Delhi District Court
Ms Lacoste S.A vs Ms Sheetal Fabrics on 24 November, 2023
DLND010009812014
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. 89/21
M/s Lacoste S.A.
8, rue de Castiglione-75001
Paris, France .... Plaintiff
Versus
M/s Sheetal Fabrics
6, Pushpa, (Central) Market,
Opp. Police Station, Lajpat Nagar,
New Delhi-110024
.... Defendant
Suit presented on : 31.05.2014
Arguments concluded on : 07.11.2023
Judgment pronounced on : 24.11.2023
JUDGMENT
1. The present suit u/s 134 and 135 of The Trademarks Act (hereinafter, referred to as "TM Act") and u/s 55 of The Copyright Act (hereinafter, referred to "Copyright Act".) has been filed by LACOSTE against M/s. Sheetal Fabrics (hereinafter, referred to as the defendant) seeking a decree of TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 1 of 26 permanent injunction restraining the defendant from infringing the plaintiff's registered trademark LACOSTE, passing off and violating the plaintiff's rights in the aforesaid trademarks/ labels LACOSTE, 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/ labels LACOSTE and for rendition of accounts alongwith damages and cost of litigation.
2. Briefly stated, it is the case of the plaintiff that it is a company duly registered under the laws of France and engaged in the business of manufacturing, distribution and sale of wide range of clothing, footwear, perfume, leather goods, watches, eyewear and other allied / related products under its various trademarks as mentioned in the list of plaintiff's registered Trademarks / labels annexed with the plaint. According to the averments, the plaintiff is operating across the globe and innovating since 1933, the year it created and patented the first tennis shirt under the trademark LACOSTE with crocodile logo. It is stated that the iconic brand of the plaintiff has built a strong retail and distribution network across India and has grown exponentially. The plaintiff since its bonafide adoption in the year 1933, has been using the word / mark LACOSTE as word per se , stylized, with or without the device / logo of crocodile which were registered under the Trade Mark Act. It is also stated TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 2 of 26 that the artwork in various labels are also original artistic work and plaintiff holds copyright thereof. It has also been explained that the plaintiff maintains strict quality control and is a popular brand catering to the general populace for their leisure and fashion wear. It has been claimed that the plaintiff has invested hugely in advertising and promotion of its products which are known for their good quality, standards of manufacturing and new technologies on account of which it has gained enviable reputation in India and abroad. It is stated that to secure its statutory right, the plaintiff also applied and obtained various trademark registrations around the world including India which are valid and subsisting. The details are as under:
S. Trade Mark Applicati Class Status Regn/ Valid upto/ No. on no. Appl. Renewed Date upto 1 LACOSTE 189521 25 Registered 18.3.59 (word mark) 2 LACOSTE 400265 25 Registered 19.1.83 19.01.2024 Device 3 CROCODIL 400267 25 Registered 19.1.83 19.01.2024 E DEVICE 4 LACOSTE 516872 25 Registered 15.9.89 15.09.2019 Device of Crocodial 5 LACOSTE 610604 25 Adv. before 28.10.93 (word mark) Accep.
