Delhi District Court
Guccio Gucci S.P vs Saurabh Kumar on 24 November, 2023
IN THE COURT OF SH. SUDHANSHU KAUSHIK :
ADDITIONAL DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.320/2021
CNR NO.DLND01-011983-2017
IN THE MATTER OF:
GUCCIO GUCCI S.P.A.
VIA TORNABUONI 73/R,
FLORENCE, ITALY
....PLAINTIFF
VERSUS
1. SAURABH KAPOOR
TRADING AS FASHION STORE,
S/O SH. MADAN LAL,
M-32, GREATER KAILASH-1,
NEW DELHI
....DEFENDANT NO.1
2. SH. AMAN SACHDEVA
S/O SH. SUBHASH SACHDEVA
74, GAFFAR MARKET,
KAROL BAGH, DELHI
....DEFENDANT NO.2
3. SH. GAURAV GUPTA
S/O SH. DATA RAM
74, GAFFAR MARKET,
KAROL BAGH, DELHI
....DEFENDANT NO.3
4. SH. DEEPAK KUMAR RAI
74, GAFFAR MARKET,
KAROL BAGH, DELHI
....DEFENDANT NO.4
TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 1 of 17
5. SH. KARAN VEER SINGH
78, GAFFAR MARKET,
KAROL BAGH, DELHI
....DEFENDANT NO.5
6. SH. GURVINDER SINGH
84, GAFFAR MARKET,
KAROL BAGH, DELHI
....DEFENDANT NO.6
DATE OF INSTITUTION OF SUIT : 07.09.2017
DATE OF ARGUMENTS : 24.11.2023
DATE OF JUDGMENT : 24.11.2023
DECISION : SUIT DECREED
JUDGMENT
1. Plaintiff has instituted the present suit seeking permanent injunction, restraining infringement, passing off, damages and rendition of accounts.
2. The facts, as disclosed in the plaint, are;
A) Plaintiff M/s GUCCIO GUCCI S.P.A is a company established and incorporated under the laws of Italy having its registered office at Via Tornabuoni 73/R, Florence, Italy. The suit has been instituted by Sh. Rakesh Chabbra, who has been authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff. Plaintiff is a world renowned luxury fashion brands, designing, developing, selling and marketing mainly leather goods, footwear, apparel, eyewear, perfumes, watches and jewellery under the trademark TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 2 of 17 GUCCI and GG logo, which represents as under:
B) Plaintiff's products are being sold exclusively through a network of directly-operated stores, a directly-operated e-commerce website and a limited number of franchisees as well as selected department and stores in more than 70 countries including India. The trademark GUCCI was first adopted by the plaintiff in the year 1921 and was officially registered in the year 1980.
C) Plaintiff claims itself to be the sole owner of the trademark GUCCI and its logo. It has been further submitted that plaintiff has been using this word uninterruptedly for the last many years and this word/logo has acquired goodwill and reputation worldwide. Plaintiff has got registered the trademark/Logo GUCCI in various classes in India.
These well known trade-marks have also established tremendous goodwill and reputation. Plaintiff has been selling leather goods, footwear, apparel, eyewear, perfumes, watches and jewellery under this trademark/logo.
D) Plaintiff filed the suit alleging that unknown persons have started using its trademark on inferior quality counterfeit products. Plaintiff TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 3 of 17 alleged that the infringed product are carrying deceptively similar trademark so as to confuse the general public that the infringed goods are the goods of plaintiff. Plaintiff alleged that it is suffering huge loss of business and reputation on account of the sale of the infringed products. Along with the suit, plaintiff filed an applications under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold.
3. The application under Order XXVI Rule 9 CPC was allowed on 07.09.2017 and a Local Commissioner was appointed to carry out the search of the counterfeit products at Shop Nos.74, 78, 84, Gaffar Market, Karol Bagh, New Delhi as well as Shop/Premises No.M-32, Greater Kailash-1, New Delhi.
