Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Case Title:Oracle America, Inc. Vs. Mr. Sandeep Khandelwal

Date of Order: 3rd February 2025

Case No.: C.O. (COMM.IPD-TM) 121/2024

Neutral Citation: 2025:DHC:838

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Fact

Oracle America, Inc. filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the trademark registered under No. 5420304 in Class 41 in the name of Mr. Sandeep Khandelwal. Oracle, a global technology company operating in over 175 countries, has been using the mark "JAVA" since 1996 for computer software and related services. The mark "JAVA" is widely recognized and has been registered in India and multiple countries. Oracle also owns the domain www.java.com, operational since 1996. The petitioner discovered that the respondent had obtained registration for a deceptively similar mark incorporating "JAVA" for education and training services. Oracle opposed this registration, arguing that it was likely to confuse consumers and unfairly benefit from Oracle’s established reputation. Despite receiving notice, the respondent failed to appear or file a reply, leading to an ex-parte decision.

Issue

The main issue before the court was whether the respondent’s trademark registration was liable to be canceled due to its similarity with Oracle’s well-established "JAVA" trademarks. The court had to determine if the mark was deceptively similar, lacked distinctiveness, and was registered in bad faith to exploit the petitioner’s goodwill.

Reasoning and Analysis of the Judge

The court found that Oracle was the prior adopter and registered proprietor of the "JAVA" mark, with registrations dating back to 1995. The judge noted that the respondent’s mark entirely subsumed "JAVA" and was used for identical services in Class 41, making it highly likely to cause confusion. The court held that the registration of the impugned mark violated Sections 9, 11, and 18 of the Trade Marks Act, as it was neither distinctive nor capable of distinguishing the respondent’s services from those of Oracle. Citing precedents, the court emphasized that merely adding minor variations to a well-known mark does not eliminate the risk of confusion. The court concluded that the respondent had dishonestly adopted the mark to mislead consumers and benefit from Oracle’s longstanding reputation.

Decision of the Judge

The court allowed the rectification petition and directed the Trade Marks Registry to remove the respondent’s registered mark from the Register of Trade Marks. The court ruled that the impugned mark was deceptively similar to Oracle’s trademarks and had been registered in contravention of trademark laws. The Trade Marks Registry was instructed to ensure compliance by forwarding a copy of the order for implementation.