Delhi District Court
The Pololauren Company L.P vs Ms Ninty Nine Lables P.Ltd on 19 July, 2025
DLND010001032013
IN THE COURT OF DISTRICT JUDGE- 01,
NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
Presided over by :- SH. DHARMENDER RANA (DHJS)
T.M. No. 34/2021
The Polo/Lauren Company L.P.
650, Madison Avenue
New York, N.Y. 1022 USA
.... Plaintiff
Versus
M/s. Ninety Nine Labels Private Limited
Having its Registered Office at
F-213, E/2, 3rd floor,
Lado Sarai, New Delhi-110030
India
Also at
House No.276, Sultan Sadan-1,
Lane No.3, Westland Marg,
Saidulajab,
New Delhi-110030
India .... Defendant No.1
M/s. Faishonista
7/34B, Jangpura-B,
III Floor, Behind Rajdoot Hotel,
New Delhi-110014
......Defendant No.2
TM No.34/21
Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 1 of 25
Suit presented on : 10.09.2013
Judgment pronounced on : 19.07.2025
JUDGMENT
1. The present suit u/s 134 and 135 of The Trademarks Act (hereinafter, referred to as "TM Act") and u/s 55 of The Copyright Act (hereinafter, referred to "Copyright Act".) has been filed by The Pololauren against M/s. Ninety Nine Labels Private Ltd. & Ors seeking the following reliefs:
'(a) For a decree of permanent injunction restraining the Defendants by itself/themselves as also through his/their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from using, manufacturing, marketing purveying, supplying, selling, soliciting, exporting, displaying, advertising through internet, online market place or by any other mode or manner dealing in or using the Plaintiff's Trademark /Label POLO and Device of Polo Player (Annexure-B) or any other word/mark/trade Mark/Label which may be identical with and/or deceptively similar to the Plaintiff's said Trade Mark/Label/Trade Name POLO/POLO RALPH LAUREN/POLO BY RALPH LAUREN and Device of Polo Player (Annexure-A) in relation to their impugned goods and business of readymade garments and all kinds of hosiery goods and allied and cognate products and from doing any other acts or deeds amounting to or likely to;
(i) Infringement of Plaintif's registered Trade Marks as mentioned in Para No. 9 of the plaint
(ii) Passing off and violation of the plaintiff's rights in the Plaintiffs said Trade Mark/Label POLO/POLO RALPH LAUREN/POLO BY RALPH LAUREN and Device of Polo Player (Annexure-A).
(iii) Violation of Plaintiff's proprietary rights in its said Trade Name.
(iv) Infringement of Plaintiff's copyrights in said Trade Mark/Label POLO/POLO RALPH LAUREN/ POLO BY RALPH LAUREN and Device of Polo Player (Annexure-A).
(b) Restraining the Defendants from disposing off or dealing TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 2 of 25 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 the Hon'ble Court during the course of the proceedings and on the Defencants' disclosure thereof and which the Defendants 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 affect the Plaintiff's ability to recover the costs and pecuniary reliefs thereon.
(c) For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative impugned Trade Mark/Label POLO and Device of Polo Player (Annexure-B) or any other word/mark which may be identical with or deceptively similar to the Plaintiff's said Trade Mark/Label POLO/POLO RALPH LAUREN/POLO BY RALPH LAUREN and Device of Polo Player (Annexure-A) including its blocks, labels, display boards, signboards, 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 Defendants 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 to Defendants to disclose the supply and procurement chain of the impugned goods bearing the Plaintiff's said trademarks.
(f) For a direction to Defendants to deregister the impugned website and take down the contents of the aforesaid website infringing the Plaintiff's said Trademarks;
(g) For a direction to block the viewing of the impugned website www.99labels.com for display and/or sale and/or delivery of products bearing the Plaintiff's Trademarks.
(h) For an order for cost of proceedings, and
i) For such other and further order as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case.'
