Delhi District Court
Vans Inc. Usa vs Varsha Vivek Shetty And Anr on 6 June, 2024
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02
NEW DELHI DISTRICT, PATIALA HOUSE COURTS
NEW DELHI
CNR NO.: DLND01-012113-2018
CS (COMM.) NO.: 178/2023
[OLD NO:- TM NO.149/2018, CS(COMM)/345/2019
TM 161/2021]
IN THE MATTER OF:-
M/S VANS INC. USA
6550 KATELLA AVENUE, CYPRESS
CALIFORNIA 90630
U.S.A.
Through
Rishi Bansal
Constituted Attorney
96, Sukhdev Vihar
Mathura Road
New Delhi - 110 025
...PLAINTIFF
VERSUS
1. Varsha Vivek Shetty
No.153, 1st Floor
4th Cross Road, Sector-5
Near ICICI Bank, HSR Layout
Bangalore - 560 102
Karnataka.
2. Shashi Maurya
J-101, Mithul Enclave
Mahul Road
Chembur, Mumbai
Maharashtra - 400 074
...DEFENDANTS
Date of Institution : 10-10-2018
Date of reserving judgment : 21-05-2024
CS (Comm.) No.:178/2023 Page 1 of 29
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Date of pronouncing judgment : 06-06-2024
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999 and Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as a non-commercial suit before the Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 28-9-2022 in view of Order No.17016-17031/Judl./NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is that the plaintiff is a corporation duly organized under the laws of U.S.A. and got instituted the present suit through constituted attorney namely Sh. Rishi Bansal, who is duly authorized to sign, verify and to institute and also to pursue the present suit. It is averred in the plaint that the plaintiff CS (Comm.) No.:178/2023 Page 2 of 29 -3- is engaged in the business of manufacture and trade of footwear, apparels and allied goods at least since the year 1966 and for events and related services (hereinafter referred to as the said goods, businesses and services) under its signature brand VANS/ It is further averred that the plaintiff was originally a manufacturer of sneaker footwear and is rated as world number one in the category of skateboarding shoes and other types of sneakers catering towards the extreme sports youth set.
4. It is averred that the Plaintiff Company was founded by one Mr. Paul Van Doren on 16th March, 1966, at street 704E Broadway, in Anaheim, California, when he along with his three other partners, opened up their first ever VANS store, a name derived from its founder Paul VAN Doren. At that time, all the Plaintiff's goods were manufactured in the Van Doren Rubber Company, which was owned by Mr. Paul Van Doren himself. The Plaintiff's business model was unique in a manner that it manufactured shoes under its said trademark/trade-name and sold them directly to the public. The plaintiff's VANS footwear became a preferred choice for the skateboarders' and by the year 1979, the Plaintiff had 70 stores in California and it sold through dealers both nationally and internationally. In the year 1980, the Plaintiff started to create VANS shoes for a number of sports from baseball, CS (Comm.) No.:178/2023 Page 3 of 29 -4- basketball and wrestling to skydiving in an effort to compete with large athletic shoe companies. Further, it is averred that the brand first opened up in 1966, and by the mid-1970s, their shoes were the most popular choice for skaters. It was the tacky rubber sole that made them so good for gripping a skateboard. Word spread quickly and before long, Vans began to branch out, and produced shoes and Vans clothing for other sports, such as motor cross and surfing. The range is now huge, and alternative sports stars from all over the planet wear Vans clothing, whether it be on a skateboard, BMX or snowboard. Vans clothing includes T-shirts, Hats, Caps, Bags, Hoodies and Sun glasses. Thus, the plaintiff's goods include footwear, clothings, T-shirts, Hats, Caps, Bags, Hoodies, Sunglasses and all allied and cognate goods.
5. The Plaintiff started manufacturing VANS goods overseas in 1994, allowing for development of new shoe styles, and started creating the world's leading action sport series with the sponsorship of the inaugural Triple Crown of skateboarding, which then developed into the VANS Triple Crown series which includes events in skateboarding, BMX surfing, wakeboarding, snowboarding, motocross and super cross. In the year 1998, the Plaintiff launched Initial Public Offering of stock, which is now traded on the NASDAQ stock exchange. In the year 2000 and 2001,the Plaintiff was recognized by Forbes as one of "America's Best Selling CS (Comm.) No.:178/2023 Page 4 of 29 -5- Companies". In the year 2004, the plaintiff launched Vans Customs on its website at www.vans.com allowing would- be fashion designers to create their own Classic Slip-ons utilizing hundreds of different colour and pattern combinations. In the year 2006, the plaintiff celebrated 40 years of youth culture in California.
