Full Judgment Text
2022:DHC:3011
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of Decision: 5 August, 2022
+ CS (COMM) 123/2022
EXXON MOBIL CORPORATION ..... Plaintiff
Through: Mr. Sumit Wadhwa and Ms. Saloni
Chowdhry, Advocates.
(M:9899783837)
versus
MR. MADHU PAUL TRADING AS M/S. MAHANNAM MOBIL
HOUSE ..... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The Plaintiff has filed the present suit seeking protection of its mark
‘MOBIL’. The Plaintiff - ‘Exxon Mobil Corporation’ based in the U.S. was
founded in the year 1882 as ‘Standard Oil Company of New Jersey’ and its
name was changed to ‘Exxon Corporation’ in 1973. The merger between
‘Exxon Corporation’ and ‘Mobil Corporation’ took place in 1999. The
Plaintiff is one of the largest publicly traded companies in the world and is
an industry leader in various aspects of energy and petrochemical business.
It is claimed by the Plaintiff that the word ‘MOBIL’ has been a predominant
part of the corporate name and trading style of the Plaintiff and its
predecessor since the year 1966. The Plaintiff has also consistently featured
in the top ten of the Fortune 500 list.
3. The marks ‘MOBIL OIL’ and ‘MOBIL’ have been registered in India
since 1942 in various word and logo forms. The mark is registered not only
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in India but in more than 150 countries in the world. The sales of the
Plaintiff run into billions of dollars globally. In India the sales of the
Plaintiff are to the tune of approximately 6 million barrels in the year 2020.
The ‘MOBIL’ mark is used for various branded commercial vehicle
lubricants, passenger vehicle lubricants, industrial lubricants, marine
lubricants and aviation lubricants as also for other oils and petroleum
products.
4. The mark of the Plaintiff has been protected from misuse, by various
Court orders, against deceptively similar marks such as ‘trading style
MOBIL REFINERIES’, ‘MOBOLENE’, ‘GOLDEN MOBIL’, ‘MOBILO’,
‘MOBILLEX’, ‘MOBIL FUELS’, ‘SUPER MOBO LUBE’, ‘MOBIL
CENTER’, etc . It is averred in the plaint that the mark ‘MOBIL’ is a well-
known trademark in respect of lubricants, greases and petroleum products.
The name ‘MOBIL’ is a distinctive part of Plaintiff’s trading name,
corporate name as well that of its subsidiaries and affiliates. The domain
names of the Plaintiff are ‘ www.exxonmobil.com ’ and ‘ www.mobil.co.in ’
and ‘ www.mobil.com ’ on which the Plaintiff publicizes and promotes its
goods and services.
5. The present suit was filed by the Plaintiff against misuse of the mark
‘MOBIL’ by the Defendant- ‘M/s Mahannam Mobil House’ located in
Tripura. The said Defendant was using the mark ‘MOBIL’ as a trading style
in respect of the outlet/shop selling automobile oils, lubricants, etc. The
Defendant was using the mark in English, Hindi and the local language as
depicted below:
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6. According to the Plaintiff, use of the mark ‘MOBIL’ by the Defendant
as a trading style constitutes infringement of the Plaintiff’s mark. The
th
Plaintiff served a cease and desist notice to the Defendant on 26 August
2021. However, the Defendant did not cease use of the mark and continued
to sell the products under the name ‘MAHANNAM MOBIL HOUSE’. One
of the products of the Defendant sold has also been placed on record.
7. The present suit was filed by the Plaintiff seeking the following
reliefs:
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“i. A decree of permanent injunction against the
Defendant from using the mark MOBIL / मोबिल as part
of the Impugned Trade Name- M/S. MAHANNAM
MOBIL HOUSE /
and/or any other
trade mark/ trade name/ domain name identical/
deceptively similar to the Plaintiff's MOBIL Marks
either by itself or in conjunction with any other word
as a trade mark or part of a trade mark, as a trade
name/corporate name or part of a trade
name/corporate name, as a domain name or part of a
domain name, as an email address or part of an email
address or in any manner whatsoever in relation to its
goods and/or services so as to cause infringement of
the Plaintiff's registered MOBIL Marks and/or pass off
its goods and/or services as and for that of the
Plaintiff;
ii. An order directing the Defendant to delete any and
all references to the mark MOBIL/ मोबिल from its
JustDial listing accessible at
https://www.justdial.com/WestTripura/ Mahannam-
Mobile-HouseTeliamura/
9999PX381-X381-130724114022-Z1A8 BZDET and or
any other third-party website/platform;
iii. An order directing the Defendant to immediately
disclose and withdraw any application for registration
of a trade mark and/ or copyright filed by it for
registration of the mark/ trade name M/S.