2. Briefly stated: The plaintiff is a limited partnership and is engaged in the business of manufacture, distribution and sale of wide range of apparel & clothing for men, women and children TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 3 of 25 [more broadly menswear, womenswear, childrenswear], clothing accessories, hats, leather goods, shoes, furs, luggage and luxurious home decor including towels, area rugs, wall coverings and tabletop and table covering, sportswear, footwear, fragrances, eyewear, fashion accessories, house wears, jewellery and other allied / related produces. It is averred that ever since its bonafide adoption of trademark POLO in year 1967, the plaintiff has subsequently been using the formative POLO marks word per se and in stylized manner in conjunction with other marks / words and device of polo player. It is further averred that plaintiff in addition to the word per se has been using its formative trademark in conjunction with other words / marks in various stylized and artistic formats with and / or without the device of polo player which have been created and are being created over a period of time viz. POLO, POLO BY RALPH LAUREN, POLO RALPH LAUREN, POLO DENIM, POLO GOLF, POLO JEANS CO., POLO SPORTS, RALF LAUREN, RALF BY RALF LAUREN, RUGBY RALF LAUREN, LAUREN BY RALF LAUREN, RALF LAUREN GOLF and Polo Player Device etc. It is further averred that the word / mark POLO is a key and material part of the plaintiff's trade marks / labels. It is further averred that word POLO is the most essential feature of the plaintiff's trading style / trade name namely "The Polo/Lauren Company L.P." The art works involved in the plaintiff's said trademark / label/ trade name are original artistic works and the plaintiff is the owner and proprietor of the copyright therein and TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 4 of 25 plaintiff has exclusive rights to deal with the said trademark / label/ trade name and has been dealing with them in the course of trade in relation to its said goods and business. It is further averred that in year 2000, plaintiff's official website and online shop were launched as www.polo.com and were re-launched as www.ralphlauren.com in the year 2007. It is averred that plaintiff has also got other domains name registered in its favour namely, www.polo-ralph-lauren.in, www.pologolf.in, www.prl.in, www.global.polo.com. It is averred that in order to secure its statutory rights, the plaintiff also applied for and obtained various trademarks registration around the world including India.
3. It is averred that the plaintiff has also been honestly, bonafidely, continuously, commercially, openly and exclusively been using it's trademarks / labels in relation to the aforementioned goods and business and has acquired worldwide goodwill and reputation and proprietary rights therein. It is further averred that the plaintiff has regularly and continuously been promoting its said distinctive trademark / label/ trade name and the goods and business, thereunder, through extensive advertisements, publicities, promotions, marketing research and has been spending enormous amounts of money, efforts and the time thereon. It is averred that the products of plaintiff are also sold and are accessible within the various commercial interactive sites www.quikr.com, www.b2b.tradeholding.com, www.clickindia.com, www.olx.in, www.indiamart.com etc. TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 5 of 25
4. It is averred that the plaintiff is operating across the globe and innovating since 1967 and reached its height of polularity in the year 1970 when the plaintiff received coty award for menswear. It is further averred that the plaintiff also began to introduce other products into their line including women clothes, shorts, perfume, optical and sunglasses, shoes watches and various leather goods under the said trademark. It is averred that the iconic brand of the plaintiff has built a strong retail and distribution network across India and has grown exponentially. It is further averred that the artwork in various labels are also original artistic work and plaintiff holds copyright thereof. It is averred that the plaintiff maintains strict quality control and is a popular brand catering to the general populace for their leisure and fashion wear. It is averred that the plaintiff has invested hugely in advertising and promotion of its products which are known for their good quality, standards of manufacturing and new technologies on account of which it has gained enviable reputation in India and abroad. It is further averred that to secure its statutory right, the plaintiff also applied and obtained various trademark registrations around the world including India under the Trade Mark Act, 1999.
