Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Dr. Neeraj Yadav & Anr on 19 September, 2024
$~46
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 805/2024, I.A. 39779/2024, I.A. 39780/2024, I.A.
39781/2024, I.A. 39782/2024, I.A. 39783/2024, I.A. 39784/2024 &
I.A. 39785/2024
VERIZON TRADEMARK SERVICES LLC & ORS. .....Plaintiffs
Through: Mr. Pravin Anand, Adv. with Ms.
Vaishali Mittal, Mr. Shivang Sharma
and Ms. Saijal Arora, Advs.
M: 9999052646
versus
DR. NEERAJ YADAV & ANR. .....Defendants
Through: None
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 19.09.2024 I.A. 39782/2024 (Exemption from filing original and clear copies of documents)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), on behalf of the plaintiffs, seeking exemption from filing originals, certified copies, clearer copies, translated copies, left side margins, electronic documents, etc.
2. Exemption is granted, subject to all just exceptions.
3. Plaintiffs shall file legible, clear, and translated copies of the documents, on which the plaintiffs may seek to place reliance, before the next date of hearing.
CS(COMM) 805/2024 Page 1 of 24This 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 21/09/2024 at 13:03:03
4. Accordingly, the present application is disposed of. I.A. 39783/2024 (Application seeking extension of time for filing Court Fees)
5. The present is an application seeking extension of time for filing Court Fees.
6. Learned counsel appearing for the plaintiffs submits that Court Fees has already been deposited.
7. Accordingly, the present application is disposed of, as infructuous. I.A. 39784/2024 (Exemption from undergoing Pre-Institution Mediation)
8. The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of CPC, seeking exemption from undergoing Pre-Institution Mediation.
9. Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar Versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-Institution Mediation, is granted.
10. Accordingly, the application stands disposed of. I.A. 39781/2024 (Application seeking leave to file additional documents)
11. This is an application under Order XI Rule 1(4) read with Section 151 CPC as amended by the Commercial Courts Act, 2015, seeking leave to file additional documents.
12. The plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of Commercial Courts Act, CS(COMM) 805/2024 Page 2 of 24 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 21/09/2024 at 13:03:03 2015, and the Delhi High Court (Original Side) Rules, 2018.
13. The application is disposed of, with the aforesaid directions. I.A. 39785/2024 (under Section 151 of CPC seeking leave to file documents in CD/USB/Pen drive)
14. The present application has been filed on behalf of the plaintiffs under Section 151 of CPC seeking leave to file documents in a CD/USB drive.
15. In terms of Rule 24 of Chapter-XI of the Delhi High Court (Original Side) Rules, 2018, it is made clear that electronic records can be received in CD/DVD/Medium, encrypted with a hash value. The said Rule is extracted as below:
"24. Reception of electronic evidence - A party seeking to tender any electronic record shall do so in a CD/ DVD/ Medium, encrypted with a hash value, the details of which shall be disclosed in a separate memorandum, signed by the party in the form of an affidavit. This will be tendered along with the encrypted CD/ DVD/ Medium in the Registry. The electronic record in the encrypted CD/ DVD/ Medium will be uploaded on the server of the Court by the Computer Section and kept in an electronic folder which shall be labeled with the cause title, case number and the date of document uploaded on the server. Thereafter, the encrypted CD/ DVD/ Medium will be returned to the party on the condition that it shall be produced at the time of admission/denial of the documents and as and when directed by the Court/ Registrar. The memorandum disclosing the hash value shall be separately kept by the Registry on the file. The compliance with this rule will not be construed as dispensing with the compliance with any other law for the time being in force including Section 65B of the Indian Evidence Act, 1872."
16. Accordingly, Registry may receive electronic record in a Compact Disk ("CD"), so long as it is encrypted with a hash value or in any other non-editable format. The CD containing the documents, be placed in the electronic record of the present suit.
17. Accordingly, the present application is allowed and the plaintiffs are allowed to place the documents in a CD.
CS(COMM) 805/2024 Page 3 of 24This 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 21/09/2024 at 13:03:03
18. With the aforesaid directions, the present application is disposed of. I.A. 39780/2024 (Application seeking administration of interrogatories)
19. This is an application under Order XI Rule 2 CPC as amended by the Commercial Courts Act, 2015, read with Section 151 CPC, seeking administration of interrogatories upon the defendants.
