Delhi District Court
Future Speciality Retail Ltd vs Mr. Naresh T. Mulani on 4 January, 2023
IN THE COURT OF MS. VINEETA GOYAL:
DISTRICT JUDGE (COMMERCIAL COURT)02
SOUTHEAST DISTRICT, SAKET COURT, NEW DELHI
CS NO. 121/2020
CNR No. : DLSE010107522019
In the matter of:
FUTURE SPECIALITY RETAIL LTD.
Knowledge house,
Shyam Nagar Off Jogeshwari (East),
Mumbai,
Maharashtra 400060
............plaintiff no. 1
RED DIAMOND HOOLDING S.ar.1.
SUITE 125,
4244 Avenue de la Gare,
L 1610, Luxembourg
............plaintiff no. 2
VERSUS
MR. NARESH T. MULANI
S/O SH. TOLARAM MULANI
Trading as Lakshmi Shoes
Shop No. : 693/4555, Near Ghanti Stand
Bapunagar, Char Rasta Road,
Ahmedabad - 24, Gujarat
.......defendant no.1
CS (COMM) No. 121/2020
Future Specialty Retail Ltd. Vs. Ashok Kumar
Page no. 1 of 33
MR. JAGDISH JAMANDAS KORJANI
S/O SH. JAMANDAS KORJANI
Trading as Simran Shoes
Shop no. 3, Opp. Char Rasta Road,
Ahemdabad - 24, Gujarat
.......defendant no. 2
MR. HANI ARVIND BHAI VERMA
S/O SH. ARVIND BHAI VERMA
Trading as Hani Shoes,
Shop no. 6, Divya Shakti Complex,
Near Master & Sons
Ahmedabad - 24, Gujarat
.......defendant no. 3
MR. MEGHARAJANI VINOD KUMAR
S/O SH. KHUBCHAND
Trading as Prabhu Shoes,
Opp. Master & sons,
Bapu Nagar, Ahemdabad - 24, Gujarat
.......defendant no. 4
MR. AMARCHAND MANGNANI
S/O SH. AMARCHAND MANGNANI
Trading as Akshar Shoes,
Opp. Master & Sons,
Bapu Nagar, Ahemdabad - 24, Gujarat
.......defendant no. 5
Suit presented On : 27.12.2019
Arguments Concluded On : 16.12.2022
CS (COMM) No. 121/2020
Future Specialty Retail Ltd. Vs. Ashok Kumar
Page no. 2 of 33
Judgment Pronounced On : 04.01.2023
Appearance : Sh. S.K. Bansal and Sh. Saurabh Arora, Ld. Counsel for
plaintiffs.
Defendants exparte.
JUDGMENT
1. The plaintiffs have filed a suit for permanent injunction for infringement of trademark, copyright, passing off, delivery, rendition of accounts, cost of proceedings, etc. against the defendant.
2. Facts as averred in the plaint are that plaintiff no.1 is a company incorporated under the Companies Act, of which Mrs. Meena Bansal is the constituted attorney/authorized signatory and is competent to institute and prosecute the present suit on behalf of the plaintiff no. The plaintiff no. 1 is authorized by the plaintiff no. 2 to file the present suit and to take action against the unauthorized use of the rights of the plaintiff no. 2. The plaintiffs are engaged in the business of manufacture, distribution and sale of a wide range of goods including shoes, footwear, clothings and other allied/related products (hereinafter referred to as "the said goods" and "the said business"). The plaintiffs have set out the extracts from the history in para 4 of the plaint as under :
CS (COMM) No. 121/2020Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 3 of 33 1908 The Lee Cooper journey began in 1908 as Europe's first, authentic denim brand. Born in the East End of London, Morris Cooper established a workwear production company called The Morris Cooper Factory. Cooper built up a strong reputation for producing durable and long lasting workwear and overalls. 1900s With the arrival of the First World War the company converted 1920s its production to military uniforms for the British troops. 1931 In 1931, the company name was changed to M. Cooper (Overalls). And, at the start of World War II, the company was asked to make battle uniforms and denim fatigues for the British armed forces.
