Full Text
HIGH COURT OF DELHI
Date of Decision: 13th November, 2024
VERIZON TRADEMARK SERVICES LLC & ORS......Plaintiffs
Through: Ms. Vaishali Mittal
(M): 9999052646
Through: None.
JUDGMENT
1. The present application has been filed seeking summary judgment under Order XIII-A, Rules 3, 6(1)(a) & 8 of the Civil Procedure Code, 1908 (“CPC”), read with Order VIII Rule 10 CPC, read with Section 151 CPC.
2. Present suit has been filed by the plaintiffs seeking permanent injunction inter alia, restraining infringement of their well-known trademarks „VERIZON‟,,,,,, and other marks containing, or comprising of, the trademark VERIZON („VERIZON Trademarks‟) etc, passing off, dilution and unfair competition, damages, delivery up, rendition of accounts, etc.
3. The plaintiff seeks a summary judgment against the defendants, on the ground that the defendants have no prospect of defending the plaintiff‟s claims.
4. The case as canvassed by the plaintiffs, is as follows: 4.[1] The plaintiffs are a part of the Verizon Group of Companies and are, are among the world‟s leading providers of, inter alia, communications, entertainment, information technology, and security products and services. The plaintiffs‟ group employs around 132,000 people worldwide and they 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, including in India. 4.[2] In India, the plaintiffs operate through several group companies, including plaintiff no.3, i.e., Verizon Communications India Pvt. Ltd. The plaintiffs generate revenues in crores of Rupees each year through their India-business alone, and are well-known to members of the public at large, not only due to the plaintiffs‟ business operations in India, but also due to its omnipresence across the globe, which ensures that the plaintiffs and their VERIZON Trademarks are known to one and all.
4.3. The plaintiffs coined and adopted the mark „VERIZON‟ in the year 2000, and since then, the plaintiffs have been using the said mark continuously not only as a trademark with respect to their various goods and services, but also as the prominent and operative part of their corporate names, as well as the names of their various subsidiaries operating in various countries.
4.4. Over the years, the plaintiffs and their goods and services under the VERIZON Trademarks have become well-known to members of the public across the globe. The plaintiffs have also expended considerably in promoting the VERIZON Trademarks, in order to ensure that the same is exclusively associated with the plaintiffs and known to all. This has led the plaintiffs‟ immense goodwill and reputation to become strongly vested in the VERIZON Trademarks. 4.[5] The plaintiffs have also taken steps to protect their rights over the VERIZON Trademarks through securing multiple trademark registrations in their favour in India and a very large number of countries abroad. The plaintiffs‟ myriad of trademark registrations under several Classes, as given in Para 28 of the plaint, ensures statutory exclusivity over the trademarks, over and above the plaintiffs‟ common law rights on the VERIZON Trademarks. Notably, the plaintiffs have subsisting registrations for the word mark „VERIZON‟ as well as the labels, and in India under multiple Classes. 4.[6] Plaintiffs‟ trademark VERIZON is a coined trademark, which has no meaning in common parlance or in the relevant industry, apart from denoting the goods and services of the plaintiffs. Therefore, the use of the trademark and trade name VERIZON or any other trademark deceptively similar thereto on products and services of third-party entities is bound to create an impression in the minds of consumers and members of the trade alike, that such products or services emanate from the plaintiffs, or, are in some way associated with the plaintiffs. 4.[7] The defendant no.1, herein, i.e., M/S Verizon Global, through the impugned domain name www.verizonglobal.in appears to be advertising, promoting and providing services in relation to Information Technology, human resource consulting, recruitment, outsourcing and corporate training under the impugned marks „VERIZON‟, and/or its variants. 4.[8] The plaintiffs first became aware of the defendant no.1 in the last week of June 2022, when the plaintiffs came across the adoption of the impugned marks VERIZON and registration of the domain name www.verizonglobal.in by the defendant no.1. 4.[9] Subsequently, the plaintiffs‟ issued a legal notice dated 24th June, 2022 to the defendant no.1 to immediately cease and desist from the infringing activities, however, the defendant no. 1 despite successful service failed to respond to the same and continues to provide the infringing services through the impugned domain name www.verizonglobal.in.
