Sap Se vs. Vtech Soft Solutions & Ors.

$~31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of Decision: 29 January, 2024
+ CS(COMM) 110/2020 & I.A. 3498/2020, I.A. 7098/2020
SAP SE ..... Plaintiff
Through: Mr. Ranjan Narula, Mr. Shashi P.
Ojha, Ms. Shivangi Kohli and Ms.
Aishani Singh, Advocates.

versus

VTECH SOFT SOLUTIONS & ORS. ..... Defendants
Through: None.

CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA

JUDGMENT


SANJEEV NARULA, J. (Oral):



1. Plaintiff has filed the instant suit, inter alia , seeking permanent
injunction restraining infringement of trademarks and copyright, passing off,
unfair competition; and delivery up, rendition of accounts, damages, etc.
2. The case set out in Plaint is as follows:
(i) Plaintiff – ‘SAP SE’ engaged in providing end-to-end software
application solutions, is incorporated under the laws of Germany. It
was established in 1972 and is the market leader in enterprise
application software. It has extensive operations in India and has set
up a wholly-owned subsidiary – SAP India Private Limited.
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By:SAPNA SETHI
Signing Date:05.02.2024
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CS(COMM) 110/2020 Page 1 of 16

(ii) It has been selling and distributing its products and services under
trade mark ‘SAP’, which was coined, adopted and has been in use
since 1972. Plaintiff is the registered proprietor of the mark ‘SAP’ and
its formative marks such as ‘
’, ‘SAP HANA’ etc. in over 75
countries, including India. Details of trademark and copyright
registrations in favour of Plaintiff has been provided at Paragraph
Nos. 14, 20 and 21 of the Plaint, respectively. Plaintiff’s trademarks
form an integral part of Plaintiff’s trade and business. Apart from its
trademark registrations, it also holds copyright registrations for its
various software programs and training materials related to software
such as ‘SAP HANA’, ‘SAP CRM’ and ‘SAP ABAP’. Details of
global revenue earned by Plaintiff and expenditure incurred
worldwide for advertising and promoting trademark ‘SAP’ have been
detailed in Paragraph no. 18 of the Plaint.
(iii) Plaintiff extensively uses the medium of Internet to render and
advertise its products and services, through its website and social
media portals. By virtue of continuous, extensive and widespread use
and advertisement/ promotional activities – Plaintiff’s trademarks
have has earned substantial goodwill and reputation, which is
associated worldwide with Plaintiff alone.
(iv) Plaintiff first learnt about the infringing activities conducted by
Defendant No. 1 in May 2019, whereby it was learnt that the said
Defendant was offering pirated software with remote SAP server
access through the website <www.vtechsoft.in> (“ Impugned
Website ”) and unauthorised training on technical and functional
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CS(COMM) 110/2020 Page 2 of 16

