Delhi District Court
M/S Hugo Boss Trade Mark Management Gmbh ... vs Arun Kumar N on 25 April, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND010034202020
CS (COMM.)/357/2020
IN THE MATTER OF:-
M/s HUGO BOSS TRADE MARK
MANAGEMENT GmbH &Co. KG
DieselstraBe, 12, 7255555, metzingen,
Germany
Through Constituted Attorney
Mrs. Meena Bansal
96, Sukhdev Vihar
Mathura Road
New Delhi - 110025
...PLAINTIFF
VERSUS
1. Mr. Arun Kumar N.
Trading as Arun Tags & Labels
No. 27/5, C Cross, 3rd Main Road
Byatarayanapura New Extension
Mysore Road, Bengaluru City
Karnataka-560026
Also at:
No. 24, New Timber Yard Layout
Near Rosewood Hotel, Mysore Road
Bengaluru City
Karnataka-560026
2. Mr. Naveen N.
Trading as Arun Tags & Labels
No. 27/5, C Cross, 3rd Main Road
Byatarayanapura New Extension
Mysore Road, Bengaluru City
Karnataka-560026
CS (COMM.)/357/2020 Page 1 of 34
-2-
Also at:
No. 24, New Timber Yard Layout,
Near Rosewood Hotel, Mysore Road,
Bengaluru City,
Karnataka-560026
...DEFENDANTS
Date of Institution (e-filing) : 04-08-2020
Date of reserving Judgment : 25-04-2025
Date of pronouncing Judgment : 25-04-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134, 135, 29 & 27 of Trademarks Act, 1999 and Sec. 55 of Copyright Act, 1957 for permanent injunction restraining infringement of trade marks & copyright, passing off, damages, delivery up etc., filed by plaintiff against the defendants.
BRIEF FACTS OF THE CASE:
2. The case of the plaintiff, as set out in the plaint, in brief is as under:-
2.1 The plaintiff is a company duly registered under the laws of Germany and is created for better prosecution, enforcement and management of trademark rights of M/s HUGO BOSS AG, a company organized and incorporated under the laws of Germany. The plaintiff company got instituted the present suit through constituted attorney namely Mrs. Meena Bansal, who is duly authorized by the plaintiff company to institute, CS (COMM.)/357/2020 Page 2 of 34 -3- sign, verify and pursue the present suit.
2.2 It is claimed that the plaintiff company is engaged in the business of clothings, apparels, accessories, perfumes, fragrances, lifestyle goods, watches, shoes, belts, glasses, bags and various other goods [hereinafter referred to as 'the said goods and business'] under the well known trademarks/labels HUGO BOSS, HUGO, BOSS and/or its variants [hereinafter referred to as 'the said trade marks/labels'].
2.3 Detailed history regarding the said trade mark/ label have been given in Para no.4 of the plaint mentioning therein, inter alia, that in 1923, Hugo Boss founded his own clothing company in Metzingen, a small town south of Stuttgart, where it is still based and in 1924, he started a factory along with two partners. The company produced shirts, jackets, work clothing, sportswear and raincoats. By 1960, the company was producing readymade suits. In 1970, the first Boss branded suits were produced, with the brand becoming a registered trademark in 1977.
In 1984, the first Boss branded fragrance appeared. In 1989, Boss launched its first licensed sunglasses. It is also mentioned that after the Marzotto textile group acquired 77.5% stake for $165,000,000 in 1991, the Hugo and Baldessarini brands were introduced in 1993. In CS (COMM.)/357/2020 Page 3 of 34 -4- 1995, the company launched its footwear range, the first in a now fully developed leather products range across all sub-brands. A partnership with Solomon R. Guggenheim Foundation was launched in 1995, resulting in Hugo Boss Prize, an annual $100,000 stipend in modern arts presented since 1996.
In 2005, Marzotto spun off its fashion brands into the Valentino Fashion Group, which was then sold to Permira Private Equity Group. In March 2015, Permira announced plans to sell the remaining shareholding of 12%. Since the exit by Permira, 91% of the shares floated on the Börse Frankfurt, and the residual 2% was held by the company.7% of the shares are owned by Marzotto family. Hugo Boss has at least 6,102 points of sale in 124 countries. Hugo Boss AG directly owns over 364 shops, 537 mono brand shops, and over 1,000 franchise-owned shops. In 2009, BOSS Hugo Boss was by far the largest segment, consisting of 68% of all sales. The remainder of sales were made up by BOSS Orange at 17%, BOSS Selection at 3%, BOSS Green at 3% and HUGO at 9%.
