Delhi District Court
Ms Calvin Klein Trademark Trust vs Ms G.B. Shoe on 27 September, 2024
DLND010004732013
IN THE COURT OF DISTRICT JUDGE- 01,
NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
Presided over by :- MS. VIJETA SINGH RAWAT (DHJS)
T.M. No. 29/2021
M/s Calvin Klein Trademark Trust
Rodney Square North,
1100 North Market Street,
Wilmington, Delaware 19890,
USA
C/o M/s. Calvin Klein, Inc.
205 West 39th Street,
New York, NY 10018, USA
.... Plaintiff
Versus
M/s G.B. Shoe
Dholikhar Road,
Agra, India-282003
.......Defendant no.1
M/s Vishal footwear
17/3/1 Opp. Doneria Market,
Sadar Bhatti, Hing ki Mandi,
Agra, India-282003
Also at:
Opp Roxy Cinema,
Hing ki Mandi,
Agra-282003
TM No.29/21
M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 1 of 20
..... Defendant no.2
M/s New Hira Shoes
1/104, Khoja Haweli
Sadar Bhatti, Hing ki Mandi,
Agra, India-282003
.......Defendant no.3
Suit presented on : 30.05.2013
Judgment pronounced on : 27.09.2024
EX-PARTE JUDGMENT
1.The present suit u/s 134 and 135 of The Trademarks Act (hereinafter, referred to as "TM Act") and u/s 51 of The Copyright Act (hereinafter, referred to "Copyright Act") has been filed by M/s Calvin Klein Trademark trust vs. M/s G.B. Shoes & Ors seeking a decree of permanent injunction restraining the defendants from infringing the plaintiff's registered trademark CK and Calvin Klein or any other work/ mark, passing off and violating the plaintiff's rights in the aforesaid trademarks/ labels/ logos, violating the plaintiff's proprietary rights, therein; restraining the defendant from disposing off or dealing with their assets; requiring the defendant to deliver up all the impugned finished and unfinished materials bearing the aforementioned trademarks and for rendition of accounts alongwith damages and cost of litigation.
2. Briefly stated, it is the case of the plaintiff (a) That the TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 2 of 20 plaintiff is marketing and selling its products in India through its wholly owned subsidiary M/s Clavin Klein Ltd, a company organized and existing in India under the Indian Companies Act, 1956 and has been carrying on its business. (b) That Calvin Klein is engaged in the business of manufacture, distribution and sale of wide range of fragrance, clothing, watches, eyewear, cosmetics, footwear, home furnishing and other allied/related products by using word/mark Calvin Klein and cK. (c) That plaintiff's said goods and business under the said trade mark/ label/trade name as also the goodwill and reputation achieved thereunder is global in character and extends into India as well.
(d) That even since 1967, plaintiff launched its said goods and business under the Trade Mark in USA and has been expanding the use of its said Trade Mark in relation to its said goods & business and sold it goods and in more than 100 countries of the world including India. (e) That plaintiff's said goods are sold and traded directly or through a wide network of its associates, affiliates, licensees and through a wide marketing network including through retail as also through internet and e-commerce.
(f) That to secure its statutory right, the plaintiff also applied and obtained Trade Mark Calvin Klein with or without cK is duly registered in India under the Trade Mark Act, 1999 around the world including India which are as under:
S. Trade Mark Applicatio Class Status Regn./ Appl.
No. n no. Date
1 CALVIN KLEIN 566080 03 Registered 23.01.1992
(wood mark)
TM No.29/21
M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 3 of 20
2 CALVIN KLEIN 928779 03 Registered 31.05.2010
SCENTS
STUDIO
(wood mark)
3 CALVIN KLEIN 1586015 03 Registered 31.07.2007
MAN
(wood mark)
4 CK 698970 14 Registered 20.02.2006
5 CK / 698971 14 Registered 20.02.2006
CALVIN KLEIN
6 CALVIN KLEIN 603424 14 Registered 05.08.2007
7 CALVIN KLEIN 566080 03 Registered 23.01.1992
(wood mark)
8 CALVIN KLEIN 928779 03 Registered 31.05.2010
SCENTS
STUDIO (wood
mark)
9 CALVIN KLEIN 1586015 03 Registered 31.07.2007
MAN (wood
mark)
10 CALVIN KLEIN 603420 09 Registered 05.08.1993
(wood mark)
11 692775 09 Registered 29.12.1995
12 CALVIN KLEIN 566078 18 Registered 23.01.1992
(wood mark)
13 CALVIN KLEIN 603423 25 Registered 05.08.1993
(wood mark)
14 678782 25 Registered 04.09.1995
15 CALVIN KLEIN 678783 25 Registered 04.09.1995
(wood mark)
3. Thus, it is further stated on behalf of the plaintiff that its Trade Mark Calvin Klein and cK have built up unparalled reputation and goodwill which has transcended physical boundary are well known marks in India and under Section 2(1) TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 4 of 20 (zg) and Section of 11 of Trade Mark Act and thus, are entitled to protection against misappropriation by the third party.
