Delhi District Court
Luxuttica Group S.P.A vs Fazad Ahmad Syed on 29 April, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02, PATIALA
HOUSE COURTS, NEW DELHI
CNR NO. : DLND010104082019
CS (COMM.)/998/2022
[OLD NOs.: TM NO./80/19,
CS (COMM.)/341/2019, & TM/178/2021]
IN THE MATTER OF:-
M/S LUXOTTICA GROUP S.p.A
PIAZZALE L. CADORNA
3-20123, MILAN, ITALY
Through
Mrs. Meena Bansal
Constituted Attorney
R/o : 96, Sukhdev Vihar, Mathura Road
New Delhi - 110 025
...PLAINTIFF
VERSUS
1. Fazal Ahmed Sayyed
S/o Imtiyaz Ahmed Sayyed
Trading as Betty Inc.
Shop No.2
Dhavalgiri Building, Apna Ghar
Swami Samarth nagar, Lokhandwala Complex
Andheri West, Mumbai
Maharashtra.
Also as & at :-
Shop No.4, Dhavalgiri Building, Apna Ghar
Swami Samarth nagar, Lokhandwala Complex
Andheri West, Mumbai
Maharashtra.
Shop No.48
Kamdhenu Shopping Centre
Lokhandwala Complex
Andheri West, Mumbai
Maharashtra.
CS (COMM.)/998/2022 Page 1 of 37
-2-
Shop No.6
Basera Building, Lokhandwala Complex
Andheri West, Mumbai
Maharashtra.
2. Saalim Manasia
S/o Zuber Manasiya
Shop No. 13, Lokhandwala Complex
Andheri West, Mumbai
Maharashtra.
Also as & at :-
Near Pearl Building
R No. 204, 2nd Floor
Opp. Raj Nagar, S. V. Road
Behram Baug, Jogeshwari West
Mumbai - 400102
3. Zubair Khorajiya
S/o Habib Khorajiya
Shop No. 14, Lokhandwala Complex
Andheri West, Mumbai
Maharashtra
Also as & at :-
Gulshan Colony, R/10,
Yaari Road, Versova, Andheri
Mumbai - 400 061
...DEFENDANTS
Date of Institution : 10-06-2019
Date of reserving Judgment : 29-04-2025
Date of pronouncing Judgment : 29-04-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit under S. 134 & 135 of Trademarks Act, 1999 and S. 55 of the Copyright Act, 1957 for permanent injunction restraining CS (COMM.)/998/2022 Page 2 of 37 -3- 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 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 27-09-2022 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.
3. It may also be noted that initially, the suit was filed against defendants, thereby arraying defendants as 'Ashok Kumar' on the basis of 'John Doe' principle as applicable in India. Subsequently, after execution of local commission, the plaintiff got substituted the defendants, as mentioned above, in place of defendant/Ashok Kumar (John Doe).
BRIEF FACTS OF THE CASE:
4. The case of the plaintiff, as set out in the plaint, in brief is as under:-
4.1 The plaintiff, which is claimed to be a corporation duly organized and incorporated under the laws of CS (COMM.)/998/2022 Page 3 of 37 -4- Italy, got instituted the present suit through its constituted attorney.
4.2 The plaintiff has claimed itself to be a world leader in the business of manufacturing and distribution of prescription frames and sun glasses in the premium luxury segment etc. under the well-known trademark RAY BAN.
4.3 It is averred that the plaintiff was founded by Mr.Leonardo Del Vecchio in the year 1961,when he had set up Luxottica di Del Vecchio e C.S.a.S. In the year 1964, the same became a joint stock company, duly organized under the laws of Italy under the name of Luxottica S.p.A. Till the end of 1960s, the Luxottica operated as a contract producer of dies, metal components and semi-finished goods for the optical industry. In the year 1967, the Luxottica started to manufacture complete eyeglass frames under the brand Luxottica. In the year 1971, the Luxottica ended the contract manufacturing business and since then the business of company have been manufacture and sale of eye wears and allied and cognate goods (hereinafter referred to as "the said goods and business"). In the year 1971, the first collection of the Luxottica was presented at NIDO (International Exhibition of Optics, Optometric and Ophthalmology) in Milan, Italy. Since then the plaintiff's said activity grew manifold.CS (COMM.)/998/2022 Page 4 of 37 -5-
4.4 It is further averred that since the year 1980, the international expansion of the plaintiff began. In the year 1981, the plaintiff opened the first commercial subsidiary in Germany. In the year 1982, the plaintiff acquired the U.S. distributor to begin sales operations in U.S.A. In the year 1984, the plaintiff launched its subsidiaries in England, France and Canada. In the year 1988, the plaintiff started to produce Armani branded eyewear under a licensing agreement. In the year 1990, the plaintiff went public on the New York Stock Exchange.
