Delhi District Court
La Chemise Lacoste vs M/S. Rampage (Nst) on 5 November, 2014
IN THE COURT OF SH SUNIL K AGGARWAL: ADDL. DISTRICT
JUDGE (CENTRAL) 10: DELHI
TM No: 08/2010
1. La Chemise Lacoste
8, Rue De Castiglione, 75001
Paris, France.
2. Sports and Leisure Apparel Ltd.
55, Basant Lok, Vasant Vihar,
New Delhi110057. ....Plaintiffs
Versus
1. M/s. Rampage (NST)
M.G. Road, Ernakulam
Cochin35.
2. M/s. Seemati,
M.G. Road, Ernakulam
Cochin35
3. M/s. Roopam,
Ground Junction, (Opp. Zodiac)
M.G. Road, Ernakulam
Cochin35
4. M/s. Jos Collections
Jos Junction, Ernakulam
Cochin16.
5. Stylets, Cee Vee Associates
M.G. Road, North End,
Earnakulam, Cochin31.
TM No.08 of 2010 Page No. 1 of 20
6. M/s. Rinosh Garments,
Marine Drive, Commercial Complex,
Ernakulum, Cochin31.
7. M/s Signature,
KTDC Complex, Marine Drive,
Ernakulum, Cochin31.
8. M/s The Title,
S49A, GCDA Complex, Marine Drive,
Ernakulum, Cochin31.
9. New Embroidery Centre,
KPCC Junction, M.G. Road,
Ernakulum, Cochin31.
10.M/s Jean Shack,
D.H. Road,
Ernakulum, Cochin31. .....Defendants
Plaint presented on 18.02.1998
J U D G M E N T:
1. This suit for injunction was filed in the Hon'ble High Court of Delhi for restraining the defendants and all other persons connected with them from using the trademark LACOSTE and/or device of 'Crocodile' or any other TM No.08 of 2010 Page No. 2 of 20 deceptively or confusingly similar trademark infringing the plaintiff's registered trademarks and from passing off their goods as that of the plaintiffs by use of said trademarks as well as LA CHEMISE LACOSTE in any manner whatsoever and from reproducing the device of 'crocodile' in any material form infringing the copyright of plaintiff in its artistic work. Decree of damages on rendition of accounts of profits earned by the sale of spurious products and mandatory injunction for delivery up of all goods, packaging cartons, unfinished products etc. bearing the trademarks of plaintiff besides entire printing material and equipment is sought against the defendants for obliteration. It is stated that plaintiff no. 1 is a company organized under the laws of France while plaintiff no. 2 is an Indian Company. Both have authorized Sh. Surendra Singh Negi for filing and instituting the suit by conferring him with Power of Attorney. Plaintiff no. 1 is internationally renowned manufacturer and dealer of interalia clothing articles including T Shirts and are the proprietors of copyright in the artistic work comprising CROCODILE device. The plaintiff no. 1 was founded by famous tennis player Jean Rene Lacoste who had won the men's singles tournament at Wimbledon twice in 1925 and 1928, three times men's singles International Championship of France (now played at 'Roland Garros' Stadium) and twice menz singles in International Championship of United States (now played at 'Flushing Meadows'). During this period he was nick named by the sports press as LE CROCODILE and he became known as such amongst his fans. The CROCODILE device was prepared by Mr. Robert George and first published TM No.08 of 2010 Page No. 3 of 20 in France in 1927. During his tenure as a tennis player Mr. Lacoste had designed a knitted shirt specially suited for tennis and other sports and recreational activities. In 1933 he entered into a partnership with Louis Emile Andre Gillier for the purpose of manufacture and sale of such shirts which came to be known as CHEMISE LACOSTE. They had decided that a trademark in the form of embroidered CROCODILE would be sewn on the front of the shirts. Probably this was the first time that a trade mark was affixed so visibly on the outside of an article of clothing. It became so popular that now it is used by most other well known apparel manufacturers. The CROCODILE device was filed for registration in Troyes on 27.04.1933. The trademark LACOSTE was registered in France on 22.06.1933 and CHEMISE LACOSTE on 19.07.1935. The plaintiff no. 1 and its predecessorsintitle obtained trademark registrations in over 170 countries around the world since 1934 and the products bearing these marks are extensively sold across the globe.
2. The plaintiff's trademark LACOSTE & CROCODILE device have been extensively advertised in several leading international publications, periodicals and other media some of which have circulation in India. Their products are available at duty free shops of the international airports of various countries. Indians traveling abroad and returning to their country and foreigners coming there bring with them the reputation and goodwill which the plaintiffs enjoy all over the world. Even prior to their products being freely TM No.08 of 2010 Page No. 4 of 20 available in India, therefore, the plaintiff had acquired goodwill and reputation through their trademarks. The plaintiff no. 1 has exclusive rights to reproduce the copyright in CROCODILE device in any material form and obtain relief in respect thereof by virtue of ownership therein under the provisions of the Copyright Act, 1957. The plaintiff is also the proprietor of LACOSTE & CROCODILE device by virtue of their registration with effect from 19.01.1983 in respect of goods of class 25. The trademarks are being used by plaintiff no. 1 through its licensee, plaintiff no. 2 in India since October, 1993 with the opening of their first boutique. Within a span of 4 years plaintiff no. 2 has set up 17 more authorized LACOSTE boutiques. With regular sales promotion activities, the sale figures have multiplied during the short span of 4 years. The trademarks used by plaintiff no. 2 in relation to the products manufactured and packed by them are strictly in accordance with the formula, standards and specifications of plaintiff no. 1.
3. Sometime in September, 1997 plaintiffs learnt about counterfeit and infringing products bearing their trademarks having flooded the markets in and around Delhi. The inquiries by plaintiff no. 2 revealed that such products are manufactured at one source and thereafter sold in the market through the defendants who have conspired in the act of piracy and counterfeiting of plaintiffs' copyright and trademarks. Since right to relief against the defendants has arisen out of same act or series of acts or transactions, they have been joined in one suit. Earlier the plaintiffs had filed a suit against 9 defendants in TM No.08 of 2010 Page No. 5 of 20 which interim order was passed in their favour and a Local Commissioner was appointed to seize and secure the infringing material from the premises of defendants. A large quantity of infringing products was seized by him in the said case almost from each of the defendants.
4. Plaintiffs have now started receiving more information from other cities that fake LACOSTE products are available in other parts of the country. The plaintiffs deputed their representative for Cochin to verify the information. To their shock, the defendants, 10 in number, were found stocking and selling LACOSTE brand Tshirts with CROCODILE logo. Each of them must be having 50200 Tshirts bearing the infringing marks in their stocks. Ms. Ranjana Prashad, the representative of plaintiffs who had gone to Cochin, purchased one Tshirt from each of the defendant in the presence of an Advocate and Notary Public based in Cochin. On the basis of quality of the products being clandestinely sold and the information collected, it appears that these were manufactured by one source which may either be in Delhi or Ludhiana. The quality of products sold by the defendants is abysmally substandard. The fabric, buttons, shoulder strap, Crocodile logo, reinforcement tape around the color is all of inferior quality. The strategy of defendants was to make illegal profits quickly by deceiving members of the trade and general public by offering them spurious material against the high quality goods of plaintiff. Such use is likely to dilute the distinctive character of plaintiffs' trademarks and business to gradually debase and erode it. The defendants TM No.08 of 2010 Page No. 6 of 20 thereby have attempted to wrongfully appropriate plaintiffs' personality. The damages have been estimated at Rs.5,00,000/ and the jurisdiction of this court has been invoked U/s 62 of The Copyright Act, 1957 as amended in 1994 and because the defendants may have sourced the infringing goods from Delhi.
5. Defendants no. 1 and 2 have filed separate written statements while defendants no. 3 to 10 have filed joint written statement through defendant no.