4. The Local Commissioner reached Shop No.M-32, Greater Kailash-1, New Delhi, where defendant No.1/Saurabh Kapoor was found present. Defendant No.1 claimed himself to be the owner of the shop . The Local Commissioner carried out the search at the shop and 34 pairs of shoes with boxes, 10 ladies hand bags, 8 wallets, 1 belt, 4 sunglasses with boxes, 2 piece of perfumes with boxes, 3 pairs of socks, 2 cufflinks, 1 card holder and 2 t-shirts of inferior quality bearing the TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 4 of 17 trademark and logo of the plaintiff were recovered. The counterfeit products were seized and inventory was prepared. The seized products were handed over to defendant No.1 against an undertaking. Photographs of the spot as well as the seized counterfeit products were obtained along with the documents disclosing the identity of defendant No.1.
5. Thereafter, Local Commissioner reached Gaffar Market, Karol Bagh, New Delhi and carried out search at Shops No.84, 78 & 74 respectively. On carrying out search at Shop No.84, 2 packing bags, 5 ladies hand bags and 6 ladies wallets with boxes of inferior quality bearing the trademark and logo of the plaintiff were recovered. Defendant No.6/Gurvinder Singh was found present at the shop, who claimed himself to be the owner of the shop. On carrying out the search at Shop No.78, Gaffar Market, Karol Bagh, New Delhi, 15 ladies hand bags, 11 ladies purse, 2 t-shirts, 4 suitcases of inferior quality bearing the trademark and logo of the plaintiff were recovered. Defendant No.5/Karan Veer Singh was found present at the shop, who claimed himself to be the owner of the shop. Thereafter, Local Commissioner carried out search at Shop No.74, Gaffar Market, Karo Bagh, New Delhi and 40 pairs of shoes with boxes, 30 t-shits, 40 TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 5 of 17 belts, 6 empty boxes, 10 belts, 2 specs and 6 wallets of inferior quality bearing the trademark and logo of the plaintiff were recovered. Defendant No.2/Aman Sachdeva was found present at the shop, who claimed himself to be the owner of the shop. The Local Commissioner also carried out the search of Shop No.74A, Gaffar Market, Ajmal Khan Road, Karo Bagh and recovered counterfeit products from the shop. Defendant No.3/Gaurav Gupta and defendant No.4/Deepak Kumar were found present at the shop. The counterfeit products recovered from the aforementioned four shops were seized and separate inventories were prepared. The seized products were handed over to the respective defendants against separate undertakings. Photographs of the spots as well as the seized counterfeit products were obtained along with the documents disclosing the identity of defendants.
6. The Local Commissioner filed his report in the court. Thereafter, on an application filed by the plaintiff, the names of defendant were substituted in the plaint in place of fictitious person.
7. Defendant No.1 contested the suit by filing written statement while the matter stands settled/compromised with defendant No.2 to 6. Defendant No.1 submitted in the written statement that the suit is TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 6 of 17 liable to be dismissed as the alleged Authorized Representative of the plaintiff, who has filed the present suit, has not been properly authorized by the plaintiff company. He questioned the territorial jurisdiction of the court. He mentioned in the written statement that the suit is barred under the law. He denied the contents of the plaint and mentioned that he has been falsely roped in the litigation. He also denied infringing the trademark/logo of the plaintiff. After filing the written statement, defendant No.1 abandoned the proceedings and he was proceeded ex-parte. On the basis of the pleadings of the parties, following points for determination were framed:
(1) Whether the suit has not been filed by a competent person?
(2) Whether the plaintiff is the proprietor of Trademark GUCCIO GUCCI and logo GG?
(3) Whether this court lacks territorial jurisdiction to try and entertain the present suit?
(4) Whether the defendants committed infringement and passing off of the Trademark GUCCIO GUCCI adopting and using an identical and deceptively similar Trademark?
(5) Whether the plaintiff is entitled to a decree of permanent injunction ?
(6) Whether the plaintiff is entitled to a decree for rendition of accounts ?TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 7 of 17
(7) Whether the plaintiff is entitled to a decree for damages/delivery ?
(8) Relief?
8. Arguments heard.
9. During the course of arguments, it was submitted by counsel for the plaintiff that plaintiff is a world renowned luxury fashion brands, designing, developing, selling and marketing mainly leather goods, footwear, apparel, eye wear, perfumes, watches and jewellery under the trademark GUCCI and GG logo. Counsel submitted that the products manufactured, distributed and sold by the plaintiff have acquired a unique reputation in the market. Counsel submitted that defendant No.1 was found in possession of counterfeit products carrying similar trademark of the plaintiff. He contended that the counterfeit products were meant to be sold and passed off as the products of the plaintiff. He mentioned that plaintiff's claim stands established and the suit may be decreed.
