DZINE GARAGE PVT LTD Vs. DZINE CAFE FZE

JUDGEMENT

(1.) 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, . 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 namerespectively.

(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 The applicant/defendant is involved in the business of web designing, multimedia presentations, online communication, etc. According to the respondent/plaintiff, the applicant/defendant has deliberately adopted a similar service mark/trade name D'Zine cafe in a calculated attempt to cash in on the reputation and goodwill enjoyed by the respondent/plaintiff and to get illicit and quick gains without putting any substantial efforts. The unauthorized and unlawful use of D'Zine cafe for the applicant/defendant's business activities is with mala fide intention to make the customers believe that their business also originates from the respondent/plaintiff. On 29.3.2007, the respondent/plaintiff issued a notice calling upon the applicant/defendant to desist from using D'Zine as a service mark or as part of their corporate name/domain name. The applicant/defendant sent an evasive reply, but failed to comply with the notice. Again, a rejoinder was issued by 16.4.2007 by the respondent/plaintiff stating the similarity of the line of business of the applicant/defendant would infringe the right of the respondent/plaintiff. They also enclosed the registration certificate of the said service mark D'Zine. But the applicant/defendant did not comply with the lawful demands of the respondent/plaintiff and therefore, the suit was filed and interim injunction was asked. Interim injunction was granted on 14.6.2007.

(3.) APPLICATION No. 4410 of 2007 for striking out the pleadings and rejecting the plaint will be taken up first. According to the applicant/defendant, they do not have any office in India, much less in Chennai and the premises in Shivalaya Building given in the plaint has been taken on lease by M/s. Niyati Technology Pvt. Ltd. and a copy of the lease agreement is also produced. According to the learned Counsel appearing for the applicant, the fact that the Chennai docket address was given by the applicant in the website is taken advantage of by the respondent/plaintiff and the suit has been filed in this Court, knowing fully well that this Court has no jurisdiction. According to the deponent of the affidavit, the only work carried on by him is to receive and forwarded trade enquiries and he is only a liaison contact person. The applicant does not have any bank account, billing or any other business facility anywhere in India and it is totally based in the U.A.E. According to the applicant, without prejudice to his contention that this Court has no jurisdiction to try the suit, the word D'Zine is a common and universally corrupted and abbreviated form of the mark and word 'design', which is used in SMS messages sent through mobile phones, where abbreviated words are very commonly used throughout. According to the applicant, in an online search of the internationally famous website Google, it is found that there are in all 1,90,000 search options available on and over the said word D'Zine alone and as such, the respondent/plaintiff does not, and cannot, have the sole and exclusive corporate and domain right over the said common mark and word. It is submitted that no one will be misled by the use of the said mark and work and there is no confusion among general public and therefore, the suit has been filed only to ruin the business reputation of the applicant, that too in a Court which has no jurisdiction and the same has, therefore, to be dismissed.