1940s At the end of war, Lee Cooper started to reinvent jeans as fashion. Harold Cooper, Morris's son, took over the factory after his father's death and established the new direction of workwear to jeans production and the now famous brand name 'Lee Cooper' was born. Within two years, Lee Cooper was at the forefront of bringing denim jeans to the UK market. 1950s Rock 'n' roll was born! Lee Cooper was the first jeans brand' to recognise the link between music and fashion, and has tapped into the vibrant undercurrent of musical youth ever since.CS (COMM) No. 121/2020
Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 4 of 33 Throughout its history the brand has worked with legendary artists including the Rolling Stones, UB40, Serge Gainsbourg and Rod Stewart. During the 1950s the brand also appeared in print advertising for the first time.
1960s Lee Cooper made headlines by introducing the first jeans for women with a 'front zip', causing a stir and public outcry. The range for women increased in size and a wider selection of styles was put on the market. The vibrant 60s inspired a new range of Lee Cooper coloured jeans that took London by storm. 1970s The 70s saw Lee Cooper's innovative fashions assist in defining the decade. Hipster jeans were high trend and saw Lee Cooper work with Serge Gainsbourg and Jane Birkin who were constantly seen donning a pair of Lee Cooper jeans. In 1971 Lee Cooper turned heads across Europe with its mini skirt and the introduction of the first 32" bellbottom flair. 1980s In the 1980s, a sponsorship with The Rolling Stones took the Lee Cooper brand across the world, establishing Lee Cooper as the goto brand for rock stars and music fans. Legendary fashion photographer and artist Jean Paul Goude was brought on board to launch the first 'jogging jean with his innovative, yet unorthodox approach to the campaign. Lifestyle categories CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 5 of 33 include apparel, fragrance, footwear, head wear, eyewear, luggage and underwear.
1990s The long standing Lee Cooper logo was refreshed to the one that is recognized today. Lee Cooper also launched an exciting new collection called 3 by 1 the first five pocket slack jean to hit the market.
2000s Lee Cooper collaborated with Europe's 'IT' girl, French model and actress, Lou Doillon. The collaboration celebrated the brand's heritage with previous brand ambassadors and Doillon's parents, the legendary Serge Gainsbourg and Jane Birkin. During this time, Lee Cooper released a clothing range inspired by The Beatles.
2008 Lee Cooper celebrated its 100th year anniversary. With a rich history as the original British denim brand and a century worth of expertise, Lee Cooper celebrated by supplying denim jackets and suits for over 1,200 members of the British Olympic and paraOlympic team for the opening ceremony of the 2008 Beijing Olympics.
2017 Lee Cooper launches an artisan range The Cooper Collection featuring selvedge denim and premium fabrics on classic and reimagined silhouettes. In a nod to where it all began in 1908 CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 6 of 33 select styles remain manufactured in East London to reflect the craftmanship that has driven Lee Cooper since its inception.
2.1. It is further averred that in 1908, the plaintiffs adopted and started using the trademark LEE COOPER. The logo was refreshed in 1990s as The plaintiffs have been using the said trademark honestly & bonafidely, continuously, commercially, openly, exclusively and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof and carrying on their goods and business thereunder at least since 1908. The plaintiffs have built up a worldwide and globally valuable trade, goodwill and reputation thereunder and acquired valuable proprietary rights therein.
2.2. It is further averred that the plaintiff's goods and business as well as the goodwill and reputation achieved thereunder is global in character and extends into India as well. Ever since 1908 when the plaintiffs launched their goods and business under the said trademark/label, the plaintiffs have been expanding the use of their trademark/trade name in relation to their said goods & business to cover more and more countries across the globe. As of now the plaintiffs' CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 7 of 33 goods under its said trade mark are branded and sold in various countries of the world and across all regions including in India wherein in addition to strong presence the plaintiffs also enjoy their transborder reputations and users. The plaintiffs goods are sold and traded directly or through a wide network of its associates, affiliates, subsidiary companies, licensees and through a wide marketing network including through retail as also through internet and ecommerce.
