Delhi District Court
Retail Royalty Company vs Al Ahmad Frozen Foods Private Limited on 4 September, 2023
IN THE COURT OF SH. LAL SINGH,
DISTRICT JUDGE (COMMERCIAL COURT-01),
SOUTH-EAST, SAKET COURTS, NEW DELHI
CS (COMM) No. 296/19
In the matter of:
Retail Royalty Company
Through Its Constituted Attorney
Mr. Shashi Chaudhri
101 Convention Center Drive
Las Vegas, Nevada 89109
United States of America. ............Plaintiff No. 1
2. AEO Management Co.
Through Its Constituted Attorney
Mr. Shashi Chaudhri
77 Hot Metal Street
Pittsburgh, PA 15203
United States of America. ............Plaintiff No. 2
Vs.
AL Ahmad Frozen Foods Private Limited,
E-67, 1st Floor Abul Fazal Enclave,
Jamia Nagar, New Delhi - 110025.
........... Defendant
Date of institution : 27.04.2019
Date on which argument was concluded : 02.08.2023
Date of pronouncement of the order : 04.09.2023
CS (COMM) No. 269/19
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Judgment
1. This suit has been filed by the plaintiffs against the
defendant for permanent injunction, for restraining copyright and
trademark infringement, passing off, damages / rendition of accounts
and delivery up.
2. It is pertinent to mention here that vide judgment dt.
28.07.2022, the Ld. Predecessor Court has dismissed the present suit.
Thereafter, against the judgment dt. 28.07.2022, the plaintiffs filed an
appeal before the Hon'ble High Court of Delhi and in the said appeal
RFA (COMM) 59/2022 & C.M. Nos. 38825/2022, 38828/2022 titled
as Retail Royalty Company & Anr. Vs. Al Ahmad Frozen Foods
Private Limited vide order dt. 07.12.2022, the Hon'ble High court of
Delhi has set aside the judgment dt. 28.07.2022 as passed by the Ld.
Predecessor Court and remanded back the matter to the trial court for
a fresh adjudication.
3. Case of the plaintiffs is that the plaintiff no. 1 is a
company incorporated under the laws of the State of Nevada, United
States of America and plaintiff no. 2 is a company incorporated under
the laws of the State of Delaware, United States of America. Both
plaintiffs no. 1 and 2 are subsidiaries of a common parent company
namely American Eagle Outfitters, Inc. (hereinafter referred to as the
"plaintiff") . The plaintiff is a publicaly listed company and was
founded in 1977 in the United States of America and since then it has
been engaged in the business of designing, marketing and selling
readymade clothing and related accessories, around the world
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including India. The plaintiff is the proprietor of various trademarks
in India and around the world, including the Flying Eagle Device
Mark .
The plaintiff has been consistently listed for many years
amongst the top clothing and accessory retailers in the United States
of America. The world's largest and best known brand management
consultancy namely "Interbrand" has consistently ranked the plaintiff
among America's most valuable brands. In 2009, the plaintiff was
ranked 29th, in 2010 it was ranked 36 and in 2011 it came at number
38 and in the year 2012, 2013 and 2014, it was ranked at number 42,
41, 43 respectively. It became a billion dollar company in 2001. Its
annual revenue was US $ 2.928 billion in 2009, which increased to
US $ 2.945 billion in 2010 and the figure was US $ 3.120 billion in
2011 and in 2016 the figure was US $ 3.609 billion, in 2017 the figure
was in excess of US $ 3 billion and in 2018, the plaintiff's annual
revenue exceeded US $ 4 billion. The plaintiff's mark was
created in the United States of America by one of its employee
namely Keith Fiori, way back in 2003. The plaintiff is the author /
claimant of the copyright for that mark by virtue of laws of USA and
hence, in India, it is entitled to protection of the same by virtue of
Berne Convention, 1886 and International Copyright Order, 1999.
