Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Vikash Kumar on 1 May, 2023
Author: C. Hari Shankar
Bench: C.Hari Shankar
$~26 (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 220/2023 & I.As. 7069-7074/2023
VERIZON TRADEMARK SERVICES LLC & ORS.
..... Plaintiffs
Through: Ms. Vaishali Mittal, Mr.
Siddhant Chamola and Mr. Shivang Sharma,
Advs.
versus
VIKASH KUMAR ..... Defendant
Through: Mr. Gyanvardhan Singh, Adv.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (ORAL)
% 01.05.2023
1. The grievance of the plaintiff in the present suit was that the defendant was infringing the plaintiffs' registered trade mark "VERIZON", both with respect to his corporate name VERIZON TELECOM SERVICES as well as with respect to the mark which he was using.
2. The defendant has, at the very outset, placed on record an affidavit which read thus:
"I, Vikas Kumar son of Sh. Mahabir Parsad resident of H. No. 674, Gandhi Marg, Near D.D. Aggarwal School, Jagadhri, Distt. Yamuna Nagar (hereinafter 'Deponent 1') And I, Shefali, wife of Sh. Vikas Kumar, resident of H. No. 674, Gandhi Marg, Near D.D. Aggarwal School, Jagadhri, Distt. Yamuna Nagar (hereinafter 'Deponent 2') (collectively 'Deponents') do hereby solemnly affirm and declare as under:-
CS(COMM) 220/2023 Signature Not Verified Page 1 of 4 Digitally Signed By:KAMLA RAWAT Signing Date:02.05.2023 12:31:55
1. That the Deponent 1 has been arrayed as the Defendant in the above captioned matter.
2. That the Deponents were carrying out business under name and style of Verizon Telecom Services having GST No.06AAJFV9134D1Z3 and PAN No. AAJFV9134D.
3. I say that the deponent undertakes not to conduct any business or offer any services or goods, now or in the future, in India or anywhere else in the world, under a trademark or name containing or consisting of 'VERIZON', or any trademark, trading style or other trading name which is similar to, or consists of, or contains a designation similar or identical to, the trademark/name VERIZON.
4. I say that I hereby declare that the Deponents have applied for change in name of the firm from Verizon Telecom Services to M/s Shivay Telecom Services in the concerned Department/office and Deponents further undertake that as soon as the changes in the name in PAN Number will be made by the concerned department, the Deponents will promptly apply for change of name of the their firm from Verizon Telecom Services to M/s Shivay Telecom Services in the GST registration certificate also.
5. That it is pertinent to mention here that the Deponents have already entered into a fresh partnership deed being partners of the firm Verizon Telecom Services and by virtue of the same a fresh partnership deed has been entered, whereby it has been mutually agreed that the name of the firm has been changed from M/s Verizon Telecom Services to M/s Shivay Telecom Services. The Deponents further undertake that they shall take all the steps to ensure that the name is changed in the registration record of GST department. The Deponents also confirm that apart from the aforementioned GST Registration, the Deponents do not have any other trademark applications or registrations, in India or abroad, which consist of or contain the mark 'VERIZON' or any designation that is in any manner similar to the mark 'VERIZON'.
6. I say that we recognize and acknowledge that the Plaintiffs are the proprietor of the trade mark and trade name VERIZON, whether used alone or in combination with other words or logos of any type or nature. we undertake to not challenge the rights of Verizon Communications Inc., Verizon Trademark Services LLC or any of their subsidiaries, sister concerns, group companies, or any other person acting for, or on behalf of, plaintiff's companies over the said mark VERIZON, whether used alone or in combination with other words or as part of a label, in any proceedings before any tribunal, court or authority anywhere in the world, including in a lawsuit, counter-claim in a lawsuit, CS(COMM) 220/2023 Signature Not Verified Page 2 of 4 Digitally Signed By:KAMLA RAWAT Signing Date:02.05.2023 12:31:55 opposition proceedings, rectification proceedings, cancellation petitions, etc.
7. That the Deponents hereby agree that the Deponents will forthwith cease making use of the mark 'VERIZON', or any other mark similar thereto, in any manner whatsoever, including on third party online or off-line platforms, websites, etc., and will also immediately remove all online and off-line references to the mark "VERIZON, if any, or any mark similar thereto and will contact any third-party websites using the VERIZON mark or any similar mark to identify my goods or services and request that they delete all such usages from their Sites.
8. I say that earlier in the year 2020, the Deponents had applied for rt registration of trademark in the name of Verizon, however upon receiving objections on behalf of the plaintiffs, the Deponents had withdrawn the application for the registration of trademark in year 2021.That the Deponents hereby agree and undertake not to apply for registration of a trademark in India or in any other country across the world, that consists of or includes the designation 'VERIZON' or any mark similar thereto, in respect of any goods or services, and undertake to refrain from using such a mark or name in any other manner whatsoever (including use as a domain name, URL, Internet as 'keyword, metatag, meta-data or otherwise).
9. That deponent hereby agree that this undertaking is binding upon me, my successors, assigns, heirs, legal representatives, servants, agents and any business in which the deponent may be directly or indirectly involved. If this undertaking is violated, the deponent undertake to pay your companies all damages in addition to all reasonable costs incurred by you for instituting and pursuing legal proceedings.
10. That the present affidavit has been executed by Deponents in bona fide manner out of our free will and without any type of pressure or coercion for any type from any corner.
Sd/-
Deponent Verification:-
Verified that the contents of the above said affidavit are true and correct to the best of our knowledge and nothing has been concealed therein.
Verified at ______on______ Sd/-
Deponent"
CS(COMM) 220/2023 Signature Not Verified Page 3 of 4 Digitally Signed By:KAMLA RAWAT Signing Date:02.05.2023 12:31:55
3. In view of the aforesaid affidavit, Ms. Vaishali Mittal, learned Counsel for the plaintiffs, submits that the suit may be decreed on the aspect of infringement and passing off. However, she submits that as the defendant has filed the aforesaid affidavit even before summons were issued in the suit, her client is not pressing for damages and costs.
4. However, she presses prayer (ii) in the plaint for declaration of the plaintiffs' mark as a well-known mark.
5. As such, the suit stands decreed, binding the defendant to the assertions and undertaking contained in the afore-extracted affidavit dated 21st April 2023.
6. Qua prayer (ii), the plaintiffs are directed to place the requisite material on record so that the court could take a call thereon.
7. For hearing on prayer (ii) in the plaint, re-notify on 10th May 2023.
C. HARI SHANKAR, J.
MAY 1, 2023 dsn CS(COMM) 220/2023 Signature Not Verified Page 4 of 4 Digitally Signed By:KAMLA RAWAT Signing Date:02.05.2023 12:31:55