2.3. It is further averred that plaintiffs have trademark registration in India under the Trade Marks Act, 1999 as mentioned in para 7 of the plaint as under : Mark Appli Class Status User Date of Valid Disclaimer (profile cation Claimed registrati upto Name) no. on 14717 99 Regist Propose 20.07.200 20.07 Priority is inclu ered d to be 6 .2026 allowed ding used 25 2.4. It is further averred that in addition to the above, the plaintiffs are also having various other trademark registrations. The art work CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 8 of 33 involved in the plaintiff's various stylized, formative/bearing and labels are original artistic works and plaintiffs hold copyright therein. The plaintiffs have got the said trademark registered in all the major countries of the world and across all continents and regions. The said registrations are legal, valid and subsisting on the Registers of the respective countries. Some of the applications for registration of the plaintiff's said trademark are pending. The said applications are likely to be allowed in accordance with the laws of the respective countries.
2.5. It is further averred that, the plaintiffs have already built up a globally valuable trade under their said trade mark and conducted handsome business thereunder running into Millions of Dollars worldwide. The plaintiffs have presence globally which includes India as a big market of the plaintiffs' goods and business under the said trademark. The plaintiffs have regularly and continuously been promoting their distinctive trade mark and the goods and business thereunder through extensive advertisements, publicities. promotions and marketing & marketing research and the plaintiffs have been spending enormous amounts of moneys, efforts, skills and time thereon. The plaintiffs have been doing so through various means and modes including through the visual, print and electronic media, in leading Newspaper, CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 9 of 33 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. In view of the aforesaid including the plaintiff's priority in adoption and use thereof, the plaintiff's said trade mark has acquired enviable and enduring goodwill, reputation and users, and which the plaintiffs own, in the international markets including in India, wherein in addition to the aforesaid the plaintiffs also enjoy transborder reputations and users as extending into India.
2.6. It is further averred that the plaintiff's trademark has become distinctive, associated and acquired secondary significance with the plaintiffs and plaintiff's said goods and business. The purchasing public, the trade and industry at large worldwide and in India identify and distinguish the plaintiff's said goods under the said trade mark with the plaintiffs and from the plaintiff's source and origin alone and regard them as a high quality product exclusively as that of the plaintiffs.
2.7. It is further averred that the plaintiffs trademark/labels are one of the oldest, most prominent and valuable trade mark of the plaintiffs. The plaintiffs are the proprietor thereof as also of their goodwill and reputation under the statutory and common law. The popularity and CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 10 of 33 demand of the plaintiff's goods under the said trademark grown so rapidly that the unscrupulous traders and manufacturers started counterfeiting the plaintiff's goods under the said trade mark in early thirties itself. The plaintiffs fight against counterfeiting as a social responsibility. The plaintiff's trade mark as well as the goods and business thereunder have a very strong presence in India. The plaintiff's goods are freely and commercially available in India since over decades and as of now they are sold in all the major towns and cities in India. The plaintiffs have various stores and its goods are being distributed and supplied through various dealers/distributors in Delhi. The plaintiffs invest heavily in R & D and their products are known for their highest standards of quality, safety, innovation and reliability and there is an ever increasing demand therefore. The plaintiffs have been massively advertising and promoting their goods under trademarks in India. Due to excellent quality of their goods and due to massive advertisement, the plaintiffs have acquired reputation and goodwill in India. In addition, the plaintiffs enjoy transborder reputation and users of their trade mark in relation to their goods and business as extending into India through traveling people and trade since inception. The plaintiffs have been protecting and enforcing their trademark against pirate use/applications in India. The plaintiffs products as well as information thereon are CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 11 of 33 available to Indians and Indian trade and industry since decades.
