Verizon Trademark Services Llc & ... vs Bhabani Sankar Swain & Ors
2016 Latest Caselaw 5704 Del

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*       IN THE HIGH COURT OF DELHI AT NEW DELHI
+       CS(OS) 1730/2012 & IA Nos.21744/2012, 18271/2014
        VERIZON TRADEMARK SERVICES LLC
        & ORS.                                              .... Plaintiffs
                    Through : Ms Vaishali Mittal, Advocate.
                    versus
        BHABANI SANKAR SWAIN & ORS               ..... Defendants
                    Through : None being ex parte.

        CORAM:
        HON'BLE MR. JUSTICE VIBHU BAKHRU
                     ORDER

        %            31.08.2016

VIBHU BAKHRU, J

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.

3. Mr Pankaj Pahuja (PW1) 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 PW1 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 PW1 has

affirmed that the said trademarks were being used internationally in relation

to the business of the Plaintiffs since 2000. PW1 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. PW1

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            Class         Date of Issue
              Registration no.
              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          Class            Date of Issue
              Registration no.
              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,   07.12.2005
                                 35, 38 & 42
              1240037            36               26.09.2003

PW1 has also furnished certificates of trademark registration (Ex. PW1/11

(colly)) for the trademark „VERIZON‟, the details qua which are mentioned

as under :-

            Trademark            Class            Date of Issue
            Registration no.
            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, PW1 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, PW1 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. PW1 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.

PW1 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 . PW1 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. PW1 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, PW1 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. PW1 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.

VIBHU BAKHRU, J AUGUST 31, 2016 RK