Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Verizone Broadband Services Pvt Ltd on 5 January, 2024
$~13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 932/2023, I.A. 25923/2023, I.A. 25924/2023, I.A.
25925/2023, I.A. 25926/2023, I.A. 25927/2023 & I.A. 25928/2023
VERIZON TRADEMARK SERVICES LLC & ORS. ..... Plaintiffs
Through: Mr. Pravin Anand, Ms. Vaishali R.
Mittal, Mr. Siddhant Chamola and
Mr. Shivang Sharma, Advs.
versus
VERIZONE BROADBAND SERVICES PVT LTD ..... Defendant
Through:
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
ORDER
% 05.01.2024 I.A. 25926/2023 (Exemption from filing clearer copies)
1. Exemption is granted, subject to all just exceptions.
2. Applicant shall file legible, clear, and original copies of the documents on which the applicant may seek to place reliance within before the next date of hearing.
3. Accordingly, the present application is disposed of.
I.A. 25924/2023 (Seeking administration of interrogatories upon the defendant)
1. This is an application filed by the Plaintiff seeking leave of the Court to serve interrogatories to the Defendant. The interrogatories concern the This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:37 adoption and use of the mark 'VERIZONE' and its variants.
2. Issue Notice.
I.A. 25925/2023 (Exemption from filing additional documents)
1. The present application has been filed on behalf of the Plaintiffs seeking to place on record additional documents under Order XI Rule 1(4) of the Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015.
2. The Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
I.A. 25928/2023 (Exemption from instituting pre-litigation mediation)
1. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd. FAO (COMM) 128/2021, exemption from attempting pre institution mediation is allowed.
2. Accordingly, the application stands disposed of.
I.A. 25923/2023 (Application under Order XXXIX Rule 1&2 read with Section 151 of the CPC, 1908)
1. This application has been filed under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 seeking the following prayers:-
"(i) An order of temporary injunction restraining the Defendant, its This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:37 directors, partners, proprietors, principal officers, servants, agents and distributors and all others acting on their behalf, as the case may be, from manufacturing, marketing, selling, offering, or making for sale, or providing goods and/or services, or in any manner using the mark 'VERIZONE', 'VERIZON BROADBAND', 'VERIZONE BROADBAND SERVICES PRIVATE LIMITED', its variants such as (Verizone Broadband Services Connecting Speed with Stability) and/or any other deceptively similar marks, where the emphasis is laid on the term 'VERIZONE', or any other word, designation, label etc. similar thereto, whether as part of trademarks or trading names, and other marks containing, or comprising of, the trademark VERIZON, leading to:
(a) Infringement of the Plaintiffs' VERIZON Trademarks, bearing registration numbers 3068612, 1238071, 1405272, 1240039, 1238076, amongst others;
(b) Passing off the Defendant's services as emanating from, or belonging to, the Plaintiffs;
(c) Dilution and unfair competition.
(ii) Grant an ad-interim, ex-parte injunction in terms of prayers (i), hereinabove;
(iii) An order directing the Defendant to disclose the audited revenues made since the inception of the company, which can later be used to ascertain damages.
(iv) Any other order that this Hon'ble Court deems fit and proper in the facts and circumstances of the present case."
2. The said application has been preferred in context of the suit filed by the plaintiffs seeking permanent injunction for restraining infringement of their prior adopted and well-recognised trademarks 'VERIZON', This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38 and other marks containing, or comprising of, the trademark VERIZON (hereinafter collectively referred to as the "VERIZON Trademarks") along with other attendant relief.
3. It is stated that the plaintiffs are part of the Verizon Group of Companies and among the world's leading providers of, inter alia, communications, entertainment, information technology, and security products and services. The Plaintiffs' group employs around 135,000 people worldwide and they own and operate one of the most expansive end- to-end global Internet Protocol (IP) networks serving more than 2,700 cities in over 150 countries, including in India. The Plaintiffs' business operations are far-reaching and their success is represented by the colossal revenue the Plaintiffs generate, with revenues in the year 2022 alone ranging around USD 136.8 billion.
4. The said trademark 'VERIZON' is the coined trademark with registrations in more than 200 countries across the world in addition to India. In India, the plaintiffs have filed and received registrations for the following trademark applications:-
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38
5. Further averments have been made in relation to the sales of productions and services of the plaintiffs all over the world including in India with revenues of USD 130 billion. The advertising spends of the Plaintiffs for the past few years for their VERIZON trademarks around the world are in the range of USD 3.5 billion. Further averments have been made in relation to the reputation and goodwill acquired by VERIZON trademarks in India, which have been duly protected from time to time by decisions of various courts including this Court. A list of said orders has been provided in para 13 of the said application.
6. The grievance is against the defendant use of the mark VERIZONE and logo and email address [email protected], which is deceptively similar to the plaintiffs' marks 'VERIZON'. The plaintiffs had stated that the defendant, Verizone Broadband Services Pvt. Ltd., was incorporated on 30th January, 2022. The defendant is promoting, marketing, and advertising its products and services through third party online market places such as www.justdial.com.
7. The plaintiffs came to know of the use of the said mark by the defendant in the first week of December, 2023. They have approached this Court by filing this suit.
8. By order dated 21st December, 2023, the matter was re-notified for today in order to enable the plaintiffs to effect advance service on the defendant. An affidavit of service has been filed noting that the service has been effected through courier and email on the defendant. However, no one This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38 appears on behalf of the defendant.
9. In the above facts and circumstances and having perused the documents on record, this Court is of the view that the plaintiffs have made out a prima facie case for grant of ex parte ad-interim injunction in respect of trademarks and logos abovementioned. Balance of convenience lies in favour of the plaintiffs who are likely to suffer irreparable harm in case the injunction as prayed for is not granted.
10. Accordingly, the defendant and its principal officers, employees, agents et al are restrained from using the mark 'VERIZONE' (currently being used by the defendant), and using Plaintiffs' well-known and registered trademarks "VERIZON" and/or any other mark deceptively similar to plaintiffs' aforesaid trademarks and permutations/combinations thereof, including, in any form or manner, amounting to passing off, till the next date of hearing.
11. Accordingly, the defendant is further directed not to use the name 'VERIZONE' as part of their email address and take immediate steps to de- activate the said email address, and if necessary, use a different email address which is in consonance with the directions passed above.
12. Plaintiffs shall comply with the provisions of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 within a period of one week.
13. List before the Joint Registrar on 05th March, 2024.
14. List before the Court on 09th April, 2024.
I.A. 25927/2023 (Extension of time in filing court fees)
1. This application has been filed for extension of time to deposit court This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38 fees. Counsel for the plaintiffs states that the court fees has been deposited.
2. Accordingly, the application is disposed of, as it is rendered infructuous.
3. Order be uploaded on the website of this Court.
ANISH DAYAL, J JANUARY 5, 2024/MK/ig This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 23:42:38