The Delhi High Court recently restrained a digital marketing service provider from using the mark ‘WhitehatSR’, after online edtech start-up ‘WhiteHat JR’ moved the HC claiming trademark infringement and passing off.
After comparing the trademarks of the two parties, as well as their domain names, a single-judge bench of Justice Amit Bansal, in its December 12 order, observed that the marks used by defendant — Vinay Kumar Singh — are deceptively similar to those of the plaintiff — Whitehat Education Technology Private Limited.
The HC said that the “replacement of the suffix ‘Sr’ in ‘WhiteHat Jr’ would not result in a material difference” so as to distinguish the two marks.
The HC, in its “prima facie opinion”, held that “consumers will be misled” that Singh is in some manner associated/affiliated with Whitehat Education Technology Private Limited or that their services are connected.
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Granting an interim injunction, the HC stated that the plaintiff company had been able to make out a prima facie case in its favour and that the balance of convenience is in favour of the edtech start-up and against the digital marketing service provider. It further held that “irreparable harm and injury would be caused to the goodwill and reputation” of the start-up if the defendant continues to use the “WhitehatSR” trademark.
“Consequently, till the next date of hearing, the defendant, its agents, representatives and/or all other acting for and on its behalf are restrained from using the marks ‘WHITEHAT SR’ or any other deceptively similar variant thereof as a trademark, trade name, domain name, as a part of its email address/es or in any other manner which amounts to infringement of the plaintiff’s trademarks,” the order read.
The court also directed the defendant to take down all social media pages which infringe the plaintiff company’s trademark. It further directed domain name registrar Godaddy.com LLC to suspend access and operation of the website “whitehatsr.in” and take down the defendant’s domain name.
The edtech start-up, in August 2020, was acquired by Think & Learn Private Limited, commonly known as “Byju’s”. The HC was told that the plaintiff company had registered its “WhiteHat JR” trademark, as well as its other derivatives, in over 38 classes under the Trademarks Act. The plaintiff company said that it also holds the domain name “whitehatjr.com”, which was registered on May 23, 2018. It was argued that the “WhiteHat JR” trademark had acquired the status of a “well known” trademark due to its exclusive and extensive use by the plaintiff company.
The edtech start-up came across Singh’s website “www.whitehatsr.in” in October this year. The plaintiff company found that Singh is in the business of providing services pertaining to digital marketing under the “WHITEHAT SR” trademark, which is also used as part of the defendants’ domain name i.e., “whitehatsr.in”, registered on March 9, 2020. The court was informed that the defendant operates various social media platforms under the name as well.
Consequently, on October 4, the plaintiff company sent a legal notice to Singh, asking him to cease using the “WhitehatSR” trademark. “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 HC noted. The edtech start-up, thereafter, moved the HC in a lawsuit seeking “permanent injunction”, restraining infringement of its trademarks and passing off.
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