Case Title:Oracle America, Inc. v. Sandeep Khandelwal & Anr.
Date of Order:3rd February 2025
Case Number:C.O. (COMM.IPD-TM) 121/2024
Neutral Citation:2025:DHC:838
Court:High Court of Delhi at New Delhi
Coram:Hon'ble Mr. Justice Amit Bansal
Brief Facts of the Case:
Oracle America, Inc., a U.S.-based corporation and part of the globally recognized Oracle Corporation group, filed a rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999. The petition sought the cancellation of the trade mark "JAVATPOINT," registered in Class 41 in the name of respondent Sandeep Khandelwal. The petitioner alleged that the impugned mark infringed on its long-established trade mark "JAVA," which has been in commercial use since the 1990s, both in India and globally.
The respondent registered the mark on 10th July 2023, despite Oracle’s prior registrations and the global reputation of its JAVA-branded software, training, and certification services. Despite being granted time to respond, the respondent failed to file a reply or appear during the hearings.
Key Issues for Determination:
1. Whether the trade mark "JAVATPOINT" is deceptively similar to Oracle's "JAVA" mark, thereby violating Sections 9, 11, and 18 of the Trade Marks Act, 1999.
2. Whether the registration of the impugned mark should be cancelled under Sections 47 and 57 of the Act due to mala fide intent and the likelihood of consumer confusion.
Arguments Advanced:
By the Petitioner (Oracle America, Inc.):
Oracle has been using the JAVA mark since the 1990s and owns registrations in India and internationally.
The impugned mark "JAVATPOINT" entirely incorporates the well-known "JAVA" mark, causing confusion among consumers.
The respondent adopted the mark dishonestly to ride on Oracle's goodwill and reputation.
The Trade Marks Registry failed to properly examine the application, overlooking Oracle's earlier registrations.
The respondent had not demonstrated bona fide usage of the mark within the requisite statutory period.
By the Respondent (Sandeep Khandelwal):
No reply was filed, and there was no appearance during proceedings.
Judicial Reasoning and Analysis:
The Court examined the statutory provisions and relied on the following key principles:
1. Section 11(1) of the Trade Marks Act, 1999: Prohibits registration of marks that cause confusion or deception due to similarity with earlier marks.
2. Section 57 of the Act: Allows cancellation of trade mark registration if granted without due cause or in contravention of statutory provisions.
Precedents Cited:
1. Enagic HK v. Enagic International (IPAB 2021) – Emphasized the duty of the Trade Marks Registry to conduct thorough searches for similar marks.
2. Greaves Cotton Limited v. Mohammad Rafi (2011 SCC OnLine Del 2596) – Held that minor variations do not prevent a finding of similarity if the dominant element is replicated.
3. Oracle America, Inc. v. Sonoo Jaiswal (CS(COMM) 2/2024) – Found the mark "JAVA TPOINT" deceptively similar to Oracle's "JAVA" mark.
Key Observations:
The impugned mark incorporated the "JAVA" element entirely, making it deceptively similar.
The respondent's adoption appeared dishonest, seeking to associate with Oracle’s established reputation.
The respondent's failure to defend the mark suggested an absence of a legitimate claim.
The Trade Marks Registry erred in not citing Oracle's earlier registrations during the examination process.
Decision of the Court:
The Delhi High Court found the registration of "JAVATPOINT" violative of Sections 9, 11, and 18 of the Trade Marks Act. It held that the respondent dishonestly adopted the mark, intending to mislead consumers and exploit Oracle's goodwill.
Order:
1. The trade mark "JAVATPOINT," bearing registration number 5420304 in Class 41, was cancelled under Section 57 of the Act.
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