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IN THE HIGH COURT OF DELHI AT NEW DELHI
V. Kameswar Rao, J.
Delhivery Private Limited - Appellant
Versus
Treasure Vase Ventures Private Limited - Respondent
Civil Suit (Comm) No. 217 of 2020; Interlocutory Application No. 5109 of 2020, 6523 of 2020, 6572 of 2020
Decided On : 12-10-2020
The court ruled on two applications filed in a trademark infringement case: I.A. 5109/2020 (filed by the plaintiff under Order XXXIX Rules 1 and 2 CPC) and I.A. 6523/2020 (by the defendant under Order 39 Rule 4 r/w Section 151 CPC to vacate / set aside ex-parte order dated July 03, 2020). The court's decision focused on whether the interim order should be vacated due to non-service of suit papers on the defendant, and whether the plaintiff's trademark 'DELHIVERY' was deceptively similar to the defendant's mark 'DELIVER-E'.
Fact of the Case:
The plaintiff, a logistics and transportation company, filed a suit against the defendant for trademark infringement and passing off. The plaintiff claimed that the defendant's mark 'DELIVER-E' was deceptively similar to its registered trademark 'DELHIVERY' and was likely to cause confusion among consumers. The plaintiff also alleged that the defendant had adopted the mark 'DELIVER-E' with mala fide intent to divert the plaintiff's business. The defendant denied the allegations and filed an application to vacate the interim injunction granted by the court on July 03, 2020, arguing that the plaintiff had not effected advance service of the suit papers on the defendant as required by the procedure uploaded on the website of the court.
Finding of the Court:
The court held that the plaintiff had not intentionally failed to serve the defendant in advance, and that the registry had insisted on speed post service rather than email service. The court also found that the plaintiff's mark 'DELHIVERY' was phonetically similar to the generic word 'delivery' and could not be registered as a trademark. The court further held that the defendant's mark 'DELIVER-E' was also phonetically similar to the generic word 'delivery' and that there was no deceptive similarity between the two marks. The court also rejected the plaintiff's claim of passing off, finding that the plaintiff had not established the necessary elements of goodwill, misrepresentation, and damage.
Issues: 1. Whether the interim order should be vacated due to non-service of suit papers on the defendant. 2. Whether the plaintiff's trademark 'DELHIVERY' was deceptively similar to the defendant's mark 'DELIVER-E'.
Ratio Decidendi: 1. The court held that the plaintiff had not intentionally failed to serve the defendant in advance, and that the registry had insisted on speed post service rather than email service. The court also found that the plaintiff's mark 'DELHIVERY' was phonetically similar to the generic word 'delivery' and could not be registered as a trademark. The court further held that the defendant's mark 'DELIVER-E' was also phonetically similar to the generic word 'delivery' and that there was no deceptive similarity between the two marks. The court also rejected the plaintiff's claim of passing off, finding that the plaintiff had not established the necessary elements of goodwill, misrepresentation, and damage.
Final Decision: The court allowed the defendant's application to vacate the interim injunction and dismissed the plaintiff's application for an injunction. The court also directed the parties to appear before the Joint Registrar for further proceedings on November 12, 2020.
JUDGMENT
V. Kameswar Rao, J. - I.A. 5109/2020 (filed by plaintiff under Order XXXIX Rules 1 and 2 CPC) & I.A. 6523/2020 (by defendant under Order 39 Rule 4 r/w Section 151 CPC to vacate / set aside ex-parte order dated July 03, 2020)
1. By this order I shall decide I.A. 5109/2020 filed by the plaintiff under Order XXXIX Rule 1 & 2 and I.A. 6523/2020 under Order XXXIX Rule 4 (''O39 R4'' for short) read with Section 151 of the Code of Civil Procedure, 1908 (''CPC'' for short) filed by defendant.
2. The case of the plaintiff in the plaint is that, it has continuously and extensively used the trademark ''DELHIVERY'' since the year 2011 for its logistics, transportation, management, etc. The mark was coined and adopted by its promoter in the year 2008. The plaintiff has experienced exponential growth since the year 2011 and has completed 600 million orders to around 120 million households with 75 fulfillment centers and secondary hubs and delivers around 1 million packages per day. The sales figures of the plaintiff company had reached approximately Rs. 2796.86 Crores for the year ending 2019-2020 with a growth of over Rs.1000 Crores over the sales of the previous year.
3. The plaintiff company has received numerous awards and accreditations and has been time and again receiving foreign funding which has enabled the plaintiff to become a unicorn company and has widespread online and print media presence.
4. It is averred in the plaint that the plaintiff company has 27 registrations for the trademark ''DELHIVERY'' / its variants in classes 35, 39 & 42 of the Trade Marks Act, 1999 (''TM Act'' hereinafter) including a word mark registration of the trademark ''DELHIVERY''. Due to incessant use of the mark ''DELHIVERY'' and its variants openly, continuously and extensively since 2011 throughout the country, the said trademark ''DELHIVERY'' has come to be associated and identified solely with the plaintiff company and has gained immense popularity amongst the general public in the services of concern. It is stated that due to such incessant use coupled with extensive publicity, the plaintiff''s mark ''DELHIVERY'' has acquired secondary significance, which is evident from the huge annual sales figures.
5. The plaintiff has time and again taken legal action against the infringers of its copyright and trademarks and has secured orders in their favour from this Court as well as other forums, including the NIXI against the use of deceptively similar domain names by third parties.
6. As per the plaint, the plaintiff stated that the cause of action arose for the first time in the third week of May, 2020 when one of the plaintiff''s employees noticed the use of the impugned mark on the boxed E-rickshaws at Chhatarpur and Dwarka.
SUBMISSIONS:
7. At the outset, Mr. Neeraj Grover learned counsel for the plaintiff stated that the defendants who prayed for vacation of the interim order took a stand in their O39 R4 application that there was no prior service of suit papers on the defendant, which is a ground to vacate the interim order. In this regard he has stated the following:-
a) The Registry of this Court did not require the advance service to be made mandatorily by e-mail and listed the suit only after 3 clear days of the advance service by post, which was sent on two addresses on June 29, 2020 and such receipts were attached with paper-book. Therefore, the fact that no email could be sent to the defendant for advance service cannot be taken as a ground for seeking vacation of the injunction orders as there was no mala fide in not sending the papers by e-mail.
b) The defendant was not on caveat under Section 148A CPC and did not have an inherent right to be heard in advance at the stage of hearing of the interim application.
c) The CPC, TM Act, Commercial Courts Act, 2015, Delhi High Court (Original Side) Rules 2018, or even the Delhi High Court Video Conferencing Rules, 2020 do not mandate that a plaintiff in a commercial suit cannot seek ad-i
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