Delhi High Court: In a case wherein, Whitehat Education Technology Pvt. Ltd., the plaintiff had filed a suit to grant permanent injunction against defendant’s marks and logos, Pratibha M. Singh, J.*, granted permanent injunction to the plaintiff, thereby restraining the defendant from using the mark ‘WHITEHAT SR’ and logos 
, 
or any mark or name which was either identical or deceptively similar variant of the plaintiff’s trade mark and trade name.
Background
The plaintiff runs an edu-tech startup that teaches coding to children, through its online platform. The plaintiff was originally established in 2018 and was acquired in August 2020 by ‘Think & Learn Pvt. Ltd.’ for 300 million dollars, which was operated by online platform Byju’s. It then expanded its business to offer classes in music, art, animation, video, etc. The plaintiff operated through domain name www.whitehatjr.com which was registered on 23-05-2018. On the other hand, the defendant was involved in providing services related to digital and online marketing, web development, and search engine optimization (SEO).
The plaintiff submitted that in October 2022, the defendant started a domain name/website by the name www.whitehatsr.in and adopted the logo 
. The registration of the domain name was obtained on 9-03-2020. The plaintiff further contended that, the structural similarity of the ‘W’ logo used by the defendant, with an arrow pointing upwards, to the plaintiff’s logo with a rocket launching upwards, indicates a deliberate design to deceive customers.
The plaintiff sent a legal notice dated 04-10-2022 to the defendant and demanded them to stop using the impugned mark. The defendant refused to halt the use of the impugned mark ‘WHITEHAT SR’. The defendant justified its use by claiming that their marks were distinct from the plaintiffs’ ‘WHITEHAT JR’ trade marks and were used for different services. Thereafter, the plaintiff filed the present suit seeking permanent injunction against defendant’s marks.
A comparative representation of plaintiff and defendant’s marks:
Analysis, Law, and Decision
The Court opined that the mark ‘WHITEHAT JR’ was a registered trade mark which had acquired enormous reputation owing to the extensive use which had been done over a short period of time. The impugned mark of the defendant, ‘WHITEHAT SR’, was almost identical to the plaintiff’s mark. Further, the writing style of the letter ‘W’ was also identical to the plaintiff’s writing style. Thus, the Court opined that the defendant could not be permitted to use the impugned mark ‘WHITEHAT SR’ either in physical or in online platforms in any manner whatsoever.
Accordingly, the Court restrained the defendant by permanent injunction from using the mark ‘WHITEHAT SR’ and logos , , or any mark which was either identical or deceptively similar variant of the plaintiff’s trade mark and trade name ‘WHITEHAT JR’ either as a part of the its trade mark, trading style or domain name or even in e-mail addresses which would result in violation of the plaintiff’s statutory and common law rights.
The Court also directed Godaddy.com to transfer the domain name www.whitehatsr.in upon payment of any requisite charges.
Further, the Court relied on Uflex Ltd. v. Government of Tamil Nadu, (2022) 1 SCC 165 and Cross Fit LLC v. RTB Gym and Fitness Centre, 2022 SCC OnLine Del 2788 and opined that despite being put to notice, the defendant did not give up the infringed mark, and had not contested the matter but compelled the plaintiff to file the suit, therefore, the plaintiff was entitled to receive the actual costs. The Court granted a decree in favour of the plaintiff for the sum of Rs. 9,24,000.
Accordingly, the suit was disposed of, and the next date of the hearing was cancelled.
[Whitehat Education Technology Pvt. Ltd. v. Vinay Kumar Singh, 2023 SCC OnLine Del 4663, decided on 02-08-2023]
*Judgment by- Justice Pratibha M. Singh
Advocates who appeared in this case:
For the Plaintiff: Prithvi Singh, Rohan Seth, Archita Nigam, Advocates.