10. They have raised preliminary objections about this court lacking territorial jurisdiction in entertaining the suit as neither the defendants are or any one of them is residing or working for gain in Delhi nor any cause of action has accrued in favour of the plaintiffs here. The suit for infringement of trademarks is not maintainable as there is no provision in the Trade & Merchandise Marks Act, 1958 akin to Section 62 of The Copyright Act. A composite suit before this court is therefore not maintainable. It is contended that the plaintiff may be having different cause of action for each defendant. By clubbing them the plaintiff has saved the court fee and the suit suffers from misjoinder of causes of action. It is also stated that the suit without impleading the alleged manufacturer of fake products cannot proceed as the plaintiffs cannot shirk their duty to identify the manufacturer. On merits, the allegations of conspiracy amongst the defendants are termed false and defamatory. The history of trademarks is termed to be irrelevant. While denying that the defendants were found to have stocked or were selling any products with trademark LACOSTE & CROCODILE device or anything similar to the TM No.08 of 2010 Page No. 7 of 20 products of plaintiff it is averred that the Notary Public had no jurisdiction to visit the premises of defendants without court order. The concerned Advocate has thereby committed gross professional misconduct. His report is termed to be false and the suit could not have been founded on it. It is denied that the defendants have used the plaintiffs' trademarks to dilute their distinctive character. They also have not infringed any copyright of plaintiffs by reproducing the CROCODILE logo. It is alleged that plaintiff no. 2 has been arrayed in an attempt to confer jurisdiction to this court but the reasons given for it are shallow and unsustainable. The dismissal of suit therefore, is urged.
6. In replications the plaintiff has reaffirmed the contents of plaint and refuted those of the written statements. It is stated that the defendants have raised frivolous and baseless grounds to delay the adjudication of real questions in controversy.
7. Vide an interim order dated 23.02.1998 the defendants and everybody connected with their business were restrained from using the trademarks of plaintiffs or any other deceptively or confusingly similar trademark/s.
8. Defendant no. 2 was proceeded exparte on 19.08.1998 which order was recalled on 17.12.1998 on its moving an application. Defendant no. 1 and 3 to 10 were held exparte on 30.7.2002. They however joined proceedings TM No.08 of 2010 Page No. 8 of 20 subsequently. The suit was transferred to the District Court in November, 2003 on enhancement of its pecuniary jurisdiction and following issues were framed on the basis of pleadings on 10.02.2004.
1. Whether the present suit is bad on account of non impleadment of the manufacturer as claimed for by defendant no. 1 and defendant no. 3 to 10 in preliminary objection no. 1 of their respective written statements?
2. Whether there is no cause of action and therefore this court has no jurisdiction to try the present suit in view of preliminary objection no. 3 raised by defendant no.
3 to 10 of their written statement?
3. Whether the present suit is bad for misjoinder and nonjoinder of necessary parties as claimed for by the defendant no. 2 in paragraph of 2 of her written statement?
4. Whether the present suit under the Copyright Act and Trade and Merchandise Marks Act is not maintainable as claimed for by defendant no. 1 in preliminary objection no. 4 of his written statement?
5. Whether the present suit has not been properly valued as claimed for by defendant no. 3 to 10 in preliminary objections no. 5 of their written statement?
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6. Whether plaintiff is entitled to the relief sought by it?
7. Relief.
9. The defendants were again proceeded exparte on 05.04.2004 where after Sh. S.S. Negi, attorney of the plaintiff was examined and the opportunity was closed. On their application the order of proceeding them exparte was recalled on 08.09.2004 after recording statements of 2 witnesses of the defendants.
10. The defendants were yet again proceeded exparte on 03.01.2007 which was set aside on 19.08.2008. An application u/o 18 Rule 4, Order 7 rule 14 and Section 151 CPC of the plaintiffs was partly allowed on 23.07.2010 and the authorized representative of plaintiff was substituted and production of subsequent documents permitted.