6. It is further averred that the Plaintiff's said trademark VANS is a highly arbitrary, rare, fanciful and invented trademark and as such, is inherently strong trademark, which the Plaintiff has been using honestly, bonafidely, extensively, exclusively, continuously, commercially and in the course of trade since the year 1996 in relation to its said goods and business.
7. It is further the case of the plaintiff that plaintiff's said trade mark/ trade name are duly registered and/ or pending registration in its favour in India under the Trade Marks Act, 1999 and details thereof have been mentioned in Para no.14 of the plaint. According to same, the trade mark/ device mark/ word mark VANS / are shown to have been registered in favour of the plaintiff and is valid and subsisting till date. Whereas the trade mark/ device is shown to have been pending registration in favour of the plaintiff. Further, it is also the case of the plaintiff that its trademark/s includes the art work involved in the plaintiff's various stylized, formative/ bearing and CS (Comm.) No.:178/2023 Page 5 of 29 -6- labels are original artistic works, including and and the plaintiff holds copyright therein.
8. 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 have acquired enviable reputation and goodwill across the world including India. Further, the Plaintiff spend huge amount of money in advertising and promotion of its products under the said trade marks/ logos in India and around the world, due to which the products of plaintiff under the said trade marks/ logos enjoy huge goodwill and reputation in business community and public in general in India and across the world. The Plaintiff Company has a huge turnover against sale of its products, worldwide. It is further 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 trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the Plaintiff.
9. The plaintiff company has alleged that the defendants are engaged in business management services relating to e-
CS (Comm.) No.:178/2023 Page 6 of 29 -7-commerce, services related to websites, e-services, online marketplaces and allied and cognate services and businesses [referred to as "the impugned services" & "impugned business"]. The defendants are acting in collusion and connivance with each other. Further, the Defendants have adopted and started using the Trade Mark/Label/ domain name HOUSE OF SVANS, www.houseofsvans.com in relation to their impugned business and services and have been using the same individually or in combination of each other in logo/label form [hereinafter collectively referred to as the "impugned Trademark"].
10. Further, it is alleged that in the first week of May 2018, the Plaintiff came across a trademark application filed by the defendant no. 1 under no. 3702692 in Class 35 for the registration of the impugned mark/label . Thereafter, the said application has been opposed immediately by the Plaintiff. The said application was filed in December 2017 with user as 'proposed to be used'. The Plaintiff also caused an inquiry, and came across the impugned website www.houseofsvans.com of which defendant no. 2 is the owner and registrant and has been created only on 02/11/2017, which is recent as compared CS (Comm.) No.:178/2023 Page 7 of 29 -8- to the plaintiff's website www.houseofvans.com which was created on 26/03/2010.
11. Thus, it is alleged that the defendants have dishonestly and malafidely adopted impugned trademarks/label/ domain HOUSE OF SVANS/ www.houseofsvans.com which are visually, structurally identical and/or deceptively and confusingly similar to the registered trademarks/ label of plaintiff VANS/ and / www.vans.com, www.houseofvans.com and www.houseofvanslondon.com etc. thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those services 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 trademark of the plaintiff company.
12. On these grounds, the plaintiff has filed present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed CS (Comm.) No.:178/2023 Page 8 of 29 -9- 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 manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner dealing in or soliciting or selling/ soliciting through online platforms or online websites or using impugned trademarks/label/ domain HOUSE OF SVANS/ www.houseofsvans.com or any other trade mark/label/ domain name, which may be identical and/or deceptively and confusingly similar to the registered trademarks/ label/ domain names of plaintiff VANS/ and / www.vans.com, www.houseofvans.com and www.houseofvanslondon.com etc. in relation to their impugned services thereby infringing Plaintiff's registered trademarks, copyright and passing off their services as that of the plaintiff.
