Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Verizon Global & Ors on 24 February, 2023
Author: C. Hari Shankar
Bench: C.Hari Shankar
$~19
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 105/2023 & I.A. 3743/2023, I.A. 3744/2023, I.A.
3745/2023, I.A. 3746/2023, I.A. 3747/2023, I.A. 3748/2023,
I.A. 3749/2023, I.A. 3750/2023
VERIZON TRADEMARK SERVICES LLC & ORS.
..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali
Mittal, Mr. Siddhant Chamola and Mr.
Shivang Sharma, Advs.
versus
VERIZON GLOBAL & ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 24.02.2023 I.A. 3745/2023 2023 (under Order XI Rule 1(4) of CPC)
1. This application seeks permission to file additional documents.
2. The plaintiffs are permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.
3. The application stands disposed of accordingly.
I.A. 3746/2023 (under Section 151 of CPC - exemption from two months advance notice)
4. Given the nature of the reliefs sought in the plaint, the plaintiffs are exempted from the requirement of serving two months advance notice on Government of India at this stage.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 1 of 8 Signing Date:27.02.2023 12:31:045. The application stands disposed of accordingly.
I.A. 3747/2023 (Exemption)
6. For the reasons stated therein, the application is allowed.
7. The application stands disposed of.
I.A. 3748/2023 (Exemption)
8. Subject to the plaintiffs' filing legible copies of any dim or illegible documents on which they may seek to place reliance within four weeks from today, exemption is granted for the present.
9. The application is allowed accordingly I.A. 3749/2023 (Extension of time for filing court fees)
10. Learned Counsel for the plaintiffs seeks and is granted one week's time to file deficient court.
11. The application stands disposed of accordingly.
I.A. 3750/2023 (under Section 12A of the Commercial Courts Act, 2015)
12. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd 1, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
13. The application stands allowed accordingly.
Signature Not Verified 12022 SCC OnLine Del 3529 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 2 of 8 Signing Date:27.02.2023 12:31:04 I.A. 3744/2023 (under Order XI Rules 2 and 5 of CPC)
14. Issue notice, returnable on 26th April, 2023 before the Court.
15. Reply be filed within four weeks with advance copy to learned Counsel for the plaintiffs, who may file rejoinder thereto, if any, within four weeks thereof.
CS(COMM) 105/2023
16. The plaintiffs are engaged in the business of communications, information technology and security products, and also claim to be owner of the world's largest end-to-end internet protocol networks. The plaintiffs claim to have coined the expression "VERIZON", form the words "Veritas" and "Horizon" in 2000. The plaint also provides a list of domain names which include the expression "VERIZON". The list of valid registrations possessed by the plaintiffs are provided in para 28 of the plaint thus:
Trademark Class Regn. No. Date of Registration VERIZON 09 907928 March 06, 2000 VERIZON 35 1238068 September 18, 2003 VERIZON 36 1238069 September 18, 2003 VERIZON 37 1238070 September 18, 2003 VERIZON 38 1238071 September 18, 2003 VERIZON 42 1238067 September 18, 2003 VERIZON 41 1238072 September 18, 2003 VERIZON 16 907929 March 06, 2000 VERIZON 9,14,16,28, 1405272 December 07, 2005 35,38,42 9,14,16,18, 3068612 October 1, 2015 24,25,28,35, Signature Not Verified 36,37,38,39,41 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 3 of 8 Signing Date:27.02.2023 12:31:04 ,42,43,45 16 963161 October 12, 2000 09 963160 October 12, 2000 41 1238077 September 18, 2003 38 1238076 September 18, 2003 42 1238078 September 18, 2003 36 1238079 September 18, 2003 37 1238080 September 18, 2003 35 1238081 September 18, 2003 42 1240041 September 18, 2003 41 1240040 September 18, 2003 38 1240039 September 18, 2003 37 1240038 September 18, 2003 36 1240037 September 18, 2003 35 1240036 September 26, 2003
17. The plaint has also provided list of various legal proceedings in which this Court had protected the trade marks of the plaintiffs from infringement and passing off, and upheld the validity of the trade mark "VERIZON".
