Delhi District Court
The Pololauren Company L.P vs Ritesh Ors on 21 November, 2023
IN THE COURT OF SH. SUDHANSHU KAUSHIK :
ADDITIONAL DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.203/2021
CNR NO.DLND01-000356-2014
IN THE MATTER OF:
THE POLO/LAUREN COMPANY L.P.
650, MADISON AVENUE,
NEW YORK, N.Y.10022, USA
....PLAINTIFF
VERSUS
1. SH. RITESH
CUSTOM SHOP
SHREE RAM PLACE
BHOJA MARKET (ATTA MARKET),
BEHIND VINAYAK HOSPITAL,
SECTOR-27, NOIDA-201301
UTTAR PRADESH
2. SH. RAGHUNATH RAKHIJA
SHREE RAM PLACE
ATTA MARKET, SECTOR-27,
NOIDA-201301, UTTAR PRADESH
....DEFENDANTS
DATE OF INSTITUTION OF SUIT : 14.07.2014
DATE OF ARGUMENTS : 17.11.2023
DATE OF JUDGMENT : 21.11.2023
DECISION : SUIT DECREED
JUDGMENT
1. Plaintiff has instituted the present suit under Section 134 & 135 of Trade Mark Act, 1999 and Section 55 of Copyright Act, 1957 seeking permanent injunction, restraining infringement, passing off and TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 1 of 17 rendition of accounts.
2. The facts, as disclosed in the plaint, are;
A) Plaintiff M/s Polo/Lauren Company L.P. is a limited partnership having its registered office at 650 Madison Avenue, New York 10022, USA; The suit has been instituted by Ms. Surbhi Bansal, who has been duly authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff; It has been submitted that plaintiff is engaged in the business of manufacturing, distributing and sale of wide range of apparel & clothing for men, women & children, clothing accessories, hats, leather goods, shoes, furs, luggage & luxurious home décor including towels, area rugs, wall covering, tabletop, table coverings, sportswear, footwear, fragrances, eyewear, fashion accessories, house wares, jewellery and other allied/related products (hereinafter referred to as 'the goods'); Plaintiff claims itself to be the sole owner and proprietor of word/mark:
B) It has been further submitted that plaintiff has been using the said mark/logo uninterruptedly since the year 1967 and the mark/logo has acquired goodwill and reputation worldwide; Plaintiff has got its TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 2 of 17 trademark/logo registered all over the world including India; Plaintiff's trade-marks and labels have been duly registered in India as POLO, POLO BY RALPH LAUREN, POLO RALPH LAUREN, POLO DENIM, POLO GOLF, POLO JEANS CO., POLO SPORTS, RALF LAUREN, RALF BY RALF LAUREN, RUGBY RALF LAUREN, LAUREN BY RALF LAUREN and RALF LAUREN GOLF; Plaintiff has been selling its products under these trade-marks.
3. Plaintiff filed the suit alleging that unknown persons have started using its trademark on inferior quality counterfeit products. Plaintiff alleged that the infringed product are carrying deceptively similar trademark so as to confuse the general public that the infringed goods are the goods of plaintiff. Plaintiff alleged that it is suffering huge loss of business and reputation on account of the sale of the infringed products. Along with the suit, plaintiff filed an applications under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold.
4. The application under Order XXVI Rule 9 CPC was allowed on 14.07.2017 and two Local Commissioners were appointed to carry out the search of the counterfeit products at shops/premises; (i) Shree Ram Place, Bjoja Market (Atta Market), behind Vinayak Hospital, Sector- TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 3 of 17 27, Noida-201301 (Uttar Pradesh); and (ii) Shop No.3 & 4, Shree Ji Place, Atta Market, Sector-27, Noida-201301 (Uttar Pradesh).
5. Sh. Rahul Budhraja, Local Commissioner reached at Shree Ram Place, Bjoja Market (Atta Market), behind Vinayak Hospital, Sector-27, Noida-201301 (Uttar Pradesh), where one Mr. Kundan, stating himself to be the Cashier/Manager of the shop, was found present. Later on, defendant No.1/Ritesh Mehandiratta, claimed himself to be the owner of the shop, also arrived over there. The Local Commissioner carried out the search of the aforesaid premises and recovered counterfeit products i.e. 34 t-shirts, 01 trolley bag, 22 sports bags, 6 boxes sport perfumes, 5 boxes sport perfumes for women and 17 bottles of sport deodorant & perfumes. All the counterfeit products were of inferior quality and carrying the trademark/logo of the plaintiff. The counterfeit products were seized and inventory was prepared. The seized counterfeit products were handed over to defendant No.1 against an undertaking. Photographs of the spot as well as the seized counterfeit products were obtained.
