Delhi District Court
M/S Lacoste S.A vs Rakesh Goyal on 8 July, 2023
DLND010010592014
IN THE COURT OF ADDITIONAL DISTRICT JUDGE- 01,
NEW DELHI DISTRICT, PATIALA HOUSE COURTS,
NEW DELHI
Presided over by :- MS. VIJETA SINGH RAWAT (DHJS)
T.M. No. 41/21
M/s Lacoste S.A.
8, rue de Castiglione-75001
Paris, France .... Plaintiff
Versus
1.Rakesh Goyal 851, (B-23) MCD no. 2498, Cheema Chowk Road, Industrial Area-A, Ludhiana Punjab.
2. M/s Kwality Overseas Ltd.
851, (B-23) MCD no. 2498, Cheema Chowk Road, Industrial Area-A, Ludhiana Punjab.
.... Defendants
Suit presented on : 22.07.2014
Arguments concluded on : 04.03.2023
Judgment pronounced on : 08.07.2023
TM NO. 41/21
M/s Lacoste S.A. Vs. Rakesh Goyal Page 1 of 13
EX-PARTE 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 M/s Lacoste S.A. against "Rakesh Goyal" and "M/s Kwality Overseas Ltd." seeking a decree of permanent injunction; infringement of plaintiff's registered trademark LACOSTE [as word mark or in label form with or without the logo / device of crocodile]; passing off and violation of plaintiff's rights in the plaintiff's trademark LACOSTE; violation of plaintiff's proprietary rights in its trade name i.e. LACOSTE; infringement of plaintiff's copyrights in its LACOSTE label; restraining the defendants from disposing off or dealing with their assets; delivery up of all the impugned finished and unfinished materials bearing the trademark LACOSTE and rendition of accounts.
2. Briefly stated, it is the case of the plaintiff that it is a company duly registered under the laws of France and engaged in the business of manufacturing, distribution and sale of wide range of clothing, footwear, perfume, leather goods, watches, eyewear and other allied / related products under its various trademarks as mentioned in the list of plaintiff's registered Trademarks / labels annexed with the plaint. According to the averments, the plaintiff is operating across the globe and innovating since 1933, the year it created and patented the first tennis shirt under the trademark LACOSTE with crocodile logo. It is TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 2 of 13 stated that the iconic brand of the plaintiff has built a strong retail and distribution network across India and has grown exponentially. The plaintiff specifically claims ownership of trademark label LACOSTE [as word mark or in label form with or without the logo / device of crocodile] which were registered under the TM Act. It is also stated that the artwork in various labels are also original artistic work and plaintiff holds copyright thereof. It has also been explained that the plaintiff maintains strict quality control and is a popular brand catering to the general populace for their leisure and fashion wear. It has been claimed 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 stated that to secure its statutory right, the plaintiff also applied and obtained various trademark registrations around the world including India which are valid and subsisting. The details are as under:
Sr. Trade Mark Application Class Status Regn/ Valid No no. Appl. upto/ Date Renewed upto 1 LACOSTE 189521 25 Registered 18.3.59 (word mark) 2 LACOSTE 400265 25 Registered 19.1.83 19.01.11 Device 3 CROCODILE 400267 25 Registered 19.1.83 19.01.11 DEVICE 4 LACOSTE 516872 25 Registered 15.9.89 15.09.09 Device of TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 3 of 13 Crocodial 5 LACOSTE 610604 25 Adv. 28.10.9 (word mark) before 3 Accep.
