Verizon Trademark Services LLC & Ors. v. Vikash Kumar

1. The plaintiffs seek recognition of the mark VERIZON, used by it for providing telecommunication services, as a well-known trademark within the meaning of Section 2(1)(zg)1 of the Trade Marks Act, 1999. The criteria to be borne in mind while deciding whether a particular mark qualifies to be declared “well known” stand delineated in Section 11(6)2. Data, which would be relevant in deciding the (zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person during the mark in relation to the first-mentioned goods or services. (6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including – prayer in terms of Section 11(6) of the Trade Marks Act, 1999, has been placed on record in the form of a tabular statement. The statement is headed by a map which indicates that the plaintiffs are providing telecommunication services in over 210 countries, which includes 2G, 3G, 4G and 5G voice and messaging services.

2. Ms. Vaishali Mittal submits that the plaintiffs satisfy the requirement of each of the sub-clauses of Section 11(6) of the Trade Marks Act, which she seeks to demonstrates thus:

(i) Apropos Section 11(6)(i), Ms. Mittal submits that mark is recognised since its inception in 2001. As a result of its promotion the plaintiffs have five world class facilities across Chennai, Hyderabad, Bengaluru. The plaintiffs also claim to hold over 100 patents in India. It has also been part of multiple CSR initiatives and has received various awards and accolades.

(ii) Qua clauses 6(ii) and (iii), Ms Mittal submits that the plaintiffs have been in the Indian market for 23 years with one of the earliest Indian trade mark registrations dating back to 3 June 2000. The plaintiffs have placed on record the revenue

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or generated through its operations from financial year 2013 to

2022. The revenue generated by the plaintiffs in the FY 2021 to 2022 was to the tune of ₹ 7866 million. The plaintiffs have also placed reliance on the worldwide advertisement expenditure incurred by it in its annual report.

(iii) With respect to Section 11(6)(iv), Ms. Mittal submits that the trademark “VERIZON” is registered in India in 15 classes, being Classes 9, 14, 16, 18, 24, 25, 38, 35, 37, 38, 39, 42, 43 and 45. VERIZON, as a trademark, is also registered in 200 countries. The plaintiffs operate the websites www.verizon.com, www.verizon.in, www.verizontenterprise.com and www.verizonbusiness.com.

(iv) Section 11(6)(v) requires the record of successful enforcement of rights in trade mark in respect of which the recognition as well-known mark is sought. Ms. Mittal has placed on record 24 orders passed by this Court wherein this Court has protected plaintiffs’ rights in VERIZON as a trademark. The mark VERIZON was recognised as well-known mark in Case D2014-1994 before the WIPO Arbitration and Mediation Center.

3. Relevant documents, vouchsafing the aforesaid assertions are on record and Ms. Mittal has invited my attention thereto. I have carefully scrutinized the corroborative data provided by the plaintiffs.

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 trader 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.