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Through Its Authorized Representative vs Discount Junction/Lavanya Trading ... on 1 August, 2023

IN THE COURT OF MS SAVITA RAO, DISTRICT JUDGE
      COMMERCIAL COURT-02, SOUTH WEST,
           DWARKA COURTS, DELHI

CNR No. DLSW01-008104-2020
CS (Comm) No. 164/2020

In the matter of :-

Reebok International Ltd.
At 4th Floor, 11-12 Pall Mall
London, SWIY5LU
England (UK)

Also At :
Reebok India Company
Office no. 6, 2nd floor, Sector - B
Pocket no. 7, Plot no. 11
Vasant Kunj, New Delhi - 110070

Through its Authorized Representative
Mr. Narendra Singh
                                                ............Plaintiff
Vs.

Discount Junction/Lavanya Trading Company
WZ, Plot no. 37
Ram Dutt Enclave, Near Lal Mandir
Uttam Nagar, Delhi - 110059
Through its Owner/Proprietor
Mr. Jatin Jain
                                     .........Defendants

Date of institution of the case : 07.11.2020
Date of final arguments         : 05.07.2023 & 01.08.2023
Date of judgment                : 01.08.2023

                       EX-PARTE JUDGMENT

1.

This is suit for Mandatory and Permanent injunction, Passing off, Infringement of Copyright , Damages and Rendition of CS (Comm) No. : 164/2020 1/9 Accounts, filed by plaintiff against the defendant.

2. Plaintiff Company, as stated, is owner of various trademarks and intellectual property rights in India and "Reebok" is the most reputed trademark of the Plaintiff Company. Plaintiff Company incurs huge amount of money in advertising and promotion of its various products under the trademark "Reebok" worldwide . On account of its good quality and standards of manufacturing and ever introducing new technologies and by putting its skillful and untiring efforts in advertising and marketing, goods of the Plaintiff Company has acquired an enviable reputation worldwide and the trademark "Reebok" has become a well-known trademark. The said trademarks of the Plaintiff Company are registered in India under the Trade Marks Act, 1999 and enjoy their protection under the law. Details of various trademarks of plaintiff in various classes in India were also given in the plaint.

3. Plaintiff Company, as stated, is the rightful owner of the "Reebok marks", as mentioned in the plaint and is entitled to use the said "Reebok marks" under the provisions of the Trademarks Act in India for apparels, clothing, foot wear, etc. Plaintiff operates in India through its wholly owned subsidiary Reebok India Company, having its registered office at Office No.6, 2 nd Floor, Sector B, Pocket No.7, Plot No.11, Vasant Kunj, New Delhi-110070. Plaintiff sells its products in a unique packaging under "Reebok marks" and all the packaging material bear the Plaintiff's "Reebok marks"" very prominently in a unique style. All the footwears of the Plaintiff Company have a label with "Reebok", trademark sewed or heat sealed onto them as well as CS (Comm) No. : 164/2020 2/9 all the apparels have wash/ care instruction label and information on the country of manufacturing.

4. During a market survey conducted in the third week of October, 2020, it came to knowledge of the Plaintiff that Defendant is storing, distributing and selling shoes and other accessories in markets of Uttam Nagar and other parts of Delhi which bear "Reebok marks" of the Plaintiff and/or marks identical and/or deceptively and confusingly similar to "Reebok marks", causing confusion and deception amongst the purchasing public and trade. The use of falsified marks by Defendant which are visually, structurally identical and/or deceptively and confusingly similar to Plaintiff's well-known registered trademark Reebok and its logos (Reebok marks) are unauthorized and illegal. During investigation, Plaintiff also bought the infringing pairs of shoes bearing the trademark Reebok and its logo (Reebok marks) from the Defendant. Defendant is not issuing any invoice/bill for the purchase and carries its business in a very clandestine manner. Affidavit of investigator in this regard as well as photographs of the infringing goods of the Defendant bearing trademarks identical and/or deceptively and confusingly similar to the "Reebok marks" of the Plaintiff and photographs of the original product of the Plaintiff were also attached with the plaint.

