Verizon Trademark Services LLC & Ors. v. Bhabani Sankar Swain & Ors.

1. The present suit has been filed by the plaintiffs, inter alia, seeking a decree of permanent injunction restraining the defendants from directly or indirectly dealing in goods and/or services under the trademark „VERIZON‟ or any other mark which is deceptively similar to the plaintiff no. 1's trademark „VERIZON‟. The plaintiffs also pray for an order for rendition of accounts of profits earned by the defendants and a decree of `20,05,000/towards damages against the defendants.

2. Although the defendants were served, however, they did not enter appearance and participate in the present proceedings. Accordingly, they were proceeded ex parte on 13.08.2015. 2016:DHC:6174 CS(OS) 1730/2012

3. Mr Pankaj Pahuja (PW[1]) has filed an affidavit deposing on behalf of the Plaintiffs. Ex. PW1/1 is the certified copy of the letter of authorization issued by the Plaintiffs, inter alia, authorizing PW[1] take any steps that are necessary in furtherance of the final disposal of the present proceedings.

4. The Plaintiffs are stated to be among the world's leading providers of communications and entertainment products and services. The Plaintiffs aver 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 in India, and provide advanced IP, data, voice and wireless solutions to large business and government customers. The plaintiff no. 1 is the proprietor of several trademark registrations consisting of or incorporating the trademark „VERIZON‟ (hereinafter collectively referred to as the „VERIZON Trademarks‟) and PW[1] has affirmed that the said trademarks were being used internationally in relation to the business of the Plaintiffs since 2000. PW[1] has affirmed that Plaintiff no. 1 has granted an exclusive license to Plaintiff no. 2 for the use of the VERIZON Trademarks in connection with various products and services including communications and entertainment products and services. PW[1] has also affirmed that Plaintiff no. 2 has further granted exclusive sub licenses to Plaintiffs Nos. 3, 4 and 5 by virtue of the exclusive license agreement entered with Plaintiff No. 1 which confers on Plaintiff no. 2 the exclusive right to sub licence and permit exploitation by sub licensees of the trademark „VERIZON‟.

5. The mark „Verizon‟ is a registered trademark and the same is evidenced by Ex. PW1/11(Colly) which are certificates for trademark registration for the trademark ' ‟, the details of which are given as under:- Trademark Registration no. Class Date of Issue 1238077 41 18.09.2003 1238078 42 18.09.2003 1238079 36 18.09.2003 1055919 16 01.11.2001 1238081 35 18.09.2003 1238080 37 18.09.2003 1238076 38 18.09.2003 1240041 42 26.09.2003 Certificates of trademark registration (Ex. PW1/11(Colly)) have also been produced for the trademark „ ‟, the details of which are given as below:- Trademark 1240038 37 26.09.2003 963160 9 12.10.2000 1240036 35 26.09.2003 1240040 41 26.09.2003 963161 16 12.10.2000 1405268 9, 14, 16, 28, 35, 38 & 42 07.12.2005 1240037 36 26.09.2003 PW[1] has also furnished certificates of trademark registration (Ex. PW1/11 (colly)) for the trademark „VERIZON‟, the details qua which are mentioned as under:- Trademark 1238072 41 18.09.2003 1238069 36 18.09.2003 1238068 35 18.09.2003 1238071 38 18.09.2003 1238070 37 18.09.2003

6. In addition to the above, PW[1] has also furnished printouts from the website of the United States Patent and Trademark Office evidencing registration of the trademarks and in the United States of America which are exhibited as Ex. PW 1/24(Colly). Further, PW[1] has also produced printouts from the website of Intellectual Property Office (UK) evidencing registration of the trademarks, and in United Kingdom as Ex. PW 1/24 (Colly).