4. That the plaintiff with the advent of e-commerce, the internet and trade, it adopted the Trade Mark Calvin Klein as an essential and material part of its Email ID and Domain Name viz.
Www.calvinklein.com and www.calvinkleinjenas.com and using the said Domain name in course of trade.
5. That the grievance of the plaintiff is that the defendants are engaged in manufacturing, marketing, soliciting and trade of footwears and allied and cognate products. The defendants have adopted and started using the trademark Calvin Klein and cK in relation to their impugned goods and have also been using the same individually or in combination of each other in trade mark. The defendants are giving false trade description to their impugned goods. The defendants are using the impugned trade mark/ label/trade name in relation to the impugned goods in complete violation of plaintiff's statutory and common law right in the said trade mark/ label/trade name.
6. That the defendants are not the proprietor of the impugned trade mark/ label/trade name and have adopted and are so using the same in relation to their impugned goods and business and are otherwise dealing with it in the course of trade without the leave and license of the plaintiff. The defendants have no rights TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 5 of 20 to use it in any manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's above mentioned rights.
7. That the defendants by their impugned adoption and user of the impugned trademark are violating the plaintiff's trade mark/ label/trade name and thereby passing off and enabling others to pass off their goods and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights therein. The resemblance between the rival trade mark/ label/trade name are so close that it can hardly occur except by deliberate imitation.
8. That the defendants have adopted and started using the impugned trade mark/ label/trade name name dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the said trade mark/ label/trade name. Unwary purchasers and trade are being deceived as to the origin of goods or business.
9. That purportedly in the second week of May, 2013 the plaintiff came across impugned products of the defendants under the impugned trade mark/ label/trade name in New Delhi area. The defendants were carrying out their impugned activities under the impugned trade in clandestine manner from their premises TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 6 of 20 and that too without issuing formal sale bills, according to the plaintiff, the defendant is violating intellectual property rights of the plaintiff.
10. All the defendants had entered appearance on 25.07.2013. Defendant no.1 & 2 neither filed written statement nor appeared thereafter. Hence, were proceeded ex-parte vide order dated 22.05.2019 and 18.09.2013, respectively.
11. Defendant no. 3 filed the written statement averring that it does not has any business dealing with the remaining defendants and has been included in the present suit with sole motive of causing undue harassment. On merits the case of the plaintiff was denied in toto and the contents of the preliminary objections were reiterated. Rest of the contents of the plaint are denied.
12. Thereafter, defendant no.3 stopped appearing and was proceeded ex-parte vide order dated 22.05.2019.
13. The Ld. Predecessor of this Court vide order dated 03.06.2013 granted at interim ex-parte injunction as well as appointed a commission under Order XXVI Rule 9 CPC to seize all impugned products and prepare an inventory of the same.
14. As per the report dated 08.06.2013 of Sh. Sunil Sharma, Ld. Local Commissioner inspection was conducted at the TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 7 of 20 premises of defendant no.1 i.e. Agra, Uttar Pradesh. During the search, 400 pairs of shoes including 'uppers' having the trademark/ logo of the plaintiff were recovered (in the presence of Haji Mohd. Ahsan). Thereafter, 30 pairs of shows and 10 pairs of 'uppers' were released to Haji Mohd. Ahsan on Superdginama to him. Alongwith the report, are also annexed photographs of the recovered impugned articles.
15. Thereafter, on the same day, inspection was conducted by the Ld. Local Commissioner at the premises of defendant no.2 where they met Sh. Hemant Kumar Lalwani and Sh. Lalit (employees of defendant no.2). During search, 88 pairs of shoes bearing brand name of the plaintiff were recovered in the presence of employees of defendant no.2. Thereafter, all 88 pairs of shoes were released to Sh. Kamal Naresh, Ld. Advocate on Superdari. Even though large number of shoes / sandals bearing the trademark of Nike, Lacoste, Polo and Calvin Klein were found at the premises of defendant no.3 but the same could not be recovered or inventoried due to the unruly behavior of the large crowd which gathered during the spot proceedings.
ISSUES
16. Vide order dated 23.01.2014 following issues were framed:
a) Whether plaintiff has infringed the plaintiff's trademark and / or passed off the goods as those of the plaintiff?
b) Whether the plaintiff is entitled to any damages and / or rendition of accounts? If so, at what extent?TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 8 of 20
c) Relief PLAINTIFF EVIDENCE
17. In support its case, the plaintiff examined Ms. Meena Bansal, as PW1. He tendered his evidence by way of affidavit Ex. PW1/A and relied upon following documents :
Sl. no. Name of the document Exhibited as
1. Photographs containing the Ex. PW-1/1
representations/ specimens of the
plaintiff's trademark/ label.
2. Photograph containing the Ex. PW-12
representation of the defendant's
trademark/ label.
3. Computer generated list of trademarks Ex. PW-1/3 registrations of plaintiff
4. Printouts of online status and Ex. PW-1/4 trademark registration certificates of the plaintiff's trademark
5. Printouts of documents showing the Ex. PW-1/5 history of the plaintiff as obtained from the website
6. Printouts of documents showing the Ex. PW-1/6 history of plaintiff's holding company Brand Marketing India and their exclusive store in Delhi obtained from the website
7. Printouts of documents in support of Ex. PW-1/7 plaintiff business in New Delhi jurisdiction as obtained from the website
8. Copy of Resolution-cum-authority in Ex. PW-1/8 his favour (OSR) TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 9 of 20
9. Report of Ld. Local Commissioner Ex. PW-1/9 Vide a separate statement of even date of the witness, PE stood closed.
FINAL ARGUMENTS
18. Final Arguments have been heard by Sh. Amit Chanchal Jha, Ld. Proxy counsel for counsel for the plaintiff.
REASONING AND APPRECIATION OF MATERIAL ON REOCRD
19. The Court has considered the submissions and material on record.
ISSUEWISE FINDINGS A) Whether plaintiff has infringed the plaintiff's trademark and / or passed off the goods as those of the plaintiff? (Issue no.
(i)
20. The plaintiff has led evidence of PW-1 Ms. Meena Bansal affirming the averments made in the plaint. The plaintiff claims to have been using the trade mark/ label/trade name Calvin klein or ck as a Trade Mark in relations its said goods and business. In TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 10 of 20 addition to that it is clarified that the plaintiff over a period of time has been using its said trade mark in various styles and artistic forms. The specimen of the plaintiff's trade mark/ label/trade name has been proved as Ex. PW-1/1. The specimens of the defendant's trade mark/ label/trade name has been collectively proved as Ex. PW-1/2 with assertion that the defendants have adopted the trade mark Calvin klein or ck in relation to impugned goods in complete violation of plaintiff's statutory and common right in Trademark and Copyright.
21. The plaintiff has claimed that the trade mark/ label/trade name with respect to apparel and articles is recognized as well as a well known trade mark/ label/trade name within the meaning of the provisions of Section 2(i) (zg) of the Trade Mark Act 1999. The defendants were fully aware of plaintiff's rights, goodwill, reputation etc and have adopted and started using the impugned trade mark/ label/trade name name dishonestly with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff. There is no rebuttal to the testimony of the plaintiff and the plaintiff has therefore, established from the record that the defendant's use of impugned trade mark/ label/trade name Calvin klein or ck in relation to trade of footwears and allied and cognate goods are deceptively similar marks to the plaintiff's trademarks which amounts to infringement of registered trade mark of the plaintiff under Section 29 of Trade Marks Act 1999 and also amounts to TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 11 of 20 passing off under Section 27 (2) of the Trade Marks Act, 1999 and Copyright Act.
22. Section 29 of the Trade Mark Act 1999 accords special protection to the registered trademark and grants an injunction even if the goods of the defendant are similar or dissimilar. Section 29 of the Act is as under:-
29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 12 of 20 trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
23. Further the law of passing off provides a remedy against a false representation tending to deceive customers into believing that the goods which the defendant is selling are really the plaintiff's. The false representation may be by statement or by conduct i.e. by adopting the distinctive mark, name, design, get up or appearance of another goods. The basic question in this tort is that whether the defendant's conduct is such as to tend to TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 13 of 20 misled the public to believe that the defendant's business is the plaintiff's or to cause confusion between the activities of the two.
