Delhi District Court
Victoria Secret Stores Brand ... vs Alangar Apparels Nd Ors on 29 July, 2024
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IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO.: DLND01-004360-2018
TM/62/2018
IN THE MATTER OF:-
Victoria's Secret Stores Brand Management
Four Limited Parkway
Reynoldsburg
Ohio - 43068
USA
...PLAINTIFF
VERSUS
1. M/s Alangar Apparels
No. 310 Ground Floor Shop
No.5 Paper Mills Road Perambur
Chennai - 600 011
Tamil Nadu.
2. Commissioner of Customs
6th Floor, Krishna Block
Custom House, 60, Rajaji Salai
Chennai - 600 001
Tamil Nadu.
3. Commissioner of Customs
Department of Revenue
Ministry of Finance
Govt. of India
CBEC Offices, HUDCO Vishal Building
B-Wing, Bhikaji Cama Place
R. K. Puram
New Delhi - 110 066
...DEFENDANTS
Date of Institution : 11-05-2018
Date of reserving judgment : 16-07-2024
Date of pronouncing judgment : 29-07-2024
TM/62/2018 Page 1 of 36
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JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999, Sec. 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up and rendition of accounts etc., filed by plaintiff against the defendants.
2. At the outset, it must be mentioned that initially, the present suit was filed as non-commercial suit before the concerned Court of Ld. Additional District Judge, Patiala House Courts, New Delhi. During the course of trial, the case was received by this Court by way of transfer, on 03-09-2022 in view of Order No.17016-17031/Judl./NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is that the plaintiff, which is stated to be a company organized and incorporated under the law of Unites States of America (USA), got instituted the present suit through its Constituted Attorney, who has been duly authorized by the plaintiff company to institute, sign, verify and pursue the present suit. It is stated that the plaintiff company is engaged in the business of manufacturing and distributing TM/62/2018 Page 2 of 36 -3- and sale of a wide range of women's lingerie, womenwear, and beauty products, fragrances, deodorants, make-up and other allied/ related products (hereinafter referred to as the 'said goods and business') under the house mark VICTORI's SECRET. The plaintiff has given detailed history of the plaintiff company in Para no. 3 of the plaint wherein, inter alia, it is stated that Victoria's Secret was founded by Roy Raymond and his wife Gaye, in San Francisco, California on June,12, 1977. Mr. Raymond picked the name "Victoria" after Queen Victoria of the United Kingdom to associate with the refinement of the Victorian era and 'Secret' was what was hidden underneath the clothes. The 'angles' comes from his wife being in a sorority where their mascot was an angel.
4. It is further averred that since its bonafide adoption in 1977, the plaintiff has been using the mark/label VICTORI'S SECRET and its formative marks/ labels, various stylized labels/word per se over long and continuous period of time as a trade mark as also as an essential part of its trade name (hereinafter referred to as the 'trade mark/ trade name') in relation to its said goods and business. Thus, it is claimed that since 1977, the plaintiff has been honestly and bonafide, continuously, commercially, openly and to the exclusion of others, uninterruptedly and in the course of trade and as proprietor thereof, using its said trade mark/ trade name as Trade Mark in relation to its said goods and business and is carrying on its said goods and business thereunder and has TM/62/2018 Page 3 of 36 -4- built up a valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
5. It is further stated that the plaintiff's said goods and business under the said trade mark/ trade name as also the goodwill and reputation achieved thereunder is global in character and extends into India as well. The plaintiff company has claimed that the said trademark(s) Victoria's Secret and its formative trademarks/ labels are duly registered under various classes in India under the provisions of Trade Mark Act, 1999, which are stated to be valid and subsisting till date and the details thereof have been mentioned in Para no.7 of the plaint.
6. Further, the plaintiff company has also claimed that the artworks involved in plaintiff's said trade marks/ labels are original artistic works and the plaintiff is the owner and proprietor of the copyright therein within the meaning of Indian Copyright Act, 1957. Further, it is stated that the plaintiff has been dealing with its art works/ copyright in the course of trade in relation to its said goods and business inter alia within the meaning of S. 14 of the Copyright Act, 1957. Further, it is stated that plaintiff's artistic work and Copyright are further protected in India by virtue of Berne Convention to which India is one of the signatories.
7. It is further stated that plaintiff's said trademarks/labels as well as the goods and business thereunder, have a very strong presence in India through shopping chains and TM/62/2018 Page 4 of 36 -5- online platforms. The plaintiff's reputation and goodwill in relation to its said goods & business existed in India from trans-border reputation as well as information thereon were available to Indians in India & Overseas. The Plaintiff's said goods under the said trademarks/labels are now freely and commercially available as already stated above.
8. Further, the said trade marks/labels have acquired distinctiveness in the market and trade and are identified with the plaintiff and the said goods and business of plaintiff, as exclusively originating from the plaintiff's source alone. The said goods and business of the plaintiff bearing the said trade mark/ label are highly demanded in the market on account of their standard quality and precision. Thus, it is stated that the said trade marks/labels of the plaintiff have become distinctive indicium of the plaintiff in relation to its said goods.
