Delhi District Court
Wrangler Apparel Corp vs Anil Kumar on 1 December, 2023
IN THE COURT OF SH. SANJEEV AGGARWAL
DISTRICT JUDGE (COMMERCIAL)-02
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM)-327/2019
CNR NO. DLND010056852019
Wrangler Apparel Corp
3411 Silverside Road
Wilmington
Delware-19810
USA ...Plaintiff
Versus
Anil Kumar
Building No. 2151/9B
3rd Floor, above Indigo Thread,
New Patel Nagar,
New Delhi-110008
Also at,
Anil Kumar, S/o. Shubash Chander
Ward No. 11, 4KND-A,
Ganga Nagar,
Rajasthan ...Defendant
Date of institution of suit : 25.03.2019
Date of reserving judgment : 08.11.2023
Date of pronouncement : 01.12.2023
JUDGMENT
1. Vide this judgment, I shall dispose off the present suit filed by the plaintiff u/S. 134 & 135 of Trademarks Act, 1999 and Section 55 of Copyright Act, 1957 for grant of permanent injunction, restraining CS (COMM) 327/2019 Page No. 1 of 16 infringement of trademark and copyright, passing off, delivery up, rendition of accounts etc.
2. Brief facts, which can be taken from the record are as under :
1. That the plaintiff is organised and existing under the laws of Delaware [3411, Silverside Road, 201, Baynard Building, Wilmington, Delaware 19810, USA] and is engaged in the business of manufacture, distribution, marketing and sale of a wide range of casual apparels, jeans, western wear etc and other allied/related products (hereinafter referred to as "the said goods" and "the said business")....
2. That the plaintiff is a subsidiary of VF Corporation group of Companies, a leader in branded apparel. The term 'plaintiff' hereinafter includes the plaintiff and VF Corporation group of Companies and all its predecessors. That the plaintiff is engaged in the raedymade goods including its flagship goods "Jeans".
3. That the Plaintiff was founded by Mr. C.C Hudson and ever since acquiring Casey Jones Company in 1943, the Plaintiff has been using the distinctive trade mark/label/device/word WRANGLER and its derivatives as trademark. (Reliance is placed in Para 3 of the Amended plaint). Further WRANGLER also forms an essential part of its trade name in relation to its said goods and business. The Plaintiff over a period of time has been using its said trademark in various stylized/artistic formats/labels and which have been created and are being created over a period of time.
4. That with the advent of e-commerce, the internet and trade thereunder the plaintiff adopted the said trademark as an essential and material part of its Email ID and Domain Name CS (COMM) 327/2019 Page No. 2 of 16 viz. www.wrangler.com. The plaintiff has been using the said Domain names in course of trade and as proprietor thereof globally in relation to its said goods and business and has built up a valuable trade, goodwill and reputation thereunder. The Plaintiff has been carrying on and promoting its said goods and business electronically and through E-commerce and over the internet through the said domain names and also through various other intermeddler web-sites which is accessible in India. The term said trademark of the plaintiff includes its domain name.
5. That the Plaintiff has already built up a globally valuable trade under its said trade mark and conducted handsome business there under running into Millions of Dollars worldwide.
6. That that the art work involved in the Plaintiff's various stylized, formative/bearing and labels are original artistic works and Plaintiff holds copyright therein. The plaintiff is also the owner and proprietor of the artistic features involved in the said trademark/label and device and holds Copyright therein.
Artistic features involved in the said trade mark/label are original in character and the plaintiff is the owner thereof (hereinafter the term said trademark/label shall refer and include the said art work involved in the said trademark/ label also).
7. That the Plaintiff's has expertise in its brand management and for preserving the brands' prestige and global presence.
Plaintiff's said trademark WRANGLER,
, , and other
formative trademarks/labels are duly registered in India under the Trade Mark Act, 1999 (the Act) as per the following particulars mentioned in the table below:
CS (COMM) 327/2019 Page No. 3 of 16 TRADEMARK/ UNDER
S. No. CLASS STATUS
LABEL No.