6 CROCODIL 893320 25 Registered 21.12.99 21.12.2019
E (word
Mark)
7 CROCODIL 400270 3 Registered 19.1.83 19.01.2024
E DEVICE
TM NO. 89/21
M/s Lacoste S.A. Vs. Sheetal Fabrics Page 3 of 26
8 LACOSTE 2062565 3 Pending 02.12.10 02.12.2020
L!VE
9 CROCODIL 400269 9 Registered 19.1.83 19.01.2024
E
10 LACOSTE 516862 9 Registered 15.9.89 15.09.2020
Device
11 LACOSTE 449343 9 Registered 06.2.86 06.02.2017
Device
12 LACOSTE 516863 14 Registered 15.9.89 15.09.2019
(word mark)
13 LACOSTE 2062567 14 Pending 02.12.10 02.12.2020
L!VE
14 CROCODIL 400268 14 Registered 19.1.83 19.01.2024
E DEVICE
15 LACOSTE 516864 18 Registered 15.9.89 15.09.2020
(DEVICE)
16 LACOSTE 482181 24 Registered 03.12.87 03.12.2018
17 LACOSTE 516865 24 Registered 15.8.89 15.08.2019
Device of
Crocodile
18 LACOSTE 516873 26 Registered 15.9.89 15.09.2020
Device of
Crocodile
19 LACOSTE 610605 26 Registered 28.10.93 28.10.2023
(word mark)
20 LACOSTE 516874 28 Registered 15.9.89 15.09.2020
Device of
crocodile
21 LACOSTE 533681 28 Registered 19.7.90 19.07.2024
(word mark)
22 LACOSTE 1373629 3, 9, Registered 25.7.05 25.07.2015
(word mark) 14 &
18
3. However, the plaintiff is now aggrieved that the defendant (the constitution of which is not known) is engaged in manufacturing and marketing of garments, footware, cosmetics, TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 4 of 26 accessories and related goods (hereinafter referred to as the 'impugned goods' and 'impugned business'). It is alleged that the defendant has adopted and started using trademark LACOSTE alongwith logo/ device of crocodile and other variants of the trademark in relation to its impugned goods. It is also stated that the impugned trademark used by the defendant in relation to its impugned goods and business is identical with and deceptively similar to the trademark of the plaintiff, phonetically, visually, structurally and in its essential features so much so, that the defendant also infringed upon the copyrights involved in the plaintiff's trademark. Consequentially, the impugned goods of the defendant is wrongly linked to have source and origin in the plaintiff. Considering that the defendant has no right to use the trademark and copyright of the plaintiff, it has been violating plaintiff's trademark and copyrights, therein. Further, by passing off impugned goods as that of the plaintiff the defendant has been diluting plaintiff's proprietary rights therein and the defendant has adopted unfair and unethical trade practices. Allegedly, the resemblance between the impugned trademarks and the trademarks of the plaintiff are so close that the plaintiff is aggrieved that the activities of the defendants have caused huge loss to the plaintiff's business and reputation as unwary purchasers and traders have been deceived.
4. Vide order dated 02.06.2014, ex-parte ad interim injunction was granted and Local Commissioner was appointed TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 5 of 26 to seize all impugned products and prepare an inventory of the same. Ms. Aakriti Saxena, Ld Local Commissioners executed her commission on 10.06.2014 and filed her report on 02.08.2014 as per which, she visited the premises of the defendant. During inspection, the following items were seized by the Ld. Local Commissioner:
Sr. No. Items Quantity 1 T-shirt 31 2 Track Suit 2 3 Perfumes 1 4 Pack 11 4.1 It is reported by her that the owner of the factory admitted
that he was preparing the impugned goods and she also stated that there was 'goods with surprising intimation have been found at the premises of the defendant'
5. Pursuant to summons issued, the defendant entered its appearance on 04.08.2014 through Sh. Gurvinder Singh, Ld Advocate and filed written statement in which the following preliminary objections have been raised:
a) That the defendant is a partnership, however, since none of the directors have been impleaded, the suit is bad for non-joinder of parties.
b) That the suit has not been duly instituted as the authorized representative does not have a valid authority in her favour.TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 6 of 26
c) That the suit is not properly valued and requisite Court has not been paid.
d) That the plaintiff has not approached the Court with clean hands.
e) That the Court does not have the territorial jurisdiction to try the present suit (the objection qua territorial jurisdiction emanates from paragraph no.34 of reply on merits in the written statement.
6. On merits the statutory and common law rights of the plaintiff in work/mark/label LACOSTE is denied. It is also denied that the plaintiff is the owner of copyrights in the artistic work of word/ mark LACOSTE. It is further stated that the defendant has not indulged in counterfeiting the products of the plaintiff in complete or partial violation of plaintiff's statutory an common law rights. It is further averred that the defendnat never sold or traded or offered to sell any Impugned goods or products to any person. In explanation to the recovery is made by the Ld. Local Commissioner, it has been pleaded that they were kept as 'samples' in the shop of the defendant by some salesman in the absence of managing director of the defendant who was then travelling abroad. It is further explained that non of the goods recovered had offered or exposed for sale at any point of time.
TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 7 of 26ADMISSION AND DENIAL OF DOCUMENTS
7. No admission and denial of documents has been conducted.
ISSUES
8. Vide order dated 25.08.2014 following issues were framed :
1. Whether the suit has been duly instituted by authorized representation?OPP
2. Whether suit has been properly valued for the purpose of Court fees and jurisdiction? OPP
3. Whether this Court has territorial jurisdiction to entertain this suit?OPP
4. Whether this suit is without cause of action? OPD
5. Whether the present suit is bad for mis-joinder/ non-
joinder of necessary parties? OPD
6. Whether defendant has infringed the trademark of the plaintiff as alleged? OPP
7. Whether plaintiff is entitled for relief of permanent injunction as prayed? OPP
8. Whether plaintiff is entitled for decree of rendition of accounts, as prayed? OPP
9. Whether plaintiff is entitled to delivery of impugned goods as prayed? OPP
10. Relief.
PLAINTIFF EVIDENCE
9. In order to prove its case, the plaintiff has examined the following witnesses in evidence:
TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 8 of 269.1 PW-1 Sh. Hemat Khosla, Examiner of Trade Marks & G.I. examined as PW-1 tendered the following documents in evidence:
Sr. No. Document Exhibited as 1 Certified true copy of Registered Ex. PW-1/1 (colly.) Trade Mark of the plaintiff in Trade Marks application no.
400265 in Class 25, 400627 in Class 25, 516872 in Class 25, 893320 in Class 25, 400270 in Class 3, 2062565 in Class 3, 400269 in Class 9, 516862 in class 9, 449343 in Class 14, 516863 in Class 14, 2062567 in Class 14, 400268 in Class 18, 516864 v 18, 482181 in Class 24, 516865 in Class 24, 516873 in Class 26, 610605 in Class 26, 516874 in Class 28, 533681 in Class 28, 1373629 in Class 14, 18, 3 and 9.
2 True copy / photocopy of the Ex. PW-1/2 details of Trade Marks Application no. 610604 in Class 25, having status as 'advertised before acceptance.' Despite opportunity given this witness was not cross-
examined on behalf of the defendant.
9.2 PW-2 Ms. Meena Bansal tendered her evidence by way of affidavit Ex. PW-2/A and relied upon the following documents:
TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 9 of 26 Sr. Document Exhibited as
No.
1 Resolution-cum-authority letter Ex. PW-2/1
2 Print out of Mark/ Label of Ex. PW-2/2 (colly.)
plaintiff LACOSTE
3 Copy of documents showing Ex. PW-2/3 (colly)
history of plaintiff obtained from
the website
4 Copy of plaintiff's achievements, Ex. PW-2/4 (colly.)
turn over, participation and
innovations
5 Computer print out of photographs Ex. PW-2/5 (colly.)
of Lacoste products (OSR)
6 Representation of Trade Mark/ Ex. PW-2/6 (colly.)
Label Lacoste of the defendant (OSR)
7 Copy of documents showing the Ex. PW-2/7 (colly.)
address of the plaintiff
8 Report of Ld. Local Commissioner Ex. PW-2/8
She was duly cross-examined by the Ld. Counsel for the defendant.
DEFENDANT EVIDENCE
10. In order to prove its case, the defendant company examined DW-1 Sh. Sanjay Kathpalia who tendered his evidence by way of affidavit which is Ex. DW-1/1 and relied upon the following documents:
Sr. No. Document Exhibited as 1 Copy of Partnership Deed Ex. DW-1/A (OSR) TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 10 of 26 2 Air Tickets Ex. DW-1/B (OSR) 3 Copy of boarding passes Ex. DW-1/C (OSR)
He was duly cross-examined by the Ld. Counsel for the plaintiff.