MAHANNAM MOBIL HOUSE /
and/ or any mark which is
identical/deceptively similar to the Plaintiff's prior
adopted and registered MOBIL Marks;
iv. An order directing the Defendant to deliver to the
Plaintiff's attorneys or its representatives for
destruction, all products, labels, stickers, signs,
stationery, business cards, prints, packages, plates,
dyes, wrappers, receptacles, materials and
advertisements in its possession or under its control,
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bearing the trade mark/ trade name M/S. MAHANNAM
MOBIL HOUSE/
by itself or in
conjunction with any other word;
v. An order directing the Defendant to allow inspection
of its accounts to assist in ascertaining the amount of
profits made by it and/ or damages suffered by the
Plaintiff as a result of the Defendant's use of the
Impugned Trade Name- M/S. MAHANNAM MOBIL
HOUSE/
and a decree be passed in
favor of the Plaintiff and against the Defendant for the
amount found due. The Plaintiff be additionally
granted exemplary and punitive damages at least to the
tune of INR 2,00,000,50/; (Rupees Two Crore and Fifty
Rupees Only);
vi. The decree be binding on the Defendant, partners,
successors, franchisees, licensees, distributors,
retailers, representatives, assignees, agents and
anyone acting for and/ or on its behalf;
vii. Costs of the suit;”
nd
8. Vide order dated 22 February, 2022, an ex parte ad interim
injunction was granted restraining the use of the mark ‘MOBIL’ as part of
the trading name ‘M/s Mahannam Mobil House’ and a Local Commissioner
was appointed to visit the premises of the Defendant. The operative portion
of the ex parte injunction order dated 22nd February, 2022 reads as under:
“25. Upon hearing, this Court finds that a prima facie
case to grant interim injunction in favour of plaintiff
and against the defendant is made out. Accordingly, till
further orders, defendant, its successors, franchisees,
licensees, distributors, representatives, assignees,
agents, and anyone acting for and/or on its behalf are
restrained from using the mark MOBIL/ मोबिल as part
of the impugned trade name M/S. MAHANNAM
MOBIL HOUSE /
and/ or any
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other mark deceptively similar to the plaintiffs trade
mark MOBIL/ मोबिल either by itself or in conjunction
with any other word and/or in any manner whatsoever
amounting to infringement of plaintiff's trademark
and/or passing off goods.”
9. The Local Commissioner has since, executed the commission and has
also placed the report on record. As per the report, the Local Commissioner
served the complete set of papers on the Defendant at the time of the
execution of the commission on 28th February, 2022. The Local
Commissioner took a photograph of the board of the Defendant’s premises
where the trading style/ trade name ‘MAHANNAM MOBIL HOUSE’ was
being used for sale of oils, lubricants and other petroleum products. As per
the Local Commissioner’s report, the Defendant is not dealing with any
product bearing the mark ‘MOBIL’. The Local Commissioner’s report states
that invoices were provided by Defendant which also have been placed on
record along with the report. Paragraph 5 of the Local Commissioner’s
th
report dated 7 March, 2022 is relevant and is set out below:
“5. That during the commission, in pursuance of
the direction of this Hon'ble Court, Mr. Madhusudan
Paul removed the impugned trade mark MOBIL from
the board of the shop. Picture taken at the spot of the
board after removal of the impugned trade mark is
annexed herein as DOCUMENT-F.”
10. The photographs annexed with the Local Commissioner report as
document F wherein the board of the Defendant’s premises, after the name
‘MOBIL’ was removed, is shown is also set out below:
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11. From a perusal of the Local Commissioner’s report it is clear that
upon the local commission being executed, the Defendant removed the word
‘MOBIL’ from its display board in its shop. There is no allegation by the
Plaintiff that the same has been reused by him. The Local Commissioner’s
report also shows that the name ‘MOBIL’ was being used as part of the full
name of the Defendant’s concern but there was no use of the mark ‘MOBIL’
per se as a trade name or as a trademark on the products.
12. The Defendant has had complete notice of the present proceedings
and still has chosen not to appear before this Court or file the written
statement. The mandatory period of 120 days for filing written statements, in
terms of the judgment of the Supreme Court in SCG Contracts India Pvt.
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Ltd. v. K.S. Chamankar Pvt. Ltd. AIR 2019 SC 2691, has also expired.
Thus, there is no defence on record. The Defendant also appears to have
reconciled to the fact that it cannot use the name ‘MOBIL’ as part of its
trade name. Under these circumstances, in the opinion of the Court, the suit
is liable to be decreed. Accordingly, the suit is decreed in terms of paragraph
42(i) (ii), and (vi) of the plaint.
13. Since the name of the Defendant’s shop has already been changed and
no trademark application appears to have been filed by the Defendant,
reliefs sought in paragraph 42 (iii) and (iv) are infructuous. As far as relief
sought in paragraph 42 (v) is concerned, the Court has seen the invoices
filed with the Local Commissioner’s report. It appears that Defendant was
using the name ‘MOBIL’ as part of its trading style and has conducted sales,
commercial activities in the said name. The Plaintiff’s mark being
registered, the same would constitute infringement and passing off. The
Defendant was served a legal notice by the Plaintiff but didn’t cease use of
the impugned name. The Plaintiff had to incur legal costs including court
fees, local commissioners fee and expenses to protect its legal and statutory
rights. Accordingly, considering that the scale of operation of the Defendant
was not very big and the Defendant has now complied with the injunction
nd
order dated 22 February, 2022, litigation costs of Rs.3 lakhs are awarded to
the Plaintiff.
14. The suit is decreed in the above terms. Decree sheet be drawn
accordingly. All pending applications are also disposed of.
PRATHIBA M. SINGH
JUDGE
AUGUST 5, 2022/ dk/sk
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