Delhi High Court restrains software firm from using JAVA trademark after Oracle America files for infringement

The Delhi High Court recently restrained a software company from using ‘JAVA’ trademark in their domain name or for the services they are offering after US based tech giant Oracle filed a suit for trademark infringement [Oracle America Inc v Sonoo Jaiswal and Ors]..In an order passed on February 12, the High Court ordered the defendant software companies under the names ‘Javatpoint Limited’ and ‘Javatpoint Tech’ from claiming that they offer Oracle-certified courses.“Since plaintiff has made out a strong prima facie case, an injunction is granted in favour of the plaintiff by directing the defendants, and/or any person on their behalf, not to use the plaintiff’s trademark ‘JAVA’ as part of their domain name ‘javatpoint.com’, and also in relation to the services they are offering,” the Court ordered.Justice Sanjeev Narula said that if at all the defendants were to use the mark ‘Java’, such use must be done strictly in terms of the Third Party Usage Guidelines for Oracle Trademarks which are on Oracle's website..The order was passed after Oracle approached the High Court arguing that it is one of the leading names in the field of database software and technology, cloud based engineering system, enterprise software products etc and owns the trademarks like Oracle, Java and PeopleSoft.They said that the defendant companies are using the trademark ‘JavaTpoint’ for a variety of software training services including training and manuals on JAVA programming language. It was stated that the defendants have used the ‘JAVA’ trademark in their corporate names and are also using the domain name www.javatpoint.com to offer their services..Meanwhile, it was the defendants’ case that their mark is not visually, structurally or phonetically similar to Oracle’s JAVA trademark.They said that JAVA is a technology consisting of both programming language and software platform. It runs on billions of devices and is used for mobile applications, desktop applications, web applications, web servers and application servers and, therefore, it cannot be permitted to be solely associated with and monopolised by one particular entity, it was submitted. It was also argued that the name of a programming language cannot be claimed as a trademark..After considering the case, the Court concluded that the defendant's use of the JAVA mark does amount to infringement under Section 29(1) and 29(5) of the Trademarks Act.It also rejected the argument that JAVA being the name of a programming language, is ineligible for trademark protection.“The crux of the Plaintiff's complaint lies not in the generic use of 'JAVA' but in its specific application as a trademark by the Defendants, which is precisely the case here. The law of trademark protects against the use of a mark in a way that could cause confusion among consumers regarding the source of goods or services. Therefore, if ‘JAVA’ is being used by the Defendants in a way that capitalizes on its trademark value established by the Plaintiff Group, and not merely in reference to the programming language, then it constitutes infringement.”Justice Narula added that defendants’ mark goes beyond generically referencing the programming language in a descriptive or educational context..As the Court returned these findings, the defendants said that they will alter their corporate names to exclude the word ‘JAVA’.Finally, the Court also passed the restraining order with respect to use of Java trademark in domain name and services they offer..Advocates Shwetasree Majumdar, Tanya Varma, Prithvi Gulati and Srinivas Venkat appeared for Oracle.Advocates Varun Dhingra and Tapan Mittal appeared for the defendants..[Read Order]