24 Jul 2022
The recent case related to trademark infringement was seen as the Delhi High Court permanently restrained a Bengaluru-based cake shop from using the name “Facebake” or “Facecake”, or in fact any other Facebook trademark, after Meta Platforms, which owns Facebook, went to court. In an order from court in a suit filed by Meta Platforms, which owns Facebook, the Delhi High Court has permanently restrained the owner of a Bangalore-based cake shop from using the name ‘Facebake’ or ‘Facecake’ or any other Facebook trademarks for its business or product and services.
Cases like this are seen in the past few years and this is not unlikely to be the last. As, dozen flea markets, Delhi chor bazaar is the one and the most famous where there is a selling of shoes, watches, clothes etc named after world renowned brands. Popular Coffee chains, mineral water brands, fast moving consumer goods (FMCG) companies and many others have had to grapple with violations of Intellectual Property Rights (IPR).
Trademark under Indian law is a mark that is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.
So, if anyone trying to deceptively use a brand which is similar to another popular brand (e.g. in font, format, colour scheme, etc.) is an infringer or called as the violation of the trademark act and also be called as trademark infringement. Also “in addition to the names which are similar in sound, ‘Facebake’ was also using the similar kind of font and the blue-on-white colour scheme popularised by Facebook,” says Anupam Shukla, partner at Mumbai- based Pioneer Legal.
So, when can we say that this is a matter of infringement?
It basically depends on how well-known a mark is. Other things such as the brand’s international presence, application and a reputation built during the time also determine if one is entitled to protect those marks. In cases like these, the conduct of the alleged violator has to be taken into account. The look and feel of the cake shop was quite similar, so it comes in the ambit of unfair advertising. The shop was riding on Facebook’s reputation, diluting its marks.
The mala fide intent of the defendants is evident from the fact that upon the knowledge of the ad-interim injunction passed by this Court, the defendants changed the mark from ‘Facebake’ to ‘Facecake’ thereby changing only one alphabet, however, chose not to appear before this Court to defend the suit in spite of service,” reads the order. Meta Platforms in 2020 had filed the suit against Noufel Malol, the owner of ‘Facebake’, for a permanent injunction to restrain him from using the mark ‘Facebake’, the website
‘www.facebake.in’ and related email ids. The court, in November 2020, passed an interim order in favour of Meta and confirmed the order in January 2021, since no one appeared on behalf of the defendants. Meta through an application letter apprised the court that Malol has incorporated a company by the name of ‘Ehrlich Foods and Beverages Pvt Ltd’ which has preferred a trademark application for registration of a deceptively-similar mark ‘Facecake’. Since no one appeared for Malol or the company, the court proceeded ex-parte in the case.
Justice Navin Chawla said the shop owner will deliver all finished and unfinished materials, including locks, signage, cards, stationary, accessories, packaging, labels and other material bearing the ‘Facebake’ marks or any mark deceptively similar to Facebook, to Meta for the purpose of erasure or destruction.
The court also awarded nominal damages of Rs 50,000 in favour of Meta and asked the shop owner to pay the cost of the suit to the social media giant. It said that though there is some distinction between the marks of the Meta and the defendant, the overall visual representation adopted by the defendant clearly depicts “the mala fide intent” in obtaining unfair advantage by the use of marks similar to that of Meta.