In 2010, the company had sales of
$2,345,850,000 and a net profit of
$262,183,000, with royalties of 42% of total net profit. In June 2013, Jason Wu was named artistic director of Boss Women wear. In 2017, CS (COMM.)/357/2020 Page 4 of 34 -5- the sales of Hugo Boss climbed by 7 percent during the final quarter of the year.
2.4 Thus, it is claimed that since the year 1923, the plaintiff has been honestly & bonafidely, continuously, commercially, openly and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof, using its said trade marks/ labels in relation to its said goods and business and is carrying on its said goods and business thereunder and has built up a worldwide and globally valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
2.5 The plaintiff has also claimed to be owner and proprietor of the said trademarks, which are stated to be registered, valid and subsisting as on date in favour of the plaintiff and details thereof have been given in Para no. 7 of the plaint.
2.6 It is stated that that the plaintiff's said goods and business under the said Trade Marks, as also the goodwill and reputation achieved thereunder, is global in character and extends into India as well. Ever since 1923 when the plaintiff launched its said goods and business under the said trade mark in Germany, the plaintiff has been expanding the use of its said trade mark in relation to its said goods & business to cover more and more countries across the globe. As of CS (COMM.)/357/2020 Page 5 of 34 -6- now, the plaintiff's said goods under its said trade marks are branded and sold in more than 100 countries of the world and across all continents and regions including in India, wherein in addition to strong presence, the plaintiff also enjoys its trans-border reputation amongst the users. The plaintiff's said goods are sold and traded by the plaintiff 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.
2.7 It is also stated that with the advent of e-
commerce, the internet and trade thereunder, the plaintiff adopted the said trademark HUGO BOSS, HUGO, BOSS as an essential and material part of its Email ID and Domain Name viz. www.hugoboss.com and has been using the said domain name in the course of trade and as proprietor thereof globally in relation to its said goods and business and has built up a valuable trade, goodwill and reputation thereunder. The plaintiff has been carrying on and promoting its said goods and business electronically and through E-commerce and over the internet through the said domain name and also through various other intermeddler web-sites, which are accessible in India. The term 'said trademark of CS (COMM.)/357/2020 Page 6 of 34 -7- the plaintiff' includes its domain name.
2.8 It is also stated that the plaintiff has regularly and continuously been promoting its said distinctive trademark and the goods and business thereunder through extensive advertisements, publicities, promotions and marketing research and the plaintiff has been spending enormous amounts of moneys, efforts, skills and time thereon. The plaintiff has been doing so through various means and modes including through the visual, print and electronic media, in leading newspapers, trade literature & magazines, word of mouth, over the internet, etc. and all of which have tremendous reach, availability and circulation world over including in India. The several renowned actors and models are the brand ambassadors of the plaintiff.
2.9 It is further the case of the plaintiff that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade marks/ labels have acquired enviable reputation and goodwill not only in India but across the globe. It is stated that in the year 2019, the plaintiff had sales of over 2884 million Euros and depicted screenshot, as taken from the plaintiff's website, in Para no.10 of the plaint showing group sales worth Euros 2888 CS (COMM.)/357/2020 Page 7 of 34 -8- Million and thus, it is stated that the plaintiff company has a huge turnover against sale of its products worldwide.
2.10 It is also stated that the plaintiff's said goods and business are known, recognized, demanded, sold and traded world over with reference to its said trade marks/labels. The members of the trade, industry, the consumers and general public at large world over and in India are well aware of the plaintiff, the plaintiff's said trade mark/label and the plaintiff's said goods and business thereunder. The plaintiff's said trademark is a well known Trade Mark within the meaning of Section 2 (1) (zg) of the Act.
2.11 Hence, it is claimed that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademarks/label in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
2.12 It is alleged that the defendants are proprietors of the firm under the name and style of ' Arun Tags and Labels' and are engaged in the business of manufacturing, marketing, soliciting, selling, CS (COMM.)/357/2020 Page 8 of 34 -9- displaying and trading of tags including hang tags, neck tags, printed tags, etc. labels, cut-outs, boards, accessories, machineries and allied and cognate items to be used on jeans, readymade garments, clothings, sports related goods, sports related clothings, and other allied/related products [hereinafter referred to as "the said impugned goods & business"].
