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2023 Supreme(Del) 3157
IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Whitehat Education Technology Private Limited – Appellant
Versus
Vinay Kumar Singh – Respondent
CS(COMM) 856 of 2022
Decided On : 02-08-2023
Mr. Prithvi Singh, Mr. Rohan Seth and Ms. Archita Nigam, Advocates, for the Plaintiff.
None, for the Defendant.
The main legal point established in the judgment is the application of summary judgment under Order XIII-A CPC in trademark infringement cases, considering the extensive use and reputation of the registered trademark, and awarding actual costs to the prevailing party.
Headnote:
Trademark Infringement - Summary Judgment - Order XIII-A Rule 3 & 6(1)(a) CPC - [WHITEHAT JR] - [Trademark Infringement] - [Order XIIIA of the CPC, Commercial Courts Act, 2015, Delhi High Court (Original Side) Rules, 2018, IPD Rules, Uflex Ltd. v. Government of Tamil Nadu, Cross Fit LLC v. RTB Gym and Fitness Centre] - The court granted summary judgment in favor of the Plaintiff, restraining the Defendant from using the mark 'WHITEHAT SR' and awarded actual costs to the Plaintiff.
Fact of the Case:
The Plaintiff, an edu-tech startup, filed a suit against the Defendant for trademark infringement, alleging that the Defendant's use of the mark 'WHITEHAT SR' and similar logo infringed on the Plaintiff's registered trademark 'WHITEHAT JR'. The Defendant refused to halt the use of the impugned mark, leading to the Plaintiff seeking an injunction.
Finding of the Court:
The court found that the Defendant's mark 'WHITEHAT SR' was almost identical to the Plaintiff's mark and that the Defendant had no real prospect of successfully defending the claim. The Defendant's non-contestation and clear stand led the court to grant summary judgment in favor of the Plaintiff.
Issues: The key issues involved trademark infringement, summary judgment under Order XIII-A CPC, and the Defendant's refusal to halt the use of the impugned mark.
Ratio Decidendi: The court applied the principles of summary judgment under Order XIIIA of the CPC and the Commercial Courts Act, 2015, and considered the extensive use and reputation of the Plaintiff's registered trademark. The Defendant's non-contestation and clear stand influenced the court's decision to grant summary judgment.
Final Decision: The court granted a permanent injunction restraining the Defendant from using the mark 'WHITEHAT SR' and awarded actual costs to the Plaintiff. The suit was disposed of, and all pending applications were also disposed of.
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
I.A. 14215/2023 (for exemption)
2. Allowed, subject to all just exceptions. Application is disposed of.
I.A. 14214/2023 (u/O XIII-A Rule 3 & 6(1)(a) CPC)
3. The present suit has been filed by the Plaintiff-Whitehat Education Technology Private Limited against the Defendant- Mr. Vinay Kumar Singh.
4. It is the Plaintiff's case that it runs an edu-tech startup that teaches coding to children, through its online platform. The Plaintiff develops the curriculum and also imparts lessons through live interactive online classes, offering flexibility for children to learn coding online. Moreover, the Plaintiff's online platform provides practice sessions for children, and the platform also encourages children to develop apps, games and animation.
5. The Plaintiff was originally established in 2018, and was acquired in August, 2020 by `Think & Learn Pvt. Ltd.' for 300 million dollars, which is operated by online platform Byju's. It then expanded its business to offer classes in music, art, animation, video, etc. The Plaintiff operates through domain name www.whitehatjr.com which was registered on 23rd May, 2018. The Plaintiff's revenues, in the peak of the COVID-19 pandemic, were stated to be over Rs.480 crores in 2020-21. The Plaintiff claims its popularity through its followers on social media platforms such as Instagram, YouTube, etc. where it boasts of lakhs of subscribers and followers.
6. Insofar as the mark `WHITEHAT JR' is concerned, the Plaintiff has registrations for the said mark in several classes. The details of the same have been set out in para 14 of the plaint.
7. The Defendant is involved in providing services related to digital and online marketing, web development, and search engine optimization (SEO).
8. The case of the Plaintiff is that in October 2022, the Defendant started a domain name/website by the name www.whitehatsr.in and adopted the logo [IMG]. The registration of the domain name was obtained on 9th March, 2020 and the Defendant was also available on various social media platforms. According to the Plaintiff, the structural similarity of the `W' logo used by the Defendant, with an arrow pointing upwards, to the Plaintiff's logo with a rocket launching upwards, indicates a deliberate design to deceive customers.
9. A comparative representation of the competing marks is set out below:
[IMG]
10. The Plaintiff, aggrieved by the adoption of the said impugned mark `WHITEHAT SR', sent a legal notice dated 4th October 2022 to the Defendant, demanding them to stop using the impugned mark. Despite there being no response, the Plaintiff followed up with a reminder on 17th October 2022. The Defendant finally responded on 18th October 2022, refusing to halt the use of the impugned mark `WHITEHAT SR'. The Defendant justified its use by claiming that their marks are distinct from the Plaintiffs' `WHITEHAT JR' trademarks and are used for different services.
11. The Plaintiff then filed the present suit seeking an injunction. Vide order dated 12th December, 2022, this Court had granted an ex parte ad interim injunction in the following terms:
"28. In the prima facie opinion of the Court, the consumers will be misled that the defendant is in some manner associated/affiliated with the plaintiff or the services are connected to that of the plaintiff.
29. A prima facie case has been made out on behalf of the plaintiff. Balance of convenience is in favour of the plaintiff and against the defendant. Irreparable harm and injury would be caused to the goodwill and reputation of the plaintiff if the defendant is continued to use the impugned marks. 30. Consequently, till the next date of hearing, the defendant, its agents, representatives and/or all other acting for and on its behalf are retrained from using the marks "WHITEHAT SR"/[IMG] or any other