FINAL ARGUMENTS
11. It has been argued by Sh. Amit Chanchal Jha, Ld. Counesl for the plaintiff that there is no specific denial to the assertions of the plaintiff. Evasive denials are therefore, deemed admissions. It has been submitted that through testimony of Sh. Hemat Khosla (PW-1), the plaintiff has proved registration of its trademarks. Further, it has been adumbrated that the Ld. Local Commissioner's report has not been objected to and it constitutes material evidence that remains unrebutted. With respect to the AR not being duly authorized to institute the suit, it has been submitted that stamp duty on the authority-cum-resolution had been paid and the same anyways, is a curable defect. Thereafter, referring to Section 36 of the Indian Stamp Act, 1899 (hereinafter, referred to as the 'Stamp Act'), it has been submitted that since the document was exhibited, the objection now raised by the defendant is not sustainable. For the perusal of the Court, the stamped original resolution-cum-authority has been produced on the last date of hearing. Also, reliance has been placed upon Jugraj Singh and Anr Vs. Jaswant Singh and Ors.1 to assert the 1 (1970) 2 Supreme Court Cases 386 TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 11 of 26 validity of Resolution-cum-Authority (Ex. PW-2/1). As regards, non-joinder of a partner of the defendant as a necessary party, reliance has been placed upon Bawa Sanitation and Anr Vs. Jasmeet Kaur and Anr.2 where it has been held that a partnership firm can be sued in its name. Also, it has been argued that by changing their constitution, dishonest infringers can take advantage of lack of knowledge of constitution or their entity by the plaintiff and can defeat their rights. It has been also submitted that defendant no.1 has admitted to the recovery of goods and has feigned ignorance of the identity of the salesman and presence of one of the partners namely, Mr. Rajesh at the time of inspection by the Ld. Local Commissioner. Therefore, it has also been contended that he is not a reliable witness.
12. Per contra, the authority to file the present suit is assailed for (a) not proving the minutes of meetings or board resolution authorizing Ms. Nathalle Moulle Berteaux, Vice President (Legal) to execute authority in favour of Smt. Meena Bansal (PW-2). (b) As it has not been duly stamped. (c) It has not been properly notarized. During arguments, the Court has led through the cross-examination of Smt. Meena Bansal to demonstrate that she admitted that Resolution-cum-Authority (Ex- PW-2/1) did not mention the name of board members and that she had admitted that stamp duty had not been paid. Thereafter, it has been submitted that despite the defendant bringing on record its 2 (2020) 3 RCR (Civil) 802 TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 12 of 26 constitution, the plaintiff did not implead any of the partner and so, the suit is bad for non-joinder of a party. Finally, it has been argued that mere possession of impugned goods is not enough to prove 'use' by the defendant affording any cause of action to the plaintiff. By referring to the cross-examination of Smt. Meena Bansal (PW-2), it has also been shown that certificate under Section 65B(4) of Indian Evidence Act has not been filed in support copy of documents showing history of plaintiff (Ex. PW- 2/3), copy of plaintiff's documents showing its achievements, turnover, participation and innovations (Ex PW-2/4), computer print out of the photographs of LACOSTE products (Ex PW-2/5), copy of documents showing the address of the plaintiff (Ex. PW- 2/7) therefore, the documents cannot be admitted in evidence. It has also been submitted that Smt. Meena Bansal (PW-2) has admitted that no invoices have been adduced in evidence to prove that the defendant had been selling the impugned goods and that her evidence qua the manufacturing of impugned goods by the defendant is hearsay. Attention of the Court has also been drawn to an admission by Sh. Sanjay Kathpalia (DW-1) about infringement of Trade Marks of the plaintiff and order dated 27.02.2017 whereby the Delhi High Court in CM(M) 223/2017 and CM Nos. 7507/2017 & 7508/2017 held as under:
"6. In my opinion, the trial court was was the best judge to decide as to what transpired in court on that date. The trial court has exercises its discretion and concluded that there is no clerical mistake. It is not for this court to in exercise of its supervisory powers interfere in the said finding recorded by the trial court.
7. In any case, at best the said cross-examination would be TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 13 of 26 interpreted by the respondent as an admission. The settled legal position is that even an admission can be explained away. Thus, it would be open tot he petition to raise this plea at the time of adjudication, if so desired, as per law."
Therefore, it has been argued that the admission is a clerical error.
13. In rebuttal, it has been submitted that the admission by Sh. Sanjay Kathpalia was not an error but the witness appended his signature on the deposition sheet consciously.