Plaintiff is the first owner of that mark by virtue of Copyright Act,
1957. In India, Plaintiff is the owner of Registration No. A -
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122033/2017 for the plaintiff's mark. Besides India, the copyright
offices of several countries including USA and Canada, have issued
registrations for that mark of the plaintiff. The plaintiff's goods
bearing that mark are sold in over one thousand (1000) retail stores
around the world, including India. In addition, the goods bearing the
plaintiff's mark are sold through its e-commerce website located at
www.ae.com. The consumers of about 100 countries including India,
can purchase goods through that website of the plaintiff. The said
mark of the plaintiff is being used on readymade garments / clothing
and related accessories, in and outside the plaintiff's retail stores, in
promotional materials and advertising, in business incidentals such as
invoices, shopping bags, gift and discount cards, on the plaintiff's
website etc. In India, the plaintiff is the proprietor of following valid
and subsisting registered trademarks :-
S.No Mark Reg. No. Class Reg.
Date
1. 1463555 3, 18 June
and 25 22,
2006
2. 2195681 14 and August
35 25,
2011
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3. 2552604 9, 16, June
24, 36 21,
and 38 2013
4. 3729369 3 January
17,
2018
The plaintiff has entered into an exclusive multi store
retail and e-commerce licence agreement with a leading Indian retail
chain, to operate its stores and e-commerce website and sell products
including readymade clothing in India. From June 2018 to March
2019, the plaintiff has opened 08 retail stores in India and since then
their numbers increased considerably. Plaintiff's mark is used on the
goods sold through those stores also. Due to these reasons, plaintiff's
mark developed a stellar reputation not only in India, but beyond
India, all over the world also.
4. The defendant is engaged in the sale of buffalo meat under
the mark . Plaintiff's Indian representative alerted it
sometime in November 2018 about trademark Application No.
3976233 filed by the defendant on 17.10.2018 for 'buffalo meat and
edible offals' in Class 29. Plaintiff's representatives engaged the
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services of an investigative firm which revealed that the defendant
had started using that mark in relation to buffalo meat around
October, 2018. That mark of defendant is quite identical and / or
deceptively similar to the plaintiff's mark and copyright and hence, a
letter was sent to the defendant on 24.12.2018 not to use the said
trademark, but no response was received despite a reminder letter
dated 07.01.2019. Opposition against the registration of defendant's
trademark application was filed on 11.03.2019 vide Opposition No.
976220 at Trademark's Registry, Delhi. But the defendant is still
using the Eagle Device incorporated in its mark. Thus, the act of the
defendant constitutes infringement u/s 29 (4) of the Trademark Act,
1999 besides being a violation to the Paris Convention and as such
the acts of the defendant deserves to be curbed immediately.
5. Defendant was duly served and thereafter, Ld. Counsel for
the defendant also appeared, however, defendant has not filed written
statement. Thereafter, vide order dt. 23.12.2019, right to file written
statement on behalf of defendant was closed. After that the defendant
had moved an application for granting opportunity to file written
statement stating that right to file written statement was closed on
23.12.2019. However, vide order dt. 02.03.2020, the application of
defendant for granting opportunity to file written statement was
dismissed. Moreover, lastly counsel for the defendant appeared on
24.08.2021 and thereafter, none appeared for the defendant and hence,
the defendant has been proceeded ex parte.
6. Arguments heard.
7. Ld. counsel for plaintiff submitted that comparison of
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eagle device in the defendant's mark and plaintiff's mark shows that
defendant's mark is nearly identical to the plaintiff's mark. He also
submitted that though, the defendant's mark is bearing some
additional elements such as half moon sign as well as the words
"TWIN EAGLE" followed by the wording "100 % BUFFALO
MEAT", however, the said additional sign and words are insufficient
to distinguish the defendant's mark from the plaintiff's mark. He
submitted that as such the requisite relief as prayed in the present suit
may be granted in favour of the plaintiff.
8. I have considered the arguments of Ld. Counsel for the
plaintiff and perused the file.
