Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Verizon Trade Services & Ors on 21 April, 2023
Author: C. Hari Shankar
Bench: C.Hari Shankar
$~7(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 181/2023 & I.As. 6112-6119/2023
VERIZON TRADEMARK SERVICES LLC & ORS.
..... Plaintiffs
Through: Ms. Vaishali Mittal, Mr.
Siddhant Chamola, Mr. Karan Kamra and
Mr. Shivang Sharma, Advs.
versus
VERIZON TRADE SERVICES & ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 21.04.2023 I.A. 6114/2023 (under Order XI Rule 1(4) of CPC)
1. This application seeks permission to file additional documents.
2. The petitioner is 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. 6115/2023 (under Section 80 of CPC)
4. Given the nature of the reliefs sought in the plaint, the plaintiffs are exempted from the requirement of compliance with Section 80 of the CPC at this stage.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 1 of 11 Signing Date:22.04.2023 21:20:245. The application stands disposed of accordingly.
I.A. 6116/2023 (Exemption)
6. Given the nature of urgency involved in the present case, the plaintiffs are exempted from serving an advance notice on the defendants.
7. The application stands disposed of accordingly.
I.A. 6117/2023 (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 disposed of.
I.A. 6118/2023 (Exemption)
10. This is an application seeking extension of time for filing court fees.
11. Ms. Vaishali Mittal, learned Counsel for the plaintiffs, submits that the court fees already stand paid.
12. As such, this application has been rendered infructuous.
I.A. 6119/2023 (under Section 12A of the Commercial Courts Act, Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 2 of 11 Signing Date:22.04.2023 21:20:24 2015)
13. 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.
14. The application stands allowed accordingly.
CS(COMM) 181/2023
15. The plaintiff is a Limited Liability Partnership (LLP), incorporated in Delaware, US, and holds various trade mark registrations, including registration of the mark VERIZON, with which we are concerned in the present case.
16. The exclusive license, to use the trade mark VERIZON, as well as various logos incorporating the said mark, was granted by Plaintiff 1 to Plaintiff 2 who, thereafter, sub-licensed the said right to Plaintiff 3.
17. Details of the registrations held, in India, of VERIZON and similar marks, are provided thus in the documents filed with the plaint:
Trademark Class Regn. No. Date of Regn.
VERIZON 09 907928 March 06, 2000
VERIZON 35 1238068 September 18,
2003
VERIZON 36 1238069 September 18,
2003
VERIZON 37 1238070 September 18,
Signature Not Verified
1
Digitally Signed By:SUNIL 2022 SCC OnLine Del 3529 SINGH NEGI CS(COMM) 181/2023 Page 3 of 11 Signing Date:22.04.2023 21:20:24 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, 35,38,42 2005 9,14,16,18, 3068612 October 1, 2015 24,25,28,35, 36,37,38,39,41 ,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 18. Signature Not Verified This Court has, while decreeing CS (Comm) 1434/2016 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 4 of 11 Signing Date:22.04.2023 21:20:24 (Verizon Trademark Services LLC. v. Mr. Parth Solanki & Anr.) returned a finding that the plaintiff's marks prima facie satisfies the test for being regarded as well-known marks within the meaning of Section 2(1)(zg) of the Trade Marks Act.
19. The plaintiff uses VERIZON both as a word mark and as device marks as is apparent from the chart above. The plaintiff has also provided its sales figures and expenditure incurred in advertisement and promotions, to vouchsafe its goodwill and standing in the market in para 16 and 17 of the plaint respectively. During the financial year 2021-2022, by use of the VERIZON trade marks, asserts the plaint, the plaintiff earned revenue to the tune of ₹ 82.54 crores. The plaint also sets out the various accolades and encomiums that the plaintiff has earned over a period of time. As a result, it is asserted, in the plaint, that the VERIZON marks have become indelibly associated with the plaintiff in the minds of the consumer public. It is also pointed out that the plaintiff holds registrations for VERIZON trade marks in over 200 jurisdictions. The plaintiff also operates through the domain names www.verizonbusiness.com, www.verizonenterprise.com and the website https://www.verizonconnect.com.
20. The plaint also provides details of various judicial orders which have upheld the plaintiff's intellectual property rights in the VERIZON trade marks, in para 33 of the plaint.
21. The plaintiff is aggrieved by the fact that the defendant, in a manner which infringes the plaintiff's registered trade marks, is using "VERIZON" not only as part of its domain name but is using a logo and device mark which is identical to that of the plaintiff.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 5 of 11 Signing Date:22.04.2023 21:20:2422. The defendant is using the domain name www.verizontrade.in and is also running an interactive website, in which it promotes and advertises its services under the impugned mark. The Domain Name Registrar (DNR) of the said domain name is Defendant 2.
23. It is also asserted, in the plaint, that the defendant is using the logo on its website which is identical to that of the plaintiff.
24. Ms. Mittal submits that, the defendant is now operating under the new domain name www.foxtrade.tech, of which, too, Defendant 2 is the DNR, and that it has shifted the entire content from the earlier website www.verizontrade.in to the said new website. These assertions have also been captured in an additional affidavit dated 17th April 2023 which has been filed by the plaintiff.
25. As such, the infringing mark is stated to be reflected in this new website www.foxtrade.tech.
26. Various other assertions are contained in the plaint, to buttress the plea of infringement and passing off. However, at this prima facie stage, it is not necessary to advert to all of them.
