DHL International GmbH (DHL) is a German logistics company. DHL was set up in San Francisco in the year 1969 and is engaged in offering various services including parcel and international express service, freight transport, and supply chain management services, as well as e-commerce logistics solutions. In 2001, DHL incorporated DHL Worldwide Express Pvt. Ltd. (later known as DHL Express (India) Pvt. Ltd.)

 

 

It is the registered proprietor of the trademark “DHL” which was adopted in 1969. The mark is used in various forms and variants as “DHL SUPPLY CHAIN”, “DHL Express”, “DHL Global Forwarding”, etc. The mark and logo are registered in India and more than 180 countries worldwide including Japan, Australia, Germany, Italy, Singapore, USA, UK, etc.

 

 

 

Source – Judgement

 

 

 

 

DHL was aggrieved of the fact that DLH EXPRESS SERVICES PRIVATE LTD (DLH) was using the mark “DLH” for its courier services. DHL came to know about this around January, 2020 when it came across the TM application filed by DLH for the mark.

 

 

The TM registry had issued an examination notice against the mark “DLH” and cited DHL’s registered mark in its Examination report, however DLH replied claiming its marks to be distinguishable from DHL also claimed its user from 2015. DHL thereafter has opposed the said mark and the same is pending.

 

 

DHL consequently approached the Delhi High Court and filed a suit seeking permanent injunction restraining infringement of trademark, trade dress, dilution and tarnishment, passing off, damages etc., against DLH

 

 

DHL claimed that the marks and logos adopted by DLH were almost identical to their registered mark and logo. DHL contended that the colour combination, styling, font and spacing and the overall the features were also identical. DHL submitted that, since the services and the trade channels for which the marks were in use were also identical, the possibility of confusion in the minds of the consumers was extremely high. Moreover, the use of the mark “ ” by DLH not suggested the likelihood of confusion between the two but also hampered the goodwill and reputation painstakingly acquired by DHL over a significant span of time.

 

 

DHL further submitted that, a search conducted on Google would also show that when the name of DLH is added on the search bar, DHL’s search results show up. Thus, it shows that there is hardly any difference between the two marks.

 

 

The Court on an earlier had granted an ex-parte ad interim injunction restraining DLH from using the impugned trademark and logo or any trademarks or logos.

 

 

Against this, DLH countered that it had 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. It further submitted that DLH was actually collecting the courier packets from customers and was availing of authorized channel business partners of DHL for dispatching the goods/packets. DLH further submitted that it did not intend to use the mark “DLH” nor the logo for the services provided by it.

 

 

After hearing both the parties, the Court held that the mark “DHL” enjoyed tremendous goodwill and reputation owing to extensive use across the globe. The mark was coined from the initials of the names of the founders and thus made it a distinctive and arbitrary/inventive mark. It would be entitled to the highest protection.

 

 

The Court held that a perusal of the competing marks and logos shows that the marks are almost identical to DHL’s mark and logo has also been copied deliberately by DLH. The Court noted that the services for which DLH is using this mark were identical and there was no defence taken by DLH, except the fact that DLH is, in fact, using various channels of the DHL from 2013. The fact that the DLH may be using the authorized channels would not give any permission to them to use DHL’s mark and logo.

 

 

In light of the above reasoning and considering the fact that DLH had already changed the name DLH and the use of the impugned mark had also been stopped, the Court found the present case fit for grant of permanent injunction in favour of DHL by way of summary judgment.

 

 

The Court also unhesitatingly declared “DHL” as a well-known mark, especially in the field of logistics, freight transport, courier services, international money etc. owing to the extensive evidence placed on record showing the global use of the mark DHL and continued use of the mark DHL in India as also the registrations and the independent third party write-ups and articles, and enforcement actions which are placed on record.