2.8. It is further averred that with the advent of ecommerce, the internet and trade thereunder the plaintiffs adopted the trademark Lee Cooper as an essential and material part of its email ID and domain names viz. www.leecooper.com. The plaintiffs have been using this domain name in course of trade and as proprietor thereof globally in relation to their said goods and business and have built up a valuable trade, goodwill and reputation thereunder. The plaintiffs have been carrying on and promoting their goods and business electronically and through ecommerce and over the internet through the abovestated domain names and also through various other intermeddler websites which is accessible in India.
2.9. It is further averred that the plaintiff's goods and business are known, recognized, demanded, sold and traded world over with reference to their trade mark. The members of the trade, industry, the consumers and general public at large world over and in India are well aware of the plaintiffs. The plaintiffs trademark is a well known Trade Mark within the meaning of Section 2 (1) (zg) of the Act. In view of the plaintiffs proprietary rights both statutory and common law, the plaintiffs have the CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 12 of 33 exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademarks/copyrights thereto in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiffs.
2.10. It is further averred that the defendant is engaged in manufacturing and marketing, sale, use, trading of footwear, shoes, clothings and other allied/cognate/related products, tags, labels, cutouts, boards, accessories, machineries and allied and cognate items to be used on footwears, shoes, clothings and other allied/cognate/related products (referred to as "the impugned goods and business"). The defendant has adopted and started using the plaintiff's trademark/lables etc. in relation to the abovesaid impugned goods and business (hereinafter referred to as the impugned trademarks/labels). The defendant has been shown as "Ashok Kumar" following the "John Doe order" whereby the Court appointed commissioner retains the power to visit the premises of members of an ascertained class likely to infringe or infringing and satisfy himself as to nature of infringing activities. It is only thereafter that such persons would be substituted as parties instead of "Ashok Kumar".
CS (COMM) No. 121/2020Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 13 of 33 2.11. It is further averred that impugned trademark/label adopted and being used by the defendant in relation to their impugned goods and business are identical with and deceptively similar to the plaintiff's trade mark/label in each and every respect including phonetically, visually, structurally, in its basic idea and in its essential features. The defendant has also copied the artistic features involved in the plaintiff's trade mark/label and is thus infringing the plaintiff's copyrights involved in its said trademark/label. The defendant is using all kinds of false description on its impugned goods to wrongly link the impugned goods with the plaintiffs and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiffs. The impugned goods and business there under are also of the same/similar/allied/cognate to that of the plaintiff's.
2.12. It is further averred that the defendant is not the proprietor of the impugned trademark/label and has adopted and is also using the same in relation to its impugned goods and business and is otherwise dealing with it in the course of trade without the leave and license of the plaintiffs. The defendant has no rights to use it in any manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's afore CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 14 of 33 mentioned rights. The plaintiff's trademark/label has a strong and wide reputation including in India. By virtue of operation of Section 29 (4) of the Trade Marks Act 1999 also the impugned activities of the defendant under the impugned products do amount to infringement of the plaintiff's registered trademark as mentioned in para no. 7 of the plaint. The defendant by its impugned adoption and user of the impugned trademark/label is violating the plaintiff's aforesaid trademark/label and thereby passing off and enabling others to pass off their goods and business as that of the plaintiffs as well as diluting the plaintiff's proprietary rights therein. The defendant cannot even be exonerated from the charges of falsification, unfair and unethical trade practices. The defendant has adopted and started using the impugned trademark dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiffs in the trade mark/label . By the defendant' impugned adoption and use, deception and confusion in the market are ensuing or are likely to so ensue. The plaintiff's trademark is otherwise being diluted and eclipsed thereby. Any person not knowing clearly the relationship between the parties to this action is bound to be confused by the defendant's impugned adoption and use and might do well business with the defendant thinking that they are dealing with the CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 15 of 33 plaintiffs or that some strong, vital and subtle links exist between the plaintiffs and the defendant. The defendant's impugned activities do amount to violation of aforementioned right of the plaintiffs. The defendant is guilty of infringing plaintiff's aforementioned registered mark of the plaintiff as also the copyright involved therein. The defendant is also guilty of passing off.
