Reflect Sculpt Private Ltd. & Anr vs Dipesh Maheshwari & Anr on 3 April, 2024

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Delhi High Court - Orders

Reflect Sculpt Private Ltd. & Anr vs Dipesh Maheshwari & Anr on 3 April, 2024

Bench: Sanjeev Narula

                                    $~40
                                    *           IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +           CS(COMM) 277/2024
                                                REFLECT SCULPT PRIVATE LTD. & ANR.                                                 ..... Plaintiffs
                                                                                      Through:                 Mr. J. Sai Deepak, Advocate with Mr.
                                                                                                               Siddharth Bambha, Mr. Luv Virmani,
                                                                                                               Ms. Sucharu Garg and Mr. Abhirath
                                                                                                               Parashar, Advocates.

                                                                                      versus

                                                DIPESH MAHESHWARI & ANR.                                                          ..... Defendants
                                                                                      Through:                 None.

                                                CORAM:
                                                HON'BLE MR. JUSTICE SANJEEV NARULA
                                                                                      ORDER

% 03.04.2024 I.A. 7451/2024 (application under Section 151 of code of Civil Procedure, 1908 on behalf of the Plaintiffs seeking exemption from advance service upon Defendants)

1. Plaintiffs seek urgent interim relief against counterfeit products and for this purpose, an ex-parte appointment of Local Commissioner is also sought. Therefore, in the peculiar facts and circumstances of this case, exemption from effecting advance service upon the Defendants is granted.

2. The application is allowed and disposed of.

I.A. 7449/2024 (application on behalf of the Plaintiffs under Section 12A of the Commercial Courts Act, 2015 read with Section 151 of the Code of Civil Procedure, 1908)

3. As the present suit contemplates urgent interim relief, in light of the CS(COMM) 277/2024 Page 1 of 16 This is a digitally signed order.

4. Disposed of.

I.A. 7450/2024 (application under Section 151 of the Code of Civil Procedure, 1908 seeking exemptions from filing English translation of the documents in vernacular languages and permission to file copies/dim documents as it is and without prescribed margin)

5. Exemption is granted, subject to all just exceptions.

6. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.

7. Accordingly, the application stands disposed of.

I.A. 7452/2024 (application on behalf of the Plaintiffs under Section 151 of the Code of Civil procedure, 1908 seeking exemption from filing the documents in separate volumes)

8. Exemption is granted from filing documents in separate volumes.

9. Disposed of.

I.A. 7453/2024 (application under Section 149 read with Section 151 of the Code of Civil Procedure, 1908 seeking permission for filing the court fee within two weeks from filing the present suit)

10. For the grounds and reasons stated therein, the application is disposed of with the direction that time period for filing court fees is extended by a period of two weeks from today.

2023 SCC OnLine SC 1382.

CS(COMM) 277/2024 Page 2 of 16

This is a digitally signed order.

11. Let the plaint be registered as a suit.

12. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.

13. Liberty is given to the Plaintiffs to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiffs, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

14. List before the Joint Registrar for marking of exhibits on 4th July, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

15. List before Court for framing of issues thereafter.

I.A. 7447/2024 (application on behalf of the Plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908)

16. Mr. J. Sai Deepak, counsel for Plaintiffs, has presented the following facts and contentions:

16.1. Plaintiff No. 2, Mr. Gaurav Gupta, the director and promoter of Plaintiff No. 1, Reflect Sculpt Private Ltd., is one of the top international fashion designers and is well-renowned in the fashion industry for his CS(COMM) 277/2024 Page 3 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:18 signature fashion styles. The signature styles created by the Plaintiff No. 2 are known for their sculpture-like garments, embroideries in three dimensions, volume play and extempore draping. Plaintiff No. 2 started their business almost 18 years ago after obtaining a design qualification from a prestigious art institute in Saint Martins' College of Art and Design, London.

