Meta Platforms Vs Noufel Malol (Delhi High Court)
Held that overall visual representation adopted by the defendants using mark ‘facebake’/ ‘facecake’ clearly depicts the mala fide intent in obtaining unfair advantage by use of the mark similar to the plaintiff i.e. ‘facebook’
Facts-
This suit has been filed by the plaintiff praying inter-aliafor a decree of permanent injunction restraining the defendants from using the mark ‘Facebake’ and/or the domain name www.facebake.in; the email IDs [email protected]; [email protected], as also for seeking rendition of accounts.
The plaintiff is aggrieved of the adoption of the mark ‘Facebake’ by the defendant no.1, which as per the submission of the plaintiff is mimicking the visual presentation by copying the colour scheme, font, commercial impression, and overall look and feel, and thus intentionally trading off the significant goodwill that the plaintiff has established in its ‘Facebook’.
Conclusion-
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.
FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT
1. This suit has been filed by the plaintiff praying inter-alia for a decree of permanent injunction restraining the defendants from using the mark „Facebake‟ and/or the domain name www.facebake.in; the email IDs [email protected]; [email protected], as also for seeking rendition of accounts.
2. This Court, vide order dated 12.11.2020 was pleased to pass the following ad-interim order:
“6. In the meanwhile, the defendant, his agents and employees are restrained from using the mark “FACEBAKE” or any other mark, which is deceptively similar to the plaintiff’s trademark.
6.1 The injunction will also operate vis-a-vis the logo(s) represented by the letter ‘f’ i.e.
6.2 Furthermore, the defendant is also restrained from operating his website i.e. www.facebake.in.”
3. As none appeared for the defendant no.1, (who was the sole defendant till that date), this Court confirmed the ad-interim order dated 12.11.2020, vide the order of this Court dated 21.01.2021, and further passed the following directions:
“3. The interim order dated 12th November, 2020 is confirmed. The Registrar of the domain name www.facebake.in namely Crazy Domains FZ-LLC is directed to suspend the domain and transfer the domain name owned and registered by the Defendant comprising of the marks/designation FACEBAKE, FACEBOOK or any other mark/designation similar thereto to the plaintiff within four weeks.”
4. The plaintiff thereafter filed an application under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (in short, the „CPC‟), being IA No.8765 of 2021, alleging therein that despite the above orders being passed by this Court, the defendant no.1 incorporated a company by the name of „Ehrlich Foods and Beverages Pvt. Ltd’ on 27.01.2021, and is one of its directors. The said company has preferred a trade mark application bearing no. 4926784 under Class 30, seeking the registration of a deceptively-similar mark
dated 30.03.2021.
5. The plaintiff also filed another application, being IA No. 10045 of 2021, under Order I Rule 10 of the CPC praying to implead the said company as defendant no.2 in the suit.
6. The said company was then impleaded as the defendant no.2 in the suit vide the order of the learned Joint Registrar (Judicial) dated 11.08.2021.
7. None appeared for the defendant no.2 in spite of service, thus, even the defendant no.2 was proceeded ex-parte vide an order of this Court dated 10.11.2021.
8. It is the case of the plaintiff that the plaintiff-company has been incorporated in the United States of America and adopted Facebook, which is a world-famous, social networking service. It also launched a mobile application and website under the mark ‘Facebook’ in 2004. Some key products/features of the plaintiff under the mark ‘Facebook’ include, for example, Facebook Profile, Facebook News Feed, Facebook Messenger, Facebook Groups, Facebook Events, Facebook Video, Facebook Photos, Facebook Pages, Facebook Shops (launched in May, 2020) and Facebook Marketplace (launched in October, 2016).
9. The plaintiff has given details of registrations obtained by it in its marks (hereinafter referred to as „Facebook marks‟) as under:
