Verizon Trademark Services Llc & Ors v. Triiroute Visas Overseas Private Limited Erstwhile Verizone Visa Overseas Pvt Ltd & Anr

O R D E R %

23.12.2024 I.A. 49516/2024 (Exemption from filing clear copies of documents)

¶1The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC"), on behalf of the plaintiffs, seeking exemption from filing clearer copies or documents with exact margins and/or which are on A4 size paper, typed-copies of handwritten documents, English translations and from filing originals of the relevant documents.

¶2Exemption is granted, subject to all just exceptions.

¶3Plaintiffs shall file legible, clear, and translated copies of the documents, on which the plaintiffs may seek to place reliance, before the The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. next date of hearing.

¶4Accordingly, the present application is disposed of. I.A. 49518/2024 (Exemption from instituting Pre-Institution Mediation)

¶5The present is an application under Section 12A of the Commercial Courts Act, 2015, read with Section 151 of CPC, seeking exemption from undergoing Pre-Institution Mediation.

¶6Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar Versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-Institution Mediation, is granted.

¶7Accordingly, the application stands disposed of. I.A. No. 49515/2024 (Application seeking leave to file additional documents)

¶8This is an application under Order XI Rule 1(4) read with Section 151 CPC, as amended by the Commercial Courts Act, 2015, seeking leave to file additional documents.

¶9Since the suit is being decreed today itself, the present application has become infructuous and accordingly disposed of. I.A. No. 49514/2024 (Application seeking administration of interrogatories upon the defendants)

¶10The present application has been filed under Order XI Rule 2 (as amended by the Commercial Courts Act, 2015) read with Section 151 CPC seeking administration of interrogatories upon the defendants.

¶11Since the suit is being decreed today itself, the present application has The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. become infructuous and accordingly disposed of. I.A. No. 49517/2024 (Application seeking extension of time in filing Court Fees)

¶12The present application has been filed under Section 149 read with Section 151 CPC for extension of time for filing Court Fees.

¶13Learned counsel appearing for the plaintiffs submits that since the matter is being settled in the first instance today itself, on the first date of hearing, on the basis of an Email filed by the defendant, exemption from filing Court fees be granted.

¶14Considering the aforesaid, exemption is granted.

¶15With the aforesaid directions, the present application is disposed of. I.A. No. 49519/2024 (Application seeking exemption to file certain documents in CD/USB pendrive)

¶16The present application has been filed under Section 151 CPC seeking exemption to file certain documents in CD/USB pendrive.

¶17Since the suit is being decreed today itself, the present application has become infructuous and accordingly disposed of. CS(COMM) 1182/2024 & I.A. 49513/2024 (Application under Order XXXIX Rules 1 and 2 CPC)

¶18The present suit has been filed for permanent injunction restraining infringement of trademarks, passing off, dilution, tarnishment, damages, rendition of accounts, delivery up, etc.

¶19Learned counsel appearing for the plaintiffs submits that through the present lawsuit, the plaintiffs are seeking, inter alia, immediate urgent interim relief and a decree of permanent injunction restraining the defendant no. 1 from infringing the plaintiffs coined, earlier adopted, registered and The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. declared well-known trademark VERIZON, its registered logo(s) and other marks containing, or comprising of the trademark VERIZON, passing off, dilution, tarnishment by the defendant no. 1 on account of the subsequent adoption and malafide use of the substantially, phonetically, nearly identical and deceptively similar trademarks and trade names 'VERIZONE', 'VERIZONE VISA', 'VERIZONE - Global Opportunities', and/or its variants such as the domain name www.verizonevisa.com, the email address info@verizonevisa.com, the recently adopted email address veriazone@gmail.com as part of its trademarks and trade names and as used in the promotion of its goods and services, which are similar to the goods and services provided by the plaintiffs, including use on social media and third party website(s), amounting to flagrant violation of the plaintiffs' statutory and common law rights.