4.5 It is further averred that in the year 1999, the plaintiff acquired the Trade Mark RAY-BAN [hereinafter referred to as 'the said Trade Mark' ] from Bausch & Lomb for $640 million. The afore-mentioned purchase of said Trade Mark RAY-BAN brought the plaintiff as one of the world's strongest stables of sunglasses brand.
4.6 Thus, it is claimed that said Trade Mark RAY-BAN has been honestly & bonafidely adopted and used by its predecessor i.e. M/s Bausch & Lomb since the year 1930s continuously, extensively and exclusively.The said Trade Mark RAY-BAN has been acquired by plaintiff along with its goodwill and reputation.
Thus, it is claimed that the plaintiff has been honestly & bonafidely, continuously, commercially, openly, and to the exclusion of CS (COMM.)/998/2022 Page 5 of 37 -6- others, uninterruptedly and in the course of trade and as proprietor thereof, using its said trademark in relation to its said goods and business and carrying on its business thereunder and has built up a worldwide and globally valuable trade, goodwill and reputation thereunder and has acquired proprietary rights therein.
4.7 In order to obtain the statutory rights, the plaintiff, through its said predecessor, as also itself had applied for obtaining registration in its Trade Mark RAY- BAN world-wide; including in India and has claimed itself to be owner and registered proprietor of said trade mark under the provisions of Trade Marks Act, 1999, which are stated to be valid and subsisting as on date in its favour. Details thereof have been given in Para no.9 of the plaint.
4.8 It is averred that the Trade Mark RAY-BAN of the plaintiff was originally registered in the name of M/s Luxottica Leasing S.p.A., which was converted into Luxottica Leasing s.r.l. in the year May, 2004. The said Luxottica Leasing s.r.l. has assigned all its Trade Mark rights, including the Trade Mark RAY- BAN to M/s Killer Loop Eyewear S.p.A by the Act of December, 2004. The said M/s Killer Loop Eyewear S.p.A was subsequently merged into Luxottica s.r.l. by the Act of 16th September 2005. In the year 2007, Luxottica s.r.l. assigned all its Trade Mark rights to the plaintiff.
CS (COMM.)/998/2022 Page 6 of 37 -7-4.9 Further, the plaintiff has also claimed that the art work involved in the plaintiff's said trademark are original artistic works within the meaning of Indian Copyright Act, 1957 and the plaintiff is the owner and proprietor thereof. Further, the plaintiff has been dealing with its art works/ copyright in the course of the trade in relation to its said goods and business, inter alia, within the meaning of S. 14 of the Copyright Act, 1957.
4.10 It is claimed that the plaintiff maintains the highest standard of manufacture and trade and invests enormous amount of money and efforts on Research & Development activities. The said products of the plaintiff under trademark RAY BAN are manufactured and sold under strict quality specification of a very high order, which are strictly maintained. The plaintiff has also been constantly upgrading its facilities in the light of technological advancements.The RAY BAN products of the plaintiff provides 100% protection from ultra violet rays.
4.11 It is further averred that the said goods and business of the plaintiff is based on continuous innovation of manufacturing technologies, research of style, the analysis of evolution of people life style and interpretation of changing fashion trend. The plaintiff distributes its products approximately in 130 countries and operates 38 wholly or partially CS (COMM.)/998/2022 Page 7 of 37 -8- owned subsidiaries, which are placed and located throughout the world.
4.12 Further, it is claimed that products of the plaintiff under the said trademark RAY-BAN are highly demanded in the world market including in India. The said RAY BAN products of the plaintiff are recognized and demanded with reference to its high standard quality and said products under the said trade mark are distinctive of the plaintiff and that the same denotes and connotes the high quality products of the plaintiff alone.
4.13 It is further claimed that the plaintiff has regularly and continuously been promoting its said distinctive Trade Mark through extensive advertisements, publicity promotion and market research and the plaintiff has been spending enormous amount of money, efforts, labour and skill thereon. The plaintiff has been doing so, through various means and modes, including through visual and print media, trade literature and magazines, including on the internet, television advertisement etc., world wide, including in India. In view thereof, the said Trade Mark RAY-BAN enjoys tremendous goodwill and reputation worldwide, including in India. It is also claimed that the said Trade Mark RAY BAN of the plaintiff stood 81st in the world's top 100 brands. The RAY BAN product has acquired secondary meaning with the plaintiff. The said Trade Mark of CS (COMM.)/998/2022 Page 8 of 37 -9- the plaintiff is a well-known Trade Mark within the meaning of Section 2(1) (zg) Trade Marks Act, 1999.
4.14 It is further the case of the plaintiff that 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 mark/ label have acquired enviable reputation and goodwill not only in India but across the globe. Further, the plaintiff spent huge amount of money in advertising and promotion of its products under the said trade mark in India and around the world, due to which the products of the plaintiff under the said trade mark enjoy huge goodwill and reputation in business community and public in general in India and across the world. The plaintiff company has got huge turnover against sale of its products worldwide. Hence, it is claimed that in view of the plaintiff's proprietary rights both under statutory and common law in its said trademark, 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.
