Delhi High Court: Navin Chawla J. restrains Facebake and Facecake based in Bangalore which sells confectionary items like cakes etc. from using a deceptively similar and a ‘well known trademark' as per Section 2(1)(zg) Trade Marks Act, 1999, Facebook which is a popular social media networking site.
Meta Platforms Inc. ‘plaintiff’, the parent company of Facebook which is a popular social media giant is inter-alia seeking a decree of permanent injunction restraining the defendants from using the mark ‘Facebake’ and/or the domain name www.facebake.in; the email IDs firstname.lastname@example.org; email@example.com, as also for seeking rendition of accounts. Despite two restraining orders being passed earlier by the Court, the Defendant 1 incorporated a company by the name of ‘Ehrlich Foods and Beverages Pvt. Ltd’ and is one of its directors seeking the registration of a deceptively-similar mark ‘Facecake’.
Meta Inc. submitted that it has successfully enforced its rights in the ‘Facebook’ marks in context of opposition or other challenges filed by the plaintiff against third parties, including with respect to food and/or food services in other cases alike. It further asserted that it is a “well-known trade mark” as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.
The grievance is regarding the adoption of the mark ‘Facebake’ by Defendant 1, which is allegedly mimicking the visual presentation by copying the colour scheme, font, commercial impression, and overall look and feel, and thus intentionally trading off the significant goodwill that the plaintiff has established in its ‘Facebook’ marks. Thus, it constitutes infringement of its statutory as well as common law rights as also results in passing off, dilution and unfair competition by the defendants.
The Court noted that a ‘wellknown trade mark’ as defined under Section 2(1)(zg) Trade Marks Act, 1999 is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. It further held that when a person uses another person’s ‘wellknown trade mark’, he tries to take advantage of the goodwill that such a ‘well-known trade mark’ enjoys. Such an act constitutes as unfair competition.
Placing reliance on Tata Sons Ltd. v. Manoj Dodia, 2011 SCC OnLine Del 1520, the Court applied the test laid down in it to observe that the plaintiff has been able to pass the test as set out for it to be declared as a ‘well-known trade mark’, as defined under Section 2(1)(zg) Trade Marks Act, 1999.
The Court observed that though there is some distinction between the marks of the plaintiff and of the defendants, the overall visual representation adopted by the defendants, clearly depicts the mala fide intent of the defendants which is also evident from the fact that upon the knowledge of the ad-interim injunction passed by the Court, the defendants changed the mark from ‘facebake’ to ‘facecake’ thereby changing only one alphabet, however, chose not to appear before the Court to defend the suit in spite of service.
Thus the Court restrained the defendants, its directors, proprietors, subsidiaries, affiliates, franchisees, officers, servants, agents, distributors, representatives and anyone acting for or on its behalf from using the Facebake marks, the domain name, email ids and any other ‘Facebook’ formative trademarks of the plaintiff, or any other mark deceptively similar thereto in relation to products and services related to confectionary items, or any other goods or services, in any manner, including on social media.
The Court further held the plaintiff has not led any substantial evidence for relief regarding rendition of accounts, a nominal damages of Rs. 50, 000 to be awarded in favour of the plaintiff and against the defendants.
[Meta Platforms Inc. v. Naoufel Malol, CS(COMM) 499/2020, decided on 06-07-2022]
Advocates who appeared in this case :
Mr. Pravin Anand, Ms. Vaishali Mittal, Mr. Siddhant Chamola, Mr. Shivang Sharma, Advocates, for the Plaintiffs.
*Arunima bose, Editorial Assistant has reported this brief.