Delhi High Court awards eBay, a permanent injunction involving trademark infringement

Delhi High Court awards eBay, a permanent injunction involving trademark infringement

The Single Judge Bench of Justice Navin Chawla accorded permanent injunction to "eBay" in a lawsuit seeking a permanent injunction prohibiting the defendants from using the mark "Shopibay," which was similar to the plaintiff's mark "eBay/EBAY," and held that the defendant's adoption of the mark was deceitful and meant to mislead customers, thus awarding Rs. 2 lakhs legal costs in favour of eBay.

Background

Through its e-commerce platform, the Plaintiff (Ebay Inc.) offers an online market for the sale of products and services under the domain name www.ebay.com. In addition, the Plaintiff has a domain name specifically for Indian customers, www.ebay.in, which was established in 2005. The plaintiff's "eBay Marks" had received international statutory and common law protection as well as protection under the provisions of the Trade Marks Act, 1999 (Act) through registrations.

In 2017, the defendant sought to register its mark "shopibay" in a trade mark application, which the plaintiff objected to. Following an inquiry, it was discovered that the defendants had been using the domain names www.shopibay.com and www.myshopibay.com to provide links to different e-commerce websites, along with operating the plaintiff's primary website www.ebay.com. The defendants' website displayed the plaintiff's "eBay Marks" and claimed that the plaintiff was one of the defendants' partners and that the defendants appeared to provide the same services as the plaintiff. In addition, the defendants broadened the scope of their enterprise, opening a brick-and-mortar store in addition to offering e-commerce services, and starting to advertise on www.indiamart.com.

Analysis, Law and Decision

In 2019, the Delhi High Court had awarded the plaintiff an ex-parte ad-interim injunction and barred the defendants from using the contested trade mark "shopibay" or any other mark that was confusingly similar to the plaintiff's registered trademarks.

The Court stated that the mark used by the defendants, "shopibay," was confusingly similar to the plaintiff's mark and was obviously meant to capitalise on its goodwill and reputation. Additionally, it amounted to passing off the defendants' goods and services as the plaintiff's by infringing on the plaintiff's trademarks. The defendants misled consumers about their affiliation with the plaintiff while also unfairly exploiting the plaintiff's goodwill and reputation. Such actions by the defendants would similarly tarnish the plaintiff's mark.

The Court went on to say that the domain name used by the defendants was likewise highly comparable to that of the plaintiff. It was likely to mislead a consumer about its affiliation with the plaintiff.

Relying on Anugya Gupta v. Ajay Kumar, 2022 SCC Online Del 1922, the Court concluded that "he right of a proprietor in a domain name was entitled to equal protection, applying the principles of the trade mark law. The use of the same or similar domain name might lead to diversion of users, which could result from such user mistakenly accessing one domain name instead of another. Therefore, a domain name might have all the characteristics of a trade mark and can find an action for passing off."

Additionally, the Court stated that the 'shopibay' mark, which is phonetically similar to the plaintiff's mark, was likely to mislead consumers about the affiliation of these businesses with the plaintiff in connection to the corporate identities of the defendants. As a result, the Court decided that the plaintiff was entitled to Rs. 2 lakh as damages in addition to the suit's expenses, and the plaintiff was given a permanent injunction against the defendants.