Delhi District Court
Through vs Ms. Gungun Gambhir on 11 April, 2023
DLND010028992016
IN THE COURT OF ADDITIONAL DISTRICT JUDGE- 01,
NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
Presided over by :- MS. VIJETA SINGH RAWAT (DHJS)
T.M. No. 78/21
M/s Christian Dior Couture
30, Avenue Montaign, 75008,
Paris, France
Through
Ms. Meena Bansal
Constituted Attorney
96, Sukhdev Vihar,
Mathura Road,
New Delhi-110025
.... Plaintiff
Versus
1.Ms. Gungun Gambhir Trading as M/s Satguru Optical Shop no.23, Gaffar Market, Karol Bagh, New Delhi-110005 Also at:
35/7, Old Rajinder Nagar, Delhi-110060 TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 1 of 18
2. Rajeev Arya Trading as M/s Osho Optics Stall No.66, Gaffar Market, Karol Bagh, New Delhi-110005 Also as & at:
Rajeev Arya S/o Dharmveer Arya R/o 184, Raja Garden, New Delhi-110015 .... Defendants Suit presented on : 05.04.2016 Arguments concluded on : 04.03.2023 Judgment pronounced on : 11.04.2023 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 Christian Dior Couture against Ms. Gungun Gambhir and Anr. seeking a decree of permanent injunction and damages for infringement of marks, passing off against the defendants; infringement of plaintiff's registered Trade Marks as mentioned in para no.8 of the plaint; passing off of the plaintiff's rights in the plaintiff's said trade mark/ label CHRISTIAN DIOR & DIOR; violation of plaintiff's proprietary rights in its said trade name/ domain name CHRISTIAN DIOR & DIOR;
infringement of plaintiff's copyright in the said trade mark/ trade TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 2 of 18 name/ label CHRISTIAN DIOR & DIOR; restraining the defendant from disposing off or dealing with their assets including their premises at the address mentioned in the memo of parties; for an order for delivery up of all the impugned finished and unfinished material bearing the impugned and violative impugned the impugned trade mark/ label CHRISTIAN DIOR & DIOR; for an order restraining the defendant and/ or any intermediary from displaying, advertising, promoting, selling, offering to sell, delivering and distributing the impugned goods and products bearing the impugned trade mark/ label CHRISTIAN DIOR & DIOR; rendition of accounts and for an order of cost of proceedings.
2. Briefly stated, it is the case of the plaintiff that it is a division of whole House of Dior and designs and produces coveted haute couture as well as luxury fashion wear and accessories (including eye wear) and has about 160 boutiques worldwide. It is stated that the plaintiff has been using word/ mark 'CHRISTIAN DIOR & DIOR' since 1940s which also acquired enormous goodwill and reputation all over the world. Further, it is also claimed that the art work in aforementioned trade mark/ trade name/ label are original artistic works of which the plaintiff is the owner and proprietor of the copyright, therein. Additionally, it is also the case of the plaintiff that it has official websites www.christiandior.com and www.dior.com where aforementioned trade mark/trade names/ labels are the essential TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 3 of 18 feature of its domain name. It is stated that to secure is statutory right, the plaintiff also applied and obtained various trademark registrations around the world including India which are as under:
S. Trade Mark Goods Cl Reg. No. Date of Valid upto/ N reg. Renewed o. upto 1 CHRISTIAN Perfumes, toilet 03 306543 27.06.19 DIOR water eau de Registered, 75 Registered, Valid and cologne, nail Subsisting polishes & Lipstics 2 CHRISTIAN Bleaching 03 439555 28.06.19 DIOR preparations & Registered, 85 Registered, Valid and other Subsisting substances for Laundry use, cleaning, polishing, scouring & abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.
3 CHRISTIAN Cosmetics, hair 03 486102 19.02.19
DIOR products, Registered, 88
LABEL essential Valid and
Registered, oils Subsisting
4 CHRISTIAN Soaps, D3 670146 23.06.19
DIOR perfumery, Registered, 95
LABEL essential oils, Valid and
cosmetics, hair Subsisting
lotions,
dentifrices.
5 DIOR Soaps, 03 710384 22.07.19
TM NO. 78/2021
Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 4 of 18
perfumery,esse Registered, 96
ntial oils, Valid and
cosmetics, hair Subsisting
lotions,
dentifrices.