2.13. It is further averred that due to the defendant's impugned activities, the plaintiffs are suffering huge losses both in business and in reputation and such losses are incapable of being assessed in monetary terms. Unwary purchasers and trade are being deceived as to the origin of goods or business. The defendant's gains are plaintiff's losses. The plaintiffs have no access to the defendant's accounts and the defendant is liable to render their accounts to the plaintiffs and to make good to the plaintiffs the profits and business earned by them. It is further averred that in the third week of December 2019, the plaintiffs came across impugned products of the defendant in the markets of SouthEast Delhi Area. Being aggrieved thereby, the plaintiffs caused an inquiry in the market, which revealed that the defendant had just about in the month of December, 2019 adopted and started using and soliciting the impugned trademark/label in relation to their impugned goods in SouthEast Delhi CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 16 of 33 Area. The plaintiffs also learnt that the defendant is carrying on its impugned activities under the impugned trademark/label in a clandestine and surreptitious manner and that too without issuing formal sale bills. The defendant is not only making the retail sales but is also supplying the impugned goods bearing the impugned trade mark/label to various other dealers/shopkeepers/retailers including in SouthEast Delhi Area, apart from the sales to the direct customers from their respective shop/premises the defendant is supplying the impugned goods bearing plaintiffs mark/lable to the dealers/retailers/ distributors in the markets of South East Delhi Area viz. Greater Kailash, Okhla, Jamia Nagar, Defence Colony and adjoining areas who then supply the impugned goods bearing the impugned trade mark/label to the various unscrupulous traders and manufacturers of the counterfeit products of the plaintiffs who are eventually causes confusion and deception to the consumers at large who are making the clandestine and surreptitious sales thereof to the unscrupulous traders and manufacturers of the counterfeit products of the plaintiffs trade mark/label in the markets of SouthEast Delhi area viz. Greater Kailash, Okhla, Jamia Nagar, Defence Colony and adjoining areas. This Hon'ble Court has the territorial jurisdiction to try and adjudicate the present suit within the meaning of Section 134 (2) of the Trade Marks Act, 1999 and also under Section 62(2) of the Copyright CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 17 of 33 Act. The cause of action is still continuing and is accruing day by day and still continuing to so accrued till the defendant ceased with its impugned adoption and use.
2.14. On the aforesaid grounds, the plaintiffs instituted the present suit against the defendant seeking the following reliefs :
(a) For a decree of permanent injunction restraining the defendant by itself/themselves as also through his/their individual proprietors/partners, representatives, distributors, assigns, heirs, successors, agents, stockists and all others acting for and on their behalf from- manufacturing, marketing. using, selling, trading. soliciting, importing, exporting, displaying, advertising. purveying, intending to sell/solicit or on online marketplaces or online websites or through social medias or by any other mode or manner dealing in or using the impugned trademark/label LEE COOPER and/or any other trade mark/label which may be identical with and/or deceptively similar word/mark to the plaintiff's said COOPER, trademark/label in relation to their impugned goods and business of using, trading, selling, manufacturing, marketing etc of Footwear, shoes, clothings allied/cognate/related products and other Tags, labels, cut-outs, boards, accessories, machineries and allied and cognate items to be used CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 18 of 33 on footwears, shoes, clothings and other allied/cognate/related products from doing any other acts or or deeds amounting to or likely to:
i. Infringement of plaintiff's aforesaid registered trademarks [as mentioned in para 7 of the plaint ii. Passing off and violation of the plaintiff's rights in the plaintiff's said trade marks and its other variants/formative trademarks/labels/trade- dress/colour-scheme/get-up/appearance [as mentioned in para 7 & 8 of the plaint and other trademarks/labels of the plaintiff] iii. Violation of plaintiff's proprietary rights in its domain name iv. Infringement of plaintiff's copyrights in its trademark/label
(b) Restraining the defendant from disposing off or dealing with their assets including their premises at the addresses mentioned in the Memo of Parties and their stocks-in-trade or any other assets as may be brought to the notice of this court during the course of the proceedings and on the defendant disclosure thereof and which the defendant is called upon to disclose and/or on its ascertainment by the plaintiff as the plaintiff is not aware of the same as per Section 135(2)(c) of the Trade Marks Act, 1999 as it could adversely effect the plaintiff's ability to recover the costs and pecuniary reliefs thereon.CS (COMM) No. 121/2020
Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 19 of 33
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the abovesaid impugned and violative trade mark/label or any other word/mark which may be identical with or deceptively similar to the plaintiff's said trade mark/label including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
(d) For an order for rendition of accounts of profits earned by the defendant by their impugned illegal trade activities and a decree for the amount so found in favour of the plaintiff on such rendition of accounts.