9. The perusal of file shows that in the instant matter, the
defendant has not filed the written statement even after expiry of 120
days and thus, right to file the written statement was closed on
23.12.2019 and thereafter, vide dt. 02.03.2020, an application filed by
defendant for granting opportunity to file written statement was also
dismissed.
Ld. Counsel for the plaintiff submitted that the defendant
has no defence on record and no real chances of succeeding in the suit
and hence, there is no requirement for leading evidence on behalf of
the plaintiff and suit may be decreed in favour of the plaintiff. In this
regard, the Ld. Counsel for the plaintiff has placed reliance on
judgment passed by Hon'ble High Court of Delhi in 'Satya
Infrastructure Ltd. & Ors. Vs. Satya Infra & Estates Pvt. Ltd.'
2013 (54) PTC 419 (DEL).
Further, the Ld. Counsel for the plaintiffs submitted that in
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order to sustain passing off action, it is not necessary for the parties to
trade in same goods. In this regard, Ld. Counsel for the plaintiffs also
placed reliance on judgment passed by Hon'ble High Court of Delhi
in 'Honda Motors Co. Ltd. Vs. Charanjit Singh & Ors' (2002) 101
DLT 359.
10. Ld. counsel for the plaintiffs submitted that the Hon'ble
High Court of Delhi in an appeal against the order dt. 28.07.2022 of
Ld. Predecessor Court, observed that Ld. Trial Court has wrongly
emphasized on the minor differences in rival marks, namely half-
moon device and the word Twin Eagle in defendant's mark, which are
too minor, while Eagle devices far more prominent. Ld. Counsel for
the plaintiff also argued that Ld. Predecessor Court while passing the
judgment dt. 28.07.2022 placed reliance on the judgment titled as
Retail Royalty Company Vs. Pantaloons Fashion & Retail Ltd. & Ors,
CS(OS) No. 2872/2015, decided on 23 rd September 2015.
However, in the order dt. 07.12.2022 of Hon'ble High
Court of Delhi passed in RFA (COMM) 59/2022 titled as Retail
Royalty Co. & Anr. Vs. Al Ahmad Forzen Foods Private Limited,
while setting aside the order dt. 28.07.2022 of Ld. Predecessor of this
Court, the Hon'ble High Court observed as under:
With the assistance of learned
counsel for the appellants, we have perused the
impugned order dated 28th July 2022. We find
that the Trial Court has dismissed the suit of the
appellants-plaintiffs primarily relying upon the
judgment of learned Single Judge of this Court
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in Retail Royalty Company vs. Pantaloons
Fashion & Retail Ltd. & Ors., CS (OS) No.
2872/2015 decided on 23rd September, 2015.
However, the said judgment of learned Single
Judge was partly set aside by the Division Bench
of this Court in FAO (OS) No. 575/2015 decided
on 10th December, 2015.
11. It is also the contention of the plaintiff that the eagle
device incorporated in the defendant's mark is identical / nearly
similar to the plaintiff's mark that was created by the plaintiff in the
year 2003 and has been used extensively, continuously since then, on
and in relation to the plaintiff's goods.
In the judgment passed by Hon'ble High Court of Delhi in
FAO (OS) No. 575 / 2015, on 10.12.2015, titled as Retail Royalty
Company Vs. Pantaloons Fashion and Retail Ltd. & Ors., it was
observed as under:
6 This being the position, we agree
with the submissions made by the respondent
and also as accepted by the learned Single
Judge that the plaintiff/appellant cannot
appropriate the word 'EAGLE' although it is
the proprietor of the mark 'AMERICAN
EAGLE' and the mark 'AMERICAN EAGLE
OUTFITTERS'. As such, an injunction cannot
be granted, prima facie, because the marks
'URBAN EAGLE' and 'AMERICAN EAGLE',
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in our view, are not deceptively similar marks.