13. The suit was accompanied with various applications including application under Order XXXIX Rules 1 & 2 CPC seeking ex parte ad interim injunction. After hearing the counsel of plaintiff, the said applications was allowed, CS (Comm.) No.:178/2023 Page 9 of 29 -10- vide order dated 22-10-2018 passed by Ld. Predecessor of this Court, thereby, granting ex parte ad interim injunction in favour of the plaintiff and against the defendants thereby restraining defendants from using impugned trade mark/ label/ domain name House of svans, House of Svans and www.houseofsvans.com. Further the Registrar of impugned website/ domain name [www.houseofsvans.com] - Godaddy.com was directed to take down/ block the pages with the contents relating to the impugned trade mark/ label / domain name HOUSE OF SVANS, House of Sans or in alternative transfer the impugned website/ domain name to the plaintiff.
14. Vide same order, summons of the suit were also directed to be issued to the defendants for 12-11-2018. On the next date, defendant no.2 had put appearance through counsel and vakalatnama was filed on his behalf. Written statement was also filed on behalf of the defendant no.2. The defendant no.1 could not be served with summons of the suit through ordinary mode and hence, was served with the summons of the suit by way of publication in newspaper 'The Times of India' Bengaluru edition dated 08-01-2021 in terms of order dated 14-09-2020 passed by Ld. Predecessor of this Court and defendant no.1 was directed to file written statement within 30 days from the date of said order.
15. At this juncture, it may also be noted that the present case was received by this Court on 28-9-2022, as already noted CS (Comm.) No.:178/2023 Page 10 of 29 -11- above in Para no.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra), which was allowed vide order dated 09-02-2023, passed by Ld. Predecessor of this Court. The defendants were directed to file their written statement within a period of 30 days from the date of said order. Since, both the defendants failed to file their written statement to the amended plaint, their right to file same was closed vide order dated 01-8-2023, passed by ld. Predecessor of this Court. Further, vide same order, the interim ex parte order dated 22-10-2018 was made absolute till the pendency of the suit by disposing off application under Order XXXIX Rules 1 & 2 CPC moved by plaintiff seeking ad interim injunction.
16. Since none was appearing on behalf of either of the defendants for the last so many dates, they were proceeded against as ex parte, vide order dated 08-11-2023, passed by Ld. Predecessor of this Court.
17. Vide order dated 08-11-2023, the following issues were framed:-
(i) Whether the plaintiff is entitled to decree of permanent injunction, as prayed for? OPP.CS (Comm.) No.:178/2023 Page 11 of 29 -12-
(ii) Whether the defendant is guilty of infringing trademark/ copy right of plaintiff in marks/labels VANS / VANS OFF THE WALL, HOUSE OF VANS? OPP.
(iii) Whether the defendant is guilty of passing off the goods of the plaintiff's under the impugned trademarks / labels VANS / VANS OFF THE WALL, HOUSE OF VANS? OPP
(iv) Whether the plaintiff is entitled to decree of delivery up of the finished and unfinished material bearing the impugned trademark/label/domain name HOUSE OF SVANS or any other word/mark identical or deceptively similar to the plaintiff's trademark, as prayed for? OPP.
(v) Whether the plaintiff is entitled to decree of rendition of accounts, as prayed for? OPP.
(vi) Relief
18. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Sh. Anand Kumar Arya as PW1. He 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. Document/Particulars Exhibit(s) no
1. Photographs/screen shots depicting Ex. PW1/1 true representation of the plaintiff's CS (Comm.) No.:178/2023 Page 12 of 29 -13- Sr. Document/Particulars Exhibit(s) no trademark/lable and screen shots (Colly) from the plaintiff's trademark/label.
2. Photographs/screen shots depicting Ex. PW1/2 true representation of impugned Trade Mark/Label of the defendant.
3. Registration Certificates for the Ex. PW1/3 trademark application no. 574910.
4. Registration Certificates for the Ex. PW1/4 trademark application no. 2252449.
5. Registration Certificates for the Ex. PW1/5 trademark application no. 574911.
6. Journal copy of the Trademark Ex. PW1/6 application no. 3857176.
7. Status page for the trademark Ex. PW1/7 application no. 2252452.
8. 'Whois' report related to the Ex. PW1/8 plaintiff's websites/domain names. (Colly)
9. Status of the defendant's impugned Ex. PW1/9 trademark/lable and the notice of (Colly) opposition filed by the plaintiff.