¶20It is submitted that the plaintiffs are compelled to institute this suit against the defendant no. 1 as the defendant no. 1, through the website being made available on the impugned domain name www.erizonevisa.com and various third-party platforms, advertises and promotes itself as a purported leading and dedicated visa and immigration service provider. It claims to The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. facilitate global mobility with unwavering commitment, innovative solutions, and assured success.

¶21It is submitted that despite the successful service of cease-and-desist notice(s) and an undertaking provided in the initial replies received, defendant no. 1 has subsequently changed its name from Verizone Visa Overseas Private Limited to Triiroute Visa Overseas Private Limited, however, has failed to comply with its other obligations. She further submits that after numerous follow-up notices, defendant no. 1 continues to advertise and promote its products and services using the impugned VERIZONE trademarks. These marks, used on the website www.verizonevisa.com and third-party platforms, including but not limited to Facebook, Instagram, Linkedln, X, JustDial etc. are nearly identical to the plaintiffs' trademark 'VERIZON' which has been declared to be a well-known trademark by this Court.

¶22It is further submitted that the unauthorized use of the impugned marks by defendant no. 1 is without any permission or license from the plaintiffs and constitutes a blatant infringement of the plaintiffs' statutory and common law rights. The plaintiffs, as the prior adopters and users of the VERIZON Trademarks, promptly acted upon discovering defendant no. 1's alleged use of the mark 'VERIZON' with an 'E', i.e., the impugned mark 'VERIZONE', and/or its variants, by issuing legal notices. The fraudulent activities of defendant no. 1 are clearly intended to exploit the inherently strong and distinctive VERIZON name and mark owned by the plaintiffs.

¶23It is submitted that the plaintiffs are among the world's leading providers of, inter alia, communications, information technology, security products and services including mobile phone plans for travel. The plaintiffs The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. also offer the Verizon Visa Card, a branded financial product that provides benefits directly linked to travel, including cash back rewards on travel-related expenses such as airfare, hotels, and gas. In addition to its association with the VERIZON VISA designation, Verizon recruits employees from India and elsewhere and is known for assisting certain of its employees with obtaining work visas for employment abroad, e.g. the tab marked "Will Verizon sponsor me if I need a permit to work in the U.S.?" at: These services align with Verizon's broader efforts to enhance connectivity and mobility for their customers and workforce, whether through financial products and visa sponsorship that facilitate travel and work abroad. The plaintiffs also maintain and promote widely these services on their websites being available on the domain names https://vvcupdates.com as well as

¶24It is further submitted that the plaintiffs own and operate one of the most expansive end-to-end global Internet Protocol (IP) networks serving more than 2,700 cities in over 150 countries worldwide, including in India. The plaintiffs have not licensed or otherwise authorized anyone else in India to use the coined and fanciful VERIZON trademarks, including, defendant no. 1.

¶25It is submitted that the plaintiffs have expanded their portfolio to The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. include financial products such as the Verizon Visa Card and the visa services that Verizon provides to certain of its employees which further solidifies their position as a comprehensive service provider catering to both every day and travel-related needs.

¶26It is submitted that in and around the year 2000, the plaintiffs first coined, adopted and started using the trademark and trade name VERIZON in relation to their operations internationally, including in India, e.g. https://timesofindia.indiatimes.com/business/india-business/verizon ceoindia-centre-is-biggest-hub-outside-us/articleshow/112664567.cms) . The plaintiffs' trademark VERIZON is inherently distinctive and was coined by the plaintiffs from the Latin word "Veritas" which connotes certainty and reliability, and "Horizon" which signifies forward-looking and visionary, thereby epitomizing the genesis of the plaintiffs' company name.