24. As the defendants are ex-parte, the testimony of Ms. Meena Bansal (PW1) is unchallenged and uncontroverted. There is also a Local Commissioner report (Ex. PW-1/9). It has been held in Lt. Foods Limited vs. Saraswati Trading Company, CS(Comm) 413/2021 decided by High Court of Delhi on 11.11.2022 as under:
'...13. The settled legal position is that the Local Commissioner's report can be read in evidence in terms of Order XXVI Rule 10(2) CPC. In M L Brother LLP v. Mahesh Kumar Bhrualal Tanna [CS(COMM) 126/2022, date of decision 12th May, 2022] this Court held as under:
"10. Order 26 Rule 10(2) CPC stipulates that the report of the Commissioner and the evidence taken by the Commissioner shall be evidence in the suit and shall form part of the record. The said provision reads as under:
10. Procedure of Commissioner.-- (1) The Commissioner, after such local inspection as he deems necessary and after reducing to writing the evidence taken by him, shall return such evidence, together with his report in writing signed by him, to the Court. (2) Report and depositions to be evidence in suit.
Commissioner may be examined in person.--The report of the Commissioner and the evidence taken by him (but not the evidence without the report) shall be evidence in the suit and shall form part of the record; but the Court or, with the permission of the Court, any of the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report, or as to his report, or as to the manner in which he has made the investigation."
11. In Levi Strauss & Co. v. Rajesh Agarwal 2018 IAD (Delhi) 622, this Court examined the said provision and held that once the Commissioner has filed the evidence TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 14 of 20 along with his report, it becomes evidence in the suit itself. Under Order 26 Rule 10(2) CPC it is not mandatory to examine the Commissioner to admit the report of the Commissioner as evidence in the suit. The relevant observations are as under:
8. The Local Commissioner is in fact a representative of the Court itself and it is for this reason that Order 26 Rule 10 (2) of CPC clearly provides that once the Commissioner has filed the evidence along with his report the same shall be treated as evidence in the suit and shall form part of the record. XXX XXX XXX
10. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e., the Commissioner is appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has an option to examine the Commissioner personally in open Court. Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report. In the present case, a perusal of the written statement filed by the Defendant clearly reveals that the Defendant does not challenge the Commissioner's report. Para of the written statement is set out below..."
12. This position of law has been reiterated by this Court in Vinod Goel v. Mahesh Yadav [RFA 598/2016 decided on 23rd May, 2018] wherein the Court observed as under:
"7. It is the settled proposition in law that when a Commissioner is appointed, he acts as the officer of the Court and it is not necessary for the Commissioner to be examined. This is clearly laid down by the Supreme Court in Misrilal Ramratan & Ors. Mansukhlal & Ors. v. A. S. Shaik Fathimal & Ors., 1995 Supp (4) SCC 600, wherein the Court held as under:
"It is now settled law that the report of the Commissioner is part of the record and that therefore the report cannot be overlooked or rejected on spacious plea of non-examination of the Commissioner as a witness since it is part of the record of the case." 8. Even this Court, recently in Levis Strauss v. Rajesh Agarwal [RFA 127/2007 decision dated 3rd January, 2018], held as under: "11. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e. the Commissioner is TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 15 of 20 appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has an option to examine the Commissioner personally in open Court. Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report."
9. Mr. Prag Chawla clearly concedes that there may be no requirement to examine the Local Commissioner once the Commissioner is appointed by a Court.
10. Under these circumstances, since the Commissioner had visited the suit property and had submitted the report, it is deemed appropriate that the matter is remanded back to the Trial Court to decide the matter afresh after taking into consideration the report of the Local Commissioner, Mr. Y.D. Nagar dated 5th January, 2000 in Suit No.2198/1999.
13. In view of Order 26 Rule 10(2) CPC and the judgments discussed above, the settled legal position that emerges is that the report of the Local Commissioner can be treated as evidence in the suit where it is not challenged by any party. Accordingly, in the present case the report of the Local Commissioner and the contents therein can be relied upon by the Court as evidence as the same is unchallenged."
