Full Text
HIGH COURT OF DELHI
Date of Decision: 23rd December, 2024
G4S LIMITED & ANR. .....Plaintiffs
Through: Mr. Essenese Obhan, Ms. Anjuri Saxena and Ms. Urvika Aggarwal, Advocates.
Through:
CPC seeking summary judgement against the defendants)
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trade mark of the plaintiff, passing off their services as those of the plaintiffs, and other ancillary reliefs.
PLEADINGS IN THE PLAINT
2. The plaintiffs, G4S Limited (plaintiff no.1) a UK-based company and its Indian subsidiary – G4S Security Services (India) Pvt. Ltd. (plaintiff no.2) (hereinafter collectively referred to as the “plaintiffs”), are the world’s leading global, integrated company specializing in the delivery of security and related services to customers across the world under the marks ‘G4S’, ‘ ’ and their variants (hereinafter collectively referred to as the “G4S marks”).
3. The plaintiff no.1 carries on its business in around 90 countries with approximately 8,00,000 employees. The range of services rendered by the plaintiffs includes security solutions, facilities management, security systems, training, risk management, monitoring services, recruitment and placement services, etc. The plaintiffs started their business in India initially in the year 1988 as M/s. Group 4 Securitas Hindustan Private Limited and thereafter in 2005, the mark ‘G4S’ was adopted. Since 2005, the said mark has been used in respect of all services rendered by the plaintiffs.
4. The plaintiffs have obtained multiple trade mark registrations for the G4S marks filed in Class 45, a list of which is provided in paragraph no. 24 of the plaint. The list of marks registered by the Plaintiffs in relation to ‘G4S’ is as follows: The certificates for use in Legal Proceedings have been filed as documents no. 3 of the documents filed along with the plaint. All the aforesaid registrations remain valid and subsisting.
5. The plaintiffs have registered the domain names www.g4s.com and www.g4s.in in 1999 and 2005, respectively, and market their business through websites hosted on the said domain names. The plaintiffs also have a presence on social media platforms including Facebook, Instagram, Twitter, LinkedIn and YouTube.
6. The external sales turnover of plaintiff no.2 for the financial year 2023 was over Rs. 2907 crores, and expenditure on advertising for the same financial year is stated to be approximately INR 1.49 crores. The plaintiffs have also received various awards and recognitions in the security services segment.
7. In October 2023, the plaintiffs came across the advertisement of the trademark application filed by the defendants for the trademark ‘ ’ bearing Application No. 5747399 in Class 45 for identical services namely, providing security services on the ‘proposed to be used’ basis. The plaintiffs submit that upon further enquiry, it was found that the defendants were using the infringing marks on their website viz https://gracesecuritiesgroup.com/.
8. The plaintiffs are aggrieved by the use of the mark ‘GSS/ ’ for identical services by defendant no. 1 – Grace Security & Services, a partnership firm and its partners, Dheeravath Srinu Naik (defendant no. 2) and Dheeravath Krishna Veni (defendant no.3).
9. In view of the above, the plaintiffs issued a cease and desist notice on 16th October, 2023 calling upon the defendants to stop using infringing marks/device or any other deceptively similar marks. The plaintiffs also subsequently initiated opposition proceedings against the defendants’ trademark application on the same day.
10. Defendants vide their reply dated 28th October, 2023, blatantly denied any knowledge of the plaintiffs’ marks and stated that the infringing mark ‘ ’ was dissimilar to that of the plaintiffs’ ‘ ’ mark while claiming a prior use since 2007. However, no clarity was provided as to when the impugned logo/device mark was adopted by the defendants.
11. Counsel for the plaintiff submitted that the plaintiffs have no objection in defendants using the mark ‘Grace Security & Services’ or the name in its full form. However, the plaintiffs are aggrieved by the use of the abbreviated mark ‘GSS’ and the device mark ‘ ’, which is identical to the plaintiffs’ ‘ ’.
12. Accordingly, the plaintiffs filed the present suit on 23rd November, 2023 seeking to restrain the defendants from carrying on their infringing activities.
PROCEEDINGS IN THE SUIT
13. On 28th November, 2023, this Court issued summons in the present suit and granted an ex-parte ad-interim injunction against the defendants restraining the defendants from using the abbreviated form of ‘Grace Security & Services’, i.e. ‘GSS’ and its logo ‘ ’. The defendants were however, allowed to freely use the full form for their services.
14. The plaintiffs served the complete copy of the Order dated 28th November, 2023, suit paperbook and the copy of the summons upon the defendants through all modes by 2nd January, 2024.
15. The plaintiffs submit that the defendants filed a letter of withdrawal dated 11th January, 2024 for their trademark application for ‘ ’. However, the defendants have continued using the infringing marks on their website.
16. It has been recorded in the order dated 18th January, 2024 that the defendants have been served successfully by courier, speed post, Email and WhatsApp. Furthermore, it was noted that none of the defendants appeared, nor did they file their written statement.
17. Vide Order dated 22nd July 2024, the defendants were proceeded exparte.
18. In view of the above, the counsel for the plaintiff has filed the present application under Order XIII-A of the Code of Civil Procedure, 1908 (hereinafter ‘CPC’) for passing of a summary judgement.
19. On 9th September, 2024, the application seeking summary judgement was listed before this Court and notice was issued to the defendants via all permissible modes.
20. Despite the injunction operating against the defendants, the defendants continued to use the infringing marks on their website. Consequently, the plaintiffs filed an application seeking a direction to the domain name service provider (hereinafter ‘DNS provider’) of the defendants’ website, to take down/delete the defendants’ website displaying infringing content. Furthermore, an application under Order XXXIX Rule 2A of the CPC was filed by the plaintiffs against the aforementioned wilful breach and disobedience of this Court’s order dated 28th November, 2023 by the defendants.
21. On 5th November 2024, this Court directed the DNS provider of the defendants’ website to block access to the said website.
21.1. The defendants’ website was duly taken down by the DNS provider.
22. It has been recorded in the Order dated 29th November, 2024 that neither any reply has been filed to the said application, nor has any appearance been made on behalf of the defendants. Furthermore, the defendants had already been proceeded against ex-parte.
23. The plaintiffs now seek a decree in terms of Order XIII-A of the CPC.
ANALYSIS AND FINDINGS
24. I have heard the submissions of the counsel for the plaintiffs and also perused the material on record.
25. The plaint has been duly verified and is also supported by the affidavit of the plaintiffs. In view of the fact that no written statement has been filed on behalf of the defendants, all the averments made in the plaint have to be taken to be admitted. Further, since no affidavit of admission/denial has been filed on behalf of the defendants in respect of the documents filed with the plaint, in terms of Rule 3 of the Delhi High Court (Original Side) Rules 2018, the same are deemed to have been admitted.
26. Therefore, I am of the opinion that no purpose would be served by directing the plaintiffs to lead ex-parte evidence by filing an affidavit of examination in chief and the plaintiffs are entitled to a summary judgment.
27. From the averments made in the plaint and the evidence on record, the plaintiffs have been able to prove that the plaintiffs are the registered proprietor of the ‘G4S’ marks.
28. A comparison between the plaintiffs’ registered marks and the impugned marks used by the defendants is set out below:
29. The comparison above shows that the defendants have copied the essential feature of the plaintiffs’ mark ‘ ’ coupled with the manner, style, colour combination and font thereby creating the same commercial impression as the Plaintiffs’ marks in the minds of the consumers. The defendant has merely replaced the “4” in the plaintiffs’ marks with “S” in their infringing mark. Here, upon examining the overall commercial impression of the two marks as a whole, the infringement becomes apparent.
30. The defendants have deliberately adopted the infringing marks which are a colourable imitation of the plaintiffs’ registered G4S marks. It is evident that the infringing marks are deceptively similar to that of the plaintiffs’ and have been adopted for identical services and are bound to cause confusion amongst the public.