16.2. Plaintiff No. 2 claims copyright in the artistic works in the form of sketches, on the basis of which the Plaintiffs' garments are designed. The artistic work that is initially sketched on paper is thereafter transformed into finished garments by skilled craftsmen, and not produced through an industrial process. The concept technique of 'sculpted boning' in the garments is a unique and distinct feature of Plaintiffs' work. The fabric of the garments has a structure-like look and feel, and is moulded and handcrafted into 3-dimensional artistic works. Accordingly, the artistic works in the drawings and sketches created by Plaintiff No. 2 as well as the hand-crafted garments themselves as per Section 2(c) of the Copyright Act, 1957 ["Copyright Act"], is claimed by the Plaintiffs2. 16.3. Plaintiffs' hand-crafted garment bearing style No. 'TUX-150', which is the subject matter of the present suit, is registered as a design vide design Application No. 378236-004 under the Designs Act, 2000 ["Designs Act"]. Plaintiffs had also applied for design registrations for their styles No. GW- 754 (Application No. 371590-008) and GW-586 (Application No. 340464-

009), however, the said applications were abandoned and refused 2 Since the creative works are done either by Plaintiff No. 2 for and on behalf of Plaintiff No. 1, or on the basis of his concept, guidance and instructions by employees of Plaintiff No. 1, thus, Plaintiff No. 1 is the first owner of copyright in all the sketches of the garments as well as the garments themselves under Section 17(c) of the Copyright Act.

CS(COMM) 277/2024 Page 4 of 16

This is a digitally signed order.

16.4. Plaintiff No. 2 also claims exclusive publicity rights in his name 'GAURAV GUPTA', owing to the reputation enjoyed by him. Furthermore, Plaintiffs have also applied for registration of his mark 'GAURAV GUPTA' under the Trade Marks Act, 1999 ["TM Act"], registration details whereof are set out hereunder:

                                          Trademark                     Registration                  Date                 Classes     User Details
                                                                        No.

                                          GAURAV                        4185205                       23.05.2019           6, 14, 18, Proposed to
                                          GUPTA                                                                            19 & 20     be used

                                          GAURAV                        2425635                       08.11.2012           25, 35 & 41 01.07.2006
                                          GUPTA

16.5. Plaintiffs have incurred significant expenditure in advertising, marketing and promoting their products under the trademark/ trade name 'GAURAV GUPTA'. Consequently, Plaintiff No. 2's designs have acquired considerable reputation, having been recognized by prestigious platforms and received several awards, details whereof have been included in Paragraph No. 4 of the plaint. This goodwill and reputation are further demonstrated by the substantial revenue earned by Plaintiff No. 1 company. Details of such expenditures and sales figures have been delineated at Paragraphs No. 21 and 22 of the Plaint. Moreover, Plaintiff No. 2's fame as a designer of garments for men and women is claimed on the basis of his customers, who include Indian as well as international celebrities such as CS(COMM) 277/2024 Page 5 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:21 Beyonce, Cardi B, Aishwarya Rai Bachchan, Ranveer Singh, Ayushmann Khurrana, Karan Johar, etc. 16.6. In the present case, Plaintiffs are aggrieved by the infringing activities of the Defendants, who are engaged in the business of creating, manufacturing, advertising, and selling counterfeit garments, such as gowns, lehengas, etc., which are replicas/ substantial imitations of the Plaintiffs' unique and artistic garments at low/ cheap prices ["Impugned Products"]. Defendant No. 1, Mr. Dipesh Maheshwari, claims to be the 'Managing Director' of Defendant No. 2- 'Satrang Apparels', and the 'Former Owner' of one 'Satrang Sarees', whereas Defendant No. 2 is a chain of stores in Pitampura, New Delhi, having online presence through its Facebook page3 and Instagram page [@satrangdelhi]4.