5. It is further averred that the Plaintiff has been carrying on and promoting its said goods and business electronically and through E-commerce and over the internet through the said TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 6 of 25 domain names and also through various other intermeddler web- sites which are accessible in India. It is averred that the term said trademark of the plaintiff includes its domain name. It is averred that the Plaintiff's said goods and business are known, recognized, demanded, sold and traded world over with reference to its said trade mark. It is averred that the members of the trade industry, the consumers and general public at large world over and in India are well aware of the Plaintiff, the Plaintiff's said trade mark and the Plaintiff's said goods within the meaning of Section 2 (1) (zg) of the Act.
6. It is averred that in view of the plaintiffs proprietary rights, both statutory and common law, in its said trademark, 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 trade mark/trade name/copyrights thereto in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
7. It is averred that defendant no.1 namely, M/s. Ninety Nine Labels Pvt. Ltd. and defendant no. 2 namely, M/s. Fashionista are engaged in displaying, selling, offering for sale, supplying, soliciting and conducting trade through its impugned website of apparel, perfumes, shoes, bags, purses, accessories and other allied/related products under different brands (hereinafter TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 7 of 25 referred to as "the impugned goods" & "impugned business"). It is averred that defendant no.1 is the registrant and owner of the website www.99labels.com (hereinafter referred to as the "impugned website") and defendant no. 2 are supplier, manufacturer, trader or seller of the impugned goods under the impugned trade mark/ label. It is averred that Network Solutions LLC, 13861, Sunrise Valley, Dr #300, Herndon, VA 20171, United States, is the registrar of the impugned website of the Defendant No.1. It is averred that Indian Computer Emergency Response Team (CERT-In) is the administrative body constituted under the provisions of Information Technology Act, with the primary function of providing technical assistance to the Indian Cyber community and for responding to computer security incidents. In addition thereto, CERT-In has the authority to block the viewing of a website in violation of any laws for the time being in force.
8. It is averred that it has recently come to the Plaintiff's notice that defendant no.1, through its impugned website, is conducting its impugned business of the impugned goods and is unauthorizedly and without the express leave and license of the Plaintiff using the Plaintiff's Trademark on its impugned website as also on its impugned goods. It is further averred that defendant no. l is further communicating the Plaintiff's aforesaid Trademarks to the public; displaying, distributing for the purposes of trade, exhibiting the impugned goods and business TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 8 of 25 under the Plaintiff's Trademark; as also letting out for hire or sale and offering a platform to various third parties/businesses to sell, market, exhibit, display and otherwise to deal in the course of trade the impugned goods and business under the Plaintiff's trademark. It is further averred that the Plaintiff in order to verify the authenticity of the goods bearing Plaintiff's Trademark, conducted test purchase from the impugned website of a T-shirt bearing the Plaintiff's said Trademark.
9. It is averred that the impugned website is a platform engaged in providing identical/ deceptively similar goods (in all respect including in idea, visual and audio mode) to the plaintiff's said trademark/label/tradename/domain name. It is further averred that the use of the impugned trademark is in violation of the statutory as well as the common law right of the plaintiff in relation to the said trademark/label/tradename/domain name.
10. It is averred that the impugned website has been selling and/or allowing its sellers to adopt and use its platform 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 Plaintiff's said trademark/label/tradename/domain name. It is averred that the Plaintiff's said trademark/label/tradename/domain name are otherwise being seriously diluted and eclipsed thereby.
TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 9 of 2511. It it further averred that the defendants can also not be exonerated from the charges of indulging with the unethical trade practices, which is not permissible in law and has also been indulged in unfair competition. It is averred that because of the impugned activities being carried out through the impugned website, not only various provisions of the Trade Marks Act, 1999, The Copyright Act 1957 are being violated, but also various provisions of the Information Technology Act 2000 are also being violated.
12. It is averred that the defendants are fully aware of the plaintiff's rights, goodwill, reputations, benefits and users etc. in the plaintiffs said trade mark at the time of his impugned adoption and use of the impugned trade mark. It is averred that the resemblance between the rival trademarks is so close that it can hardly occur except by deliberate imitation.
13. It is further averred that due to the defendant's impugned activities, the plaintiff is suffering huge losses both in business and in reputation and such losses are incapable of being assessed in monetary terms. It is averred that unwary purchasers and traders are being deceived as to the origin of goods or business. It is averred that the Defendant's gains are plaintiff's losses.