LABEL
1 WRANGLER 1288608 25 REGISTERED
WRANGLER,
2 1288621 25 REGISTERED
DEVICE
3 WRANGLER 1288622 25 REGISTERED
4 WRANGLER 1288623 25 REGISTERED
WRANGLER WORD
5 1381157 25 REGISTERED
JEANS CO MARK
WRANGLER WORD
6 1549925 25 REGISTERED
WORKWEAR MARK
WRANGLER
JEANS CO. WORD
7 1593446 25 REGISTERED
ESTABLISHED MARK
1947
Wrangler
8 OUTDOOR 1741793 25 REGISTERED
WITH DEVICE
CS (COMM) 327/2019 Page No. 4 of 16
9 WRANGLER 1895504 25 REGISTERED
10 WRANGLER 1933986 9 REGISTERED
11 WRANGLER 1942818 9 REGISTERED
12 WRANGLER 1288608 18 REGISTERED
WRANGLER,
13 1288621 REGISTERED
DEVICE 18
14 WRANGLER 1288622 18 REGISTERED
15 WRANGLER 1288623 18 REGISTERED
8. That the Plaintiff's said trademark has all become distinctive, associated and acquired secondary significance with the Plaintiff and Plaintiff's said goods and business. The purchasing public, the trade and industry at large worldwide and in India identify and distinguish the Plaintiff's said goods under the said trade mark with the Plaintiff and from the CS (COMM) 327/2019 Page No. 5 of 16 Plaintiff's source and origin alone and regard them as a high- quality product exclusively as that of the Plaintiff.
9. That the Defendant (as mentioned in amended memo of parties) is engaged in manufacturing, marketing, purveying, supplying, soliciting and trade of jeans, garments, apparels and other allied /related products (hereinafter referred to as "the impugned goods" and "impugned business")....
10. That the defendant has adopted and started using the trademark WRANGLER, , and other formative trademarks/labels and in relation to their impugned goods and have been using the same individually or in combination of each other in logo/label form (hereinafter collectively referred to as the "impugned trade mark"). The defendant is giving false trade description to their impugned goods. Specimens of defendant's impugned goods bearing the impugned trade mark are filed herewith. In fact, the defendant is indulging in counterfeiting the impugned goods in complete violation of plaintiff's statutory and common law right in the said trademark and copyright.
11. That apart from the sales to the direct customers from their respective Shop/Premises the Defendant is supplying the impugned goods bearing the impugned Trade Mark//Label to the dealers/retailers/ distributors in the markets of New Delhi area viz. Connaught Place, Gole Market, Mandir Marg, Sarojini Nagar, Vasant Kunj, Lodhi Colony, Bengali Market and adjoining areas, who then supply the impugned goods bearing the impugned Trade Mark/Label to the various unscrupulous traders and manufacturers of the counterfeit products of the Plaintiff which eventually causes confusion and deception to the consumers at large.
12. That this Hon'ble Court has the territorial jurisdiction to try and adjudicate the present suit. The defendant is making clandestine and surreptitious sales, offering for sale, and are CS (COMM) 327/2019 Page No. 6 of 16 also supplying, purveying, displaying and soliciting have intention to sell/solicit their impugned goods and business under the impugned trade mark/label in New Delhi viz. Connaught Place, Gole Market, Vasant Kunj, Lodhi Colony, Sarojini Nagar, Bengali Market, Naraina, Mandir Marg etc. the defendant is committing the impugned acts of infringement and passing off in the markets of New Delhi area viz. Connaught Place, Gole Market, Vasant Kunj, Lodhi Colony, Sarojini Nagar, Bengali Market, Naraina, Mandir Marg etc. within the jurisdiction of this Hon'ble Court by selling, soliciting, trade, distribution and marketing networks in relation to the impugned goods under the impugned trademark /label. The plaintiff's abovesaid proprietary rights are being prejudicially affected or likely to be affected in New Delhi due to the defendant's impugned activities. The defendant has all the intention to use/sell/solicit the impugned/ counterfeit goods under the impugned trademark/label in the markets of New Delhi area viz. Connaught Place, Gole Market, Vasant Kunj, Lodhi Colony, Sarojini Nagar, Bengali Market, Naraina, Mandir Marg etc. the impugned products of the defendant are available in New Delhi area. The defendant is committing act of infringement of plaintiff's trademark and copyright and passing-off within the territorial jurisdiction of this Hon'ble Court. The Defendant is soliciting and intends to sell their counterfeit goods in New Delhi Area and is committing the act of infringement and passing off in New Delhi by making the clandestine and surreptitious sales and distribution of the impugned goods under the impugned Trade Mark/Label....
