3 January 2019

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



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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.
India Intellectual Property
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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".

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