In a recent ruling in a trademark infringement case brought by Meta, formerly known as Facebook, the Delhi High Court has barred a Bengaluru-based company from using the brand names facebake and facecake. The lawsuit centred on the unauthorised use of the brand’s trademarks and graphic representations associated with the social media giant.
In addition to permanent restraint, Justice Navin Chawla also charged the offenders with nominal damage of Rs. 50,000. The court further ordered the defendants to pay back Meta’s legal expenses and also prohibited them from using the domain name www.facebake.in.
The first defendant, Noufel Malol, was the subject of a complaint from Meta for allegedly copying Facebook’s visual interface. Meta accused Malol of willfully trading off the substantial goodwill built up in the facebook emblem by replicating the colour scheme, the font, the commercial image as well as the entire look and feel. Meta learned about the aforementioned activities when it came across an advertisement in the Trade Marks Journal for a claim made by defendant No. 1 to register its mark Facebake.
The defendant’s use of the identical mark infringed on the plaintiff’s statutory and common law rights as well as its rights against passing off, dilution, and unfair competition to the plaintiff’s objection to the application. The plaintiff also stated that the Facebake mark was altered to Facecake after the ad-interim order of command was given, which was deceptively similar to the Meta’s Facebook mark.
The court determined that it could not be contested because Meta’s trademarks were all known across India and were clear from the records it had presented regarding its user base as well as reach. The use of similar marks without justification would undeniably amount to unfair competition, which is harmful to the distinctive character and reputation of the plaintiff’s Facebook marks, the court noted. It added that the plaintiff has also procured registrations for its marks for various categories of goods.
The court observed that while there were minor differences between the plaintiff’s and defendants’ marks, the defendant’s general visual representation clearly showed their malicious intent to gain an unfair advantage by using a mark that was confusingly similar to Meta. The court further noted that this undermines Meta’s trademark.
It may cause an unwary customer to at least be intrigued by the idea that the defendants and the plaintiff may be connected in some way. The fact that the defendants changed the mark from facebake to facecake after becoming aware of the ad-interim injunctive relief issued by the court, altering just one alphabet further demonstrates the defendants’ insincerity and bad faith. Despite being served with summons and complaint, the defendants chose not to show up before the court to defend their actions, the court added.
As per brand consultant, Abhimanyu Mishra from Brandfizz, for big organizations, brand protection is quite important and they have the means to remain vigilant for trademark infringement at all times and are ready to prosecute violators. It is crucial to take preventive measures to make brand identity and advertising tactics immune to error rather than preparing for what one would end up doing in the event of a warning.
