Delhi District Court
M/S Tommy Hilfiger Europe B.V vs Sh. Lalit Kumar Jaggia on 8 May, 2023
IN THE COURT OF SH. SUDHANSHU KAUSHIK :
ADDITIONAL DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.216/2021
CNR NO.DLND01-000670-2015
M/S TOMMY HILFIGER EUROPE B.V.
THROUGH ITS CONSTITUTED ATTORNEY
STADHOUDERSKADE 6, 1054 ES,
AMSTERDAM, NETHERLANDS
...PLAINTIFF
VERSUS
SH. LALIT KUMAR JAGGIA
M/S M.J.ENTERPRISES
2236/1, FIRST FLOOR,
NEW RANJEET NAGAR, SHADIKHAM PUR,
NEW DELHI-110088
...DEFENDANT
DATE OF INSTITUTION OF SUIT : 13.04.2015
DATE OF ARGUMENTS : 25.04.2023
DATE OF JUDGMENT : 08.05.2023
DECISION : SUIT DECREED
JUDGMENT
1. Plaintiff has instituted the present suit seeking permanent injunction against infringement of trade-mark, passing-off and damages.
2. The facts, as disclosed in the plaint, are;
(a) Plaintiff is the owner of registered trademark TOMMY HILFIGER, TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 1 of 14 TOMMY, TOMMY GIRL Logo/label and the FLAG Logo. It is engaged in the business of manufacturing, distributing and selling of a wide range of clothing, fragrances, cosmetics, eye-wear, watches, home furnishings and other allied goods.
(b) Plaintiff had been using the said trademarks honestly, bonafidely, extensively, exclusively, continuously, commercially and in course of trade. Plaintiff's goods under the said trademarks are freely and commercially available in India. The details of the application for registration of trademarks in respect of various classes of goods as well as the registered trademarks have also been provided in the plaint. Plaintiff has been regularly and continuously promoting its distinctive trademark through extensive advertisements, publicities promotions and marketing research and had been spending enormous amounts of money, efforts, skills and time thereon. Plaintiff's represent their trademark/label in an artistic manner including its getup, lettering style, color schemes, placement of words and artistic features etc.
(c) Plaintiff company is duly registered in India under the Trade Mark Act. Plaintiff claims to have secured statutory rights in the trademarks by way of registering the same in Indian under various classes. TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 2 of 14 Plaintiff has submitted that the goods have acquired immense goodwill and reputation on account of extensive advertisements. It has been submitted that plaintiff has spent huge amount of money in building its brand image over the past decades. The trademark and the goods of the plaintiff have acquired a unique identity and reputation.
(d) Plaintiff filed the present suit alleging that an unknown person has started using its trademark on inferior quality counterfeit products. Plaintiff alleged that the infringed product are carrying deceptively similar trademark so as to confuse the general public that the infringed goods are the goods of plaintiff. Plaintiff disclosed that the unknown person is carrying out its business under the name of M/s M.J.Enterprises from Premises No.2236/1, 1st Floor, New Ranjeet Nagar, Shadikham, New Delhi-110008. Plaintiff alleged that it is suffering huge loss of business and reputation on account of the sale of the infringed products. Along with the suit, plaintiff filed an applications under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold.
3. The application under Order XXVI Rule 9 CPC was allowed on 13.04.2015 and a Local Commissioner was appointed to carry out the TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 3 of 14 search of the counterfeit products at Premises No.2236/1, 1 st Floor, New Ranjeet Nagar, Shadikham, New Delhi-110008. The Local Commissioner carried out search of aforesaid premises and 264 pieces of counterfeit ready-made garments bearing the trade-mark and logo of the plaintiff were recovered. Defendant was found present at the spot and he claimed to be the owner of M.J.Enterprises. The counterfeit/infringed products were seized and inventory was prepared. The seized products were handed over to the defendant on superdari. Photographs of the spot as well as the seized counterfeit products were obtained.
4. The Local Commissioner submitted report in the court. Thereafter, on an application filed by the plaintiff, the name of defendant was substituted in the plaint.
5. Defendant appeared and contested the suit by filing written statement.
Defendant denied the allegations in the plaint and questioned the maintainability of the suit. He challenged the territorial jurisdiction of the court. He alleged that the allegations in the plaint are false and concocted. He mentioned that the suit has not been filed by competent person. He mentioned that plaintiff has concealed material facts from the court. He stated that he never dealt with the counterfeit goods TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 4 of 14 bearing the trademark and logo of the plaintiff. He stated that mere registration of the trademark is no proof of its usage and prayed that the suit may be dismissed.
6. Plaintiff filed replication and reiterated the contents of the plaint.
Thereafter, defendant abandoned the proceedings.
