Verizon Trademark Services Llc & ... vs Mr Parth Solanki & Anr
2017 Latest Caselaw 6296 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+     CS(COMM) 1434/2016 & I.A. 13032/2016

      VERIZON TRADEMARK SERVICES
      LLC & ORS             ..... Plaintiffs
                   Through: Mr. Siddhant Chamola,
                            Advocate
                   versus

      MR PARTH SOLANKI & ANR                 ..... Defendants
                   Through:                  None

%                              Date of Decision: 9th November, 2017

CORAM:
HON'BLE MR. JUSTICE MANMOHAN

                           JUDGMENT

MANMOHAN, J (Oral):

1. Present suit has been filed for declaration of well known trademark, permanent injunction restraining infringement of trademarks, passing off, dilution, damages, rendition of accounts, delivery up etc. The prayer clause in the suit is reproduced hereinbelow:-

"67. In light of the above, it is therefore prayed before this Hon‟ble Court that it may be pleased to pass the following reliefs:

(i) A decree of permanent injunction restraining the Defendants, their partners or proprietors, principal officers, servants, agents and distributors and all others acting on its behalf as the case may be from

provision of web-hosting, website development, domain registration, content management, search engine optimization, customer relationship management, social networking and any other services, in addition to selling, offering for sale, advertising and directly or indirectly dealing in any manner with the business of web-hosting, website development, domain registration, content management, search engine optimization, customer relationship management, social networking etc. and any other goods and/or services using the trademarks

, and , the trade name Varizon Tech and/or Varizon Technologies, the domain name www.varizontech.com, or any other trademark and name which are either identical with or consist of a designation which is deceptively similar to the Plaintiffs‟ well-known and Verizon trademarks, logos and name and any other mark deceptively similar thereto leading to:

(a) Infringement of the Plaintiffs‟ trademark VERIZON and VERIZON Logos in relation to website hosting, website development and related services as set out in paragraph 50 above;

(b) Passing off of the Defendants‟ services or products as emanating from or belonging to the Plaintiffs by using marks, names and logos which are identical and/or deceptively similar to the Plaintiffs‟ trademark "VERIZON" and the VERIZON Logos as set out in paragraph 55 above;

(c) Dilution of the Plaintiffs‟ well known trademark VERIZON and the VERIZON Logos as set out in paragraph 56 above;

(d) Unfair Competition on part of the Defendants vis a vis. the Plaintiffs‟ well known word trademark VERIZON and the VERIZON Logos as used in relation to the Defendants‟ web- hosting, website development and other related services etc. as set out in paragraph 57 above;

(ii) To pass an order of declaration, declaring the Plaintiffs‟ trademark VERIZON and the VERIZON Logos as "well-known" trademarks within the meaning of Section 2(1) (zg) read with Section 11(6) of the Trademarks Act, 1999;

(iii) An order for the transfer in favour of the Plaintiffs, of the impugned domain name www.varizontech.com and/or any other domain name owned by the Defendant comprising of the Plaintiffs‟ trademark VERIZON or any other mark being deceptively similar thereto;

(iv) An order for the delivery-up of all impugned materials of the Defendants, including the products, their packaging, container boxes, labels, wrappers, stickers, and stationery or any other material of the Defendants containing the infringing trademarks trademark VARIZON; the , and

and logos or any other

trademarks deceptively similar thereto in relation to their provision of web-hosting, website development other related products or services;

(v) An order for rendition of accounts of profits illegally earned by the Defendants on account of use of the trademark VARIZON and the VARIZON,

, and , logos in relation to their provision of website development, web-hosting and other related products or services,

and a decree for the amount so found be passed in favour of the Plaintiffs;

(vi) An order for damages in the present proceedings;

(vii) An order for costs in the present proceedings;

Any other order as this Hon‟ble Court may deem fit in the facts and circumstances of the present proceedings."

2. At the outset, learned counsel for plaintiffs give up prayers (iv) and (v) of the prayer clause to the suit. The statement made by learned counsel for plaintiffs is accepted by this Court and plaintiffs are held bound by the same.