5. The shoes and other accessories being displayed, distributed and sold by Defendant bearing falsified mark "Reebok marks" of the Plaintiff Company are not the genuine products and are of very inferior quality. Defendant by falsifying "Reebok marks" of the Plaintiff Company is deceiving the unwary purchasing public and also causing a huge monetary loss CS (Comm) No. : 164/2020 3/9 to the Plaintiff and also diluting the goodwill and reputation of the Plaintiff's trademarks. Use of the trademarks and logos of the Plaintiff by Defendant, as stated, is a deliberate act to ride upon the goodwill and reputation of the Plaintiff. Defendant is infringing the trademarks and logos of the Plaintiff and is passing off its goods and business as that of the Plaintiff and are thereby making illegal gains to himself and causing wrongful loss to the Plaintiff and also the loss of business opportunity to the Plaintiff. Defendant is earning illegal profits on account of the unlawful use "Reebok marks" of the Plaintiff Company and goodwill of the Plaintiff and if the Defendant is not restrained from continuing the same the Plaintiff shall continue to have irreparable losses of business as well as injure the goodwill of its products. Hence, the instant suit was filed alongwith application under order 39 rules 1 & 2 CPC r/w section 151 CPC.

6. After filing of the suit, vide order dated 02.12.2020 ex- parte injunction was granted in favour of plaintiff and against the defendant and the matter was listed for issuance of summons and notice of application to the defendant for 08.01.2021. Defendant was served by way of publication in newspapers ' Rashtriya Sahara' and ' The Statesman' on 28.07.2022. However, it failed to appear before the court or to file written statement within stipulated period. Hence, was proceeded ex-parte vide order dated 24.08.2022 by Ld. Predecessor of this court and matter was listed for PE. Sh. Narendra Singh, AR of plaintiff company was examined as PW1 and arguments were addressed.

7. Plaintiff, in support of its claim, has relied upon following documents:

1. Copy of Power of Attorney dated 28.11.2019 as Ex. PW1/1 (OSR).

2. Copy of Power of Attorney dated 25.04.2022 as Ex. PW1/2 (OSR)

3. Copy of Certificate of Incorporation of Plaintiff Company as Ex. PW1/3 (OSR).

4. Copy of Legal Proceedings Certificate of Trademark Registration no. 2160904 as Ex. PW1/4.

5. Computer Generated copy of Trademark's Registration Certificate, copy of Trademark Journal and Copy of Status Report of Trademark no. 1758838 is Ex. PW1/5.

6. Affidavit under Order XI Rule 6 of CPC, 1908 as Ex.

PW1/6.

7. Affidavit of investigator as Ex. PW1/7.

8. Report of Local Commissioner as Ex. PW1/8.

9. Relevant extracts from the Auditor's Report as Mark 'A'.

10. Photograph of Infringing goods of the defendant as Mark ' B'.

11. Photograph of the original product of the plaintiff as Mark 'C'.

8. As already noted, defendants was proceeded ex-parte and had also not filed written statement along with statement of truth, affidavit of admission and denial of documents as well as its own documents within the stipulated period of 30 days from service and even upto 120 days from the date of service along with an application for condonation of delay.

9. The averments made in the plaint (which is supported with the affidavit and statement of truth) remained uncontroverted, unrebutted and unchallenged for the failure of defendant to file any CS (Comm) No. : 164/2020 5/9 written statement and to contest the matter. I do not find any reason to disbelieve the version of the plaintiff and the averments made in the plaint supported by the documents on record. Coloured pictures of the original goods and fake goods have also been filed alongwith the plaint. In terms of Report of Local Commissioner Ex. PW1/8, huge stock of shoes, apparels and other accessories of brands like Reebok, Puma, Nike, Adidas etc. were found in the premises of defendant. During the inspection/search, 174 pairs of fakes and counterfeited shoes of Reebok alongwith 174 boxes of Reebok were recovered, which all were seized, sealed and packed in baggages. Photographs as well as Inventory of goods seized from the premises of defendant was also filed on record by Local Commissioner.

10. From the perusal of documents on record, it is clear that the defendant has knowingly, intentionally and dishonestly infringed the impugned trademark/label/trade dress of plaintiff; passed of its goods/shoes and business as that of the plaintiff; infringed the plaintiff's copyright in the said Trademark/Label/Trade dress by using, publishing, reproducing the same and defendant apparently is guilty of falsification and unfair trade practices. The mis-conduct of the defendant is in complete violation of plaintiff's statutory and common law rights and amounts to infringement of the registered trademark/label and copyright of the plaintiff.