9. Further, it is the case of the plaintiff that plaintiff's goods and business under the said trade mark/ label have acquired tremendous goodwill and enviable reputation in the markets and the plaintiff has already built up a globally handsome and valuable trade thereunder and conducted handsome business thereunder running into Billions of Dollars worldwide. It is further the case of the plaintiff that the plaintiff has been regularly and continuously promoting its said goods and business under the said trade marks/ labels through extensive advertisements, publicities, promotions and marketing & marketing research and the Plaintiff has been spending enormous TM/62/2018 Page 5 of 36 -6- amounts of moneys, efforts, skills and time thereon. The Plaintiff has been doing so through various means and modes including through the visual, print and electronic media, in leading Newspapers, trade literature & magazines, over the television and internet, through word of mouth etc. and all of which have tremendous reach, availability and circulation world over including in India.
10. Further, on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the products of the plaintiff under the said trade marks/labels have acquired enviable reputation and goodwill in the international markets including in India, where in addition to the aforesaid, the plaintiff also enjoys trans-border reputation and user as extending into India. It is claimed that trademark/ labels are well known trademarks within the meaning of S. 2(1)(zg) of the Act.
11. Hence, it is claimed that in view of the Plaintiff's proprietary rights both under statutory and common law in its said trademarks, its goodwill & reputation, and its copyrights, the Plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trademark/label in any manner whatsoever in relation to any specification of goods without the leave and license of the Plaintiff.
12. It is alleged that the Defendant No.1 imported a consignment of counterfeit products of different brands, vide Bill of Entry No.5127859 dated 08.02.2018 at the TM/62/2018 Page 6 of 36 -7- Chennai Port, which was intercepted and seized by the Defendant No.2, as the said consignment was found to be in violation of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 framed under the Customs Act, 1962, vide Notification no.48/2007 dated 08.05.2007. It is stated that Defendant nos.2 & 3 are relevant custom offices and are authority of Indian Government who are responsible for collecting custom duties and are made to regulate the export and import of the goods into and out of the country.
13. It is stated that the Defendant No.2 informed the Plaintiff's attorneys vide e-mail dated 12/03/2018 that they have detained impugned goods and asked the attorney to join the examination /inspection of goods. Their details are as follows-
Sr. Trademark Item Bill of Bill of Date of
No. Lading Entry Bill of
Entry
1. Victoria's Fragrances, JEAKAT1 5127859 08-02-18
Secret perfumes, 800558
deodrants [24-01-18]
14. It is further stated that vide letter dated 12/03/2018, the Plaintiff's said attorney through its counsels joined the said proceedings and requested for carrying out inspection and asked for details. After inspection, the defendant no.2 was informed that the seized/detained goods are not original vide letter dated 02/04/2018. It is stated that the defendant no.2 is headed by the defendant no.3.
15. It is stated that said consignment contains 4180 pieces of huge quantities of counterfeit products bearing the TM/62/2018 Page 7 of 36 -8- Plaintiff's impugned trademarks VICTORIA'S SECRET and its formative trademarks/labels for deodorants, fragrances, perfumes (hereinafter referred to as the "impugned goods and business").
16. Thus, it is alleged that defendant no.1 has dishonestly and malafidely adopted and started using impugned trade mark VICTORIA'S SECRET and its formative trademarks/labels which are visually, structurally identical and/or deceptively and confusingly similar to the registered trademark of the plaintiff VICTORIA'S SECRET and its formative trademarks/labels, thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is the plaintiff company. It has been averred that by doing so, the defendant no.1 is not only damaging the reputation and goodwill of the plaintiff company by passing off its substandard products as that of the plaintiff company but is also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademarks of the plaintiff company.
17. On these grounds, the plaintiff has filed the present suit against the defendant no.1 praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant no.1 and all others acting for and on its behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner using the impugned trade TM/62/2018 Page 8 of 36 -9- mark VICTORIA'S SECRET and its formative trademarks/labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL ETC., which may be identical with and/ or deceptively similar to the plaintiff's said trade mark VICTORIA'S SECRET and its formative trademarks/labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL ETC., in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff. It was also prayed that defendant nos. 2 and 3 be also restrained from releasing and defendant no.1 from obtaining release of impugned goods under VICTORIA'S SECRET [Bill of Entry No.5127859 dated 08-02-2018], which were lying with defendant nos. 2 and 3 and direction is sought to be issued to defendant nos. 2 and 3 to absolutely confiscate the impugned counterfeit goods, with liberty to the plaintiff to destroy the said impugned goods in accordance with law.