2.13 It is further averred that in the month of February, 2020, upon receiving credible information that the defendants are engaged in the said impugned goods and business under the plaintiff's said trademark/label in the City of Bangalore, Karnataka and thus, on 6 th March 2020, a Criminal Complaint under Section 63 of the Copyright Act, 1957 was filed against the defendants by the representatives of the plaintiff and subsequently an FIR under no.0057/2020 dated 06.03.2020 was lodged at the Byatarayanapura Police Station, Bangalore, Karnataka. Thereafter, a search and seizure action was conducted by the police on same day at the premises of the defendants and seized the impugned counterfeit tags and labels under the Trade Mark/Label 'HUGO BOSS, HUGO, BOSS [hereinafter referred to as 'the said impugned trade marks/ labels'] in huge quantity from the premises of the defendants. A total of CS (COMM.)/357/2020 Page 9 of 34 -10- 1,200 pieces of impugned goods were seized from the premises of the defendants. It is stated that during the search and seizure action, huge quantities of tags, labels and buttons belonging to different brands such as Levis, WRANGLER, LEE, LACOSTE, RALPH LAUREN, VAN HEUSEN, ALLEN SOLLY, LOUIS PHILIPPE etc. were also recovered from the premises of the defendants, which clearly manifests the extent of violative and infringing activities carried on by the defendants.
2.14 It is further stated that recently as in second week of March 2020, after the conduct of criminal raid and lodging of FIR [0057/2020 dated 06/03/2020], the plaintiff has been informed through the sources of markets and the trade, that the representatives/concerned persons of the defendants have again started manufacturing, marketing & soliciting the impugned goods under the impugned Trade Mark/Label in markets of New Delhi viz. Connaught Place, Sarojini Nagar, Naraina, Gole Market, South Extension and adjoining areas. Being aggrieved thereby, the plaintiff caused an inquiry in the market, which revealed that the defendants had not only started manufacturing, marketing, trading, networking and soliciting, but also procured orders from some dealers in New Delhi CS (COMM.)/357/2020 Page 10 of 34 -11- for supplying counterfeit goods under the impugned Trade Mark/Label. The plaintiff also learnt that there has been meticulous planning by the defendants and other members of the syndicate to sell the counterfeit goods in the markets of New Delhi under the impugned trade marks/labels in a clandestine and surreptitious manner.
2.15 Thus, it is alleged that the defendants have dishonestly and malafidely adopted impugned trademarks/labels 'HUGO BOSS, HUGO, BOSS, which are visually and structurally identical and/or deceptively and confusingly similar to the registered trademarks/ labels of the plaintiff 'HUGO BOSS, HUGO, BOSS, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendants are not only damaging the reputation and goodwill of the plaintiff company by passing off their substandard products as that of the plaintiff company, but are also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
CS (COMM.)/357/2020 Page 11 of 34 -12-2.16 On these grounds, the plaintiff has filed the present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendants and all others acting for and on their behalf from using the impugned trade marks/labels 'HUGO BOSS, HUGO, BOSS or any other word mark/ trade marks/ label, which may be identical with and/ or deceptively similar to the plaintiff's said trade marks/ labels 'HUGO BOSS, HUGO, BOSS in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
3. It may be noted that present suit was filed during pandemic of Covid-19 and in view of directions of Hon'ble Delhi High Court and the then Ld. Principal District & Sessions Judge, PHC, New Delhi issued from time to time, the matter got adjourned en bloc and was taken up for hearing through video conferencing/ virtual mode only, until physical/hybrid hearing was not permitted.
4. In terms of relevant orders passed by Ld. Predecessor of this Court, summons of the suit and notice of accompanying application(s) were issued to defendants. As per various proceedings including proceedings dated 16-01-2021, as available on record, the defendant nos. 1 and 2 were served on 03-09-2020 and 21-08-2020 respectively and since CS (COMM.)/357/2020 Page 12 of 34 -13- written statement had not been filed till 16-01-2021, their defence was struck off.
5. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Mrs. Meena Bansal as PW1. She led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and relied on the following documents:-
Sr. no Document/Particulars Exhibit(s)
1. Copy of Resolution-cum-authority Ex.PW1/1 letter in favour of Mrs. Meena Bansal
2. True representation of the plaintiff's Ex.PW1/2 to Ex.PW1/3 trade mark/ label
3. Online Status report of the Ex.PW1/7 plaintiff's registered trade mark HUGO BOSS under No. 493928 in class 25
4. Online Status report regarding Ex.PW1/8 history / PR details of the plaintiff's registered trade mark HUGO BOSS under No. 493928 in class 25 showing renewal of the same for the next 10 years
5. Documents regarding journal copy Ex.PW1/9 from Indian Trade Mark Journal No. 1128 dated 01.06.1996 of the plaintiff's registered trade mark CS (COMM.)/357/2020 Page 13 of 34 -14- Sr. no Document/Particulars Exhibit(s) HUGO BOSS under No. 493928 in class 25
6. Online Status report of the Ex.PW1/10 plaintiff's registered trade mark HUGO under No.597316 in class 25
7. Online Status report regarding Ex.PW1/11 history / PR details of the plaintiff's registered trade mark HUGO under No.597316 in class 25 showing renewal of the same for the next 10 years
8. Registration Certificate of the Ex.PW1/12 plaintiff's trade mark HUGO under No.597316 in class 25
9. Documents regarding journal copy Ex.PW1/13 from Indian Trade Mark Journal No. 1222-I, Dated 08.05.2000 of the plaintiff's registered trade mark HUGO under No.597316 in class 25
10. Online Status report of the Ex.PW1/14 plaintiff's registered trade mark BOSS under No.493926 in class 18
11. Online Status report regarding Ex.PW1/15 history / PR details of the plaintiff's registered trade mark BOSS under No.493926 in class 18 showing CS (COMM.)/357/2020 Page 14 of 34 -15- Sr. no Document/Particulars Exhibit(s) renewal of the same for the next 10 years
12. Registration Certificate of the Ex.PW1/16 plaintiff's registered trade mark BOSS under No.493926 in class 18
13. Documents regarding journal copy Ex.PW1/17 from Indian Trade Mark Journal No. 1134-0, Dated 01.09.1996 of the plaintiff's registered trade mark BOSS under No.493926 in class 18
14. Online Status report of the Ex.PW1/18 plaintiff's registered trade mark HUGO BOSS under No.1708794 in class 16.
15. Online Status report regarding Ex.PW1/19 history / PR details of the plaintiff's registered trade mark HUGO BOSS under No.1708794 in class 16 showing renewal of the same for the next 10 years.
16. Registration Certificate of the Ex.PW1/20 plaintiff's registered trade mark HUGO BOSS under No.1708794 in class 16
17. Documents regarding journal copy Ex.PW1/21 from Indian Trade Mark Journal No. CS (COMM.)/357/2020 Page 15 of 34 -16- Sr. no Document/Particulars Exhibit(s) 1903, Dated 27.05.2019 of the plaintiff's registered trade mark HUGO BOSS under No.1708794 in class 16
18. Copy of Receipt Nos. 493928, Ex.PW1/22 597316, 493926 dated 20.05.2020 for filing request in Trade Mark Registry for Issuance of Legal Proceedings Certificate of plaintiff's registered trade mark
19. Copy of Receipt No. 493928 dated Ex.PW1/23 30.07.2020 for filing request in Trade Mark Registry for issuance of Legal Proceedings Certificate of plaintiff's registered trade marks
20. Copy of advertisement news articles Ex.PW1/24 and related to plaintiff's trade mark/ Ex.Pw1/25 label
21. Screenshots of the plaintiff's Ex.PW1/26 and website showing presence of Ex.PW1/27 plaintiff goods under the trade mark/ label
22. Screenshot from website of Amazon Ex.PW1/28 showing presence of plaintiff's goods thereon
23. Document related to plaintiff's Ex.PW1/29 CS (COMM.)/357/2020 Page 16 of 34 -17- Sr. no Document/Particulars Exhibit(s) Annual Report of 2019