REASONING AND APPRECIATION OF MATERIAL ON RECORD
14. Record has been perused and submissions considered.
ISSUEWISE FINDING A) Whether the suit has been duly instituted by authorized representation?OPP (Issue no.1)
15. The onus to prove the issue was upon the plaintiff.
15.1 The contention of the defendant is that Smt. Meena Bansal has not been duly authorized primarily on account of following reasons :
(a) That she has not been authorized by Board of Directors of the plaintiff company.
(b) That the Resolution cum Authority (Ex. PW2/1) has not been properly notarized and TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 14 of 26
(c) That Resolution cum Authority (Ex. PW2/1) has not been duly stamped.
15.3 Per contra, it has been explained on behalf of the plaintiff that Vice-President, Legal Affairs who has signed the Resolution cum Authority (Ex. PW2/1) was duly authorized and that the document has been properly notarized. Also, subsequently, as already admitted by Smt. Meena Bansal (PW2), the document was duly stamped.
15.4 Resolution cum Authority (Ex.PW2/1) bears the stamp of the notary. Even though, there is no endorsement of identification of the executant, yet the concerned notary has appended his stamp and signature upon the Resolution cum Authority and there is presumption of regularity of official acts which has not been rebutted. Smt. Meena Bansal (PW2) also testified that the document was subsequently notarized. Further, it is pertinent to observe that when Resolution cum Authority (Ex. PW2/1) was tendered in evidence, no objection on its admissibility on account of not being stamped was raised. Therefore, Section 36 of The Stamp Act also comes into play. As regards the Resolution cum Authority not mentioning the names of the Board of Directors and therefore, the document not being genuine, it is worth observing that neither the defendant led any evidence to show that the Resolution cum Authority as per the laws of France was deficient nor that Vice President - Legal was not competent to TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 15 of 26 execute the Resolution cum Authority. All suggestions that the document has not been properly executed or that Smt. Meena Bansal (PW2) was not authorized to institute the suit has been declined. The defendant also did not seek production of minutes of meeting. Therefore, pre-ponderance of probabilities tilts in favour of the plaintiff.
15.5 In view of the the above discussion, the issue is decided in favour of the plaintiff.
B) Whether suit has been properly valued for the purpose of Court fees and jurisdiction? OPP (Issue no. 2)
16. The onus to prove the issue was upon the plaintiff.
16.1 No arguments have been led on this issue. But it can be perused that the plaintiff has valued the suit as under :
"35. That the plaintiff values the suit for purposes of Court fee and jurisdiction in the following manner:-
(a) for the grant of permanent injunction as prayed for in para 36 (a) (i) to (iv) and (b), for delivery up as prayed for in para 36(c), it is valued for the purpose of court fee and jurisdiction at Rs.200/- each and the court fee of Rs.20/- each totaling Rs.120/- is affixed.
(b) for an order for rendition of accounts of profits illegally earned by the defendants as prayed for in para 36(d), it is value for the purposes of jurisdiction and court fee at Rs.1000/- and court fee of Rs.150/- is affixed thereon as the plaintiff estimates that such an amount shall be found due to the plaintiff from the defendants on rendition of account having gone into. The plaintiff undertakes to pay such additional court fees it may be directed to pay by this Hon'ble Court on the defendants' rendition of accounts and as ascertained of the actual amount due to the plaintiff.
Total court fee affixed is Rs.270/-. This Hon'ble Court has jurisdiction to try and entertain the present suit."
TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 16 of 2616.2 Per contra, even though an objection has been taken that the suit has not been properly valued and appropriate court fees has not been paid, the same has not been elaborated upon. It has not been demonstrated how the above reproduced valuation is inappropriate.
16.3 Therefore, the issue is also decided in favour of the plaintiff.
C) Whether this Court has territorial jurisdiction to entertain this suit?OPP (Issue no.3)
17. The onus to prove the issue was upon the plaintiff.
17.1 Plaintiff has claimed territorial jurisdiction of this Court stating that the defendant is offering to sell the impugned goods to the dealers and distributors in the markets of New Delhi and hence, part of cause of action has arisen within the jurisdiction of this Court. It is also stated that the plaintiff is carrying on business from New Delhi viz. Parliament Street, Barakhamba, Chanakyapuri, Gole Market, Khan Market, Bengali Market etc. 17.2 The aforesaid averments have been denied stating that no cause of action has arisen within the jurisdiction of Delhi. During the course of arguments, attention of the Court was drawn to cross examination of Smt. Meena Bansal (PW2) when she feigned ignorance about the name of the investigator and her TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 17 of 26 admissions as under :
"It is wrong to suggest that plaintiff learnt about the defendant activities in the third week of May, 2014. It is wrong to suggest that plaintiff caused an enquiry in the market which revealed that defendant had adopted and started using impugned trademarks in a clandestine and surreptitious manner."