16.7. Upon conducting an online investigation, the Plaintiffs found that the Defendant No. 1 has uploaded and advertised the Impugned Products on his Facebook page, directing potential customers to 'Visit the Flagship Store of Satrang'. Thereafter, Plaintiffs' representative visited the Defendants' store located at 'Shop No. 44, Nishant Kunj Market, Near Kohat Enclave Metro Station, Pitampura, New Delhi - 110034', wherein it was confirmed by the Defendants' employees that they extensively engage in 'replica making' and even provide services to customize/ stitch various 'Gaurav Gupta' designs. To demonstrate the manner in which the Defendants have attempted to slavishly imitate/ reproduce the Plaintiffs' original artistic works, including drawings, sketches, and dresses, which are protected under the Copyright Act and Designs Act, reliance is placed on the following comparison chart:

Link: https://www.facebook.com/satrangapparels/ 4 Link: https://www.instagram.com/satrangdelhi/ CS(COMM) 277/2024 Page 6 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:23 S. Plaintiffs' original Plaintiffs' original garments Counterfeit Garments No sketches/ drawings along with style code by the Defendants

1. GW - 754 GW - 754 CS(COMM) 277/2024 Page 7 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:25

2. GW - 586 GW - 586 CS(COMM) 277/2024 Page 8 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:26

3. TUX - 150 TUX - 150 CS(COMM) 277/2024 Page 9 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:27

4. GW - 688 GW - 688

5. GW - 641 GW - 641 CS(COMM) 277/2024 Page 10 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:28

6. LEH - 172 LEH - 172 CS(COMM) 277/2024 Page 11 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:30 16.8. The Defendants is therefore clearly infringing on the Plaintiff's copyrights and registered designs to advertise and promote the Impugned Products. In such circumstances, the Plaintiffs have filed the instant suit seeking protection of their statutory rights.

17. The Court has considered the aforenoted submissions. From the side- by-side comparison set out above, it is evident that the garments being manufactured and sold by the Defendants are identical to the designs and garments of the Plaintiffs, with the exception of minor differences in the colours used. Thus, the Impugned Products are a blatant replication of the Plaintiffs' original artistic works, thus amounting to infringement of the Plaintiffs' copyrights in the said works and the Plaintiffs' Design Application No. 378236-004. It is pertinent to note that since the Plaintiffs' products are hand-crafted and not produced through an industrial process, in addition to the fact that not more than fifty pieces of the said products have been sold, prima facie the bar of Section 15(2) of the Copyright Act would not be applicable. Further, the copyright in the Plaintiffs' drawings for their designs are also liable to be protected from infringement in view of the fact that Section 14(1)(c) read with Section 51 of the Copyright Act would preclude the reproduction or depiction of a two-dimensional work in three- dimensional form.

18. In view of the above, the Court finds that the Plaintiffs have made out a prima facie case in their favour for grant of an ex-parte ad-interim injunction, as in absence of such an injunction, irreparable harm would be caused to the Plaintiffs; balance of convenience also lies in favour of the Plaintiffs and against the Defendant.

19. Accordingly, till the next date of hearing, an ex-parte ad-interim CS(COMM) 277/2024 Page 12 of 16 This is a digitally signed order.

19.1. The Defendants, and/or anybody acting on their behalf, are restrained from manufacturing, reproducing, selling/ offering for sale, advertising or promoting any garments which are a colourable imitation and/ or substantial reproduction of the Plaintiffs' drawings, garments and styles No. GW-754, GW-586, TUX-150, GW-688, GW-641, and LEH-172 (which have been depicted above), and/or in any manner imitating the designs, styles and artistic works of the Plaintiffs.

19.2. The Defendants are directed to take down all the content from their social media pages, including YouTube, Instagram, and Facebook, which utilise/ show the Plaintiffs' drawings, garments and styles No. GW-754, GW-586, TUX-150, GW-688, GW-641, and LEH-172 (as depicted above).

20. Issue notice to the Defendant, upon filing of process fee, by all permissible modes, returnable on the next date of hearing.

