Delhi High Court Cancels 'Javapoint' Trademark In Favor Of Oracle America
Delhi High Court Cancels 'Javapoint' Trademark In Favor Of Oracle America
The Delhi High Court has ordered the cancellation of the trademark registration for 'javapoint' following a plea filed by Oracle America Inc., the owner of the JAVA software trademark.
Justice Amit Bansal, in his ruling, stated:
"As may be seen from the side-by-side comparison of the marks set out in the table above, the impugned mark subsumes the petitioner's mark JAVA in its entirety and is almost identical with its mark JAVASCRIPT. The minor difference/addition in the impugned mark does not render it different from the petitioner's prior and reputed JAVA marks when considered in totality. It is therefore evident that the impugned mark is deceptively similar to the petitioner's JAVA marks. This Court further notes that the petitioner also provides series of JAVA training and certification courses around the world, including online courses accessible by users in India. Therefore, the target consumers of the rival parties are identical and overlapping."
Oracle America, incorporated under U.S. law with a subsidiary in India, argued that it had been using the JAVA trademark since 1996 for software and related services. It contended that the 'javapoint' trademark, registered in favor of Sandeep Khandelwal, was being used for identical services, including training and education, which could mislead consumers. The company asserted that its JAVA marks had gained immense goodwill and recognition, making the rival mark likely to cause confusion and deception.
Oracle further argued that the use of 'javapoint' was in bad faith and amounted to passing off. The company contended that since it was the prior user of the JAVA marks, the trademark registration of 'javapoint' was contrary to Section 11(1) of the Trade Marks Act.
The court noted that the respondent did not file any reply to the petition. Justice Bansal observed:
"The respondent no.1 has not filed his reply to the present petition, which indicates that he has nothing substantial to put forth on merits by way of a response to the averments made in the petition. In view of the above, the averments made in the petition are deemed to be admitted."
After examining the marks, the court ruled that 'javapoint' was deceptively similar to Oracle’s JAVA trademark and that its continued registration would violate Sections 9, 11, and 18 of the Trade Marks Act. The court concluded:
"In view of the above, it is clear that the impugned mark has been adopted by the respondent no.1 dishonestly to ride over the goodwill and reputation of the petitioner under the JAVA marks and to associate himself and his services with the petitioner. Therefore, the continuation of the registration of the impugned mark in the name of the respondent no.1 in the Register of Trade Marks is in contravention of the provisions of Sections 9, 11 and 18 of the Act and is liable to be cancelled under the provisions of Section 57 of the Act."
The court directed the Trade Marks Registry to remove the 'javapoint' mark from its records.
