• Vrinda Sehgal

Delhi High Court restrains bakery from using the mark “FACEBAKE” in a suit filed by Facebook


Introduction


In the case of Facebook, Inc. v. Mr. Noufel Malol[1], the Delhi High Court granted an interim relief to the Plaintiff and held that the Defendant’s use of the mark “FACEBAKE” for the sale of confectionaries such as cakes, biscuits, cookies etc. was violative of the Plaintiff’s rights in the well-known trademark “FACEBOOK”.


The Decision


The Plaintiff claimed that the Defendant’s use of the mark “FACEBAKE” and website www.facebake.in was degrading to their well-known trademark “FACEBOOK” and causing confusion in the minds of the public as to the source of its products. Agreeing with the Plaintiff, the Court granted an injunction in its favour. It is noteworthy that the injunction was extended to also cover logos represented by the letter “f”.


In granting the order, the Court stated that, “Given the fact that the plaintiff’s trademark “FACEBOOK” is known world-over, the balance of convenience also appears to be in favour of the plaintiff.” Hence, the Defendant bakery, its employees and agents were restrained from using the mark “FACEBAKE” or any other mark, which is deceptively similar to the Plaintiff’s trademark.


Well-Known Marks


This decision is yet another example of trademark protection being granted beyond classification of any goods or services and even when the line of business is completely different. Some might argue that this level of protection needs to be granted to such well-known marks such as “FACEBOOK” because they may be more vulnerable as a result of their well-known status.


The Trademark Act, 1999 defines a “well-known” mark as, “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.” Therefore, well-known trademarks are protected across international borders and different categories of goods or services.


Indian statutory provisions ensure that well-known marks are adequately protected and Rule 124 of the Trademark Rules, 2017 permits a trademark owner to file a request for grant of “well-known” trademark with the Trademark Registry vide FORM TM-M. Further, section 11(2) of the Trademarks Act, 1999 also recognises that well-known trademarks are to be protected across all classes of goods and services.


A trademark attains well-known status as a result of its immense popularity and continuous and extensive use. In the case of Bayerische Motoren Werke AG v. Om Balajee Automobile (India) Private Limited[2], the Delhi High Court had recognised the fact that the adoption of a deceptively similar mark to a well-known mark, even in relation to dissimilar goods amounted to trademark infringement. Accordingly, in this case, the Defendants were restrained from using the mark “DMW” in relation to e-rickshaws, as a result of the well-known status of the Plaintiff’s trademark “BMW”.


Conclusion


To conclude, well-known marks have a special place under Indian trademark law and are indeed granted the protection that they deserve. Hence, the Delhi High Court, in its decision in the above-mentioned matter regarding “FACEBAKE” and “FACEBOOK” ensured that Facebook’s well-known status and trademark rights be protected.





Vrinda Sehgal

Associate

vrinda@iprattorneys.com






[1] https://www.livelaw.in/pdf_upload/pdf_upload-384741.pdf [2] CS (COMM) 292/2017

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