Delhi High Court
Verizon Trademark Services Llc & ... vs Vijay Patel & Ors on 23 October, 2017
$~OS-2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 23.10.2017
+ CS(COMM) 353/2016 & IA 17900/2014
VERIZON TRADEMARK SERVICES LLC & ORS..... Plaintiffs
Through Mr.Pravin Anand, Ms.Vrinda
Gambhir and Mr.Siddhant Chamola,
Advs.
versus
VIJAY PATEL & ORS ..... Defendants
Through None
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J.(ORAL)
1. Plaintiffs have filed the present suit seeking a decree of permanent
injunction to restrain the defendants from manufacturing, selling etc. the
products of the defendants under the trademark/name 'VEZION' and
logo or otherwise deceptively similar to the marks of the plaintiffs, including
as a part of a domain name or company name, leading to infringement of the
plaintiffs' registered VERIZON trademark; and also an order is sought to
restrain the defendants from dealing with the goods with the said trademark
leading to passing off of the defendants' goods as that of the plaintiffs; and
an order is also sought to transfer of the impugned domain name
www.vezion.in . Other connected reliefs are also sought.
2. As per plaint, Plaintiff No. 1 is a Limited Liability Company
organized and existing under the laws of Delaware, USA, with its principal
CS(COMM) 353/2016 Page 1 of 6
place of business at 1320, North Court House Road, 9 th Floor, Arlington,
Virginia - 22201, USA. Plaintiff No. 1 is an intellectual property holding
company and the proprietor of several trademark registrations consisting of
or incorporating the trademark VERIZON. Col. J. K. Sharma is the
Constituted Attorney of the Plaintiffs (Plaintiff No.1, Plaintiff No.2, Plaintiff
No.3, Plaintiff No.4 and Plaintiff No.5 are collectively referred to as the
"Plaintiffs") and is authorised to sign and verify the pleadings and institute
the present suit on their behalf.
3. Plaintiff No.1 of the Verizon Group of companies 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. Plaintiff No.2 by virtue of clause 1
(A) of the exclusive licence agreement entered with Plaintiff No.l has the
exclusive right to sub licence and permit exploitation by sub licensees of the
Trade mark VERIZON. Plaintiff No.2 has thus further granted exclusive sub
licenses by virtue of the aforesaid clause to Plaintiffs No.3, 4 and 5. The
Plaintiffs have also set up group companies in India, being Plaintiff No.3,
PlaintiffNo.4 and Plaintiff No. 5, having offices in several Indian cities
including New Delhi, Mumbai, Chennai, Bangalore and Hyderabad.
4. In the year 2000, the Plaintiffs adopted the trademark and trade name
VERIZON in relation to its operations internationally. It is stated that the
Plaintiffs' trade mark VERIZON is inherently distinctive and was coined by
the Plaintiffs as a name for its group of companies from the Latin word
Veritas which connotes certainty and reliability, and "horizon" which
signifies forward-looking and visionary which reverberates the genesis of the
Plaintiffs' company name.
CS(COMM) 353/2016 Page 2 of 6
5. Ever since the adoption of the VERIZON trademark, use of the
logo by the plaintiffs, the Plaintiffs are said to have extensively,
continuously and successfully used the trademark and trade name VERIZON
in an uninterrupted manner so as to acquire a strong secondary significance
in the trademark and trade name VERIZON. Further, it is submitted that the
use of the trademark and trade name VERIZON as a trading style further
cements the association of the mark and name VERIZON with the Plaintiffs.
6. The Plaintiffs' trademark and trade name VERIZON is said to have
developed a formidable reputation worldwide based on the high quality
products and services provided by them to a wide range of customers around
the world, as hereinabove elaborated. The Plaintiffs have been said to be
recording large sales of its products and services all over the world,
including in India. The revenues generated by the Plaintiffs are tabulated
below:
Year Revenues
(m Billions US$)
2001 67.2
2002 67.3
2003 67.8
2004 71.3
2005 75.0
2006 88.2
2007 93.5
2008 97.4
CS(COMM) 353/2016 Page 3 of 6
2009 107.8
2010 106.6
2011 110.9
2012 115.8
Extracts of the plaintiffs' annual reports for the few years are filed in
the present proceedings.
7. The Plaintiffs are said to have widely promoted their products and
services under the VERIZON Trademarks and trade names across the world,
including in India on a regular basis through newspapers and magazines
having international reach and circulation. The Plaintiffs' claim to have spent
billions of US dollars on advertising and promoting their products and
services under the VENZON trademarks and trade names. The advertising
spends of the Plaintiffs for the past few years for their VERIZON
Trademarks and trade names around the world are stated as under:
Year Advertisement
expenses
(worldwide)
2007 $2.46 Billion
2008 $2.75 Billion
2009 $3.02 Billion
2010 $2.45 Billion
2011 $2.52 Billion
2012 $2.38 Billion
8. The Plaintiffs' products and services are said to be available in over
150 countries around the world, including in India. It is submitted that the
CS(COMM) 353/2016 Page 4 of 6
Plaintiffs commenced their activities in India in the year 200l through
Plaintiff No. 3. The commencement of the Plaintiffs' operation in India was
said to have been extensively covered in the print and visual media and
several National dailies, in their print and internet editions, carried articles
announcing the entry of the Plaintiffs in India.
9. It is claimed that in India, the plaintiffs are the proprietors of the
various trademark registrations as detailed in para 19 of the plaint. It is also
stated that the plaintiffs are the proprietors of the several domain names as
stated in para 21 of the plaint.
10. It is stated that defendants are said to have engaged in importing and
selling mobile phones handsets and using the logo which is deceptively
similar to the plaintiffs' logo as stated in para 23 of the plaint. The plaintiffs
are said to have become aware of the impugned activities of the defendants
in January, 2014. It is urged that the defendants are carrying out the activities
with mala fide intention and erroneously adopted a nearly identical and
deceptively similar trademark as that of the plaintiffs. Similarly, it is also
sought to register the impugned trademark logo under class 09. It is
also the case of the plaintiffs that they have been using their trademark logo
continuously and extensively since 2000 and have common law rights
therein by virtue of their long, continuous and extensive use of the said
trademarks. Hence, the present suit was filed.
11. The matter was compromised between the plaintiffs and defendant
Nos.1 to 3. On 25.04.2016, this court allowed I.A. No.4109/2016 and passed
a decree in terms of the compromise application against defendants No.1 to
CS(COMM) 353/2016 Page 5 of 6
3. The said suit survives against defendant Nos.4 and 5. The plaintiffs were
allowed to lead ex-parte evidence for the same. The plaintiffs have led the
evidence of PW1 Sh.Pankaj Ahuja. In his evidence by way of affidavit,
Sh.Pankaj Ahuja has placed on record 23 documents which have been
marked as Ex. PW1/1 to Ex.PW1/23.
12. Keeping in view the above un-rebutted evidence placed on record by
the plaintiffs it is clear that the plaintiff has statutory other legal right on the
trade mark and . The defendant 4 & 5 by their acts are infringing
the rights of the plaintiff. The plaintiff have also proved loss and damages
suffered by them.
13. Hence a decree is passed in favour of the plaintiffs and defendant
Nos.4 and 5 restraining the said defendant Nos.4 and 5 in terms of the prayer
para 35(i), (ii), (iii) and (iv). The plaintiffs are also entitled to damages of
Rs.5 lacs and cost of the suit.
14. The suit is disposed of as above. All the pending IAs., if any, are also
disposed of.
JAYANT NATH, J.
OCTOBER 23, 2017/v