(e) for an order for cost of proceedings, and (f) for such other and further order as this court may deem fit and
proper in the facts and circumstances of the present case.
3. When the suit came up for hearing before this court on 27.12.2019, summon was issued to the defendant and on the same day exparte ad interim injunction was granted against the defendants restraining him from using the trademark Lee Cooper or any other trademark, which may be deceptively similar to the plaintiffs' well known trademark till further orders. On the same day while disposing off CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 20 of 33 application u/o XXVI Rule 9 & 10 of Code of Civil Procedure, 1908, Local Commissioner was appointed to visit the premises of the defendant and to seize all products and make an inventory of the goods like packaging and promotional material, catalogs, stationary and any other material whatsoever including labels, signs, prints, packages, molds, plates, dice, wrappers, receptacles, advertisement, semifinished, unfinished, packed etc. bearing the trademark Lee Cooper found at the premises of the defendant. The commission was duly executed in terms of aforesaid orders and report was filed in the court. The goods were taken into possession and those were released on superdari to the defendants. It is pertinent to mention here that during course of proceedings, an application under Section 151 CPC along with amended memo of parties was filed by the plaintiff. Considering that on earlier occasions John Doe order was passed in favour of the plaintiff and against the defendant as the particulars of the defendants were not known to the plaintiff, the application for substitution of name of the defendants in place of John Doe order was allowed. The defendants, however, after putting their appearance on 25.02.2020, subsequent thereto chose not to appear for the reason known to them and were proceeded exparte vide order dated 23.08.2021. It is also noteworthy to mention here that the matter was also referred to Mediation Center Saket for exploring the CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 21 of 33 possibilities of settlement but the matter could not be settled.
4. The plaintiffs have filed an affidavit of exparte evidence of Sh. Anand Arya, the constituted attorney of the plaintiff. The witness has proved ResolutionCumAuthority and letter of plaintiff no.2 in favour of plaintiff no.1 as Ex.PW1/10 which authorized institution of the suit. Representations of plaintiff's trademark and photographs of trademark of defendant are proved as Ex.PW1/1 and PW1/2. The certificate of registrations of trademark have been proved as Ex.PW1/3. The plaintiff has also placed receipt applied legal proceeding certificate as Ex.PW1/4 and list of plaintiff's other trademark registrations Ex.PW1/5. The advertisements of the plaintiff's goods has been proved as Ex.PW1/6. The plaintiff has relied upon screenshots showing availability of plaintiff's products on Amazon, Shopperstop online market places and on its own official website as Ex.PW1/ 7 and Ex. PW1/8 respectively. The plaintiff has relied upon News Articles about plaintiff as Ex.PW1/9. The certificate u/s 65B of Indian Evidence Act has been exhibited as Ex.PW1/11.