4.15 It is alleged that the defendants are engaged in the business of selling, trading, retailing, manufacturing, CS (COMM.)/998/2022 Page 9 of 37 -10- marketing, soliciting and trade of sunglasses, glasses, spectacles, eyeglasses, eye-wears etc. and other allied/ cognate goods etc. [hereinafter referred as 'the said impugned goods and business' ]. It is further alleged that the defendants have started using impugned trade mark RAY-BAN [hereinafter referred to as 'the said impugned trade mark'] in relation to their impugned goods and business and have been using the same individually or in combination of each other in logo/label form.
4.16 The plaintiff company has further alleged that in the last week of May,2019, it came across impugned goods and business of the defendants in New Delhi market. Being aggrieved thereby, the plaintiff caused an inquiry in the market, which revealed that the defendants had just about in the month of May,2019, adopted and starting using the said impugned trade mark in relation to their impugned goods. Further, it is also learnt that the defendants are carrying on its impugned activities under the impugned trademark in a clandestine and surreptitious manner from their premises and that too without issuing formal sale bills.
4.17 Thus, it is alleged that the defendants have dishonestly and malafidely adopted impugned trademark/label RAY BAN which is visually, structurally identical and/or deceptively and confusingly similar to the registered trademark/ CS (COMM.)/998/2022 Page 10 of 37 -11- label of plaintiff RAY BAN, 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 defendants are not only damaging the reputation and goodwill of the plaintiff company by passing off their substandard products as that of the plaintiff company but are also causing financial loss to the plaintiff company by reaping unfair advantage of the repute and distinctive character of the trademark of the plaintiff company.
5. On these grounds, the plaintiff has filed the present suit against the defendants praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendants and all others acting for and on their behalf from using the impugned trade mark/ label RAY BAN or any other word mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade marks / label RAY BAN in relation to similar goods, thereby infringing plaintiff's registered trademarks, copyright and passing off their products as that of the plaintiff.
6. The suit was accompanied with applications - one under Order XXXIX Rules 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking ex parte ad interim injunction and ex parte order for appointment of local commissioner to visit and search the premises of the defendant. After hearing CS (COMM.)/998/2022 Page 11 of 37 -12- counsel of the plaintiff, the said applications were allowed, vide common order dated 11-06-2019 passed by the then Ld. ADJ-01, PHC, New Delhi, thereby granting ex parte ad interim injunction in favour of the plaintiff and against the defendants and Local Commissioner was also appointed to visit and search the premises of the defendants with certain conditions as mentioned therein. Vide same order, summons of the suit and notice of accompanying applications were also directed to be issued to the defendant for 05-07-2019.
7. Subsequently, an application u/s 151 CPC seeking change of the address of the defendant and extension of time for compliance of order XXXIX Rule 3 of CPC along with Amended Memo of Parties was filed, which was allowed vide order dated 05-07-2019, passed by the then Ld. ADJ-01, PHC, New Delhi thereby directing extending time of execution of commission, besides directing Ld. Local Commission to visit current addresses of the defendants. Vide the same order,summons of the suit and notice of injunction application were also directed to be issued to defendants at their current addresses for 08-08-2019.
8. In pursuance to the aforesaid orders, Ld. Local Commissioner appointed by the Court, executed the commission proceedings, seized the infringed goods and filed detailed report.
9. As already noted above, after execution of commission, the plaintiff got substituted defendants namely Fazal CS (COMM.)/998/2022 Page 12 of 37 -13- Ahmad Sayyed, Saalim Manasiya and Zubair Khorajiya, as defendant nos.1, 2 and 3 respectively, in place of defendant/Ashok Kumar (John Doe) and accordingly, filed Amended Memo of Parties on record.
10. On being served with the summons of the suit and notice of injunction application, the defendant no.1 put his appearance through counsel on 23-09-2019 and even thereafter. The defendant nos. 2 and 3 remained unserved and thus, they were against directed to be served with the summons of suit and notice of injunction application.
11. It may be noted that the present suit was filed during pandemic of Covid-19 and in view of directions of Hon'ble Delhi High Court and the then Ld. Principal District & Sessions Judge, PHC, New Delhi issued from time to time, the matter got adjourned en bloc and was taken up for hearing through video conferencing/ virtual mode only, until physical/hybrid hearing was not permitted.
12. At this juncture, it may also be noted that the present case was received by this Court on 27-09-2022, 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).
CS (COMM.)/998/2022 Page 13 of 37 -14-Same was allowed, vide order dated 21-12-2022 passed by Ld. Predecessor of this Court and the defendants were directed to file written statement to the amended plaint within 30 days after supplying copy thereof to counsel of the plaintiff. Written statement to the amended plaint was filed by defendant no.1, which was taken on record after allowing an application seeking condonation of delay in filing said written statement, vide order dated 30-05-2023, passed by Ld. Predecessor of this Court.
