Delhi High Court - Orders
Upgrad Education Private Limited vs Interviewbit Technologies Private ... on 29 November, 2021
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~24 (original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 610/2021 & I.A.15612/2021, I.A.15613/2021,
I.A.15614/2021, I.A.15615/2021, I.A.15616/2021
UPGRAD EDUCATION PRIVATE LIMITED ..... Plaintiff
Through: Mr. Amit Sibal, Sr. Adv. with
Mr.Mohit Goel, Mr.Deepankar Mishra,
Mr.Abhishek Kotnala and Mr. Saksham, Advs.
versus
INTERVIEWBIT TECHNOLOGIES PRIVATE LIMITED &
ANR. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 29.11.2021 I.A.15616/2021 (exemption)
1. For the reasons stated in this application, exemption is granted from the requirement of pre-institution mediation.
2. The application is disposed of accordingly.
I.A.15615/2021 (exemption)
3. Subject to the plaintiff filing legible copies of any dim or illegible copies on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 1 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:134. The application is disposed of.
I.A.15614/2021(under Order XI Rule 1(4) of the CPC)
5. Subject to the right of the defendants to admit/deny the same, the plaintiff is permitted to file additional documents within a period of four weeks from today.
6. The application is disposed of.
I.A.15613/2021 (under Section 149 of the CPC for extension of time)
7. Learned Counsel for the plaintiff undertakes to file the requisite court fees within a period of two days from today. Granting leave and liberty to do, this application stands disposed of.
CS(COMM) 610/2021 & I.A.15612/20201 (under Order XXXIX Rules 1 and 2 of the CPC)
8. The plaint alleges infringement, by the defendants, of the "upGrad" word mark, which is registered in favour of the plaintiff. The plaintiff claims to be engaged in the business of online education, offering working professionals an opportunity to update their skills even while continuing to remain part of the work force. The plaintiff claims to be the registered proprietor of the "upGrad" word mark as well as the device marks " ." The expression "upGrad", it is claimed, is a coined, fanciful and arbitrary word and prima facie, there can be no exception to this submission.
Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 2 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:139. The plaintiff also claims to be the owner of the domain name 'www.upgrad.com' with virtual presence on various social media platforms. It also claimed to have developed a mobile application in 2016 to enable access to its services. Para 9 of the plaint provides a tabular representation of the marks registered in favour of the plaintiff, and may be reproduced thus:
S.No. Application Trade Mark Class Status Number 1 2985062 UPGRAD Registered 2 2985063 UPGRAD Registered 3 2985065 UPGRAD Registered 4 2985064 UPGRAD Registered 5 3671902 UPGRAD Registered 6 4413141 upGrad. Raho Ambitious. Registered 7 4995573 Registered 8 4995574 Registered 9 4913523 up Grad Rekrut Registered 10 4913522 up Grad Rekrut Registered 11 4919652 Registered Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 3 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13 12 4932584 Registered 13 3631870 UPGRAD ONLINE Registered SCHOLARSHIP 14 3631869 UPGRAD ONLINE Registered SCHOLARSHIP 15 4057059 Registered 16 4057057 Registered 17 4057060 Registered 18 4057055 Registered 19 4413140 upGrad. Raho Registered Ambitious.
20 3008876 Registered 21 3008879 Registered 22 3008877 Registered 23 3008878 Registered Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 4 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13 24 4057058 Registered These registrations are stated to be valid and subsisting.
10. In order to vouchsafe the commercial credibility of the plaintiff, the plaint also provides the revenue generated by the plaintiff by using the 'upGrad' marks from 2016 to 2021 as well as the expenditure incurred by the plaintiff on promotional activities relating to the said marks.
11. Defendants 1 and 2, who operate from the same premises in Pune, are also stated to be engaged in providing online educational services. They, therefore, are in the same line of business as the plaintiff.