7. On the basis of the pleadings of the parties, following issues were framed:
1. Whether this court lacks territorial jurisdiction to try and entertain the present suit? OPD
2. Whether there is no cause of action for filing of the present suit? OPD
3. Whether the plaintiff has concealed and suppressed material facts from the court ? OPD
4. Whether the plaintiff is the proprietor of Trademark TOMMY HILFIGER, TOMMY, TOMMY GIRL ? OPP
5. Whether the defendant committed Infringement and passing off of the Trademark TOMMY HILFIGER, TOMMY, TOMMY GIRL by adopting and using an identical and deceptively similar Trademark ? OPP
6. Whether the plaintiff is entitled to a decree of permanent injunction as prayed for?OPP
7. Whether the plaintiff is entitled to a decree for rendition of accounts as prayed for? OPP
8. Relief.
8. Since, defendant abandoned the proceedings, therefore, he was proceeded ex-parte vide order 15.09.2018.
9. In order to prove its case, plaintiff examined only one witness i.e. PW-
1/Pankaj Pahuja, Authorized Representative of the plaintiff. He filed TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 5 of 14 his evidence by way of affidavit and supported the averments of the plaint. He relied on following documents:
(a) Copy of Power of Attorney dated 01.01.2017 in favour of Mr. Bharat Kapoor as Ex. PW - 1/1;
(b) Copy of the Power of Attorney dated 14.05.2019 in my favour as Ex. PW 1/2;
(c) Legal proceedings certificates for Plaintiff's trade mark registration No.465059 as Ex.PW1/3;
(d) Legal proceedings certificates for Plaintiff's trade mark registration No.528964 as Ex.PW1/4;
(e) Legal proceedings certificates for Plaintiff's trade mark registration No.528965 as Ex.PW1/5;
(f) Legal proceedings certificates for Plaintiff's trade mark registration No.528966 as Ex.PW1/6;
(g) Legal proceedings certificates for Plaintiff's trade mark registration No.528969 as Ex. PW1/7;
(h) Legal proceedings certificates for Plaintiff's trade mark registration No.661684 as Ex. PW1/8;
(i) Legal proceedings certificates for Plaintiff's trade mark registration No.725528 as Ex. PW1/9;
(j) Legal proceedings certificates for Plaintiff's trade mark registration No.725529 as Ex.PW1/10;
(k) Legal proceedings certificates for Plaintiff's trade mark registration No.964904 as Ex. PW1/11;
(l) Legal proceedings certificates for Plaintiff's trade mark registration No.964905 as Ex. PW1/12;
(m) Legal proceedings certificates for Plaintiff's trade mark registration No.1114705 as Ex. PW1/13;
(n) Legal proceedings certificates for Plaintiff's trade mark registration No.1195244 as Ex. PW1/14(OSR);
(o) Legal proceedings certificates for Plaintiff's trade mark registration No.1275396 as Ex.PW1/15;
(p) Legal proceedings certificates for Plaintiff's trade mark registration TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 6 of 14 No.1275397 as Ex.PW1/16;
(q) Legal proceedings certificates for Plaintiff's trade mark registration No.2208025 as Ex.PW1/17;
(r) True copies of the Declaratory Memorandum dated 30 th November 2015 and Deeds of Assignment as Mark A;
(s) Office copies of the filing of the said Declaratory Memorandum and Deed of Assignment before the Registrar of Trademarks including acknowledgment issued thereof as Ex.PW1/19 (colly);
(t) The specimen of plaintiff's trademarks as Ex.PW1/20 (colly); (u) Detailed list of Tommy Hilfiger stores all across India as Ex.PW 1/21(colly);
(v) Copies of few orders passed by the Hon'ble High Court of Delhi in favour of the Plaintiff as Mark B;
(w) Pictorial Representation of the impugned marks/label used by the Defendant on its products as Ex.PW1/23(colly);
(x) Reports of the local commissioners appointed by this Hon'ble court for carrying out search and seizure at the Defendant's premises in the present matter as Ex.PW1/24(colly); (y) Copies of documents showing several of the plaintiff's addresses through which it conducts its business in Delhi as Mark-C.
10. I have heard the arguments advanced by the counsel for plaintiff.
None appeared on behalf of defendant to address final arguments.
11. I have perused the record.
ISSUE-WISE FINDINGS Issue No.2: Whether there is no cause of action for filing of the present suit? OPD Issue No.3: Whether the plaintiff has concealed and suppressed material facts from the court ? OPD Issue No.4: Whether the plaintiff is the proprietor of Trademark TOMMY HILFIGER, TOMMY, TOMMY GIRL ? OPP
12. Plaintiff has placed on record the registration certificates of the TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 7 of 14 trademark TOMMY HILFIGER, TOMMY, TOMMY GIRL Logo/label and the FLAG Logo. The certificates demonstrate that plaintiff is the registered owner of the trademark. Plaintiff has also placed on record documents to demonstrate that its trade-mark has acquired recognition worldwide. Plaintiff had been uninterruptedly using the trade-mark. Plaintiff alleged that defendant has infringed its trade-mark by selling the counterfeit products and using mark which is deceptively similar to the one owned by the plaintiff. Thus, it cannot be concluded by any stretch of imagination that there was no cause of action to file the plaint. Plaintiff had a legal right to institute a suit for injunction to restrain defendant from storing and selling the counterfeit products bearing its trade-mark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the matter provided under the Act. Section 134 of the Act provides the remedy of filing a suit for infringement of a trademark while Section 125 of the TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 8 of 14 Act describes the relief which may be granted in a suit for infringement or passing off the trademark.
13. Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark 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 trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is identical or similar with the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a marks that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark.
14. Thus, there was a valid cause of action for instituting the present suit.
Although, defendant took a plea that plaintiff has concealed and TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 9 of 14 suppressed material facts but these were general allegations. Defendant did not lead evidence to substantiate the said plea. The bald plea taken by the defendant about the concealment of material facts has no merit. Accordingly, Issue No.2, 3 & 4 are decided in favour of plaintiff and against the defendant.
Issue No.1: Whether this court lacks territorial jurisdiction to try and entertain the present suit? OPD
15. Defendant has challenged the territorial jurisdiction of this court to try and entertain the present suit. The High Court of Delhi, while dealing with a similar argument on the territorial jurisdiction, observed in the matter of "Burger King Corporation Vs Techchand Shewakramani & Ors." CS (COMM) 919/2016 & CC(COMM) 122/2017 as under;
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade"
any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 10 of 14 2(2) (c) of the TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference -
...
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"
16. The court further observed in Burger King's case (supra) that in a suit involving right in a trade-mark, cause of action arises in each and every place where there is any form of use of said mark. The court held that the principles which apply to infringement action to determine use of trade-mark would equally apply to passing off actions. The court observed that Section 20 of CPC provides that suit could be filed in any place where the cause of action arises and therefore, the place where the trade-mark has been used in any form has jurisdiction and the suit can be filed in the court having territorial jurisdiction over the said place. In view of this clear and categorical observation, the submissions that the court lacks territorial jurisdiction needs to be rejected. Plaintiff has submitted that defendants have been storing the counterfeit products at various locations in Delhi and the counterfeit goods are being sold to various TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 11 of 14 customers in New Delhi. In view of this, the court in New Delhi had the territorial jurisdiction to try and entertain the present suit. Accordingly, Issue No.1 is decided in favour of plaintiff and against the defendant.
Issue No.5:Whether the defendant committed Infringement and passing off of the Trademark TOMMY HILFIGER, TOMMY, TOMMY GIRL by adopting and using an identical and deceptively similar Trademark ? OPP Issue No.6: Whether the plaintiff is entitled to a decree of permanent injunction as prayed for?OPP Issue No.7: Whether the plaintiff is entitled to a decree for rendition of accounts as prayed for? OPP Issue No.8: Relief
17. In the present matter, there is irrefutable evidence to show that the products bearing the logo and the trade-mark of the plaintiff were recovered from the possession of defendant. Photographs of the recovered counterfeit products and labels were taken by the Local Commissioner and copies of the same were filed along with the report. I have perused the same. The photographs show that the defendant has used almost identical mark on the ready-made garments recovered from his possession. The mark was affixed on the same line of goods which were being stored and distributed by the plaintiff. Thus, defendant not only used the identical mark but also used the mark in respect of identical goods, which are being sold by the TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 12 of 14 plaintiff. In fact, the evidence has established that defendant was using a mark exactly identical to the registered trademark of the plaintiff. The counterfeit ready-made garments recovered from the possession of defendant were certainly meant to be sold in the market for profit.
18. After having gone through the submissions advanced by counsel for the plaintiff and perusal of the record, I find that evidence furnished by plaintiff has remained unrebutted, unchallenged & uncontroverted. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by the defendant. Accordingly, plaintiff is entitled to the decree of permanent injunction. As far as relief of damages is concerned, it is an admitted position that neither the quantum of damages has been specified nor evidence has been led in that direction. However, in the matter of "Adidas AG Vs Praveen Kumar", CS (Comm.) 1269/2019, decided on 14.05.2019, the High Court of Delhi granted damages after taking note of the report submitted by the Local Commissioner. In the present matter, defendant was found in possession of counterfeit products. From the inventory placed on record by the list of inventory filed by the Local Commissioner, it is not possible to make the exact TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 13 of 14 analysis of the profit earned by defendant from selling the counterfeit products, therefore, nominal damages to the tune of Rs.1,00,000/- are being awarded to the plaintiff. Accordingly, Issue No.5 to 8 are also decided in favour of plaintiff. In view of this, the suit stands decreed with the following relief:
i. A decree of permanent injunction against the defendant whereby he is restrained for manufacturing, storing and selling the counterfeit products bearing the trade-mark of the plaintiff;
ii. Decree of damages to the tune of Rs.1,00,000/- (Rupees One Lac only).
iii. Cost of the suit is also awarded.
iv. The seized counterfeit products shall be delivered to the
plaintiff for destruction.
19. Decree-sheet be prepared accordingly.
20. File be consigned to Record Room after necessary compliance.
Announced in open Court on 08.05.2023 (Sudhanshu Kaushik) Addl. District Judge-02 & Waqf Tribunal, New Delhi District, Patiala House Courts, New Delhi/08.05.2023 TM No.216/2021 M/s Tommy Hilfiger Europe B.V. Vs Lalit Kumar Jaggia Page 14 of 14