13. The ex parte ad interim order dated 11-06-2019, whereby the defendants were restrained from using trade mark RAY BAN till further order, was made absolute till the pendency of the suit, vide order dated 05-09-2023, passed by Ld. Predecessor of this Court. Accordingly, the application under Order XXXIX Rules 1 and 2 CPC stood disposed off, in these terms. Further, vide same order, since the defendant nos.2 and 3 could not be served by way of ordinary mode of service, they were permitted to be served by way of publication in newspapers namely 'Novshakti' [Marathi edition] and The Hindu [English edition], after allowing and disposing off an application under Order V Rule 20 CPC. Accordingly, both the said defendants were served by way of publication in aforementioned newspapers, both dated 27-10-2023, however, despite such service, none had appeared on behalf of said two defendants and hence, they were proceeded against ex parte, vide order dated 07-11-2023, passed by Ld. Predecessor of this Court.
CS (COMM.)/998/2022 Page 14 of 37 -15-14. In the written statement filed by defendant no.1, it is stated that he is a street vendor in Mumbai and sells goods like nightwear and cosmetics, which is the only source of his livelihood. He has taken preliminary objections that the suit has not been instituted properly by the plaintiff.
15. By way of para-wise reply, the said defendant has merely denied the averments made in the corresponding paras of the plaint. However, in his entire written statement, the defendant no.1 has not claimed himself to be owner and registered proprietor of the impugned trade mark/ label.
16. Since pleadings qua defendant no.1 was complete, the following issues were framed, vide order dated 07-12-2023, passed by Ld. Predecessor of this Court:-
(i) Whether the defendant is infringing trade mark/ copy right of plaintiff in marks/ labels/ device RAY-
BAN? OPP
(ii) Whether the plaintiff is entitled to decree of permanent injunction against the use of impugned trademark RAY-BAN or any other mark, which is deceptively similar mark, as prayed for? OPP.
(iii) Whether the defendant is guilty of passing off the goods of the plaintiff under the impugned trademarks/ labels RAY-BON? PPP
(iv) Whether the plaintiff is entitled to decree of delivery up of the finished and unfinished material bearing the impugned trademark / label RAY-BAN and violative of CS (COMM.)/998/2022 Page 15 of 37 -16- trademark or any other word/mark identical or deceptively similar to the plaintiff's trademark, as prayed for? OPP.
(v) Whether the plaintiff is entitled to decree of rendition of accounts, as prayed for? OPP.
(vii) Relief.
17. In support of its case, the plaintiff company has examined only one witness i.e. its AR namely Smt. Meena Bansal.
18. PW1 led her examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and has relied on the following documents:-
Sr. Document/Particulars Exhibit(s)
no
1. True representation of the trade Ex.PW1/1
mark/ label of plaintiff (Colly.)
2. Photographs of the impugned Ex.PW1/2
goods of the defendant under the (Colly.)
impugned trade mark/ label
3. Status reports of the plaintiff's Ex.PW1/3
trade mark/ labels and Legal (Colly.)
Proceeding Certificate (LPCs)
4. Advertisement, financial reports, Ex.PW1/4
press release related to the plaintiff (Colly.)
5. Copy of authorization letter in Ex.PW1/5
favour of Mrs Meena Bansal and (OSR)
related decuments
CS (COMM.)/998/2022 Page 16 of 37
-17-
Sr. Document/Particulars Exhibit(s)
no
6. Details of plaintiff's authorized Ex.PW1/6
dealers/ showrooms in New Delhi
7. Affidavit under Order XI Rule 6 Ex.PW1/B (3) CPC for electronic record documents.
19. The ex parte evidence of the plaintiff was closed on 15-10-2024. After the closure of PE, final arguments were heard.
20. While observing that this suit was instituted in the month of June, 2019 and is one of the targeted cases pending in this Court, as also that despite grant of sufficient time and number of opportunities, the defendant no.1 could not lead his evidence, his evidence was closed, vide order dated 15-04-2025, passed by this Court.
21. 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. 34(b) and 34(d) of the amended plaint regarding restraining the defendants from disposing off or dealing with their assets and rendition of accounts of profits respectively. Accordingly, the plaintiff was permitted to give up the said reliefs, vide order dated 15-04-2025.
CS (COMM.)/998/2022 Page 17 of 37 -18-22. After hearing final arguments on behalf of plaintiff, the matter was posted for clarification, if any/ judgment for 29-04-2025 i.e. today, however, liberty was granted to defendant no.1 to advance oral arguments and /or to file brief written arguments along with relied upon judicial precedents, if any, on or before 26-04-2025. Despite such liberty, none has come forward on behalf of said defendant either to advance oral arguments and/or to file written submission. Thus, this Court proceeded to decide this matter on the basis of the material available on record.
23. 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.
ISSUE WISE FINDINGS
24. My issue wise findings are as under:-
ISSUE Nos. 1, 2 and 325. Firstly I shall take up the issue nos. (i), (ii), and (iii) together as they are inter connected with each other and can be decided together. The said issues are reproduced hereunder:-
Issue no. (i) -Whether the defendant is infringing trade mark/ copy right of plaintiff in marks/ labels/ device RAY-BAN? OPP CS (COMM.)/998/2022 Page 18 of 37 -19- Issue no. (ii) -Whether the plaintiff is entitled to decree of permanent injunction against the use of impugned trademark RAY-BAN or any other mark which is deceptively similar mark,as prayed for? OPP.
Issue no.3 (iii) -Whether the defendant is guilty of passing off the goods of the plaintiff's under the impugned trademarks / labels RAY-BON? PPP
26. The onus to prove the aforesaid issues was placed upon the plaintiff. In order to discharge its burden, the plaintiff has examined sole witness i.e. its AR as PW1, as already noted above. She tendered her evidence by way of affidavit, thereby deposing on identical lines of the averments made in the plaint and has proved the relevant documents, which are already noted above.
Arguments of plaintiff
27. Ld. Counsel of plaintiff has advanced the following arguments :-
27.1 The entire testimony of PW-1 has remained unchallenged and un-rebutted from the side of defendant no.1and therefore, the plaintiff company is entitled to the decree, as prayed for. In support of his submissions, Ld. Counsel also relied upon the documents [Ex.PW1/1 to Ex.PW1/6, Ex.PW1/B].CS (COMM.)/998/2022 Page 19 of 37 -20-
27.2 Further, the trademark/label RAY BAN is well known trademark of the plaintiff and is duly registered in India under various classes of the Trademark Rules 2002, which are valid and subsisting in favour of the plaintiff company till date.
27.3 Further, the art works involved in the trademark/ label is original artistic works and the plaintiff holds copyright therein.
27.4 Further, the plaintiff spends huge amount of money in advertising and promotion of its products and said mark enjoys a huge goodwill and reputation in business community and public in general in India and across the world.
27.5 Ld. Counsel of plaintiff, while relying upon the report of Local Commissioner, submitted that Ld. Local Commissioner, while executing the commission in terms of the orders passed by this Court, had found certain infringed goods from the premises of the defendants, which establishes that the defendants were involved in the illegal activities. Ld. Counsel of plaintiff submitted that Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose, he has relied upon judgment of our own Hon'ble High Court in the case titled as CS (COMM.)/998/2022 Page 20 of 37 -21- "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna"
[CS (COMM) 126/2022, decided on 12th May, 2022].
27.6 Further, the use of the impugned trademark/ trade name RAY BAN in similar goods as adopted by the defendants, are identical and/ or confusingly or deceptively similar to the registered trademark of the plaintiff RAY BAN and thus, same amounts to not only 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, it is prayed that the suit may be decreed in favour of the plaintiff and against the defendants, thereby restraining the defendants and all others acting for and on their behalf from using said impugned trademark/ label.
27.7 Further, as regards jurisdiction of this Court, it is submitted by Ld. Counsel of plaintiff that the defendants are carrying on their impugned activities under the impugned trade mark/ label in a clandestine and surreptitious manner from their premises and that too without issuing formal sale bills. He further submitted that apart from sales to direct customers from their respective shop/ premises, they are also supplying the impugned goods bearing the impugned trademarks to various other dealers/ retailers/ distributors in New Delhi, who are making clandestine and surreptitious sales CS (COMM.)/998/2022 Page 21 of 37 -22- thereof to the ultimate unwary consumers in the markets of New Delhi markets namely Sarojini Nagar, Naraina, Cannaught Place, Mandir Marg, Lodhi Colony, Gole Market, etc. and thus, they are committing the impugned acts of infringement of trade mark, copy right and passing-off in the said markets of New Delhi, which fall within the territorial jurisdiction of this Court. It is further contended that the plaintiff's proprietary rights are being prejudicially affected or likely to be so affected in New Delhi due to defendants' impugned activities as they have all the intention to use/ sell/ solicit the impugned/ counterfeit goods under the impugned trademark/ label in the markets of New Delhi, and thus, whole or part cause of action for filing the present suit has arisen u/s 20 CPC.
27.8 Ld. Counsel of plaintiff has also contended that the plaintiff is carrying on its goods and business under its said trade mark through its exclusive dealers and distributors in New Delhi, such as Bonton Opticians, 13, Janpath Market, New Delhi and Optical Pace CP M-52, Connaught Circus, New Delhi -110 001 which fall within the territorial jurisdiction of this Court. Besides, it is also submitted that the plaintiff has also been selling its goods online through its own website i.e. www.india.ray-ban.com, which is stated to be interactive in nature and is freely accessible from any place through which the CS (COMM.)/998/2022 Page 22 of 37 -23- goods can be sold, purchased and delivered to any place, including within the jurisdiction of this Court and thus, it is stated that this Court has also territorial jurisdiction within the meaning of S. 134 (2) of the Trade Marks Act, 1999 and also under S. 62(2) of the Copyright Act, 1957. In support of his contentions, Ld. Counsel of plaintiff has relied upon the judgment of Hon'ble Division Bench of our own High Court in the case titled as "RSPL Limited v.