7 In so far as the Eagle Device
employed by the appellant / plaintiff and the
Eagle Devices used by the defendant /
respondent are concerned, we find that they are
deceptively similar. The distinction sought to be
brought by the learned Single Judge referring
to the appellant's Eagle Device as a 'swooping
Eagle' and that of the respondent/ defendant as
a 'taking off or a flying eagle' is too minute
when we consider that the two devices would be
viewed by a person of average intelligence with
imperfect recollection and we must also bear in
mind that when the test of deceptive similarity
is employed, the two marks cannot be kept side
by side, they are to be considered as if they
have been viewed at different points of time.
8 That being the case, prima facie, we
find that the Eagle Devices employed by the
respondent / defendant are deceptively similar
to the registered Eagle Device of the plaintiff /
appellant. Consequently, the respondents are
restrained from employing the Eagle devices,
which have been impugned in the present
proceedings. However, we grant one month's
time to the respondent / defendant to exhaust
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the stocks. In so far as the word marks are
concerned, the respondents can only use the
mark 'URBAN EAGLE' without adding the
words 'AUTHENTIC' and / or 'OUTFITTERS.'
12. It is contention of Ld. Counsel for the plaintiff that eagle
device is prominent and essential feature of defendant's mark which is
nearly identical / similar to the plaintiff's mark. Further, additional
element such as Twin Eagle followed by the wording 100%
BUFFALO MEAT alongside the eagle device are insufficient to
distinguish the defendant's mark from the plaintiff's mark. Ld.
Counsel for the plaintiff also relied upon the judgment dt. 25.04.2023
in the case titled as Retail Royalty Company & Anr. Vs. Nirbhay
Marg News Broadcast Private Limited as passed by Hon'ble High
court of Delhi in CS (COMM) 601/2022 and order dt. 03.05.2023
passed in I.A. 8585/2023 in CS (COMM) 601/2022 (modification
of judgment dt. 25.04.2023), wherein, in the said order dt.
03.05.2023, it was observed as under:
2. Counsel for the plaintiffs submits that the
court had made oral observations in the court with regard to
declaring the 'Flying Eagle' trademark of the plaintiff,
as a well-known trademark. However, in the
judgment, the said observation has not come in the operative
part.
3. The aforesaid submission is noted.
4. In view of the averments made in the plaint
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and considering the documents placed on record, this court
is satisfied that the 'Flying Eagle mark' i.e. of the
plaintiff qualifies as a 'well-known trade mark' in terms of
Section 2 (1)(zg) and Section 11(6) of the Trade Marks Act,
1999. It is declared accordingly.
5. Accordingly, the plaintiff is granted the relief
as sought in prayer clause 66(i) of the plaint.
6. The decree passed on 25th April, 2023 is
modified to the extent of granting prayer clause 66(i) in
favour of the plaintiff.
Thus, in the aforesaid order also the Hon'ble High Court
of Delhi declared the flying eagle mark of the plaintiff as well
known trademark.
13. It is the contention of the plaintiff that plaintiff is the
proprietor, in India and around the world, of various trademarks,
including the flying eagle device mark , that is being used on
and in relation to readymade clothing and related accessories and on
the other hand, the defendant is engaged in the business of exporting
buffalo meat products, under the mark Twin Eagle and Eagle Device
.
CS (COMM) No. 269/19
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The comparison between the plaintiff's device mark and the defendant's device mark are as under:-
Plaintiff's Device Defendant's Device
Mark Mark
Perusal of above marks show that eagle mark of the plaintiff and eagle mark of the defendant are almost similar and identical to each other. Only difference is that in the eagle device mark of defendant, there is half moon sign followed by the wording Twin Eagle 100% Buffalo Meat alongside the eagle device. While comparing both the above marks, it is apparently clear that the 'Eagle Mark' in the device of plaintiff and in the device of defendant's mark are prominently similar and identical as in both the marks the flying eagle is shown and depicted in the same manner. Therefore, the other minor differences as mentioned above, do not make the device of the defendant's mark as distinct and distinguishable with the mark of the plaintiff. Thus, in view of the above observations, it is apparently clear that both the marks of the plaintiff and defendant are identical and nearly similar and further, the device mark of the defendant is deceptively similar to the device mark of the plaintiff.