11. On the case again maturing for evidence, PW 1 Sh. S. S. Negi filed his fresh and improved affidavit dated 02.05.2008 which could be formally tendered on 13.07.2011. In his statement Sh. Negi stated the case of the plaintiff and tendered Power of Attorney given to him by plaintiff no. 2 as Ex. PW1/1, Power of Attorney given by plaintiff no. 1 as Ex. PW 1/2, Board Resolution dated 27.03.1998 passed by plaintiff no. 2 Ex. PW 1/3, copy of license and user agreement between plaintiffs Ex. PW1/4, Subdistribution agreement Ex. PW 1/5, copy of artistic work in the Crocodile device Ex. PW TM No.08 of 2010 Page No. 10 of 20 1/6, copies of certified copy of trademark registrations Ex. PW1/7, copy of application for certified copies make before Registrar of Trademarks Ex. PW1/8, advertisements featuring the plaintiff's trademark and device Ex. PW 1/9, certificate of Chartered Accountant in respect of sales and advertisement figures Ex. PW1/10, a book charting the history of LACOSTE and its brands around the world Ex. PW 1/11, list of countries where trademarks of plaintiff no. 1 are registered Ex. PW 1/12, copies of registration certificates of trademarks in favour of plaintiff no. 1 in select countries Ex. PW 1/13, copy of survey report in India and few other countries Ex. PW 1/14, plaintiff's broachers regarding event sponsored by plaintiff no. 1 Ex. PW 15, ten Notarial reports Ex. PW1/16 and copies of some of the court orders obtained by the plaintiffs in action initiated to contain debasement and erosion of the plaintiffs reputation and goodwill Ex. PW 1/17. After his cross examination the plaintiffs had closed their evidence on 13.07.2011.
12. None appeared for the defendants on 22.09.2011 and again on 26.11.2011. They were proceeded exparte. As had been the case previously, the defendant no. 1 and 3 to 10 again joined the proceedings through their counsel on 10.04.2012 who however stated that he need not get the exparte order set aside nor intended to lead evidence.
13. I have carefully gone through the written arguments submitted on behalf of the parties and perused the record. Written statement dated TM No.08 of 2010 Page No. 11 of 20 17.12.1998 was purportedly filed on behalf of defendants no. 3 to 10 under signatures of defendant no. 10 only. Sh. Davis, proprietor of defendant no. 10 has manifestly signed it for himself and on behalf of defendants no. 3 to 9 claiming himself to be fully conversant with the facts of the case. The entire defence is stoically silent regarding the foundation on the basis of which defendant no. 10 proclaimed to represent defendants no. 3 to 9. No document conferring authorization by the said defendant on defendant no. 10 has been filed. Defendant no. 10 therefore cannot unilaterally project himself to represent the cause of other seven defendants. The written statement therefore is treated as one on behalf of defendant no. 10 only.
14. At the time of tendering of affidavit of Sh. Negi, objection to the photocopies of documents being exhibited was raised by Sh. A. K. Jha, Advocate representing defendant no. 10. It was left to be heard and decided at later stage. The objection has substance and holds good for most of the documents tendered by PW 1. He was not a witness or party to the documents Ex. PW 1/4 to Ex. PW 1/17 nor had obtained them by applying for the copies. He had not participated in the survey or the proceedings conducted by Notary Public. The list and registration certificates in respect of trademarks by plaintiff no. 1 in various countries are irrelevant and did not emanate from personal knowledge of the witness. Just because the witness was conditionally allowed to put exhibit marks on the documents as per his affidavit, would not tantamount to the objection about their formal proof having been given up. All TM No.08 of 2010 Page No. 12 of 20 these documents therefore are liable to be deexhibited by sustaining the objection. It is ironical that the plaintiffs did not even take the benefit of legal provisions by tendering certified copies of relevant documents including registration certificates from the office of Registrar of Trademarks and Copyright Board.
15. No document has been produced or proved whereby Sh. S.S. Negi may have been conferred authorization to sign, verify and institute the suit on behalf of plaintiffs prior to 17.02.1998. Plaintiff no. 1 has authorized him by Power of Attorney dated 19.02.2008 Ex. PW 1/2. Said document is not backed by the resolution passed by Board of Director of company in favour of its legal director for its execution. PW 1 did not claim to have seen Mr. Christian London writing and signing at any time during his service. He did not even claim to have seen documents bearing his signatures in the ordinary course of his duties. Although, the document specifies that the appointer ratifies and confirms all previous acts done by the attorney on their behalf yet it remained unstamped on being brought to India after its execution in France, and therefore cannot be deemed to have been proved.
The issuewise findings of court are as under:
16. Issues No. 1 & 3: 16(a) The defendants have resented that the manufacturer of alleged of counterfeit goods having not been impleaded, the suit cannot proceed. The TM No.08 of 2010 Page No. 13 of 20 contention of plaintiff is that it would have loved to implead the manufacturer/s only on being identified. Even after endeavours only this much could be ascertained that tshirts found in the custody of defendants are sourced either from Delhi or Ludhiana and sold through unscrupulous retailers. It was for the defendants to disclose the source of supply of infringing material from their outlets but they have kept silent.