6. Sh. Tarundeep Bharti, Local Commissioner reached at Shop No.3 & 4, Shree Ji Place, Atta Market, Sector-27, Noida-201301 (Uttar Pradesh), where one Mr. Shailender Singh, stating himself to be the Accountant/Service Person of the shop, was found present, who told TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 4 of 17 that defendant No.2/Raghunath Rakhija is the owner of the premises. The Local Commissioner carried out the search of the aforesaid premises and recovered counterfeit products i.e. 25 t-shirts, 4 shirts, 8 bottles perfumes, 2 packs perfumes (each containing 3 bottles), 23 traveler bags (small), 7 traveler bags (medium) and 19 traveler bags (large). All the counterfeit products were of inferior quality and carrying the trademark/logo of the plaintiff. The counterfeit products were seized and inventory was prepared. The seized counterfeit products were handed over to Mr. Shailender Singh against an undertaking. Photographs of the spot as well as the seized counterfeit products were obtained.
7. Both the Local Commissioners filed his report in the court.
8. Defendants contested the suit by filing separate written statements.
Defendants denied the contents of the plaint and mentioned that they have been falsely roped in the litigation. Defendants mentioned in the written statements that plaintiff has suppressed and concealed material facts. They raised objection about the territorial jurisdiction of the court. They stated that the suit has not been instituted by a duly authorized person. They also denied infringing the trademark of the plaintiff and stated that the suit has been filed without any cause of action. They raised question-mark over the plaintiff's ownership on its TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 5 of 17 alleged trademark/logo. After filing the written statements, both the defendants abandoned the proceedings and they were proceeded ex- parte.
9. On the basis of the pleadings of the parties, following issues were framed:
1. Whether the plaintiff is the proprietor of Trademark/label 'POLO', 'POLO BY RALPH LAUREN' & Device of POLO Player? OPP
2. Whether the defendant committed Infringement and passing off of the Trademark 'POLO', 'POLO BY RALPH LAUREN' & Device of POLO Player by adopting and using an identical and deceptively similar Trademark? OPP
3. Whether this court lacks territorial jurisdiction to try and entertain the present suit? OPD
4. Whether the plaintiff has concealed and suppressed material facts from the court? OPD
5. Whether the plaintiff is entitled to a decree of permanent injunction as prayed for? OPP
6. Whether the plaintiff is entitled to a decree for rendition of accounts as prayed for? OPP
7. Relief.TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 6 of 17
10. I have gone through the record.
11. Counsel for plaintiffs submitted that defendants were found in possession of counterfeit products. He has submitted that the counterfeit products were meant to be sold and passed off as the products of the plaintiff. He has mentioned that plaintiff's claim stands established and the suit may be decreed.
12. The High Court of Delhi observed in the matter of "Indian Performing Rights Society Ltd. Vs Gauhati Town Club" MANU/DE/0582/2013 that where the defendant is ex-parte and the material before the court is sufficient to allow the claim of the plaintiff, the time of the court should not be wasted in directing ex-parte evidence to be recorded which mostly is nothing but repetition of the contents of the plaint. This was a suit wherein plaintiff has claimed infringement of a registered trade-mark and violation of its copyright by the defendant as well as passing off the goods. In the matter, the court relied on the report of the Local Commissioner as well as other material placed on record and decreed the suit without requiring the plaintiff to lead further evidence. Similar view was taken by the court in the matter of "United Coffee House Vs Raghav Kalra & Anr." 2013 SCC OnLine Del 2133 and "S.Oliver Bernd Freier Gmbh & Company KG Vs Jaikara Apparels & Anr." 2014 SCC OnLine 2686.
TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 7 of 17
13. Relying upon the rationale of the judgments given in "Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors." [CS (OS) 3466/2012 decided on 20th February, 2014 by the High Court of Delhi] and S.Oliver Bernd Freier Gmbh & Company KG's case (supra), the High Court of Delhi decreed a trade-mark suit for infringement in the matter of "Imagine Marketing Pvt. Ltd. Vs Green Accessories" 2022 SCC OnLine Del 805 with following observations:
"8. Insofar as Defendant No.6 is concerned, the Local Commissioner had visited the premises bearing the address M/s. Shree Balaji Accessories, Building No.2827, Ground Floor, Gali No.8, Opposite Max Plaza, Beadonpura, Karol Bagh, New Delhi-110005 and met a few employees, as also, Mr. Dinesh, who claim to be the Manager of the Defendant No.6-Shop. Various goods bearing the Plaintiff's mark 'BOAT' were found at the said premises. A total of more than 120 pieces of Bluetooth headsets, Wireless Headsets, Earphones, Wireless Earphones, Portable Speakers and packaging material were also found. The same were seized by the Local Commissioner.
9. From the Local Commissioners' reports, and the pleadings on record it is clear that the Defendants are engaged in manufacturing or selling or offering for sale various electronic or electric products bearing the mark 'BOAT' as also the logos thereof. The Defendants choose not to appear despite having knowledge of the proceedings which are pending before this Court. The Local Commissioners' reports along with the evidence there of also clearly reveals that the Defendant Nos.1 and 6 were engaged in the sale of counterfeit products.
10. Under these circumstances, following the rationale of the judgment of a ld. Single of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 8 of 17 (OS) 3466/2012 decided on 20th February, 2014], no ex parte evidence would be required in this matter. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210 (2014) DLT 381], as also, in United Coffee House v.
Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
3. Though the defendants entered appearance through their counsel on 01.02.2013 but remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex-parte vide order dated 04.10.2013 and the plaintiffs permitted to file affidavits by way of exparte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex-parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd. Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex-parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex-parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint.
11. Thus, the Plaintiff, being the owner of the registered trademark 'BOAT' in various forms, including the logo, is entitled to protection of its rights in the trade mark 'BOAT', as also device mark and the logos thereof.
Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 30 (a), (b), and (c) of the amended plaint."
TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 9 of 17
14. Coming to the present matter, although, defendants filed written statement but chose to remain absent during trial and they were proceeded ex-parte. The situation in the present matter is akin to the one in Imagine Marketing Pvt. Ltd.'s case (supra) wherein the ex-parte matter was decreed by the High Court of Delhi without insisting on the plaintiffs to lead evidence. In view of these circumstances, even in the present matter, there is no point in directing the plaintiffs to lead ex- parte evidence, which would be nothing but a repetition of the contents of the plaint. The material on record is more than sufficient to adjudicate the present matter.
15. I have perused the record in the light of arguments addressed by the counsel for plaintiff. The issue-wise findings are as under. Issue No.1: Whether the plaintiff is the proprietor of Trademark/label 'POLO', 'POLO BY RALPH LAUREN' & DEVICE OF POLO PLAYER? OPP Issue No.4: Whether the plaintiff has concealed and suppressed material facts from the court? OPD
16. Plaintiff has placed on record the registration certificates of the trademark POLO, POLO BY RALPH LAUREN, POLO RALPH LAUREN, POLO DENIM, POLO GOLF, POLO JEANS CO., POLO SPORTS, RALF LAUREN, RALF BY RALF LAUREN, RUGBY RALF LAUREN, LAUREN BY RALF LAUREN and RALF TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 10 of 17 LAUREN GOLF and its logo/label. The certificates demonstrate that plaintiff is the registered owner of the trademark. Plaintiff has also placed on record documents to demonstrate that its trademark has acquired recognition worldwide. Plaintiff had been uninterruptedly using the trademark. Plaintiff alleged that defendant has infringed its trademark by selling the counterfeit products and using mark which is deceptively similar to the one owned by the plaintiff. Thus, it cannot be concluded by any stretch of imagination that there was no cause of action to file the plaint. Plaintiff had a legal right to institute a suit for injunction to restrain defendant from storing and selling the counterfeit products bearing its trade-mark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the manner provided under the Act. Section 134 of the Act provides the remedy of filing a suit for infringement of a trademark while Section 125 of the Act describes the relief which may be granted in a suit for infringement or passing off the trademark.
TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 11 of 17
17. Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark 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 trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is identical or similar to the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a mark that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark. Thus, it is concluded that plaintiff is the proprietor/owner of trademark 'POLO', 'POLO BY RALPH LAUREN' & Device of POLO Player.
18. Although, defendants took a plea that plaintiff has concealed and suppressed material facts but these were general allegations. Defendants did not lead evidence to substantiate the said plea. The TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 12 of 17 bald plea taken by the defendants about the concealment of material facts has no merit. Accordingly, Issue No.1 & 2 are decided in favour of plaintiff and against the defendants.
Issue No.3: Whether this court lacks territorial jurisdiction to try and entertain the present suit? OPD
19. Defendant has challenged the territorial jurisdiction of this court to try and entertain the present suit. The High Court of Delhi, while dealing with a similar argument on the territorial jurisdiction, observed in the matter of "Burger King Corporation Vs Techchand Shewakramani & Ors." CS (COMM) 919/2016 & CC(COMM) 122/2017 as under;
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, infringement happens when a person "uses in the course of trade"
any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference -
...
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 13 of 17 of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"
20. The court further observed in Burger King's case (supra) that in a suit involving right in a trade-mark, cause of action arises in each and every place where there is any form of use of said mark. The court held that the principles which apply to infringement action to determine use of trade-mark would equally apply to passing off actions. The court observed that Section 20 of CPC provides that suit could be filed in any place where the cause of action arises and therefore, the place where the trade-mark has been used in any form has jurisdiction and the suit can be filed in the court having territorial jurisdiction over the said place. In view of this clear and categorical observation, the submissions that the court lacks territorial jurisdiction needs to be rejected. Plaintiff has submitted that defendants have been storing the counterfeit products at various locations in Delhi and the counterfeit goods are being sold to various customers in New Delhi. In view of this, the court in New Delhi had the territorial jurisdiction to try and entertain the present suit. Accordingly, Issue No.1 is decided in favour of plaintiff and against the defendant.
Issue No.2: Whether the defendant committed Infringement and passing TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 14 of 17 off of the Trademark 'POLO', 'POLO BY RALPH LAUREN' & Device of POLO Player by adopting and using an identical and deceptively similar Trademark? OPP Issue No.5: Whether the plaintiff is entitled to a decree of permanent injunction as prayed for? OPP Issue No.6: Whether the plaintiff is entitled to a decree for rendition of accounts as prayed for? OPP Issue No.7: Relief.
21. In the present matter, there is irrefutable evidence to show that the counterfeit goods bearing the trademark/logo of the plaintiff were recovered from the possession of defendants. Photographs of the recovered counterfeit products and packaging material were taken by the Local Commissioners and copies of the same were filed along with the reports. I have perused the same. The photographs show that the defendants were using almost identical mark on the counterfeit products recovered from their possession. The mark was affixed on the same line of goods which are being manufactured and distributed by the plaintiff. Thus, defendants not only used the identical mark but also used the mark in respect of identical goods, which are being sold by the plaintiff. The counterfeit products recovered from the possession of the defendants were certainly meant to be sold in the market for profit. In fact, the evidence has established that defendants were using a mark TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 15 of 17 exactly identical to the registered trademark of the plaintiff.
22. After having gone through the submissions advanced by counsel for the plaintiff and perusal of the record, I find that the material placed on record by the plaintiff has remained unrebutted, unchallenged & uncontroverted. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by the defendants. Accordingly, plaintiff is entitled to the decree of permanent injunction. Record shows that plaintiff has not placed on record any material for ascertaining the amount of profit being earned by the defendants. Counsel for plaintiff submitted during the course of arguments that plaintiff is giving up the relief for rendition of accounts. He has prayed that notional damages may be granted. It is an admitted position that neither the quantum of damages has been specified nor evidence has been led in that direction. However, in the matter of "Adidas AG Vs Praveen Kumar", CS (Comm.) 1269/2019, decided on 14.05.2019, the High Court of Delhi granted damages after taking note of the report submitted by the Local Commissioner. In the present matter, both the defendants were found in possession of the counterfeit products bearing the trademark and logo of the plaintiff. From the inventories placed on record by the Local Commissioners, it is not possible to make the exact analysis of TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 16 of 17 the profit earned by the defendants from selling the counterfeit products, therefore, nominal damages to the tune of Rs.1,00,000/- each, to be paid by defendant No.1 & 2, are being awarded to the plaintiff. Accordingly, Issue No.2, 5, 6 & 7 are also decided in favour of plaintiff and against the defendants. In view of this, the suit stands decreed with the following relief:
i. A decree of permanent injunction against defendant No.1 & 2 whereby they are restrained from manufacturing, storing and selling the counterfeit products bearing the trademark/logo of the plaintiff;
ii. Decree of damages to the tune of Rs.1,00,000/- (Rupees One Lac only) each to be paid by defendant No.1 & 2 to the plaintiff;
iii. Cost of the suit.
iv. The seized counterfeit products shall be delivered to the plaintiff for destruction.
23. Decree-sheet be prepared accordingly.
24. File be consigned to Record Room after necessary compliance. Announced in open Court on 21.11.2023 (Sudhanshu Kaushik) Addl. District Judge-02 & Waqf Tribunal, Patiala House Courts, New Delhi TM 203/2021 The Polo Lauren Company L.P. Vs Ritesh & Anr. Page 17 of 17