12. The grievance of the plaintiff relates to the subscription, taken by the plaintiff on the Google Ads Program, provided by Google Inc. It is not necessary, for the purposes of the order being passed today, to explain, in detail, the working of the program. Suffice it to state that the program enables the persons who are interested in their websites popping up, when a search is made by a person interested in availing services, such as those provided by the plaintiff, to subscribe to the Google Ads Program. Against payment of a particular amount, Google provides a facility by which, when a search is initiated, a web link pops up, so that an interested party may access the site. Persons seeking to avail this Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 5 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13 facility are required to subscribe to specific key words. The plaintiff alleges that the defendants have availed the Google Ads services provided by Google by bidding for the key word "upGrad" which is a clear infringement of the registered mark of the plaintiff within the meaning of Section 29(6) read with Section 2(2)(b), 2(2)(c)(ii) and 29(9) of the Trademarks Act, 1999. As a result, on a person's typing the word "upGrad" on the Google search engine, the defendants' advertisement would pop up. This, it is alleged would also lead to an inevitable impression of association between the activities of the defendants and the registered mark of the plaintiff.
13. Prima facie, a case of unlawful infringement within the meaning of Section 29 of the Trademarks Act, 1999 is made out. The plaint also refers to various other orders passed by Coordinate Benches of this Court in which injunction has been granted in similar cases.
14. In these circumstances, the plaint seeks a decree of permanent injunction against the defendants from bidding for, adopting or using the plaintiff's "upGrad" word mark as a key word through the Google Ads Word Program or any other ad word/key word program, as well as damages, and rendition of accounts, and costs.
15. In the circumstances, let the plaint be registered as a suit.
16. Issue summons. Summons be served on the defendants by all Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 6 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13 modes including e-mail.
17. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file replication thereto accompanied by affidavit of admission/denial of the documents filed by the defendants within 45 days thereof.
18. List before the Joint Registrar for completion of pleadings, admission/denial of documents and marking of exhibits on 17th February, 2022.
19. I.A.15612/2021 seeks ad interim reliefs. The prayer clause in this application reads thus:
"59. In the circumstances aforesaid, the Plaintiff most respectfully pray that this Hon'ble Court may be pleased to pass:
(a) Order for injunction restraining Defendant, its partners, directors, shareholders, assigns in business, affiliates, subsidiaries, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on its behalf from in any manner bidding for, adopting and using the Plaintiff's upGrad Word Mark (as defined in the Plaint) in any manner whatsoever, or any deceptively similar variant thereof, whether with the inclusion of spaces or other special characters, as an keyword through the Google Ads Word Program or any other ad word/key word program in manner whatsoever, amounting to infringement of the Plaintiff's upGrad Word Mark under Section 29 of the Trade Marks Act, 1999.Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 7 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13
(b) Order restraining Defendant, its partners, directors, shareholders, assigns in business, affiliates, subsidiaries, agents, broadcasters, representatives, advertisers, franchisees, licensees and/or all other persons acting on its behalf from in any manner bidding for, adopting and using the Plaintiff's upGrad Word Mark (as defined in the Plaint) in any manner whatsoever, or any deceptively similar variant thereof, whether with the inclusion of spaces or other special characters, as a keyword through the Google Ads Program or any other ad word/key word program in any manner whatsoever, amounting to passing off and unfair competition.
(c) It is further respectfully prayed that in view of the facts and circumstances of the present case and in the interest of justice and public interest, an ex parte order in the aforementioned terms may kindly be granted;
(d) Any other and further relief(s) as this Hon'ble Court may deem fit and proper to meet the ends of justice."
20. Issue notice, returnable before the Court on 23rd February, 2022. Notice be served on all modes. Reply, if any, be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file rejoinder thereto before the next date of hearing.
21. Till the next date of hearing, there shall be an ad interim order in terms of prayers (a) and (b) in this application.
C. HARI SHANKAR, J NOVEMBER 29, 2021/kr Signature Not Verified Digitally Signed CS (COMM) 610/2021 Page 8 of 8 By:SUNIL SINGH NEGI Signing Date:02.12.2021 11:00:13