Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Aerosylt Ventures Private Limited & Anr on 11 September, 2024
$~56
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 785/2024
VERIZON TRADEMARK SERVICES LLC & ORS. .....Plaintiffs
Through: Ms. Vaishali Mittal, Mr. Shivang
Sharma, Ms. Saijal Arora, Advocates
versus
AEROSYLT VENTURES PRIVATE LIMITED & ANR.
.....Defendants
Through: none
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 11.09.2024 I.A. 39200/2024 (pre-litigation mediation)
1. The plaintiffs vide the present application seek exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiffs seek urgent ad-interim reliefs and in view of Yamini Manohar vs. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited 2022:DHC:4454-DB, the plaintiffs are exempted from instituting pre-litigation mediation.
3. Accordingly, the present application is allowed and disposed of. I.A. 39195/2024 (exemption) CS(COMM) 785/2024 Page 1 of 9 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 19/09/2024 at 02:36:44
4. Exemption allowed as sought, subject to all just exceptions.
5. The application stands disposed of.
I.A. 39193/2024 (seeking administration of interrogatories upon defendants)
6. The plaintiffs vide the present application seeks grant of leave to the plaintiffs to serve the defendants with the enclosed interrogatories and direct the defendants to respond to the same through their respective constituted attorney(s) or any other principal officer(s).
7. Issue notice to the defendants by all permissible modes returnable before the Joint Registrar on 12.12.2024
8. Reply, if any, be filed with thirty days thereafter. Rejoinder thereto, if any, be filed within fifteen days thereafter.
I.A. 39196/2024 (extension from filing court fees)
9. The plaintiffs vide the present application seek a further period of fifteen days for filing the requisite court fee.
10. For the reasons stated in the present application, the plaintiffs are granted fifteen days, as sought for to file the requisite court fee.
11. The Registry is directed to list the matter before the Court, if the requisite court fee is not filed within the stipulated period as aforesaid.
12. Accordingly, the present application is allowed and disposed of. I.A. 39194/2024 (additional documents)
13. The plaintiffs vide the present application seek time of thirty days to file additional documents.
14. The plaintiffs will be at liberty to file additional documents within CS(COMM) 785/2024 Page 2 of 9 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 19/09/2024 at 02:36:44 thirty days, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018.
15. Accordingly, the present application is disposed of. I.A. 39201/2024 (Exp to file certain documents in CD/USB pen drive).
16. The plaintiffs vide the present application is seeking grant of an extension of 30 days for filing the Hash Report under Section 63(4)(c) of Bharatiya Sakshya Adhiniyam, 2023.
17. In terms of Rule 24 of Chapter XI of the Delhi High Court (Original Side) Rules 2018, let the electronic record by way of an encrypted CD/DVD/Medium with a hash value in a non-edited form be filed before the Registry within a period of four weeks.
18. Let the same accordingly form a part of the record of the present suit by way of an electronic folder in such a manner that it can be opened to view by this Court as and when required. Also let the hash value shall be kept separately by the Registry on the file.
19. Accordingly, the present application is allowed and disposed of. CS(COMM) 785/2024
20. The plaintiffs by way of the present suit seek permanent injunction restraining infringement of trade mark, passing off, infringement of copyright, delivery and rendition of accounts against the defendants.
21. Let the plaint be registered as a suit.
22. Upon filing of the process fee, issue summons of the suit to the defendants through all permissible modes returnable before the Joint Registrar on 12.12.2024.
CS(COMM) 785/2024 Page 3 of 9This 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 19/09/2024 at 02:36:45
23. The summons shall state that the written statement(s) be filed by the defendants within a period of thirty days from the date of the receipt of the summons. Written statement(s) be filed by the defendants along with affidavit(s) of admission/ denial of documents of the plaintiffs, without which the written statement(s) shall not be taken on record.
24. Replication(s) thereto, if any, be filed by the plaintiffs within a period of fifteen days from the date of receipt of written statement(s). The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendants, without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.
25. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
26. List before the Joint Registrar for completion of pleadings on 12.12.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
27. List before the Court on 16.01.2025.
I.A. 39192/2024 (u/Order XXXIX rule 1 & 2 CPC, 1908)
28. The plaintiffs vide the present application seek an order of temporary injunction with respect to use of the mark 'VERIZON, VERIZON ENERGY and the logo, and its variants thereof.
29. Based on the pleadings and the arguments advanced by learned counsel for plaintiffs, the following emerge:-
29.1. The plaintiffs are a part of the Verizon Group of Companies and are, are among the world's leading providers of communications, entertainment, CS(COMM) 785/2024 Page 4 of 9 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 19/09/2024 at 02:36:45 information technology, smart energy systems and security products and services they employs around 100,000 people worldwide and they own and operate end-to-end global Internet Protocol (IP) networks serving more than 2,700 cities in over 150 countries, including in India and had revenue of USD 133.6 billion, USD 136.8 billion and USD 134 billion in last three years respectively.
