The court upheld the exclusive rights of the plaintiff over the service mark 'D'Zine' and emphasized the importance of prior user and potential confusion in trademark infringement cases.

JUDGMENT

Prabha Sridevan, J.

The respondent/plaintiff is carrying on the business of a leading interactive agency, specializing in online communication and claims to be one of the oldest interactive agencies with global presence, with offices at Chennai, Mumbai and London. They have extensive experience in managing online communication for a spectrum of the industry, viz., banking, insurance, healthcare, IT etc. Their product suite includes a core content management system "Brew Master" which enables creation, management and deployment of virtually any type of content across multiple websites or interfaces. The respondent/plaintiff is the pioneer in "Communities build brands" in India with a number of successful experiences in this segment. In the course of business, the applicant/plaintiff adopted the mark D'ZINE and has registered the said mark under No. 1323883 dated 3.12.2004 in Class 35 in respect of "advertising which includes website building and maintenance, etc. The respondent/plaintiff claims that their service, mark D'Zine is a coined word invented by them and they are the first one to adopt D'Zine as a predominant feature of a service mark, corporate name and domain name in the world in respect of web designing and internet, computer business. The mark D'Zine is a unique, distinctive feature, which was adopted by the plaintiff and has attracted customers all over India and in several countries abroad. The respondent/plaintiff's service mark D'Zine not only forms a predominant feature of their corporate name, but it also forms a predominant feature of their domain name, www.dzinegarage.com. They have also acquired tremendous goodwill and reputation by an extensive use of the mark D'Zine garage with the predominant feature D'Zine as a service mark and as part of the corporate name and domain name. The respondent/plaintiff is doing business worth several lakhs of rupees and the business has been increasing steadily all through the years. The respondent/plaintiff has invested huge sums of money for advertising their service mark and as part of the corporate name and domain name. By virtue of such long, extensive, open and continuous use and advertisements, the service mark D'Zine has acquired enormous reputation and goodwill amongst the members of the public all over India and in many countries abroad. According to the respondent/plaintiff, the service mark and domain name has etched in the public a good reputation and goodwill in their business and commands a large loyal clientele from across India and many countries abroad. The service mark, trading style and domain name D'Zine plays a vital role in the business of the respondent/plaintiff and the customers of the respondent/plaintiff also spread the reputation by word to their friends, relatives and acquaintances across the country, thus bringing in new clientele. The nature of the respondent/plaintiff's business is that most of the customers/clients do a search in the internet such as Google or Yahoo and access their website to get details. Satisfied with the scope of the services that can be provided by the plaintiff, the customer/client contacts the respondent/plaintiff, places the order with the internet being used as platform for their business activities, the service mark D'Zine plays a vital role as most of the customers do the search typing the registered service mark D'Zine. The above facts coupled with the wide and extensive advertising by them has brought enviable reputation to their business, their service mark and domain name D'Zine, trade name D'Zine garage and domain name www.dzinegarage.com respectively.

2. The respondent/plaintiff states that they became aware that the applicant/defendant is using the mark D'zine cafe as a service mark and as part of their corporate name and domain name www.dzinecafe.com. The applicant/defendant is involved in the business of web designing, multimedia presentations, online communication, etc. According to the responden