20. Issue notice to the defendants by all modes.
CS(COMM) 805/2024
21. The plaintiffs by way of the present suit seek permanent injunction restraining infringement of trademarks, passing off, dilution, tarnishment, damages, rendition of accounts, delivery up, etc. against the defendants.
22. None appears for the defendants, despite advance service.
23. Let the plaint be registered as suit.
24. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendants shall also file affidavit of admission/denial of the plaintiff's documents, without which, the written statement shall not be taken on record.
25. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiff, an affidavit of admission/denial of documents of the defendants, be filed by the plaintiff, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the timelines.
26. List before the Joint Registrar (Judicial) for marking of exhibits, on CS(COMM) 805/2024 Page 4 of 24 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 21/09/2024 at 13:03:04 08th November, 2024.
27. List before the Court on 22nd November, 2024.
I.A. 39779/2024 (Application under Order XXXIX Rules 1 & 2 read with Section 151 CPC)
28. None appears for the defendants despite advance service.
29. The plaintiffs by way of the present application seek an order of temporary injunction restraining the defendants from using the mark 'VERIEZON', 'VERIEZON HOSPITAL' 'VERIEZON MULTI SPECIALITY HOSPITAL', domain name, i.e., www.veriezonehospital.com as well as the E-mail addresses, i.e., [email protected] and [email protected] and its variants thereof.
30. The plaintiffs are a part of the Verizone Group of Companies and are, among the world's leading providers of, inter alia, communications, information technology, and security products and services, including products and services in the healthcare field (https://www.verizon.com/business/solutions/industry/healthcare/). The plaintiffs 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 worldwide, including in India.
31. It is submitted that the plaintiffs have not licensed or otherwise authorized anyone else to use the coined and fanciful VERIZON trademarks for marketing, advertising, and providing pharmaceuticals or related healthcare goods or services in India or elsewhere.
32. It is the case of the plaintiffs that the plaintiffs have not licensed or otherwise authorized defendants to use the coined VERIZON trademarks for marketing, advertising, and provision of broadband services or related goods CS(COMM) 805/2024 Page 5 of 24 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 21/09/2024 at 13:03:04 or services in India or elsewhere.
33. It is submitted that such use of the impugned marks by the defendants is without any permission or license from the plaintiffs, which constitutes a gross violation of the plaintiffs' statutory and common law rights. The plaintiffs, being the prior adopters and users of the VERIZON trademarks, are thus, compelled to institute this suit against the defendants. The fraudulent activities of the defendants closely resemble the services provided by the plaintiffs or are carried out with an intent of encashing on the inherently strong coined VERIZON name and mark of plaintiffs.
34. It is further submitted that the plaintiffs' trademark VERIZON is a coined trademark, which has no meaning in common parlance or in any industry, apart from denoting the goods and services of the plaintiffs themselves and said mark has been used as part of the trade name for a number of plaintiffs' related companies. Therefore, the use of the trademark and trade name VERIZON or any other trademark deceptively similar thereto on products and services of third-party entities, is bound to create an impression in the minds of consumers, and members of the trade alike, that such products or services emanate from the plaintiffs, or are associated with the plaintiffs.
35. Learned counsel for the plaintiffs submits that since the adoption of the VERIZON trademark, the plaintiffs have used the said trademark extensively, continuously, and successfully in an uninterrupted manner so as to acquire a strong secondary significance in the trademark and trade name VERIZON. The use of the coined trademark and trade name VERIZON as a trading style further cements the association of the mark and name VERIZON with the plaintiffs. The plaintiffs have incorporated a number of CS(COMM) 805/2024 Page 6 of 24 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 21/09/2024 at 13:03:04 subsidiary companies which actively make use of the trademark VERIZON as part of their respective trading names, such as Verizon Licensing Company, Verizon Data Services, and Verizon Communications India Private Limited, amongst several others.
36. He further submits that the unique VERIZON logos which include but are not limited to VERIZON, have been used by the plaintiffs openly, extensively and successfully, so as to create a strong secondary significance in the trademark and trade name VERIZON with respect to their products and services.
37. Thus, he submits that considering the aforementioned facts and owing to the long and continuous usage of the VERIZON trademarks and trade name by the plaintiffs around the world, including, in India in respect of enormous variety of products and services, including, products and services in the internet broadband and healthcare fields, and due to the widespread recognition received by the plaintiffs, the VERIZON Trademarks have come to be identified exclusively with the Plaintiffs.