29.2. The plaintiffs coined and adopted the mark 'VERIZON' in the year 2000, and since then, the plaintiffs have been using the said mark continuously, their trademark VERIZON is inherently distinctive and was coined by them from the Latin word "Veritas" which connotes certainty and reliability, and "Horizon" which signifies forward looking and visionary. The plaintiffs have registration of the trademark 'VERIZON' in various Class(s) i.e. 9, 14, 16, 18, 24, 25, 28, 35, 36, 37, 38, 39, 41, 42, 43 and 45. 29.3. The defendant no.1, Aerosylt Ventures Private Limited was incorporated on 22.05.2021, and uses the trademark VERIZON with the logo and the domain name, www.verizonenergy.in and email for [email protected]. Defendant no.1 is a technology and innovation driven company which provides services in relation to turnkey engineering for a sustainable future. The website on the impugned domain name claims to help its customers with all their energy needs, from energy efficiency management to procurement, construction, project management services, installation and commissioning, and operation and maintenance CS(COMM) 785/2024 Page 5 of 9 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 19/09/2024 at 02:36:45 services for solar power projects, small & medium scale wind power projects, cleaner air and safer roads.
29.4. The defendant no.2, A2P Resources Private Limited, registered at House No 18A, Block - 24, Moti Nagar, Ramesh Nagar, West Delhi, Delhi- 110015, appears to be a related concern, a sister entity of the defendant no.1, who appears to be providing similar services to that of the defendant no.1. defendant no.2 has common director(s) and similar addresses to that of the defendant no.1.
29.5. The plaintiffs first became aware of the defendant no.1 in an around March 2024, when the plaintiffs herein discovered that the defendant no.1 had applied for and received a registration of the company under the name "VERIZON ENERGY PRIVATE LIMITED". An investigation into the entity further revealed that the defendant no.1 had purchased the impugned domain name in September 2022.
29.6. The plaintiffs immediately upon becoming aware of the defendants' infringing activity, issued a cease and desist notice to them, highlighting that the use of an identical well known trademark to that of the plaintiffs, wherein the plaintiffs have prior rights across multiple classes of goods and services, whereafter, plaintiffs issued multiple follow-up letters between March, 2024 and June 2024, seeking confirmation of compliance. Although the defendant no. 1 changed the company's name to "AEROSYLT VENTURES PRIVATE LIMITED," but, they continued to use the "VERIZON".
30. This Court has heard the learned counsel for the plaintiffs and perused the documents on record as well.
CS(COMM) 785/2024 Page 6 of 9This 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 19/09/2024 at 02:36:45
31. The plaintiffs 'VERIZON' trademarks have been declared as 'well- known trademark' as per Section 2(1) (zg) of the Trade Marks Act, 1999, by this Court vide judgment/ decree in an earlier suit entitled 'Verizon Trademark Services LC & Ors. Vs. Vikash Kumar' [CS (COMM) 220/2023] passed by this Court vide order 11.07.2023.
32. Since, the defendant no.1 is allegedly a technology and innovation driven company providing services in relation to term e-engineering for the substantial future, it is highly unlikely that it was not aware of the plaintiff and/ or its worldwide presence as also its goodwill and repute. Similarly, since, it is alleged that the defendant no.2 is a sister concerned of the defendant no.1 applying the same analogy, the said defendant no.2 would also be well aware of the plaintiffs and/ or its worldwide presence as also its goodwill and repute.
33. It is a matter of fact that the plaintiffs were corresponding with the defendant no.1 w.e.f. 08.03.2024, 18.03.2024, 28.03.2024, 09.04.2024, 19.04.2024, 17.05.2024 and 14.06.2024.
34. Despite that, MCA record shows that one of the directors of the defendant no.2 is continuing to maintain the website as also despite the defendant no.1 having undergone the name changed with the Ministry of Corporate Affairs, it is promoting its services under the name 'VERIZON CS(COMM) 785/2024 Page 7 of 9 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 19/09/2024 at 02:36:45 ENERGY PRIVATE LTD.
35. So much so, as per the claims of the plaintiffs, the defendants are still offering their services under the mark 'VERIZON' of the plaintiffs.
36. The aforesaid activities of the defendants exemplifies that they, after adopting the mark 'VERIZON' of the plaintiffs, are still using the same brazenly, without seeking any permission/ authority/ sanction of the plaintiffs at any stage whatsoever. The aforesaid is only with an intention to portrait to the general members of the public that they are having an association with the plaintiffs and/ or they are (face of) the plaintiffs so as to derive undue benefits at the expenses of the plaintiffs.
37. Since, the trademark 'VERIZON' of the plaintiffs an invented/ coined marks with no meaning, the defendants had no reason or occasion to either adopt/ or to use the same.
38. Since, the defendants are offering their services under the trade mark 'VERIZON' of the plaintiffs by using the same trade channels to the identically similar customers as that of the plaintiffs, there is a likelihood of high degree of commotion setting paranoia in the minds of the average consumers.
39. Accordingly, till the next date of hearing, the defendants, its directors, CS(COMM) 785/2024 Page 8 of 9 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 19/09/2024 at 02:36:45 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 mark 'VERIZON, VERIZON ENERGY and the logo, and its variants such as and/or any other deceptively similar marks, the defendants are also restarined from using any domain name or email id having the word verison in any way whatsoever so as to infringe upon plainitffs' registered trademark.
40. Issue notice returnable before the joint registrar on 12.12.2024.
41. Reply, if any, be filed within thirty days thereafter. Rejoinder thereto, if any be filed within fifteen days therafter.
42. List before Court on 16.01.2025.
SAURABH BANERJEE, J SEPTEMBER 11, 2024/So CS(COMM) 785/2024 Page 9 of 9 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 19/09/2024 at 02:36:45