DHL INTERNATIONAL GMBH V.

DLH EXPRESS SERVICES

PRIVATE LTD
CS (COMM) 563/2020 & I.A.16452/2021

Background of the case

The plaintiff which is a Germany based company filed the present suit to attain permanent
injunction against the defendant. The plaintiff is a logistic services company set up in 1960
and now spread across the world in more than 200 countries employing hundreds of
employees and offering various services. The plaintiff has been the official logistics service
partner for major events like Formula one and others and has won major industry awards like
‘Global 500- The Words’ Most Valuable Brands’. The plaintiff has a mark and distinctive
logo and trade dress which has evolved since its inception in the year 1969 ( as shown in pic
above in left). The plaintiff’s mark has been associated in various forms such as “DHL
Supply Chain”. It is to be noted that the plaintiff has enforced its mark in various courts in
India and abroad. Accordingly, the “WIPO Arbitration and Mediation Center” confirmed, in
the case of “DHL International GmbH v. Richard Yaming” , the “worldwide notoriety" of the
'DHL' mark”.

The defendant that is DLH Express Services Pvt. Ltd. is a courier service company which
uses the mark ( as shown in the pic on the right above). The plaintiff acquired the knowledge
about the same in the year 2020. With respect to the defendant application of registration the
said mark the registrar quoted the plaintiff mark in examination report. In reply to which the
defendant plead phonetic and visual different and claim of use was April 2015 by the
defendant. The application remained pending as on the date of judgment.

Submissions by the plaintiff

 The plaintiff alleged that the that the marks and logos adopted by the Defendant are
almost identical to the DHL mark and logo. The colour combination is also identical.
Writing style and all the features of the DHL mark are being used by the Defendant.
 Moreover, the defendant was using the similar email address as of the plaintiff, the
website address, the hoardings was also similar. Also, a search conducted on Google
would also show that when the name of the Defendant is added on the search bar, the
Plaintiff’s search results show up. Thus, it shows that there is hardly any difference
between the Plaintiff and the Defendant’s marks.
 Plaintiff has also undertaken various successful enforcement actions for its mark in
India and abroad.
 The plaintiff alleged that the use of the mark DLH by the Defendant would severely
impinge upon the Plaintiff’s right severally.
 The plaintiff prayed for the permanent injunction on the use of mark and declaration
of the said mark of the plaintiff as well-known trademark.

Submissions by the defendant

1. The Defendant has already changed its name from DLH Express Services Pvt. Ltd. to
M/s. Dogra’s Cargo Express Private Limited with effect from 29th January, 2021.
2. The Defendant was actually collecting the courier packets from customers and was
availing of authorized channel business partners of the Plaintiff for dispatching the
goods/packets.
 3. The Defendants do not intend to use the mark DHL, DLH or the logo for the services
provided by it.

DECISION
The court took into consideration the fact that Defendant has already changed the name DLH
and the use of the impugned mark has also been stopped, the court granted permanent
injunction in favour of the Plaintiff, by way of summary judgment.

DHL AS WELL-KNOWN TRADEMARK

The Trade Marks Act of 1999 has made the aforementioned idea of "well-known" marks
receiving recognition a legal requirement, enhancing the recognition given to such marks.
Section 2(zg) of the act defines well-known trademarks and section 11 gives protection to
well-known trademarks. Rule 124 of the Trademark Rules, 2017, provides for declaration of
well-known status by way of an application, without the requirement for any proceedings or
rectification. The Article 6bis of the Paris Convention being the cornerstone of protection for
well-known trademarks provides that –
“The countries of the Union undertake, ex officio if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of
a trademark which constitutes a reproduction, an imitation, or a translation, liable to create
confusion, of a mark considered by the competent authority of the country of registration or
use to be well known in that country as being already the mark of a person entitled to the
benefits of this Convention and used for identical or similar goods. These provisions shall
also apply when the essential part of the mark constitutes a reproduction of any such well-
known mark or an imitation liable to create confusion therewith”.
The Courts have developed jurisprudence on the matter since the recognition of
‘WHIRLPOOL’ as well known trademark. In NR Dongre v. Whirlpool Corporation & Anr.,
AIR 1995 Delhi 300 the court held that held that –
“trade mark 'WHIRLPOOL' has acquired reputation and goodwill in this country and the
same has become associated in the minds of the public or potential buyers with the goods of
the first respondent. Even advertisement of trade mark without existence of goods in the
market is also to be considered as use of the trade mark. It is also not necessary however that
the association of plaintiffs mark with his goods should be known all over the country or to
every person in the area where it is known best”. The said decision has been upheld by the
Supreme Court in Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del) where the court
held that –
“A well known trademark is a mark which is widely known to the relevant general public and
enjoys a comparatively high reputation amongst them”.
Here the court unequivocally declared the mark DHL to be a well-known mark, especially in
the fields of logistics, freight transport, and other related industries, in light of the established
legal precedent regarding the recognition of well-known marks in, ‘WHIRLPOOL’ case and
in light of the substantial evidence showing the mark's continued use in India and throughout
the world as well as the registrations, independent third party write-ups and articles, and
enforcement actions that are documented.