India: Delhi High Court Grants Injunction In An Ex-Parte Suit, But Avoids Awarding Punitive Damages And Well Known Status

Last Updated: 21 March 2018
Article by Naman Jain

In a recent case Verizon Trademark Services LLC (Plaintiff) &Ors v. Mr. Parth Solanki &Anr (Defendents) reported in 2018 (73) PTC 192 [DEL], the Hon'ble High Court of Delhi was confronted with the issue of infringement of Plaintiff's trademark VERIZON by Defendant's trademark VARIZON. The court issued a permanent injunction to restrain Defendants from infringing the Plaintiff's VERIZON mark by using the mark VARIZON, or any other deceptively similar mark. The Plaintiff also pleaded  to award punitive damages and also declares its mark VERIZON as well-known. However, the Court was of a different view and did not award any punitive damages as the Plaintiff failed to prove  damages and  losses suffered. Further, the court also restrained itself from declaring the Plaintiff's mark as well-known.

The Plaintiff claimed that he is  the world's leading providers of communication, entertainment, information technology, website development and security products and services under the trademark VERIZON, since 2000 and also contended that the Defendants were misusing the Plaintiff's trademark VERIZON by using a deceptively similar mark as part of its (a) trademark (b) trading style (VARIZON TECH) and (c) domain name (www.varizontech.com), with a view to ride upon his goodwill and reputation  and derive unfair gains. Earlier, the Court, vide order dated 21 October 2016 granted an ex- parte ad interim injunction in favour of the Plaintiff. However, since the Defendants did not appear, the proceedings were initiated ex-parte.

After going through the merits of the case and the evidences put forward by the Plaintiff, the Court did notice that due to extensive worldwide use over substantial period of time, the Plaintiff's VERIZON trademarks have acquired reputation and goodwill in the market globally as well as in India and any mark which is deceptively similar to the Plaintiff's mark may be detrimental to the Plaintiff's reputation and goodwill associated to it.

The court held that due to absence of any explicit permission or authorisation by the Plaintiff, the Defendants have been malafidely using the mark VARIZON which is deceptively similar to the Plaintiff's trademark VERIZON; therefore, a permanent injunction to the Plaintiff's against the Defendants was granted.

With regard to awarding punitive damages, the Court placed reliance on Super Cassettes Industries Private Limited Vs. HRCN Cable Network, CS (COMM) 48/2015, 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, [1964] 1 All ER 367, and also the five principles laid down 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)...". Thus, the Court concluded that in the present case any damages cannot be awarded to the Plaintiff as they have failed to submit/lead any evidence with respect to the quantum of damages suffered by them.

For declaring the Plaintiff's mark VERIZON as well-known, the Court on prima facie basis agreed that the Plaintiff's mark VERIZON satisfies the requisite criteria for well-known mark as laid down in the Trade Marks Act, 1999. However, since the Defendants did not contest the contentions of the Plaintiff, the Court refrained itself from dealing with this issue.

Here, the Court abstained itself from dealing with the issue of declaring Plaintiff's mark as well-known. After the introduction of prescribed procedure under Rule 124 of the latest Trade Mark Rules, 2017 for attainment of well-known status, there have been many instances in the recent past where the court have confined themselves from declaring a mark as well-known trademark. However, in the present case, keeping in mind that the court has acknowledged that the Plaintiff's mark fulfils all the criteria of a well-known mark, the Plaintiff may seek the well-known status by following the procedures laid down under Rule 124 of the Trade Mark Rules, 2017 easily.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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