18. The suit was accompanied with application Order XXXIX Rule 1 & 2 CPC seeking ex parte ad interim injunction. After hearing the counsel of plaintiff, the said application was allowed, vide order dated 01-06-2018 passed by Ld. Predecessor of the Court, thereby granting an ex parte ad interim injunction in favour of the plaintiff and against the defendant no.1 thereby restraining the defendant no.1 from using the impugned trademark.
19. Summons of the suit and notice of accompanying applications were issued to the defendants in terms of TM/62/2018 Page 9 of 36 -10- relevant orders. The defendant nos. 2 and 3 put appearance through counsel, however, their right to file written statement was struck off vide order dated 15-12-2018 passed by Ld. Predecessor of this Court after observing that no written statement had been filed by said defendants till date despite giving 30 days' time on the last date of hearing. However, subsequently, on an application moved on behalf of said two defendants, the delay was condoned and the written statement was allowed to be filed subject to cost of Rs.5000/- payable by the said defendants to the plaintiff, vide order dated 13-01-2020, passed by Ld. Predecessor of the Court.
20. It may be noted that the present case was received by this Court on 03-9-2022, as already noted above in Para No.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra). Since the defendant no.1 was still to be served, summons of the suit and notice of aforesaid application were directed to be issued to it for next date and remaining two defendants were directed to file reply thereto.
21. Since the defendant no.1 could not be served through ordinary mode, he was served by way of publication in newspapers (1) 'The Hindu' Chennai (English edition) and TM/62/2018 Page 10 of 36 -11- (2) 'The Hindu' Chennai (Tamil Edition) , both dated 29-12-2022 in terms of order dated 23-11-2022 passed by Ld. Predecessor of this Court while disposing off the application moved on behalf of the plaintiff under Order V Rule 20 CPC for substituted mode of service upon defendant no.1.
22. The aforesaid amendment application was allowed vide order dated 06-3-2022 passed by Ld. Predecessor of this Court and defendants were directed to file written statement to the amended plaint within 30 days from the date of said order. However, the defendant nos. 2 and 3 failed to file written statement to amended plaint either within 30 days or even within 120 days from date of allowing amendment application and direction to them to file written statement to the amended plaint, despite grant of sufficient time and thus, their right to file written statement to the amended plaint was closed in view of judgment of Hon'ble Apex Court in case titled ' SCG Contracts India Pvt. Ltd. v. K. S. Chamankar Infrastructure Pvt. Ltd. & Ors' reported as AIR 2019 SC 2691.
23. As regards defendant no.1, since none had been appearing on its behalf despite due service by way of publication in aforesaid newspapers, the defendant no.1 was proceeded against as ex parte vide order dated 13-7-2023, passed by Ld. Predecessor of this Court.
24. In view of above, the position as emerges on record is that although, written statement was filed by the defendant TM/62/2018 Page 11 of 36 -12- nos. 2 and 3 to the original plaint, yet they failed to file written statement to the amended plaint in conformity with the provisions of the Commercial Courts Act, 2015. Further, defendant no.1 failed to file written statement either to the original plaint or to the amended plaint during the course of trial.
25. It may also be noted that the interim order dated 02-8-2018 was made absolute till the pendency of the present suit while disposing off the application under Order XXXIX Rules 1 & 2 CPC, vide order dated 16-10-2023 passed by Ld. Predecessor of this Court.
26. Vide order dated 18-2-2024, following issues were framed from the pleadings of the parties:-
(i) Whether the present suit is liable to be dismissed for want of notice under S. 155 of the Customs Act, 1962 and / or S. 80 CPC, 1908, in view of preliminary objection no.5 of the written statement of defendants no. 2 and 3? ONUS TO PROVE IS UPON DEFENDANTS NO. 2 AND 3.
(ii) Whether plaintiff is entitled to decree of permanent injunction against defendant company thereby restraining the defendant from using, selling, soliciting, importing, exporting, displaying, advertising or by any other mode or in any manner using impugned trade mark/ label VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, TM/62/2018 Page 12 of 36 -13- VICTORIA'S SECRET BOMBSHELL etc. or any other mark which is identical with and/ or deceptively similar to plaintiff's trade mark/ label VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. in similar goods which amounts to infringement of plaintiff's said trade mark, copyright and is liable to be restrained from passing off their goods as that of plaintiff, as prayed in Prayer Clause No.(a) of the amended plaint ? OPP.
(iii) Whether plaintiff is entitled to seek any direction in terms of Prayer Clause no. (b) of the amended plaint. If so, to what extent? OPP.
(iv) Whether plaintiff is entitled to order for delivery up of all impugned goods, finished and unfinished material bearing impugned mark/ label/ trade name/ domain name for the purposes of destruction and erasure, as prayed in Prayer Clause no.(c) of the amended plaint? OPP.
