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'Deceptively Similar': Delhi HC Orders Cancellation Of 'Javatpoint' Trademark In Oracle America's Plea Challenging Infringement Of Its 'JAVA' Mark
Sanjana Dadmi
13 Feb 2025 5:00 AM
The Delhi High Court ordered the cancellation of the trademark registration of 'javapoint' in a plea filed by the American software company, Oracle America Inc, which owns the rights over Java software.Justice Amit Bansal in his order said, "As may be seen from the side-by-side comparison of the marks set out in the table above, the impugned mark subsumes the petitioner's mark JAVA in...
The Delhi High Court ordered the cancellation of the trademark registration of 'javapoint' in a plea filed by the American software company, Oracle America Inc, which owns the rights over Java software.
Justice Amit Bansal in his order said, "As may be seen from the side-by-side comparison of the marks set out in the table above, the impugned mark subsumes the petitioner's mark JAVA in its entirely and is almost identical with its mark JAVASCRIPT. The minor difference/ addition in the impugned mark does not render it different from the petitioner's prior and reputed JAVA marks when considered in totality. It is therefore evident that the impugned mark is deceptively similar to the petitioner's JAVA marks. This Court further notes that the petitioner also provides series of JAVA training and certification courses around the world including online courses accessible by users in India. Therefore, the target consumers of the rival parties are identical and overlapping".
The court was hearing a suit by Oracle America which was incorporated under the laws of United States of America and has a subsidiary company in India. Oracle stated that it adopted the JAVA trademark for computer software and related services in 1996. It also uses formative marks including the mark JAVASCRIPT in India.
It submitted that it has been using Java marks in India since the 1990s and that the relevant class of consumers and members of trade in India are extremely familiar with Java marks and Oracle's products and services.
It stated that Oracle provides a series of JAVA training and certification courses around the world including online courses accessible by users in India.
Oracle sought cancellation of 'javapoint' trademark granted in favour of one Sandeep Khandelwal (respondent no. 1). Oracle contended that the defendant is using the mark with respect to identical services relating to proving training/education.
Oracle contended that the mark is likely to deceive the public and cause confusion among the members of trade and public. It argued that the use of the impugned mark was mala fide and constituted passing off. It stated that as it was the prior user of JAVA marks, the registration of the impugned mark is contrary to Section 11(1) of the Trade Marks Act.
Justice Bansal noted that the respondent did not file any reply to the petition. The court said, “The respondent no.1 has not filed his reply to the present petition, which indicates that he has nothing substantial to put forth on merits by way of a response to the averments made in the petition. In view of the above, the averments made in the petition are deemed to be admitted.”
Comparing the two marks, the Court noted that the impugned is identical to Oracle's mark. It said that the respondent's mark is likely to cause confusion and deception among the consumers who associate the mark JAVA with the petitioner only and none else, especially as the petitioner has been using the JAVA marks since the 1990s in India and has acquired immense goodwill and reputation thereunder.
"In view of the above, it is clear that the impugned mark has been adopted by the respondent no.1 dishonestly to ride over the goodwill and reputation of the petitioner under the JAVA marks and to associate himself and his services with the petitioner. Therefore, the continuation of the registration of the impugned mark in the name of the respondent no.1 in the Register of Trade Marks is in contravention of the provisions of Sections 9, 11 and 18 of the Act and is liable to be cancelled under the provisions of Section 57 of the Act," the court said and directed the Trade Marks Registry to remove the impugned mark.
Case title: Oracle America, Inc. vs. Mr. Sandeep Khandelwal And Anr
Citation: 2025 LiveLaw (Del) 176