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.

Oracle America, Inc. Vs. Sandeep Khandelwal

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.