10. Whois report related to the Ex.defendant's impugned PW1/10
website/domain name, document
showing defendant no. 2 as owner of
CS (Comm.) No.:178/2023 Page 13 of 29
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Sr. Document/Particulars Exhibit(s)
no
such website/domain name.
11. Advertisement's, news article related Ex. PW
to the plaintiff's trademark/labels. 1/11
12. List of some of the plaintiff's Ex.
exclusive stores/outlets in India. PW1/12
(Colly)
13. The copy of the authorization letter Ex. PW
in favour of Mr. Rishi Bansal. 1/13
(OSR)
14. The copy of the authorization letter Ex. PW
in favour of Ms. Soumya Singh. 1/13A
(OSR)
15. The copy of the authorization letter Ex. PW
in favour of Mr. Anand Arya. 1/13 B
(OSR)
19. On statement of counsel of the plaintiff, its evidence was closed on 08-02-2024. After the closure of PE, ex parte final arguments were heard.
20. It may be noted here that during the course of final arguments and when the case was listed for clarification/ order, Ld. Counsel of plaintiff made statement to give up prayers/reliefs as prayed in Prayer Clause Nos. 43(e); 43 (b) and 42(c) of the amended plaint regarding rendition of accounts of profits;CS (Comm.) No.:178/2023 Page 14 of 29 -15-
restraining the defendants from disposing off or dealing with their assets; and delivery up respectively. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 19-03-2024 and 06-06- 2024 i.e. today. In view thereof, the suit survives only with respect to reliefs of permanent injunction whereby the plaintiff has sought permanent injunction against the defendant from using the impugned trademark, as also for direction to Registrar of the impugned website/ domain name [www.houseofsvans.com] -
Godaddy.com for the transfer of the impugned website/ domain name to the plaintiff and /or for direction of taking down and blocking the pages of the contents relating to impugned trade mark/ label/ domain name HOUSE OF SVANS.
21. I have duly considered the submissions made on behalf of the plaintiff and 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.
22. My issue wise findings are as under:-
ISSUES:-
Issue no.(i) - Whether the plaintiff is entitled to decree of permanent injunction, as prayed for ? OPP.CS (Comm.) No.:178/2023 Page 15 of 29 -16-
Issue no.(ii) - Whether the defendant is guilty of infringing trademark/ copy right of plaintiff in marks/labels VANS / VANS OFF THE WALL, HOUSE OF VANS? OPP.
Issue no.(iii) - Whether the defendant is guilty of passing off the goods of the plaintiff's under the impugned trade marks / labels VANS / VANS OFF THE WALL, HOUSE OF VANS? OPP
23. Firstly, I shall take up the aforesaid three issues together as they all are interconnected. The onus to prove the aforesaid issues was placed upon plaintiff. As already noted above, in order to discharge the aforesaid burden, the plaintiff has examined only one witness i.e. PW-1, whose examination in chief has also been discussed hereinbefore. It is pertinent to mention here, as also noted above, that both the defendants were proceeded against ex parte, and thereafter, PW1 was examined by way of affidavit and there is no cross-examination of PW1 conducted on behalf of either of the defendants as they chose not to appear to cross-examine PW.
ARGUMENTS OF THE PLAINTIFF
24. Ld. Counsel of plaintiff has argued that the entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiff company is entitled to the CS (Comm.) No.:178/2023 Page 16 of 29 -17- decree, as prayed for. In support of his submissions, Ld. Counsel also relied upon the documents [Ex.PW1/1 (Colly.) to Ex.PW1/13B (Colly.)]
25. Further, it is submitted by Ld. Counsel of plaintiff that the trademark/label/ domain name VANS is well known trademark of plaintiff and is registered in India under various classes of the Trademark Rules 2002, which are valid and subsisting in favour of the plaintiff company till date. Further, the art works involved in the trademark/ label is original artistic works and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and promotion of its products and said mark enjoys a huge goodwill and reputation in business community and public in general in India and across the world.
