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Verizon Trademark Services Llc & Ors vs Selvaganapathy Swaminathan & Anr on 2 November, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                          $~26
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +              CS(COMM) 756/2022 and I.A. 17801/2022-17805/2022
                                 VERIZON TRADEMARK SERVICES LLC & ORS...... Plaintiffs
                                              Through: Mr. Pravin Anand, Ms. Vaishali
                                                       Mittal, Mr. Siddhant Chamola and
                                                       Mr. Shivang Sharma, Advocates.
                                                       (M:9999052646)
                                              versus

                                 SELVAGANAPATHY SWAMINATHAN & ANR. ..... Defendants
                                              Through: None.
                                 CORAM:
                                 JUSTICE PRATHIBA M. SINGH
                                              ORDER

% 02.11.2022

1. This hearing has been done through hybrid mode.

I.A. 17802/2022 (for seeking interrogatories)

2. The is an application filed by the Plaintiff seeking leave of the Court to serve interrogatories to Defendant No. 1. The interrogatories concern the date of adoption of the mark 'VERYZON' and financial details concerning the use of the said mark.

3. Issue notice. List before Court on 23rd January, 2023. I.A. 17803/2022 (additional documents)

4. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act.

5. I.A. 17803/2022 is disposed of.

I.A. 17804/2022 (for exemption)

6. This is an application seeking exemption from filing certified/cleared/typed or translated copies of documents. The exemption is allowed, subject to all just exceptions.

7. I.A. 17804/2022 is disposed of.

I.A. 17805/2022 (u/S 12A)

8. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in Chandra Kishore Chaurasia v. R A Perfumery Works Private Ltd, 2022/DHC/004454 this application is allowed.

9. I.A. 17805/2022 is disposed of.

CS (COMM) 756/2022

10. Let the plaint be registered as a suit.

11. Issue summons to the Defendants through all modes upon the filing of Process Fee by the Plaintiff.

12. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from the date of receipt of the summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.

13. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of the documents of the Defendants, shall 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 any documents, the same shall be sought and given within the prescribed Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 2 of 9 Signing Date:04.11.2022 17:25:18 timelines.

14. List before the Joint Registrar for marking of exhibits on 12th December, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

15. List before Court on 23rd January, 2023.

I.A. 17801/2022(stay)

16. The present suit has been filed by Plaintiff No. 1- Verizon Trademark Services LLC, Plaintiff No. 2- Verizon Licensing Company both based in the USA and Plaintiff No. 3- Verizon India Pvt. Ltd. (hereinafter as 'Plaintiffs') against Defendant No. 1- Mr. Selvaganapathi Swaminathan who runs two firms M/s. Veryzon Hi Technical & Engineering and M/s Bright Hi-Tech Engineering and Defendant No. 2- Hiox Softwares Pvt. Ltd. The case of the Plaintiffs is that they are the owners of the mark 'VERIZON' as also the logo marks adopted by the Plaintiffs in 2000.

17. The Plaintiffs claim to be leading global service providers in the area of communication, entertainment, information technology, security products and allied services. The Plaintiffs own and operate global internet protocol networks, serving over 2700 cities in 150 countries worldwide, including India. The Plaintiffs claim to have revenues of 133.6 billion US dollars in 2021.

18. The mark 'VERIZON' was adopted by the Plaintiffs both as a trade mark and as a trade name in the year 2000. The said mark is derived from the Latin word 'Veritas', which signifies certainty and reliability, and was coined by combining the words 'Veritas' and Horizon from Latin and English, respectively. The Plaintiffs also own the domain names www.verizon.com and www.verizonenterprise.com which they use to Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 3 of 9 Signing Date:04.11.2022 17:25:18 advertise and promote their businesses. The earliest trademark registration of the Plaintiffs dates back to 6th March, 2000. The mark is registered in various classes, including Classes 9, 14, 16, 28, 35, 37, 38 and 42, both in logo and word form. It has been averred that the mark 'VERIZON' being a coined mark, is distinctive of the Plaintiffs and their business as there is no obvious dictionary meaning associated with the said mark. The claim of the Plaintiffs is also that their mark 'VERIZON' is also a well-known mark. The mark of the Plaintiffs 'VERIZON' is registered in several countries of the world including in India and the details of the Indian trademark registrations, thereof, have been set out in paragraph 29 of the plaint and the same is extracted below:

Signing Date:04.11.2022 17:25:18

19. The Defendant No. 1 is stated to be engaged in the business of providing technical and engineering services, manufacturing of lifts and providing services for multi-floor transportation of goods.

20. Mr. Anand, ld. Counsel for the Plaintiffs submits that the Defendant No. 1 is using the name 'VERYZON' both as a mark and as a part of the trading style. To support this submission, he relies upon the brochure of the Defendant No. 1 to argue that the mark 'VERYZON' is being used by him. He contends that the mark 'VERYZON' is phonetically and identically similar to the Plaintiffs mark 'VERIZON'.

