Delhi High Court awards ₹2 lakh damages to eBay in trademark infringement suit

The Delhi High Court recently awarded damages worth ₹2 lakh to global e-commerce company eBay in a trademark infringement suit filed by it against another e-commerce platform called 'Shopibay'. (Ebay Inc v. Mohd Waseem T/AS Shopibay & Ors).Justice Navin Chawla permanently restrained the defendant company from using the 'Shopibay' trademark or any other mark deceptively or confusingly similar to the eBay trademark.Taking note of the fact that the 'SHOPIBAY' mark adopted by the defendants was deceptively similar, and was intended to ride on eBay's goodwill and reputation, the Court held,"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.".eBay submitted that its domain name was registered in year 1995 and that its Indian website has been functional since the year 2005.In May 2017, the e-commerce company came across a trademark application filed by the defendant, seeking registration of the mark ‘SHOPIBAY'.The application was opposed by eBay, but upon investigation, it was found that the domain names www.shopibay.com and www.myshopibay.com were both registered in the name of the second defendant.Upon gaining knowledge of this, eBay's counsel issued multiple cease-and-desist letters to the defendants in 2017, but received no response until the time of filing the suit.During this period, eBay claimed that SHOPIBAY expanded its scope of business, and that apart from 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.Hence, eBay approached the Delhi High Court with the present trademark infringement suit..The Court noted that eBay was able to prove that it was the registered proprietor of the eBay marks and was also able to show its goodwill and reputation in the said marks, not only in India, but also internationally.The defendants were not only taking unfair advantage of eBay's reputation and goodwill, but also deceiving unwary consumers of their association with eBay, thereby leading to the dilution of the eBay mark, Justice Chawla held."As far as the domain name/website of the defendants is concerned, the same is also deceptively similar to that of the plaintiff. It is likely to deceive an unwary consumer of its association with the plaintiff," the Court added in its order.The use of the same or similar domain name may lead to a diversion of users, which could result in such users mistakenly accessing one domain name instead of another. Therefore, a domain name may have all the characteristics of a trademark and could find an action for passing off, the Court explained.Thus, the Court held that eBay would be entitled to damages to the tune of ₹2 lakh, apart from costs of the suit.The Court also directed the defendants to change the names of their companies ‘Shopibay Internet Private Limited’ and ‘Shopibay Ventures Private Limited’ sans using the mark or word 'Shopibay'..Advocates Nancy Roy and J Sharanya appeared for eBay..[Read order]