4.10 The defendant‟s mark is identical to the plaintiffs‟ marks.
4.11 The plaintiffs‟ VERIZON trademark, vide judgment dated 11th July, 2023 in CS(COMM) 220/2023, has been recognised as a „well-known‟ trademark as per Section 2(1)(zg) of the Trade Marks Act, 1999. Therefore, the plaintiffs‟ VERIZON Trademarks have the widest amplitude of protection under law and any misuse of identical or deceptively similar marks for even dissimilar goods and services is prohibited by law.
5. Having heard learned counsel for the plaintiff, this Court notes that vide order dated 24th February, 2023, the defendant no.1 was restrained from dealing or using in any manner, the trademark VERIZON and or any other mark deceptively similar to the plaintiffs‟ marks.
6. Subsequently, this Court vide order dated 14th July, 2023, confirmed the ex-parte ad interim order, pending disposal of the suit.
7. Despite service, no written statement has been filed by defendant no.1. Upon expiry of the statutory period for filing the written statement, the right of defendant no.1 to file written statement was closed vide order dated 07th May, 2024.
8. It is to be noted that this Court allowed I.A. 7794/2023 filed under Order I Rule 10(2) CPC, whereby, the then defendant no.3, i.e., National Internet Exchange of India (“NIXI”), was deleted from the array of parties, vide order dated 14th July, 2023. Further, vide order dated 02nd July, 2024, the then defendant no.2, i.e., Dreamscape Networks International Pte Ltd, was also deleted from the array of parties, being a proforma party. Thus, defendant no.1 and defendant no.4 (now defendant no.2), i.e., Ministry of Electronics and Information Technology (“MeITY”), are the only parties in the present suit. However, defendant no.2 is a proforma party.
9. This Court records the submission of the plaintiffs that their mark VERIZON has been recognised and declared as a “well-known” trademark in terms of Section 2(1)(zg) and Section 11(6) of the Trade Marks Act,
1999.
10. Learned counsel appearing of the plaintiff draws the attention of this Court to judgment dated 11th July, 2023 in CS(COMM) 220/2023 passed by a Coordinate Bench of this Court, declaring the mark VERIZON of the plaintiff as “well-known”. The relevant portion of the said judgment, is reproduced as under: “xxx xxx xxx
4. Having seen the material on record, and heard Ms Mittal, vis-àvis the criteria envisaged by Section 11(6) for a trade mark to qualify as a “well known trade mark”, I am satisfied that the trademark VERIZON satisfies the said criteria, an merits being regarded as a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act.
5. This Court, accordingly, declares that the mark VERIZON is a well-known trademark when used in the context of providing telecommunication services, within the meaning of Section 2(1)(zg) read with Section 11(6) of the Trade Marks Act. xxx xxx xxx” (Emphasis Supplied)
11. Further, the attention of this Court has been drawn to the chart comparing the similarities between the plaintiff‟s manner of use of the VERIZON Trademarks and the defendant no.1‟s mark, which is reproduced as under:
12. On perusal of the aforesaid chart, it is abundantly clear that the defendant no.1 has infringed upon the registered marks as well as domain name of the plaintiff, by using the impugned mark and domain name.
13. An average consumer, relying on general perception without scrutinizing the defendant‟s background, is likely to perceive a connection or affiliation between the defendant and the plaintiff. The use of the identical trademark by defendant no.1 is bound to cause confusion and deception in the minds of the public and members of the trade, and further create a false association with the plaintiff‟s registered and well known trademarks.
14. Therefore, considering the fact that the plaintiffs‟ mark VERIZON has attained the status of a well-known mark, the said trademark deserves the highest degree of protection, from being copied and taken undue advantage of.
