The Single Bench of the Delhi High Court in the case of Whitehat Education Technology Private Limited vs Vinay Kumar Singh consisting of Justice Amit Bansal in a case of Trademark Infringement between WhiteHat Jr. and WhateHat Sr. directed the suspension and operation of whitehatsr.in and to take down the said domain name.
Facts
This suit was filed seeking a permanent injunction restraining infringement of trademarks, passing off, and other ancillary reliefs.
Plaintiff company is an Edutech start-up offering online education services, which was acquired by Think & Learn Private Limited in August 2020. It has 'WhiteHat Jr' and its derivatives registered in class 38 and other classes. It owns the 2018 domain "whitehatjr.com" Due to exclusive and extensive use, the plaintiffs' trademark is now a "well-known" trademark.
The complainant found www.whitehatsr.in in October 2022. Defendant provides digital marketing services under the mark "WHITEHAT SR" The disputed marks are used in the defendant's 2020 domain name, "whitehatsr.in." The defendant uses the marks on social media platforms as well.
Procedural History
The plaintiff sent the defendant a legal notice on 4 October 2022 to stop using the disputed marks. On 18 October 2022, the defendant accepted the plaintiff's intellectual property rights in its 'WhiteHat Jr' trademarks and claimed that the impugned marks are different from the plaintiff's and are being used for different activities, i.e., consultation services.
Observations of the Court
The Bench opined that the domain name of the plaintiff and the defendant shows that the marks being used by the defendant are deceptively similar to those of the plaintiff. The replacement of the suffix “Sr” in ‘WhiteHat Jr’ would not result in a material difference so as to distinguish the marks of the defendant from those of the plaintiffs.
In the prima facie opinion of the Court, the consumers will be misled that the defendant is in some manner associated/affiliated with the plaintiff or the services are connected to that of the plaintiff. So, a prima facie case was made out on behalf of the plaintiff. Irreparable harm and injury would be caused to the goodwill and reputation of the plaintiff if the defendant was allowed to continue using the impugned marks.
Order
Until the next hearing, the defendant, its agents, representatives, and/or all others acting on its behalf were restrained from using "WHITEHAT SR" or any deceptively similar variant as a trademark, tradename, domain name, as part of its email address/es, or in any other manner that infringes the plaintiff's trademarks. Godaddy.com LLC was ordered to take down the defendant's website/domain name, whitehatsr.in. The defendant was also ordered to remove all infringing Facebook, Instagram, and LinkedIn pages. Compliance Report under O39R3 CPC was to be filed in five days. This case was set for pleadings on 2 February 2023. It was to be heard by the court on 21 March 2023.
Case: Whitehat Education Technology Private Limited vs Vinay Kumar Singh
Citation: CS(COMM) 856/2022
Bench: Justice Amit Bansal
Decided on: 12th December 2022
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