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Bangalore Pastry Shop restrained from using “Facebook” Trademark: Delhi High Court

Report by Rhea Mistry

The Delhi High Court in the case of Meta Platforms INC. v. Noufel Malol & ANR passed an injunction order, restraining the Bangalore Pastry making company from using domain names similar to Facebook. On 12th November 2020, this court passed an interim order stating that the defendants, its agents and the employees are restrained from using the mark “Facebake” or any other mark, which is in any way similar to the plaintiff’s trademark.

Even after passing the order, the defendants incorporated the company naming it “Ehrlich Foods and Beverages Pvt. Ltd. on 21st January 2021, with the intention to use the trademark of “Facecake” and applied for registration of the same on 30th March 2021. Thereafter, the plaintiff filed an application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908. No one appeared on behalf of the defendants in both the proceedings and hence ex-parte orders were granted.

In this case, the plaintiff has put forward that they are a company incorporated in the USA and adopted Facebook in the year 2004. The plaintiff’s company is considered to be a world-famous social networking platform and has launched a mobile application along with its website. With various key products and features of the same being launched in October 2016 and May 2020, all the applications for registration of trademarks have been submitted by the plaintiff.

The trade dress of “Facebook” has a theme of blue and white with a distinguishing color, layout, and visual impressions. The plaintiffs’ brand is known to be among the10 most famous brands in India across all segments of businesses. It is a highly used brand in India with a large user base. They further contend that they have been recognized time and again in a number of magazines and have also been recognized as “famous” or “well-known” in several international jurisdictions.

According to section 2(1) (zb) read with Section 2(1) (z) of the Trademark act 1999, the plaintiff presented that Facebook is a “well-known” trademark. The “Facebake” mark by defendant no. 1 mimics the plaintiff’s trademark, visual impressions, and theme. The plaintiff asserted that the defendants are using a similar trademark as their own with an
intention of trading with the goodwill of the plaintiff. He has filed the representations of the defendants with the court showing their marks similar to their own.

The activity of this kind came to be known by the plaintiff when they were surfing through the trademarks journal and
saw an application seeking registration of the mark “Facebake”. Following this, they filed an application against the registration stating that the defendants are using a very alike mark, which is infringing their statutory as well as common law rights. Its outcome is dilution, and unfair competition to the plaintiff.

Even though the order was passed, the defendants changed their mark from “Facebake” to “Facecake” which is a change in just one alphabet and incorporated their company. The mark of “Facecake” is still very similar to the mark of the plaintiffs’ company. The plaintiff relied on a number of judgments of the Supreme court to support his arguments.

After considering the submissions and affidavits made by the plaintiff, the court said that under the Trademarks Act, 1999, section 11 provides the criteria on which the application for registration can be refused. The court stated that u/s 11(6), (7) and (9), an application can be refused for the reason that the mark is already registered and a well-known trademark. The court observed:

“In the present case, though there is some distinction between the marks of the plaintiff and of the defendants, the overall visual representation adopted by the defendants, clearly depicts the mala fide intent of the defendants in obtaining unfair advantage by the use of the mark similar to that of the plaintiff and also leads to the dilution of the mark of the plaintiff. It can lead to an unwary consumer being at least interested in taking note of the defendants as having some kind of connection with the plaintiff. The mala fide intent of the defendants is also evident from the fact that upon the knowledge of the ad-interim injunction passed by this Court, the defendants changed the mark from “facebake‟ to “facecake‟ thereby changing only one alphabet, however, chose not to appear before this Court to defend the suit in spite of service.”

This suit is decreed by permanently restraining the defendants, directors, employees, its franchises, subsidies, offices, and anyone acting on their behalf from using the “facebake” marks, its domain name, their email ids, the “facecake” marks, and the visual representations of the Facebook or any other mark similar to that of the plaintiff. The defendants are to damages amounting to Rs. 50,000/- to the plaintiff and also the costs that were incurred by the plaintiff in the present suit. Any marks, locks, stationery, etc. that are alike with the plaintiff’s mark shall be delivered to the plaintiff for the purpose of destruction and erasion.

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