5. As per averments of the plaint and deposition of PW1, the plaintiffs have been engaged in the business of manufacturing, CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 22 of 33 distributing and selling of wide range of goods including shoes, footwears, clothing and other allied/related products around the world including in India and is registered owner and proprietor of trademark Lee Cooper. It is the case of the plaintiff that trademark Lee Cooper is wellknown trademark within the meaning of Section 2(1)(zg) of the Act and plaintiff hold registration over the said trademark/label in India which is registered under No. 1471747 dated 20.07.2006 in Classes 9, 14, 18 & 25. The said registration is legal, valid and subsisting till date. In this regard, the plaintiffs have filed status page along with registration certificate and other documents related to the registration of Ex.PW1/3. Whereas allegedly the defendants have adopted and have been manufacturing, selling, using and trading of their goods using trademark/label Lee Cooper. The impugned mark/label adopted by the defendants in relation to the impugned good is identical with and deceptively similar to the plaintiff's trademark/label in each and every aspect. The defendants impugned activities amount to infringement of plaintiff's registered trademark along with passing off the impugned goods as that of plaintiffs as well as diluting the plaintiff's proprietary rights in said trademark/label. As regards infringement, Section 29 of Trade Marks Act, 1999 sets out different situation in which infringement of a registered trademark can result. Section 29 of the Act reads as CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 23 of 33 under :
29. Infringement of registered trade marks.--
(1) A registered trade mark 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 trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark 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 because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 24 of 33 the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark 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--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
CS (COMM) No. 121/2020Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 25 of 33 (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 26 of 33 reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising
--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
6. Section 29 of the Act contemplates that the owner/proprietor of registered trademark alleging infringement of its trademark by another person who is neither a registered proprietor in relation to the goods and services for which the mark is registered nor has permission to use such CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 27 of 33 marks in the course of trade. In order to establish infringement, the main ingredients of Section 29 of the Act was that plaintiff's mark must be registered under the Act ; the defendants mark is identical with or deceptively similar to the registered trade mark; and the defendants dues of the mark in the course of trade in respect of the goods covered by the registered trademark. The rival marks are to be compared as a whole. In catena of judgments, it has been held that in an action based upon infringement, if the mark used by the defendant is visually, phonetically or otherwise so close to the registered trademark of the plaintiff that it is found to be imitation of registered trademark, the statutory right of the owner of the registered trademark is infringed. The grant of injunction will become necessary where it appears that adoption of mark was itself dishonest. It is also wellsettled that in an infringement action once a mark is used as indicating commercial origin by the defendant no amount of added matter intended to show the true origin of goods can effect the question. If court finds that the defendant's mark is closely, visually and phonetically similar, even then no further proof is necessary.
7. The provisions of Trade Marks Act, 1999 are succinctly clear that if any other person in the course of trade using the mark which is either identical or deceptively similar in relation to the goods would get CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 28 of 33 caught into the trappings of infringement. When a trademark is registered a valuable right gets acquired by reason of such registration and it confers exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. If there is any invasion of this right by any person using a mark which is same or deceptively similar to his trademark, he can protect his trademark by an action for infringement in which he can obtain injunction.
8. In the present case, it is not disputed that the plaintiffs are registered owner of trademark Lee Cooper as per details mentioned in para 7 of the plaint, it would appropriately arm the plaintiff to protect itself and its product from any kind of deceptively similarity in the products by the defendants. A comparative analysis of the mark of the defendants with the plaintiff, clearly reveals similarities in the mark of the parties as the defendants have also adopted and using the device mark/label i.e. Lee Cooper which is identical and similar in all particulars to the plaintiff's trademark/label. The defendants despite putting their appearance initially failed to file written statement and hence the averments which are duly supported by the documents have gone unrebutted. It is the case of the plaintiffs that Local Commissioner visited the premises of defendants and seized impugned goods bearing registered CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 29 of 33 mark/label Lee Cooper from the premises of the defendants. There is enough uncontrovered evidence that defendants intend to encash upon the goodwill by adopting similar trademark visually and phonetically akin product packing of similar kinds of products. In this backdrop, a conclusion which can be irresistibly drawn that defendants have counterfeit the products of the plaintiff and there is possibility of confusion to unwary purchasers and the plaintiff has made out a case of passing off by the defendants of their goods as that of plaintiffs.