31. Furthermore, the visual and structural similarity between the defendants’ impugned marks and the plaintiffs’ registered marks is so blatant that an average consumer with an imperfect recollection is bound to confuse the two marks, even at the first instance.
32. Based on the discussion above, a clear case of infringement of trademarks is made out. The defendants have taken unfair advantage of the reputation and goodwill of the plaintiffs’ trademark and have also deceived the unwary consumers of their association with the plaintiffs by dishonestly adopting the plaintiffs’ registered marks without any plausible explanation. Therefore, the plaintiffs have established a case of passing off as well.
33. At this stage, it may be relevant to note that the defendants did not appear before the Court, despite service of summons on 2nd January, 2024. Further, no communication on behalf of the defendants have been placed on record in respect of the allegations of the plaintiffs in this suit.
34. Since the defendants have failed to take any requisite steps to contest the present suit, despite having suffered an ad interim injunction order, it is evident that the defendants have no defence to put forth on merits.
35. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev, 2019 SCC OnLine Del 10764, this Court has observed as under: “90. To reiterate, the intent behind incorporating the summary judgment procedure in the Commercial Court Act, 2015 is to ensure disposal of commercial disputes in a time-bound manner. In fact, the applicability of Order XIIIA, CPC to commercial disputes, demonstrates that the trial is no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to commercial disputes, empowers the Court to grant a summary judgement against the defendant where the Court considers that the defendant has no real prospects of successfully defending the claim and there is no other compelling reason why the claim should not be disposed of before recording of oral evidence. The expression “real” directs the Court to examine whether there is a “realistic” as opposed to “fanciful” prospects of success. This Court is of the view that the expression “no genuine issue requiring a trial” in Ontario Rules of Civil Procedure and “no other compelling reason…..for trial” in Commercial Courts Act can be read mutatis mutandis. Consequently, Order XIIIA, CPC would be attracted if the Court, while hearing such an application, can make the necessary finding of fact, apply the law to the facts and the same is a proportionate, more expeditious and less expensive means of achieving a fair and just result.
92. Accordingly, unlike ordinary suits, Courts need not hold trial in commercial suits, even if there are disputed questions of fact as held by the Canadian Supreme Court in Robert Hryniak (supra), in the event, the Court comes to the conclusion that the defendant lacks a real prospect of successfully defending the claim.”
36. The aforesaid principles are fully applicable in the facts and circumstances of the present case. As elaborated above, the defendants have no real prospect of successfully defending the claims in the present suit. Further, taking into account that the defendants have not set up any defence, there is no compelling reason for the recording of oral evidence.
37. Therefore, this is a fit case where a summary judgment in terms of Order XIII-A of the CPC can be passed in favour of the plaintiffs and against the defendants.
38. In view of the foregoing analysis, a decree of permanent injunction is passed in favour of the plaintiffs and against the defendants in terms of in terms of prayer clauses 69(i) and (ii) of the plaint.
39. Insofar as the reliefs of damages sought in prayer clauses 69 (iv) are concerned, reference may be made to the judgement in Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378. The relevant observations are set out below:
40. In light of the foregoing analysis, I am of the view that the defendants conduct not only warrants but also necessitates the imposition of both costs and aggravated damages. Thus, in addition to the decree passed above, taking into account the entire facts and circumstances presented in the case, the Court also awards damages amounting to INR 5,00,000/- in favour of the plaintiffs and against the defendants.
41. Insofar as reliefs of costs sought in prayer clause 69 (v) is concerned, the plaintiffs are directed to file their bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018 within four weeks.
42. For this purpose, the representatives of the plaintiffs shall appear before the taxation officer on 13th February, 2025 who shall determine the actual costs incurred by the plaintiffs in the present litigation.
43. In view of the above, the plaintiffs do not press for the reliefs sought under prayer clause 69 (iii).
44. Let the decree sheet be drawn up.
45. All pending applications stand disposed of. AMIT BANSAL, J DECEMBER 23, 2024 Corrected and uploaded on: 04th January, 2025