38. It is submitted that the reputation of the plaintiffs' VERIZON trademarks and trade name have been furthered extensively within India over the past several years. The products and services of the plaintiffs bearing the VERIZON trademarks have been used, promoted, and advertised CS(COMM) 805/2024 Page 7 of 24 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 21/09/2024 at 13:03:04 continuously and extensively in India and residents of India travelling abroad have also been exposed to the VERIZON trademarks and trade name of plaintiffs. As a result of such long, continuous, and extensive use of the VERIZON Trademarks by the plaintiffs, the said trademarks have become associated solely and exclusively with the plaintiffs by consumers as well as the members of the trade. Therefore, the VERIZON trademarks and trade name act as a source identifier for the plaintiffs' goods and services across the world, including in India.
39. Learned counsel for the plaintiffs submits that in India, the plaintiffs have filed the following trademark applications, several of which have proceeded to registration under the provisions of the Trade Marks Act, 1999:
CS(COMM) 805/2024 Page 8 of 24This 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 21/09/2024 at 13:03:04 CS(COMM) 805/2024 Page 9 of 24 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 21/09/2024 at 13:03:05 He, thus, submits that the aforesaid Verizon trademarks of the plaintiffs' are valid and subsisting in favour of the plaintiffs.
40. Learned counsel for the plaintiffs further submits that this Court has restrained entities from making use of the VERIZON trademarks, and confusingly similar variations thereof, in relation to goods and services which are not allied/ cognate to those offered by the plaintiffs themselves. Such entities include those which have been engaged in real estate, pharmaceutical and water-tank businesses. He submits that this evidences the vast reputation and goodwill of the plaintiffs' VERIZON Trademarks as recognized by this Court as well, in addition to the recognition of the reputation that has accrued to the plaintiffs' VERIZON Trademarks in India, which warrants protection against misuse of the plaintiffs' marks, even against entities using such marks and confusingly similar marks for dis- similar goods and services. Moreover, numerous third parties have also recognized the plaintiffs' rights vested in VERIZON Trademarks. The civil suits instituted by the plaintiffs against third party entities making misuse of the plaintiffs VERIZON Trademarks and confusingly similar trademarks are enumerated herein below:
CS(COMM) 805/2024 Page 10 of 24This 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 21/09/2024 at 13:03:05 CS(COMM) 805/2024 Page 11 of 24 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 21/09/2024 at 13:03:05 CS(COMM) 805/2024 Page 12 of 24 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 21/09/2024 at 13:03:06 CS(COMM) 805/2024 Page 13 of 24 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 21/09/2024 at 13:03:06 CS(COMM) 805/2024 Page 14 of 24 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 21/09/2024 at 13:03:06 CS(COMM) 805/2024 Page 15 of 24 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 21/09/2024 at 13:03:07 CS(COMM) 805/2024 Page 16 of 24 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 21/09/2024 at 13:03:07
41. It is further submitted that 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 dated 11th July, 2023 passed in the suit titled as Verizon Trademark Services LC & Ors. vs. Vikash Kumar in CS(COMM) 220/2023. Therefore, it is submitted that the plaintiffs' VERIZON trademarks have the widest amplitude of protection under law and any misuse of identical or deceptively similar marks for even dissimilar goods and services is prohibited by law.
42. To the best of plaintiffs' knowledge, understanding and as per the records made available in the public domain, the defendants' venture under the trade name 'VERIEZON HOSPITAL' allegedly can be traced back to the virtual creation of the Facebook page in November, 2021. It is stated that while there is no proof of physical presence or actual use of the mark by the defendant at the time, it is of utmost importance to note that such belated and mala fide adoption is 21 years subsequent to the plaintiffs coining, adopting and uninterruptedly using the mark and name VERIZON. The CS(COMM) 805/2024 Page 17 of 24 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 21/09/2024 at 13:03:07 defendant No. 1 uses the trade name 'VERIEZON', 'VERIEZON HOSPITAL', 'VERIEZON MULTISPECIALTY HOSPITAL' and/or its variants such as (Veriezon Multispeciality Hospital), the domain name www.veriezonhospital.com, the E-mail addresses [email protected], [email protected], (hereinafter also the Defendants' 'impugned marks') which primarily consist of the word mark 'VERIEZON', which is deceptively similar to and phonetically identical to the plaintiffs' well known trademark 'VERIZON'.
