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IN THE HIGH COURT OF DELHI
Navin Chawla, J.
Ebay Inc. - Appellant
Versus
Mohd. Waseem T/As Shopibay - Respondent
CS(COMM) 466 of 2019 & I.A. 11762 of 2019
Decided On : 17-11-2022
eBay Marks - Trademark Infringement - Trade Marks Act, 1999 (12, 14, 16, 25, 28, 41, 42, 35, 36, 38) - The court granted a permanent injunction in favor of the plaintiff against the defendants for using the mark 'SHOPIBAY/' or any deceptively similar mark, and awarded damages and costs to the plaintiff.
Fact of the Case:
The plaintiff, eBay, sought a permanent injunction against the defendants for using the mark 'SHOPIBAY/' or any deceptively similar mark, claiming infringement, passing off, dilution, and unfair competition. The defendants did not appear in the proceedings, and the court proceeded ex-parte.
Finding of the Court:
The court found that the defendants' use of 'SHOPIBAY/' was deceptively similar to eBay's registered marks, leading to infringement, passing off, and dilution. The court granted a permanent injunction, directed the defendants to change their company names, and awarded damages and costs to the plaintiff.
Issues: The issues involved trademark infringement, passing off, dilution, and unfair competition due to the defendants' use of 'SHOPIBAY/' similar to eBay's registered marks.
Ratio Decidendi: The court's decision was based on the defendants' failure to appear, the similarity between the marks, and the plaintiff's established goodwill and reputation in the 'eBay Marks'. The court applied the Trade Marks Act, 1999 and granted a permanent injunction, directed the defendants to change their company names, and awarded damages and costs to the plaintiff.
Final Decision: The court decreed a permanent injunction in favor of the plaintiff, directed the defendants to change their company names, and awarded damages of Rs. 2 Lakh along with costs of the suit.
JUDGMENT
Navin Chawla, J.
1. The present suit has been filed by the plaintiff seeking a decree of permanent injunction against the defendants, their partners, directors, principals, proprietors, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns, restraining them from using the marks `SHOPIBAY/
' or any other mark deceptively or confusingly similar to the plaintiff's registered trade marks `eBay/EBAY/
' (hereinafter referred to as the `eBay Marks'), which would amount to either infringement, passing off, dilution, tarnishment of the plaintiff's mark; and/or unfair competition.
2. As none had appeared for the defendants in spite of service, vide order of this Court dated 27.07.2022, the defendants were proceeded ex- parte.
FACTUAL BACKGROUND
3. It is the case of the plaintiff that the plaintiff provides an online marketplace for the sale of goods and services through their e-commerce platform, which utilises the domain name www.ebay.com. The domain name was registered in the year 1995 and is accessible to users globally, including in India. It is asserted that the website of the plaintiff, that is, www.ebay.com, at the time of filing the present suit, is ranked as the 11th most visited website in the United States of America and the 42nd most visited website globally.
4. The plaintiff has country-specific domain names for countries such as Australia, Hong Kong, Netherlands, Taiwan, Austria, Philippines, Thailand, Belgium, Ireland, the United Kingdom, Canada, China and Japan to name a few, to connect local buyers to sellers. The plaintiff also has a domain name specific for Indian users, that is, www.ebay.in, which was created on 16.02.2005.
5. It is asserted that as on the date of filing the suit, the plaintiff has over 180 million active buyers in 190 markets around the world, with over one billion live listings featuring hundreds of different categories of goods and services, inter alia, antiques, art, electronics, books, home and garden as also music. Furthermore, at the time of filing the suit, the mobile application of the plaintiff has seen 459 million downloads worldwide.
6. It is asserted that the plaintiff has extensive presence on social media platforms, including but not limited to Twitter, Facebook, Linkedin and Google+. The plaintiff has hundreds of thousands of followers on each platform, and in the case of social-media platform Facebook, the plaintiff has almost 11 million followers.
7. The plaintiff has provided in paragraph 13 of the plaint, the figures of their annual world-wide revenue from the years 2006 to 2018. The plaintiff also claims to have expended large amounts of money through various media, including visual and print, without territorial jurisdiction, in promoting and advertising its trade name/trade marks. The details of the expenditure for the years 2006 and 2018 have been provided by the plaintiff in paragraph 14 of the plaint.
8. The plaintiff's `eBay Marks' have also been extensively discussed and advertised in major international magazines and newspapers, which are circulated globally as also in India. The plaintiff-company, including the plaintiff's corporate name as also trade marks (both containing the word `eBay'), have been the subject of books as also newspaper articles, in publications such as `Fortune', `The New York Times', `The Wall Street Journal', `Reuters News Service' and `Forbes'. The plaintiff's `eBay Marks' have also been a part of lists such as `Fortune Magazine's World's Most Admired Companies' and `Forbes Magazine List of the Worlds' Most Valuable Brands.' In the year 2015, `Interbrand' ranked the plaintiff's `eBay Marks' as 32nd of the `100 Best Global Brands', with an estimated value of USD 13.94 Billion. The plaintiff-company is also the recipient of an award by the President of India at the 15th Federation of Indian Export Organizations `Niryat Shree' and `Niryat Bandh
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