16(b) No legal provision or precedent has been cited which make it compulsory to implead the manufacturer of counterfeit goods to pursue the remedy even against retailers. If such a stance were to be adopted, it will render the legal measures to protect ones Intellectual Property Rights nugatory. It cannot therefore be termed that without the impleadment of manufacturer or the source of supply to the defendants, the arraying of latter is bad. Since the plaintiff had a cause of action against the defendants in as much as they were found to be selling, offering and displaying tshirts bearing trademarks deceptively and confusingly similar to their registered trademarks and the illegality needed to be contained at the earliest, the impleadment only of defendants without their supplier was adequate. Both he issues therefore are decided in negative.
17. Issue No. 5: 17(a) It has been contended that the plaintiffs could not have joined separate causes of action against each of the defendants in one suit. They have TM No.08 of 2010 Page No. 14 of 20 saved on court fee thereby. The plaintiff has contended that the defendants have sourced the counterfeit goods from a common source in Delhi therefore in order to avoid multiplicity of litigation, several defendants involved in the same act or series of acts or transactions jointly and/or severally have been joined herein. It is contended that several other similar litigations have been filed by the plaintiffs against bunch of defendants in various courts including Hon'ble High Court of Delhi and their trademarks were granted interim protection.
17(b) Undoubtedly, the series/chain of acts done by a number of persons can be impleaded in one suit particularly when the documents and evidence to be laid in the case are identical, in order to avoid filing individual cases against such persons, save costs and also to avoid different orders on the identical set of facts and evidence. Nevertheless, the illegal act committed by each of such persons give rise to a separate cause of action to the plaintiff. At the time of joining several of such persons in a single lis, therefore the plaintiff will be obliged to value the suit for the purposes of court fee and jurisdiction separately for each defendant and pay court fee accordingly as per the provisions of Section 17 of The Court Fee Act. The plaintiffs therefore deserve an opportunity to bifurcate the valuation in para 29 of the plaint and value the suit in respect of each defendant and pay difference in court fee, if any. Logical reliance in this behalf is placed upon the ratio in 'Pfizer Vs. B. L. & Company, 2007 (34) PTC 294 (Delhi)'. The issue is decided accordingly. TM No.08 of 2010 Page No. 15 of 20
18. Issues No.2 & 4: 18(a) Since these issues are interconnected and can legitimately the answered commonly, they are taken up together. Sh. A. K. Jha, Advocate, Ld. Counsel for defendant no. 10 has cited Dhoda House Vs. S.K. Maingi, (2006) 9 SCC 41 to contend that this court does not have territorial jurisdiction to entertain the composite suit as provision akin to Section 62 of The Copyright Act is not there in The Trade & Merchandize Act, 1958. The plaintiffs have invoked territorial jurisdiction of Delhi courts as plaintiff no. 2 is carrying on business in Delhi and therefore rode upon Section 62 of The Copyright Act. Additionally, it is claimed in the para 28 of the plaint that the defendant may have sourced the infringing products from Delhi, as the ground for filing the suit here.
18(b) Since the plaintiffs have miserably failed to specifically pinpoint Delhi as the source of supply of infringing products to the defendants in Kochi and have meekly alleged that they were procured from Gandhi Nagar in Delhi, without any edifice, the jurisdiction of Delhi for infringement of trademark and passing off could not have been invoked under Section 20 CPC as no part of cause of action has accrued here. It was held in 'Dharampal Premchand Ltd. Vs. Golden Tobacco Products, 2007 (34) PTC 633' & 'Lark Laboratories Ltd. Vs. Nabros Pharma Pvt. Ltd., 2009 (41) PTC 675 (Gujarat);, that where a suit is filed on several causes of action and it is found that for some of the TM No.08 of 2010 Page No. 16 of 20 causes of action the court has no jurisdiction, in that case amendment of the original plaint is enough and return or rejection of the plaint is not necessary. Fresh suit could be filed in the appropriate court in respect of causes of action for which the original court did not have jurisdiction. 18(c) Further in 'Dabur India Ltd. Vs. K. R. Industries, 2006 (33)PTC 348 (Delhi)(DB)', liberty was given to the plaintiff to continue the suit in respect of the infringement of copyright and for instituting a fresh court in the court of competent jurisdiction for the relief of 'passing off'. 18(d) Since the plaintiff has failed to bring the causes of action for the reliefs of infringement of trademarks and passing off within the parameter of Section 20 CPC, it is held that this court does not have territorial jurisdiction to entertain the suit for such causes and reliefs. The issues are answered accordingly.
