Dhl International Gmbh v. Dlh Express Services Private Ltd

order declaring the Plaintiff's registered trademark "DHL" as well-known mark, along with the a direction to the Registrar of Trademarks to notify the mark "DHL" on the Register of well-known marks; and c. A decree against the Defendant in favour of the Plaintiff granting the costs incurred by the Plaintiff in the present suit; and, Pass any further order as this Hon'ble Court may deem fit and proper under the facts and circumstances of the case may also be passed in favour of the Plaintiff and against the Defendant."

¶18Reply is stated to have been filed yesterday. In so far as the prayer for summary judgment is concerned, as per the Commercial Courts Act, 2015 read with the Delhi High Court (Original Side) Rules, 2018 (hereinafter "Original Side Rules") and Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 (hereinafter "IPD Rules"), summary judgment can be passed under Order XIIIA, if the Defendant has no real prospect of succeeding in the matter. In fact, even the filing of application for the same would not be required in terms of Rule 27. Rule 27 of the IPD Rules read as under: "27. Summary Adjudication In cases before the IPD, the Court may pass summary judgment, without the requirement of filing a specific application seeking summary judgment on principles akin to those contained in Order XIIIA, Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015."

¶19Practice Direction 9(h) of the Original Side Rules, pursuant to Section 18 of the Commercial Courts Act, reads as under: "9. In the case of commercial disputes, the Court may, inter-alia, pass orders as it may think fit for the speedy disposal of the suit or narrowing the controversy between the parties, including:- … h) conduct a Case Management hearing under Order XV-A of the Code and as part of the said case management hearing – … ii. explore the possibility of deciding the dispute by a summary judgment, without a specific application for the said purpose, on the basis of pleadings dispensing with the trial of the suit on the questions of law or of facts on which the parties are not at issue;"

¶20The reply of the Defendant to the application seeking summary judgment is not on record in the present case. Be that as it may, a perusal of the competing marks and logos shows that the marks are almost identical to the Plaintiff's mark and logo has also been copied. The services for which the Defendant is using this mark are identical. There is clearly no defence that the Defendant has taken, except the fact that the Defendant is, in fact, using various channels of the Plaintiff from 2013. The fact that the Defendant may be using the authorized channels would not give any permission to them to use the Plaintiff's mark and logo.

¶21Considering the fact that the Defendant has already changed the name DLH and the use of the impugned mark has also been stopped, this is a fit case for grant of permanent injunction in favour of the Plaintiff, by way of summary judgment.

¶22Accordingly, the suit is decreed in terms of the paragraphs 61(a) to 61(c).

¶23The Defendant is also directed to withdraw its application for the mark 'DLH Express Services Pvt. Ltd.,' with Application bearing no.3147906, if not already withdrawn. A letter to this effect shall be sent to the Trademark Registry, which shall pass appropriate orders for abandonment within four weeks of the receipt of the letter.

¶24In so far as the prayer for declaration seeking recognition as a "well-known mark" is concerned, Section 2(zg) of the Trademarks Act defines a well-known mark as under:

(zg) "well known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

¶25Section 11(2) of the Trademarks Act provides protection to well-known trademarks, in the following terms: "Section 11. …

(2) A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered, if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark."

¶26Rule 124 of the Trademark Rules, 2017, provides for declaration of well-known status by way of an application, without the requirement for any proceedings or rectification. Pertinently Section 11(6) lays down the factors to be considered for declaration of a mark as a 'well-known mark'. Section 11(6) reads as under: "(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—

(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record."

¶27On the recognition of "famous marks", J. McCarthy in 5 McCarthy on Trademarks and Unfair Competition, §29:62 has observed as under: "Although the basis of the modern treaties and domestic laws providing protection for famous and well-known marks is derived from the Paris Convention, the scope of protection afforded to famous marks is different in each country. Article 6 bis the Paris Convention is the cornerstone of international protection of famous works. XXX First, NAFTA extends protection to service marks. Second, in determining whether or not a mark is famous, the standard used is how well the mark is known in the relevant sector of the public, not necessarily the general public. Thus, knowledge of the famous or well-known mark can be the result of actual use or promotion of the trademark only in a particular segment of trade. Like NAFTA, the GATT TRIPs agreement extends protection to both goods and service marks even if the mark has not been registered in a member country. Also like NAFTA, the mark need only be famous in a relevant segment of the public. The special provisions of TRIPs Art. 16(3) apply to give protection beyond that of the Paris Convention. The famous marks rule applies even if the goods or services to which the allegedly infringing mark is being applied are not similar to the goods or services for which the famous marks has become well-known. This is subject to three conditions: (1) the famous mark must be registered; (2) there must be such a connection between the respective foods or services that confusion is likely; and (3) it must be likely that the interest of the owner of the registered trademark will be damaged by such infringing use."

¶28In NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300, a Division Bench of this Court observed as under: "From the aforesaid fads including the extensive advertisements of the goods of the First respondent & its Trade mark 'WHIRLPOOL' and the legal position ad interim hitherto we are prima facie of the opinion that the trade mark 'WHIRLPOOL' has acquired reputation and goodwill in this country and the same has become associated in the minds of the public or potential buyers with the goods of the first respondent. Even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade mark. It is also not necessary however that the association of plaintiffs mark with his goods should be known all over the country or to every person in the area where it is known best.(See: Fanlder& Co, Ld.vs. O & G. Rushton(1903) 20 Rpc 477) Besides the facts prima facie demonstrable that the first respondent was prior user of the trade mark 'WHIRLPOOL' as it was using the same since 1941, while the appellants themselves claim the adoption thereof from 1986."

