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The Supreme Court on Monday dismissed a software company’s plea to continue using ‘Java’ as part of its domain name, ruling that such usage would infringe upon the trademark rights of the US-based tech giant Oracle.
Supreme Court of India.
A bench of Chief Justice of India (CJI) Sanjiv Khanna and justice Sanjay Kumar refused to interfere with the Delhi high court’s 2024 order that had restrained the private firm– Sonoo Jaiswal, Javapoint Limited and Javapoint Tech Pvt Ltd — from using Oracle’s registered trademark JAVA in their domain name www.javatpoint.com for providing coding language classes.
While the top court clarified that the firm could continue teaching Java as a programming language, it granted them three weeks to transition to a new domain name that does not infringe Oracle’s intellectual property rights.
“They (Oracle) have been using it since 1996. You cannot now start using it in your domain name…We give you three weeks to move to an alternative domain name, as approved by the registrar,” the bench told the counsel appearing for Sonoo Jaiswal and his firm.
The dispute began when Oracle America Inc took legal action against Jaiswal and his firms, arguing that their use of JAVA as part of their domain name and corporate identity constituted trademark infringement.
The Delhi high court, in a series of rulings in February and July 2024, upheld Oracle’s claims, restraining the defendants from using the word JAVA in their domain name and company names. The court rejected the firm’s argument that Java is a generic programming language name that cannot be monopolized. Instead, it held that Oracle’s use of JAVA since 1996 had established strong trademark protection, and the defendants had used the name in a way that created confusion among consumers.
In its February 2024 ruling, the high court noted that simply appending ‘TPOINT’ to ‘JAVA’ did not dilute the infringement. It found that the defendants’ usage was prima facie in violation of Section 29(5) of the Trademarks Act, as the domain name misled consumers into believing that the defendants’ services were affiliated with or endorsed by Oracle.
Further, the court found that Oracle also owned the domain www.java.com, and the similarity between the two domain names could lead to consumer confusion.
During Monday’s hearing, Oracle’s counsel informed the Supreme Court that Jaiswal had not complied with the high court’s February and July 2024 orders and were facing contempt proceedings for failing to change the domain name.
In response, the Supreme Court firmly directed Jaiswal to ensure compliance within three weeks.
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