26. Further, he submitted that the use of impugned trademark /label/ domain name as adopted by defendants, is identical and/or confusingly or deceptively similar to the registered trademark of the plaintiff i.e. VANS 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 company suffers huge monetary loss and its goodwill and reputation is 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/ label.
CS (Comm.) No.:178/2023 Page 17 of 29 -18-27. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
LEGAL POSITION
28. Before adverting to the facts of the present case, it would be relevant to note down the legal proposition as laid down by Hon'ble Apex Court as well as by Hon'ble Delhi High Court concerning the question involved in the present case.
29. 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 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 CS (Comm.) No.:178/2023 Page 18 of 29 -19- 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 trademark, 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 CS (Comm.) No.:178/2023 Page 19 of 29 -20- 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 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.
30. 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 CS (Comm.) No.:178/2023 Page 20 of 29 -21- 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 sequetur 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).
ANALYSIS & CONCLUSION
31. 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.
32. 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 CS (Comm.) No.:178/2023 Page 21 of 29 -22- along with the plaint. The relevant Para no.7 of the said 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"
33. In this case, the plaintiff has relied upon and has filed copy of Certificates of Registration of Trade Marks/labels, which are duly proved by PW-1 as Ex.PW1/3 (Colly.), 'Whois' report related to the plaintiff's websites/ domain names as Ex.PW1/8 (Colly.), status of defendant's impugned trade mark/ label and the notice of opposition filed by the plaintiff as Ex.PW-1/9 (Colly.) and 'Whois' CS (Comm.) No.:178/2023 Page 22 of 29 -23- report related to the defendant's impugned website/ domain name, showing defendant no.2 as owner of such website/ domain name as Ex.PW-1/10 (Colly.).
34. As per Certificate of Registration of Trade Mark dated 19- 12-2011, Trade Mark No. 2252449 [Ex.PW1/3 (Colly.)], it is shown that trade mark / word mark/ device mark VANS / is registered in favour of the plaintiff, which is valid upto / renewed upto 19-12-2021. During the course of final arguments, counsel of plaintiff submitted that the same stood renewed further and is now valid till June, 2032 and filed current status of the trade mark/ word mark/ device mark VANS / with the permission of the Court, which is shown to be valid and subsisting as on date in favour of the plaintiff.
35. As already noted above, despite grant of sufficient opportunities, the defendant no.1 failed to file written statement either to the original plaint or to the amended plaint. Although, the defendant no.2 had filed written statement to the original plaint, yet, he has also failed to filed written statement to the amended plaint as he stopped appearing and consequently, he was also proceeded ex parte. However, in the written statement filed by defendant no.2 to the original plaint, it is nowhere the case of the said defendant that he is proprietor or owner of the said trademark. On the contrary, it is stated that he was an employee of 'Zepo Technologies Pvt. Ltd', Mumbai CS (Comm.) No.:178/2023 Page 23 of 29 -24- which is involved in website development and other allied business and he had instruction to book a domain name by the name of "houseofsvans.com" for the business concern of the defendant no.1. Accordingly, as per above instructions, he merely booked the said domain name for the defendant no.1. It is stated that he resigned from the said company on 04-02-2018 and is no longer associated with its business or its clients. It is very categorically denied that he has adopted and started using the trade mark/ label/ domain name of House of Svans, www.houseofsvans.com.
36. Moreover, none has appeared on behalf of either of the two defendants in order to cross-examine PW1. Therefore, the entire testimony of PW-1 has gone unrebutted, uncontroverted and unchallenged and thus, the case of the plaintiff stood proved against the defendants on the basis of preponderance of probability. It is duly established on record that the trademark/label VANS is duly registered in favour of the plaintiff and also, that the same is valid and subsisting as on date in favour of the plaintiff.
