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The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
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Section 24(4)(c) does not expect the registered trade mark of the plaintiff to have become a well-known Trade Mark within the meaning of Section 2(1)(z)(g)”.
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
The main legal point established is the protection of registered trademarks under the Trade Marks Act, 1999, and the court's authority to grant a permanent injunction, change of company names, and aw....
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