6 CHRISTIAN Spectacles, sun 09 387076 02.03.19 02.03.2020
DIOR glasses and Registered, 82
spectacle cases Valid and
Subsisting
7 DIOR Apparatus and 09 1577269 10.07.20 10.07.2017
scientific Registered, 07
instruments Valid and
(other Subsisting
Registered,
than for
medical Valid
and use),
photographic,
Subsisting
cinematographi
c, optical.
electronic
apparatus for
data
processing,
measuring
apparatus and
electronic
control,
electronic
sound
amplification
apparatus ;
apparatus and
instruments for
recordings,
transmission,
reproduction,
storage,
transformation,
processing of
sound or
pictures;
apparatus and
audio visual
TM NO. 78/2021
Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 5 of 18
instruments,
telecommunica
tion , telematic,
television sets,
remote
controls, tape
recorders;
video
recorders,
telephones,
wireless
telephones,
telephone
answering
machines;
dictaphones,
radios,
computers,
computer
peripherals,
modems,
software,
devices access
and of access
control for
apparatus of
data
processing,
apparatus of
authentification
intended for
telecommunica
tion networks;
terminals
digital, video
game
cartridges,
electronic
carriers on
console games;
magnetic
recording
carriers,
magnetic cards,
data processing
apparatus ;
TM NO. 78/2021
Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 6 of 18
spectacles,
spectacle cases,
optical goods.
ecran
television;
software for
supply access
for , data
processing
network or data
transmission, in
particular for
communication
networks world
(type internet)
or for access
private or
reserved (type
intra clear).
luminous signs.
signs
mechanical.
8 DIOR precious metals 14 636175 08.08.19 08.08.2004
and their alloys Registered, 94
and goods in Valid and
precious, Subsisting
metals or
coated
therewith, not
included ill.
other classes,
jewellery,
precious
stones,
horological and
chronometric
instruments.
9 DIOR Leather and 18 1948450 09.04.20
imitations of Registered 10
leather and Valid and
goods made of Subsisting
these ,materials
not included in
other classes,
animal skins,
TM NO. 78/2021
Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 7 of 18
hides, trunks
and travelling
bags,
umbrellas,
parasols , and
walking sticks,
whips and
saddler
1 DIOR Clothing, 25 636173 08.08.19 08.08.2011
0 footwear, Registered, 94
headgear Valid and
Subsisting
1 CHRISTIAN Clothing, 25 274428 20.08.19 20.08.2016
1 DIOR Registered, 71
particularly Valid and
women's Subsisting
IIhaute ,
couture II and
ready- to-wear
clothing in
particular
dresses, coats,
ensembles,
suits, blouses,
raincoats,
slacks, I skirts,
sportswear,
underwear,
lingerie,
foundation
garments,
brassiers,
shawls (not in
the piece),
scarves, men's
wear,
particularly
coats, jackets,
slacks, men'ls
lingerie in
particular
shirts, pyjamas,
gowns, . ties
and scarves,
men"s and
TM NO. 78/2021
Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 8 of 18
women"s
hosiery,
particularly
knitted
garments,
pullovers,
sweaters,
socks,
stockings,
tights, one and
two piece
swimwear,
belts for wear,
gloves,
footwear
inducting
boots, slippers
and mules
(being house
slippers)
3. The plaintiff has stated that it has by honest, bonafide, continuous, commercial, open, exclusive and uninterrupted adoption of aforementioned trade mark/ trade name/ label also acquired globally valuable trade, goodwill and reputation as well as acquired proprietary rights, therein. Further, it is the case of the plaintiff that the customers identify and distinguish plaintiff's goods under aforementioned trade mark/ trade name/ label/ domain name and also, associate goods under said trade mark/ trade name/ label/ domain name from plaintiff's source and origin and thus, the aforementioned trade mark/ trade name/ label/ domain name have also acquired secondary significance.
4. It has been alleged that the plaintiffs are engaging in manufacturing, marketing, soliciting and trade of eye wears TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 9 of 18 (sunglasses, goggles, opthalmic lenses, lifestyle products and allied and cognate products) by adopting and using trade mark/ trade name/ label/ domain name of the plaintiff as described above. It has been averred that the impugned trade mark/ label being used by the defendant for their impugned goods and business are identical with as well as deceptively similar to the plaintiff's trade mark/ trade name/ label/ domain name phonetically, visually and structurally as well as in essential features. Further, it has been averred that the defendants have also copied the artistic feature in plaintiff's trade mark/ trade name/ label/ domain name and has been using all kind of false descriptions on its impugned goods to wrongly link it with that of the plaintiff's, without any right and has thus, infringed plaintiff's registered trademarks and has also passed off their goods and business as that of the plaintiff's. Hence, it is averred that the defendants have diluted the plaintiff's proprietary rights in the trade mark, despite being aware of plaintiff's rights, goodwill, reputation etc and have caused huge loss in business and reputation of the plaintiff.