6 CROCODILE 893320 25 Registered 21.12.9 21.12.19 (word Mark) 9 7 CROCODILE 400270 3 Registered 19.1.83 19.01.14 DEVICE 8 LACOSTE 2062565 3 Pending 02.12.1 L!VE 0 9 CROCODILE 400269 9 Registered 19.1.83 19.01.14 10 LACOSTE 516862 9 Registered 15.9.89 15.09.20 Device 11 LACOSTE 449343 9 Registered 06.2.86 06.02.17 Device 12 LACOSTE 516863 14 Registered 15.9.89 25.09.92 (word mark) 13 LACOSTE 2062567 14 Pending 02.12.1 L!VE 0 14 CROCODILE 400268 14 Registered 19.1.83 19.01.14 DEVICE 15 LACOSTE 516864 18 Registered 15.9.89 15.09.20 (DEVICE) 16 LACOSTE 482181 24 Registered 03.12.8 03.12.18 7 17 LACOSTE 516865 24 Registered 15.8.89 Device of Crocodile 18 LACOSTE 516873 26 Registered 15.9.89 15.09.20 Device of Crocodile 19 LACOSTE 610605 26 Registered 28.10.9 28.10.13 (word mark) 3 TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 4 of 13 20 LACOSTE 516874 28 Registered 15.9.89 15.09.20 Device of crocodile 21 LACOSTE 533681 28 Registered 19.7.90 19.07.14 (word mark) 22 LACOSTE 1373629 3, 9, Registered 25.7.05 25.07.15 (word mark) 14 & 18
3. However, the plaintiff is now aggrieved that the defendants are engaged in manufacturing and marketing of clothing, readymade garments and other allied / related products infringing the trademark LACOSTE [as word mark or in label form with or without the logo / device of crocodile]. It is alleged that the defendants are also indulging in counterfeiting the product of the plaintiff in complete violation of plaintiff's statutory as well as common law right as the trademarks / labels adopted by the defendants are identical with and deceptively similar to the plaintiff's trademarks / labels phonetically, visually as well as structurally. It is stated that even the artistic features of the trademarks / labels have been copied by the defendants infringing the copyrights. Additionally, the defendants are also dealing with same /similar / allied / cognate goods and business as that of the plaintiff which is likely to lead the consumers to wrongly link the goods of the defendants with that of the plaintiff. Since, the defendants are neither a proprietor of the trademarks / labels and is using so without the leave and license of the plaintiff, there is violation of plaintiff's right. The defendants are also accused of adoption and user of Trademark of the plaintiff and thus passing off TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 5 of 13 the goods as that of the plaintiff. Thus, the plaintiff is aggrieved that the activities of the defendants have caused huge loss to the plaintiff's business and reputation as unwary purchasers and traders have been deceived.
4. Pursuant to summons issued, the defendants appeared and filed written statement in which the following preliminary objections have been raised:
a) That the plaintiff has not approached the Court with clean hands.
b) That the suit has not been duly instituted as the AR of the plaintiff is not duly authorized.
c) That this Court does not have territorial jurisdiction to try the suit.
4.1 On merits the statutory and common law rights of the plaintiff in work/mark/label LACOSTE is denied stating that there are major players in the market who are also using the device of CROCODILE and are registered proprietors of the trademark CROCODILE. It is also denied that the plaintiff is owner of copyrights in the artistic work of word/ mark LACOSTE ISSUES
5. Vide order dated 07.04.2015 following issues were framed :
1. Whether the defendant has infringed the plaintiff's trademark TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 6 of 13 and / or passed off the goods as those of the plaintiff?
2. Whether the plaintiff is entitled to any damages and / or rendition of accounts? If so, at what extent?
3. Relief.
6. Thereafter, none appeared on behalf of the defendants and were proceeded ex-parte vide order dated 25.02.2019 and the matter was adjourned for ex-parte PE. However, on one pretext or the other, plaintiff evidence could not be recorded. Thereafter, on 01.11.2021 plaintiff evidence stood closed and the matter was fixed for final arguments.
7. Vide order dated 22.07.2014, ex-parte ad interim injunction was granted and Local Commissioner was appointed to seize all impugned products and prepare an inventory of the same.
8. Thereafter, Ms. Promila Kapoor, Ld. Local Commissioner, executed the commission on 24.07.2014 and seized approximately 12,396 pieces of finished T-shirts with 'LACOSTE' label alongwith loose plastic wrappers, tags, fabric, strings, strips, buttons, thread and approximately 7000 pieces of unfinished T-shirts with logo/trademark "LACOSTE" were found at the premises of the defendants.
9. However, vide order dated 01.11.2021 no ex-parte PE has been led and relying upon Lt. Foods Limited vs. Saraswati Trading Company, CS(Comm) 413/2021 decided by High Court of Delhi on 11.11.2022, Disney Enterprises, INC vs. Mr. Rajesh Bharti & Ors, CS(OS) 1878/2009 & I.A. 12833/2009 decided by High Court of TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 7 of 13 Delhi on 13.02.2013 and Lilly ICOS LLC & Anr. vs. M/s. Scilla Biotechnologies Pvt. Decided by High Court of Delhi on 11.12.2008, it has been submitted that the suit be decreed.
10. Arguments have been heard, record has been perused and submissions considered.
11. It has been held in Lt. Foods Limited vs. Saraswati Trading Company, CS(Comm) 413/2021 decided by High Court of Delhi on 11.11.2022 as under:
'...13. The settled legal position is that the Local Commissioner's report can be read in evidence in terms of Order XXVI Rule 10(2) CPC. In M L Brother LLP v. Mahesh Kumar Bhrualal Tanna [CS(COMM) 126/2022, date of decision 12th May, 2022] this Court held as under:
"10. Order 26 Rule 10(2) CPC stipulates that the report of the Commissioner and the evidence taken by the Commissioner shall be evidence in the suit and shall form part of the record. The said provision reads as under:
10. Procedure of Commissioner.-- (1) The Commissioner, after such local inspection as he deems necessary and after reducing to writing the evidence taken by him, shall return such evidence, together with his report in writing signed by him, to the Court.