Therefore, the present suit has been filed by the plaintiff for permanent injunction, restraining infringement of trademark and copyright, passing off, delivery up, damages/rendition of accounts etc.
3. Vide order dated 27.03.2019, an ad interim ex-parte order CS (COMM) 327/2019 Page No. 7 of 16 was passed in favour of the plaintiff and against the defendant, thereby restraining the defendant by himself as also through his partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on his behalf restrained from manufacturing, marketing, using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademarks/labels WRANGLER, Wrangler, Wrangler ® and other formative trademarks/ labels or any other word/ mark/ label/ logo which may be identical with and/or deceptively similar to the plaintiff's said trademarks/labels WRANGLER, Wrangler, Wrangler ® and other formative trademarks / labels and other formative marks/labels in relation to their impugned goods and business of jeans, readymade garments, apparels, all types of clothings, lifestyles products, shoes, footwear and other allied / related products and from doing any other acts or deeds amounting to or likely to infringe, passing off and violation of plaintiff's aforesaid registered trademarks WRANGLER, Wrangler, Wrangler ® and other formative trademarks / labels of the plaintiff till further orders.
Vide same order dated 27.03.2019, a Local Commissioner was also appointed for the seizure of the infringing products from the Defendant's premises. Pursuant thereto, the commission was duly executed.
4. The local commissioner in his report dated 11.04.2019 had reported that on 03.04.2019 he visited the premises of defendant at 2151/9B, 3rd Floor, New Patel Nagar, New Delhi and there he met Mr. CS (COMM) 327/2019 Page No. 8 of 16 Anil Kumar (the defendant) who was the owner and was running the said business from the said rented premises. He further reported that the court order dated 27.03.2019 was explained to him and after inspecting the premises of the defendant, the Local Commissioner found the counterfeit goods and items in huge quantity, totalling to 3109 in numbers (including finished and unfinished jeans, belts, labels, buttons etc.), the inventory of the same has also been attached with his report.
5. Summons of the suit were issued to the defendant, which were duly served and appearance was put in by the defendant through his Ld. Counsel on 16.04.2019. Written statement was filed by the defendant on 20.12.2019 along with the application u/S. 5 of The Limitation Act for condonation of delay in filing the written statement, which was dismissed vide order dated 03.02.2020, consequently the defence of the defendant was struck off. Thereafter, since the defendant did not appear on various dates to contest the case, consequently, he was proceeded ex parte vide order dated 17.09.2021.
6. Thereafter, the plaintiff in support of its case has examined Mrs. Meena Bansal, its AR as PW1, who has relied upon / proved the following documents:
S.No. No. of Details of the documents
Exhibits
1. Exh.PW1/1 Copy of the Resolution-cum-Authority
CS (COMM) 327/2019 Page No. 9 of 16
2. Exh.PW1/2 True Representation of Plaintiff's
trademark/label
3. Exh.PW1/3 True Representation of Plaintiff's
trademark/label
4. Exh.PW1/4 True Representation of Plaintiff's
trademark/label
5. Exh.PW1/5 True Representation filed
6. Exh.PW1/6 Plaintiff's registered trademark under no.
1288608 in class 99 (18 & 25)
7. Exh.PW1/7 Online status report of plaintiff's
registered trademark under no. 1288621
in class 99 (18 & 25)
8. Exh.PW1/9 Online status report of plaintiff's
registered trademark under no. 1288622
in class 99 (18 & 25)
9. Exh.PW1/10 Copy of Registration Certificate of plaintiff's registered trademark under no. 1288622 in class 99 (18 & 25)
10. Exh.PW1/11 Online status report of plaintiff's registered trademark under no. 1288623 in class 99 (18 & 25)
11. Exh.PW1/12 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1288623 in class 99 (18 & 25)
12. Exh.PW1/13 Online status report of plaintiff's registered trademark under no. 1381157 in class 25
13. Exh.PW1/14 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1381157 in class 25
14. Exh.PW1/15 Online status report of plaintiff's registered trademark under no. 1549925 in class 25.
15. Exh.PW1/16 Online status report of plaintiff's registered trademark under no. 1593446 in class 25.
CS (COMM) 327/2019 Page No. 10 of 1616. Exh.PW1/17 Online status report of plaintiff's registered trademark under no. 1741793 in class 25.
17. Exh.PW1/18 Online status report of plaintiff's registered trademark under no. 1895504 in class 25.
18. Exh.PW1/19 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1895504 in class 25.
19. Exh.PW1/20 Online status report of plaintiff's registered trademark under no. 1933986 in class 9.
20. Exh.PW1/21 Online status report of plaintiff's registered trademark under no. 1942818 in class 9.
21. Exh.PW1/22 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1942818 in class 9.
22. Exh.PW1/23 Online status report of plaintiff's registered trademark under no. 1288608 in class 99 (18 & 25).
23. Exh.PW1/24 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1288608 in class 99 (18 & 25).
24. Exh.PW1/25 Online status report of plaintiff's registered trademark under no. 1288621 in class 99 (18 & 25).
25. Exh.PW1/26 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1288621 in class 99 (18 & 25).
26. Exh.PW1/27 Online status report of plaintiff's registered trademark under no. 1288622 in class 99 (18 & 25).
27. Exh.PW1/28 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1288622 in class 99 (18 & 25).
CS (COMM) 327/2019 Page No. 11 of 1628. Exh.PW1/29 Online status report of plaintiff's registered trademark under no. 1288623 in class 99 (18 & 25).
29. Exh.PW1/30 Copy of the Registration Certificate of plaintiff's registered trademark under no. 1288623 in class 99(18 & 25).
30. Exh.PW1/31 Copy of advertisement of the plaintiff trademark/label.
31. Exh.PW1/32 Copy of advertisement of the plaintiff trademark/label.
32. Exh.PW1/33 Copy of advertisement of the plaintiff trademark/label.
33. Exh.PW1/34 News article of the plaintiff trademark/label.
34. Exh.PW1/35 News article of the plaintiff trademark/label.
35. Exh.PW1/36 Plaintiff's exclusive dealer/distributors in Jurisdiction of this Court.
36. Exh.PW1/37 True representation of the Defendant's de-exhibited impugned trademark/label.
and marked as Mark A
37. Exh.PW1/38 True representation of the Defendant's de-exhibited impugned trademark/label.
and marked as Mark B
38. Exh.PW1/39 True representation of the Defendant's de-exhibited impugned trademark/label.
and marked as Mark C
39. Exh.PW1/40 Report of Local Commissioner.
Further PW1 has also relied upon the report of the Ld. Local Commissioner dated 11.04.2019.
CS (COMM) 327/2019 Page No. 12 of 167. The cross-examination of PW1 was NIL, as nobody had appeared on behalf of the defendant, as he was already proceeded ex parte vide order dated 17.09.2021. Thereafter, vide separate statement dated 13.04.2022, the AR of the plaintiff had closed the plaintiff's evidence and the matter was fixed for final arguments.
8. I have heard Sh. Sudarshan Kumar Bansal along with Sh. Rahul Sharma, Ld. Counsel(s) for the plaintiff and also gone through the written submissions filed on behalf of the plaintiff as well as the record.
