The present case concerns a trademark dispute between Oracle America, Inc. (the petitioner) and Mr. Sandeep Khandelwal (the first respondent), regarding the unauthorised registration and use of a trademark containing the well-known “JAVA” brand. The petitioner sought rectification of the Trade Marks Register under Sections 47 and 57 of the Trade Marks Act, 1999, arguing that the impugned mark, bearing registration no. 5420304 in Class 41 was misleading and infringed upon Oracle’s intellectual property rights. The central issue before the court was whether the respondent’s trademark was deceptively similar to Oracle’s well-established JAVA trademarks and whether its registration should be cancelled due to lack of bona fide use and fraudulent intent.
Oracle America, Inc., a subsidiary of Oracle Corporation, is a globally renowned developer of enterprise and internet-based software, hardware, and cloud computing technologies. Through its predecessor, Sun Microsystems, Oracle has been using the JAVA trademark since 1996 for computer software, programming languages, and related services. The company has registered the JAVA trademark in multiple jurisdictions, including India, the United States, Canada, and the European Union. The petitioner also provides training and certification programs under the JAVA brand, accessible through its global websites, including www.java.com and www.oracle.com/in/java/. These certifications have gained substantial recognition among IT professionals and corporations worldwide.
The dispute arose when the petitioner discovered that the first respondent had secured a trademark registration for a mark incorporating the term “JAVA” under Class 41, which covers education, training, and related services. Oracle, upon conducting a search of the Trade Marks Registry, found that the respondent had applied for registration on April 22, 2022, and was granted the trademark on July 10, 2023. Concerned that this registration would mislead consumers and dilute its well-established JAVA brand, Oracle filed a rectification petition on July 23, 2024, requesting the removal of the impugned mark from the register.
The petitioner argued that the respondent’s trademark was deceptively similar to Oracle’s JAVA mark and was registered without legitimate business use. Oracle contended that the registration was likely to deceive consumers, as it incorporated the JAVA brand entirely and was applied for in the same category of services—namely, education and training. Citing prior judicial precedents, the petitioner asserted that well-known trademarks are entitled to broad protection, even in cases where the contested mark is used with minor modifications or additional words. Oracle further claimed that the respondent had no bona fide intention to use the mark in commerce, making the registration vulnerable to cancellation under Section 47(1)(a) of the Trade Marks Act, 1999.
Despite being served with notices, the first respondent failed to file a reply or appear in court. On August 1, 2024, the High Court directed the respondent to maintain the status quo concerning the impugned mark and granted him four weeks to respond. However, as of the final hearing on February 3, 2025, the respondent had neither submitted any reply nor contested Oracle’s claims. The absence of any defence led the court to deem the petitioner’s allegations as admitted.
In analysing the case, the High Court of Delhi first examined whether Oracle’s JAVA trademark was entitled to protection under Indian law. The court observed that Oracle had continuously used the JAVA brand in India since the 1990s and had multiple trademark registrations for JAVA and related marks such as JAVASCRIPT, JAVAONE, and JAVAOS. The petitioner had also opposed other trademark applications attempting to register Java-derived names, further reinforcing its active enforcement of intellectual property rights. The court held that Oracle had demonstrated substantial goodwill and reputation associated with the JAVA mark, making it a well-known trademark under Indian law.
Next, the court considered whether the respondent’s mark was deceptively similar to the JAVA brand. By comparing the trademarks side by side, the court found that the impugned mark incorporated JAVA entirely, making it visually and phonetically identical to Oracle’s established brand. The court cited Greaves Cotton Limited vs Mohammad Rafi & Ors. (2011), which held that infringement occurs when the essential feature of a well-known mark is substantially replicated. It ruled that the respondent’s use of JAVA in an educational context would likely cause confusion among consumers, who might believe that the training services offered under the impugned mark were affiliated with Oracle’s official certification programs.
The court also examined whether the respondent had made any bona fide use of the impugned mark. Under Section 47(1)(a) of the Trade Marks Act, a registered trademark can be removed if it has not been used for a continuous period of three months before the filing of a rectification petition. Since the respondent failed to present any evidence of commercial use, the court concluded that the registration was liable to be revoked on this ground as well.
Additionally, the court criticised the Registrar of Trade Marks for failing to properly examine the impugned mark before granting registration. It observed that Oracle’s prior JAVA registrations should have been cited in the examination report, and the Registrar ought to have rejected the respondent’s application under Sections 9, 11, and 18 of the Trade Marks Act. The court referenced Enagic HK vs Enagic International (2021), which emphasised the duty of the Trade Marks Registry to conduct thorough searches and prevent the registration of deceptively similar marks. It held that the failure of the Registry to cite Oracle’s earlier marks constituted a violation of established legal principles.
In its final ruling, the court allowed Oracle’s petition and ordered the Trade Marks Registry to cancel the respondent’s registration (No. 5420304 in Class 41) with immediate effect. The court further directed the Registry to notify of its decision via email to ensure compliance. Since the respondent did not contest the petition, the court did not award costs or damages but made it clear that Oracle’s intellectual property rights were fully protected under Indian law.
The ruling highlights the duty of the Trade Marks Registry to conduct thorough examinations and prevent wrongful registrations. By granting Oracle’s request for rectification, the Delhi High Court has set a precedent for other international corporations facing similar challenges in India.