Delhi High Court - Orders
Relaxo Footwears Limited vs Om Shiv Footwear Through Its Owner ... on 26 May, 2023
Author: Amit Bansal
Bench: Amit Bansal
$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 357/2023
RELAXO FOOTWEARS LIMITED ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Saif Khan,
Mr. Shobhit Agarwal, Ms. Swati Jain
and Mr. Prajjwal Kushwaha,
Advocates.
versus
OM SHIV FOOTWEAR THROUGH ITS OWNER PARTNER
PROPRIETOR MR. SUSHIL BANSAL ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
ORDER
% 26.05.2023 I.A. 10500/2023 (for exemption)
1. Subject to the plaintiffs filing documents with proper margins and the original, translated, clear and legible copies of the documents on which the plaintiffs may seek to place reliance, within four weeks from today, exemption is granted for the present.
2. The application is disposed of.
I.A. 10498/2023 (u/s 12A of the Commercial Courts Act)
3. In view of the urgent interim relief sought, the plaintiff is granted exemption from the requirement of pre-institution mediation in terms of Section 12A of the Commercial Courts Act, 2015.
4. Accordingly, the application stands disposed of.
CS(COMM) 357/2023 Page 1 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07 I.A. 10499/2023 (O-XI R-1(4) of the Commercial Courts Act)
5. The present application has been filed on behalf of the plaintiff seeking leave to file additional documents under the Commercial Courts Act, 2015.
6. The plaintiff is granted thirty days' time to file additional documents.
7. Accordingly, the application is disposed of. CS(COMM) 356/2023
8. Let the plaint be registered as a suit.
9. Issue summons.
10. Summons be issued to the defendants through all modes. The summons shall state that the written statement(s) shall be filed by the defendants within thirty days from the date of the receipt of summons. Along with the written statement(s), the defendants shall also file affidavit of admission/denial of the documents of the plaintiffs, without which the written statement(s) shall not be taken on record.
11. Liberty is given to the plaintiff to file replication(s), if any, within thirty days from the receipt of the written statement(s). Along with the replication(s) filed by the plaintiff, affidavit of admission/denial of the documents of the defendants be filed by the plaintiff.
12. The parties shall file all original documents in support of their respective claims along with their respective pleadings. In case parties are placing reliance on a document, which is not in their power and possession, its detail and source shall be mentioned in the list of reliance, which shall also be filed with the pleadings.
13. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
CS(COMM) 357/2023 Page 2 of 7This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07
14. List before the Joint Registrar on 29th August, 2023 for completion of service and pleadings.
15. List before the Court on 5th October, 2023.
I.A. 10497/2023 (O-XXXIX R-1 & 2 of CPC)
16. The present suit has been filed on behalf the plaintiff seeking permanent injunction restraining the defendants from infringement/piracy of design, passing off and other ancillary reliefs.
17. The plaintiff company is engaged in the business of manufacture and sale of, inter alia, footwear of various kinds since the year 1976. The plaintiff company is also a listed company whose shares are listed on the Bombay Stock Exchange and National Stock Exchange.
18. The plaintiff sells footwear products under various distinctive trademarks/labels along with a unique get up and trade dress, including the house mark RELAXO, and various product specific brands like BAHAMAS, FLITE, SCHOOLMATE, SPARX etc.
19. The plaintiff has given its turnover in respect of products bearing the mark BAHAMAS in paragraph 18 of the plaint.
20. The present suit concerns the plaintiff's intellectual property rights in the design and overall trade dress of its product sold as BHG-183 under the 'BAHAMAS' brand and the trade dress of the 'BAHAMAS' product packaging/box. The product is an original and novel creation of the plaintiff and a duly registered design under the Designs Act, 2000 as registered design no. 365606-001 dated 7th June, 2022.
21. The plaintiff alleges infringement by the defendants of its aforesaid registered design. In addition, the plaintiff's grievance is also over the imitation of the 'BAHAMAS' product packaging, which is stated to have a CS(COMM) 357/2023 Page 3 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07 unique and inherently distinctive getup/trade dress.
22. The plaintiff has also acquired goodwill and reputation for the product by virtue of prior and continuous use. The product is sold all over India through various trade channels throughout the country and the sales figure indicate a net sale of Rs.2.59 crores for the aforesaid design and Rs.162 crores for the entire 'BAHAMAS' range, for the year 2022-23.
23. It is the case of the plaintiff that the defendants is engaged in manufacture and sale of footwears which are lookalikes of the suit design and is a slavish replica of the plaintiff's corresponding products exactly copying each and every unique and distinctive element of the product, including the BAHAMAS packaging.
24. Cease and desist notices dated 20th January, 2023 and 28th April, 2023 were served upon the defendant, which have not been responded to by the defendants.
25. A comparison of the plaintiff's product and the defendants' product is given below:
Plaintiff's Product Defendants' Product CS(COMM) 357/2023 Page 4 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07
26. A comparison of the above would show that the defendant's product is an obvious imitation of the plaintiff's product as there are several striking similarities including but not limited to surface pattern of the inner sole, shape, colour, placement of brand, placement of tag on the product, etc., which is infringing the registered design of the plaintiff.
27. A comparison of the plaintiff's packaging and the defendants' packaging is given below:
Plaintiff's Product Defendants' Product CS(COMM) 357/2023 Page 5 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07
28. A comparison of the above would show that the entire packaging, color scheme of the packaging etc., along with watermark, style, image of ambassador, magenta border, and placement of features are strikingly similar to the plaintiff's product.
29. Issue Notice.
30. Notice be issued to be defendants.
31. Reply be filed within three weeks.
32. Rejoinder thereto, if any, be filed before the next date of hearing.
33. Based on the averments made in the plaint and submissions made on behalf of the plaintiff, a prima facie case has been made out on behalf of the plaintiff. Balance of convenience is in favour of the plaintiff. Irreparable harm would be caused to the plaintiff if an ex parte ad interim injunction as prayed for is not granted in favour of the plaintiff.
34. Consequently, till the next date of hearing an ex parte ad interim injunction is passed in the following terms:
i. The defendant, its proprietors/partners/directors/principal officers as the case may be, sister concerns, agents, legal representatives, heirs and any other person acting for or on their behalf are restrained from manufacturing, selling, offering for sale, advertising, importing, exporting or in any other manner dealing in the impugned product CS(COMM) 357/2023 Page 6 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:07 and/or any other product, which are an imitation of plaintiff's design no. 365606-001 and take down listing of the impugned product from the internet including the listing shown at page no. 86 of the plaintiff's documents within one week.
ii. The defendant, its proprietors/partners/directors/principal officers as the case may be, sister concerns, agents, legal representatives, heirs and any other person acting for or on their behalf are restrained from manufacturing, selling, offering for sale, advertising, importing, exporting or in any other manner dealing in the overall getup/trade dress of the suit design no. 365606-001 and the packaging of the 'BAHAMAS' range of products.
35. Compliance under Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 (CPC) be filed within three days from today.
36. List before the Joint Registrar on 29th August, 2023 for completion of service and pleadings.
37. List before this Court on 5th October, 2023.
AMIT BANSAL, J.
MAY 26, 2023 at CS(COMM) 357/2023 Page 7 of 7 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 25/09/2023 at 10:18:08