(v) Whether plaintiff is entitled to an order of rendition of accounts of profits earned by the defendant no.1 by its impugned illegal trade activities and is entitled to a decree for the amount so found in favour of plaintiff on such rendition of account, as prayed in Prayer Clause no. (e) of the amended plaint? OPP
(vi) Relief.TM/62/2018 Page 13 of 36 -14-
27. It may be clarified here that total 6 (Six) issues were framed vide order dated 28-2-2024, which are noted above. However, in the Court's proceedings/order sheet dated 28-2-2024, issue no.2 which is already reproduced hereinabove, inadvertently was shown in two separate parts, by way of issue nos. 2 and 3. It may be noted that in fact, the issue no.3 is not a separate issue and rather, same is in continuation of issue no.2 which is apparent from bare reading of the language of issue nos.2 and 3. It appears that same occurred due to application of 'automatic bullet numbering command' as inadvertently at the end of first page of proceedings dated 28-2-2024, 'Enter key' would have been pressed in order to give pagination number, which would have in creation of fresh bullet number i.e. no.3. Thus, issue nos. 2 and 3 be read as issue no.2 and issues framed thereafter may be read as issue nos. 3, 4, 5 and 6 respectively.
28. The defendant nos.2 and 3 had also stopped appearing in this case and consequently, they were also proceeded against as ex parte, vide order dated 01-5-2024, passed by this Court.
29. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Ms. Meena Bansal as PW1. She led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and relied on the following documents:-
TM/62/2018 Page 14 of 36 -15- Sr. Document/Particulars Exhibit(s)
No.
1. Representations/Specimens of Ex.PW1/1
the plaintiff's trademark/label (Colly.)
2. The true representation of Ex.PW1/2
impugned trademark/label of the (Colly.)
Defendant no. 1 (Photos obtained
from Defendant No.2)
3. Copy of Letter dated 12/03/2018 Ex.PW1/3
issued by Defendant no.2 to the (Colly.)
plaintiff and subsequent
communications by the plaintiff
dated 12/03/2018 and
02/04/2018
4. Status and Copy of registration Ex.PW1/4
Certificates with respect to the (Colly.)
Plaintiff's Trademark
5. Advertisements and articles Ex.PW1/5
about the plaintiff's products (Colly.)
under the plaintiff's
trademark/label
6. Copy of documents in support of Ex.PW1/6
Plaintiff business in New Delhi (Colly.)
Jurisdiction
7. Copy of Stamped Ex.PW1/7
Resolution-cum-Authority in
favour of Gurjeet Singh
TM/62/2018 Page 15 of 36
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Sr. Document/Particulars Exhibit(s)
No.
8. Affidavit under order XI Rule 6 Ex.PW1/B
(3) CPC for electronic record and
documents
30. On statement of AR the plaintiff, the ex parte evidence of the plaintiff was closed on 01-05-2024. After closure of PE, ex parte final arguments were heard.
31. It may be noted here that during the course of final arguments, Ld. Counsel of plaintiff made statement to give up reliefs as prayed in Prayer Clause Nos. 38(c), 38(e), 38(f), 38(g) and 38(h) of the amended plaint regarding delivery up, rendition of accounts of profits, disclosing the details of the exporter/ supplier from where impugned goods have been supplied including the complete name, address, e-mail id, contract number, bank details, disclosing the details of all the entities involved in the infringement chain of the impugned goods and restraining the defendant no.1 from disposing off or dealing with his assets respectively. Accordingly, the plaintiff was permitted to give up the said reliefs as prayed in Prayer Clause Nos. 38(c), 38(e), 38(f), 38(g) and 38(h) of the amended plaint, vide order dated 16-07-2024.
32. I have already heard Ld. counsel of the plaintiff. I have also gone through the material available on record including the plaint and the evidence, oral as well as documentary, led from the side of the plaintiff.
TM/62/2018 Page 16 of 36 -17-ISSUE WISE FINDINGS
33. My issue wise findings are as under:-
ISSUE NO.1
34. Firstly I shall take up the issue no.(i), which is reproduced hereunder:-
Issue no.(i) - Whether the present suit is liable to be dismissed for want of notice under S. 155 of the Customs Act, 1962 and / or S. 80 CPC, 1908, in view of preliminary objection no.5 of the written statement of defendants no. 2 and 3 ? ONUS TO PROVE IS UPON DEFENDANTS NO. 2 AND 3.
35. Onus to prove the aforesaid issue was placed upon defendant nos. 2 and 3. As already noted above, the said defendants had failed to file written statement to the amended plaint in conformity with the Commercial Courts Act, 2015 and also stopped appearing in this matter and eventually, they were proceeded against as ex parte. Moreover, none had turned up on their behalf to cross-examine PW1.
36. Ld. Counsel of plaintiff has argued that since the reliefs involved in the present suit were of urgent in nature, the bar contained in S. 155 (2) of the Customs Act, 1962 and/or S. 80 CPC shall not apply to the present suit. In support of said submissions, he has drawn attention of the Court to the relevant averments appearing in the plaint and the reliefs sought therein.
