Dhani Loans And Services Limited & Anr. Vs www.dhanifinance.com & Ors. (Delhi High Court)
Conclusion: Delhi HC granted permanent injunction and compensation to the plaintiff as the triple identity test of identical/deceptively similar trademarks, identical services and trade channels stands satisfied and use of the impugned trademarks/domain name by Defendant constitutes infringement of the Plaintiffs’’ registered trademarks in present facts of the case.
Facts: The present suit has been filed by the plaintiffs for a decree of permanent injunction restraining the defendant no. 1 or on their behalf in any manner from using the impugned trade mark/logo or the domain name www.dhanifinance.com or any identical or deceptively similar trade mark/name/logo or domain name either as a trade mark, trading style, logo, domain name or in any other manner which is identical or deceptively similar to the plaintiffs’ trade marks ‘DHANI‘ or the ‘POTLI’ device stand-alone or in any combination thereof and/or domain name www.indiabullsdhani.com, in relation to any services especially for financial and transaction services and assistance thereto.
As per the plaintiffs, the original artistic works in the device marks are a subject matter of protection under Section 2(c) of the Copyright Act, 1956 (in short, ‘Copyright Act’) and the copyright therein is exclusively owned by the plaintiffs. It is the case of the plaintiffs that the defendant no. 1, deliberately and in brazen disregard to the plaintiffs’ statutory and common law rights, started using the impugned mark as well as operating a website under the impugned domain name www.dhanifinance.com, offering identical services as that of the plaintiffs. The plaintiffs assert that the adoption of the plaintiffs’ marks by the defendant no. 1 is mala fide and aimed at establishing an illegal association with the plaintiff no. 2 by seemingly coming across as just another website/portal of the plaintiff no. 2.
The Plaintiff submitted that the act of the defendant no. 1 of using a mark/logo deceptively similar to the logo amounts to infringement of the plaintiffs’ registered copyright and the defendant no. 1 has neither filed the written statement nor entered appearance, this is fit case for passing of a Summary Judgment under Order XIII-A of the Code of Civil Procedure, 1908, as applicable to the commercial disputes of a specified value.
After taking submissions of both sides, the Hon’ble High Court observed that such adoption of the mark would therefore amount to infringement of the registered trade marks of the plaintiffs. The same would also result in passing off of the services of the defendant no. 1 as that of the plaintiffs or as having some association with the plaintiffs. It would amount to unfair trade practices as also lead to the dilution of the plaintiffs’ mark ‘DHANI’ and the ‘POTLI’ device mark. Further, it was observed that the plaintiffs have been able to establish their reputation in the subject marks through their turnover figures and the amount spent on advertising the marks. The plaintiffs shall therefore suffer grave irreparable injury in case the defendant no. 1 is not restrained from using its deceptively similar mark.
The Hon’ble High Court placed its reliance on Indiabulls Housing Finance Ltd. & v. www.indiabullsdhanifinance.co & Anr., CS(COMM) 674/2019, wherein it was observed as follows:
“14. This Court finds merit in the contention of the Plaintiffs that Defendant No. 1 by using the trademarks ‘INDIABULLS‟, ‘DHANI‟ and (device), which are identical to the Plaintiffs‟ registered trademarks as well as by creating and operating the impugned domain name www.indiabullsdhanifinance.co, which is deceptively similar to Plaintiffs‟ domain names www.indianbulls.comand www.indiabullsdhani.com, is infringing the statutory rights of the Plaintiffs. Defendant No. 1, under the aforesaid trademarks is providing services relating to financial transactions, personal loans etc., which are similar to those of the Plaintiffs and the consumer base is also the same. Therefore, in my view, the triple identity test of identical/deceptively similar trademarks, identical services and trade channels stands satisfied and use of the impugned trademarks/domain name by Defendant No. 1 constitutes infringement of the Plaintiffs‟ registered trademarks…
18. ………… Plaintiffs have copyright ownership in get-up, look, layout and arrangement on their websites and Defendant No. 1 is using the copyrighted logo of the Plaintiffs with a similar layout etc., thereby infringing on the Plaintiffs‟ copyright.”
Further, the defendant no. 1 has chosen neither to file its written statement nor to enter appearance in the suit to defend the same. This is in spite of the ad-interim order dated 10.12.2019, not only restraining the defendant no.1 from using the trade marks ‘DHANI’ or the ‘POTLI’ device mark and the logo and domain name – www.dhanifinance.com and directing defendant nos.2 and 3 to suspend its website. Therefore, it was observed that this was a fit case where a Summary Judgment in terms of Order XIII-A of the CPC, as applicable to commercial disputes of a specified value, read with Rule 27 of the Delhi High Court Intellectual Property Rights Division Rules, 2022 deserves to be passed in favour of the plaintiffs and against the defendant no. 1.
