The Delhi High Court warned a digital marketing service provider to stop using the mark ‘WhitehatSR’. This move came after an online edtech startup ‘WhiteHat JR’ – a byju’s owned company, to the High Court stating that their trademark has been infringed by the company.
A single bench of Justice Amit Bansal on December 12 observed that the marks used by the other party – Vinay Kumar Singh are almost similar to that of the plaintiff – Whitehat Education Technology Private Limited. The bench compared the two trademarks as well as their domain names.
The HC declared that the “replacement of the suffix ‘Sr’ in ‘WhiteHat Jr’ would not result in a material difference” to determine the two marks.
“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. In the prima facie opinion of the Court, 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 said.
The HC granted an interim injunction after the plaintiff company was able to make out a prima facie case in its favor against the defendant.
It further held 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,” the court said while listing the matter for hearing next on March 21, 2023.
“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 ordered the defendant to take down all the social media pages and suspended access and operation of the website domain name “whitehatsr.in” which infringed the company’s trademark.
The High Court stated that the startup acquired by Byjus in August 2020 had registered its trademark 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.
The plaintiff company came across Singh’s website in October 2021 and realized that the company has been providing services under the “WhiteHat SR” trademark and has even registered its domain name on March 9, 2020.
Accordingly, on October 4, the plaintiff company sent a legal warning to Singh, appealing to him to stop 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 suit aiming for “permanent injunction”, restraining infringement of its trademarks and passing off.