10. I have perused the record.
11. The High Court of Delhi observed in the matter of "Indian Performing Rights Society Ltd. Vs Gauhati Town Club"
MANU/DE/0582/2013 that where the defendant is ex-parte and the material before the court is sufficient to allow the claim of the TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 8 of 17 plaintiff, the time of the court should not be wasted in directing ex-
parte evidence to be recorded which mostly is nothing but repetition of the contents of the plaint. This was a suit wherein plaintiff had claimed infringement of a registered trade-mark and violation of its copyright by the defendant as well as passing off the goods. In the matter, the court relied on the report of the Local Commissioner as well as other material placed on record and decreed the suit without requiring the plaintiff to lead further evidence. Similar view was taken by the court in the matter of "United Coffee House Vs Raghav Kalra & Anr." 2013 SCC OnLine Del 2133 and "S.Oliver Bernd Freier Gmbh & Company KG Vs Jaikara Apparels & Anr." 2014 SCC OnLine 2686.
12. Relying upon the rationale of the judgments given in "Disney Enterprises Inc. & Anr. v. Balraj Muttneja & Ors." [CS (OS) 3466/2012 decided on 20th February, 2014 by the High Court of Delhi] and S.Oliver Bernd Freier Gmbh & Company KG's case (supra), the High Court of Delhi decreed a trade-mark suit for infringement in the matter of "Imagine Marketing Pvt. Ltd. Vs Green Accessories" 2022 SCC OnLine Del 805 with following observations:
"8. Insofar as Defendant No.6 is concerned, the Local Commissioner had visited the premises bearing the TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 9 of 17 address M/s. Shree Balaji Accessories, Building No.2827, Ground Floor, Gali No.8, Opposite Max Plaza, Beadonpura, Karol Bagh, New Delhi-110005 and met a few employees, as also, Mr. Dinesh, who claim to be the Manager of the Defendant No.6-Shop. Various goods bearing the Plaintiff's mark 'BOAT' were found at the said premises. A total of more than 120 pieces of Bluetooth headsets, Wireless Headsets, Earphones, Wireless Earphones, Portable Speakers and packaging material were also found. The same were seized by the Local Commissioner.
9. From the Local Commissioners' reports, and the pleadings on record it is clear that the Defendants are engaged in manufacturing or selling or offering for sale various electronic or electric products bearing the mark 'BOAT' as also the logos thereof. The Defendants choose not to appear despite having knowledge of the proceedings which are pending before this Court. The Local Commissioners' reports along with the evidence there of also clearly reveals that the Defendant Nos.1 and 6 were engaged in the sale of counterfeit products.
10. Under these circumstances, following the rationale of the judgment of a ld. Single of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014], no ex parte evidence would be required in this matter. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors.
[210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
3. Though the defendants entered appearance through their counsel on 01.02.2013 but remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex-parte vide order dated 04.10.2013 and the plaintiffs TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 10 of 17 permitted to file affidavits by way of exparte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex-parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd.
Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex-parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex-parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint.
11. Thus, the Plaintiff, being the owner of the registered trademark 'BOAT' in various forms, including the logo, is entitled to protection of its rights in the trade mark 'BOAT', as also device mark and the logos thereof. Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 30 (a), (b), and (c) of the amended plaint."
13. Coming to the present matter, although, defendant No.1 filed written statement but he chose to remain absent during trial and he was proceeded ex-parte. The finding on the points of determination is as under:
Point No.1: Whether the suit has not been filed by a competent person?
Point No.2: Whether Whether the plaintiff is the proprietor of Trademark GUCCIO GUCCI and logo GG?TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 11 of 17
Point No.3: Whether this court lacks territorial jurisdiction to try and entertain the present suit?
14. The present suit has been instituted by Sh. Rakesh Chabbra, who has been authorized to do so vide a Power of Attorney dated 30.08.2016. The Power of Attorney has been placed on record. It demonstrates that Sh. Raklesh Chabbra was duly authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff. The Power of Attorney has remained unchallenged. In view of this, it stands concluded that plaint was filed by a duly authorized person.