On basis of the above, it was observed that the plaintiffs have been able to make out a case for grant of a permanent injunction restraining the defendant no. 1from using the impugned trade mark/logo or the domain name. and awarded Rs. 3,00,000/- from the defendant no. 1.
Accordingly, a decree of permanent injunction of the plaint was passed in favour of the plaintiffs and against the defendant no. 1.
FULL TEXT OF THE JUDGMENT/ORDER OF DELHI HIGH COURT
1. The present suit has been filed by the plaintiffs inter-alia seeking a decree of permanent injunction restraining the defendant no. 1, its family members, partners/promoters, directors, servants, agents, franchisees or any one acting for and on their behalf in any manner using the impugned trade mark/logo 
or the domain name www.dhanifinance.com or any identical or deceptively similar trade mark/name/logo or domain name either as a trade mark, trading style, logo, domain name or in any other manner which is identical or deceptively similar to the plaintiffs’ trade marks ‘DHANI‘ or the ‘POTLI’
device stand-alone or in any combination thereof and/or domain name www.indiabullsdhani.com, in relation to any services especially for financial and transaction services and assistance thereto.
2. The plaintiffs further prayed for a direction to the defendant nos. 2 and 3 to provide all the details of the registrant of the domain name of the defendant no. 1; including the name, address, contact number, e-mail ID, including its whereabouts and other such relevant details disclosing the identity of the registrant of the domain name of the defendant no. 1, along with the Internet Protocol (in short, ‘IP’) address of the domain name of the defendant no.1.
3. As far as the defendant nos.2 and 3 are concerned, vide order of this Court dated 22.09.2022, while passing certain directions, with the consent of the plaintiffs and the defendant nos. 2 and 3, they were deleted from the array of parties.
4. As far as the defendant no. 1 is concerned, it was proceeded ex-parte vide order of this Court dated 22.08.2022. The defendant no. 1, despite service, had neither entered appearance in the suit nor filed its written statement.
FACTUAL BACKGROUND
5. It is the case of the plaintiffs that the plaintiffs are a part of the Indiabulls Group, which has been providing financial services in India as well as internationally since the year 1994. The Indiabulls Group, as on 31.03.2018, had a combined revenue of over Rs. 22,114.9 Crore (Rupees Twenty-Two Thousand One Hundred Fourteen and Nine Crore only) and PAT of Rs. 6,072.2 Crore (Rupees Six Thousand Seventy-Two and Two Crore only). The plaintiff no. 1 alone had a combined revenue of over Rs. 1650 Crore (Rupees One Thousand Six Hundred Fifty Crore only) and PAT of over Rs. 400 Crore (Rupees Four Hundred Crore only) as on 31.03.2019.
6. The plaintiffs assert that the plaintiff no. 1 is a non-banking finance company and is a wholly owned subsidiary of the plaintiff no. 2. The plaintiff no. 1 is inter-alia engaged in the business of providing personal loans, business loans and various other financial facilities through its array of products.
7. It is further asserted that the plaintiff no. 2 is one of India’s leading capital market companies providing securities and derivative brokering services. The plaintiff no. 2 was the first company to be assigned a BQ-1 Grading by the CRISIL, which is the highest broker quality grading. Brickworks Ratings has also assigned a strong credit rating of BWR A+ and BWR A1+ for the plaintiff no.2’s fund and non-fund-based facilities.
8. The plaintiffs further assert that in September 2017, the plaintiffs launched its services for ‘IndiabullsDhani’ and along with the domain name indiabullsdhani.com, a mobile and web-based loan application developed to offer personal financing solutions. The mobile application, ‘Indiabullsdhani‟ was ranked as among the top three downloaded mobile applications in the financial services sector, having more than 11.5 million downloads as of September 2018.
9. It is asserted that the plaintiff no. 1 is the registered proprietor of the trade mark/logo/device of ‘POTLI’/ in Class 9 and is the registered proprietor of the trade mark/logo/device of the marks ‘DHANI’ and its variations thereof with the ‘POTLI’ device mark in Classes 9, 35, 36 and 42. The details of the plaintiffs’ registrations for and bearing the ‘POTLI’ device mark under the provisions of the Trade Marks Act, 1999 (in short, ‘the Act’) are set out hereunder:
