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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
DHL International Gmbh - Appellant
Versus
Dlh Express Services Private Limited - Respondent
CS (Comm) 563 of 2020 and I.A.16452 of 2021
Decided On : 22-04-2022
Trademark Infringement - DHL - Trademark Act, 1999, Section 2(zg), Section 11(2), Rule 124 - The court recognized the mark 'DHL' as a well-known mark under Section 2(zg) of the Trademarks Act, 1999. The Defendant was restrained from using the impugned trademark and logo by way of summary judgment. The court also directed the Defendant to withdraw its application for the mark 'DLH Express Services Pvt. Ltd.'
Fact of the Case:
The Plaintiff, DHL International GmbH, sought permanent injunction against the Defendant, DLH Express Services Private Ltd., for trademark infringement, trade dress, dilution, and passing off. The Plaintiff claimed rights in the trademark 'DHL' used for logistic services and sought a declaration of 'DHL' as a well-known mark.
Finding of the Court:
The court found that the Defendant's use of the mark 'DLH' was almost identical to the Plaintiff's mark 'DHL' and granted a permanent injunction in favor of the Plaintiff by way of summary judgment. The court also recognized the mark 'DHL' as a well-known mark under the Trademarks Act, 1999.
Issues: Trademark infringement, trade dress, dilution, passing off, recognition of 'DHL' as a well-known mark.
Ratio Decidendi: The court held that the Defendant's use of the mark 'DLH' was violative of the Plaintiff's statutory and common law rights, and granted a permanent injunction in favor of the Plaintiff. The court also applied the provisions of the Trademarks Act, 1999 to recognize 'DHL' as a well-known mark.
Final Decision: The suit was decreed in favor of the Plaintiff, and the Defendant was restrained from using the impugned trademark and logo. The court also directed the Defendant to withdraw its application for the mark 'DLH Express Services Pvt. Ltd.'
ORDER
Prathiba M. Singh, J. - 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, titled as DHL Operations B.V. v. Karel Salovsky, (Case No. D2006-0520) and DHL Operations B.V. v. Zhangyl (Case No. D2007-1653), the WIPO Arbitration and Mediation Center gave impetus to the fact that the trademark "DHL" is being extensively used by the complainant (predecessor in title and
Recognition of 'DHL' as a well-known mark under the Trademarks Act, 1999.
The main legal point established in the judgment is the recognition and protection of a 'well-known' trademark under the Trade Marks Act, 1999, and the Copyright Act, 1957, based on extensive use, re....
Trademark infringement occurs when a defendant uses a well-known mark in bad faith, causing confusion, irrespective of the addition of non-distinctive terms. The plaintiff is entitled to injunction b....
The plaintiff can establish passing off and infringement under the Trade Marks Act even without direct market presence, provided it demonstrates sufficient reputation and links to its brand.
The impugned marks are deceptively similar to Plaintiff's registered marks, leading to public deception, and the Court passes a summary judgment in favor of the Plaintiff.
Where a trade mark contains generic or common-to-trade terms, the proprietor cannot claim exclusive rights over those specific words. Comparison of marks for infringement must be done as a whole; if ....
Section 24(4)(c) does not expect the registered trade mark of the plaintiff to have become a well-known Trade Mark within the meaning of Section 2(1)(z)(g)”.
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