Mukesh Sharma & Anr" reported as 2016 (68) PTC 178 [Del] [DB] and judgment in the case of "V Guard Industries Ltd. v. Sukan Raj Jain & Anr." reported as 2021 (87) PTC 333 [Del].
ANALYSIS & CONCLUSION:
28. As regards jurisdiction of this Court, PW1 has categorically deposed in her affidavit in evidence on the identical lines of the averments made in the plaint that the plaintiff is also carrying on business in New Delhi through its exclusive stores and special agent, which fall within the territorial jurisdiction of this Court. PW-1 has also duly proved documents, which are stated to be list of authorized dealers and printout of screenshot of website of the plaintiff i.e. http//www.ray-ban.com/india, as Ex. PW1/6 (Colly.).There is no cross-examination in this regard. In her cross-examination, PW1 has rather affirmed that the defendant no.1 was supplying goods in Delhi markets i.e. Goal Market, Connaught Place, Janpath and all the markets nearby to the said places. Since, the relevant CS (COMM.)/998/2022 Page 23 of 37 -24- portion of her testimony remained unchallenged, it can be safely held that the plaintiff eventually proved on record that its goods under the trademark/ label are not only available at stores, which fall within the territorial jurisdiction of this Court, but are also available on its said website, which is claimed to be interactive in nature, which is freely accessible, through which goods can be sold, purchased and delivered to any place, including the places within the territorial jurisdiction of this Court. Thus, in view of the law as laid down by Hon'ble Delhi High Court in cases titled as "Banyan Holding (P) Ltd. v. A Murali Krishna Reddy & Anr." reported as 2009 SCC OnLine Del 3780; "World Wrestling Entertainment, Inc. v. Reshma Collection & Ors." reported as 2014 (60) PTC 452 (Del.) (DB); and "Burger King v. Tekchand", reported as 2018 (76) PTC 90 (Del.), the Court is of the considered opinion that the plaintiff has been able to satisfy the test of purposeful availment of its goods under its registered trade mark within the territorial jurisdiction of this Court, as stipulated in the said judgments delivered by Hon'ble Delhi High Court.
29. In view of the foregoing reasons and in the totality of the facts and circumstances of the case and in view of the above cited judgments and keeping in view the fact that evidence of PW1 remained unchallenged and uncontroverted on this aspect, the Court is of the considered opinion that part of cause of action has arisen within the territorial jurisdiction of this Court and CS (COMM.)/998/2022 Page 24 of 37 -25- therefore, this Court has territorial jurisdiction to try and entertain the suit.
Now coming to reliefs regarding grant of permanent injunction.
30. 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 trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the Defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, 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 trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the Defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trade mark of the Defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the Defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that is 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 trade mark. 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 trade mark for the vindication of the exclusive rights to the use of the trade mark 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 CS (COMM.)/998/2022 Page 25 of 37 -26- been held that if the essential features of the trade mark 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 trade mark, 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 trade mark. 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 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 trade mark is identical with the Plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
31. Further, 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) has laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12.It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, 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 CS (COMM.)/998/2022 Page 26 of 37 -27- 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 trade mark 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 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).
32. In view of above law, let's 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.
33. In the case titled as "Amrish Agarwal Vs M/s Venus Home Appliances Pvt. Ltd" in CM (M) 1059/2018 dated 27-08-2019, passed by Hon'ble Delhi High Court, it was directed, inter alia, that in trademark infringement matters, the following documents ought to be necessarily filed along with the plaint. The relevant Para no.7 of this judgment is reproduced hereunder:
"7. It is directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint:CS (COMM.)/998/2022 Page 27 of 37 -28-
(i) Legal Proceedings Certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licenses granted, renewals etc.,
(ii) If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licenses and assignments ought to be pleaded.
(iii) xxxx
(iv) In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side"
34. In this case, the plaintiff has relied upon and filed Legal Proceedings Certificates in respect of trademark "RAY BAN" and status reports thereof, which are duly proved by PW-1 as Ex.PW1/3 (Colly.). As per these documents, it is duly shown that trademark RAY BAN is registered in favour of the plaintiff since long under various classes. Further, during the course of final arguments, counsel of plaintiff has stated at Bar that the registration of trade marks/ word mark/ device mark RAY BAN stand renewed and are valid till date.
