Delhi High Court - Orders
M/S Reflect Sculpt Private Ltd. & Anr vs Abdus Salam Khan on 3 April, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~41
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 278/2024
M/S REFLECT SCULPT PRIVATE LTD. & ANR....Plaintiffs
Through: Mr. J. Sai Deepak, Advocate
with Mr. Siddharth Bambha, Mr.
Luv Virmani, Ms. Sucharu Garg
and Mr. Abhirath Parashar,
Advocates.
versus
ABDUS SALAM KHAN .....Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 03.04.2024 I.A. 7458/2024 (application under Section 151 of code of Civil Procedure, 1908 on behalf of the Plaintiffs seeking exemption from advance service upon Defendants)
1. Plaintiffs seek urgent interim relief against counterfeit products and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the Defendants is granted.
2. The application is allowed and disposed of.
I.A. 7456/2024 (application on behalf of the Plaintiffs under Section 12A of the Commercial Courts Act, 2015 read with Section 151 of the Code of Civil Procedure, 1908)
3. As the present suit contemplates urgent interim relief, in light of CS(COMM) 278/2024 Page 1 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:47 the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
4. Disposed of.
I.A. 7457/2024 (application under Section 151 of the Code of Civil Procedure, 1908 seeking exemptions from filing English translation of the documents in vernacular languages and permission to file copies/dim documents as it is and without prescribed margin)
5. Exemption is granted, subject to all just exceptions.
6. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
7. Accordingly, the application stands disposed of.
I.A. 7459/2024 (application on behalf of the Plaintiffs under Section 151 of the Code of Civil procedure, 1908 seeking exemption from filing the documents in separate volumes)
8. Exemption is granted from filing documents in separate volumes.
9. Disposed of.
I.A. 7460/2024 (application under Section 149 read with Section 151 of the Code of Civil Procedure, 1908 seeking permission for filing the court fee within two weeks from filing the present suit)
10. For the grounds and reasons stated therein, the application is disposed of with the direction that time period for filing court fees is extended by a period of two weeks from today.
CS(COMM) 278/2024
11. Let the plaint be registered as a suit.
12023 SCC OnLine SC 1382.
CS(COMM) 278/2024 Page 2 of 18This is a digitally signed order.
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12. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
13. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 4th July, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court for framing of issues thereafter.
I.A. 7454/2024 (under Order XXXIX Rules 1 and 2 of CPC)
16. Mr. J. Sai Deepak, counsel for Plaintiffs, has presented the following facts and contentions:
16.1. Plaintiff No. 2, Mr. Gaurav Gupta, the director and promoter of Plaintiff No. 1, Reflect Sculpt Private Ltd.,is one of the top international fashion designers and is well-renowned in the fashion industry for his signature fashion styles. The signature styles created by the Plaintiff No. 2 are known for their sculpture-like garments, embroideries in three dimensions, volume play and extempore draping.
Plaintiff No. 2 started their business almost 18 years ago after obtaining a design qualification from a prestigious art institute in Saint Martins' CS(COMM) 278/2024 Page 3 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:48 College of Art and Design, London.
16.2. Plaintiff No. 2 claims copyright in the artistic works in the form of sketches, on the basis of which the Plaintiffs' garments are designed. The artistic work that is initially sketched on paper is thereafter transformed into finished garments by skilled craftsmen, and not produced through an industrial process. The concept technique of 'sculpted boning' in the garments is a unique and distinct feature of Plaintiffs' work. The fabric of the garments has a structure-like look and feel, and is moulded and handcrafted into 3-dimensional artistic works. Accordingly, the artistic works in the drawings and sketches created by Plaintiff No. 2 as well as the hand-crafted garments themselves as per Section 2(c) of the Copyright Act, 1957 ["Copyright Act"], is claimed by the Plaintiffs2.
16.3. Plaintiffs also have design registrations in respect of some of the hand-crafted garmentswhich are the subject matter of the present suit, and have protections in respect thereof under the Designs Act, 2000 ["Designs Act"]. Details of the Plaintiffs' design registrations are provided in Paragraphs No. 10 and 11 of the Plaint.
16.4. Plaintiff No. 2 also claimsexclusive publicity rights in hisname 'GAURAV GUPTA', owing to the reputationenjoyed by him.Furthermore, Plaintiffs have also applied for registration of his mark 'GAURAV GUPTA' under the Trade Marks Act, 1999 ["TM Act"], registration details whereof are set out hereunder:
Trademark Registration Date Classes User Details No. GAURAV 4185205 23.05.2019 6, 14, 18, Proposed to 2 Since the creative works are done either by Plaintiff No. 2 for and on behalf of Plaintiff No. 1, or on the basis of his concept, guidance and instructions by employees of Plaintiff No. 1, thus, Plaintiff No. 1 is the first owner of copyright in all the sketches of the garments as well as the garments themselves under Section 17(c) of the Copyright Act.CS(COMM) 278/2024 Page 4 of 18
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:50 GUPTA 19 & 20 be used GAURAV 2425635 08.11.2012 25, 35 & 01.07.2006 GUPTA 41 16.5. Plaintiffs have incurred significant expenditure in advertising, marketing and promoting their products under the trademark/ trade name 'GAURAV GUPTA'. Consequently, Plaintiff No. 2's designs have acquired considerable reputation, having been recognized by prestigious platforms and received several awards, details whereof have been included in Paragraph No. 4 of the plaint. This goodwill and reputation arefurther demonstrated by the substantial revenue earned by Plaintiff No. 1 company. Details of such expenditures and sales figures have been delineated at Paragraphs No. 21 and 22 of the Plaint.
Moreover, Plaintiff No. 2's fame as a designer of garments for men and women is claimed on the basis of his customers, who include Indian as well as international celebrities such as Beyonce, Cardi B, Megan Thee Stallion, Aishwarya Rai Bachchan, Deepika Padukone, Ranveer Singh, Karan Johar, etc. 16.6. In the present case, Plaintiffs are aggrieved by the infringing activities of the Defendant, who is engaged in the business of creating, manufacturing, advertising, and selling counterfeit garments which are replicas/ substantial imitations of the Plaintiffs' unique and artistic garments, at low/ cheap prices ["Impugned Products"]. As per Plaintiffs' information, the Defendant creates and sells these Impugned Products from a store located at Sector 7, Rohini under the name and style of 'Designer Salam Studio'. To demonstrate the manner in which the Defendant has attempted to slavishly imitate/ reproduce the Plaintiffs' original artistic works, including drawings, sketches, and CS(COMM) 278/2024 Page 5 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:50 dresses, which are protected under the Copyright Act and Designs Act, reliance is placed on the following comparison chart:
S. Plaintiffs' original Plaintiffs' original garment Counterfeit Garments No. sketch/ drawing along with style code by the Defendant
1. GW - 581 GW- 581 CS(COMM) 278/2024 Page 6 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:51 CS(COMM) 278/2024 Page 7 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:51
2. GW - 635 GW - 635 CS(COMM) 278/2024 Page 8 of 18 This is a digitally signed order.
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3. GW - 494 GW - 494 CS(COMM) 278/2024 Page 9 of 18 This is a digitally signed order.
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4. SG - 218 SG - 218 CS(COMM) 278/2024 Page 10 of 18 This is a digitally signed order.
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5. OFT - 80 OFT - 80
6. LEH - 172 LEH - 172 CS(COMM) 278/2024 Page 11 of 18 This is a digitally signed order.
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7. GW - 971/ DRS 272 GW - 971/ DRS 272 16.7. Further, the Defendant extensively carries on his aforesaid business through the means of his YouTube channel under the name CS(COMM) 278/2024 Page 12 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:57 'Designer Salam' [@iqrasalamdesigner8113]3, which contains 242 videos and is followed by more than 4000 subscribers. He has uploaded several videos under titles such as 'how to make gaurav Gupta design', 'how to make gaurav Gupta gowns?', 'designer dress, how to grown Gaurav gupta design' '#drep sari #designer #gourav gupta #style'. The Defendant's uploaded videos contain the name and mark 'GAURAV GUPTA' in their title and description, resulting in anyone who searches for 'Gaurav Gupta' on YouTube to be directed to the Defendant's YouTube videos as well. An illustrative screenshot to this effect is reproduced below:
16.8. Additionally, the Defendant also shares his videos and regularly interacts with the public through social media handles including Instagram [@designer_salam_8920]4 and Facebook 3 Link: https://www.youtube.com/@iqrasalamdesigner8113 4 Link: https://www.instagram.com/designer_salam_8920/ CS(COMM) 278/2024 Page 13 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:58 [iqrasalam#designer]5, whereby he provides his contact number for the purpose of placing orders for the Impugned Products. 16.9. The Defendant is therefore clearly infringing on the Plaintiff's copyrights and registered designs, as well as riding upon the goodwill and reputation associated with the Plaintiff No. 2's mark 'GAURAV GUPTA', by manufacturing and marketing the Impugned Products. In such circumstances, the Plaintiffs have filed the instant suit seeking protection of their statutory rights.
17. The Court has considered the aforenoted submissions.From the side-by-side comparison set out above, it is evident that the garments being manufactured and sold by the Defendant are identical to the designs and garments of the Plaintiffs, with the exception of minor differences in the colours used. Thus, the Impugned Products are a blatant replication of the Plaintiffs' original artistic works, thus amounting to infringement of the Plaintiffs' copyrights in the said works and the Plaintiffs' DesignApplications No. 339188-004, No. 378237-012, and No. 378218-003. It is pertinent to note that since the Plaintiffs' products are hand-crafted and not produced through an industrial process, in addition to the fact that not more than fifty pieces of the said products have been sold,prima facie the bar of Section 15(2) of the Copyright Act would not be applicable.Further, the copyright in the Plaintiffs' drawings for their designs are also liable to be protected from infringement in view of the fact that Section 14(1)(c) read with Section 51 of the Copyright Act would preclude the reproduction or depiction of a two-dimensional work in three-dimensional form. Additionally, the Defendant's advertisements and marketing utilising the Plaintiffs' mark 'GAURAV GUPTA'has the effect of taking unfair advantage of the Plaintiffs' registered trademark, thereforeprima facie 5 Link: https://www.facebook.com/profile.php?id=100088571540648 CS(COMM) 278/2024 Page 14 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:58 amounting to infringement under Section 29(8) of the TM Act.