43. The plaintiffs first became aware of the defendants around last week of June, 2024, when the plaintiffs discovered the defendants' online presence under the name 'VERIEZON HOSPITAL', which include, www.justdial.com, www.sulekha.com, www.facebook.com, www.instagram.com, www.linkedin.com, www.youtube.com. It was further found that while there were no company or LLP registered under the name VERIEZON HOSPITAL, it was found that an entity under the name VERIEZONE PHARMACY was registered with the Goods and Services Tax (GST) department in the name of defendant No. 2.
44. It is submitted that the plaintiffs conducted a physical investigation into the defendant no. 1's premises only to find that the defendants' address was a multi-storey building, located in an industrial area and a signage of CS(COMM) 805/2024 Page 18 of 24 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 21/09/2024 at 13:03:07 was displayed at the entrance of the premises and was occupying approximately 150-200 square yards of the floor area and around 15-20 persons were seen working inside the premises;
CS(COMM) 805/2024 Page 19 of 24This 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 21/09/2024 at 13:03:07
45. It was further found during the investigation that the defendants provide healthcare and treatment services for ailments related to nephrology, oncology, orthopaedic, cardiology, physiotherapy etc. they also provide diagnostic services like MRI, CT scan, DR & CR X-Ray, Ultra Sound 4D+3D, NCS, TMT, ECG, PFT and fully computerised LAB, etc;
CS(COMM) 805/2024 Page 20 of 24This 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 21/09/2024 at 13:03:07
46. The defendants were also found to be operating a pharmacy store under the name Veriezon Pharmacy.
47. The plaintiffs immediately upon becoming aware of the defendants hospital operating under the name 'VERIZON HOSPITAL' issued a cease and desist notice dated 28th June, 2024, to the defendant no.1.
48. Since the plaintiffs' brand VERIZON is extremely popular amongst the consumers in India, it is evidently clear that the defendants are aiming to strike a false association with the plaintiffs and spring-board their goods and services in the market under a name which is structurally and phonetically CS(COMM) 805/2024 Page 21 of 24 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 21/09/2024 at 13:03:08 identical to the VERIZON Trademarks of the plaintiffs.
49. Thus, it is submitted that the plaintiffs' VERIZON trademarks have been infringed by the subsequent adoption and mala fide use of the impugned and nearly visually, phonetically identical marks "VERIEZON", and/or deceptively similar marks and/or its variants by the defendants.
50. Learned counsel appearing for the plaintiffs has handed over a copy of a E-mail dated 17th September, 2024 received from the defendants, wherein, the defendants have stated that they are already in the process of changing the name of the hospital. The E-mail dated 17th September, 2024, as received by the plaintiff from the defendants, is reproduced as under:
CS(COMM) 805/2024 Page 22 of 24This 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 21/09/2024 at 13:03:08
51. In view of the aforesaid facts, the plaintiffs have demonstrated a prima facie case for grant of an ad-interim injunction and in case, no ad- interim injunction is granted, the plaintiffs will suffer an irreparable loss. Further, balance of convenience also lies in favour of the plaintiffs, and against the defendants.
52. Considering the submissions made before this Court, it is directed that the defendants, its directors, partners, proprietors, principal officers, servants, agents and distributors and all others acting on their behalf are restrained from marketing, selling, offering, or making for sale, or providing goods and/or services, or in any manner using the mark 'VERIEZON', 'VERIEZON HOSPITAL', 'VERIEZON MULTISPECIALITY HOSPITAL' and/or its variants such as (Veriezon Multispeciality Hospital), the domain name www.veriezonhospital.com, the email addresses [email protected], [email protected] and/or any other deceptively similar marks, where the emphasis is laid on the term 'VERIEZON', or any other word, designation, label etc. similar mark thereto, and other marks containing, or comprising of, the trademark VERIZON, leading to infringement of the plaintiffs' VERIEZON trademarks and passing off of the defendants' services as emanating from, or belonging to the plaintiffs.
53. However, considering the fact that defendants are running a hospital and a pharmacy, it is directed that the order passed today shall come into CS(COMM) 805/2024 Page 23 of 24 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 21/09/2024 at 13:03:08 effect from 01st November, 2024.
54. Issue notice to the defendants by all modes.
55. Let reply be filed within a period of four weeks.
56. Rejoinder thereto, if any, be filed within a period of two weeks, thereafter.
57. Compliance of Order XXXIX Rule 3 be done within a period of one week, from today.
58. Re-notify on 22nd November, 2024.
59. Dasti under signatures of Court Master.
MINI PUSHKARNA, J SEPTEMBER 19, 2024/kr CS(COMM) 805/2024 Page 24 of 24 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 21/09/2024 at 13:03:08