TM/62/2018 Page 17 of 36 -18-37. No doubt, S. 80 (1) CPC clearly stipulates that no suit or legal proceeding shall be instituted against the Central Government/ State Government/ Statutory Authorities without serving prior notice upon them before institution of any suit. However, an exception is carved out in S. 80(2) CPC, to the effect that any suit to obtain an urgent or immediate relief against the government / public authorities may be instituted, with the leave of the Court, without serving any notice as required by Sub-Section (1) thereof. However, the language employed in S. 155 (1) of the Customs Act, 1962 would show that it prohibits filing of any suit, prosecution or other legal proceedings against the Central Government or any officer of the Government or local authority for any act done or intended to be done in good faith in pursuance to the said Act or the Rules framed thereunder.
38. In the case in hand, there cannot be any dispute that some of the reliefs including the relief of permanent injunction, as sought by the plaintiff, are of urgent nature. In fact, keeping in view the urgency of such relief(s) and on the basis of material on record, Ld. Predecessor of this Court had been pleased to grant ex parte an ad interim injunction in favour of the plaintiff and against the defendants at the initial stage of trial. It is an admitted position on record that the plaintiff has not sought any relief against Custom Department or any of its officers for any official act done or intended to be done in good faith within the meaning of S. 155(1) of the Customs Act, 1962. For all these reasons, TM/62/2018 Page 18 of 36 -19- this Court is entirely in agreement with the submissions made on behalf of the plaintiff that the present suit is not barred either by S. 80 CPC or by S. 155 of the Customs Act, 1962. Accordingly, this issue is decided against the defendant nos. 2 and 3 and in favour of the plaintiff.
ISSUE NO.2.
39. Now, I shall take up the issue no.(ii), which reads as under:-
Issue no.(ii) - Whether plaintiff is entitled to decree of permanent injunction against defendant company thereby restraining the defendant from using, selling, soliciting, importing, exporting, displaying, advertising or by any other mode or in any manner using impugned trade mark/ label VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. or any other mark which is identical with and/ or deceptively similar to plaintiff's trade mark/ label VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. in similar goods which amounts to infringement of plaintiff's said trade mark, copyright and is liable to be restrained from passing off their goods as that of plaintiff, as prayed in Prayer Clause No.(a) of the amended plaint ? OPP.TM/62/2018 Page 19 of 36 -20-
40. The onus to prove aforesaid issue was placed upon plaintiff. In order to discharge its burden, the plaintiff has examined sole witness i.e. its AR namely Ms. Meena Bansal as PW-1, as already noted above. She tendered her evidence by way of affidavit, therein deposing on the identical lines of averments made in the plaint and has proved the relevant documents, which are already noted above.
ARGUMENTS OF THE PLAINTIFF
41. Ld. Counsel of plaintiff has argued that the entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendants and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Counsel also relied upon the documents [Ex.PW1/1 (Colly.) to Ex.PW1/7 and Ex.PW1/B].
42. Further, it is submitted by Ld. Counsel of plaintiff that the trademark VICTORIA'S SECRET and its formative trademarks/ labels are well known trademarks of the plaintiff and are registered under various classes of the Trademark Rules 2002 in India, which are valid and subsisting in favour of the plaintiff company till date. The aforesaid trade marks/ labels are also registered in many other countries. Further, the art works involved in the trademarks/ labels is original artistic work and the plaintiff holds copyright therein. Further, it is submitted that the plaintiff spends huge amount of money in advertising and TM/62/2018 Page 20 of 36 -21- promotion of its products and said Marks enjoy a huge goodwill and reputation in business community and public in general in India.
43. Further, he submitted that the use of impugned trade mark VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. as adopted by defendant no.1, which are identical and/ or confusingly or deceptively similar to the registered trademark of the plaintiff VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc., not only amounts to committing fraud upon the plaintiff company but also upon the unwary general public, due to which the plaintiff company suffers huge monetary loss and its goodwill and reputation is also at stake and therefore, he urged that the suit may be decreed in favour of the plaintiff and against the defendant no.1, thereby restraining the defendant no.1 and all others acting for and on his behalf from using the said impugned trade-mark/ label.
ANALYSIS & CONCLUSION
44. I have considered the submissions made on behalf of the plaintiff. I have also duly considered the relevant material available on records.
JURISDICTION
45. Firstly, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the Defendant no.1 is TM/62/2018 Page 21 of 36 -22- soliciting, networking and in turn, offering to sell and is supplying the impugned goods bearing the impugned trademark to the dealers and distributors in the markets of New Delhi viz. Parliament Street, Barakhamba, Chanakyapuri, Gole Market, Khan Market, Bengali Market etc. The said defendant is committing the act of infringement and passing off in the area of New Delhi by making clandestine and surreptitious sales and distribution. Hence, it is contended that a part or whole of cause of action has arisen within the jurisdiction of this Court within the meaning of S. 20 of CPC.