18. In view of the above, the Court finds that the Plaintiffs have made out a prima facie case in their favour for grant of an ex-parte ad- interim injunction, as in absence of such an injunction, irreparable harm would be caused to the Plaintiffs; balance of convenience also lies in favour of the Plaintiffs and against the Defendant.
19. Accordingly, till the next date of hearing, an ex-parte ad-interim injunction is granted in favour of the Plaintiffs in the following terms:
19.1. The Defendant, and/or anybody acting on his behalf, is restrained from manufacturing, reproducing, selling/ offering for sale, advertising or promoting any counterfeit garments which are a colourable imitation and/ or substantial reproduction of the Plaintiffs' drawings, garments and styles No. GW-581, GW-635, GW-494, SG-218, OFT-80, LEH- 172 and GW-971 (which have been depicted above), and/or in any manner imitating the designs, styles and artistic works of the Plaintiffs. 19.2. The Defendant is also restrained from using the Plaintiffs' trademark and Plaintiff No. 2's name 'GAURAV GUPTA' in any of his designs or as a reference for the purposes of promoting or advertising the Impugned Products so as to take unfair advantage of the Plaintiffs' reputation and goodwill in the said marks. 19.3. The Defendant is directed to take down all the content from his social media pages, including YouTube, Instagram, and Facebook, which utilise the Plaintiffs' mark 'GAURAV GUPTA', and/ or show the Plaintiffs' drawings, garments and styles No. GW-581, GW-635, GW-494, SG-218, OFT-80, LEH-172 and GW-971 (as depicted above).
20. Issue notice to the Defendant, upon filing of process fee, by all permissible modes, returnable on the next date of hearing.
21. Reply, if any, be filed within four weeks from date of service.CS(COMM) 278/2024 Page 15 of 18
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:23:59 Rejoinder thereto, if any, be filed within two weeks thereafter.
22. Compliance of Order XXXIX Rule 3 of Code of Civil Procedure, 1908, be done within two weeks from today.
23. List on 5th September, 2024.
I.A. 7455/2024 (seeking appointment of Local Commissioner)
24. Mr. J. Sai Deepak, counsel for Plaintiffs, submits that the Defendant is aware of the Plaintiffs' products and are dishonestly and deliberately engaging in the manufacture, marketing and sale of counterfeit products. Accordingly, Plaintiffs apprehend that upon service, the Defendant is likely to remove all evidence and deny their involvement in the infringing activities. Thus, in order to preserve evidence of infringement, Mr. Sai Deepak presses for the appointment of a Local Commissioner to visit the premises of the Defendant.
25. Accordingly, the following directions are issued:
25.1. Mr. Rakesh Kumar Sharma, Advocate [Contact No.+91 9868264127] is appointed as the Local Commissioner to visit the premises of the Defendant located at:
Designer Salam Studio Shop No. 168, D-14, Sector 7, Rohini, New Delhi - 110085.
25.2. The Local Commissioner, along with a representative of thePlaintiffand its counsel, shall be permitted to enter upon the premises of the Defendantsmentioned above and/or any other location/ premises that may beidentified during the course of commission, in order to conduct the search, seizure and inventory. 25.3. The Local Commissioner shall conduct a search at the said premises and seize any impugned products and/or garments, fully or semi-manufactured, and/or any other products which are identical CS(COMM) 278/2024 Page 16 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:24:00 and/or deceptively similar to, or are substantial imitations/ counterfeits of the unique and artistic garments of the Plaintiffs' bearing No. GW- 581, GW-635, GW-494, SG-218, OFT-80, LEH-172 and GW-971 (as depicted above), and/or bear the Plaintiffs' trademark 'GAURAV GUPTA'.
25.4. After seizing the infringing material in terms of the above directions, the same shall be inventoried, sealed and signed by the Local Commissioner in the presence of the parties, and released on superdari to the Defendant on their undertaking to produce the same as and when further directions are issued in this regard. 25.5. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the impugned products and/or marks.
25.6. Further, the Local Commissioner shall be permitted to undertake/arrange for photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions. 25.7. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this Order, the Station House Officer (SHO) of the local police station is directed to render all assistance and protection to the Local Commissioner, if and when sought.
25.8. The fee of the Local Commissioner, to be borne by the Plaintiffs, is fixed at INR1,10,000/-. The Plaintiffs shall also bear expenses for travel and lodging of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission.Fee of the Local Commissioner shall be paid in advance CS(COMM) 278/2024 Page 17 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:24:01 by the Plaintiffs.
25.9. The Local Commissioner shall file their report within a period of four weeks from the date on which the commission is executed.
26. The Order passed today shall not be uploaded for a period of two weeks from today.
27. With the above directions, the application stands disposed of.
28. Dasti under signatures of the Court Master.
SANJEEV NARULA, J APRIL 3, 2024 sapna CS(COMM) 278/2024 Page 18 of 18 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:24:02