35. No doubt, the defendant no.1 conducted cross-examination of PW1 during trial. However, the said defendant could not impeach the testimony of said witness through litmus test of cross-examination. The main endeavour on the part of defendant no.1, as found from the cross-examination of PW1, revolved around the competence of the witness to CS (COMM.)/998/2022 Page 28 of 37 -29- sign, verify and institute the present suit and her competence to depose as a witness in this matter. He could not even succeed in his said attempt, inasmuch as PW1 has proved authorization letter and other related documents executed on behalf of plaintiff in her favour as Ex.PW1/5 (Colly.). The witness of plaintiff categorically deposed that she had received the originals of Ex.PW1/5 and filed copies thereof on record. She denied the suggestions put to her on behalf of said defendant that she was never duly authorized by plaintiff company to sign, verify or institute the present suit, or that Ex.PW1/5 did not bear signature of Mr. Stefano Orsini, or that Ex.PW1/5 being fabricated document, due to which, she was not competent to sign, verify and institute the present suit on behalf of plaintiff. Pertinently, the defendant no.1 did not dare to even suggest PW1 that Mr. Stefano Orsini did not have any authority to execute authorization letter and other related documents Ex.PW1/5 (Colly.) in her favour throughout the cross- examination.
36. Otherwise, no material question whatsoever has been put on behalf of defendant no.1 to the witness of plaintiff, touching upon the merits of the case. So much so, the said defendant did not even dare to suggest PW1 that the plaintiff is not the owner/ registered proprietor of the trade mark/ label and also that Ld. Local Commissioner did not visit his premises or seize the impugned goods bearing the impugned trade mark/ label from his possession at the time of execution of commission. Moreover, it is nowhere the CS (COMM.)/998/2022 Page 29 of 37 -30- case of the said defendant that he was ever permitted by plaintiff to use the said impugned mark and or was granted license by the plaintiff company to use the same.
37. As regards remaining defendants nos. 2 and 3, as already noted above, despite service by way of publication, none had appeared on behalf of said defendants and consequently, they were proceeded against ex parte. Moreover, none had appeared on behalf of said two defendants to cross-examine PW1. Therefore, the entire testimony of PW-1 has gone un-rebutted, uncontroverted and unchallenged qua them and thus, the case of the plaintiff stood proved against the said defendants on the basis of preponderance of probability.
38. It is duly established on record that the trademark/label RAY BAN is duly registered in favour of the plaintiff and also that same is valid and subsisting as on date in favour of the plaintiff.
39. Further, as already noted above, the Local Commissioner had also found infringed goods bearing falsified trademark/label of the plaintiff company from the premises of all three defendants at the time of execution of the commission, which fact also remained uncontroverted and unchallanged.
40. As per Local Commissioner's Report available on record, it is revealed that all three defendants were found present at their respective premises at the time of execution of commission.
CS (COMM.)/998/2022 Page 30 of 37 -31-41. On his inspection, Ld. Local Commissioner had found infringed goods i.e. 290 units of sunglasses bearing falsified trade mark at the premises of defendant no.1, as per relevant inventory filed along with report as Annexure-2, whereas, he had found infringed goods i.e., 37 pieces of sunglasses and 10 units of cover of ray ban sunglasses at the premises of defendant no.2, as per relevant inventory filed along with report as Annexure-4. As regards defendant no.3, Ld. LC had also found certain infringed goods at the premises of defendant no.3, as per relevant inventory filed along with report as Annexure-3.
42. Thus, it is shown that the premises were searched in the presence of all three defendants and infringed goods were seized from their premises. The seized goods were handed over to said defendants on superdari.
43. Since, the commission was executed in the presence of defendants including defendant nos. 2 and 3, thus, it cannot be believed that they were not having any knowledge of the proceedings going on before this Court and the orders passed therein. Despite that, they did not turn up to contest the present suit and the report of Ld. Local Commissioner also remained uncontroverted and unchallenged.
44. In totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendants were manufacturing, stocking, distributing and selling goods bearing falsified CS (COMM.)/998/2022 Page 31 of 37 -32- trademark /trade name/ label RAY BAN which is deceptively and confusingly similar to the plaintiff's registered trade mark / label RAY BAN and therefore, trademark and copyright of plaintiff company are required to be protected. Accordingly, the plaintiff is held entitled to the decree of permanent injunction, whereby the defendants are liable to be restrained from using trade mark RAY BAN or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade mark /label RAY BAN in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff.
45. Accordingly, the aforesaid issues nos. (i), (ii) and (iii) are decided in favour of plaintiff and against the defendants.
ISSUE NO.4
46. Now I shall decide issue no. (iv) regarding delivery up, which is reproduced hereunder:-
Issue no. (iv) - Whether the plaintiff is entitled to decree of delivery up of the finished and unfinished material bearing the impugned trademark / label RAY-BAN and violative of trademark or any other word/mark identical or deceptively similar to the plaintiff's trademark, as prayed for? OPP CS (COMM.)/998/2022 Page 32 of 37 -33-
47. As already discussed, the infringed goods bearing falsified trademark/ labels of plaintiff company were seized by Local Commissioner and were returned to the defendants on superdari. Therefore, the defendants are directed to delivery up all above seized infringed goods, besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label to the plaintiff company for the purpose of destruction and erasure. Their respective Superdarinamas stand cancelled. This issue is decided in these terms.