18. Defendant 1 is a proprietary concern, engaged in providing recruitment services to the public. As such, the nature of services provided by Defendant 1 is similar to the services provided by the plaintiffs.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 4 of 8 Signing Date:27.02.2023 12:31:0419. The plaint avers that, in June 2022, the plaintiffs became aware of the use, by the defendant, of the mark , as well as the registration, by the defendant, of the domain name www.verizonglobal.in. As the mark and domain name used by the defendant infringe the plaintiffs' registered trade marks, and also create a situation in which unsuspecting customers or clients could mistake the services of the defendant for those of the plaintiffs, the plaintiffs addressed a notice dated 24th June 2022 to Defendant 1, requiring the Defendant 1 to cease and desist from use of the mark "VERIZON" in any form, including the mark and from operating the domain name www.verizonglobal.in, or any other domain name involving the expression "VERIZON".
20. As the defendant did not respond, and continued in its infringing activities, the plaintiffs addressed a communication to Defendant 2, as the domain name registrar of the domain name www.verizonglobal.in, to suspend the domain name and disclose, to the plaintiff, the details of the registrants of the domain name. There was no response to the said request.
21. The plaint alleges that, even as on date, Defendant 1 continues to indulge in the infringing activities aforenoted.
22. It is in these circumstances that the plaintiffs have approached this Court by means of the present suit, seeking permanent injunctive reliefs, restraining the Defendant 1 as well as all others acting on its behalf, from using in any manner the mark , the word mark "VERIZON" or any other mark identical or deceptively similar to the plaintiffs' registered trade mark. Ancillary reliefs of declaration, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 5 of 8 Signing Date:27.02.2023 12:31:04 rendition of accounts, delivery-up and costs and damages are also sought.
23. In the circumstances, let the plaint be registered as a suit.
24. Issue summons in the suit.
25. Written statement, accompanied by affidavit of admission and denial of the documents filed by the plaintiffs be filed within 30 days with advance copy to learned Counsel for the plaintiffs who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendants within 30 days thereof.
26. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 24th March 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
I.A. 3743/2023 (under Order XXXIX Rules 1 and 2 of CPC)
27. This is an application by the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking ad interim injunctive reliefs.
28. The plaintiffs have clearly made out a prima facie case of infringement as well as passing off, against Defendants 1 and 2.
29. Defendant 1 having failed to desist in its infringing activities despite notice from the plaintiffs, the court is inclined to grant ex parte Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 6 of 8 Signing Date:27.02.2023 12:31:04 injunctive relief.
30. Failure to grant of relief at this stage, even after the defendant was put on notice by the plaintiff, would result in continuance of the infringing activities. The considerations of balance of convenience and irreparable loss also, therefore, justify grant of ex parte injunctive relief at this stage.
31. In the above circumstances, issue notice, returnable on 26th April, 2023 before the Court.
32. Reply be filed within four weeks with advance copy to learned Counsel for the plaintiffs, who may file rejoinder thereto, if any, within four weeks thereof.
33. In view of the above, till the next date of hearing, the following directions are passed in this application:
(i) Defendant 1 its directors, partners, proprietors, principal officers, servants, agents and distributors and all others acting on their behalf, are restrained from manufacturing, marketing, selling, offering, or making for sale, or providing goods and/or services, or in any manner using the trademark VERIZON and or from using any other mark which is deceptively similar or identical to the plaintiff's trade mark.
(ii) Defendant 2 is directed, forthwith, to suspend the domain name www.verizonglobal.in and to keep the domain name suspended till the next date of hearing. Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 7 of 8 Signing Date:27.02.2023 12:31:04
(iii) Defendant 2 is also directed to disclose, to this Court, the details of the registrants of the aforesaid domain name www.verizonglobal.in.
(iv) Defendants 3 and 4 are also directed to ensure that the domain name www.verizonglobal.in continues to remain suspended till the next date of hearing.
34. Let the plaintiffs comply with the requirement of Order XXXIX Rule 3 of the CPC within one week from today.
C. HARI SHANKAR, J.
FEBRUARY 24, 2023 dsn Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 105/2023 Page 8 of 8 Signing Date:27.02.2023 12:31:04