21. Ld. Counsel for the Plaintiffs submits that the Plaintiffs first became aware of the Defendant No. 1 in June 2022 when it came across the domain name www.veryzon.in and thereafter, issued a notice to the Defendants, to which a response was received on from the Defendant No. 1 on 25th October, 2022 disputing the rights of the Plaintiffs, while defending the adoption of the mark 'VERYZON'. The Defendant No. 1 also claimed that the field of operation of the Plaintiffs and the Defendant No. 1 are different.

22. Mr. Anand, Ld. Counsel further submits that this Court has, repeatedly protected the mark 'VERIZON' against both related and unrelated goods & services, including services such as web hosting services, pharmaceutical preparations, infrastructure services, real estate and hospitality services, mobile phones, health and pharmaceutical products, construction and other building services, tours and travels, web development and IT services, media and advertising related services all of which go on to show that the mark 'VERIZON' has achieved the status of a well-known mark. He points out several decisions including the orders passed on 27th Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 6 of 9 Signing Date:04.11.2022 17:25:18 July, 2010 in CS(OS) 1500/2010 titled 'Verizon Trademark Services LLC v. Verizon Pharma Private Ltd.' and order dated 14th January, 2019 in CS(COMM) 17/2019 titled 'Verizon Trademark Services LLC v. Rakshit Bagepalli Shivaruju to show that the trade mark 'VERIZON' has even been protected for even unrelated goods and services. To support the claim of 'VERIZON' being a well-known mark, he relies upon the observations made by the Single Judge of this Court in CS(COMM) 1434/2016 titled 'Verizon Trademark Services LLC & Ors. v. Mr. Parth Solanki & Anr.'.

23. The Court has perused the record and has heard ld. Counsel for the Plaintiffs. The investigator's affidavit which is placed on record shows that the Defendant entities M/s Bright Hi-Tech Engineering and M/s. Veryzon Hi Technical & Engineering are related to each other and appear to be run by the same person. i.e., Defendant No.1. It has also been mentioned in the said affidavit that M/s. Veryzon Hi Technical & Engineering is also using the GST number of Defendant No.1.

24. It is noted that upon receiving the notice dated 24th June, 2022 issued by the Plaintiff, the Defendant No. 2 i.e., the domain name registrar has suspended the domain name www.veryzon.in registered by Defendant No.1.

25. The Defendant No. 1 and his entities are continuing to do business utilizing the mark 'VERYZON'. A perusal of the reply dated 25 October 2022 issued by the Defendant No. 1 also shows that the Defendant No. 1 is disputing the rights of the Plaintiffs by stating that they are not using any of the colour, logo or font of 'VERIZON' and are not carrying out any business which 'VERIZON' is doing, thus, they do not intend to comply with the requisition of the Plaintiff.

26. The Court has considered the various interim orders and other orders Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 7 of 9 Signing Date:04.11.2022 17:25:18 passed by this Court as also by the WIPO Dispute Resolution Centre. A perusal of these orders shows that the mark 'VERIZON' has been protected in respect of various unrelated goods and services as well. One such protection was granted by the ld. Single Judge of this Court in CS(COMM) 1434/2016 titled 'Verizon Trademark Services LLC & Ors. v. Mr. Parth Solanki & Anr. wherein it was observed as under:

"23. On a prima facie basis, this Court is of the opinion that the mark VERIZON satisfies the criteria prescribed under sections 2(1)(zg) read with sections 11(6), 11(7), 11(8) of the Trade Marks Act, 1999. However, since the Defendants have not contested the proceedings, this Court refrains itself from passing order declaring the VERIZON trademarks and logos as well-known trademarks."

27. In view of the above and since the mark 'VERYZON' used by the Defendant No. 1 is identically and phonetically similar to the registered trade mark 'VERIZON' of the Plaintiffs, the following ad-interim relief is granted at this stage:

i. The Defendant No.1 shall cease any fresh manufacturing of products under the mark 'VERYZON' including lifts, elevators etc. ii. The Defendant No.1 shall, however, be permitted to execute any pending orders which it has already received from its customers, subject to filing of an affidavit. The said list of pending orders and the customers shall be filed with an affidavit, within two weeks of receipt of this order. iii. Insofar as the use of the domain name www.veryzon.in is concerned, the same shall continue to remain blocked and Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 8 of 9 Signing Date:04.11.2022 17:25:18 status quo shall be maintained by the domain name registrar- Defendant No.2. The said domain name shall not be used by the Defendant No.1 in any manner whatsoever.

28. Other reliefs shall be considered after notice is served and reply is filed by the Defendant No. 1.

29. Compliance of Order XXXIX Rule 3 CPC be done within one week.

30. List before Court on 23rd January, 2023.

PRATHIBA M. SINGH, J.

NOVEMBER 2, 2022 dj/aman Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 756/2022 Page 9 of 9 Signing Date:04.11.2022 17:25:18