Delhi High Court: In a suit for permanent injunction restraining the defendants from using the mark ‘Shopibay’ which was similar to the plaintiff’s mark ‘eBay/EBAY’, the Single Judge Bench of Navin Chawla, J. granted permanent injunction to ‘eBay’ and held that the adoption of mark by the defendant was dishonest and intended to deceive customers, hence, awarded Rs. 2 lakhs damages in favour of eBay.
Plaintiff provides an online marketplace for sale of goods and services through their e-commerce platform with the domain name www.ebay.com and had a domain name specific for Indian users, that is, www.ebay.in which was created in 2005. The plaintiff’s ‘eBay Marks’ had been given protection under the provisions of the Trade Marks Act, 1999 (Act) by way of registrations and had also been accorded statutory and common law protection internationally.
In 2017, plaintiff came across a trade mark application filed by the defendant seeking registration of its mark ‘shopibay’, to which, plaintiff opposed. Upon investigation, it was found that defendants used the domain names www.shopibay.com and www.myshopibay.com which offered consumers links to various e-commerce platforms, including hosting the plaintiff’s main name www.ebay.com. The website of the defendants featured the plaintiff’s ‘eBay Marks’ and made a claim that the plaintiff was one of the partners of the defendants and was seen to offer the same services as that of the plaintiff. Moreover, defendants expanded their scope of business and apart from providing e-commerce services, the defendants also opened a brick-and-mortar store and began promoting their business on www.indiamart.com.
Analysis, Law, and Decision
In 2019, this Court granted an ex-parte ad-interim injunction in favour of the plaintiff and restrained the defendants from using the impugned trade mark ‘shopibay’ or any other mark deceptively similar to the plaintiff’s registered trade marks.
The Court opined that the mark adopted by the defendants, that is, ‘shopibay’ was deceptively similar to that of the plaintiff and was clearly intended to ride on the goodwill and reputation of the marks of the plaintiff. Further, it was an infringement of the marks of the plaintiff and amounts to passing off the goods and services of the defendants as that of the plaintiff. The defendants not only took unfair advantage of the plaintiff’s reputation and goodwill but also deceived consumers of their association with the plaintiff. Such acts of the defendants would also lead to dilution of the mark of the plaintiff.
The Court further opined that as far as the domain name of the defendants was concerned, the same was also deceptively similar to that of the plaintiff. It was likely to deceive a consumer of its association with the plaintiff. The Court relied on Anugya Gupta v. Ajay Kumar, 2022 SCC OnLine Del 1922, wherein this Court had held that “the right of a proprietor in a domain name was entitled to equal protection, applying the principles of the trade mark law. The use of the same or similar domain name might lead to diversion of users, which could result from such user mistakenly accessing one domain name instead of another. Therefore, a domain name might have all the characteristics of a trade mark and can find an action for passing off.”.
Further, in relation to the corporate names of the defendants, the Court opined that the ‘shopibay’ mark being phonetically similar to the mark of the plaintiff was also likely to deceive consumer of the association of these companies with the plaintiff. Thus, the Court held that plaintiff was entitled to damages of Rs. 2 lakhs in addition to the suit’s costs, and a permanent injunction was granted in favour of the plaintiff against the defendants.
[Ebay Inc. v. Mohd. Waseem T/As Shopibay, 2022 SCC OnLine Del 3879, decided on 17-11-2022]
Advocates who appeared in this case :
For the Plaintiff(s): Advocate Nancy Roy;
Advocate J. Sharanya.