17.3 However, the affirmations of Smt. Meena Bansal (PW2) about impugned goods being sold to distributors and dealers specifically within the New Delhi District was not traversed. There is no cross examination to contravene the assertions that part of cause of action arose in the jurisdiction of this Court and merely because copy of documents showing the address of the plaintiff (Ex. PW2/7), which is a print out to show that a boutique of the plaintiff was operational from Connaught Place has not been proved for compliance of Section 65B(4) of The Indian Evidence Act, 1872 is not sufficient to rule in favour of the defendant.
17.4 Thus, the issue is decided in favour of the plaintiff.
D) Whether the present suit is bad for mis-joinder/ non- joinder of necessary parties? OPD (Issue no. 5)
18. The onus to prove this issue is upon the defendant.
18.1 For sake of brevity, the arguments are not reproduced again. However, relying upon Order XXX Rule 1 and proviso to TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 18 of 26 Rule 2(iii) of CPC and Bawa Sanitation and Anr Vs. Jasmeet Kaur and Anr. (supra), as the partnership firm can be sued in its name, the issue is decided against the defendant.
E) Whether this suit is without cause of action? OPD (Issue no. 4) F) Whether defendant has infringed the trademark of the plaintiff as alleged? OPP (Issue no. 6)
19. The issues are taken up for discussion together as they are co-related.
19.1 Onus to prove issues no. 4 and 6 was upon the defendant and the plaintiff, respectively.
19.2 Whereas, the plaintiff has claimed statutory as well as common law rights in its trademark / label / word LACOSTE which has been infringed by the defendant, the defendant has denied that the plaintiff has statutory or common law rights in trademark / label / word LACOSTE and has also taken a plea that when the Ld. Local Commissioner conducted inspection and recovered impugned goods, the managing partner of the defendant Sh Sanjay Kathpalia was travelling abroad and without his knowledge, one salesman of the defendant had kept some samples of products of the plaintiff, without knowledge of the managing partner, which were recovered.
19.3 The plaintiff examined Sh. Hemat Khosla, Examiner of TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 19 of 26 Trademarks who tendered in evidence certified true copy of details of Trade Mark applications as under :
"Certified true copy of Registered Trade Mark of the plaintiff in Trade Marks application no. 400265 in Class 25, 400627 in Class 25, 516872 in Class 25, 893320 in Class 25, 400270 in Class 3, 2062565 in Class 3, 400269 in Class 9, 516862 in class 9, 449343 in Class 14, 516863 in Class 14, 2062567 in Class 14, 400268 in Class 18, 516864 v 18, 482181 in Class 24, 516865 in Class 24, 516873 in Class 26, 610605 in Class 26, 516874 in Class 28, 533681 in Class 28, 1373629 in Class 14, 18, 3 and 9"
19.4 The authenticity of the certificates is unrebutted. It can be deduced from the Ex. PW1/1 (Colly) that wordmark LACOSTE (label) and LACOSTE device of crocodile have been registered under classes 25 (clothing, footwear, headgear) and under class 3 (perfumery, essential oils, soaps etc), class 9 (spectacles, glasses, sports glasses, frames etc) and class 14 (precious metals, jewellery etc) in favour of the plaintiff (classes relevant for the present controversy). Therefore, the plaintiff established its statutory rights qua the trade marks. Also the testimony of Smt. Meena Bansal (PW2) as regards common law rights stand unrebutted. The common law rights of the plaintiff in the artistic work of its label LACOSTE has not been traversed.