7. PW[1] has affirmed that the plaintiffs in the month of April, 2012 became aware that the domain name www.verizon4u.com was operated by the defendants. The plaintiffs soon thereafter learnt that the defendants had also applied for registration of the trademark bearing no. 2062062. PW[1] has produced business cards used by the defendants, a sample of a booklet of water purifier sold by the defendants and a photograph of an office of the defendants, collectively exhibited as Ex. PW1/15, all of them containing the mark. PW[1] has also furnished extracts from the defendants‟ website through which defendants advertise their goods and services using the domain name www.verizon4u.com as Ex. PW1/18 and Ex. PW1/19. PW[1] affirms that in the month of October, 2015, the plaintiffs came across the website www.verizoninfratech.com which is used by the defendants after discontinuing their erstwhile domain name www.verizon4u.com. An extract of the website of the defendants with the domain name www.verizoninfratech.com has been produced as Ex. PW1/23(Colly).

8. Further, PW[1] affirms that the trademark „VERIZON‟ has since its adoption been extensively and continuously used by the plaintiffs in an uninterrupted manner so as to acquire a strong secondary significance in the trademark and trade name „VERIZON‟ and to cause the same to be seen as exclusively connoting the products, services and the business of the plaintiffs and no one else. PW[1] further affirms that the plaintiffs have taken extensive steps in order to promote their products and services under the VERIZON Trademarks all across the world including India.

9. It is amply clear that the trademark is deceptively similar to the plaintiffs‟ VERIZON Trademarks. The defendants are using the mark in relation to construction and real estate services as well as the manufacture and sale of water purifier systems. Plaintiffs‟ trademarks „VERIZON‟ and are registered in class 36 and 37 in respect of construction and real estate related services.

10. It has been further affirmed that the word „VERIZON‟ is a combination of the latin word veritas (certainty and reliability) and horizon (looking forward and visionary). Thus, „VERIZON‟ is a coined word. It is, therefore, established that defendants have infringed the plaintiffs‟ VERIZON Trademarks. It is also apparent that the defendants are attempting to pass off their goods as that of the plaintiffs‟ as there is no explanation as to why the defendants have adopted the trademark in question.

11. It is also apparent that the use of the trademark is not honest. The intention of the defendants appears to be to use the plaintiffs‟ goodwill associated with the plaintiffs‟ VERIZON Trademarks. In the aforesaid circumstances, the plaintiffs are entitled to a decree of permanent injunction as prayed for by the plaintiffs.

12. Further, the plaintiffs have not been able to establish any loss caused to them by use of the trademark „VERIZON‟ by the defendants. In view of the aforesaid, it is difficult to hold that the plaintiffs are entitled to damages.

13. In view of the aforesaid, the decree is granted in terms of prayer (i), (ii), (iv) and (v), that is, as under:- “i An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, offering for sale, advertising, directly or Indirectly dealing in any manner with the present goods and/or services of the Defendants under the trademark Verizon and/or any other goods and/or services under the trade mark/name Verizon, or any other mark deceptively similar thereto including as a part of a domain name and/or company name, leading to infringement of the Plaintiffs' registered trademark Verizon as set out in paragraph 14 of the plaint; ii. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with the present goods and/or services of the Defendants under the trademark Verizon and/or any other goods and/or services under the trade mark/name Verizon, or any other mark deceptively similar thereto including as a part of a domain name and/or company name, leading to passing off of the Defendants' impugned goods and/or services as the Plaintiffs'; iv. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with the present goods and/or services of the Defendants under the trademark Verizon and/or any other goods and/or services under the trade mark/name Verizon, or any other mark deceptively similar thereto, including as a part of a domain name and/or company name, leading to dilution of the Plaintiffs' Verizon trade marks as set out in the plaint; v. An order for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, their principal officers, servants and agents, distributors, and all others acting on their behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with the present goods and/or services of the Defendants under the trademark Verizon and/or any other goods and/or services under the trade mark/name Verizon, or any other mark deceptively similar thereto, including as a part of a domain name and/or company name, leading to unfair competition on part of the Defendants.”

14. The plaintiffs are also granted reasonable costs of litigation, which are quantified at `2 lakhs.

15. Decree sheet be drawn accordingly. The pending applications stand disposed of.