CS (COMM) No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Private Limited Page 13 of 1614. Perusal of file shows that on 21.07.2022, Ld. Counsel for the plaintiff gave the statement that he is pressing only for relief of injunction and cost and giving up the remaining relief. The statement made by the Ld. Counsel for the plaintiff on 21.07.2022 is reproduced as under:
CS (Comm) No. 296/16Retail Royalty Company vs. Al Ahmad Frozen Foods Pvt. Ltd. 21.07.2022 Statement of Sh. Urfee Roomi, learned counsel for plaintiff, Enroll No. D/817/2017.
At Bar I am the counsel for plaintiff and on instructions from the plaintiff, I state that I am pressing only for the relief of injunction and cost and that I am giving up the remaining reliefs.
RO&AC District Judge (Commercial Court-01) /SE/Saket/ND/21.07.2022 As such in the instant matter, now the plaintiff is only seeking permanent injunction and cost against the defendant and given up the remaining reliefs.
15. Though initially, the defendant through his counsel appeared, however, vide order dt. 23.12.2019, right to file the written statement on behalf of defendant was closed. Moreover, the counsel for the defendant lastly appeared on 24.08.2021 and thereafter, defendant even stopped appearing in this case. Thus, the case of the CS (COMM) No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Private Limited Page 14 of 16 plaintiff remained uncontested and unchallenged. Otherwise also, in view of the above observations, the plaintiff proved its case against the defendant regarding trademark infringement of the device mark 'flying eagle' of the plaintiff.
The plaintiff is also seeking costs of the suit and in this regard affidavit of Sh. Shashi Choudhary, Attorney of the plaintiffs filed, wherein mentioning the invoices issued by the plaintiff's counsel to the plaintiffs as professional / official fee etc. and claimed the cost of Rs. 27,82,506/-. However, alongwith the said affidavit no account statement etc. placed on record by the plaintiff showing that the plaintiffs actually paid that much of amount as professional fee to its counsel. Moreover, the abovesaid amount of costs as claimed by the plaintiff appears to be highly exorbitant and excessive in the facts and circumstances of the present case. Therefore, considering all these facts and circumstances, the court deems it appropriate to award the cost of Rs. 4,75,000/- (Rupees Four Lakh Seventy Five Thousand Only).
RELIEF 16 Consequently, the suit of the plaintiff is decreed in favour of the plaintiffs and against the defendant thereby restraining the defendant and all others acting for and on behalf of defendant, from advertising, marketing, offering for sale and selling whether directly or indirectly and whether on Internet or otherwise, any goods, including buffalo meat, bearing the eagle device incorporated in the defendant's mark, the plaintiff's mark or any other eagle device that is CS (COMM) No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Private Limited Page 15 of 16 identical / similar / deceptively similar to the plaintiff's mark and also restraining the defendant and all others acting for and on behalf of defendant, as prayed in prayer clause B, C, D, E, F & G. The plaintiff is also entitled to the cost of Rs.4,75,000/- (Rupees Four Lakh Seventy Five Thousand Only) against the defendant and defendant is directed to pay the cost of Rs.4,75,000/- (Rupees Four Lakh Seventy Five Thousand Only) to the plaintiff alongwith 6% interest from the date of decree till realization.
Decree Sheet be drawn accordingly.
File be consigned to Record Room. Digitally signed by LAL SINGH LAL Date:
SINGH 2023.09.04 16:09:32 +0530 Announced in Open Court (LAL SINGH) on 04.09.2023 District Judge (Commercial Court-01) South East/Saket Courts, New Delhi CS (COMM) No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Private Limited Page 16 of 16