Savvy Thakur
Published on: 22 November 2022 at 20:21 IST
The Delhi High Court in a trademark infringement suit it filed against another e-commerce platform called “Shopibay”, the global e-commerce company eBay was recently awarded damages in the amount of 2 lakh rupees.
Justice Navin Chawla permanently prohibited the defendant company from using the “Shopibay” trademark or any other mark that is misleadingly similar to the eBay trademark or confusingly similar to it.
“It is an infringement of the marks of the plaintiff and amounts to passing off the goods and services of the defendants as that of the plaintiff,” the Court ruled, noting that the “SHOPIBAY” mark adopted by the defendants was deceptively similar and was intended to capitalize on eBay’s goodwill and reputation.
The multi-national e-commerce company, eBay claimed that it registered its domain name in 1995 and that its Indian website has been operational since 2005.
The defendant submitted a trademark application in May 2017 requesting registration of the name “SHOPIBAY” to the e-commerce company.
The petitioner objected to the application, but an investigation revealed that the second defendant had registered the domain names “www.shopibay.com” and “www.myshopibay.com”.
In 2017, the counsel for eBay sent multiple cease-and-desist letters to the defendants after learning of this, but they did not respond until the suit was filed.
In addition to providing e-commerce services, the defendants also opened a brick-and-mortar store in Lucknow, Uttar Pradesh, and began promoting their business on “www.indiamart.com” during this time, according to eBay.
Because of this, eBay filed the recent trademark infringement suit with the Delhi High Court.
The court noted that eBay was able to demonstrate its goodwill and reputation in the eBay marks, not only in India but also internationally, and that it was the registered proprietor of those marks.
Justice Chawla ruled that the defendants were not only unfairly exploiting eBay’s goodwill and reputation, but they were also misleading consumers about their relationship with eBay, resulting in the dilution of the eBay brand.
In its order, the Court added, “The domain name/website of the defendants is also deceptively similar to that of the plaintiff in this regard. It is likely to deceive an unwary consumer of its association with the plaintiff.”
Users may be diverted by using the same or a similar domain name, which could cause them to access one domain name instead of another. The Court explained that as a result, a domain name may qualify for an action for passing off because it may possess all of the characteristics of a trademark.
As a result, the court decided that eBay would be entitled to two lakh yen in damages in addition to the costs of the lawsuit.
The defendants were also ordered by the court to change the names of their businesses to “Shopibay Ventures Private Limited” and “Shopibay Internet Private Limited” without using the word “Shopibay”.