27. This Court had queried, of Ms. Mittal, as to whether the plaint asserts priority of user, of the plaintiff, over the defendant. However, as the plaint records the fact that the WHOIS details of the defendant reveals that the website www.verizontrade.in was itself registered only on 18th March 2023, whereas the plaintiff has registrations of its trade Signature Not Verified marks since 2000, the plaintiff, prima facie, has the advantage over Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 6 of 11 Signing Date:22.04.2023 21:20:24 the defendant both of priority of user and priority of registration.
28. On facts, therefore, a prima facie case of trade mark infringement as well as passing off is made out, especially as the logo used by the defendant is identical to the device mark of the plaintiff. A prima facie case of dishonest adoption, too, therefore, exists.
29. Added to this, the fact that the mark of the plaintiff has been already treated by a Coordinate Bench of this Court as prima facie a well-known trade mark and the plaintiff's intellectual property rights have also been protected by this Court in various decisions, make out a prima facie case for grant of interlocutory protection in the present case as well.
30. In view thereof, let the plaint be registered as a suit.
31. Issue summons in the suit.
32. 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.
33. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 6th July 2023, whereafter the matter would be placed before the Court for case management hearing and further proceedings.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 7 of 11 Signing Date:22.04.2023 21:20:24I.A. 6112/2023 (under Order XXXIX Rules 1 and 2 of CPC)
34. 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.
35. The prayer clause in this application read thus:
"61. In light of the above, it is therefore prayed before this Hon'ble Court that it may be pleased to pass:
(i) An order of temporary injunction restraining the Defendant, its 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 trademark VERIZON, , in the manner or using any other mark identical or deceptively similar to the Plaintiffs' trademarks 'VERIZON', , , and other marks containing, or comprising of, the trademark VERIZON, leading to:
a. Infringement of the Plaintiffs' VERIZON Trademarks, bearing registration number 3068612, 1238079, 1240037, 1238069;
b. Passing off the Defendant's goods and services as emanating from, or belonging to, the Plaintiffs;
c. Leading to dilution and unfair competition;
(ii) An order for mandatory injunction directing the Defendant No. 2, its directors, partners, proprietors, principal officers, servants, agents and distributors and all others acting on their behalf, as the case may be, to suspend, lock, make unavailable for re-sale and keep the domain name <www.verizontrade.in> during the pendency of the present proceeding and disclose to the Plaintiffs' the details of the registrant of the impugned domain name along with transaction details which were made by the Defendant No. 1 at Signature Not Verified the time of purchasing the domain name www.verizontrade.in; Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 8 of 11 Signing Date:22.04.2023 21:20:24
(iii) An order of mandatory injunction directing the Defendant No. 3 and 4 or any other person(s) acting for and on behalf of the Defendant No. 3 and 4 to ensure suspension, locking and transferring of the impugned domain name www.verizontrade.in to the Plaintiffs, as and when directed by the Hon'ble Court
(iv) Grant an ad-interim, ex-parte injunction in terms of prayers (i), (ii) and (iii) hereinabove; and
(v) Any other order that this Hon'ble Court deems fit and proper in the facts and circumstances of the present case."
36. In view of the aforenoted facts of the case and the prima facie view already expressed, and in light of the law declared by the Supreme Court in Laxmikant v. Patel v. Chetanbhai Shah 2 and Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia 3, the plaintiff would be entitled to an ad interim injunction.
37. As such, issue notice, returnable on 26th July 2023 before the Court.
38. Notice be served on the defendants by all modes including dasti.
39. Reply to this application, if any, 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.
40. As such, till the next date of hearing, the following directions are issued:
(i) Defendant 1 as well as all others acting on its behalf shall 2 Signature Not Verified (2002) 3 SCC 65 3 Digitally Signed By:SUNIL (2004) 3 SCC 90 SINGH NEGI CS(COMM) 181/2023 Page 9 of 11 Signing Date:22.04.2023 21:20:24 stand restrained from using, in any manner, the marks VERIZON, , or any other mark which is identical or deceptively similar to the plaintiff's marks 'VERIZON', , , , for any purpose whatsoever.
(ii) Defendant 2 is directed to suspend the domain name www.verizontrade.in as well as www.foxtrade.tech and to keep the said domain names suspended till the next date of hearing.
(iii) Defendant 2 is directed to disclose, to the plaintiff as well as by affidavit before this court, all details of the registrant of the aforesaid domain names, www.verizontrade.in and, www.foxtrade.tech available with it, as well as details of the transactions undertaken while purchasing the said domain names.
(iv) Defendants 3 and 4 are also directed to ensure that, till the next date of hearing, the aforesaid domain names shall remain suspended/blocked and shall not be accessible.
41. Compliance with the requirement of Order XXXIX Rule 3 of the CPC be ensured within a period of one week from today.
I.A. 6113/2023 (under Order XI Rule 2 and 5 of CPC)
42. This is an application seeking interrogatories.
43. Issue notice, returnable on 6th July, 2023 before the learned Joint Registrar (Judicial).
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 10 of 11 Signing Date:22.04.2023 21:20:2444. 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.
C. HARI SHANKAR, J.
APRIL 21, 2023 dsn Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 181/2023 Page 11 of 11 Signing Date:22.04.2023 21:20:24