¶27It is further submitted that ever since the adoption of the VERIZON trademark, the plaintiffs have used the said trademark extensively, continuously, and successfully in an uninterrupted manner so as to acquire a strong secondary significance in the trademark and trade name VERIZON internationally and in India. The use of the coined trademark and trade name VERIZON as a trading style further cements the association of the mark and name VERIZON with the plaintiffs. The plaintiffs have incorporated a number of subsidiary companies which actively make use of the trademark VERIZON as part of their respective trading names, such as Verizon Licensing Company and Verizon Communications India Private Limited, amongst several others.

¶28It is submitted that the plaintiffs' trademark VERIZON is a coined trademark, which has no meaning in common parlance or in any industry, apart from denoting the goods and services of the plaintiffs themselves and said The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. mark has been used as part of the trade name for a number of plaintiffs' related companies. Therefore, the use of the trademark and trade name VERIZON or any other trademark or name deceptively similar thereto on products and services of third-party entities, is bound to create an impression in the minds of consumers and members of the trade alike that such products or services emanate from the plaintiffs, or are associated with the plaintiffs.

¶29It is further submitted that ever since the adoption of the VERIZON mark, several unique VERIZON logos have been used by plaintiffs, including Such use has been extensive and successful in creating a strong secondary significance in the trademark and trade name VERIZON with respect to their products and services.

¶30It is submitted that these VERIZON logos, much like the trademark and name VERIZON, act as source identifiers solely and exclusively for the plaintiffs goods and services.

¶31It is further submitted that during the past twenty-three years, the plaintiffs have amassed unparalleled reputation and goodwill in their products and services bearing the VERIZON Trademarks, which is evident The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. from the various awards, accolades and laurels accorded to the plaintiffs from time to time

¶32It is further submitted that the plaintiffs are the proprietors of several domain names comprising of the VERIZON Trademarks, including www.verizon.com, www.verizonbusiness.com, www.verizonenterprise.com and https://www.verizonconnect.com, amongst many others. The plaintiffs also maintain support telephone and fax numbers in India to assist their customers in the country, as is evident from its websites. The plaintiffs' websites are accessible to many people from across the globe, including in Delhi (India). In addition to the extensive and continuous use of the VERIZON Trademarks in relation to goods and services, the adoption of said trademarks as part of the domain names for the plaintiffs' various business wings has also resulted in acquainting millions of persons across the world, including in India, with the plaintiffs' products, services and trademarks.

¶33It is submitted that the reputation of the plaintiffs' VERIZON trademarks and trade name have been furthered extensively within India over the past several years. The products and services of the plaintiffs bearing the VERIZON trademarks have been used, promoted, and advertised continuously and extensively in India and residents of India traveling abroad have been exposed to the VERIZON trademarks and trade name of plaintiffs.

¶34It is submitted that the adoption and use of the mark/name VERIZON or any deceptively similar simulation thereof, in any manner by an unauthorized and unrelated third-party entity, would undoubtedly confuse and/or deceive consumers and members of the trade into falsely believing The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. that such products or services originate from the plaintiffs or are licensed, endorsed, sponsored, or approved by the plaintiffs in some manner or the other. This would not only enable such third parties to derive an undue advantage by misappropriating the plaintiffs' immense goodwill and reputation in the mark and name VERIZON but also dilute the exclusivity of the plaintiffs' invented VERIZON trademarks.

¶35It is further submitted that by virtue of the aforementioned long, continuous and extensive use of the VERIZON trademarks and trade name by the plaintiffs, the plaintiffs have insurmountable common law rights in their said trademarks and trade names. Apart from common law rights that have accrued to the plaintiffs, the plaintiffs have also secured statutory rights in the VERIZON trademarks around the world, including in India.

¶36It is submitted that the plaintiffs have also secured registrations for their VERIZON trademarks in more than 200 countries across the world, in addition to India. The plaintiffs' VERIZON trademarks are registered in several countries such as the United States of America, the United Kingdom, Canada, France, Germany, China and Australia amongst many others. Such trademark registrations secured by the plaintiffs in relation to their VERIZON trademarks only evidence the vast goodwill subsisting in the said trademarks with the plaintiffs as their proprietors.