15. Holding that “well-known” marks require a higher degree of protection as the same are more likely to be subjected to piracy, the Division Bench of this Court in the case of Hamdard National Foundation (India) and Another Versus Sadar Laboratories Pvt. Ltd., 2022 SCC OnLine Del 4523, has held as follows: “xxx xxx xxx
63. As noted above, the trademark „ROOH AFZA‟ has been used in respect of the appellant‟s product for over a century. Prima facie, it is a strong mark. It is also well settled that the requirement of protection varies inversely with the strength of the mark; the stronger the mark, the higher the requirement to protect the same. Trademarks serve as source identifiers. It is also well-settled that in case of a well-known mark, which has acquired a high degree of goodwill, the mark requires higher protection as it is more likely to be subjected to piracy from those who seek to draw an undue advantage of its goodwill. In the present case, the appellants claim that the trademark „ROOHAFZA‟ is a well-known mark.
64. In Planters Nut & Chocolate Co. v. Crown Nut Co., the United States Court of Appeals for the Federal Circuit had observed that a mark‟s fame is an incentive for competitors “to tread closely on the heels of a very successful trademarks”. In cases of a weak trademark, where the trademark has not acquired significant goodwill, a higher degree of similarity is permissible. However, strong marks which have acquired immense goodwill are vulnerable from competitors seeking to ride on their goodwill. Such marks require a higher degree of protection and it is necessary to ensure that the marks of a competitor do not come close to the said senior marks. xxx xxx xxx” (Emphasis Supplied)
16. The defendant no.1‟s failure to file its written statement within the maximum statutory period of 120 days and the closure of defendant‟s right to file the written statement vide order dated 07th May, 2024, demonstrates the lack of defence of its infringing activities, with respect to the plaintiffs‟ “well-known” mark. Thus, there is no prospect of the defendant no.1 to successfully defend any claim initiated against it. Further, in view of the declaration of the mark of the plaintiffs as well known and in view of the similarity of the marks of the plaintiffs and defendant no.1, this Court finds no compelling reason to decide the dispute after recording oral evidence of the parties.
17. The assertions made in the plaint have remained unchallenged by the defendant despite being granted sufficient opportunities by this Court. Hence, the averments in the plaint are deemed to be admitted.
18. Considering the aforesaid discussion, this Court is of the view that the plaintiffs are entitled to a decree under Order XIII-A of the Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, 2015, as the said provision empowers this Court to pass a summary judgment, without recording evidence, if it appears that the defendant has no real prospect of defending the claim. Considering the facts of the case, this Court is of the view that a clear case of infringement and passing off is made out in the present case. No purpose would be served in directing the plaintiffs to lead ex-parte evidence. The defendants have no real prospect of defending the claim of the plaintiffs, in the absence of any written statement. Thus, the present case is a fit case for passing a summary judgment in terms of Order XIII-A CPC, as applicable to commercial disputes, read with Rule 27 of the Delhi High Court Intellectual Property Division Rules, 2022.
19. Considering the fact that the plaintiffs are the registered owner of the VERIZON Trademarks and the said mark having been declared “wellknown”, and none having entered appearance for the defendant no.1, no explanation or justification has been put forth by the defendant for adoption and use of identical trade mark, as that of the plaintiffs.
20. Accordingly, the present application is allowed and the suit is decreed in favour of the plaintiffs and against the defendants, in terms of the following directions:
I. A decree of permanent injunction is passed restraining the defendant no. 1, its directors, partners, proprietors, principal officers, servants, agents and distributors and all others acting on their behalf, as the case may be, from providing, marketing, selling, offering, or making for sale, or any services, or in any manner using the impugned mark Verizon mark or using any other mark identical or deceptively similar to the plaintiffs' trademarks 'VERIZON',, and other marks containing, or comprising of, the trademark VERIZON, leading to infringement/ passing off/ dilution and unfair competition of the plaintiffs‟ trademarks, trading name and logo.
II. Defendant no. 2 is directed to transfer the impugned domain name www.verizonglobal.in to the plaintiffs.
III. Plaintiffs are entitled to actual Costs of the suit.
21. The plaintiffs shall file bill of Costs in terms of Rule 5 of Chapter XXIII of the Delhi High Court (Original Side) Rules, 2018, within a period of two months from today. As and when the same is filed, the matter will be listed before the Taxing Officer for computation of Costs.
22. Decree sheet be drawn up.
23. The present suit, along with pending applications, is accordingly disposed of. MINI PUSHKARNA, J NOVEMBER 13, 2024