24. Copy of complaint to SHO, PS Ex.PW1/30 and Mark A Byatarayanapura, FIR NO.
057/2020 dated 06.03.2020 alongwith English Translated and copy of search and seizure memo (MAHAZAR) with English translation thereof
25. True Representation of defendants Ex.PW1/32, Ex.PW1/33, impugned trade mark/ label and tags Ex.PW1/34, seized from the premises of Ex.PW1/35 and defendants Ex.PW1/36
26. Analysis-cum-authentication report Ex.PW1/37 giving reasons that the seized goods from the defendant's premises were counterfeit
27. Screenshot from third party website Ex.PW1/38 i.e. Just Dial, showing solicitation by the defendant thereon
28. Screenshot from third party website Ex.PW1/39 i.e. India Mart, showing solicitation by the defendant thereon
29. Copy of visiting card of the Ex.PW1/40 defendants
30. Documents showing details/ Ex.PW1/41 solicitation by the defendants on CS (COMM.)/357/2020 Page 17 of 34 -18- Sr. no Document/Particulars Exhibit(s) third party website i.e. www.indiamart.com.
31. Document i.e. screentshots of the Ex.PW1/42 plaintiff's website i.e. www.hugoboss.com, showing the availability of the plaintiff's goods within the jurisdiction of this Court
32. Affidavit under Order XI Rule 6(3) Ex.PW1/43 CPC / Certificate under S. 65 B of Indian Evidence Act, 1872
33. Copies of various Legal Proceeding Ex.PW1/44, Ex.PW1/44, Certificates of the plaintiff's Ex.PW1/45, registered trade marks/ labels Ex.PW1/46, and HUGO BOSS bearing Registration Ex.PW1/47 Nos. 493928 in class 25, 597316 in class 25, 597316 in class 25, 493926 in class 25 and 493928 in class 25
6. It may be noted that there are no documents described as Ex.PW1/4 to Ex.PW1/6 in the affidavit in evidence Ex.PW1/A. Further, for want of original of documents referred to as Ex.PW1/31 in the affidavit in evidence Ex.PW1/A, the said document was marked as Mark A.
7. On statement of AR of plaintiff, the ex parte evidence of the plaintiff was closed on 16-11-2021.
8. Pertinently, the defendants subsequently put their appearance through counsel namely Sh. Kapil CS (COMM.)/357/2020 Page 18 of 34 -19- Gupta,Advocate and got filed an application under Order IX Rule 7 read with S. 151 CPC seeking setting aside of said order. It may also be noted that on joint request made on behalf of both the parties, they were also referred to Delhi Mediation Centre, PHC, New Delhi twice for exploring the possibility of settlement. However, as per proceedings dated 19-12-2023 of Delhi Mediation Centre, reportedly, the matter could not be settled between the parties and hence, returned back to this Court.
9. Pertinently, an application u/s 151 CPC dated 13-01-2024 seeking his discharge was moved on behalf of counsel namely Sh. Kapil Gupta, Advocate on the grounds, inter alia, that he was engaged by the defendants in this matter and had moved an application under Order IX Rule 7 CPC setting aside ex parte order passed against them, but of late, both the defendants were neither issuing any instructions nor were contacting him, due to which, he was not in a position to represent them in the matter and he had already served the defendants with the notice dated 26-12-2023, thereby informing them that he would be seeking his discharge from the Court in the present matter and for making requisite arrangements by them. The said application was allowed and disposed off, vide order dated 22-02-2024 passed by this Court and Court Notices were directed to be issued to the defendants through ordinary manner as well as through e-mode i.e. at their WhatsApp numbers and e-mail ids available on record, for next date of hearing of 02-04-2024. Apparently, on being served with the said Court Notices, both the defendants put their CS (COMM.)/357/2020 Page 19 of 34 -20- appearance through Sh. Nirbhay Jha, Advocate, who had appeared through video conferencing on 02-04-2024 and filed fresh vakalatnama on record at later stage.
10. Again, at joint request made on behalf of both the sides, the matter was referred to Delhi Mediation Centre, PHC, New Delhi for settlement and again it was received back as unsettled, as per proceedings dated 12-11-2024 of Delhi Mediation Centre, as available on record. Further, the aforementioned application under Order IX Rule 7 read with S. 151 CPC moved by defendants, was dismissed for non prosecution and for non appearance in view of the fact that none had appeared on behalf of the defendants, despite the fact that the matter had already been taken up thrice since morning, vide order dated 27-02-2025, passed by this Court.
11. Further, it may also be worthy to note that application under Order XXXIX Rules 1 & 2 CPC read with S. 151 CPC dated 30-07-2020 was disposed off as not pressed for, vide order dated 27-02-2025, passed by this Court.