(2) Report and depositions to be evidence in suit.
Commissioner may be examined in person.--The report of the Commissioner and the evidence taken by him (but not the evidence without the report) shall be evidence in the suit and shall form part of the record; but the Court or, with the permission of the Court, any of the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report, or as to his report, or as to the manner in which he has made the investigation."
11. In Levi Strauss & Co. v. Rajesh Agarwal 2018 IAD (Delhi) 622, this Court examined the said provision and held that once the Commissioner has filed the evidence along with his report, it becomes evidence in the suit itself. Under Order TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 8 of 13 26 Rule 10(2) CPC it is not mandatory to examine the Commissioner to admit the report of the Commissioner as evidence in the suit. The relevant observations are as under:
8. The Local Commissioner is in fact a representative of the Court itself and it is for this reason that Order 26 Rule 10 (2) of CPC clearly provides that once the Commissioner has filed the evidence along with his report the same shall be treated as evidence in the suit and shall form part of the record. XXX XXX XXX
10. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e., the Commissioner is appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has an option to examine the Commissioner personally in open Court. Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report. In the present case, a perusal of the written statement filed by the Defendant clearly reveals that the Defendant does not challenge the Commissioner's report. Para of the written statement is set out below..."
12. This position of law has been reiterated by this Court in Vinod Goel v. Mahesh Yadav [RFA 598/2016 decided on 23rd May, 2018] wherein the Court observed as under:
"7. It is the settled proposition in law that when a Commissioner is appointed, he acts as the officer of the Court and it is not necessary for the Commissioner to be examined. This is clearly laid down by the Supreme Court in Misrilal Ramratan & Ors. Mansukhlal & Ors. v. A. S. Shaik Fathimal & Ors., 1995 Supp (4) SCC 600, wherein the Court held as under:
"It is now settled law that the report of the Commissioner is part of the record and that therefore the report cannot be overlooked or rejected on spacious plea of non-examination of the Commissioner as a witness since it is part of the record of the case." 8. Even this Court, recently in Levis Strauss v. Rajesh Agarwal [RFA 127/2007 decision dated 3rd January, 2018], held as under: "11. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e. the Commissioner is appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 9 of 13 an option to examine the Commissioner personally in open Court. Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report."
9. Mr. Prag Chawla clearly concedes that there may be no requirement to examine the Local Commissioner once the Commissioner is appointed by a Court.
10. Under these circumstances, since the Commissioner had visited the suit property and had submitted the report, it is deemed appropriate that the matter is remanded back to the Trial Court to decide the matter afresh after taking into consideration the report of the Local Commissioner, Mr. Y.D. Nagar dated 5th January, 2000 in Suit No.2198/1999.
13. In view of Order 26 Rule 10(2) CPC and the judgments discussed above, the settled legal position that emerges is that the report of the Local Commissioner can be treated as evidence in the suit where it is not challenged by any party. Accordingly, in the present case the report of the Local Commissioner and the contents therein can be relied upon by the Court as evidence as the same is unchallenged."
14. Considering the report of the Local Commissioner which has been prepared and the evidence which has been collected by the Local Commissioner as also the non-filing of the written statement, this Court is of the opinion that no ex parte evidence is required in this matter. This view is supported by the decisions of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014] and Cross Fit LLC v. RTB Gym and Fitness Centre [CS(COMM) 543/2021, date of decision 6th September, 2022]"
12. Thus, considering that the defendants did not file any objections to the report filed by the Ld. Local Commissioner, the Court is proceeding to consider the same.
13. As already observed above, as no objections were filed to these reports and as they can be relied upon as evidence, 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 TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 10 of 13 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. Therefore, the plaintiff is entitled to reliefs in terms of paragraph no. 36(a).
14. As regards the claim for a decree for rendition of accounts as sought by paragraph no.36(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 has been held in Disney Enterprises, INC (Supra):
'...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, TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 11 of 13 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 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."'
15. 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, a nominal compensatory and punitive damage @Rs.3,00,000/- is fixed to be paid TM NO. 41/21 M/s Lacoste S.A. Vs. Rakesh Goyal Page 12 of 13 by the defendant
16. In view of the above discussions, the suit is decreed for prayer clause (a) & (d) alongwith cost.
17. Decree sheet be prepared on filing of ad-valorem Court fees.
18. File be consigned to records.
Pronounced in open Court
on 08.07.2023 (Vijeta Singh Rawat)
Additional District Judge-01,
New Delhi District,
Patiala House Courts,
New Delhi
TM NO. 41/21
M/s Lacoste S.A. Vs. Rakesh Goyal Page 13 of 13