modules on software such as SAP BASIS, SAP FICO, SAP HANA
ADMIN, SAP HR-HCM, SAP BI-BW/BO, SAP Success Factors,
SAP MM, SAP BODS etc. The Impugned Website claimed that Vtech
Soft Solutions provided an intensive and comprehensive hands-on
SAP Training in Ameerpet, Hyderabad. Defendant No. 1 utilised
various online tools apart from the website such as webinars, social
media, cloud platforms to advertise its business activities without
authorisation or license of the Plaintiff. Several parties acting as
agents/brokers for Defendant No. 1 in distributing pirated software,
training materials of various SAP Modules, etc. have been impleaded
as Ashok Kumar/John Doe as their identity could not be ascertained
by Plaintiff.
(v) In last week of May 2019, Plaintiffs representative contacted
Defendant No. 1 via email provided on the Impugned Website
(info@vtechsoft.in) to enrol for Defendant No. 1’s SAP BASIS
Course and enquire about the Defendant No. 1’s infringing activities.
Plaintiff’s representative attended the demo session in second week of
June 2019 through the link shared by the Defendant No. 1.
Screenshots of the demo session and the aforesaid email
communications have been provided in the Plaint as under:
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nd
(vi) On 2 August 2019, Plaintiff sent a cease and desist notice (“ C&D
Notice ”) through its counsel, notifying Defendant No. 1 about
copyright in SAP software and other confidential information,
training and educational materials, and called upon the said Defendant
to cease infringement of its copyright and trademarks through the
online courses. As no response to the C&D Notice was received by
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Plaintiff, a follow up letter was sent via e-mail and courier, asking
Defendant No. 1 to comply with the requisitions stated in the C&D
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Notice and provide their response latest by 29 August, 2019.
However, no reply was received from Defendant No. 1.
(vii) In the first week of September, Plaintiff noted that Defendant No. 1
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has deactivated the website and on 11 September, 2019 a letter via e-
mail and courier was sent to Plaintiff, whereby it was stated that
Defendant No. 1 has deactivated the Impugned Website. This was
treated as an undertaking by Plaintiff that Defendant No. 1 will not
engage in any acts of offering, distributing or using pirated SAP
software, training materials or training in the future, which would
amount to infringement of Plaintiff’s intellectual property.
(viii) However, Plaintiff found that the Impugned Website was reactivated
in last week of November 2019, whereby Defendant No. 1 continued
to advertise SAP training on various courses. Again, a representative
of Plaintiff contacted Defendant No. 1 on telephone for seeking
enrolment in SAP ABAP course, whereby the said Defendant
informed Plaintiff’s representative that they provide both online and
classroom training for the course. It was further informed that
classroom training spanning three months with sessions lasting 1-1.5
hours costs INR 10,000, and online training with 24/7 lab facility
along with server access costs INR 25,000/-. Defendant No. 1 also
shared their SAP HANA course and other relevant details via email,
which has been reproduced below:
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(ix) A final warning letter was sent on 16 December 2019, asking
Defendant No. 1 to immediately discontinue with the impugend
activties, however, no reply was received. Thereafter, in January
2020, Plaintiff filed the trademark and copyright violation complaints
with Facebook, X (Twitter) and LinkedIn.
(x) Such illegal and unauthorised use of aforesaid Plaintiff's trademarks
on website/ training materials would invariably create confusion
among customers and infringe Plaintiff's trade mark and copyright
registrations. Relevant extracts from Defendant No. 1’s website and
related social media accounts of Plaintiff's documents are given as
under:
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(xi) Repeat inquiries made in February 2020 disclosed that Defendant No.
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1 continued to actively infringe upon Plaintiff’s trademarks and copyrights.
3. In the above circumstances, an ex-parte ad interim injunction was
granted in the present suit in favour of Plaintiff and against Defendant No. 1
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vide order dated 16 March, 2020, relevant portion whereof is as follows:
“11. Considering that the defendant No.1 is engaging in activities without
any license/ authorization from the plaintiff, plaintiff has made out a prima
facie case in its favour based on the documents placed on record and in
case no ad-interim injunction is granted, the plaintiff would suffer an
irreparable loss. The balance of convenience also lies in favour of the
plaintiff andagainst the defendant No. 1.
12. Consequently, an ex-parte ad-interim injunction is passed in favour of
the plaintiff and against the defendant No.1 in terms of prayer (a), (b) and
(c) of the application.
13. Since the domain name of the defendant No.1 is registered with
thedefendant No.3, the defendant No.3 is directed to deactivate/ disable the
access to the websites and domain names www. vtechsoft. in
andwww.vtechsoft.co.in.
14. Defendant No.4 to 25 are also directed to block the services anddisable
the access provided to defendant No. 1 as under:

2A of CPC (I.A. No. 7098/2020) as Defendant No. 1 commenced offering
SAP training through its newly created websites, i.e., <www.vtech-soft-
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solutions.business.site> and <https://vtechsoftsolution.wordpress.com>, and
promoting and advertising its infringing activities through third party portals
such as Twitter and YouTube. Plaintiff states that MarkMonitor Inc. and
Automatic Inc. are the registrars of the aforementioned new websites. On
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19 August 2020, the following directions were passed:
“2. Case of the plaintiff is that pursuant to the directions of this Court the
two websites of defendant No.1, i.e., www.vtechsoft.in and
www.vtechsoft.co.in were taken down. However, now defendant No. I has
started unauthorizedly taking SAP classrooms, online and corporate
training through its newly created website, i.e., www.vtech-soft-solutions.
business.site and is thus promoting and advertising infringing activities to
third party portal including Twitter and You Tube.
3. Plaintiff also claims that in second week of August, 2020 it also came to
the plaintiff's notice that defendant is offering unauthorized SAP
classrooms, online and corporate training through another newly created
website https://vtechsoftsolution.wordpress.com.
4. Since the identity of the persons allegedly committing contempt is not
known to the plaintiff at this stage, the learned counsel for the plaintiff seeks
leave to file application to implead the Registrar of the website so as to find
out the identity of the persons who got the website registered.”