37. PW-1 has also proved status of defendant's impugned trade mark/ label and the notice of opposition filed by the plaintiff as Ex.PW-1/9 (Colly.). As per same, it is duly shown that trade mark application was duly opposed by the plaintiff. Further, during the course of final arguments, Ld. Counsel of plaintiff has also filed current states of impugned trademark of defendant HOUSE OF SVANS on CS (Comm.) No.:178/2023 Page 24 of 29 -25- record, which shows that the same is abandoned. Further, as per Whois' report related to the defendant's impugned website/ domain name, which is a document showing defendant no.2 as owner of such website/ domain name as Ex.PW-1/10 (Colly.), shows registrant details as 'Shashi Maurya' i.e. defendant no.2 who had categorically stated in his written statement to the original plaint that he has booked the impugned domain name on the instructions of the defendant no.1. Thus, the plaintiff has established that the defendants were actually involved and dealing in with the trade mark/ label/ domain name HOUSE OF SVANS, and www.houseofsvans.com which are identical and / or deceptively similar to the plaintiff's trade mark / label / domain name HOUSE OF VANS, /VANS, www.vans.com, www.houseofvans.com and www.houseofvanslondon.com in relation to impugned services and therefore, trademark and copyright of plaintiff company are required to be protected. Accordingly, permanent injunction is granted in favour of plaintiff and against the defendants and consequently, the defendants and all other acting for and on their behalf are restrained from using impugned trade mark/ label/ domain name HOUSE CS (Comm.) No.:178/2023 Page 25 of 29 -26- OF SVANS, and www.houseofsvans.com , which are identical and / or deceptively similar to the plaintiff's trade mark / label / domain name HOUSE OF VANS, /VANS, www.vans.com, www.houseofvans.com and www.houseofvanslondon.com thereby infringing Plaintiff's registered trademarks, copyright and passing off their services as that of the plaintiff. Further, the Registrar of the impugned website/ domain name [www.houseofsvans.com] -
Godaddy.com is directed to take down/ block the pages with the contents relating to impugned trademark/ label domain name HOUSE OF SVANS, House of SANS or in alternative, transfer the impugned website/ domain name to the plaintiff, if not so already done in compliance of order dated 22-10-2018, passed during pendency of the suit.
38. Accordingly,the issues nos. (i), (ii) and (iii) are decided in favour of plaintiff and against the defendants in these terms,.
Issue nos. (iv) and (v) Issue no. (iv) - Whether the plaintiff is entitled to decree of delivery up of the finished and unfinished material bearing the impugned CS (Comm.) No.:178/2023 Page 26 of 29 -27- trademark/label/domain name HOUSE OF SVANS or any other word/mark identical or deceptively similar to the plaintiff's trademark, as prayed for? OPP.
Issue no. (v) - Whether the plaintiff is entitled to decree of rendition of accounts, as prayed for? OPP.
39. As already discussed above, on statement of counsel of plaintiff, the plaintiff was permitted to give up the reliefs as prayed in Prayer Clause nos. 43(c) and 43(e) of the amended plaint regarding delivery up and rendition of accounts. In view thereof, there is no need to give any findings with respect to aforesaid issues. Both these issues stand decided accordingly.
RELIEF:
40. 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 plaintiff and against the defendants and the following reliefs are granted:-
(i) 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, CS (Comm.) No.:178/2023 Page 27 of 29 -28- heirs, successors, stockists and all other acting for and on their behalf from using the impugned trademark / label / domain name HOUSE OF SVANS, www.houseofsvans.com or any other trade mark/ label/ domain name which may be identical with and/ or deceptively similar to the plaintiff's trade mark / label / domain name House of VANS, /VANS, www.vans.com, www.houseofvans.com and www.houseofvanslondon.com in relation to any services, thereby infringing Plaintiff's registered trademarks, copyright and passing off their services as that of the plaintiff.
(ii) the Registrar of the impugned website/ domain name [www.houseofsvans.com] - Godaddy.com is directed to take down/ block the pages with the contents relating to impugned trademark/ label domain name HOUSE OF SVANS, House of SANS or in alternative, transfer the impugned website/ domain name to the plaintiff, if not so already done in compliance of order dated 22-10-2018, passed during pendency of the suit.CS (Comm.) No.:178/2023 Page 28 of 29 -29-
(iii) Cost of the suit is also awarded in favour of the plaintiff.
41. Decree sheet be prepared accordingly.
42. File be consigned to Record Room, after due compliance.
Announced in the open court Digitally signed
by VIDYA
on 6th Day of June, 2024. VIDYA PRAKASH
PRAKASH Date:
2024.06.06
16:30:05 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (Comm.) No.:178/2023 Page 29 of 29