India: Delhi High Court in an ex-parte suit stops short -of declaring Verizon as a Well-Known Mark

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Source: www.delhihighcourt.nic.in

In the instant case, the Delhi High Court granted permanent injunction against Parth Solanki (hereinafter referred to as the ‘Defendant’) from infringing or in any manner using Verizon’s (hereinafter referred to as the Plaintiff) mark. Also, punitive damages were not awarded to the Plaintiff because the Plaintiff was not able to prove the damages. A noteworthy observation made by the Court in the case was that VERIZON (the Plaintiff’s mark) satisfied the criteria of a well-known trademark as prescribed under Section 2(1)(zg) of Trademark Act, 1999 read with Sections 11 (6), (7) and (8) of Trademark Act. However, it did not pass any judgement on the point as it was not contested by the Defendants at all.

 

Brief Facts

  • Plaintiff No. 1 is the proprietor of the trademark VERIZON.

  • Plaintiff No. 2 is the licensee of the said trademarks in connection with various products and services, including goods and services related to communications, real estate, development and construction. It also has the right to sub-license and permit use and exploitation of the trade mark VERIZON by such sub-licensees.

  • Plaintiff No. 3 is the sub licensee of Plaintiff No. 2.

  • It is stated in the plaint that the Plaintiffs have numerous trademark registrations in India as well as globally.

  • 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 alleged 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.

Issue

  • Is the Plaintiff’s mark VERIZON a well-known mark?

  • Are Defendants guilty of infringement of trade marks, passing off and dilution?

Plaintiff’s Argument

  • It was stated that the said trademark was adopted in the year 2000. Since then, the Plaintiff’s claim to have been using the mark extensively, continuously and successfully in an uninterrupted manner.

  • It was also stated that the trade mark VERIZON is inherently distinctive and was coined by the Plaintiffs from the Latin word ‘Veritas’ and ‘Horizon’.

  • It was claimed that they have spent billions of US Dollars on advertising and promoting their products and services under the VERIZON trademarks and trade names.

  • It is argued that the Defendants trademark VARIZON is deceptively and phonetically similar to the registered trademark of the Plaintiffs thereby misleading the public at large.

  • It was also argued that the Defendants are riding over the reputation of the Plaintiffs because of which it is likely to suffer irreparable loss and reputation.

  • It was contended that the Defendants’ unauthorized and unjustifiable use of the Plaintiffs’ trademark VERIZON in relation to their business activities clearly amounts to infringement and dilution.

Defendant’s Argument

 

The Defendant did not appear and the matter proceeded ex-parte.

 

Court’s Judgement

  • Infringement and Malafide Use: The Court agreed that the Defendants were using the mark without any explicit permission or authorization, based on the evidence on record. Thus, the malafide nature of use was accepted. Further, regarding infringement it stated that ‘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’. Thereby, accepting the claim of infringement.


  • Ex Parte: The Court accepted the evidences of the Plaintiff as they went unrebutted and accepted the claim of infringement by the Plaintiff against the Defendant. While discussing this point the Court threw light on the Supreme Court’s observation in Ramesh Chand Ardawatiya v. Anil Panjwani [1], wherein it was said that ‘………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’


  • Damages: The Court took into consideration the judgements in Super Cassettes Industries Private Limited v. HRCN Cable Network [2], wherein it was held that ‘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[3] , and also the five principles in Cassell & Co. Ltd. v. Broome [4]. 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).....’. Thus, the Court came to a conclusion that any damages would not be awarded to the Plaintiff as they have not lead to any evidence with respect to the quantum of damages suffered by them.


  • Well–Known Nature: The Court in Para 15 of the judgement agreed with the Plaintiff’s claim and stated 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’. Further, the Court stated that since the proceedings were ex parte, therefore, it did not pass any order regarding the well-known nature of the Plaintiff’s mark. Also, it pointed out that ‘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’.

Thus, in the light of above reasons a permanent injunction against the Defendants was granted.

 

 

_______________________________

[1] AIR 2003 SC 2508

[2] CS(COMM) 48/2015 dated 09th October, 2017

[3] [1964] 1 All ER 367

[4] 1972 AC 1027

 

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