14. It is averred that the plaintiff learnt about the Defendant's impugned trade mark violation in the third week of July, 2013, TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 10 of 25 when the plaintiff came across the impugned goods of the Defendants no 1 on the online market place.
15. Against this factual matrix, the plaintiff instituted the instant suit initially against (i) M/s Ninety Nine Label Private Limited (defendant no.1), (ii) Network Solutions, LLC and (iii) Indian Computer Emergency Response Team (CERT-in), however, vide order dated 23.07.2014, subsequently, (ii) Network Solutions, LLC and (iii) Indian Computer Emergency Response Team (CERT-in) were deleted from the array of parties.
During the course of trial, vide order dated 01.04.2017, besides ninety nine labels pvt. Ltd., M/s Fashionista was also impleaded as defendant no.2 in the instant matter.
16. Summons of the instant suit were duly served upon defendant no.1, who has opted to contest the claim of the plaintiff by filing a detailed written statement. However, despite service on 21.12.2017, defendant no.2 has opted not to contest the claim of the plaintiff and was accordingly, proceeded ex-parte vide order dated 18.07.2018.
WRITTEN STATEMENT OF DEFENDANT NO.1
17. It is averred in the written statement filed on behalf of defendant no.1 that this Court lacks the jurisdiction to try the instant suit and no cause of action exist in favour of the plaintiff against the answering defendants. It is averred that defendant TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 11 of 25 no.1 is only an online portal which serves as a platform for brands to have their brand products sold through such online portals. It is further submitted that with the consistent growth in e-commerce and the changing lifestyles, and also in view of the fact that the customer is attracted to discounted and time saving purchases through such online portals like that of the answering defendant, sales through online portals are also of great benefit to the brands, such as the Plaintiff, itself. It is further averred that defendant only accept goods from manufacturers or their licencees or wholesalers or authorized traders and stockists to place it on its online portal for access thereto for purchase by end users. The due diligence employed by the answering defendant to verify the authenticity of such products includes checking the history and reputation of the supplier in the industry, a legal document and contract stating that these products are genuine and/or are procured from genuine sources, a certificate of authenticity and/or a guarantee from the supplier that they can produce certificates of authenticity in case requested. Further, the products are sold to the consumers through the website, which clearly states in its terms and conditions of purchase that the products are procured from suppliers and the defendant is simply providing an interface where the consumer can buy the supplier's products. The remaining contents of the plaint have been disputed and denied and the defendant no.1 has accordingly prayed that the suit is liable to be dismissed.
TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 12 of 25WRITTEN STATEMENT OF DEFENDANT NO.2
18. No written statement has been filed on behalf of defendant no.2 and eventually, defendant no.2 was proceeded ex-parte vide order dated 18.07.2018.
REPLICATION TO THE WRITTEN STATEMENT OF DEFENDANT NO.1
19. The plaintiff has denied the averments made in the written statement filed by defendant no.1 and has reiterated the claim of the plaintiff in the replication.
ISSUES
20. Vide order dated 02.09.2014 following issues were framed :
1. Whether the plaintiff is entitled for decree of permanent injunction as per para 37 (A) as prayed for? OPP
2. Whether the plaintiff is entitled for restraining the defendants from disposing off their assets as prayed for? OPP.
3. Whether the plaintiff is entitled for delivery up of all the impugned finished and unfinished material bearing the impugned and violated trade mark POLO and POLO with logo/device or any other word/mark which may be identical with or deceptive similar to the plaintiff's trade mark/label/trade name POLO including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure as prayed for? OPP.
4. Whether the plaintiff is entitled for an order for rendition of accounts of profits earned by the defendant by their impugned TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 13 of 25 illegal trade activity as prayed for? OPP.