12. I have already heard Ld. counsel of the plaintiff. I have also gone through the material available on record, including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
13. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up prayers/reliefs with respect to restraining the defendants from disposing off or dealing with his assets, delivery up and rendition of accounts as prayed in prayer Clause Nos.
CS (COMM.)/357/2020 Page 20 of 34 -21-44(b), 44(c) and 44(e) of the plaint. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 08-04-2025.
ARGUMENTS OF THE PLAINTIFF
14. In support of his case, Ld. Counsel of plaintiff has advanced the following arguments:-
14.1 The entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiff is entitled to the decree, as prayed for, and in that regard, has relied upon the documents duly proved by PW1 as Ex.PW1/1 to Ex.PW1/3, Ex.PW1/7 to Ex.PW1/47 and Mark A. 14.2 The trademarks/labels 'HUGO BOSS, HUGO, and BOSS are well known trademarks of the plaintiffs and are registered in India under various classes under the Trade Marks Act, 1999, which are valid and subsisting in favour of the plaintiff till date.
14.3 The plaintiff spends huge amount of money in advertising and promotion of its products and said marks enjoy a huge goodwill and reputation in business community and public in general in India.
14.4 While conducting search and seizure in FIR No.057/2020 dated 06.03.2020 registered at PS CS (COMM.)/357/2020 Page 21 of 34 -22- Byatarayanapura, the police had found infringed goods in large quantities from the premises of the defendants, which clearly establishes that the defendants were involved in the illegal activities, for which he has relied upon copy of complaint to SHO, PS Byatarayanapura, copy of FIR No. 057/2020 dated 06.03.2020 along with English Translated and copy of search and seizure memo (MAHAZAR) with English translation thereof [Ex.PW1/30 and Mark A].
14.5 It is also contended that the malice and misconduct on part of the Defendants is evident from the fact that despite the existence of the FIR already lodged against them and consequent criminal proceedings pending before Magistrate Court, Bangalore, the Defendants are continuing their infringing activities on a large scale.
14.6 The defendants have malafidely and dishonestly adopted and are using the impugned trade mark/ label 'HUGO BOSS, HUGO, BOSS, which is identical and /or is deceptively similar to trade mark/ word mark/ label/ 'HUGO BOSS, HUGO, BOSS in all material particulars such as layout design, colour scheme, get up, arrangement of artistic features, lettering style, etc. and thus, same amounts to not only committing fraud upon the plaintiff company but also upon the unwary general public, due to which, the plaintiff suffers huge CS (COMM.)/357/2020 Page 22 of 34 -23- monetary loss and its goodwill and reputation are also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendants, thereby restraining the defendants and all others acting for and on their behalf from using said impugned trade-mark/ word mark/ label.
ANALYSIS & CONCLUSION:
15. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION:
16. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendants are manufacturing, marketing, soliciting & networking and has intention to sell their impugned goods and business under the impugned Trade Mark/Label in the markets of New Delhi viz. Connaught Place, Sarojini Nagar, Naraina, South Extension and adjoining areas. It is further submitted that the defendants are also soliciting the impugned goods manufactured by them through third party websites on the internet such as www.indiamart.com, which is stated to be interactive in nature and can be assessed by general consumers in New Delhi. Thus, it is contended that the dynamic effect of defendants' activities is being felt in New Delhi and there exists an undeniable nexus between the cause of action in the present suit and the territory of New Delhi and therefore, it is submitted CS (COMM.)/357/2020 Page 23 of 34 -24- that whole or part of cause of action for filing the suit has arisen within the territorial jurisdiction of this Court within the meaning of S. 20 CPC.
17. Apart from above, it is also submitted that the goods of the plaintiff are also available at Delhi Duty Free, Indira Gandhi Airport (T-3), which falls within the territorial jurisdiction of this Court. Further, it is submitted that the plaintiff has extensive goodwill and reputation under the said trademark on account of voluminous sales and advertisement within the jurisdiction of this Court. It is further contended that the goods of the plaintiff are also available, sold, purchased and delivered through its interactive website www.hugoboss.com as well as through other online marketplaces like Flipkart, Amazon, Snapdeal etc. which are not only interactive in nature, but, are also freely accessible and the goods/products bearing the said trademarks of the plaintiff, are available, sold, displayed, promoted, purchased and delivered within the territorial jurisdiction of this Court and thus, this Court further has territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trade Marks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
18. Further, Ld. Counsel of plaintiff has also relied upon judgment of Hon'ble Division Bench of our own High Court in the case titled as "RSPL Limited v. Mukesh Sharma & Anr" reported as 2016 (68) PTC 178 [Del] [DB] and judgment in the case of "V Guard Industries Ltd. v.
