Delhi District Court
Vans Inc. Usa vs Aateef Aadeez on 6 June, 2018
IN THE COURT OF MS. TWINKLE WADHWA: LD. ADDITIONAL DISTRICT
JUDGE03:PATIALA HOUSE COURT:NEW DELHI DISTRICT
TM No. 21/16
Vans Inc. USA
6550 Katella Avenue, Cypress,
California 90630,
USA.
Through Rishi Bansal
Constituted Attorney
96, Sukhdev Vihar, Mathura Road,
New Delhi110025. .....Plaintiff
Versus
1.Aateef Aadeez Trading as Mr. Shoes H/No.12/2150, near Police Chowki, Variyavi Bazar, Surat, Gujarat395003.
2. Abdulrab Chamadia Trading as Adibon & Mr. Shoes 2, Nanpura main Road, Opp. Police Chowki, Surat, Gujarat395001.
3. Mudassir Chamadia Trading as Bootery 1st Floor B205, Padam Arcade, Nanpura, Surat, Gujarat395001.
TM No. 21/16 Page 1 of 84. Mohammad Makda @ Nick Maddy Trading as Shoppers 11 12/1325, Nanpura Main Road, Surat, Gujarat395001.
Also at:
G6, Hasanand Complex, Timaliawad, Nanpura, Surat, Gujarat395001. ....Defendants Date of Institution : 07.11.2016 Date of Final Arguments : 29.05.2018 Date of Decision : 06.06.2018 JUDGMENT The Case
1. The suit has been filed by the plaintiff Company seeking permanent injunction restraining infringement, passing off, delivery up, rendition of accounts etc. against the defendants.
Appearance
2. I have heard arguments of ld. counsel for the plaintiff Shri S K Bansal and I have perused the case file.
Plaintiff's Case
3. The case of the plaintiff is that it is the owner of registered Trademark "VANS " for the purpose of footwear and allied goods. Plaintiff also own the trademark "VANS" and it has been using this mark since 1966.
4. The plaintiffs have business of manufacturing of footwear, sneaker footwear, skateboarding shoes and other types of sneakers and allied goods TM No. 21/16 Page 2 of 8 catering towards the extreme sports youth set. Under various stylized/artistic formats and label namely VANS. The plaintiff has been using the said trade marks honestly, bonafidely, extensively, exclusively, continuously, commercially and in course of trade since 1966 and manufactured shoes under its said trademark/tradename and sells them directly to the public.
5. The plaintiff's goods under the said trademarks are freely and commercially available in India. The details of the application for registration of trademarks in respect of various classes of goods as well as the registered trademarks have also been provided in the plaint. The plaintiff has been regularly and continuously promoting its distinctive trademark through extensive advertisements, publicities promotions and marketing research and has been spending enormous amounts of money, efforts, skills and time thereon. The plaintiff's represent their Trademark/label in an artistic manner including its getup, lettering style, color schemes, placement of words and artistic features etc and holds Copyright under Section 14 of Copyright Act, 1957.
6. VANS has registered domain names www.vans.com. They have been providing latest technology and products to the people and also spending a lot on R&D (Research & Development) and are known for innovation and reliability.
7. It is alleged that the defendants are eretailers as well as engaged in the business of marketing, selling, supply and trade of readymade clothes footwears, eyewears, watches and various other sports and fasion accessories through websites namely www.mr.shoes.com, www.fliptokart.com, www.adibon.com, www.bootery.in, www.shoppers11.com and www.flipkartsports.com. As per who TM No. 21/16 Page 3 of 8 is record the domain name 1 to 6 are registered with Public Domain Registry (Website No.1 and 6) and Godaddy (Website 3 and 5) and Endurance Domain Technology Pvt. Ltd. (website 4) in the name of defendant nos. 1 to 4. All websites are hosted by I & I Internet AG.
8. In so far as defendants are not the authorised vendors of the plaintiff's company and it is found that they are indulging in illegal sale of impugned and infringing goods in violation of plaintiff's Trade Mark/label "VANS". Screenshots of websites no.1 to 6 have also been placed on record. Defendants no.1 to 4 are also indulging in other offline and online sale activities apart from luring people on the social media like facebook and twitter offering the impugned goods directly or through several other intermediaries. The impugned goods being sold by the defendants are deceptively similar to the plaintiff's Trade Mark/Label "VANS".
9. The impugned goods manufactured by the defendant are openly displayed and sold at markets in New Delhi area namely Naraina, Inderpuri, connaught Place, Gole Market, Bengali Market, Khan Market, Pallika Bazar etc.
10. The defendant has also infringed plaintiff's Copyrights involved in the said trademarks and packaging and is also using the same Trade dress. The defenant is also passing off their impugned goods and business as that of the plaintiff company. It is using all kinds of false descriptions on its impugned goods to wrongly link the impugned goods with those of the plaintiff and mislead common people and customers.
11. It is argued that the usage of the trademarks and packaging of VANS which is a trademark under Section 2 (zb) under T M Act, 1999 in these domains and TM No. 21/16 Page 4 of 8 websites is leading to diversion of usage by net surfers which could result from such domain names instead of reaching the plaintiff original domain name www.vans.com. It is also pointed out that apart from the dishonestly using the trade name/label of the plaintiff, defendants are likewise using trade names of several other reputed packaging belonging to plaintiff.
