In DHL International GmbH v DLH Express Services Private Ltd (22 April 2022), the IP Division of the Delhi High Court has not only restrained the use of a deceptively similar mark and logo, but also declared DHL to be a well-known mark.

The conflicting marks are depicted below:

Background

1. DHL asserted rights in the trademark and name DHL for logistic services since 1969. It claimed that the mark was derived from the first letters of the surnames of its three founders – Adrian Dalsey, Larry Hillblom and Robert L
2. DHL claimed that it currently uses its mark in a stylized red font on a yellow background, giving prominence to the letters ‘D’, ‘H’ and ‘L’ with three red lines in a stylized form on either side of the letters ‘D’ and ‘L’.
3. The DHL mark and logo are registered in numerous classes, including Classes 16, 28, 36, 39 and 41, not only in India but also in other countries such as Australia, Germany, Italy, Japan, Singapore, the United Kingdom and the United States.  
4. In and around January 2020, DHL came across a pending trademark application for DLH EXPRESS SERVICES (P) LTD. in Class 39; the Trademark Registry had cited the prior DHL mark in the defendant’s examination report. In reply, the defendant claimed that the rival marks were visually and phonetically dissimilar. When the defendant’s DLH mark was published in the Trademarks Journal, DHL filed an opposition.
5. DHL thereafter carried out an investigation at the defendant’s premises, which revealed that the latter was using ‘DLH’ in the company name and on different platforms, including websites and hoardings. Moreover, DHL’s actual mark was also being used by the defendant. DHL thus filed a trademark infringement suit against the defendant before the Delhi High Court.
6. At the preliminary stage, the court had passed an ex partead interim injunction restraining the defendant from using the DLH mark and logo or any trademarks similar to that of DHL, including its domain name.

Arguments of the parties

DHL’s contentions

1. The marks and logos adopted by the defendant were almost identical to the DHL mark and logo. Moreover, the defendant used a deceptively similar mark with an identical colour combination (red and yellow) for identical services, and used the same trade channels as DHL.
2. The DHL name appears when a search for the defendant’s name is conducted on Google, which clearly shows the similarity between the rival marks. 
3. DHL prayed for summary judgment and a declaration that its mark is well known.

Defendant’s contentions

1. The defendant collects courier packages from customers and uses authorised business partners of DHL for dispatching the goods/packages.
2. The defendant had changed its name from DLH Express Services Pvt Ltd to Dogra’s Cargo Express Private Limited with effect from January 2021.
3. It did not intend to use the DLH mark or a logo including the DHL mark for its services.

Decision

1. Based on the pleadings and materials on record, the mark DHL, being derived from the initials of DHL’s founders, was arbitrary or inventive in nature. Thus, the mark DHL was entitled to the highest protection. The defendant had copied the DHL mark and logo, which violated DHL’s statutory and common law rights.
2. Since the defendant had changed its name and use of the impugned mark had been stopped, a case for a grant of permanent injunction by way of summary judgment had been made out.
3. The defendant was directed to withdraw its trademark application, and the Trademarks Registry was directed to pass an abandonment order in relation to the opposition within four weeks of the court’s order.
4. Referring to the provisions on well-known marks contained in Sections 2(zg), 11(2) and 11(6) of the Trademarks Act, read with Rule 124 of the Trademarks Rule 2017, it was observed that:
   • extensive evidence had been placed on record showing the wide, extensive and continuous use of DHL’s mark throughout India, as well as in other countries.
   • registrations and independent third-party write-ups and articles, as well as enforcement actions by DHL, were also placed on record.

Based on the aforesaid, the mark DHL was held to be well known, especially in the field of logistics and courier services, and DHL was entitled to a declaration that its trademark DHL was a well-known mark in India.

Comment

The Trademarks Office has laid out a clear procedure for brand owners to record their trademarks as well known if they can satisfy the conditions laid down in Sections 11(2), 11(6) and 11(7) of the Trademarks Act, read with Rule 124. The ambiguity arises from the fact that Section 11(8) of the act clearly outlines the court’s power to determine that a trademark is well known and that, upon such ruling, the registrar shall consider it to be a well-known trademark. On the other hand, the registrar has set out a form and specified fees for recording a mark as “well known” in India. Therefore, the Trademarks Registry’s stand has been that, for any trademark to be included in the list of “well-known” marks, an application must be filed on Form TM-M, together with the official fee of Rs100,000 (approximately $1,290).

The issue surrounding the process to be adopted by the Trademarks Registry for marks that are declared “well known” by the courts is also pending in TATA SIA Airlines Limited v Union of India (WP (C) 11642 (2019)) – in particular, whether such marks require any further examination to be included in the list of well-known marks, or whether a court declaration is sufficient for them to receive the coveted well-known mark status.

This article first appeared in WTR Daily, part of World Trademark Review, in (June 2022). For further information, please go to www.worldtrademarkreview.com