Delhi District Court
Ms Tag Heuer S.A vs Ajit Singh on 21 November, 2023
IN THE COURT OF SH. SUDHANSHU KAUSHIK :
ADDITIONAL DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.225/2021
CNR NO.DLND01-001975-2015
IN THE MATTER OF:
M/S TAG HEUER S.A.
14A, AVENUE DES CHAMPS-MONTANTS,
CH-2074, MARIN,
SWITZERLAND
....PLAINTIFF
VERSUS
SH. AJIT SINGH
S/O SH. RAM SINGH
2439/11, 1st Floor, BEADON PURA,
KAROL BAGH, NEW DELHI-110005
ALSO AT:
WZ-F-7 & 8, 2nd FLOOR,
GALI NO.2, KRISHNA PARK,
TILAK NAGAR, DELHI-110018
....DEFENDANT
DATE OF INSTITUTION OF SUIT : 26.10.2015
DATE OF ARGUMENTS : 21.11.2023
DATE OF JUDGMENT : 21.11.2023
DECISION : SUIT DECREED
JUDGMENT
1. Plaintiff has instituted the present suit under Section 134 & 135 of Trademark Act, 1999 and Section 55 of the Copyright Act, 1957 seeking permanent injunction, restraining infringement, passing off, TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 1 of 17 damages and rendition of accounts.
2. The facts, as disclosed in the plaint, are;
A) Plaintiff M/s Tag Heuer S.A. is a Swiss luxury watchmaker known for its sports watches and chronographs. The suit has been instituted by Ms. Meena Bansal, who has been authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff. Plaintiff is a world renowned watch making company having its registered office at 14A, Avenue Des Champs-Montants, Ch-2074, Marin, Switzerland. Plaintiff company came into existence in the year 1860 when Edouard Heuer founded a watch making company in St.Imier, Switzerland patenting his first chronograph in the year 1882. Plaintiff has a long tradition of technological innovation in precision timepieces including stopwatches and water resistant watches. Plaintiff has been manufacturing, distributing and selling its goods/ products under the trademark/Logo TAG HEUER, which represents as under:
TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 2 of 17
B) Plaintiff's products are being sold exclusively through a network of directly-operated stores, a directly-operated e-commerce website and a limited number of franchisees as well as selected departments and stores in more that 100 countries including India. C) Plaintiff claims itself to be the sole owner of the trademark TAG HEUER and its logo. It has been further submitted that plaintiff has been using this word uninterruptedly for the last many years and these word/logo has acquired goodwill and reputation worldwide. Plaintiff has got registered the trademark/Logo TAG HEUER in various classes in India. These well known trade-marks have also established tremendous goodwill and reputation. Plaintiff has been selling its watches, chronographs and other products under this trademark/logo. D) 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 application under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 3 of 17 sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold.
3. The application under Order XXVI Rule 9 CPC was allowed on 28.10.2015 and a Local Commissioner was appointed to carry out the search of the counterfeit products at shop/godown bearing No.2439/11, 1st Floor, Beadon Pura, Karol Bagh, New Delhi-110005.
4. The Local Commissioner reached shop/godown bearing No.2439/11, 1st Floor, Beadon Pura, Karol Bagh, New Delhi-110005, where defendant/Ajit Singh was found present. Defendant claimed himself to be the owner of the said shop. The Local Commissioner carried out the search at the said shop and 137 watches, 141 empty boxes and 187 watch booklets of inferior quality bearing the trademark and logo of the plaintiff were recovered. The counterfeit products were seized and inventory was prepared. The seized products were handed over to the defendant against an undertaking. Photographs of the spot as well as the seized counterfeit products were obtained along with the documents disclosing the identity of defendant.
5. The Local Commissioner filed his report in the court. Thereafter, on an application filed by the plaintiff, the name of defendant was substituted in the plaint in place of the fictitious person. TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 4 of 17
6. Defendant contested the suit by filing written statement. He denied the contents of the plaint and mentioned that he has been falsely roped in the litigation. He submitted in the written statement that plaintiff has suppressed and concealed material facts from the court. He has raised question-mark over the plaintiff's ownership on its alleged trademark/logo. Defendant has stated that the suit is liable to be dismissed as the alleged authorized representative of the plaintiff, who has filed the present suit, has not been properly authorized by the plaintiff company. He has raised objection over the territorial jurisdiction of the court. He also denied infringing the trademark/logo of the plaintiff. After filing the written statement, defendant abandoned the proceedings and he was proceeded ex-parte. On the basis of the pleadings of the parties, following points for determination were framed:
(1) Whether the plaintiff is the proprietor/owner of Trademark TAG HEUER and its logo ?
(2) Whether the plaintiff has concealed and suppressed material facts? (3) Whether the suit has not been filed by a competent person? (4) Whether this court lacks territorial jurisdiction to try and entertain the present suit?
TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 5 of 17 (5) Whether the defendant committed infringement and passing off of the Trademark TAG HEUER and its logo adopting and using an identical and deceptively similar Trademark/Logo?