CS (COMM.)/357/2020 Page 24 of 34 -25-Sukan Raj Jain & Anr." reported as 2021 (87) PTC 333 [Del].
19. The PW1 has categorically deposed in her affidavit in evidence [Ex.PW1/A] on identical lines of the averments made in the plaint. The PW-1 has also duly proved documents depicting exclusive stores of the plaintiff being situated within the territorial jurisdiction of this Court and screenshots pertaining to presence of the goods and business of the plaintiff under the said trade marks on its own website i.e. www.hugoboss.com, which is stated to be an interactive website, as well as screenshots regarding presence of goods and services of the plaintiff on the e-commerce websites such as Amazon, as Ex.PW-1/26, Ex.PW-1/27, Ex.PW-1/28 and Ex.PW-1/42 respectively. Apart from same, PW-1 has also proved screenshots from third party websites i.e. www.indiamart.com, which is also stated to be interactive in nature, as Ex.PW1/39 and Ex.PW1/41, through which, the impugned goods bearing falsified trade marks/ labels can be sold, displayed, purchased and delivered to any place including the place within the territorial jurisdiction of this Court.
20. The testimony of PW1 remained unchallenged and uncontroverted as the defendants have neither filed written statement, nor have chosen to cross-examine PW1.
21. Therefore, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr." reported as 2009 SCC OnLine Del 3780; "World Wrestling Entertainment, CS (COMM.)/357/2020 Page 25 of 34 -26- Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment of the impugned goods under the impugned trademarks as well as the goods under the registered trade marks of the plaintiff within the territorial jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.
22. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted, the Court is of the considered opinion that part of cause of action has arisen within territorial jurisdiction of this Court and therefore, this Court has got territorial jurisdiction to try and entertain the suit.
PERMANENT INJUNCTION:
23. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/ SC/ 0066/ 2022, has laid down law with respect to infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when CS (COMM.)/357/2020 Page 26 of 34 -27- the trade mark of the plaintiff is similar to the registered trade mark of the Defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trade mark of the Defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the Defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trade mark, whereas in the case of a passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the Defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trade mark. It has further been held that though the get up of the Defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that Defendant is improperly using the CS (COMM.)/357/2020 Page 27 of 34 -28- Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the Defendant's trade mark is identical with the Plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
24. Further, our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) has laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequitur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).CS (COMM.)/357/2020 Page 28 of 34 -29-
25. In view of above law, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
26. In the case titled as "Amrish Agarwal Vs M/s Venus Home Appliances Pvt. Ltd" in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was directed, inter alia, that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:
(i) Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side"CS (COMM.)/357/2020 Page 29 of 34 -30-
27. In this case, the plaintiff has relied and filed trademark registration certificates and / or Legal Proceedings Certificate and status report thereof, which are duly proved by PW-1 as Ex.PW1/7, Ex.PW1/8, Ex.PW1/10, Ex.PW1/11, Ex.PW1/12, Ex.PW1/14, Ex.PW1/15, Ex.PW1/16, Ex.PW1/18, Ex.PW1/19, Ex.PW1/20 and Ex.PW1/43 to Ex.PW1/47. As per these documents, it is duly shown that trade marks / word mark/ device mark HUGO BOSS, HUGO, and BOSS are registered in favour of the plaintiff and/or its predecessor since long. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of said trade marks/ word mark/ device mark stands renewed and are valid till date.