9. From the report of Ld. Local Commissioner, the pleadings on record and the testimony of PW1, it is clear that the defendant was engaged in manufacturing or selling or offering for sale various clothing's material bearing the mark 'WRANGLER' as also the logos thereof. Initially, the defendant appeared through his Counsel and filed the written statement, but thereafter, he chose not to appear to contest the case, which is pending before this Court. The Local Commissioner's report along with the evidence also clearly reveals that the defendant was engaged in the manufacturing, marketing and selling of counterfeit products. The testimony of PW1 has gone unrebutted, unchallenged. There is nothing to disbelieve her unrebutted testimony.
10. Under these circumstances, following the rationale in view of the judgment(s) in LT Foods Limited Vs. Saraswati Trading Company CS (COMM) 327/2019 Page No. 13 of 16 CS(COMM) 413/2021, decided on 11.11.2022 and Imagine Marketing Private Limited Vs. M/s. Green Accessories Through its Proprietor and Anr. CS(COMM) 564/2020 & I.As 12556-57/2020, decided on 21.03.2022.
11. On the basis of above, plaintiff has proved that they are the prior user and proprietor of the trademark/ label 'WRANGLER' and the said trademark/ label has acquired distinct features and they are regularly engaged in manufacturing, marketing and selling of large variety of goods including casual apparel, sports apparel, footwear and other allied/related products under the said trade name along with label/device/logo. The said trademark/ label has acquired immense goodwill and reputation in favour of the Plaintiff.
12. Thus, the Plaintiff, being the owner of the registered trademark 'WRANGLER' in various forms, including the logo, entitled for protection of its rights in the trade mark 'WRANGLER', as also device mark and the logos thereof. Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 34 (a) of the amended plaint.
13. Regarding relief sought in paragraph 34 (b) in the plaint, the same is vague in nature and same cannot be granted, as defendant was proceeded ex parte vide order dated 17.09.2021 and he has not given any inventory of the assets held by him including stock in trade. Further, it has CS (COMM) 327/2019 Page No. 14 of 16 come in the report of the Local Commissioner that the defendant was running his business from a rented premises. Therefore, this relief asking the defendant not to dispose off the assets including the premises cannot be granted.
14. Since the Defendant has not rendered any accounts of profits, the said relief as sought in paragraph 34 (d) cannot be granted. In so far as the relief of delivery up as sought in paragraph 34 (c) is concerned, the plaintiff or a representative thereof, is permitted to visit the premises of defendant upon which the defendant shall handover all the seized products handed over to him on superdari by the Ld. Local Commissioner on 03.04.2019 to the representatives of the plaintiff for the purpose of destruction, as per law.
15. In so far as the relief of damages, as sought in the present suit are concerned, it is clear to this Court that the defendant has blatantly infringed the trademark and logos, as also the packaging of the Plaintiff's products, Considering the quantam of counterfeit products, which were seized from the Defendant, the suit may be decreed in favour of the plaintiff and against the Defendant for a sum of Rs.3,00,000/-(Rs. Three Lakhs only).
16. It has also been argued by Ld. Counsel for the plaintiff that plaintiff had to get a Local Commissioner appointed and also to bear the cost(s) for execution of the commission. In these circumstances, CS (COMM) 327/2019 Page No. 15 of 16 additional cost(s) may also be awarded in favour of the plaintiff and against the defendant. In these circumstances, additional cost(s) of Rs.2,00,000/- (Rs. Two Lakhs only) is also awarded in favour of the plaintiff and against the defendant.
17. In view of the above discussions and the judgments relied upon by Ld. Counsel for the plaintiff, the present suit is decreed in favour of the plaintiff and against the defendant in terms of the findings given above. I hereby also award cost of litigation as Rs.1,00,000/- (Rs. One Lakh only) in favour of the Plaintiff.
All pending application(s) also stand disposed off. Decree be made in terms of the above accordingly. File be consigned to record room.
Announced in the open court today on 01.12.2023.
(Sanjeev Aggarwal) District Judge (Commercial)-02 Patiala House Courts, New Delhi CS (COMM) 327/2019 Page No. 16 of 16