5. Plaintiff impleaded 33 Defendants, of which, Defendant Nos. 4 to 31
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were deleted from array of parties as noted in orders dated 18 January,
st
2022 and 31 October, 2023, on the basis of undertakings given by their
counsel that they would comply with all directions of the Court. Thus,
presently the suit is continuing against (a) Vtech Soft Solutions, (b) Ashok
Kumar/ John Doe, (c) Automatic Inc., and (d) MarkMonitor Inc.
6. All Defendants who are indulging in infringing activities have been
1
served (except Defendant No. 2 who is impleaded as Ashok Kumar/ John
Doe.) No written statements have been filed on their behalf and their right to
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file the same was closed vide order dated 21 September, 2023.

1 st nd
Office noting for 01 November, 2022 and order dated 02 February, 2023.
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Signing Date:05.02.2024
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CS(COMM) 110/2020 Page 14 of 16

7. Counsel for Plaintiff, on instructions, states that Plaintiff is only
pressing for prayers given at paragraph 61 (a), (b) and (c) of the Plaint, for a
permanent injunction restraining infringement of Plaintiff’s copyrights and
trademarks and as also passing off against Defendant No. 1.
8. Despite service, Defendant No. 1 has neither appeared nor filed a
written statement. Statutory period of 120 days for filing of written
statements is already over. In the opinion of the Court, no purpose would be
served by directing Plaintiff to lead ex-parte evidence. Plaintiff has valid
trademark and copyright registrations in its favour and is entitled to statutory
protection including grant of injunction for infringement. Basis the
documents and the plaint, it is demonstrated that Defendant No. 1 has been
dishonestly dealing in SAP products/ services comprising of Plaintiff’s
trademarks and copyrights, including providing remote server access and
pirated copies of Plaintiff’s software. Defendant No. 1 has been operating by
misrepresenting himself as a consultant/ trainer of SAP courses. Even after
repeatedly being put to notice of infringement of Plaintiff’s rights,
Defendant No. 1 has continued to engage in its unlawful activites. Their
products/ services, which do not emanate from Plaintiff, are bound to create
confusion and deception for customers, resulting in irreparable harm to
Plaintiff’s business, and well-established goodwill and reputation.
Therefore, the Court finds that Defendant No. 1 has committed infringement
and passing off of Plaintiff’s trademarks and copyrights.
9. In view of the foregoing the Court is of the opinion that Plaintiff has
made out a case for a grant of decree of permanent and mandatory
injunction.
Signature Not Verified
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By:SAPNA SETHI
Signing Date:05.02.2024
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CS(COMM) 110/2020 Page 15 of 16

10. In view of the foregoing discussion, the Court is satisfied that the
present is fit for rendering of a summary judgement in terms of Order XIII-
A of CPC, read with Rule 27 of the Delhi High Court Intellectual Property
Rights Division Rules, 2022. Further, since there is no written statement(s)
on behalf of Defendant No. 1, despite service, the Court is also empowered
to pass a judgement in terms of Order VIII Rule 10 of CPC.
11. Suit is decreed in favour of Plaintiff and against Defendant No. 1 in
terms of prayers (a), (b) and (c) at paragraph 61 of the plaint. Registry is
directed to draw up the decree sheet accordingly.
12. Present suit and pending applications are accordingly disposed of.




SANJEEV NARULA, J
JANUARY 29, 2024
d.negi


Signature Not Verified
Digitally Signed
By:SAPNA SETHI
Signing Date:05.02.2024
19:22:58
CS(COMM) 110/2020 Page 16 of 16