3. Vide order dated 21st October, 2016 this Court granted an ex- parte ad interim injunction in favour of the plaintiffs and against the defendants. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

"...Accordingly, the defendants, through their partners and proprietors, principal officers, servants, agents and distributors and all others acting on their behalf are restrained from web-hosting, website development, domain registration, content management, search engine optimization, customer relationship management, social networking and any other services, in addition to selling, offering for sale, advertising, directly or indirectly dealing in any manner with the business of web-hosting, website development, domain registration, content management, search engine optimization, customer relationship management, social networking and any other goods and services using the trademarks VARIZON, VARIZON TECH, the domain name www.varizontech.com, or any other trade mark which is identically or deceptively similar including the infringing trade mark VARIZON „word‟ and VARIZON „symbol‟. Plaintiffs shall comply with the provisions of

Order XXXIX Rule 3 CPC within fifteen days from today. Dasti under the signature of Court Master."

4. Since the defendants did not appear despite service, they were proceeded ex-parte vide order dated 21st April, 2017.

5. As per the plaint, the plaintiff no.1 is a Limited Liability Company organized and existing under the laws of Delaware, USA. Plaintiff No.1 is an intellectual property holding company and the proprietor of numerous trademark registrations consisting of the arbitrary and fanciful mark VERIZON. The said mark was adopted by the plaintiff No.1 in 2000 and since March 2000 the plaintiffs have used the said trademark extensively and continuously in an uninterrupted manner in India. Plaintiff No.1 is a part of the VERIZON group of companies which has granted an exclusive licence by virtue of Clause 1 (A) of the Exclusive Licence Agreement to plaintiff No. 2 for the use of trademark VERIZON and the VERIZON logos in connection with various products and services, including communications, real estate, development and construction services. Plaintiff No.2 has further granted a sub-licence to plaintiff No.3.

6. In the plaint it is stated that the plaintiffs are the world's leading providers of communication, entertainment, information technology, website development and security products and services under the trademark VERIZON and the , logo ever since 2000. The plaintiffs have given the details in the plaint of the trade mark along with its logo with a 'check mark' symbol and the word 'VERIZON'. It is further stated that the trademark VERIZON is inherently distinctive and was coined by the plaintiffs from the Latin word 'Veritas' and 'Horizon'.

7. It is stated in the plaint that the plaintiffs have numerous trademark registrations in India as well globally. In India, the plaintiffs have secured registrations in, inter alia, class 42 of the Trade Marks Act, 1999 with respect to web-hosting and web-development related services.

8. It is stated in the plaint that the plaintiffs' trademark and trade name VERIZON has earned stellar reputation worldwide based on the high quality products and services provided by them to a wide range of customers around the world. It is stated that in the Financial Year 2015 the annual revenue generated by the plaintiffs from its business under the mark VERIZON was US$ 131.6 billion and it has incurred expenses of US$ 2.75 billion towards promotion and advertisement.

9. Learned counsel for the plaintiffs states that the defendants are misusing the plaintiffs trademark as part of its (a) trademark (b) trading style (c) domain name and the manner of use of the defendants' mark that includes VARIZON, VARIZON TECH (trading style), , , www.varizontech.com. A brief

comparison between the two marks is given below which clearly evidences infringement on part of the Defendants under the provisions of the Trademarks Act, 1999:-

, and ; its trading name and as part of its domain name www.varizontech.com. He states that the defendant no.1 is the proprietor of the defendant no.2

10. Learned counsel for the plaintiffs states that the defendants, were served with cease and desist letters on two occasions, i.e. dated 20 th May, 2016 and 25th July, 2016, apprising them of their infringing activities and the violation of the plaintiffs' statutory rights.

11. Learned counsel for the plaintiffs states that the defendants are using deceptively similar mark VARIZON which is phonetically similar to the registered trade mark of the plaintiffs with a view to ride upon the goodwill and reputation of the plaintiffs to derive unfair gain. Learned counsel for plaintiffs also contends that the public at large is likely to be misled that the goods/services being provided by the defendants originates from the plaintiffs.

12. He lastly states that the plaintiffs' Verizon trademarks are entitled to protection under the provisions of Section 29(4) of the Trademarks Act, 1999 and the defendants' unauthorized and un- justifiable use of the plaintiffs' trademark VERIZON in relation to their business activities clearly amounts to infringement and dilution of the plaintiffs' registered VERIZON trademarks.

