Delhi High Court Restricts Software Firm In Oracle Infringement Suit On ‘Java’ Trademark

Delhi High Court Restricts Software Firm In Oracle Infringement Suit On ‘Java’ Trademark

The American multinational complained that the defendant was using the mark for software training services and in programming language manuals

The Delhi High Court has restrained a software company from using ‘Java’ trademark in its domain name and for the services offered by it after US-based tech giant Oracle filed a trademark infringement suit.

In the Oracle America Inc vs Sonoo Jaiswal and Ors case, Justice Sanjeev Narula ordered the defendant’s software companies Javatpoint Limited and Javatpoint Tech from claiming that they offered Oracle-certified courses.

The court stated, “Since the plaintiff has made out a strong prima facie case, an injunction is granted in its favor by directing the defendants, and/or any person on their behalf, not to use the plaintiff’s trademark ‘Java’ as part of their domain name ‘javatpoint.com’ and in relation to the services they are offering.”

The bench suggested that if the defendants were to use the mark ‘Java’, it must be done strictly in terms of the Third-Party Usage Guidelines for Oracle Trademarks which are on the company’s website.

Oracle had approached the high court arguing that it was one of the leading names in the fields of database software and technology, cloud-based engineering systems and enterprise software products. It owned the trademarks Oracle, Java and PeopleSoft.

It complained that the defendant company was using the trademark ‘Javatpoint’ for various software training services, including in its Java programming language manuals.

The American multinational company had apprised the court that the defendant used the ‘Java’ trademark in its corporate name and was also using the domain name www.javatpoint.com to offer its services.

The defendant, on the other hand, maintained that its mark was not visually, structurally or phonetically similar to Oracle’s trademark.

It added that Java was a technology, encompassing the programming language and the software platform. It operated on billions of devices and was used for applications on mobile, desktops, web and app servers. Therefore, a particular entity could not monopolize it or be permitted to solely associate with it. Also, the name of a programming language could not be claimed as a trademark.

On hearing the arguments of both parties, the court established that the defendant's use of the mark ‘Java’ certainly amounted to infringement under Sections 29(1) and 29(5) of the Trademarks Act, 1999.

The bench rejected the argument that as the name of a programming language, ‘Java’ was ineligible for trademark protection.

Justice Narula ruled, “The crux of the plaintiff's complaint lies not in the generic use of 'Java' but in its specific application as a trademark by the defendant. The law of trademark protects against the use of a mark in a way that could confuse consumers regarding the source of goods or services. Therefore, if ‘Java’ is being used by the defendant in a way that capitalizes on its trademark value established by the plaintiff group, and not merely referring to the programming language, then it constitutes infringement.”

The bench added that the defendant’s mark goes beyond generically referencing the programming language in a descriptive or educational context.

Hearing this, the defendant suggested altering its corporate name to exclude the word ‘Java’.

Thereafter, the judge passed the restraining order on using the Java trademark in the domain name and services offered.

Advocates Shwetasree Majumdar, Tanya Varma, Prithvi Gulati and Srinivas Venkat appeared for Oracle.

The defendants were represented by advocates Varun Dhingra and Tapan Mittal.