Fidus Law Chambers Secures Victory For Oracle In 'JAVA' Trademark Infringement Case

Fidus Law Chambers Secures Victory For Oracle In 'JAVA' Trademark Infringement Case

The Division Bench of the Delhi High Court delivered a significant ruling related to the use of the trademark JAVA in a domain name by the appellants. The judgment was passed by a bench of Justices Vibhu Bakhru and Sachin Datta who were hearing an appeal from an earlier injunction order of the Single Judge, dated 12th February 2024.

Oracle America Inc., filed a suit against one Mr. Sonoo Jaiswal, for adopting the trademark JAVATPOINT as a part of his corporate name as also the domain name, javatpoint.com. He incorporated two companies, Javatpoint Limited and Javatpoint Tech Private Limited through which he was offering ‘Oracle-certified training’ courses.

Representing Oracle, Fidus team argued that JAVA is a well-known trademark, extensively used and recognized as a programming language worldwide, associated with Oracle’s software and hardware products and sought an injunction against the appellants from using the JAVA trademark.

The Ld. Single Judge allowed Oracle’s interim injunction application and held that, prima facie, the adoption of JAVA as part of appellants’ corporate names and said domain name amounted to infringing use. The appellants were also interdicted from using the domain name javatpoint.com.

A categorical stand was taken before the Learned Single Judge (and recorded in the injunction order) that Oracle does not object to the use of its trademark JAVA by the developer community insofar as it is descriptive of their knowledge of, proficiency in, or use of the JAVA programming language.

However, its statutory and common law rights are infringed when the mark JAVA is used as a trade or business name or in any other commercial manner which clearly amounts to trademark use and creates confusion and deception in the minds of consumers.

Aggrieved by the Ld. Single Judge’s order, Mr. Jaiswal moved the Appeal Court challenging the part of the order that directed suspension of the domain name javatpoint.com. The bench of Hon’ble Mr. Justice Vibhu Bakhru and Hon’ble Mr. Justice Sachin Datta dismissed the appeal while relying on the Supreme Court’s decision in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. [(2004) 6 SCC 145], thus emphasizing that domain names are capable of distinguishing the services provided and act as a ‘business identifier’ and thus, protectable under trademark law.

While upholding the Ld. Single Judge’s order, the Division Bench noted, that, “the use of ‘JAVA’ as a part of the domain name is not to function as an identifier for any programming language or any product of the respondent’s group and associated with the activities and the services rendered by the appellants. The domain name was clearly meant to serve as an identifier of the appellants and its activities. It would thus, prima facie, follows that the use of the mark Java by the appellants as a part of their domain name would, prima facie, be an infringing use.”

The Division Bench further stated that, “an entity’s domain name serves as an internet address. Thus, use of a trade mark as a part of domain name is likely to indicate an association between the proprietor of the trade mark and the proprietor of the domain name. It is well settled that a trade mark serves as a source identifier and the use of a trade mark in a domain name has the propensity to mislead the users into believing that the sources of the goods and services covered by the trade mark would be accessible by the domain name, which incorporates the trade mark in question.”

Fidus Law Chambers through Ms. Tanya Varma, Mr. Prithvi Gulati, and Mr. Ritik Raghuvanshi represented Oracle America, Inc. The matter was argued by Ms. Swathi Sukumar, Advocate.