5. Relief.
PLAINTIFF EVIDENCE
21. In order to prove its case, the plaintiff has examined the following witnesses in support of its claim:
21.1 Sh. Arjun Bansal was examined as PW-1, who tendered his evidence by way of affidavit which is Ex. PW-1/A and also relied upon the following documents in evidence:
Sl. no. Name of the document Exhibited as 1 Trade mark/label Ex. PW1/1 2 Screenshorts of impugned website of Ex. PW1/2 defendant no. 1 along with report 3 Copy of invoice of test purchase of Mark D defendant's impugned products 4 Photographs of defendant's impugned Ex. PW1/4 products 5 List and status of plaintiff's trademarks Ex. PW1/5 with copies of LPCs and status report. The LPCs at page no. 17 to 20 and page no. 25, 26, 28 & 29 mentioned at the tope of the pages 6 Sale of plaintiff's product in India Ex. PW1/6(colly) 7 Authorisation letter in favour of Ms. Ex.PW1/7 Surbhi Bansal 8 Authorisation letter in favour of Ms. Ex. PW1/8 Surbhi Bansal and Sh. Gurjeet Singh (colly) TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 14 of 25 9 Authorisation letter in favour of Sh. Ex. PW1/9 Arjun Bansal (colly) 10 Copy of specimen of the plaintiff's Mark A letter of authorization along with buying agency agreement between the plaintiff and its licencees in India 11 Copy of foreign license agreement Mark B 12 Copy of plaintiff's list of licencees, Mark C authorized manufacturer in India FINAL ARGUMENTS
22. Final arguments have been advanced by Sh. Vibhor Sethi on behalf of the plaintiff.
REASONING AND APPRECIATION OF MATERIAL ON RECORD
23. Arguments have been heard, record has been perused and submissions considered.
ISSUEWISE FINDINGS
24. (Issue no.1) Whether the plaintiff is entitled for decree of permanent injunction as per para 38 (A) as prayed for? OPP 24.1 The plaintiff has led evidence of PW-1 Mr. Arjun Bansal affirming the averments made in the plaint. The plaintiff claims to have been using the trade mark/ label/trade name POLO as a Trade Mark in relations to its said goods and business. In addition to that it is clarified that the plaintiff over a period of TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 15 of 25 time has been using its said trade mark in various styles and artistic forms. The specimen of the plaintiff's trade mark/ label/trade name has been proved as Ex. PW-1/1. The specimens of the defendant's trade mark/ label/trade name, as reflected in the screen shot of the impugned website (Ex. PW-1/2), in relation to the impugned goods (T-shirt) is evidently in complete violation of plaintiff's statutory and common rights in Trademark and Copyright.
24.2 The plaintiff has claimed that the trade mark/ label/trade name with respect to apparel and articles is recognized as a well known trade mark/ label/trade name within the meaning of the provisions of Section 2(i) (zg) of the Trade Mark Act 1999. The defendants were fully aware of plaintiff's rights, goodwill, reputation etc and have adopted and started using the impugned trade mark/ label/trade name dishonestly with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff. There is no rebuttal to the testimony of the plaintiff and the plaintiff has therefore, established from the record that the defendant's use of impugned trade mark/ label/trade name POLO in relation to trade of the T- shirt with deceptively similar marks to the plaintiff's trademarks amounts to infringement of registered trade mark of the plaintiff under Section 29 of Trade Marks Act 1999 and also amounts to passing off under Section 27 (2) of the Trade Marks Act, 1999 and Copyright Act.
TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 16 of 2524.3 Section 29 of the Trade Mark Act 1999 accords special protection to the registered trademark and grants an injunction even if the goods of the defendant are similar or dissimilar. Section 29 of the Act is as 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 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.
(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 TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 17 of 25 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 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.
24.4 Further, the law of passing off provides a remedy against a false representation tending to deceive customers into believing that the goods which the defendant is selling are really the plaintiff's. The false representation may be by statement or by conduct i.e. by adopting the distinctive mark, name, design, get up or appearance of another goods. The basic question in this tort is that whether the defendant's conduct is such so as to tend to mislead the public to believe that the defendant's business is the TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 18 of 25 plaintiff's or to cause confusion between the activities of the two.
