India: Exxon Mobil Gets Favourable Order Against The Use Of The Mark EXON For Fire Extinguishers

Last Updated: 3 January 2019
Article by Omesh Puri

The Calcutta High Court in its order dated September 27, 2018 has ruled in favour of Exxon Mobil in a suit filed for infringement and passing off against the use of the trade mark and trade name EXON.  It was argued by Exon Mobil (the plaintiff) inter alia that the word "EXXON" is a coined and invented word which has been registered in 160 countries including India. The Plaintiff obtained over 39 registrations for the word "EXXON" for a wide variety of goods falling in Classes 1 to 6, 9, 11, 12, 16, 17, 19, 22 to 25, 27, 29, 30 in India. The plaintiff also relied on various proceedings where the mark "EXXON" was held to be a well- known trademark. It was claimed by the plaintiff that it had been selling its products in India under the mark "EXXON" at least since the year 1980 through one of its group company.

The defendant argued that it has been carrying on business of manufacturing fire extinguishers since 1982 under the name and style of M/s. Exon Engineering Corporation. The defendant relied upon its sales tax registration "for a dealer having his place of business in West Bengal" which was dated 2nd November, 1983. The defendant made a claim of prior user of the mark 'EXON' since 1982 and relied upon some documents from Government authorities.  It was argued by the Defendant that the "EXXON" mark was not registered by the plaintiff in respect of "firefighting compositions" until 1988 and thereafter, the mark EXXON was registered but as "proposed to be used" and the plaintiff never used the mark EXXON for such goods. The Defendant argued against the injunction on the ground that its business and goods are very different from that of the Plaintiff.

The court after analysing the evidence held that defence of prior user is not available with the Defendant as it was unable to produce any evidence to show any use prior to 1982 as the word mark 'EXXON" was registered by the Plaintiff in 1967. It was held by the court that the registration of the word mark itself is a prima facie evidence of the validity of such registration inasmuch as the registration of the mark gives the owner of the mark a valuable and indefeasible right to use it exclusively and jealously protect such mark as opposed to an action based on passing off which solely rests on the concept of prior user. The Court noted the recognised principle in common law jurisdiction that passing off right is broader remedy than that of infringement which is due to the reason that the passing off doctrine operates on the general principle that no person is entitled to represent his or her business as business of other person.

The court held that the trade mark "EXXON" was a shining star in the horizon and already had significant presence in the world market when the defendant started its business under the trading name "Exon Engineering Corporation". The court considered the dictionary meaning of the word "Exon"  and held that it is not one of such words which one would ordinarily look for in the dictionary or commonly used.

The plea of absence of common field activity was rejected by the Court on the ground that the defendant has no connection with the plaintiff but adopted the name "EXON" as part of trading name and  the mere omission of the alphabet 'X' by the defendant cannot considered as honest adoption of the mark EXON. The Court relied upon the principle that if a highly distinctive trade mark is applied to a class of goods which is a proprietor does not deal with consumers may always wonder as to whether the proprietor of the trade mark has launched a new product. The Plaintiff was held to be entitled to an order of injunction as the adoption of the word "EXON" in relation to Defendant's trading name and for goods fire extinguisher was subsequent to Plaintiff's prior trademark registration. It was observed by the Court that the Defendant has not been able to show that it has acquired any goodwill or reputation for its mark "EXON".

The Court after considering the facts and material also held "EXXON" as a well-known trade mark. The Defendant's argument of the narrow class of registration of 1967 was not acceptable to court as the mark "EXXON" was considered to be distinctive and a well-known trade mark. Considering all the facts, the court passed an order of injunction restraining the defendant from using the trade mark "EXON" or any other mark that is deceptively similar/identical to the Defendant's registered trade mark "EXXON".

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions