Delhi District Court
M/S Swatch Group (India) Pvt. Ltd vs Sh. Somesh Gandhi on 22 November, 2022
IN THE COURT OF MS. VINEETA GOYAL
DISTRICT JUDGE (COMMERCIAL)-02, SOUTH EAST
SAKET COURTS, NEW DELHI
CS (COMM) No.337/19
M/S SWATCH GROUP (INDIA) PVT. LTD.
4th floor, Rectangle-1, Saket District Centre,
New Delhi-110017. ........ Plaintiff
Versus
1.SH. SOMESH GANDHI
Shop no.15A/54, Ajmal Khan Road,
Karolbagh, New Delhi-110005. ...... Defendant no.1A.
2.SH. BONNY @ GURMEET
Owner/Occupant of Shop beside Gali of shop no.116,
Gaffar Market, Karolbagh,
New Delhi-110005.
Also as and at:-
Bonny @ Gurmeet
S-4/115, Old Mahavir Nagar,
Tilak Nagar, near Janakpuri East Metro Station,
New Delhi-110018. ...... Defendant no.1B.
3. SUNMEET SINGH
Trading As Khalsa Watches
Shop beside Gali of Shop no. 117,
Gaffar Market, Karolbagh,
New Delhi-110005.
CS (COMM) No. 337/19
M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 1 of 24
Also as and at:-
SUNMEET SINGH
WZ-D70A, Krishna Park,
Gali no.6, Tilak Nagar,
New Delhi-110018. ...... Defendant no.1C.
4. SUNIL SOKTI
Shop no. 94, Gali no.3,
Gaffar Market, Karol Bagh,
New Delhi-110005. ...... Defendant no.1D.
5. SAURABH SEHRA
Shop no.27, Gali no.3,
Gaffar Market, Karolbagh,
New Delhi-110005. ...... Defendant no.1E.
6. AJAY SACHDEVA
Shop no.39, Gaffar Market,
Karol Bagh, New Delhi ...... Defendant no.1F.
7. MR. ASHOK
Trading As ASHOK WATCHES
Shop no.95-C, Gaffar Market,
Karol Bagh, New Delhi-110005. ...... Defendant no.1G.
8. RADO UHREN AG
Bielstrasse 45, Lengnau,
Switzerland ...... Proforma Defendant no.2.
9. TISSOT SA (TISSOT AG) (TISSOT LTD.)
Chemin des Tourelles 17,
Le Locle, Switzerland ...... Proforma Defendant no.3.
10. OMEGA SA (OMEGA AG)(OMEGA LTD.)
Jakob-Stampfli-Strasse 96,
CS (COMM) No. 337/19
M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 2 of 24
2502 Biel/Benne, Switzerland ...... Proforma Defendant no.4.
11. COMPAGNIE DES MONTRESLONGINES,
Francillon SA (Longines Watch Co. Francillon Ltd.),
2610, St. Imier, Switzerland ...... Proforma Defendant no.5.
12. M/S CALVIN KLEIN TRADEMARK TRUST
Rodney Square North,
1100 North Market Street, Wilmington,
Delaware 19890, USA
C/o M/s Calvin Klein, Inc.
205, West 39th Street, New York,
NY 10018, USA ...... Proforma Defendant no.6.
Suit presented On : 07.08.2018
Arguments Concluded On : 16.11.2022
Judgment Pronounced On : 22.11.2022
Appearance : Sh. Siddharth Swain, Ld. counsel for the plaintiff.
None for defendants.
JUDGMENT
1. The present suit under Section 134 & 135 of Trademark Act, 1999, Section 55 of Copyright Act, 1957 for permanent injunction restraining infringement, passing off, delivery up, rendition of accounts etc., has been filed by the plaintiff against defendants.
2. Brief facts as epitomized in the plaint are that plaintiff , a company incorporated under the Companies Act, 1956, having its registered CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 3 of 24 office at 4th floor, Rectangle One Building, Plot D-4, Saket District Centre, New Delhi-110017, is a wholly owned subsidiary of M/s Swatch Group Ltd., Switzerland, which is a diversified multinational holding company active in manufacture and sale of finished watches, jewellery, watch movements and components, which was founded in 1983 by Nicolas G. Hayek through the merger of Swiss watchmakers ASUAG and SSIH, which was renames as "The Swatch Group". Mr. Anand Kumar Arya is the Power of Attorney holder of the plaintiff company.
2.1 It is averred that plaintiff company is engaged in the business of manufacturing, sale and distributing of finished watches, jewellery, watch movements and components (hereinafter referred to as the "said goods and businesses"). It is averred that the brand portfolio of Swatch Group includes several well-known watch brands including BREGUET, HARRY WINSTON, BLANCPAIN, GLASHUTTE ORIGINAL, JAQUET DROZ, OMEGA, LONGINES, RADO, UNIONGLASHUTTE, TISSOT, BALMAIN, CERTINA, MIDO, HAMILTON, CALVIN KLEIN, SWATCH and FLIK FLAK. It is further averrd that for the purpose of present suit, the plaintiff will confine to its watch brands, viz. RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN, SWATCH all of which are duly registered with the Indian Trademark office in the name of the respective brand companies RADO UHREN AG, OMEGA SA, TISSOT SA and M/s COMPAGNIE DES CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 4 of 24 MONTRES LONGINES, FRANCILLON S.A.(LONGINES WATCH CO., FRANCILLON LTD.), M/s CALVIN KLEIN TRADEMARK TRUST respectively.
2.2. It is further averred that the trademark RADO UHREN AG is registered proprietor of the Trademark/Label RADO and is impleaded as pro-forma defendant no.2 in the array of parties. It is further averred that trademark RADO was adopted, coined and is being continuously used by the plaintiff since the year 1917 through its proprietors and predecessors. It is averred that RADO is noted for its use of scratch- proof materials, a field in which it is considered a pioneer and as on date RADO produces about half a million watches a year. It is further averred that RADO differs from the traditional Swiss watch makers in which it leans towards innovative uses of high-tech materials in distinct design and is focused on pioneering the use of a number of materials that are unique within the watch making industry, such as hard metal. It is further averred that the trademark/label RADO is duly registered in India under the Trademark Act, 1999(the Act). As per details mentioned in para 8 of the plaint.
2.3. It is averred that TISSOT SA, is registered proprietor of trademark/Label TISSOT and is impleaded in the array of parties as proforma defendant no.3. It is averred that the trademark TISSOT was coined and adopted on the name of its founder Charles-Felicien Tissot CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 5 of 24 and is being continuously used by the plaintiff since the year 1853 through its proprietors and predecessors. It is further averred that the TISOT introduced the first mass-produced pocket watch as well as the first pocket watch with two time zones in 1853 and the first anti- magnetic watch in 1929-30. It is further averred that TISSOT merged with the Omega watch in 1930 and has been a member of the plaintiff's group of companies since 1983.It is further averred that the trademark/label TISSOT is duly registered in India under the Trademark Act, 1999(the Act) as per details mentioned in plaint.
2.4. It is further averred that M/s OMEGA SA (Omega AG) (Omega Ltd.) being the proprietor of Trademark/Label OMEGA, is impleaded as proforma defendant no.4 in the array of parties and is founded in the year 1903 by Louis Brandt. It is further averred that OMEGA is a Swiss luxury watchmaker based-in Biel/Bienne, Switzerland and is owned by the plaintiff group. It is further averred that the trademark/label OMEGA is duly registered in India under the Trademark Act, 1999(the Act) as per details mentioned in para 14 of the plaint.
2.5. It is averred that M/s COMPAGNIE DES MONTRES LONGINES, FRANCILLON S.A. (LONGINES WATCH CO.,
FRANCILLON LTD.), is impleaded as proforma defendant no.5. It is averred that the trademark LONGINES was coined and adopted by its founder Auguste Agassiz in the year 1832 and is known for its CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 6 of 24 "Aviators" watches and provided timers used at the first modern Olympics in 1896. It is further averred that today Longines sells sport watches and chronographs worldwide and is endorsed by brand ambassadors like Aishwarya Rai & others. It is further averred that, the abovesaid trademark is duly registered in India under the Trademarks Act as per details mentioned in para 17 of the plaint.
2.6. It is further averred that M/s Calvin Klein Trademark Trust is a trust created for better prosecution, enforcement and management of trademark rights of M/s Calvin Klein, Inc., a company organized and incorporated under the laws of USA and has vested the proprietary rights of its trademark in the M/s Calvin Klein Trademark Trust and is impleaded as proforma defendant no.6 in the array of parties. It is averred that over a period of time, there has been use of trademark in various stylized/artistic formats/labels and which have been created are being created over a period of time viz.
(hereinafter collectively referred to as "the said trademark"). It is averred that the said trademark Calvin Klein with or without cK is duly registered in India under the Trade Mark Act, 1999 as per details mentioned in para 20 of the plaint.
It is averred that the trade-name and trademark/logo SWATCH has been developed as a response to the "quartz crisis" of the 1970s and CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 7 of 24 1980s, wherein Asian-made digital watches were competing against traditional European-made mechanical watches. The registration details are mentioned in para 21 of the plaint. It is averred that the plaintiff, as also the defendant nos. 2 to 6 are all wholly owned subsidiaries of The Swatch Group Ltd., Switzerland.
2.7. It is stated that the plaintiff is responsible for the protection and enforcement of Intellectual Property Rights of defendant nos. 2 to 6 and has entered into separate agreements with each of the aforesaid defendants, by virtue of which the plaintiff is authorized to take appropriate steps to prevent infringement of trademarks RADO, TISSOT, OMEGA and LONGINES, CALVIN KLEIN, Ck, SWATCH (hereinafter collectively referred to as the "Plaintiff's said Trademark) of defendant nos. 2,3, 4,5 & 6 respectively. It is averred that the plaintiff has been honestly and bonafidely, continuously, commercially, openly, exclusively, 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 said goods and business thereunder and has built up a world-wide and globally valuable trade, goodwill and reputation thereunder. The plaintiff is also carrying on its business activities under the said trademark on the internet through its websites namely www.swatchgroup.com; www.rado.com; www.omegawatches.com;
www.tissotwatches.com & www.longines.com, www.calvinklein.com (hereinafter referred to as said domain name/websites). It is averred that the said CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 8 of 24 domain name of the plaintiff contains extensive information about the goods and business provided by the plaintiff under the said trademarks. It is averred that the Copyrights involved in the plaintiff's said trademarks are original artistic works within the meaning of Indian Copyright Act, 1957 and the plaintiff is the owner and proprietor thereof. It is further averred that the plaintiff has acquired immense goodwill and reputation under the said trademarks. It is averred that the plaintiff's said trademarks have become distinctive, associated and acquired secondary significance with the plaintiff and plaintiff's said goods and business. It is averred that the plaintiff's said trademarks as well as the goods and businesses thereunder have a very strong presence in India. It is averred that the plaintiff's said trademarks are well known Trademarks within the meaning of Section 2(1)(zg) of the Act.
2.8. It is averred that defendant no.1 is engaged in manufacturing, marketing, soliciting and trade of finished watches, clocks, wall clocks, horological and other chronometric instruments and allied and cognate products (referred to as the "impugned goods & impugned business"). It is averred that defendant no.1 has been shown as "Ashok Kumar"
following the "John Doe Orders" whereby the Court appointed Commissioner and it is only thereafter that such persons would be substituted as parties instead of "Ashok Kumar". It is averred that defendant no.1 has adopted and started using the impugned marks/labels "RADO, TISSOT, OMEGA, LONGINES, CALVIN KLEIN with or CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 9 of 24 without cK", SWATCH in relation to their impugned goods and business. It is averred that the defendant is indulged in counterfeiting the products of the plaintiff in complete violation of plaintiff's statutory and common law right in the said trademarks/labels. It is averred that the defendants are also giving false trade description to their impugned goods. It is further averred that defendant no.1 is using the plaintiff's said trademark without the leave and license of the plaintiff and they have no right to use it in any manner in relation to its impugned goods and business. It is further averred that because of the impugned website, not only various provisions of the Trade Marks Act 1999, The Copyright Act 1957 are being violated. It is further averred that defendant no.1 by its impugned adoption and user of the plaintiff's trademark are violating the plaintiff's aforesaid trademark and thereby enabling others to pass off their goods and business as that of the plaintiff as well as diluting the plaintiff's proprietary rights therein. It is further averred that by defendant no.1's impugned adoption and use, deception and confusion in the market is ensuing or is likely to so ensue. It is further averred that due to defendant no.1's, impugned activities, plaintiff is suffering huge losses, both in business and in reputation and such losses are incapable of being assessed in monetary terms. It is further averred that unwary purchasers and trade are being deceived as to the origin of goods or business.
2.9. It is further averred that plaintiff learnt about defendant no.1's CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 10 of 24 impugned marks/labels for counterfeit goods in the last week of July 2018 when the plaintiff came across the impugned goods of the defendants in South East Delhi Area market and being aggrieved thereby, plaintiff caused an inquiry in the market, which revealed that the defendant had, in the month of July 2018, adopted and started using the impugned marks/labels in relation to their impugned goods on a massive scale. The plaintiff also learnt that the defendant is carrying on its impugned activities under the impugned trademark in a clandestine manner from their premises . It is further averred that the cause of action arose in the last week of July 2018 and is still continuing and is accruing day by day and still continues to accrue till the defendant ceases with their impugned adoption and user. It is further stated that this Court has jurisdiction within the meaning of Section 134 (2) of the Trademark Act and also under Section 62(2) of the Copyright Act, 1957. Hence, present suit for permanent injunction for restraining the defendants and its agents from infringing the trademark, delivery up, rendition of accounts has been filed.
3. It may be noted that on 08.08.2018, the application under Order XXXIX Rule 1 & 2 CPC for grant of ex-parte injunction and under Order XXVI Rule 9 CPC for ex-parte appointment of Local Commissioner moved on behalf of the plaintiff was allowed restraining the defendant in term thereof. It is also relevant to mention here that on 20.11.2018, defendant appeared and did not question the proprietary CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 11 of 24 rights of the plaintiff in the impugned trademark. Taking note of no objection and other circumstances, the interim order dated 08.08.2018 was made absolute. It is pertinent to mention here that during course of proceedings, an application under Section 151 CPC along with amended memo of parties was filed by the plaintiff. Considering that on earlier occasions John - Doe orders were passed in favour of the plaintiff and against the defendant as the particulars of the defendant were not known to the plaintiff, the application for substitution of name of the defendants in place of John-Doe order was allowed.
4. Joint written statement was filed by defendant no(s). 1A, 1B, 1C and 1D and separate written statement was filed by defendant no(s). 1F and 1G respectively. The defendants raised preliminary objection stating that suit has not be instituted by legally authorized representative on behalf of plaintiff and that the suit is bad for non-joinder of necessary party. The defendants denied the case of the plaintiff and also denied that they are infringing the registered trademark of the plaintiff in complete contravention of the law. Written statement not filed by defendant no. 1E despite opportunity given for the reasons best known to him.
5. On the basis of pleadings of the parties, the following issues were framed by the then Ld. Presiding Officer on 19.12.2018:
1. Whether the defendants are guilty of infringement and /or passing off of the goods under the impugned trademark SWATCH and CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 12 of 24 SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK)? OPP.
2. Whether the plaintiff is entitled to any damages and /or rendition of account, if so, at what rate? OPP.
3. Whether the suit has not been instituted by duly and legally authorized representative on behalf of the plaintiff? OPD.
4. Whether the suit is bad for non-joinder of necessary parties? OPD.
5. Whether this Court lacks territorial jurisdiction to adjudicate the present dispute? OPD.
6. Relief.
6. To discharge its onus, the plaintiff examined PW-1 Sh. Anand Arya, who tendered his evidence by way of affidavit Ex. PW1/A. However, despite opportunity, defendants failed to cross examine PW-1, thereafter, plaintiff closed its evidence on 03.04.2019. Subsequent thereto, the matter was listed for defendant's evidence. However, despite opportunity given, neither the defendants appeared nor led their evidence, hence, opportunity to lead defendant's evidence was closed on 27.04.2019.
CS (COMM) No. 337/19M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 13 of 24
7. I have heard arguments advanced by Ld. Counsel for plaintiff and gone through the record.
8. My issues-wise findings are as under :
Issue no. 1:-
The onus to prove this issue was upon the plaintiff. In order to establish its case, the plaintiff has examined Sh. Anand Arya, Constituted Attorney as PW1 who tendered his evidence by way of affidavit Ex.PW1/A. In his affidavit Ex.PW1/A, he has made statement in accordance with averments made in the plaint and reaffirmed the averments thereof which are not repeated herein for the sake of brevity. PW1 has categorically deposed on the lines of averments made in the plaint regarding infringement of registered trademark/lable SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK) by the defendants no. 1A - 1G. He proved status of plaintiff's registered trademark/label in India with registration certificates as Ex.PW1/3 and further proved company details of plaintiff Ex.PW1/4 and agreement and annexure between the plaintiff and performa defendants Ex.PW1/5 (colly) (OSR). He also stated that the plaintiff has build-up globally valuable trade under its said trademark and conducted handsome business thereunder running into millions of dollars world-
wide. The plaintiff has required immense goodwill and reputation under the said trademark and proved advertisement and promotional material of trademark/labels of the plaintiff and printout extracts of history of the CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 14 of 24 said trademark obtained from websites www.rado.com, www.omegawatches.com,www.tissotwatches.com,www.calvinkelin.com, he also produced on record documents showing connection between the plaintiff's parent company and performa defendants as Ex.PW1/9 (colly) and Ex.PW1/10 respectively. He further deposed that defendants are engaged in manufacturing, marketing, soliciting and trade of finished watches, clocks, wall-clocks, chronological and other chronometric instruments and allied and cognate products. He proved representation's trademark/label Ex.PW1/1, representations of defendants impugned goods under the impugned trademark/label Ex.PW1/2 (colly) and report of local commissioner Ex.PW1/11 (colly). He also placed on record Power of Attorney Ex.PW1/A (OSR) issued in its favour on behalf of plaintiff's parent company.
9. It is the case of the plaintiff that, trademarks SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK) are well-known trademarks within the meaning of Section 2(1)(z) of the Act. Section 29 of The Trade Marks Act, 1999 sets out different situations in which infringement of the registered trademark can result.
Section 29 of the Act reads as under :
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 15 of 24 trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 16 of 24 to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 17 of 24 industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
10. By reading of above provision, it is clear that the a registered trademark is infringed by a person who not being a registered proprietor uses in the course of trade a mark which is identical or deceptively similar in relation to the goods and services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner. In cetena of judgments it has been observed by Honb'le Apex court that where there is a possibility of confusion in business and injunction may be granted and infringement, if the mark used by the defendant is visually or otherwise so close to that of registered trademark of plaintiff that it is found to be imitation of the registered trademark, the statutory right of the owner of the registered trademark is infringed. The grant of injunction will become necessary where it appears that adoption of mark was itself dishonest.
11. In the present case, it is undisputed that, plaintiff is CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 18 of 24 registered proprietor of trademark SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK) in Asia, in various classes as per details mentioned in para(s) 8, 11, 13, 14, 17 & 20 of the affidavit of PW1 and by virtue of these registrations, the plaintiff has exclusive right to use the same. The use of identical and deceptively similar marks in relation to goods in which the plaintiff's trademarks are registered would amount to infringement. The allegation of the plaintiff is that, the defendants no. 1A - 1G have adopted above-mentioned trademarks in relation to watches. As per the plaintiff, it came to know about the defendants' activities in the last week of July 2018 when the plaintiff came across impugned goods of the defendants under the impugned trademark/label in Delhi. Photographs/representation of defendants' products have been filed as Ex.PW1/2(colly) and reliance has been placed upon local commissioner report Ex.PW1/11(colly). The defendants have filed their written statement but have chosen to not participate in trial and have not filed any document/evidence neither cross-examined PW1 to rebut the claim of the plaintiff for the reasons best known to them nor have they controverted the plaintiff's evidence. The contesting defendants did not choose to lead their evidence. A careful comparison of representation of plaintiff's trademark/labels Ex.PW1/1(colly) and defendants' Ex.PW1/2(colly) shows that defendants' products are slavish imitation of plaintiff's reputed trademark/trade-names which have an enormous goodwill and reputation. Local commission too reported that, infringed material was found CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 19 of 24 bearing the trademark as deceptively similar as that of plaintiff from the premises of the defendants 1A to 1G. The report of Local Commissioner relied upon by the plaintiff and the uncontroverted testimony of the plaintiff witness, clearly establishes that the defendants no. 1A to 1G were indeed involved in dealing with th counterfeit products infringing the plaintiff's trademarks. In the present case, no defence has been raised by the defendants no. 1A - 1G. There is no material on record to indicate that defendants have acquired impugned goods from the market through legitimate mode, therefore the adoption and use by the defendants of the plaintiff's registered trademarks as per details mentioned in affidavit of evidence Ex.PW1/A for the impugned goods amounts to infringement which entitled the plaintiff for permanent injunction for infringement as to the trademark is concerned.
13. So far as prayer regarding passing off is concerned, PW1 produced advertisement and promotion material of the trademark/labels of the plaintiff and printout extracts of history of plaintiff's trademark obtained from the various websites Ex.PW1/6 and deposed that the plaintiff's trademarks as well as goods and business thereunder have strong presence in India and the said domain name contains extensive information about the goods and business. It has acquired a reputation/goodwill in its goods name or mark. There is no rebuttal to the deposition of plaintiff's witness. It is evident from Local Commissioner's report that defendants have adopted and used the CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 20 of 24 registered trademarks in relation to their goods with intention to ride of the reputation and goodwill enjoyed by the plaintiff. There exists no plausible explanation by the defendants to have adopted the said trademarks. The use of the plaintiff's trademark by the defendants are certainly being done only to cause confusion and deception in the minds of general public and the customer. It is apparent that intent of the defendants no. 1A to 1G is to dilute the goodwill and the reputation of the plaintiff well-known trademarks.
14. Accordingly, in the light of aforesaid facts and settled law, that defendants have infringed the trademark of the plaintiff and they have committed the tort of passing off. The issue is thus decided in favour of plaintiff and against defendants no. 1A to 1G.
Issue no.2.
15. So far as the issues, whether the defendants are liable to pay damages and whether the plaintiff is entitled to rendition of accounts, are concerned, it is settled law that though the plaintiff has not proved the actual damages suffered by it on account of infringement by the defendants, but it is open for the Court to award punitive damages for the conduct of the defendants with the object of deterring future egregious conduct with a note of caution emphasizing that punitive damages must rationally relate to the award of compensated damages. The plaintiff has failed to show some particular benefit which has CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 21 of 24 accrued to the defendants and further failed to prove by leading cogent and convincing evidence that it has suffered actual losses. It is noteworthy to mention herein that the plaintiff has simply placed on record a calculation of quantum of damages showing average price per item and profit margin at 15% on the impugned goods. However, the plaintiff did not file the authenticated price list of the articles and did not lead any evidence in this regard. In these circumstances, no decree of rendition of accounts can be passed in this case, however, damages can be awarded on the basis of estimation. In consideration of totality of the facts and the circumstances, it would be expedient if a sum of Rs. 50,000/- each is awarded as damages in favour of the plaintiff and against defendants no. 1A to 1G. This issue is accordingly decided in favour of the plaintiff and against the defendants no. 1A - 1G.
Issue no. 3 , 4 & 5.
16. The onus to prove these issues were upon the defendants. The defendants neither cross examined PW1 nor adduced any evidence but have chosen to not participate in the trial for the reasons best known to them. Since defendants have chosen not to appear or contest the present case, hence, these issues remained unchallenged and adjudicated accordingly.
Relief.
CS (COMM) No. 337/19M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 22 of 24
17. In view of the above discussions, the suit of the plaintiff is decreed in favour of the plaintiff and against the defendants no. 1A to 1G. It is held that :
i. The plaintiff is entitled for a decree of permanent injunction restraining the defendants no. 1A to 1G, their proprietors/partner, agents, representatives, distributors, assignees, heirs, successors, stockists or on on their behalf from manufacturing, marketing, using, selling, soliciting, importing, exporting, displaying, advertising, promoting, intending to sell/solicit on online websites or through social media or by any other mode or manner dealing in or using the impugned trademarks /labels SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK) in relation to their impugned goods and business of selling, manufacturing, marketing etc. of readymade garments, clothings, apparels and other allied/related products and from doing any other acts or deeds amounting to infringement and passing of plaintiff's trademarks SWATCH+, RADO, OMEGA, TISSOT, LONGINES, CALVIN KLEIN (with or without cK) ii. The plaintiff is further entitled to a decree of a sum of Rs. 50,000/- as damages from each defendant i.e. defendant no. 1A to 1G along with costs.
iii. Keeping in view Section 35A of CPC and more particularly, when the defendants have not contested the claim of the plaintiff and they are CS (COMM) No. 337/19 M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 23 of 24 responsible for litigation, thus they are also liable to bear the costs, accordingly the plaintiff is entitled for litigation expenses. The present suit has been filed on 05.06.2018, considering the number of hearings which have taken place, the pleader's fee and litigation expenses are assessed as Rs. 45,000/-, which the defendant no. 1A to 1G are to be shared in equal proportion and the same is hereby awarded along with the court fee etc., in favour of plaintiff and against the defendant no. 1A to 1G.
iv. Costs of suit i.e. court fee etc., are also awarded in favour of plaintiff and against the defendant no. 1A to 1G.
18. Decree sheet be prepared accordingly.
19. File be consigned to record room.
Pronounced in the open (VINEETA GOYAL)
Court on 22nd November, 2022 District Judge (Commercial)-02
South-East District, Saket Courts,
New Delhi
CS (COMM) No. 337/19
M/S SWATCH GROUP (INDIA) PVT. LTD. Vs. .SH. SOMESH GANDHI & Ors.
Page no. 24 of 24