15. Plaintiff has placed on record the registration certificates of the trademark GUCCIO GUCCI S.P.A registered in various classes. These certificates demonstrate that plaintiff is the registered owner of the trademark. Thus, it is established that plaintiff is the owner of the trademark.
16. Defendant challenged the territorial jurisdiction of this court to try and entertain the present suit. The High Court of Delhi, while dealing with a similar argument on the territorial jurisdiction, observed in the matter of "Burger King Corporation Vs Techchand Shewakramani & Ors." CS (COMM) 919/2016 & CC(COMM) 122/2017 as under;
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 12 of 17 Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade"
any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference -
...
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"
17. The court further observed in Burger King's case (supra) that in a suit involving right in a trade-mark, cause of action arises in each and every place where there is any form of use of said mark. The court held that the principles which apply to infringement action to determine use of trade-mark would equally apply to passing off actions. The court observed that Section 20 of CPC provides that suit could be filed in any place where the cause of action arises and TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 13 of 17 therefore, the place where the trade-mark has been used in any form has jurisdiction and the suit can be filed in the court having territorial jurisdiction over the said place. In view of this clear and categorical observation, the submissions that the court lacks territorial jurisdiction needs to be rejected. Plaintiff has submitted that defendant has been storing the counterfeit products at various locations in Delhi and the counterfeit goods are being sold to various customers in New Delhi. In view of this, the court in New Delhi has the territorial jurisdiction to try and entertain the present suit. Accordingly, point of determination No.1, 2 & 3 are decided in favour of plaintiff and against the defendant.
Point No.4: Whether the defendants committed infringement and passing off of the Trademark GUCCIO GUCCI adopting and using an identical and deceptively similar Trademark?
Point No.5: Whether the plaintiff is entitled to a decree of permanent injunction?
Point No.6: Whether the plaintiff is entitled to a decree for rendition of accounts?
Point No.7: Whether the plaintiff is entitled to a decree for damages/ delivery?
18. Plaintiff had a legal right to institute a suit for injunction to restrain defendant from manufacturing, storing and selling the counterfeit TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 14 of 17 products bearing its trademark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the manner provided under the Act. Section 134 of the Act provides the remedy of filing a suit for infringement of a trademark while Section 125 of the Act describes the relief which may be granted in a suit for infringement or passing off the trademark.
19. Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark 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 trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 15 of 17 identical or similar with the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a marks that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark.
20. Now, coming to the aspect whether defendant No.1 has infringed the trademark of the plaintiff. In the present matter, there is irrefutable evidence to show that counterfeit products bearing the trademark of the plaintiff were recovered from the possession of the defendant. Photographs of the recovered counterfeit products were taken by the Local Commissioner and copies of the same were filed along with the report. I have perused the same. The photographs show that defendant has used almost identical mark on the counterfeit goods recovered from his possession. The mark was affixed on products, which falls under the category of the same goods which are being manufactured by the plaintiff. Thus, defendant not only used the identical mark but also used the mark in respect of identical goods which are being sold by the plaintiff. The products recovered from the possession of TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 16 of 17 defendant were certainly meant to be sold in the market for profit. There is evidence to establish that defendant had been using a mark exactly identical to the registered trademark of the plaintiff. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by defendant. Accordingly, point of determination No.4 & 5 are decided in favour of plaintiff and against the defendant.
21. Since, plaintiff has given up the reliefs for damages, delivery of counterfeit goods and rendition of account, points of determination No.6 & 7 have become redundant. In view of this, the suit stands decreed. A decree of permanent injunction is passed against defendant No.1 whereby he is restrained from manufacturing, storing and selling the counterfeit products bearing the trademark of plaintiff. The seized counterfeit products shall be delivered to the plaintiff for destruction.
22. Decree-sheet be prepared accordingly.
23. File be consigned to Record Room after necessary compliance. Announced in open Court on 24.11.2023 (Sudhanshu Kaushik) Addl. District Judge-02 & Waqf Tribunal, New Delhi District, Patiala House Courts, New Delhi/24.11.2023 TM 320/2021 M/s Guccio Gucci Vs Saurabh Kapoor & Ors. Page 17 of 17