¶37It is further submitted that the plaintiffs have actively safeguarded and protected common law as well as statutory rights vested in their VERIZON Trademarks and trade names against misappropriation by third party entities in Courts of Law across the world, including, in India.

¶38It is submitted that the plaintiffs' mark has also been recognized by this Court wherein the plaintiffs' VERIZON trademarks have been declared The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. 'well-known' as per Section 2(1)(zg) of The Trade Marks Act, 1999. Vide its judgment and decree dated 11th July, 2023, passed in an earlier suit titled Verizon Trademark Services LC & Ors. Versus Vikash Kumar, CS

(COMM) 220/2023, the Court declared VERIZON to be a well-known trademark. Therefore, the plaintiffs' VERIZON trademarks have the widest amplitude of protection under law and any misuse of identical or deceptively similar marks for even dissimilar goods and services is prohibited by law.

¶39It is further submitted that to the best of plaintiff's knowledge, understanding and as per the information made available in the public domain, the defendant no.1's entity Triiroute Visa Overseas Private Limited (erstwhile Verizone Visa Overseas Pvt Ltd.) is a company incorporated on 22nd January 2024, which is 24 years subsequent to the plaintiffs coining, adopting, and continuously using the well-known mark and name 'VERIZON'. The defendant no. 1 uses the mark and name 'VERIZONE', 'VERIZONE VISA', 'VERIZON VISA OVERSEAS'" the logo (Verizone – Global Opportunities), the domain name www.verizone.com purchased on 18th January 2024, the email address info@verizonevisa.com, and the subsequently adopted the email address veriazone(a)gmail.com. The impugned marks are nearly identical to the plaintiffs' well-known and registered trademark VERIZON, with only a minor spelling variation - the addition of the letter 'E' - rendering the impugned marks structurally and phonetically confusingly similar. A table indicating the marks of the parties is as follows: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

¶40It is submitted that on its interactive website and social media pages, the defendant no. 1 promotes itself to be more than just visa providers, but as architects of its customer's global journey by providing seamless visa solutions. A screenshot from the website showcasing the continued promotion, as given in the plaint, is reproduced under:

¶41It is further submitted that to provide its services, the defendants promote, market and advertise their products and services through third party online platforms and market places, such as, but not limited to www.facebook.com, www.instagram.com, www.linkedin.com, and www.justdial.com. An image used to promote its services on the facebook platform has also been reproduced as under: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

¶42It is submitted that the plaintiffs first became aware of defendant no. 1 and their nefarious activities in and around the second week of April 2024 when the plaintiffs during general online research discovered the defendant no. l's online presence under the name 'VERIZONE VISA OVERSEAS', which led to the discovery of the website being made available under the impugned domain name www.verizonevisa.com. Upon visiting and perusing the website found at the impugned domain, the plaintiffs discovered that the defendant no. 1 had not only registered a domain name which completely subsumed the plaintiffs' well known trademark 'VERIZON', but was also repeatedly through its website using the designation 'VERIZONE' and the impugned marks. A screenshot of the website is as follows: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

¶43It is further submitted that the plaintiffs immediately upon becoming aware of the defendant no. 1's infringing activity, issued a cease and desist notice to the defendant no. l, highlighting that the use of a mark nearly identical to plaintiffs' well-known VERIZON trademark, wherein the plaintiffs have prior rights across multiple classes of goods and services, by the defendant no. l, leads to a high likelihood of confusion in the minds of consumers, leading them to falsely believe that the goods and services provided by defendant no. l are somehow associated with the plaintiffs.

¶44It is submitted that the plaintiffs have thereafter approached the defendant no. 1 on multiple occasions to amicably resolve the matter, however, despite successful delivery of all the correspondences issued to the defendant no. 1, the defendant initially undertook to change its company name and cease the use of the 'VERIZONE' mark, however, pursuant to the change of the company name, the defendant no. 1 stopped responding to the plaintiffs' follow up letters and continued to promote its services under the impugned mark 'VERIZONE'.