14. Considering the report of the Local Commissioner which has been prepared and the evidence which has been collected by the Local Commissioner as also the non-filing of the written statement, this Court is of the opinion that no ex parte evidence is required in this matter. This view is supported by the decisions of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014] and Cross Fit LLC v. RTB Gym and Fitness Centre [CS(COMM) 543/2021, date of decision 6th September, 2022]"
25. Thus, considering that the defendants did not file any objections to the report filed by the Ld. Local Commissioner, the Court is proceeding to consider the same.TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 16 of 20
26. The Ld. Local Commissioner seized goods from premises of defendants no.1 & 2 which are counterfeit and large quantity of footwears bearing impugned trademark were found at the premises of defendant no.3 but the same could not be inventoried due to the unruly mob which gathered during the spot proceedings. The Court is thus, convinced that defendants have by their such acts with malafide intent passed off their goods as that of the plaintiff and tried to make benefit out of the goodwill and reputation enjoyed by the plaintiff. Further, by doing so, the defendants have been diluting the reputation and goodwill of the plaintiff's trade mark/ label/trade name and also been misleading the customers. Therefore, the plaintiff is entitled to reliefs in terms of paragraph no. 34(a).
27. Thus, the issue is decided in favour of the plaintiff and against the defendants.
B) Whether the plaintiff is entitled to any damages and / or rendition of accounts? If so, at what extent? (Issue no. ii)
28. As regards the claim for a decree for rendition of accounts as sought by paragraph no.34(d), no evidence of profits illegally earned by the defendants by the use of trade mark / trade name / label of the plaintiff and from selling deceptively similar goods as well as by infringement of copyright is on record. However, it has been held in Disney Enterprises, INC vs. Mr. Rajesh Bharti TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 17 of 20 & Ors.1 :
'...15. Moreover, in India courts are sensitive to the growing menace of infringement and have started granting punitive damages even in cases where due to absence of the defendants exact figures of sales by the defendants under the infringing copyright and/or trademark exact damages are not available. This Court in The Heels Vs. V.K. Abrol & Anr., CS(OS) 1385/2005 decided on 29th March, 2006 while granting damages has held "This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that an enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable."
16. Further, this Court in Microsoft Corporation Vs. Rajendra Pawar & Anr., CS(OS) 530/2003 decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the defendant‟s conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."
17. This Court is also of the view that before award of damages it is not necessary that the plaintiff must show some particular benefit has accrued to the defendant or that the plaintiff must satisfy the Court by leading evidence that it has suffered actual loss. In Microsoft 1 CS(OS) 1878/2009 & I.A. 12833/2009 decided by High Court of Delhi on 13.02.2013 TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 18 of 20 Corporation Vs. Ms. K. Mayuri & Ors., 2007 (35) PTC 415 Del., this Court has held "The practice of grant of exemplary damages needs to be strengthened particularly in those cases where flagrant infringement is found. Such an exercise of power is not to be fettered by any requirement that the plaintiff must show some particular benefit which has accrued to the defendant or that the plaintiff must satisfy the court by leading evidence that he has suffered actual loss. In a case where the plaintiff proves such actual loss, he would be entitled to the same. However, even without such a proof, in case of flagrant infringement, the court has the complete discretion to make such award of damages as may seem appropriate to the circumstances, so that it acts as deterrent. In some cases, it is not possible to prove the actual damages, namely, that there is a normal rate of profit or that there is a normal or establish licensed royalty. Yet, clearly, the damages have to be assessed."'
29. As it is apparent that the plaintiff's trade mark/ label/trade name is well known and is therefore, required to be protected hence, considering that the nature of counterfeit goods would have adversely impacted the business and reputation of the plaintiff, a nominal compensatory and punitive damage @ Rs.50,000/- each is fixed to be paid by the defendants, separately.
30. As regards the claim for a decree for rendition of accounts of profits illegally earned by defendants no. 1, 2 and 3 by use of the packaging similar to that of the plaintiff from selling deceptively similar goods as well as by infringement of copyright no evidence was led. However, considering that the Local Commissioner appointed by the Court in his report did find certain counterfeit goods in the possession of the defendants, this TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 19 of 20 Court deems it appropriate that the plaintiff should be compensated with damages for bearing the Local Commissioner's fees.
31. In view of the above discussions, the suit is decreed for prayer clause (a), (c) & (d) of the suit alongwith cost in favour of the plaintiff and defendants no. 1, 2 and 3.
32. Decree sheet be prepared on filing of ad-valorem Court fees.
33. File be consigned to records.
VIJETA Digitally by VIJETA signed SINGH RAWAT SINGH Date:
RAWAT 2024.10.04 15:30:24 +0530 Pronounced in open Court on 27.09.2024 (Vijeta Singh Rawat) District Judge-01, New Delhi District, Patiala House Courts, New Delhi TM No.29/21 M/s Calvin Clein Trademark Trust vs. M/s G.B. Shoe Page 20 of 20