There have been recent events involving the award of an interim injunction in favour of Whitehat Jr., where claims for trademark infringement were brought against a business utilising “Whitehat Sr” as both a trademark and domain name. An order dated by 12th December 2022 by Delhi high court did specify and clarify a lot of things about this case between this Edtech Company and the impugned mark’s company, let’s learn more about this case and the developments that took place throughout the whole.
PARTIES CONCERNED IN THE CASE-
PLAINTIFF– Whitehat education technology private limited
RESPONDENT– Vinay Kumar Singh
BENCH– single bench, Coram consisting of Hon’ble mr. Justice Amit Bansal
CASE NAME– WhiteHat Education Technology (P) Ltd. v. Vinay Kumar Singh.
FACTS OF THE CASE-
The plaintiff company, i.e. Whitehat education technology private limited, is an EdTech start-up offering online education services under the name of “Whitehat jr”. In August, 2020 the plaintiff company was acquired by Think & Learn Private Limited, which operates under the name of Byju’s in the market. Talking in the terms of registration of trademark, Plaintiff company has registrations of the mark ‘WhiteHat Jr’ as well as other derivatives in class 9,38,41 and in other classes accordingly. Plaintiff also holds the domain name “whitehatjr.com”, which was registered on 23rd May, 2018.
In 2022, plaintiff came across the defendant’s website “www.whitehatsr.in”, who was in the business of providing services pertaining to digital marketing under the marks ‘WhiteHat Sr’. On further investigation , it was submitted that the impugned marks were being used as part of the defendant’s domain name whitehatsr.in, which was registered in 2020. The defendant also operated various social media platforms using the impugned marks. A legal notice dated 4th October, 2022 was sent by the plaintiff to the defendant calling upon the defendant to cease the usage of the impugned marks. A response was received from the defendant on 18th October, 2022 wherein the defendant acknowledged the plaintiff’s intellectual property rights in its ‘WhiteHat Jr’ trademarks and it was claimed that the impugned marks are different from the marks of the plaintiff’s and are being used for different services i.e., consultancy services.\
The Plaintiff then had filed the present suit seeking a permanent injunction on the grounds of trademark infringement and passing off.
CONTENTIONS BY THE PLAINTIFF-
The plaintiff did summit their search reports and proofs of their registration of their mark under different classes in order to show that their mark is well registered and used in the market. Plaintiff also stated that they also hold the domain name “whitehatjr.com”, which was registered on 23rd May, 2018. It was even claimed that the plaintiffs’ trademark has become a “well known” trademark as a result of their exclusive and widespread use of the mark in marketplaces, for the purpose of using it in social media, advertisements etc.
They even specified further in the court that they sent a legal notice dated 4th October, 2022 to the defendant calling upon the defendant to cease the usage of the impugned marks, further which a response was received from the defendant on 18th October, 2022 wherein the defendant acknowledged the plaintiff’s intellectual property rights in its ‘WhiteHat Jr’ and they further claimed that the services of the defendant’s company is different from the plaintiff’s.
CONTENTIONS BY THE DEFENDANT-
The defendant’s submits in the court that they did acknowledge the legal notice which was sent by the plaintiffs to stop using of the impugned and they even acknowledged the plaintiff’s intellectual rights on their mark i.e. Whitehat jr. . They further even specified in the court and in the notice that they provide way more different services than that of plaintiff. They even stated in the court that they use this impugned trademark for digital marketing and consultancy services. Whereas the plaintiff uses this mark for the providing educational services as they are an Ed-tech company. Thereby there won’t be any sense of confusion between consumers as they both are serving in different areas of trade.
OBSERVATIONS BY THE COURT-
The court after acknowledging their summations and hearing their contentions, further looked into the marks. A comparative analysis of the marks and domain name used by the defendant and the plaintiff was done, which is given below.
