Meta Platforms Inc. (Meta) has several registrations for its mark “Facebook” and other Facebook-formative marks including , and the like. Meta was aggrieved of the adoption of the mark “Facebake/Facecake‟ by Noufel Malol (Malol’s). Resultantly Meta approached the Delhi High Court seeking a decree of permanent injunction restraining Malol from using the mark “Facebake” and/or the domain name www.facebake.in. Meta claimed that it gained knowledge of Malol’s activities when it came across an advertisement of the application in the Trade Marks Journal seeking registration of the mark “Facebake”. Meta opposed the said application. It asserted that the use of the similar mark by Malol was an infringement of its statutory as well as common law rights as also results in passing off, dilution and unfair competition by the defendants. The Delhi High Court had restrained Malol through an ad-interim injunction in January, 2021.

 

 

However, it came to Meta’s knowledge that that despite the above Order, Malol had incorporated a company named “Ehrlich Foods and Beverages Pvt. Ltd’ in January, 2021. The company filed an application for registration of the mark “Facecake” and had also changed its mark to , in March, 2021.

 

 

Meta thereafter sought to implead the said company as Defendant No.2 in August, 2021. However, no one appeared on behalf of Defendant No. 2 despite service of summons, and hence the matter proceeded ex-parte.

 

 

Meta claimed that the Defendants were mimicking the visual presentation by copying the colour scheme, font, commercial impression, and the overall trade dress, thus intentionally trading off the significant goodwill that Meta had established through its “Facebook” marks. Meta contended that its social networking service Facebook had a distinct colour scheme of blue and white, which was also reflected in the stylistic representation of the device mark along with a distinctive layout, font, and the overall visual impression was completely imitated by Malol for his pastry shop.

 

 

 

 

Meta stated that it had around 17,000 registrations and/or pending applications for the “Facebook” marks in approximately 130 countries, covering 45 international classes. It was further asserted that the “Facebook” marks as also other marks containing the formative word “Facebook” have been recognised as “well-known” as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 as well as several international jurisdictions such as the European Union, Brazil, Sudan, Portugal, France, the United States of America, Spain, Germany, South Korea, and Turkey and were therefore entitled for protection, despite use of the impugned marks by the Defendants for different goods.

 

 

The Court, after considering the relevant provisions and precedents pertaining to “well-known” trademarks, held that the Meta’s marks were well-known in India. The Court added that in the present case, though there was some distinction between the marks Meta and Malol, the overall visual representation adopted clearly depicts the mala fide intent of Defendants in obtaining unfair advantage by the use of the mark similar to that of Meta and also lead to the dilution of the Meta marks.

 

 

The act could lead to an unwary consumer being at least interested in taking note of Malol as having some kind of connection with Meta. The Court further held that Malol’s mala fide intent was also evident from the fact that upon the knowledge of the ad-interim injunction passed by the Court, he changed the mark from “Facebake” to “Facecake”, however, chose not to appear before this Court to defend the suit in spite of service.

 

 

Accordingly, The Court decreed the suit on the above terms and permanently restrained Malol from using the Facebake marks; infringing domain name; the mark Facecake; the Facebook marks, the Facebook Visual Presentation, and any other “Facebook” formative trademarks of Meta in any manner whatsoever. The Court also directed Malol to pay damages of Rs.50,000/- and the cost of the suit to Meta.