11. Plaintiff though has prayed for rendition of account of profits earned by the defendant, however, no document/material has been placed on record by the plaintiff. PW1 vide his affidavit of evidence also restricted his claim only qua order of permanent injunction alongwith damages and costs incurred by plaintiff in the present matter and did not press for grant of other reliefs, as was CS (Comm) No. : 164/2020 6/9 mentioned in prayer clause of plaint. For the purpose of computation of damages, plaintiff relied upon cost of 174 pairs of shoes and 174 boxes of infringing products, recovered from the premises of defendant bearing the trademark of the plaintiff company. It was deposed by PW1 that if the quantity seized by the Local Commissioner is the stock for 15 days (considering the fast moving nature of the product) and defendant has been doing business for at least 2 months prior to institution of the case, then the value of defendant's products comes to Rs. 15,68,610/-. Hence, punitive damages worth Rs. 10,00,000/- have been claimed, besides the claim of Rs. 1,65,500/- which had been spent by plaintiff towards the expenses incurred in connection with present proceedings i.e. Fees of Local Commissioner, Attorney Fees, Court Fees and Miscellaneous Expenses.

12. It has been established on record that defendant has infringed the impugned trademark/trade dress of plaintiff; passed off its goods and business as that of the plaintiff; infringed the plaintiff's copyright in the said Trademark/Trade dress by using, publishing, reproducing the same. Suffice it is, if the product of defendant is likely to cause confusion in mind of general public. Plaintiff, therefore, is entitled for damages from defendant.

13. Local Commissioner was appointed and fees of Rs. 45,000/- was incurred by plaintiff towards fees of Local Commissioner, Present suit was filed on 10.11.2020 and total number of about 20 hearings have taken place in the matter. As regards claim of damages, this court is convinced that this is not a case of innocent adoption and defendant's conduct invites the award of damages. Taking a reasonable assessment of the volume of seizure made and nature of infringement indulged into by defendant, in the opinion CS (Comm) No. : 164/2020 7/9 of the court, plaintiff is entitled to nominal damages. Accordingly, plaintiff is awarded sum of Rs. 1,00,000/- (Rs. One lac only) as damages and Rs. 60,000/- towards Local commissioner Fees and Other expenses.

Relief:

14. Instant suit is accordingly decreed with cost in favour of the plaintiff and against the defendant, thereby :

(1) defendant is restrained by itself as also through its partners, agents, representatives, officers, employees, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the Trademark Reebok and its logos and /or any other registered ' Reebok Marks' of the plaintiff on shoes and other accessories in any form and manner and/or trademark identical and/or confusingly or deceptively similar to the trademark Reebok and/or its logo and/or any other registered " Reebok Marks" of the plaintiff. (2) defendant is restrained by itself as also through its partners, agents, representatives, officers, employees, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using any trademark and copyright vested in the trademark Reebok and/or device/logo and/or any other registered " Reebok Marks" of the plaintiff on shoes and other accessories in any form and manner and/or copyright identical and/or confusingly or deceptively similar to the trademark Reebok and/or device/logo and/or any other registered " Reebok Marks" of the plaintiff, in relation to impugned goods and business and/or other allied/related products and from doing any other acts or deed amounting to or likely to:

(i) infringing the registered Trade Marks of the plaintiff

(ii) passing off its goods and business as that of the goods and business of the plaintiff.

(iii) infringing the plaintiff's copyright in the said Trade Mark/Label/Trade Dress by using, publishing, reproducing for the purpose of trade using the identical and deceptively similar impugned trade mark/label for the purpose of its impugned goods and business.

(3) for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trademark/label or any other identical and/or confusingly or deceptively similar trademark/label including labels, display boards, sign board, trade literatures and goods etc. to the plaintiff for the purpose of destruction and erasure.

15. Defendant is further directed to pay an amount of Rs. 1,60,000/- (Rs. One lac sixty thousand only) to the plaintiff towards damages and litigation expenses. If the payment towards decreetal amount is not cleared within one month, thereafter decreetal amount shall be payable alongwith interest at 12% p.a. till realization.

16. Decree sheet be prepared accordingly. After completion of formalities, file be consigned to record room.

SAVITA by SAVITA RAO Date:

                                         RAO    2023.08.01
                                                15:28:29 +0530

Announced in the open               (SAVITA RAO)
court on this 1st day              DISTRICT JUDGE
of August 2023                (COMMERCIAL COURT)-02
                             (S/W) DWARKA COURTS, DELHI



CS (Comm) No. : 164/2020                                      9/9