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2017 Supreme(Del) 1611
IN THE HIGH COURT OF DELHI AT NEW DELHI
DEEPA SHARMA, J.
LOUIS VUITTON - Plaintiff
Versus
GAURAV BHATIA & ORS. - Defendants
CS(COMM) 89 of 2017 and IA Nos. 13470 of 2014 & 21815 of 2014
Decided On : 23-05-2017
For the Plaintiff : Mr. Pravin Anand, Mr. Dhruv Anand, Ms. Udita Patro and Mr. Shamim Nooreyezdan, Advs.
For the Defendants : Defendants are ex parte.
The court emphasized the importance of proving actual damages in trademark infringement cases and highlighted the need for evidence to support claims for damages.
Headnote:
Trademark Infringement - Intellectual Property - Trade Marks Act - Section 134(2), Copyright Act - Louis Vuitton - 3, 14, 18, 25 - The court discussed the infringement of trademarks and copyright by the defendants, the jurisdiction under Section 134(2) of the Trade Marks Act, and the evidence presented to prove the plaintiff's ownership of the trademarks and copyright. The court restrained the defendants from dealing in goods bearing the plaintiff's trademark and directed them to remove the infringing website, but did not grant damages.
Fact of the Case:
The plaintiff, a registered company known for producing lifestyle goods, sought injunction against the defendants for trademark and copyright infringement, passing off, and damages. The defendants were found offering counterfeit products bearing the plaintiff's trademarks on their e-commerce website.
Finding of the Court:
The court found that the plaintiff proved ownership of the trademarks and copyright, and the defendants were dealing in counterfeit products, leading to infringement and passing off. However, no evidence of actual damages was presented.
Issues: Trademark and copyright infringement, passing off, jurisdiction under Section 134(2) of the Trade Marks Act, and assessment of damages.
Ratio Decidendi: The court restrained the defendants from dealing in goods bearing the plaintiff's trademark, directed them to remove the infringing website, and render accounts of the profit earned, but did not grant damages due to lack of evidence.
Final Decision: The court restrained the defendants from dealing in goods bearing the plaintiff's trademark, directed them to remove the infringing website, and render accounts of the profit earned, but did not grant damages. The suit was disposed of with no order as to costs.
1. The present suit has been filed by the plaintiff seeking permanent injunction against the defendants, restraining them from infringing its trademark, copyright and also from passing off the goods of the plaintiff as that of theirs and for rendition of accounts and damages.
2. The case of the plaintiff in brief is that it is registered company existing under the laws of France and having its registered office at 2, rues du Pont-Neuf, 75001- Paris, France. Col. J.K. Sharma (Retired) is the authorized person representing the plaintiff under a Power of Attorney. It is submitted that the plaintiff-company was founded by Mr Louis Vuitton and that it has a reputation of producing lifestyle goods having a distinctive design and exclusive craftsmanship which looks elegant and high style. They are specialized in the production and distribution of higher quality of luggage, hand bags, travel and fashion accessories for men and women, including ready to wear, shoes and jewellery. They maintain strict quality, control and have exclusive retail network. Their distribution is through a limited network of more than 460 exclusive stores located in selected cities upon the work. They only sell their products through these exclusive stores and outlets and their goods are available only at retain prices fixed by the plaintiff. The plaintiff opened its first exclusive store in India in 2003 at Oberoi Hotel in New Delhi and now they have stores one each in New Delhi, Bangalore and Chennai and two in Mumbai. These are the only 5 places where they sell their products. The plaintiffs spent a huge sum in advertisement of their products in India and their product has widespread recognition in India. Their net sale in India during the period 2007-2010 was approximately Rs. 213 crores. Their brand name LOUIS VUITTON was ranked No.17 by survey conducted in Interbrand in 2012 and is considered top fashion design. It is also a trademark and its initial ‘’ in an intertwined manner is also a trademark since 1854 which appears on number of its products and is a signature symbol of the plaintiff. It also uses a canvas design with a flower pattern and intertwined initials of Louis Vuitton (LV) and this pattern is emblematic symbol of the plaintiff. The design is known as “Toile Monogram” and it is a registered trademark of the plaintiff. It introduced 33 different colours called the “Murakami Monogram Multicolour as variation to “Toile Monogram” and enjoys copyright over the said pattern which is an artistic work and is registered under No. VAI-250-120 with the Copyright Office of the United States of America. Its registration numbers in India in classes 3, 14, 18 and 25 are 441451, 448229, 441452, 448230, 448231, 441453, 448233, 448235, 448234 and 861145.
3. It is submitted that defendants 1, 2 and 3 are Directors of defendant No.4 which is a trading company and operates trading under the name of Digaaz e-commerce Pvt. Ltd. which operates an e-commerce website www.digaaz.com on which it offers for sale lifestyle and fashion products. It is found that the defendant is offering for sale and supplying counterfeit products bearing several registered trademarks of the plaintiff on this website. The domain name www.digaaz.com is registered in the name of defendant No.2 and, therefore, it is directly under its control. It is submitted that the plaintiffs came to know on 23.05.2013 of the infringement of its trademark by the defendants and also they discovered that the defendants were indulging into counterfeit activities and supplying counterfeit goods of plaintiff. The plaintiff found that the Registrar of the domain name www.digaaz.com was NAME.COM, INC., located at 2500, East Second Avenue, Second Floor, Denver, Colorado 80206, USA and the Internet Service Provider (ISP) hosting the infringing website parked onthe said domain name was Pioneer Elabs Limited, located at Plot No. 16, APIIC. Software Units Layout, Madhapur, Hyderabad 500 081. The plaintiff th