24.5 The testimony of Mr. Arjun Bansal (PW1) is unchallenged and uncontroverted. The unimpeached testimony of PW-1 conclusively establishes that the defendants were engaged in the surreptitious and clandestine sale of counterfeit goods, which are deceptively similar to the goods of the plaintiff, without any authority. Consequently, the plaintiff is competent to protect his proprietary rights against any unlawful infringement. The Court is thus, convinced that the defendants have by their such acts with malafide intent passed off their goods as that of the plaintiff and tried to make benefit out of the goodwill and reputation enjoyed by the plaintiff. Further, by doing so, the defendants have been diluting the reputation and goodwill of the plaintiff's trade mark/ label/trade name and also been misleading the customers. Therefore, the plaintiff is entitled to reliefs in terms of paragraph no. 38(a). The issue is accordingly decided in favour of the plaintiff.
(Issue no.2) Whether the plaintiff is entitled for restraining the defendants from disposing off their assets as prayed for? OPP.
25. The onus to prove this issue was upon the plaintiff.
25.1 The unrebutted testimony of Mr. Arjun Bansal (PW-1) conclusively establishes on record that the defendants are indulged in selling counterfeit articles in violation of the TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 19 of 25 plaintiff's trademark and copyright. The defendant no.1 in the written statement has asserted that they accept goods only from manufacturers, their licensees, wholesellers or authorized traders and stockiest. The defendants have failed to provide any conclusive evidence evincing any contractual arrangement between the plaintiff and the defendants authorizing the defendants to deal with the articles carrying the plaintiff's trademark/ logo. In these circumstances, the defendants cannot be permitted to deal with the articles infringing the plaintiff's trademark and copyright. This Court is of the opinion that the defendants had been clearly indulging in infringement of plaintiff's statutory as well as common law rights. The Court is convinced that the defendants have by their such acts with malafide intent passed off their goods as that of the plaintiff and tried to make benefit out of the goodwill and reputation enjoyed by the plaintiff. Further, by doing so, the defendants have been diluting the reputation and goodwill of the plaintiff's trade mark/ trade name/ label and also been misleading the customers. The issue is accordingly, decided in favour of the plaintiff and against the defendants.
(Issue no.3) whether the plaintiff is entitled for delivery up of all the impugned finished and unfinished material bearing the impugned and violated trade mark POLO and POLO with logo/device or any other word/mark which may be identical with or deceptive similar to the plaintiff's trade mark/label/trade name POLO including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure as prayed for? OPP.
TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 20 of 2526. The onus to prove the issue was upon the plaintiff.
26.1 The averments of the plaint that the defendant is involved in selling counterfeit articles infringing the plaintiffs intellectual proprietory rights has remained unchallanged and uncontroverted. The plaintiff is accordingly entitled for delivery up of all the impugned finished and unfinished materials bearing the impugned trademarks/labels or any other word/mark which may be identical with or deceptively similar to the plaintiff's said trademarks/labels including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
26.2 Accordingly, the issue is decided in favour of the plaintiff and against the defendants.
(Issue no.4) Whether the plaintiff is entitled for an order for rendition of accounts of profits earned by the defendant by their impugned illegal trade activity as prayed for? OPP.
27. The onus to prove the issue was upon the plaintiff.
27.1 As regards the claim for a decree for rendition of accounts as sought by paragraph no.38(d), no evidence of profits illegally earned by the defendants by the use of trade mark / trade name /label of the plaintiff and from selling deceptively similar goods as well as by infringement of copyright is on record. However, it TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 21 of 25 has been held in Disney Enterprises, INC vs. Mr. Rajesh Bharti & Ors CS(OS) 1878/2009 & IA 12833/2009 decided by High Court of Delhi on 13.02.2013.
'...15. Moreover, in India courts are sensitive to the growing menace of infringement and have started granting punitive damages even in cases where due to absence of the defendants exact figures of sales by the defendants under the infringing copyright and/or trademark exact damages are not available. This Court in The Heels Vs. V.K. Abrol & Anr., CS(OS) 1385/2005 decided on 29th March, 2006 while granting damages has held "This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that an enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable."
