Delhi High Court: Plaintiff was aggrieved by the adoption of the trade mark 
(‘impugned mark’) by defendants, which they were using in relation to a variety of software services, including training and manuals on JAVA programming language. Sanjeev Narula, J., granted an injunction in plaintiff’s favour by directing defendants and/or any person on their behalf, to not use plaintiff’s trade mark ‘JAVA’ as part of their domain name ‘javatpoint.com’, and in relation to the services they were offering. The Court held that if defendants were to use the mark ‘JAVA’ then such use must be done strictly in terms of the ‘Third Party Usage Guidelines for Oracle Trade Marks’, which were stated on plaintiff’s website ‘www.oracle.com’.
Background
Plaintiff was a corporation existing and incorporated under the laws of California, USA, and was a part of the Oracle group of companies. They have a number of trade marks like ‘ORACLE’, ‘JAVA’ and ‘PEOPLESOFT’ which were used for variety of goods and services pertaining to computer hardware and software. Plaintiff was a leading and foremost name in database software and technology, cloud-based engineering system, enterprise software products, etc.
Plaintiff offered one of the most widely sold software products and services for application development and deployment, under the trade mark ‘JAVA’. Plaintiff used the trade mark ‘JAVA’ on a standalone basis and as a part of their other trade marks in the form of a prefix or suffix, like ‘JAVASCRIPT’, ‘JAVADAY’ and ‘GOJAVA’. ‘JAVA’ trade marks were well-known in India on account of their extensive and exclusive use.
Plaintiff was aggrieved by the adoption of the trade mark by defendants, which they were using in relation to a variety of software services, including training and manuals on JAVA programming language. Defendants also operated a website under the domain name ‘www.javatpoint.com’, through which their services were offered. Defendants offered an “Oracle certified training” on their website, despite having no association with plaintiff, who in fact independently offered their own educational and training services.
Defendant 1 also used plaintiff’s mark ‘JAVA’ in their corporate names, having established the companies Javatpoint Ltd.-Defendant 2 and Javatpoint Tech (P) Ltd.-Defendant 3. Plaintiff submitted that such use amounted to infringement under Section 29(5) of the Trade Marks Act, 1999 and thus, it approached this Court to enforce their rights and seek interim protection. Plaintiff also submitted that it did not intend to monopolize the use of JAVA or even the offering of training services in respect of JAVA. In fact, plaintiff’s website www.oracle.com clearly sets out ‘Third Party Usage Guidelines for Oracle Trade Marks’, which delineate what constituted permissible as well as prohibited use of plaintiff’s trade marks.
Analysis, Law, and Decision
The Court opined that the mere addition of the word ‘TPOINT’ as a suffix to plaintiff’s trade mark ‘JAVA’ did not take away the fact that ‘JAVA’ was the prominent part of defendant’s impugned mark, which was evidently being used purely in a trade mark sense. Therefore, such use amounted to prima facie infringement under Section 29(5) of the Act. Moreover, plaintiff also had a registration of the trade mark ‘JAVA’ in Class 41 and were offering the same services as those offered by defendants. Thus, defendants’ use was also prima facie infringing under Section 29(1) of the Act.
The Court opined that defendants’ contention that ‘JAVA’, being the name of a programming language, was ineligible for trade mark protection, was without merit. The Court further opined that the law of trade mark protects against the use of a mark in a way that could cause confusion among consumers regarding the source of goods or services. Therefore, if ‘JAVA’ was being used by defendants in a way that capitalized on its trade mark value established by plaintiff, and not merely in reference to the programming language, then it constituted infringement.
The Court opined that in the present case, defendants’ utilization of the impugned mark as a logo goes beyond generically referencing the programming language in a descriptive or educational context. Instead, it adopted ‘JAVA’ in a trade mark capacity, thereby directly infringing upon plaintiff’s rights over their registered trade mark.
The Court thus directed that the corporate names of Defendants 2 and 3 should be altered to exclude the word/term ‘JAVA’. The Court opined that defendants’ use of ‘JAVA’ as part of their domain name and in relation to their services, would not align with plaintiff’s policy of permitted use. The Court relied on Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., (2004) 6 SCC 145, and opined that defendants’ use of plaintiff’s trade mark on their website and as part of their domain name would continue to amount to an infringement.
The Court thus granted an injunction in plaintiff’s favour by directing defendants and/or any person on their behalf, to not use plaintiff’s trade mark ‘JAVA’ as part of their domain name ‘javatpoint.com’, and in relation to the services they were offering. The Court held that if defendants were to use the mark ‘JAVA’ then such use must be done strictly in terms of the ‘Third Party Usage Guidelines for Oracle Trade marks’, which were stated on plaintiff’s website ‘www.oracle.com’.
[Oracle America Inc. v. Sonoo Jaiswal, 2024 SCC OnLine Del 1386, Order dated 12-02-2024]
Advocates who appeared in this case :
For the Plaintiff: Shwetasree Majumdar, Tanya Varma, Prithvi Gulati, Srinivas Venkat, Advocates
For the Defendants: Varun Dhingra, Tapan Mittal, Advocates; Soono Jaiswal in person
Buy Trade Marks Act, 1999 HERE