5. To satisfy the territorial jurisdiction of this Court, it has been stated that impugned activities of the defendants were detected in January 2016 in markets in New Delhi area namely, Connaught Place, Khan Market, Gole Market, Bengoli Market, Chanakya Puri etc. and also by showing that the show room of the plaintiff is situated at the Oberio Hotel and that the plaintiff TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 10 of 18 has its distributor and special agent at Connaught Place.
6. Vide order dated 07.04.2016, an ex-parte ad interim injunction was granted and a Local Commissioner was appointed to seize all impugned products and prepare an inventory of the same.
7. Thereafter, Sh. Abhishek Kumar, Ld. Local Commissioner, executed the commission on 23.04.2016 and seized 3 boxes (empty) and 1 box (16 pieces each) from Stall no.66, Gaffar Market, Karol Bagh, new Delhi and Ms. Kushdeep Gaur, Ld. Local Commissioner executed the commission on 02.06.2016 and seized 321 Dior sunglasses from Shop no.23, Gaffar Market, Karol Bagh, New Delhi-110005.
8. Defendant no.1 had entered appearance on 28.04.2016.
Defendant no.2 despite service did not appear and therefore, was proceeded ex-parte vide order dated 12.08.2016.
9. Defendant no.1 also preferred an application under Order VII Rule 10 of The Code of Civil Procedure (hereinafter, referred to as 'CPC') However, the same was dismissed for non- appearance on 22.11.2019 and the Court, proceeded ex-parte against defendant no.1. The matter was adjourned for ex-parte PE.
TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 11 of 1810. However, no ex-parte PE has been led and relying upon Lt. Foods Limited vs. Saraswati Trading Company, CS(Comm) 413/2021 decided by High Court of Delhi on 11.11.2022, Disney Enterprises, INC vs. Mr. Rajesh Bharti & Ors, CS(OS) 1878/2009 & I.A. 12833/2009 decided by High Court of Delhi on 13.02.2013 and Lilly ICOS LLC & Anr. vs. M/s. Scilla Biotechnologies Pvt. Decided by High Court of Delhi on 11.12.2008, it has been submitted that the suit be decreed.
11. Arguments have been heard, record has been perused and submissions considered.
12. 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 TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 12 of 18 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 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 TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 13 of 18 600, 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 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 TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 14 of 18 February, 2014] and Cross Fit LLC v. RTB Gym and Fitness Centre [CS(COMM) 543/2021, date of decision 6th September, 2022]"
13. Thus, considering that, the defendants did not file any objections to the Ld. Local Commissioner's reports, the Court is proceeding to consider the same.
14. As per the report dated 02.06.2016 of Ms. Kushdeep Gaur, Ld. Local Commissioner, shop no.23, Gaffar Market was inspected on 23.04.2016 where the identity of the owner was revealed as that of defendant no.1 and during the search, 321 Dior sunglasses were recovered (in the presence of defendant no.1). Thereafter, the were released on Superdginama to defendant no.1. Alongwith the report, are also annexed photographs of the recovered impugned articles.
15. Another report dated 28.04.2016 of Sh. Abhishek Kumar, Ld. Local Commissioner stipulates that search at stall no.66, Gaffar Market belonging to defendant no.2 was also conducted on 23.04.2016. It has been reported that three empty boxes and one box containing 16 pieces counterfeit sunglasses were recovered
16. As already observed above, as no objections were filed to these reports and as they can be relied upon as evidence, this Court is of the opinion that the defendants had been clearly indulging in infringement of plaintiff's statutory as well as TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 15 of 18 common law rights. The Court is convinced that the 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/ trade name/ label and also been misleading the customers. Therefore, the plaintiff is entitled to reliefs in terms of paragraph no. 36(a), (c) & (d).
17. As regards the claim for a decree for rendition of accounts as sought by paragraph no.36(e), 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 (Supra):
'...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."TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 16 of 18
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 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."' TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 17 of 18
18. As it is apparent that the plaintiff's trade mark/ trade name/ label is well known and is therefore, required to be protected and 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.3,00,000/- is fixed to be shared equally by both the defendants.
19. In view of the above discussions, the suit is decreed alongwith cost.
20. Decree sheet be prepared on filing of ad-valorem Court fees.
21. File be consigned to records.
Pronounced in open Court on 11.04.2023 (Vijeta Singh Rawat) Additional District Judge-01, New Delhi District, Patiala House Courts, New Delhi TM NO. 78/2021 Christian Dior Couture Vs. Ms. Gungun Gambhir & Anr. Page 18 of 18