Delhi High Court - Orders
Verizon Trademark Services Llc & Ors vs Verizon Pharmaceutical Private ... on 17 May, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~22(Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 316/2023 & I.As. 9531-536/2023
VERIZON TRADEMARK SERVICES LLC & ORS.
..... Plaintiffs
Through: Ms. Vaishali Mittal, Mr.
Siddhant Chamola and Mr. Shivang Sharma,
Advs.
versus
VERIZON PHARMACEUTICAL PRIVATE LIMITED &
ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 17.05.2023
CS(COMM) 316/2023
1. The plaintiff is the proprietor of the following registrations under the Trade Marks Act 1999:
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, 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, 2005
35,38,42
9,14,16,18, 3068612 October 1, 2015
24,25,28,35
,
CS(COMM) 316/2023 Page 1 of 7
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 24/09/2023 at 10:46:00 36,37,38,39 ,41,42,43,4 5 16 963161 October 12, 2000 09 963160 October 12, 2000 35 1240036 September 26, 2003 36 1240037 September 08, 2003 37 1240038 September 08, 2003 38 1240039 September 08, 2003 41 1240040 September 08, 2003 42 1240041 September 08, 2003 36 1238079 September 18, 2003 41 1238077 September 18, 2003 38 1238076 September 18, 2003 42 1238078 September 18, 2003 37 1238080 September 18, 2003 35 1238081 September 18, 2003
2. The plaintiff claims to be using a trade mark "VERIZON", both as a word mark as well as the part of various logos, for providing varieties of services, including communications, information technology, security products and services including products and CS(COMM) 316/2023 Page 2 of 7 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 24/09/2023 at 10:46:00 services in the health care field, through the web id (https://www.verizon.com/business/solutions/industry/healthcare/).
3. The plaintiff claims to 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 India. The plaint further states that the plaintiff has not licensed or authorised anyone to use the VERIZON trade mark for any purpose whatsoever. The plaint further asserts that, ever since its adoption, the plaintiff has been using the "VERIZON" trade mark inter alia in the form of the logos , , extensively, continuously and uninterruptedly, resulting in the VERIZON mark to become a source identifier of the plaintiff.
4. The plaint also sets out various accolades and encomiums that have been awarded to the plaintiff over a period of time.
5. In order to vouchsafe its reputation, the plaintiff 3 has provided the sales figures using the VERIZON trade mark which, even in the year 2021-2022 was to the tune of ₹ 7,866/- millions.
6. The plaintiff is also the holder of the domain names www.verizon.com, www.verizonbusiness.com, www.verizonenterprise.com and https://www.verizonconnect.com/.
7. The plaint also refers to various litigations in which the plaintiff's VERIZON mark has been protected by courts.
CS(COMM) 316/2023 Page 3 of 7This 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 24/09/2023 at 10:46:01
8. The plaintiff is aggrieved by the use, by Defendant 1, which is a pharmaceutical company, of the mark VERIZON. It is asserted that in November 2021, the plaintiff came to know that Defendant 1 had also applied with the Registry of Trade Marks for registration of the word mark VERIZON. The plaintiff has duly opposed the said application.
9. The plaint also refers to correspondence exchanged between the plaintiff and Defendant 1 which indicates that, in response to a cease and desist notice issued by the plaintiff, the defendants, time and again, undertook not to use the mark VERIZON but have reneged on their assertions. It is in these circumstances that the plaintiff has approached this Court by means of the present suit, alleging infringement, by the defendants, of the plaintiffs' registered VERIZON word mark and device mark. The suit, accordingly, seek a decree of permanent injunction, restraining Defendant 1 as well as all others acting on their behalf from dealing in any manner with the mark VERIZON, the trade name Verizon Pharmaceutical Private Limited or any other deceptively similar marks or names which include the mark VERIZON, apart from a prayer for declaring the mark VERIZON as a well-known trade mark within the meaning of Section 2(1)(z)(g) of the Trade Marks Act, delivery-up, renditions of accounts, damages and costs.
10. In the circumstances, let the plaint be registered as a suit.
11. Issue summons.
12. Written statement, accompanied by an affidavit of admission/denial of the documents filed by the plaintiff, be filed within 30 days with an advance copy to learned Counsel for the CS(COMM) 316/2023 Page 4 of 7 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 24/09/2023 at 10:46:01 plaintiff who may file replication thereto, accompanied by an affidavit of admission/denial of the documents filed by the defendant within 30 days thereof.
13. List before the learned Joint Registrar (Judicial) for completion of pleadings, admission and denial of the documents and marking of exhibits on 17th August 2023, whereafter the matter would be placed before the Court for a case management hearing and further proceedings.
I.A. 9531/2023 (under Order XXXIX Rules 1 and 2 of the CPC)
14. This is an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs.
15. The averments in the application make out a prima facie case of infringement, by the Defendant 1, of the plaintiff's registered VERIZON marks, which are registered in favour of the plaintiff both as a word mark as well as a device mark.
16. As such, applying the principles laid down in para 14 of Laxmikant V. Patel v. Chetanbhai Shah 1 and in para 5 of Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia 2, an ex-parte ad interim injunction would have to follow.
17. As such, issue notice, returnable on 21st August 2023 before the Court.
12002 3 SCC 65 2 (2004) 3 SCC 90 CS(COMM) 316/2023 Page 5 of 7 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 24/09/2023 at 10:46:01
18. Reply, if any, be filed within four weeks with an advance copy to learned Counsel for the plaintiff, who may file rejoinder thereto within four weeks thereof.
19. Till the next date of hearing, the defendants, as well as all others acting on their behalf, shall stand restrained from using the marks VERIZON as part of their mark or any goods or services rendered by them, as well as part of their registered trade name Verizon Pharmaceutical Private Limited or any other confusingly similar or deceptive marks, for any purpose whatsoever.
20. Compliance with Order XXXIX Rule 3 of the CPC be effected within a period of one week from today.
I.A. 9532/2023 (under Order XI Rule 2 of the CPC)
21. Issue notice, returnable before the Court on 17th August 2023 before the learned Joint Registrar (Judicial).
22. Reply, if any, be filed within four weeks with an advance copy to learned Counsel for the plaintiff who may file rejoinder thereto within four weeks thereof.
I.A. 9533/2023 (under Order XI Rule 1(4) of the CPC)
23. By this application, the plaintiff seeks permission to file additional documents.
24. The plaintiff is permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil CS(COMM) 316/2023 Page 6 of 7 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 24/09/2023 at 10:46:01 Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.
25. The application stands disposed of accordingly.
I.A. 9534/2023 (under Section 151 of the CPC)
26. Subject to the plaintiff filing legible copies of any dim or illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
27. The application is disposed of.
I.A. 9535/2023 (under Section 151 of the CPC)
28. Subject to the plaintiff's depositing requisite court fees within a period of two weeks from today, the application is allowed.
29. This application stands allowed accordingly.
I.A. 9536/2023 (under Section 12A of the Commercial Courts Act, 2015)
30. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd 3, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.
31. The application stands allowed accordingly.
C. HARI SHANKAR, J.
MAY 17, 2023/dsn 3 2022 SCC OnLine Del 3529 CS(COMM) 316/2023 Page 7 of 7 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 24/09/2023 at 10:46:01