46. Besides, it is further argued by Ld. Counsel of plaintiff that the plaintiff is also carrying on its said goods and business under its said trademarks/label at Delhi International Airport [Delhi Duty Free] and thus, the plaintiff has extensive goodwill and reputation under the said trademark/labels on account of voluminous sales and advertisement within the jurisdiction of the Court through online platforms like Flipkart, e-bay, Snapdeal etc. which are interactive in nature and are accessible within the jurisdiction of this Court and goods can be purchased and delivered within the jurisdiction of this Court. Thus, it is contended that this Court has also territorial jurisdiction to entertain and try the present suit within the meaning of S. 134 (2) of the Trademarks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957.
47. The PW1 has categorically deposed in her affidavit in evidence on identical lines of the averments made in the TM/62/2018 Page 22 of 36 -23- plaint. PW-1 has proved copy of document in support of plaintiff business in New Delhi jurisdiction as Ex.PW-1/6. Ex.PW1/6 is document which appears to be extracts of news article (online) dated 14th April, 2014, wherein it is duly shown/reported that Delhi Duty Free had opened Victoria's Secret at Delhi T3, which falls within the territorial jurisdiction of this Court.
48. The whole testimony of PW1 remained unchallenged and uncontroverted as the defendants have neither filed written statement in conformity with the Commercial Courts Act, 2015 nor have chosen to cross-examine PW1.
49. In view of the foregoing reasons and in the totality of the facts and circumstances of the case, the Court is of the considered opinion that at least part cause of action has arisen within the territorial jurisdiction of this Court and therefore, this Court has territorial jurisdiction to try and entertain the suit.
PERMANENT INJUNCTION:
50. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors", reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trademarks, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trademarks of the plaintiff and the goods or services covered are similar to the ones covered by such registered trademarks, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademarks. Similarly, when the trademarks of the plaintiff is similar to the registered TM/62/2018 Page 23 of 36 -24- trademarks of the Defendant and the goods or services covered by such registered trademarks are identical or similar to the goods or services covered by such registered trademarks, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trademarks of the Defendant is identical with the registered trademarks of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trademarks, the Court shall presume that it is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trademarks. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trademark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trademarks for the vindication of the exclusive rights to the use of the trademarks in relation to those goods. The use by the Defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trademarks of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trademarks, whereas in the case of a passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the Defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trademarks. It has further been held that though the get up of the Defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of TM/62/2018 Page 24 of 36 -25- deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that Defendant is improperly using the Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the Defendant's trademarks is identical with the Plaintiff's trademarks, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
51. It is now well settled law, as also laid down by our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) that an infringement of trademarks is to be seen from the perspective of a layman, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trademarks, if the impugned marked used by the defendant is identical with the registered trademarks of the plaintiff, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trademarks has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average TM/62/2018 Page 25 of 36 -26- memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).
52. In view of above legal position, lets examine the facts of the case in hand. The averments made in the plaint are duly supported by the documents proved during the course of evidence. PW-1 has deposed on identical lines of the averments made in the plaint and has proved various documents, as already referred to above.
53. In this case, the plaintiff has relied upon and has filed copy of Trade Mark Registration Certificates and status reports thereof, which are duly proved by PW-1 as Ex.PW1/4 (Colly.). As per these documents, it is duly shown, inter alia, that trade marks "VICTORIA'S SECRET", "VICTORIA'S SECRET PINK" and "VICTORIA'S SECRET BOMBSHELL" are duly registered as Word Mark in various classes in favour of the plaintiff since long. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of said trademarks/ word marks/ device marks stand renewed and same are valid till date.
54. As already noted above, the defendant no.1 despite being duly served with summons of the suit by way of publications in terms of relevant orders passed by the Court, chose not to appear to contest the suit and eventually, he was proceeded against ex parte. The defendant no.1 did not even turn up to cross-examine PW-1. Therefore, the entire testimony of PW-1 has gone TM/62/2018 Page 26 of 36 -27- unrebutted, uncontroverted and unchallenged. Thus, the case of the plaintiff stood proved against the defendant no.1 on the basis of preponderance of probability. It is duly established on record that "VICTORIA'S SECRET", "VICTORIA'S SECRET PINK" and "VICTORIA'S SECRET BOMBSHELL" are duly registered in favour of the plaintiff as word mark.
55. Further PW-1 has also proved copy of letter dated 12-3-2018 issued by defendant no.2 to the plaintiff and subsequent communication by the plaintiff dated 12-3-2018 and 02-4-2018 as Ex.PW1/3 (Colly.). As per the same, it is duly shown that the defendant no.2 by way of e-mail had informed the plaintiff through its counsel regarding seizure of impugned goods imported by M/s Alangar Apparels i.e. defendant no.1 vide B/E NO.
5127859/08.02.2018 and in response thereto, the plaintiff through its counsel had reverted back to the defendant no.2 vide letter dated 12-3-2018 and 02-4-2018, thereby informing the defendant no.2 that seized goods are counterfeit. Therefore, the plaintiff has been able to establish on record that the impugned seized goods were imported by M/s Alangar Apparels i.e. defendant no.1.