12. It is submitted that on account of these illegal activities of defendants, plaintiff is suffering a huge loss to its reputation and revenues, which can not be calculated in money terms.
Case of defendants
13. Defendants chose not to appear despite service. Their defence was struck off on 22.02.2017 and 04.05.2017 when no written statement was filed on behalf of them despite opportunity.
14. On completion of pleadings, following issues were framed on 20.07.2017 ISSUES
1. Whether the plaintiff is entitled to decree for permanent injunction restraining defendant, their agents, representatives, stockists etc. for using, selling, soliciting etc. of impugned goods containing Trade Mark/label 'VANS' of the impugned goods? OPP.
2. Whether plaintiff is entitled to decree of injunction restraining the defendants and their subjects from dealing with or disposing of merchandise containing trade mark/lable VANS of the impugned goods? OPP.
3. Whether plaintiff is entitled to decree of delivery up of impugned goods containing Trade Mark/lable VANS of the impugned goods?TM No. 21/16 Page 5 of 8
OPD.
4. Whether plaintiff is entitled to rendition of account and damages on account of profits made by the defendant by sale of goods containing Trade Mark/lable VANS of the impugned goods? OPP.
5. Relief.
15. To prove its case, plaintiff examined Shri Rishi Bansal as PW1 and exhibited the following documents S.No. No. of Exhibits Details of the documents 1 Ex. PW1/1(colly) Representation of the trade mark/label 2 Ex.PW1/2(colly) Screen shot related to impugned products 3 Ex.PW1/3(colly) Reports pertaining to the impugned website no.1 to 6 4 Ex.PW1/4 (colly) List of plaintiff's registered trade mark alongwith copy of trademark registration certificate 5 Ex.PW1/5(colly) Copy of various documents,advertisement material 6 Ex.PW1/6(colly) List of plaintiff's exclusive stores in India 7 Ex.PW1/7(colly) Copies of resolution com authority Reasons for Decision
16. I have heard ld. counsel for the plaintiff and gone through the record.
17. On the basis of the documents filed and evidence led which is unchallenged before this Court, it is proved that defendants are eretailers as well as manufacturers/merchants,importers/stockists and sellers of counterfeit goods and who were operating through the following websites namely www.mr.shores.com, www.fliptokart.com, www.adibon.com, www.bootery.in, TM No. 21/16 Page 6 of 8 www.shoppers11.com, and www.flipkartsports.com.
18. It is further proved that defendants by indulging in such illegal sale of infringed goods carrying the Trademark of the plaintiff VANS, as infringed trademark rights and copyrights and passing of rights of the plaintiff in the impugned Trademark VANS. Defendants are using the mark VANS along with same trade dress/label.
Issue No.1 Whether the plaintiff is entitled to decree for permanent injunction restraining defendant, their agents, representatives, stockists etc. for using, selling, soliciting etc. of impugned goods containing Trade Mark/label 'VANS' of the impugned goods? OPP.
19. In view of the above, the plaintiff is entitled to decree for permanent injunction restraining defendants, their agents, representatives, stockists etc. for using selling, soliciting etc. of impugned goods containing trademark/label 'VANS' of the impugned goods.
Issue No.2 Whether plaintiff is entitled to decree of injunction restraining the defendants and their subjects from dealing with or disposing of merchandise containing trade mark/lable VANS of the impugned goods? OPP.
20. In view of above, plaintiff is entitled to decree of injunction restraining the defendants and their subjects from dealing with or disposing of the merchandise containing trademark/label 'VANS' of the impugned goods. Issue No.3Whether plaintiff is entitled to decree of delivery up of impugned goods containing Trade Mark/lable VANS of the impugned goods? OPD.
21. In view of above, plaintiff is entitled to decree of delivery up of impugned goods containing trademark/label 'VANS' of the impugned goods.
TM No. 21/16 Page 7 of 8Issue No.4 Whether plaintiff is entitled to rendition of account and damages on account of profits made by the defendant by sale of goods containing Trade Mark/lable VANS of the impugned goods? OPP.
22. In view of the above, plaintiff is entitled to damages. However, plaintiff has not filed any proof regarding the loss suffered by plaintiff or the gain to the plaintiff. In the circumstances, I hereby damages of Rs.1,00,000/ to the plaintiff. Relief
23. In view of above, plaintiff is entitled to decree of declaration, it is hereby declared:
1. That plaintiff is entitled to decree for permanent injunction restraining defendant, their agents, representatives, stockists etc. for using, selling, soliciting etc. of impuged goods containing Trademark 'VANS'.
2. That plaintiff is entitled to decree of injunction restraining the defendant and their subjects from dealing with or disposing off the merchandise containing the said trade mark/labels.
3. That plaintiff is entitled to decree of delivery up of impugned goods containing Trade Mark/labels.
4. Rs. 1,00,000/ is awarded to the plaintiff towards damages. Decree sheet be prepared accordingly.
File be consigned to record room.
Announced in an open Court
On 06th day of June , 2018 (TWINKLE WADHWA)
ADJ03/ PHC/NEW DELHI
06.06.2018
TM No. 21/16 Page 8 of 8