9. In view of the aforesaid, the plaintiff is entitled to the decree of permanent injunction from defendants from dealing with the goods having infringed mark in terms of prayer (a) of para 35 of the prayer clause.
10. In so far as prayer (b) is concerned, this relief was not argued and pressed for by the plaintiff at the time of arguments and therefore this prayer accordingly rejected.
11. In so far as prayer (c) is concerned, the seized goods were released on superdari by the Local Commissioner to the defendants. The said goods are liable to be destroyed. The plaintiff's are thus entitled to a CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 30 of 33 decree of delivery up of all the infringing products so that the same can be destroyed.
12. The last aspect to be considered is the issue of rendition of profits as also the cost of the present proceedings. There is no evidence on record and the exact figures of sales made by the defendants under the infringed trademark/copy right are not available. It is the contention of the ld. Counsel for the plaintiff that even in the absence of specific evidence to the same effect, damages can be granted. The attention of this court has been drawn to a number of judgments in this regard where dealing with similar situations, damages have been awarded. In case of Relaxo Rubber Ltd and Anr. Vs. Selection Footwear and Anr. 1999 PTC 578 the defendant did not file written statement after taking time for the same and the decree passed u/o VIII Rule 10 of the Code of Civil Procedure, 1908 against the claim of tentative damages of Rs.5,00,000/, Rs. 3,00,000/ is awarded as damages. In case of Jockey inc and Anr. Vs. R. Chandra Mohan & Ors. 2014 (59) PTC 437 (Del), the Hon'ble High Court by passing a decree of injunction in favour of plaintiff awarded damages of Rs.3,00,000/. It is trite to say that defendants have chosen to stay away from the present proceedings, stringent action is required so as to convey the message in public that there should not be proliferation of CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 31 of 33 spurious goods in the market, the plaintiff is awarded damages to the tune of Rs.50,000/ from each defendant.
13. In view of above discussion, a decree for permanent injunction is passed in favour of plaintiffs and against the defendants restraining the defendants, their agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf from manufacturing, marketing, using, selling, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit or online market places or online websites or through social media or by any other mode or manner dealing in of using the trademark/label Lee Cooper or any other trade mark/label which may be identical with or deceptively similar work/mark to the plaintiff's trademark in relation to any goods and business of footwear, shoes and clothing and other allied/cognate/related products and from doing any other acts or deals amounting to or likely to infringe, pass off or violates the plaintiffs aforesaid trademark/copy right along with damages for a sum of Rs. 50,000/ each to be recoverable from the defendants. A decree is also passed in favour of the plaintiffs and against the defendants to hand over the seized goods released by the Local Commissioner on superdari to the defendants so that the same can be destroyed by the plaintiffs. The CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 32 of 33 plaintiffs are also entitled costs of the present proceedings. The present suit has been filed in the month of December, 2019, considering the number of hearings which have taken place, the pleader's fee and litigation expenses are assessed as Rs. 30,000/, which the defendants are to be shared in equal proportion and the same is hereby awarded along with the court fee etc., in favour of plaintiffs and against the defendants. Costs of suit i.e. court fee etc., are also awarded in favour of plaintiffs and against the defendants.
14. Decree sheet be prepared accordingly.
15. File be consigned to record room. Digitally signed by VINEETA VINEETA GOYAL GOYAL Date:
2023.01.04 17:40:53 +0530 Announced in the open Court (Vineeta Goyal) on 4th January, 2023 District Judge (Commercial Court)02 SouthEast District, Saket, Delhi 04.01.2023 CS (COMM) No. 121/2020 Future Specialty Retail Ltd. Vs. Ashok Kumar Page no. 33 of 33