13. The plaintiffs have filed their ex-parte evidence by way of affidavit of Mr. Pankaj Pahuja (PW1).

14. The plaintiffs' witness has proved the certificates for use in Legal Proceedings and registration certificates of the plaintiffs trademarks as Ex.PW1/30 and Ex.PW1/31 respectively. The witness has also proved various orders of this Court enforcing the plaintiffs rights vested in the plaintiffs' trademark VERIZON as Ex.PW1/33. PW1 has also proved extracts from the defendants' activities on the website as available on www.varizontech.com as Ex.PW1/40.

15. Having heard learned counsel for plaintiffs as well as having perused the papers, this Court is of the view that due to extensive worldwide use over substantial period of time, the plaintiffs' VERIZON trademarks have acquired reputation and goodwill in the marks globally as well as in India.

16. From the evidence on record, it is apparent that without any explicit permission or authorisation, the defendants have malafidely been using the plaintiffs trademark VERIZON.

17. Further, as the plaintiffs' evidence has gone unrebutted, said evidence is accepted as true and correct. The Supreme Court in Ramesh Chand Ardawatiya Vs. Anil Panjwani, AIR 2003 SC 2508 has held as under:-

"33. .........In the absence of denial of plaint averments the burden of proof on the plaintiff is not very heavy. A prima facie proof of the relevant facts constituting the cause of action would suffice and the court would grant the plaintiff such relief as to which he may in law be found entitled. In a case which has proceeded ex parte the court is not bound to frame issues under Order 14 and deliver the judgment on every issue as required by Order 20 Rule 5. Yet the trial court should scrutinize the available pleadings and documents, consider the evidence adduced, and would do well to frame the "points for determination" and proceed to construct the ex parte judgment dealing with the points at issue one by one. Merely because the defendant is absent the court shall not admit evidence the admissibility whereof is excluded by law nor permit its decision being influenced by irrelevant or inadmissible evidence."

18. Consequently, the allegation that the trademark VERIZON used by defendants amounts to infringement of plaintiffs trademark, is

correct. The use of the impugned mark by the defendants is bound to cause incalculable losses, harm and injury to the plaintiffs and immense public harm.

19. As far as the prayer with regard to the damages is concerned, this Court is of the opinion that since the plaintiffs have not led any evidence with respect to the quantum of damages suffered by the plaintiffs, the same cannot be granted in light of the Division Bench judgment of this Court in Hindustan Unilever Limited Vs. Reckitt Benckiser India Limited, 2014 (57) PTC 495 [Del][DB]. In fact, this Court recently in Super Cassettes Industries Private Limited Vs. HRCN Cable Network, CS(COMM) 48/2015 dated 09th October, 2017 has held as under:-

"19. However, this Court is not satisfied on the evidence led in the present case that the compensation awarded is inadequate in the circumstances having regard to the three categories in Rookes v. Barnard, [1964] 1 All ER 367 and also the five principles in Cassell & Co. Ltd. v. Broome, 1972 AC 1027. In the event punitive damages are awarded in the present case, it would be an ad-hoc judge centric award of damages, which the Division Bench specifically prohibited in Hindustan Unilever Limited (supra)....."

20. In addition, the plaintiffs have also sought a declaration from this Court regarding the well-known nature of the VERIZON trademarks and logos under section 2(1)(zg) of the Trade Marks Act, 1999.

21. As stated earlier, the Defendants have not contested the present suit and accordingly, they were proceeded ex parte on 21st April, 2017.

Had the Defendants formally contested the Plaintiff's contention, this court could have passed a reasoned and well-weighed order regarding the maintainability of the Plaintiff's claim that the mark VERIZON is well-known.

22. The provisions of section 11(6) - Section 11(8) of the Trade Marks Act, 1999 prescribe the guidelines to evaluate whether a trademark has attained a well-known status.

23. On a prima facie basis, this Court is of the opinion that the mark VERIZON satisfies the criteria prescribed under sections 2(1)(zg) read with sections 11(6), 11(7), 11(8) of the Trade Marks Act, 1999. However, since the Defendants have not contested the proceedings, this Court refrains itself from passing order declaring the VERIZON trademarks and logos as well-known trademarks.

24. Accordingly, present suit is decreed in accordance with the paragraph 67(i), (iii) and (vii) of the plaint along with the actual costs incurred by the plaintiffs. The cost shall amongst others include the lawyers' fees as well as the amounts spent on purchasing the court fees. Registry is directed to prepare a decree sheet accordingly.

MANMOHAN, J NOVEMBER 9, 2017 rs