¶45It is further submitted that up to the date of filing the present plaint, defendant no. 1 has persistently continued to promote and advertise its services online under the impugned 'VERIZONE' marks. The website under the impugned domain name remains accessible, and defendant no. 1 has further adopted and commenced using the email address veriazone@gmail.com. These acts, coupled with the ongoing infringing activities under the impugned marks, are being carried out without any permission or license from the plaintiffs. This deliberate and mala fide conduct demonstrates a clear intent to remain associated with the plaintiffs' highly distinctive and well-known VERIZON trademarks, thereby, violating The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. the plaintiffs' statutory and common law rights.

¶46It is further submitted that since the plaintiffs' brand VERIZON is extremely popular amongst the consumers in India, it is evidently clear that the defendant no. 1 has been aiming at striking a false association with the plaintiffs by adopting and using marks such as VERIZONE and VERIAZONE, in order to springboard their goods and services in the market under a name which is structurally and phonetically confusingly similar to the VERIZON trademarks.

¶47It is submitted that the dishonesty on part of the defendant no. 1 is writ large as the defendant despite being informed regarding the rights of the plaintiffs has continued the usage of the impugned marks and trade name. It is clear from the facts and circumstances of the present case that the defendant no. 1 will continue to violate the plaintiffs' rights and earn illegal profits through the use of the plaintiffs' marks unless enjoined by this Court.

¶48It is further submitted that the deceitful intentions of defendant no. 1 are evident from its actions, including, making false assertions and subsequently adopting the mark 'VERIAZONE'. On multiple occasions, defendant no. 1 has claimed to be in the process of altering its usage, seemingly to lull the plaintiffs into believing that the dispute would be resolved. However, over the last nine months, other than defendant no. l's change of its formal company name to Triiroute Visa Overseas Pvt Ltd., no concrete action has been taken to implement these claims. Instead, defendant no. 1 has continued to violate the plaintiffs' rights and profit illegally from the unauthorized use of the plaintiffs' marks.

¶49Learned counsel appearing for the plaintiffs submits that upon giving advance notice of the present suit, an Email dated 21st December, 2024 has The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. been received from the defendants, which reads as under:

¶50The new website as adopted by the defendants, as per the email, is reproduced as under: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

¶51Learned counsel appearing for the plaintiffs, on instructions, submits that the plaintiffs are satisfied with the aforesaid undertaking of the defendants and submits that the suit can be decreed in favour of the plaintiffs on that account.

¶52Accordingly, considering the email sent on behalf of the defendants, wherein, the defendants have clearly undertaken necessary steps to officially change the name of their company and will no longer be using the name "VERIZON" in any capacity, the present suit is decreed in favour of the plaintiffs and against the defendants in terms of para 82(i), (ii), (iii) and (v).

¶53It is further clarified that in case, there is user of the infringing name by the defendants after 28th December, 2024, the plaintiffs shall be at liberty to approach this Court by way of appropriate legal proceedings.

¶54Decree sheet be drawn up.

¶55The present suit, along with the pending applications, stands disposed of. MINI PUSHKARNA, J DECEMBER 23, 2024 c The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

* IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 1182/2024 & I.A. Nos. 49513/2024, 49514/2024, 49515/2024, 49516/2024, 49517/2024, 49518/2024, 49519/2024 VERIZON TRADEMARK SERVICES LLC & ORS. .....Plaintiffs Through: Ms. Vaishali Mittal with Mr. Shivang Sharma and Ms. Saijal Arora, Advocates. (M): 7496808680 Email: saijal@anandandanand.com versus TRIIROUTE VISAS OVERSEAS PRIVATE LIMITED ERSTWHILE VERIZONE VISA OVERSEAS PVT LTD & ANR. .....Defendants Through: None. CORAM: HON'BLE MS. JUSTICE MINI PUSHKARNA