28. As already noted above, despite being served with the summons of the suit, the defendants failed to file their written statement and consequently, their defence was struck off. Further, none of the defendants turned up to cross-examine PW1. Thus, the entire case of the plaintiff has gone un-rebutted and unchallenged from the side of the defendants, as it is already noted above that they chose not to contest the suit. Moreover, the defendants have not filed their affidavits of admission/ denial concerning documents filed by the plaintiff along with the plaint. In the absence of affidavits of admission / denial, the documents filed by the plaintiff are deemed to have been admitted by the defendants by virtue of relevant provisions of Commercial Courts Act, 2015. Therefore in the totality of the facts and circumstances CS (COMM.)/357/2020 Page 30 of 34 -31- of the case, the case of the plaintiff stood proved against defendants on the basis of preponderance of probability. It is duly established on record that the trademarks/ label "HUGO BOSS", "HUGO" and "BOSS" are duly registered in favour of the plaintiff and/or its predecessors and also that same are valid and subsisting as on date in favour of the plaintiff.
29. Further, the police of PS Byatarayanapura had also seized infringed goods in large quantity from the premises of the defendants after registration of FIR No.057/2020 dated 06.03.2020.
30. The impugned trade marks/ labels "HUGO BOSS", "HUGO" and "BOSS" are identical and/or deceptively similar to the plaintiff's registered trade marks/ labels "HUGO BOSS", "HUGO" and "BOSS".
31. Therefore, in the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendants were manufacturing, stocking, distributing and selling impugned goods bearing falsified trademarks/ trade names/ labels of plaintiff company and therefore, trademarks of plaintiff company are required to be protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction, whereby the defendants are required to be restrained from using trade marks / labels HUGO BOSS, BOSS and HUGO or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade marks / label HUGO BOSS, BOSS and HUGO in CS (COMM.)/357/2020 Page 31 of 34 -32- relation to similar goods, thereby infringing plaintiff's registered trademarks and passing off their products as that of the plaintiff.
DAMAGES
32. Ld. Counsel of plaintiff submitted that punitive damages may be awarded in favour of the plaintiff and against the defendants. In support of his submissions, Ld. Counsel of the plaintiff has relied upon the judgment of Hon'ble Delhi High Court in case of 'LT Foods Limited v. Saraswati Trading Company' decided on 11-11-2022 having neutral citation: 2022/DHC/004806.
33. As per plaint, the plaintiff has claimed damages to the tune of Rs.25,00,000/-.However, no cogent or positive evidence whatsoever has been led by the plaintiff in this regard.
34. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network, 2017 SCC Online Delhi 10943, wherein the defendants were ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
35. However, as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited (supra), there is a need to see as to whether the case of plaintiff herein falls for exemplary damages.
CS (COMM.)/357/2020 Page 32 of 34 -33-36. Now adverting back to the case in hand. In this case, the defendants have not filed their written statement and chose not to contest the suit. Accordingly, keeping in view the overall facts and circumstances of the case and the relevant averments appearing in Para Nos.22 and 31 of the plaint to the effect, recently in the second week of July 2020 after the conduct of criminal raid and lodging of FIR No. 0057/2020 dated 06.03.2020, the plaintiff was informed through the sources of markets and trade, that the defendant had again started impugned activities in the market of New Delhi, whereas, the present suit has been filed in the first week of August,2020, the Court is of the opinion that the plaintiff is entitled to exemplary damages quantified as Rs.1,00,000/- (Rupees One Lakh only) each, is to be recovered from defendants. It is so ordered accordingly.
RELIEF:
37. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendants and the following reliefs are granted:-
37.1 Suit is decreed in favour of plaintiff and against the defendants qua permanent injunction thereby restraining the defendants by themselves as also through their individual proprietors, partners, agents, representative, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from using, manufacturing, CS (COMM.)/357/2020 Page 33 of 34 -34- marketing, using, selling, soliciting, exporting, displaying, advertising or using the impugned trademark / label "HUGO BOSS", "HUGO" and "BOSS" or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade marks / labels "HUGO BOSS", "HUGO" and "BOSS" in relation to similar goods, thereby infringing plaintiff's registered trademarks and passing off their products as that of the plaintiff.
37.2 Plaintiff is entitled to recover Rs.1,00,000/-
(Rupees One Lakh only) each from the defendants towards damages; and 37.3 Cost of the suit is also awarded in favour of the plaintiff.
38. Decree sheet be prepared accordingly.
39. File be consigned to Record Room, after due compliance.
Digitally signedAnnounced in the open court VIDYA by VIDYA PRAKASH on 25th Day of April, 2025. PRAKASH Date: 2025.04.25 13:15:25 +0530 (VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM.)/357/2020 Page 34 of 34