19.5 With this, during inspection, the Ld. Local Commissioner recovered goods from the premises of the defendant and no objections to the report of the commission came to be filed. It is a settled proposition of law that the Court can rely upon the report of the Ld. Local Commissioner which has remained unchallenged. It has been held in Lt. Foods Limited vs. TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 20 of 26 Saraswati Trading Company3 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 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 3 CS (Comm) 413/2021 decided by High Court of Delhi on 11.11.2022 TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 21 of 26 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 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 TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 22 of 26 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]"
19.6 Even though, a plea has been taken that the goods are not counterfeit but were samples kept by a salesman in the premises of the defendant, it is relevant to observe from the cross examination of Sh. Sanjay Kathpalia (DW1) which is as under :
"It is correct that goods were seized from our premises (Vol. I have no concerned with the seized articles as I was not present there). Further I can not say whether the goods were seized from my premises or not. It is wrong to suggest that at the time of execution of commission my partner Rajesh was there. It is correct that Ex. DW1/A bears the signature of my partner Rajesh at point A. It is also correct that on inventory and superdarinama prepared by Ld. Local Commissioner bears the signatures of Rajesh at point B and C. (Vol. At the time of execution of commission my partner Rajesh was not there, he TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 23 of 26 was called by the Ld. Local Commissioner to get his signatures on the documents). At the time of execution of commission my employees namely Prakash and Umesh were there. Sh. Tej Prakash is also one of the employee in our firm and he was present there on that day. In our absence out employees are there to look after the business. They are authorised just to sell of the goods and to look after the shop. I do not know the name of the salesman who delivered the samples (seized goods) at out shop. We used to make inquiries regarding the samples provided by the salesman before taking the same."
19.7 Hence, the defence raised has not been established. Considering that recovery of impugned goods has been effected from the premises of the defendant and no evidence has been led to bring the case under any exceptions enabling the defendant to use the Trade Mark / label / word LACOSTE, the only irresistible conclusion is that the defendant has infringed the statutory and common law rights of the plaintiff in its trademark / label / word LACOSTE and common law rights in its artistic work.
19.8 In view of the above discussion, issue no.4 is decided against the defendant and issue no. 6 is decided in favour of the plaintiff.
G) Whether plaintiff is entitled for relief of permanent injunction as prayed? OPP (Issue no. 7)
20. In view of the finding on issue no. 6 and as the defendant has not led any evidence as to why the discretionary relief should not be given to the plaintiff, considering that plaintiff is entitled to protection of its trademark / label / word LACOSTE, the issue is decided in favour of the plaintiff.
TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 24 of 26H) Whether plaintiff is entitled for decree of rendition of accounts, as prayed? OPP (Issue no. 8)
21. As regards the claim for a decree for rendition of accounts as sought by paragraph no.35(b), 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, relying upon Disney Enterprises, INC vs. Mr. Rajesh Bharti & Ors4 a nominal compensatory and punitive damages @ Rs.75,000/- is fixed to be paid by the defendant.
I) Whether plaintiff is entitled to delivery of impugned goods as prayed? OPP (Issue no. 9)
22. Onus to prove this issue is upon the plaintiff.
22.1 As per records, the Ld. Local Commissioner had released the goods on supurdginama to Sh. Rajesh, one of the partner of the defendant, who was the representative of the defendant then. Accordingly, in view of the findings on issues no.6 and 7, it is directed that the goods as mentioned in the supurdginama be delivered up to the plaintiff or destroyed in the presence of the plaintiff.
22.2 This issue is accordingly, decided in favour of the plaintiff. 4 CS(OS) 1878/2009 & IA 12833/2009 decided by High Court of Delhi on 13.02.2013 TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 25 of 26 RELIEF
23. In view of the above discussions, the suit is decreed alongwith cost of the suit. Plaintiff shall also be entitled to costs of the Local commissioner as per rules.
24. In view of the above discussions, the suit is decreed for prayer clause (a) & (d) alongwith cost.
25. Decree sheet be prepared on filing of ad-valorem Court fees.
26. File be consigned to records.
Pronounced in open Court (Vijeta Singh Rawat) on 24.11.2023 Additional District Judge-01, New Delhi District, Patiala House Courts, New Delhi TM NO. 89/21 M/s Lacoste S.A. Vs. Sheetal Fabrics Page 26 of 26