56. In the totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant no.1 had imported seized goods bearing falsified trademark /trade name/ labels of the plaintiff company and therefore, trademarks and copyright of plaintiff company are required to be protected.
TM/62/2018 Page 27 of 36 -28-57. Accordingly, the plaintiff is held entitled to decree of permanent injunction whereby the defendant is required to be restrained from using trademark VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. or any other trade mark which may be identical with and/ or deceptively similar to the plaintiff's said trade mark VICTORIA'S SECRET and its formative trademarks/ label VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc. in relation to similar goods, thereby infringing Plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
58. Accordingly, the issue no. (ii) is decided against defendant no.1 and in favour of the plaintiff.
ISSUE NO.3
59. Now I shall decide issue no.3 which is reproduced hereunder:-
Issue no. (iii) - Whether plaintiff is entitled to seek any direction in terms of Prayer Clause no.(b) of the amended plaint. If so, to what extent? OPP.
60. In order to decide this issue, it would be relevant to mention about the relevant relief sought by plaintiff by way of Prayer Clause (b) of the amended plaint. Same reads as under:-
"(b) Restraining and directing the defendant TM/62/2018 Page 28 of 36 -29- nos. 2 & 3 from releasing and defendant no.1 from obtaining release of impugned goods under VICTORIA'S SECRET (Bill of Entry No. 5127859 dated 08-2-2018), and its formative trademarks/ labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc., and trademarks/ labels/ packaging and/or any other word /mark/ label/ packaging which may be identical with and/ or deceptively similar to plaintiff's said trade mark VICTORIA'S SECRET and its formative trademarks/ labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc., presently lying in the custody of defendant no.2 & 3 being consignment under Bill of Entry No. 5127859 dated 08-02-2017."
61. The onus to prove the aforesaid issue was placed upon the plaintiff. As already noted above, the defendants nos.2 and 3 did not turn up to cross-examine PW1 apart from the fact that they had failed to file written statement to the amended plaint in conformity with the Commercial Courts Act, 2015 despite availing number of opportunities, which ultimately led to closure of their right to file written statement to the amended plaint.
62. Admittedly, the written statement, which was initially filed to the original plaint, is not in accordance with the provisions of Commercial Courts Act, 2015. Further, defendant nos. 2 and 3 had also stopped appearing and consequently, were proceeded against ex parte.
63. As already noted hereinbefore, the detention of impugned goods has been made by the custom authorities under the TM/62/2018 Page 29 of 36 -30- Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. The said relevant Rules provides the requisite procedure to be followed in respect of the seized infringed goods. Rule 2 (d) thereof defines the term 'Right Holder' as under:-
" right holder" means a natural person or a legal entity, which according to the laws in force is to be regarded as the owner of protected intellectual property right, its successors in title, or its duly authorized exclusive licensee as well as an individual, a corporation or an association authorized by any of the aforesaid persons to protect its rights."
64. In the present case, the plaintiff has been held to be owner of the said trademark while rendering findings on issue no.
(ii) in the preceding paras. Thus, as per the aforesaid the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 of the Custom Authorities, the plaintiff squarely falls within the definition of 'Right Holder'.
65. Further, Rule 9 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 provides as under:-
"9. Supply of information to the right holder.
- At the request of the right holder , the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, shall inform the name and address of the importer and without prejudice to the protection of confidential information the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may also provide additional relevant information relating to the consignment which has been suspended from TM/62/2018 Page 30 of 36 -31- clearance."
66. In the case in hand, the defendant nos.2 and 3 have chosen not to file any written statement. Therefore, under Rule 9, as quoted above, the plaintiff was entitled to be provided with the requisite information as mentioned therein.
67. Further, Rule 7 (Suspension of clearance of imported goods) and Rule 11 (Disposal of infringing goods) lays down the complete procedure of suspension of release and disposal thereof as under :-
"11. Disposal of infringing goods. -
(1). Where upon determination by the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, it is found that the goods detained or seized have infringed intellectual property rights, and have been confiscated under section 111 (d) of the Customs Act, 1962 and no legal proceedings are pending in relation to such determination, the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, shall, destroy the goods under official supervision or dispose them outside the normal channels of commerce after obtaining "no objection" or concurrence of the right holder or his authorized representative:
Provided that if the right holder or his authorized representative does not oppose or react to the mode of disposal as proposed by the Deputy Commissioner of Customs or Assistant Commissioner of Customs, as the case may be, within twenty working days after having been informed, or within such extended period as may have been granted by the Commissioner at the request of the right holder, not exceeding another twenty working days, he shall be deemed to have concurred with the mode of disposal as proposed by the Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be:
Provided further that the costs toward destruction, demurrage and detention charges incurred till the time TM/62/2018 Page 31 of 36 -32- of destruction or disposal, as the case may be, shall be borne by the right holder.