When such side-by-side comparison of the marks was done, it shows that the marks being used by the defendant are deceptively similar to those of the plaintiff. Hon’ble Justice Bansal observed that the marks being used by defendant are “deceptively similar” to those of Whitehat Education Technology Private Limited. The replacement of the suffix “Sr” in ‘WhiteHat Jr’ would not result in a material difference so as to distinguish the marks of the defendant from those of the plaintiffs. According to the prima facie opinion of the Court, they thought that 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. The court added that a prima facie case has been made out on behalf of the plaintiff, adding that the balance of convenience lies in favour of WhiteHat Jr and against Singh.
The hon’ble court even further stated that if such marks are used and such possibilities happen, it would be harmful for the plaintiff. The court also stated that “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.”
WHAT WAS HELD BY THE COURT?
After listening to the contentions and evidences of both the side of the parties and doing further investigation and analysis, the court then did pass the injunction order in the favour of the plaintiff.
The Court held that the defendant and its agents, representatives and /or all other acting for and on its behalf were restrained from using the mark ‘WhiteHat Sr’ or any other deceptively similar variant thereof as a trade mark, trade name, domain name, as a part of its email address/es or in any other manner which amounted to infringement of the plaintiff’s trademarks.
The court further held that the Defendant’s continued use of the mark would result in irreparable injury and harm to the goodwill and reputation of the Plaintiff. Therefore, the Delhi High Court restrained the Defendant from using the mark “WHITEHAT SR” or any deceptively similar variant and has directed the Defendant to take down social media pages including but not limited to Facebook, Instragram and LinkedIn which that infringe upon the Plaintiff’s mark. Further, Godaddy.com LLC has also been directed to take down and suspend access to the domain name www.whitehatsr.com. The court also set the next date of hearing at 21st march 2023.
IN VIEW OF TRADEMARK LAW AND ACT-
One of the biggest hurdles in the way of getting the trademark registered is the similarity of the trademark with an existing mark. It is crucial to understand and make sure that your trademark is unique i.e. it is not deceptively similar to the existing marks. In order to be registered as the trademark in India the said mark must fulfil the criteria of distinctiveness, non-similarity, not prohibited by law etc. One of the most common ground on which the trademark application is objected is the trademark being deceptively similar. According to the Section 2(1) (h) of the trademark Act 1999, the deceptively similar mark is defined as “A mark is deemed to be deceptively similar to another mark if it so merely resembles that other mark as to be likely to or cause confusion”. By these definition it could be said that the trademark is considered as the similar to the existing one if it is believed that a regular prudent man is likely to get confused between the two marks. The similarity is determined on the basis of the sight, phonetic similarity, colour combination, designing and the overall makeup of the mark. It is even told in Section 11(1) of the trademark act 1999, where a trademark cannot be registered in India if it is identical with an existing trademark and the goods and services covered by the proposed mark are also similar that is likely to create confusion on the art of public at large.
- Link of the order by hon’ble court- https://drive.google.com/file/d/1P82h9YhgY_naepTYARr-XD3N9SrniyIB/view
- WhiteHat Education Technology (P) Ltd. v. Vinay Kumar Singh,decided on 12/12/2022
- WhiteHat Jr vs Whitehat SR: Delhi High Court Orders Suspension Of Digital Marketing Website In Byju’s-owned Platform’s Trademark Suit – https://www.livelaw.in/news-updates/whitehat-jr-whitehat-sr-delhi-high-court-interim-injunction-trademark-infringement-suit-216948
- WhiteHat Education Technology (P) Ltd. v. Vinay Kumar Singh,decided on 12/12/2022
- Delhi High Court grants interim injunction in favour of WhiteHat Education Technology in a trade mark infringement suit for its mark ‘WhiteHat Jr’- https://www.scconline.com/blog/post/2022/12/19/delhi-high-court-grants-interim-injunction-in-favour-of-whitehat-education-technology-in-a-trade-mark-infringement-suit-for-its-mark-whitehat-jr/
- What is Deceptively Similar Trademarks Case in India | Brief Example- https://www.registrationwala.com/knowledge-base/ipr-services/trademark/deceptively-similar-trademarks-example-cases-in-india