16. Further, this Court in Microsoft Corporation Vs. Rajendra Pawar & Anr., CS(OS) 530/2003 decided on 27th July, 2007 has held "Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the defendant"s conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective."
17. This Court is also of the view that before award of damages it is not necessary that the plaintiff must show some particular benefit has accrued to the defendant or that the plaintiff must satisfy the Court by leading evidence that it has suffered actual loss. In Microsoft Corporation Vs. Ms. K. Mayuri & Ors., 2007 (35) PTC 415 Del., this Court has held "The practice of grant of exemplary damages needs to be strengthened particularly in those cases where flagrant infringement is found. Such an exercise of power is not to be fettered by any requirement that the plaintiff must show some TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 22 of 25 particular benefit which has accrued to the defendant or that the plaintiff must satisfy the court by leading evidence that he has suffered actual loss. In a case where the plaintiff proves such actual loss, he would be entitled to the same. However, even without such a proof, in case of flagrant infringement, the court has the complete discretion to make such award of damages as may seem appropriate to the circumstances, so that it acts as deterrent. In some cases, it is not possible to prove the actual damages, namely, that there is a normal rate of profit or that there is a normal or establish licensed royalty. Yet, clearly, the damages have to be assessed."
27.2 As it is apparent that the plaintiff's trade mark/ trade name/label is well known and is therefore, required to be protected hence, considering that the nature of counterfeit goods would have adversely impacted the business and reputation of the plaintiff, and punitive damage of @Rs.50,000/- is fixed to be paid by the defendant no.1.
It would be apt to observe here that besides providing the name of defendant no.2 i.e. M/s. Fashionista, the plaintiff has failed to provide the essential particulars of defendant no.2. The record is silent about the legal status of defendant no.2. It is not clear as to if defendant no.2 is a private limited company, a proprietorship concern or any other legal entity. Consequently, no effective decree can be passed against defendant no.2 for want of necessary particulars.
The issue is accordingly decided in favour of the plaintiff and against the defendants.
RELIEF
28. As a cumulative effect, the suit of the plaintiff is decreed TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 23 of 25 and it is hereby directed that
i) The defendants and anybody claiming under them is permanently restrained by itself/themselves as also through his/their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark POLO, [as word mark or in label form with or without the logo/device or any other word/mark which may be identical with and/or deceptively similar word/mark to the plaintiff's said trademark POLO [as word mark or in label form with or without the logo/device) in relation to their impugned goods and business of tags, buttons, labels, packaging materials and other allied/related products.
ii) Defendants are further directed not to infringe plaintiff's aforesaid registered trademark POLO [as word mark or in label form with or without the logo/device of polo], passing off, violation of the plaintiff's rights in the plaintiff's said trademark POLO and POLO with logo/device of polo, violation of plaintiff's proprietary rights in its trade name i.e POLO and infringement of plaintiff's copyrights in its POLO Label.
iii) Defendants are further directed to delivery up of all the impugned finished and unfinished materials bearing the TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 24 of 25 impugned trademarks/labels or any other word/mark which may be identical with or deceptively similar to the plaintiff's said trademarks/labels including its blocks, labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
29. The defendant no.1 is also directed to pay a sum of Rs.50,000/- to the plaintiff by way of damages.
30. Cost of the suit is also awarded to the plaintiff.
31. Decree sheet be prepared accordingly.
32. Suit of the plaintiff is accordingly, decreed.
33. File be consigned to record room after necessary Digitally signed by compliance. DHARMENDER RANA DHARMENDER RANA Date: 2025.07.19 16:30:01 +0530 Pronounced in open Court (Dharmender Rana) on 19.07.2025 District Judge-01, New Delhi District, Patiala House Courts, New Delhi TM No.34/21 Polo Lauran. Vs. Ninety Nine Labels Private Ltd. Page 25 of 25