(2) There shall not be allowed the re-exportation of the goods infringing intellectual property rights in an unaltered state.
(3) The Deputy Commissioner of Customs or Assistant Commissioner of Customs , as the case may be, may on his own, or at the request of the right holder, retain samples of goods infringing intellectual property rights prior to their destruction or disposal and provide the same to the right holder or importer if such samples are needed as evidence in pending or future litigation."
68. Thus, it is quite evident from bare perusal of the aforesaid rules that the infringed seized goods can be destroyed by the Custom Authorities and the cost is to be borne by the 'Right Holder', which is plaintiff in this case.
69. In the present case, the defendant nos.2 and 3 were directed vide order dated 16-7-2024, passed by the Court to file status report in respect of the seized/ confiscated goods vide Bill of Entry No.5127859 dated 08-2-2018, as also the status of the adjudication proceedings qua those confiscated/ seized goods. However, the said defendants have not filed any such report before the Court till date. Hence, the Court is virtually deprived of having the status of such confiscated / seized goods, despite the fact that defendant nos. 2 and 3 were duty bound under the law to render all due assistance to the Court for the purpose of effective adjudication of the subject matter involved in the suit.
70. In view of the foregoing reasons and the discussions made hereinbefore, the defendant nos.2 and 3 are hereby TM/62/2018 Page 32 of 36 -33- restrained from releasing the infringed seized goods vide Bill of Entry No.5127859 dated 08-2-2018 to the defendant no.1 and they are further directed to consider the destruction of the infringed seized goods as per the procedure laid down in this regard in the light of rules quoted above and also keeping in view all the enabling provisions governing the situation in hand and while complying with relevant directions, if any, issued by Hon'ble Superior Courts in this regard. This issue stands decided in these terms.
ISSUE NO.4
71. Now I shall decide issue no.4 regarding delivery up which is reproduced hereunder:-
Issue no.(iv) - Whether plaintiff is entitled to order for delivery up of all impugned goods, finished and unfinished material bearing impugned mark/ label/ trade name/ domain name for the purposes of destruction and erasure, as prayed in Prayer Clause no.(c) of the amended plaint? OPP.
72. No finding is required to be given in respect of aforesaid issue, in view of statement of counsel of plaintiff made on 16-07-2024 regarding giving up the relief as prayed in Prayer Clause No. 38(c) of the amended plaint and consequent order thereof.
ISSUE NO.5
73. Now I shall decide issue no.5 which is reproduced TM/62/2018 Page 33 of 36 -34- hereunder:-
Issue no. (v) - Whether plaintiff is entitled to an order of rendition of accounts of profits earned by the defendant no.1 by its impugned illegal trade activities and is entitled to a decree for the amount so found in favour of plaintiff on such rendition of account, as prayed in Prayer Clause no. (e) of the amended plaint? OPP
74. No finding is required to be given in respect of aforesaid issue, in view of statement of counsel of plaintiff made on 16-07-2024 regarding giving up the relief as prayed in Prayer Clause No. 38(e) of the amended plaint and consequent order thereof.
RELIEF:
75. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant(s) and the following reliefs are granted:-
(i) Suit is decreed in favour of plaintiff and against the defendant no.1 qua permanent injunction thereby restraining the defendant no.1 by itself as also through its individual proprietors/ partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using, selling, soliciting, importing (in any manner or from any other port), exporting, TM/62/2018 Page 34 of 36 -35- displaying, advertising or by any other mode or in any manner using impugned trademark VICTORIA'S SECRET and its formative trademarks/ labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc., any other trademarks/ labels/ packaging and /or any other word/mark/label packaging, which may be identical with and/ or deceptively similar to the plaintiff's said trademark VICTORIA'S SECRET and its formative trademarks/ labels VICTORIA'S SECRET PINK, PINK, VICTORIA'S SECRET BOMBSHELL etc.,, thereby infringing Plaintiff's registered trademarks, copyright and passing off its products as that of the plaintiff.
(ii) Suit is also decreed in favour of plaintiff and against the defendant nos. 2 and 3, whereby the said defendants are hereby restrained from releasing the infringed seized goods vide Bill of Entry No.5127859 dated 08-2-2018 to the defendant no.1 and they are further directed to consider the destruction of the infringed seized goods as per the procedure laid down in this regard in the light of rules mentioned above and also keeping in view all the enabling provisions governing the situation in hand and while complying with relevant directions, if any, issued by Hon'ble Superior Courts in this regard.TM/62/2018 Page 35 of 36 -36-
(iii) Cost of the suit is also awarded in favour of the plaintiff .
76. Decree sheet be prepared accordingly.
77. File be consigned to Record Room, after due compliance.
Digitally signedAnnounced in the open court by VIDYA
on 29th Day of July, 2024. VIDYA PRAKASH
PRAKASH Date:
2024.07.29
16:06:35 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02
PATIALA HOUSE COURTS, NEW DELHI
TM/62/2018 Page 36 of 36