ISSUE NO.5
48. Now I shall decide issue no. (5) regarding rendition of accounts, which is reproduced hereunder:-
Issue no. (v) - Whether the plaintiff is entitled to decree of rendition of accounts, as prayed for? OPP.
49. No finding is required to be given in respect of aforesaid issue, in view of statement of counsel of plaintiff made on 15-04-2025 regarding giving up the relief as prayed in Prayer Clause No.34 (d) of the amended plaint regarding rendition of accounts and consequent order thereupon.
DAMAGES
50. During the course of submissions, Ld. Counsel of plaintiff submitted that punitive damages may be awarded in favour of the plaintiff and against the defendants. In support of his CS (COMM.)/998/2022 Page 33 of 37 -34- submissions, Ld. Counsel of the plaintiff has relied upon judgment of Hon'ble Delhi High Court in case of 'LT Foods Limited v. Saraswati Trading Company ' decided on 11-11-2022 having neutral citation:
2022/DHC/004806.
51. However, on bare perusal of the plaint, no such relief is found to have been sought.
52. On similar facts, in case titled as Super Cassettes Industries Pvt. Ltd. v. HRTN Cable Network , 2017 SCC Online Delhi 10943, wherein the defendants were ex parte and did not participate in the proceeding, counsel for the plaintiff had sought punitive damages, which was declined in view of the judgment of Hon'ble Division Bench of Delhi High Court in case titled 'Hindustan Unilever Limited v. Reckitt Benckiser India Limited', ILR (2014) II Delhi 1288.
53. However, as per law laid down by Hon'ble Division Bench in case of Hindustan Unilever Limited (supra), there is a need to see as to whether the case of plaintiff falls for exemplary damages.
54. As already noted above, the Local Commissioner, while executing the commission, found and seized infringed goods from premises of both these defendants in their presence and had handed over the same to them on superdari. It is evident from the said report that the said two defendants were stocking and selling/ passing off the infringed goods bearing impugned trade marks / logs as that of the plaintiff's products, thereby causing wrongful CS (COMM.)/998/2022 Page 34 of 37 -35- loss to plaintiff company and would have earned illegal profit. Further, if the seized infringed goods would have gone to the hands of the consumer/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of consumer/ general public as infringed goods were of average quality and were not up to the quality which is claimed by the plaintiff company.
55. In the case in hand, the defendant nos. 2 and 3 did not show up and participate in the proceedings in order to deprive the plaintiff to the benefit of rendition of accounts.
56. Accordingly, keeping in view the overall facts and circumstances of the case including the quantum of infringed goods bearing impugned trademarks / labels as found by Ld. Local Commissioner while executing the commission and the relevant averments appearing in Para No.30 of the amended plaint to the effect that the plaintiff came across impugned products of the defendants under the impugned Trade Marks/ labels in the month of last week of May, 2019, whereas, the present suit has been filed in the last second week of June, 2019 itself, the Court is of the opinion that the plaintiff company is entitled to exemplary damages quantified as Rs.1,00,000/- (Rupees One Lakh only) each, to be separately recovered from the defendants. It is so ordered accordingly.
CS (COMM.)/998/2022 Page 35 of 37 -36-RELIEF:
57. 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 defendants and the following reliefs are granted:-
57.1 Suit is decreed in favour of plaintiff and against the defendants qua permanent injunction thereby restraining them by themselves as also through their individual proprietor/ partners, agents, representative, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, distributing, advertising or in any manner dealing in or soliciting or selling/ soliciting through online platforms or online websites or using the impugned trade mark/label RAY BAN or any other word mark/ mark/ trade mark/ label which may be identical with and/ or deceptively similar to the plaintiff's said trade mark/label RAY BAN in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff.
57.2 Suit is also decreed in favour of plaintiff and against the defendants qua delivery up of all seized semi finished and finished articles besides all other impugned finished and unfinished materials bearing CS (COMM.)/998/2022 Page 36 of 37 -37- the impugned and violative trade mark/ label of plaintiff company and superdarinamas are hereby cancelled.
57.3 Plaintiff is entitled to recover Rs.1,00,000/- (Rupees One Lakh only) each from the defendants towards damages; and 57.4 Cost of the suit is also awarded in favour of the plaintiff.
58. Decree sheet be prepared accordingly.
59. File be consigned to Record Room, after due compliance.Digitally signed
Announced in the open court VIDYA by VIDYA PRAKASH On 29th Day of April, 2025. PRAKASH Date: 2025.04.29 16:43:40 +0530 (VIDYA PRAKASH) DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM.)/998/2022 Page 37 of 37