Verizon Secures Permanent Injunction in Trademark Infringement Case Against VRIZON, Delhi High Court Rules
Case title: VERIZON TRADEMARK SERVICES LLC & ORS. VS VERIZON TRADEMARK SERVICES LLC & ORS.
Case no.: CS(COMM) 407/2023 & I.A. 11201/2023
Dated on: 29th February 2024
Quorum: Hon’ble. MR JUSTICE SANJEEV NARULA
FACTS OF THE CASE
The Plaintiff No. 1 (‘Verizon Trademark Services LLC’), an intellectual property holding company, is the proprietor of numerous trademarks consisting of/ incorporating the mark ‘VERIZON’. Plaintiff No. 1 granted exclusive licence to Plaintiff No. 2 (‘Verizon Licensing Company’) for use of the trademark ‘VERIZON’ as well as the ‘VERIZON’ logos. Plaintiff No.2 then further granted an exclusive sub-license to Plaintiff No. 3 (‘Verizon Communications India Private Ltd.’) in accordance with the terms of the license agreement entered into with Plaintiff No. 1. Plaintiffs are part of the Verizon group of companies, being among the world’s leading providers of, inter alia, communications, information technology and security products/ services. They own and operate one of the most expansive end-to-end global Internet Protocol networks serving more than 2,700 cities in over 150 countries worldwide, including India. Plaintiffs have coined and adopted the mark ‘VERIZON’, derived from the Latin word ‘Veritas’ (connoting certainty and reliability) and ‘Horizon’ (signifying forward looking and visionary), which is used as their trade name. Plaintiffs have filed the present suit for infringement and passing off in respect of their registered trademarks and logos – ‘VERIZON’, Plaintiffs have secured registrations in over 200 countries, with earliest registrations in India dating back to the year 2000. Details of Plaintiffs’ trademark registrations in India under various Classes have been set out at Paragraph No. 28 of the plaint. Plaintiff uses the VERIZON Trademarks for a wide range of products and services primarily in the telecommunications sector. The registrations also suggest that use of the VERIZON Trademarks is not limited to these areas, as the Plaintiffs continue to expand their services and products. Plaintiffs have been using the VERIZON Trademarks extensively, continuously and uninterruptedly since their adoption in and about the year 2000. Further, they have expended heavily towards advertisement and promotion of their goods/ services, details whereof have been delineated at Paragraph No. 16 of the plaint. Consequently, Plaintiffs have acquired substantial goodwill and reputation in their VERIZON Trademarks, which have become a source identifier solely and exclusively for the Plaintiffs’ goods and services. Plaintiffs are aggrieved by the Defendants’ dishonest adoption of the mark/ brand name ‘VRIZON’ [“Impugned Mark”], used in respect of inter alia various household and kitchenware goods. Pursuant to finding Defendants’ trademark application No. 4300781 for registration of the Impugned Mark on a ‘Proposed to be Used’ basis, Plaintiffs issued several cease-and-desist notices, however, no response was received despite attempts to follow up. In such circumstances, the Plaintiffs approached this Court asserting that the Impugned Mark is deceptively similar to their VERIZON Trademarks, thereby amounting to infringement under Section 29(4) of the Trade Marks Act, 1999 [“Act”].
ISSUES
- Whether the Plaintiffs’ “VERIZON” trademarks qualify as well-known trademarks under Section 2(1) (zg) and Section 11(6) of the Trade Marks Act, 1999?
- Whether the Plaintiffs’ “VERIZON” trademarks qualify as well-known trademarks under Section 2(1) (zg) and Section 11(6) of the Trade Marks Act, 1999?
LEGAL PROVISIONS
Section 2(1) (zg) of the Trade Marks Act, 1999:
This section defines a well-known trademark as a mark that has become widely known to the relevant section of the public. This section is relevant in determining the reputation and recognition of the ‘VERIZON’ trademark in India.
Section 11(6) of the Trade Marks Act, 1999:
It lists the factors that must be considered to decide whether a mark is well-known. These include knowledge of the trademark in relevant public sectors, the duration and geographical area of use, the extent of promotion, and the registration status of the trademark in various jurisdictions.
Section 29(4) of the Trade Marks Act, 1999:
This section deals with the infringement of trademarks that are well-known in India, regardless of whether the infringing mark is used for goods or services not similar to those for which the trademark is registered. Are identical with or similar to the registered trademark. Have no due cause. Take unfair advantage of or are detrimental to the distinctive character or repute of the registered trademark.
Order VIII Rule 10 of the Code of Civil Procedure, 1908:
Procedure when a Defendant Fails to File Written Statement: This provision allows the court to pronounce judgment against a defendant who fails to file a written statement within the prescribed time, allowing for ex-parte decisions when defendants do not respond to summons.
Order XIII-A of the Code of Civil Procedure, 1908:
This order permits courts to pass summary judgments without requiring a full trial if it finds that the defendant has no real prospect of defending the claim. This can expedite the resolution of cases with clear-cut issues.
Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022:
Ex-Parte Proceedings and Remedies: This rule guides the court on handling intellectual property cases, including granting injunctions and other remedies, especially when proceedings are ex-parte due to the absence of the defendants.