21. Reply, if any, be filed within four weeks from date of service. Rejoinder thereto, if any, be filed within two weeks thereafter.

22. Compliance of Order XXXIX Rule 3 of Code of Civil Procedure, 1908, be done within two weeks from today.

23. List on 5th September, 2024.

I.A. 7448/2024 (application under Order XXVI Rules 9 & 10 and Order XXXIX Rule 7 read with Section 151 of the Code of Civil Procedure, 1908 for appointment of Local Commissioner(s))

24. Mr. J. Sai Deepak, counsel for Plaintiffs, submits that the Defendant is aware of the Plaintiffs' products and are dishonestly and deliberately engaging in the manufacture, marketing and sale of counterfeit products.

CS(COMM) 277/2024 Page 13 of 16

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:33 Accordingly, Plaintiffs apprehend that upon service, the Defendant is likely to remove all evidence and deny their involvement in the infringing activities. Thus, in order to preserve evidence of infringement, Mr. Sai Deepak presses for the appointment of a Local Commissioner to visit the premises of the Defendant.

25. Accordingly, the following directions are issued:

25.1. Ms. Manisha, Advocate [Enrol. No. D/3467/2015] [Contact No. +91 9911042377] is appointed as the Local Commissioner to visit the premises of the Defendants located at:

(i) Shop No. 44, Nishant Kunj Market, Near Kohat Enclave Metro Station, Pitampura, New Delhi - 110034;

(ii) Building No. 24, Pitampura Village opp Street of Vikas Niketan Society, Near Maharaja Agrasen Dharamshala/ Presidium School Pitampura Metro Station, Delhi - 110034.

25.2. The Local Commissioner, along with a representative of the Plaintiff and its counsel, shall be permitted to enter upon the premises of the Defendants mentioned above and/or any other location/ premises that may be identified during the course of commission, in order to conduct the search, seizure and inventory.

25.3. The Local Commissioner shall conduct a search at the said premises and seize any impugned products and/or garments, fully or semi- manufactured, and/or any other products which are identical and/or deceptively similar to, or are substantial imitations/ counterfeits of the unique and artistic garments of the Plaintiffs' bearing No. GW-754, GW- 586, TUX-150, GW-688, GW-641, and LEH-172 (as depicted above). 25.4. After seizing the infringing material in terms of the above CS(COMM) 277/2024 Page 14 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:34 directions, the same shall be inventoried, sealed and signed by the Local Commissioner in the presence of the parties, and released on superdari to the Defendant on their undertaking to produce the same as and when further directions are issued in this regard.

25.5. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the impugned products and/or marks.

25.6. Further, the Local Commissioner shall be permitted to undertake/arrange for photography/ videography of the execution of the commission. Both the parties shall render full assistance to the Local Commissioners for carrying out the aforenoted directions. 25.7. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the lock(s). To ensure an unhindered and effective execution of this Order, the Station House Officer (SHO) of the local police station is directed to render all assistance and protection to the Local Commissioner, if and when sought. 25.8. The fee of the Local Commissioner, to be borne by the Plaintiffs, is fixed at INR 1,10,000/-. The Plaintiffs shall also bear expenses for travel and lodging of the Local Commissioner and other miscellaneous out-of-pocket expenses for the execution of the commission. Fee of the Local Commissioner shall be paid in advance by the Plaintiffs. 25.9. The Local Commissioner shall file their report within a period of four weeks from the date on which the commission is executed.

26. The Order passed today shall not be uploaded for a period of two weeks from today.

CS(COMM) 277/2024 Page 15 of 16

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:35

27. With the above directions, the application stands disposed of.

28. Dasti under signatures of the Court Master.

SANJEEV NARULA, J APRIL 3, 2024 sapna CS(COMM) 277/2024 Page 16 of 16 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 26/04/2024 at 21:22:35

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Delhi High Court - Orders