(6) Whether the plaintiff is entitled to a decree of permanent injunction? (7) Whether the plaintiff is entitled to a decree for rendition of accounts? (8) Whether the plaintiff is entitled to a decree for damages/delivery? (9) Relief?
7. Arguments heard.
8. During the course of arguments, it was submitted by counsel for the plaintiff that plaintiff is a world renowned Swiss luxury watchmaker known for its sports watches and chronographs. Plaintiff has been manufacturing, distributing and selling its goods/products under the trademark/logo TAG HEUER. Counsel submitted that defendant was found in possession of counterfeit products carrying similar trademark/logo of the plaintiff. He contended that the counterfeit products were meant to be sold and passed off as the products of the plaintiff. He mentioned that plaintiff's claim stands established and the suit may be decreed.
9. I have perused the record.
10. The High Court of Delhi observed in the matter of "Indian TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 6 of 17 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 had 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.
11. 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 TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 7 of 17 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 (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:
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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."
12. Coming to the present matter, although, defendant filed the written statement but he chose to remain absent during trial and he was proceeded ex-parte. The finding on the points of determination is as under:
TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 9 of 17
Point No.1: Whether the plaintiff is the proprietor/owner of Trademark TAG HEUER and its logo ?
Point No.2: Whether the plaintiff has concealed and suppressed material facts?
Point No.3: Whether the suit has not been filed by a competent person? Point No.4: Whether this court lacks territorial jurisdiction to try and entertain the present suit?
13. Plaintiff has placed on record the registration certificates of the trademark TAG HEUER registered in various classes. These certificates demonstrate that plaintiff is the registered owner of the trademark. Thus, it is established that plaintiff is the owner of the trademark.
14. Although, defendant took a plea that plaintiff has concealed and suppressed material facts but these were general allegations. Defendant did not lead evidence to substantiate the said plea. The bald plea taken by the defendant about the concealment of material facts has no merit.
15. The present suit has been instituted by Mrs. Meena Bansal, who has been authorized to do so vide a Power of Attorney dated 01.11.2009. The Power of Attorney has been placed on record. It demonstrates that Mrs. Meena Bansal was duly authorized to sign & verify the pleadings and institute the present suit on behalf of plaintiff. The Power of TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 10 of 17 Attorney has been duly executed. In view of this, it stands concluded that plaint was filed by a duly authorized person.
16. Defendant 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 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 TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 11 of 17 availability, provision or performance of such services;"
17. 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 defendant has 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 has the territorial jurisdiction to try and entertain the present suit. Accordingly, points of determination No.1 to 4 are decided in favour of plaintiff and against the defendant. Point No.5: Whether the defendant committed infringement and passing off of the Trademark TAG HEUER and its logo adopting and using an identical and deceptively similar Trademark/Logo? TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 12 of 17 Point No.6: Whether the plaintiff is entitled to a decree of permanent injunction?
Point No.7: Whether the plaintiff is entitled to a decree for rendition of accounts?
Point No.8: Whether the plaintiff is entitled to a decree for damages/delivery?
Point No.9: Relief?
18. Plaintiff had a legal right to institute a suit for injunction to restrain defendant from manufacturing, storing and selling the counterfeit products bearing its trademark. 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.
19. Section 29 defines the meaning of infringement of a registered trademark. It provides that a registered trademark is infringed by a TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 13 of 17 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 with 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 marks 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.
20. Now, coming to the aspect whether defendant has infringed the trademark of the plaintiff. In the present matter, there is irrefutable evidence to show that counterfeit products bearing the trademark of the plaintiff were recovered from the possession of the defendant. Photographs of the recovered counterfeit products were taken by the Local Commissioner and copies of the same were filed along with the TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 14 of 17 report. I have perused the same. The photographs show that defendant has used almost identical mark on the counterfeit goods recovered from their possession. The mark was affixed on the each products, which falls under the category of the same goods which are being manufactured by the plaintiff. Thus, defendant not only used the identical mark but also used the mark in respect of identical goods which are being sold by the plaintiff. The products recovered from the possession of defendant were certainly meant to be sold in the market for profit. There is evidence to establish that defendant had been using a mark exactly identical to the registered trademark of the plaintiff. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by the defendant.
21. 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 defendant. Accordingly, plaintiff is entitled to the decree of permanent injunction. Record shows that plaintiff has not TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 15 of 17 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 reliefs 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, defendant was found in possession of the counterfeit products bearing the trademark and logo of the plaintiff. From the inventories placed on record by the Local Commissioner, it is not possible to make the exact analysis of the profit earned by the defendants from selling the counterfeit products, therefore, nominal damages to the tune of Rs.1,00,000/-, to be paid by defendant, are being awarded to the plaintiff. Accordingly, point of determination No.5 to 9 are also decided in favour of plaintiff and against the defendant. In view of this, the suit stands decreed with the following relief:
i. A decree of permanent injunction against the defendant TM 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 16 of 17 whereby he is 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) to be paid by the defendant to the plaintiff;
iii. Cost of the suit.
iv. The seized counterfeit products shall be delivered to the
plaintiff for destruction.
22. Decree-sheet be prepared accordingly.
23. 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 225/2021 M/s Tag Heuer S.A. Vs Ajit Singh Page 17 of 17