Upgrad Education Private Limited vs Intellipaat Software Solutions ... on 28 February, 2022

[Cites 2, Cited by 10]

Delhi High Court

Upgrad Education Private Limited vs Intellipaat Software Solutions ... on 28 February, 2022

1. This is an application filed by the Plaintiff under Section 12A of the Commercial Courts Act, 2015 (hereinafter the "Act") seeking exemption from entering into pre-institution mediation and settlement with the Defendant.

2. As per Section 12A of the Act, if a suit does not contemplate any urgent interim relief, it cannot be instituted unless the party suing has exhausted the remedy of exploring mediation at the pre-litigation stage.

3. This Court notices that there are various categories of proceedings filed before the IPD which was notified in July of 2021. Such proceedings include -

CS (COMM) 132/2022 Page 1 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55

a) Suits seeking injunction, damages and other reliefs;

b) Appeals from the orders of various IP Offices;

c) Original petitions like cancellation petitions, rectification petitions, revocation petitions and other miscellaneous petitions;

d) Writs, Revisions and other proceedings arising from orders of the IP offices or proceedings before the Commercial Courts.

4. The provisions of Section 12A would be applicable to category (a) above and not to the other categories. However, in a majority of the suits seeking permanent injunctions, urgent temporary relief is also sought.

5. Recently in Changsha Sinocare INC v. Rajesh Kumar, [CS (COMM) 27/2022, decided on 14th January 2022], a ld. Single Judge was considering a suit where recovery of money was sought and exemption under Section 12A was sought on the ground that the legal notice issued by the Plaintiff did not evince any positive response from the Defendant. In those facts, the Court observed:

"6. However, this Court is of the view that it is when there is a difference of opinion regarding mutual liabilities that a dispute arises. In this case, the refusal of the defendant to pay the amount demanded by the plaintiff has resulted in a dispute and in terms of Section 12A of Commercial Courts Act, 2015, this dispute had to be first tackled through mediation.

7. Since no reason has been given for seeking exemption, the application [I.A. 688/2022] is dismissed."

6. Thus, the above was a case where on facts the Court was of the opinion that the suit being one for recovery, without availing of the remedy CS (COMM) 132/2022 Page 2 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55 under Section 12A, the suit could not have been filed.

7. It is thus directed that in suits filed before the IPD, wherein applications for interim injunction are filed and urgent interim relief is sought, such leave would be presumed in view of the language of Section 12A. Accordingly, a separate application would not be required where ever urgent interim relief is being sought by the Plaintiff. Moreover, even if urgent interim relief is sought by the Plaintiff but the Court is of the opinion that the parties ought to be relegated to mediation, an order referring the matter to mediation can always be passed.

8. Ordered accordingly. Application is allowed and disposed of. I.A.3297/2022 (for exemption)

9. This is an application seeking exemption from filing Original/ Certified copies of documents, translated copies of documents clearer copies of documents. Allowed, subject to all just exceptions.

10. Application is disposed of.

I.A.3296/2022 (additional documents)

11. This is an application filed on behalf of the Plaintiff to file additional documents within 30 days. Whatever documents the Plaintiffs wishes to file, let the same be filed within two days.

12. Application is disposed of.

I.A.3295/2022 (court fee)

13. This is an application seeking extension of time for filing the court fee. Ld. Counsel submits that the court fees has already been deposited in the treasury. One-week additional time is given to the Plaintiff to deposit the court fee.

14. Application is disposed of.

CS (COMM) 132/2022 Page 3 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55

CS (COMM) 132/2022

15. Let the plaint be registered as a suit.

16. Mr. Nischal Anand appears for the Defendant upon advance notice and accepts summons in the suit and notice in all the applications.

17. The written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant shall also file the affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

18. Liberty is given to the Plaintiff to file the 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 documents of the Defendant, 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 timelines prescribed under the Delhi High Court (Original Side) Rules, 2018.