CONTENTIONS OF THE APPELLANT
Ms. Vaishali Mittal, counsel for Plaintiffs, presses for an ex-parte summary decree in terms of Order VIII Rule 10 read with Order XIII-A of the Code of Civil Procedure, 1908 (CPC). In light of the above, the Court has proceeded to adjudicate the present matter by assessing the Plaintiffs’ case for infringement under Section 29(4) of the Act on the basis of the pleadings and documents on record. Plaintiffs have, through documents, established their ownership over the VERIZON Trademarks, which have been registered under various classes and such registrations continue to be valid and subsisting. Moreover, Ms. Mittal has pointed out that during the course of the present proceedings, a coordinate Bench of this Court, in Verizon Trademark Services LLC & Ors. and Vikash Kumar1, has held the mark ‘VERIZON’ to be a well-known trade mark within the meaning of Section 2(1) (zg) read with Section 11(6) of the Act. Considering the above, and given their significant revenue and marketing expenditure as noted above, Plaintiffs have established their substantial goodwill and reputation in the VERIZON Trademarks. Defendants do not have any registration in respect of the Impugned Mark. In fact, their trademark application No. 4300781, against which opposition was filed by the Plaintiffs, has since been abandoned, and is reflected as such on the Trademark Registry website. Further, Defendants have not received any authorization from the Plaintiffs for their adoption of the Impugned Mark to qualify as ‘permitted use’ in the course of trade. The Defendants’ trademark application seeks registration for ‘VRIZON’ under Class 21, which encompasses household and kitchenware items — a category distinctly separates from the Plaintiffs’ array of goods and services which primarily include communications, information technology, and security solutions. Moreover, the Defendants filed their application in the year 2019 on a ‘Proposed to be Used’ basis. Contrastingly, the Plaintiffs have shown that they have extensively and continuously utilized the VERIZON Trademarks since their inception in the year 2000, thereby affirming their status as the prior user of the mark. Plaintiffs have thus unequivocally established through their pleadings and documentary evidence that the present case meets all the criteria for infringement as outlined in Section 29(4) of the Act The “Identity or Similarity” criterion is conclusively satisfied, owing to the phonetic and visual similarities between Defendants’ Impugned Mark “VRIZON” and the Plaintiffs’ VERIZON Trademarks. The Defendants’ deployment of the Impugned Mark in course of trade, specifically targeting household and kitchenware under Class 21, substantiates the “Use of the Mark” requirement. This application distinctly diverges from the Plaintiffs’ focus on telecommunications and IT services, thus fulfilling the “Goods or Services Not Similar” criterion. 12.3. Moreover, the Defendants’ choice of the ‘VRIZON’ mark, devoid of any justifiable cause shown to the Court, is clearly an attempt to capitalize on the Plaintiffs’ well-established mark and take unfair advantage of the same.
CONTENTIONS OF THE RESPONDENTS
No Appearance Defendants did not appear or file a written statement despite being served with summons, leading to ex-parte proceedings. Trademark Abandonment The defendants’ application for the ‘VRIZON’ trademark was abandoned and listed as such on the Trademark Registry website.
COURT’S ANALYSIS AND JUDGEMENT
In view of the striking similarity between the competing marks, the Defendants’ use of ‘VRIZON’ is bound to mislead the public, thereby diluting the distinctive character and reputation of the Plaintiffs’ registered VERIZON Trademarks. Thus, Defendants’ adoption and use of ‘VRIZON’ also meets the “Unfair Advantage or Detriment” criterion. Plaintiffs have also thoroughly substantiated the reputation of the VERIZON Trademarks in India through their annual reports evidencing revenue generated and promotional expenses. Further, this Court has also affirmed the well-known status of the ‘VERIZON’ mark, reinforcing its significance and protection under the law. In light of the above, the Defendants’ intended use of the Impugned Mark ‘VRIZON’ for products unrelated to those associated with the VERIZON Trademarks renders them liable for infringement claims under Section 29(4) of the Act. Thus, the instant suit is liable to be decreed in favour of the Plaintiffs as per Order VIII Rule 10 read with Order XIII-A of the CPC, as applicable to commercial suits, and Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022. Although Plaintiffs have also sought damages and legal costs in terms of prayers sought at Paragraphs No. 78 (v) and (vi) of the plaint, the Court does not find any reason to grant the same, in view of the fact that the Defendants’ now abandoned trademark application was filed on a ‘Proposed to be Used’ basis, and no evidence of actual use of the Impugned Mark has been placed on record other than a few screenshots of listings on third party e-commerce websites. The prayer for declaration of the VERIZON Trademarks as ‘well-known’ marks is also not being considered by the Court in the present case, given that an ex-parte decree is being passed with no contest by the Defendants. As regards the remaining prayers, Ms. Mittal states that the same are not being pressed in the present proceedings. Accordingly, a decree of permanent injunction is granted in favour of the Plaintiffs and against the Defendants in terms of the prayer sought at Paragraph No. 78(i) of the plaint. The present suit, along with pending applications, is disposed of.
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Judgement Reviewed by – HARIRAGHAVA JP
