Factual Background:
DHL International GmbH, a German logistics giant, sued DLH Express Services Private Ltd. for trademark infringement, passing off, and dilution. DHL, established in 1969, uses the "DHL" mark and a distinctive red-and-yellow logo globally, including India, where it has significant presence and registrations. The defendant adopted "DLH" for courier services, mimicking DHL’s mark and logo, prompting DHL to seek injunctions and a declaration of "DHL" as a well-known mark.
Procedural Background:
The suit (CS(COMM) 563/2020) was filed with an application (I.A. 16452/2021) for summary judgment. On December 22, 2020, an ex-parte interim injunction restrained the defendant from using "DLH" or similar marks, which continued until the final hearing. The defendant later changed its name to Dogra’s Cargo Express Private Ltd. and ceased using "DLH." The court decided the matter on April 22, 2022.
Provisions of Law Referred and Their Context:
Section 2(zg) of the Trade Marks Act, 1999 defines a "well-known trade mark" as one recognized by a substantial public segment, indicating a trade connection.
Section 11(2) protects such marks against unfair use, even for dissimilar goods. Section 11(6) lists factors like public recognition and enforcement for determining well-known status.
Rule 124 of the Trade Marks Rules, 2017 allows well-known mark applications.
Order XIIIA of the Commercial Courts Act, 2015, read with Rule 27 of the Delhi High Court IPD Rules, 2022, permits summary judgment without a separate application if the defendant lacks a viable defense.
Judgments Referred with Complete Citation and Context:
NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 – A Delhi High Court ruling, affirmed by the Supreme Court, recognized "Whirlpool" as well-known due to extensive use and reputation, even without widespread goods presence.
Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del) – A Delhi High Court decision elaborating that well-known marks enjoy trans-border reputation and protection against dilution.
Dharampal Satyapal Sons Pvt. Ltd. v. Akshay Singhal & Ors., CS(COMM) 129/2019, decided on October 17, 2019 – Reaffirmed principles of well-known mark recognition.
WIPO decisions like DHL Operations B.V. v. Karel Salovsky (Case No. D2006-0520) and DHL International GmbH v. Richard Yaming (Case No. D2012-1081) acknowledged "DHL"’s global notoriety.
Reasoning of Court:
The court found "DHL" distinctive and globally renowned, supported by extensive evidence of use, registrations, and enforcement. The defendant’s "DLH" mark and logo were nearly identical, violating DHL’s rights, despite the defendant’s name change and cessation of use.
Summary judgment was warranted under Order XIIIA as the defendant had no real defense.
For well-known status, the court applied Section 11(6) factors, noting DHL’s widespread recognition, enforcement success, and third-party acclaim, concluding it merited protection across logistics and related fields.
Decision:
The court granted a permanent injunction against the defendant using "DLH" or similar marks, ordered withdrawal of the defendant’s trademark application (no. 3147906), and declared "DHL" a well-known mark, directing the Trademark Registry to notify it. The suit was decreed, and all applications disposed of.
Case Title: DHL International GmbH Vs. DLH Express Services Private Ltd.
Date of Order: April 22, 2022
Case Number: CS(COMM) 563/2020
Name of Court: High Court of Delhi at New Delhi
Name of Hon’ble Judge: Justice Prathiba M. Singh