19. Issue No. 6: 19(a) Plaintiffs have relied upon Kavi Raj Pandit Durgadutt Vs. Navratna Pharmaceuticals, AIR 1965 SC 980, Ruston & Hornsby Ltd. Vs. The Zamindara Engineering Co. (1969) 2SCC 727, La Chemise Lacoste Vs. R. H. Garments, 2006 (33) PTC 481 Delhi, B.K. Engineering Vs. UBHI Enterprises, AIR 1985 Delhi 210, F. Hoffmann' La Roche & Co. AG Vs. DD TM No.08 of 2010 Page No. 17 of 20 SA Pharmaceutical Ltd., 1972 RPC 1 & ITC Vs. Sunil, MIPR 2007 (2) 152, to contend that the public is concerned with trade origin. Their confidence is built up in what they already had. They want the same again by recognizing it from the get up where it is distinctive. It includes the fact that product is from the same origin from which they earlier had. The test on casual and unwary customers is the impression likely to be produced and it is not necessary to prove that any member of public were actually deceived. 19(b) Regarding the infringement of their copyright, reference to Rajesh Masrani Vs. Tahiliani Design Pvt, Ltd., AIR 2009 Delhi 44 and R.G. Anand Vs. Delux Films (1978) 4SCC 118, has been made to contend that one of the surest and safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets in unmistakable impression that the subsequent work appears to be a copy of the original. 19(c) Ld. Counsel for the defendant no. 10 argued that PW 1 had no personal knowledge about the crucial fact of this case. He has deposed contradictory to his testimony recorded on 12.08.2010 in similar other case no. 08/2009 filed against M/s Selection Centres & Ors. He therefore cannot be relied upon to base findings.
19(d) Except the assertion that plaintiff enjoys copyright in the artistic TM No.08 of 2010 Page No. 18 of 20 work of Crocodile device which has not been disputed. PW 1 could not link the defendants with spurious goods bearing deceptively and confusingly similar device. According to him, the marketing team of plaintiffs had given inputs from Cochin, Mumbai and host of other places about spurious goods being sold. Instead of reporting the matter to the local Police there and then and to ensure the seizure of infringing material, the lawyers of the company were informed. One of the persons from the office of lawyers then went to the place/outlet selling fake goods with a Notary Public. The latter purchased the goods from several shops and made them over to the plaintiff with his reports. PW 1 had never been to Kerela. He did not disclose the particulars of marketing team member who had given inputs about Cochin flab. He does not claim to have met either the person from the office of company's lawyers who had engaged the Notary Public for purchasing fake goods allegedly from the shops of the defendants. Obviously, he had never met nor had seen Sh. T. Abdul Qadir, Notary Public, writing and signing. The testimony of witness therefore is entirely based on hearsay. No reason has been furnished as to why an eyewitness of the sale of spurious goods by the defendants has not been examined in this case. The deposition of PW 1 does not make out or converge even the case of copyright violation against the defendants. 19(e) In view of the plaintiff having utterly failed to substantiate the violation of their Intellectual Property Rights by the defendants, the latter cannot be called upon to deliver the so called spurious goods, packaging TM No.08 of 2010 Page No. 19 of 20 cartons or any other article/equipment capable of duplicating the trademark/copyright of the plaintiffs or imitation thereof. The plaintiff is not entitled to seek their accounts for ascertaining the profits earned by them by selling/reproducing the alleged spurious/counterfeit/infringing goods. The issue is decided in negative.
20. Issue No. 7: In view of the aforegoing reasons, the suit of plaintiffs is hereby dismissed with costs. Decreesheet be accordingly prepared.
File be consigned to Record Room.
Announced in the open court
on 5th November, 2014 (Sunil K. Aggarwal)
Addl. District Judge (Central)10
Delhi.
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