¶29This decision was affirmed by the Supreme Court. Thereafter, a ld. Single Judge of this Court in Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del), elaborated upon the principles for declaration of a mark as well known. The same reads as under: "5. A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well. The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark.

¶6The doctrine of dilution, which has recently gained momentous, particularly in respect of well known trademarks emphasises that use of a well known mark even in respect of goods or services, which are not similar to those provided by the trademark owner, though it may not cause confusion amongst the consumer as to the source of goods or services, may cause damage to the reputation which the well known trademark enjoys by reducing or diluting the trademark's power to indicate the source of goods or services.

¶7Another reason for growing acceptance of trans-border reputation is that a person using a well known trademark even in respect of goods or services which are not similar tries to take unfair advantage of the trans-border reputation which that brand enjoys in the market and thereby tries to exploit and capitalize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person's well known trademark, he tries to take advantage of the goodwill that well known trademark enjoys and such an act constitutes an unfair competition."

¶30These principles have been reiterated by Courts thereafter, most recently in Dharampal Satyapal Sons Private Limited v. Akshay Singhal and Ors., [CS (COMM) 129/2019, decided on 17th October, 2019].

¶31In light of this settled legal position on the recognition of well-known marks and owing to the extensive evidence placed on record showing the global use of the mark DHL and continued use of the mark DHL in India as also the registrations and the independent third party write-ups and articles, and enforcement actions which are placed on record, this Court unhesitatingly holds the mark DHL to be a well-known mark, especially in the field of logistics, freight transport, courier services, international money etc. The remaining reliefs are not pressed for. No further orders are called for in this matter.

¶32The suit is decreed in the above terms. Decree sheet be drawn up accordingly. All applications are disposed of.

¶33Copy of today's order be supplied to the Trademark Registry (Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan, Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: cgofficemh@nic.in, hodel.tmr@nic.in), as also through Mr. Harish V. Shankar, Ld. CGSC. PRATHIBA M. SINGH JUDGE APRIL 22, 2022/dk/ms

* IN THE HIGH COURT OF DELHI AT NEW DELHI Date of Decision: 22nd April, 2022 + CS (COMM) 563/2020 & I.A.16452/2021 DHL INTERNATIONAL GMBH ..... Plaintiff Through: Mr. Pravin Anand, Mr. Shrawan Chopra, Mr. Vibhav Mithal and Mr. Achyut Tewari, Advocates. (M:8604633567) versus DLH EXPRESS SERVICES PRIVATE LTD. ..... Defendant Through: Mr. Vishal Patel, Advocate. CORAM: JUSTICE PRATHIBA M. SINGH Prathiba M. Singh, J. (Oral) 1. This hearing has been done through hybrid mode. 2. The Plaintiff - DHL International GmbH, a German company has filed the present suit seeking permanent injunction restraining infringement of trademark, trade dress, dilution and tarnishment, passing off, damages etc., against the Defendant - DLH Express Services Private Ltd. 3. The Plaintiff asserts rights in the trademark and name 'DHL', which is used by it for logistic services. The Plaintiff company was set up in San Francisco in the year 1969. The Plaintiff has various associate and group companies across the world, including in Germany. The presence of the Plaintiff is in more than 220 countries and territories employing over 500 thousand persons, over 158400 supply chain employees, and around 14,000 warehouses around the world. It offers various services including parcel and international express service, freight transport, and supply chain management services, as well as e-commerce logistics solutions. The total revenue of the Plaintiff's group companies was more than 63 billion Euros in 2019. The Plaintiff company is a subsidiary of Deutsche Post AG, which is part of the Deutsche Post DHL Group. The Plaintiff group is also the world's number one contract logistics provider through the DHL supply chain in more than 55 countries. In 2001, the Plaintiff incorporated DHL Worldwide Express Pvt. Ltd. (later known as DHL Express (India) Pvt. Ltd.) (hereinafter "DHL India"), which is stated to be the leading international air express service provider in India, since inception. DHL India has about 21,000 employees and over 50,000 customers with dedicated service centres in all major cities in India. While the plaintiff groups annual revenue was around 63.34 billion euros in 2019, DHL India' revenue in 2019 was around 3000 crores. The brand is also partnered through various sponsorships in sports, culture and arts events, by the DHL Partner program. It has been the official logistics provider for Formula One for many years and has partnered with various Fashion Weeks, Indian Super League, etc. and has sponsored the Economic Times Supply Chain Management Summit. Its services have also received numerous accolades including 'The World's Most Global Company', 'Global 500- The Words' Most Valuable Brands', 'Superbrand', etc., right from 1998 till date. 4. The Plaintiff's mark DHL and distinctive logo and trade dress, which was initially adopted in 1969, has evolved over the years. The mark DHL derives its origin from three entrepreneurs who founded the company i.e. Adrian Dalsey, Larry Hillblom and Robert Lynn. Currently, it is used as 'DHL' in a stylized red font in a yellow background, with the letters 'D', 'H' and 'L' being displayed prominently and three straight red lines in a stylized form on either side of 'D' and 'L'. The DHL logo is set out below: 5. The Plaintiff's mark is also used in various forms and variants as 'DHL SUPPLY CHAIN', 'DHL Express', 'DHL Global Forwarding', etc. The DHL mark and logo are also registered in India and in several countries of the world. The registration in India relates to classes 16, 36, 39, 28, 41 etc. The mark itself is registered in more than 180 countries including Japan, Australia, Germany, Italy, Singapore, USA, UK, etc. A voluminous list of all the registrations has been placed on record. 6. The Plaintiff has also undertaken various successful enforcement actions for its mark in India and abroad. The same is captured in the plaint as under: "It is stated that while adjudicating upon two different domain name disputes