19. List before the Joint Registrar for marking of exhibits on 6th May 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

20. List before Court on 4th April, 2022.

I.A. 3294/2022 (u/O XXXIX Rules 1 & 2 CPC)

21. The Plaintiff- upGrad Education Private Limited, is a company which is stated to be involved in online education and provides various executive programs and other programs in under-graduate, masters, and executive courses. It claims to be having a learner base of more than 2 million users across 50 countries and having over 300 Universities as partners. The case CS (COMM) 132/2022 Page 4 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55 of the Plaintiff is that it is the owner of wordmark 'upGrad' and variants thereof (hereinafter "upGrad Marks") of distinctive style and character. The said mark is a registered trademark in various classes. The details of the registration are contained in the plaint.

22. Various promotional activities are also stated to be undertaken by the Plaintiff which have been enumerated in the plaint. The grievance in the present plaint relates to use of the word 'upGrad' as an 'adword' on the Google Ads Programme by the Defendant- which is in a similar line of business as of the Plaintiff. The Defendant uses the name 'Intellipaat' for its businesses.

23. The case of the Plaintiff is that sometime in December, 2021 upon searching the word 'upGrad', weblinks to the website of the Plaintiff appeared in various forms and derivatives on the google search engine. However, sponsored advertisement hyperlink of the Defendant was also being highlighted in the search results. Upon further inquiry, it was revealed that the Defendant had availed of the benefit of the Google Ads program to enable such a sponsored link. In view thereof, the Plaintiff sent a notice to the Defendant dated 23rd December, 2021 calling upon the Defendant to cease the use of the mark 'upGrad' as an adword. The Defendant, thereafter, replied vide its letter dated 1st January, 2022 in which it agreed to put the 'upGrad' mark in the negative keyword list in all of its Google Ads Account. The case of the Plaintiff, as per Mr. Mehta, ld. Senior Counsel, is that the Plaintiff had also agreed to remove the keyword 'Intellipaat' from its Google Ads Programme and a confirmation to that effect is also relied upon as per page 30 of the plaint.

24. In the reply, though the Defendant stated that it would put the CS (COMM) 132/2022 Page 5 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55 'upGrad' mark in negative keyword list, the grievance of the Plaintiff is that the Defendant continued to use the mark on the Google Ads Program leading to filing of the present suit.

25. Advance copy of the suit has been served upon the Defendant. Mr. Nischal Anand, ld. Counsel appearing for the Defendant submits that the Plaintiff itself has not come to the Court with clean hands. The same cause of action which is the basis of the filing of the suit arises against the Plaintiff as it still continues to use the word 'Intellipaat' as a keyword on Google Ads Program. Thus, the Defendant's stand is that while the Plaintiff is continuously using the word 'Intellipaat' on the Google Ads Program, however, injunction is being sought against the Defendant.

26. Upon being put to the ld. Counsels, both counsels agree that their respective clients do not intend to use each other's trademark or any derivative/variant thereof on the Google Ads Program to promote their respective online education business.

27. Accordingly, instead of passing an injunction order, this Court deems it appropriate to accept the undertakings given by the Defendant in its reply and of the Plaintiff as per the submissions made today to the effect that the Plaintiff and the Defendant shall refrain from using each other's trademarks i.e., 'upGrad' and 'Intellipaat' and variants and derivatives thereof as keywords or in any other manner, through the Google Ads Program or any other Ads Programme on search engines. The said undertaking would apply not only for the marks themselves, but marks with or without spaces and/or inclusive of special characters as well.

28. Since both the ld. Counsels have agreed that their clients are ready to give undertakings, it is directed that the affidavits of undertakings shall be CS (COMM) 132/2022 Page 6 of 7 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.03.2022 06:37:55 filed by both Plaintiff and the Defendant through their authorized signatories. Board resolutions authorizing the signatories shall also be placed on record. The language of the undertaking shall be exchanged between Mr. Nischal Anand and Mr. Sidhant Goel. The affidavits shall use broadly the same language, with changes mutatis mutandis as applicable. The same shall be filed along with the board resolutions within a period of 10 days from today. The undertakings shall be binding on the respective parties as also anyone acting on their behalf, including the search engine/s to whom the said undertakings along with the present order shall be communicated by ld. Counsels for both the parties.

29. With these observations, the injunction application is disposed of.

PRATHIBA M. SINGH JUDGE FEBRUARY 28, 2022/dk/sk CS (COMM) 132/2022 Page 7 of 7

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Delhi High Court