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2018 Supreme(Del) 2365
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
Montblanc-Simplo GMBH – Plaintiff
Versus
M/s Bajaj Belts & Ors. – Defendants
CS(COMM) 207 of 2018 & I.As. 1641 of 2018 AND 13562 of 2018
Decided On : 11-10-2018
For the Plaintiff : Mr. Pravin Anand, Mr. Manish Biala
The court decreed the suit for trademark infringement and passing-off based on the defendants' infringement of the plaintiff's registered trademark and directed the plaintiff to file an application under Rule 124 to claim the status of a well-known mark.
Headnote:
Trademark Infringement - Permanent Injunction - Trade Marks Act, 1999 - Section 2(1)(zg), Rule 124
Fact of the Case:
The plaintiff filed a suit for permanent injunction restraining trademark infringement, passing-off, damages, rendition of accounts, and delivery up. The defendants were found to be infringing the plaintiff's trademarks during the execution of local commissions.
Finding of the Court:
The court found the defendants to be first-time infringers and selling counterfeit products bearing the plaintiff's trademarks. The court decreed the suit in favor of the plaintiff and directed the defendants to hand over infringing goods for destruction.
Issues: Trademark infringement, passing-off, well-known mark status
Ratio Decidendi: The court decreed the suit as the defendants had no real prospect of defending the claim and were found to be infringing the plaintiff's registered trademark. The court also directed the plaintiff to file an application under Rule 124 of the Trade Mark Rules, 2017, to claim the status of a well-known mark.
Final Decision: The suit was decreed in favor of the plaintiff, and the defendants were directed to hand over infringing goods for destruction. The plaintiff was also directed to file an application under Rule 124 to claim the status of a well-known mark.
MANMOHAN, J.
1. Despite a pass over, none is present for the defendants. Consequently, this Court has no other option, but to proceed ahead with the present case.
2. It is pertinent to mention that the present suit has been filed for permanent injunction restraining infringement of trademark, passing-off, damages, rendition of accounts, delivery up, etc. The prayer clause is reproduced hereinbelow:-
“21. It is humbly prayed before this Hon’ble Court that it may be pleased to grant:-
(a) An order for permanent injunction restraining the Defendants, their proprietors, officers, servants, agents, distributors, stockists, representatives and anyone acting for or in their behalf from manufacturing, selling and/or offering for sale, advertising, directly or indirectly dealing in any products including though not limited to leather goods, belts, watches, jewellery etc. bearing the trademarks MONTBLANC and/or the Star Device or any similar trademark and/or device amounting to an infringement of trade mark.
(b) An order for permanent injunction restraining the Defendants, their proprietors, officers, servants, agents, distributors, stockists, representatives and anyone acting for or on their behalf from manufacturing, selling and/or offering for sale, advertising, directly or indirectly dealing in any products including though not limited to leather goods, belts, watches, jewellery etc. bearing the trademarks MONTBLANC and/or the Star Device or any similar trademark and/or device amounting to passing off the Defendants’ goods and services as those of the Plaintiff.
(c) An order for delivery-up of all the impugned materials of the Defendants including the infringing products, signage, goods, stickers, cartons, packing, dies, articles, papers or any other material bearing the impugned trade marks, device or model numbers for the purpose of their destruction/erasure.
(d) An order declaring the Plaintiff’s trade marks MONTBLANC, and the Star Device as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act, 1999.
(e) An order of rendition of account of profits illegally earned by the Defendants on account of illegal use of the Plaintiff’s trademarks or any mark identical or deceptively similar to that of Plaintiff’s, and a decree be passed in favour of the Plaintiff of the amount so ascertained.
(f) An order for damages to the sum of Rs.1,00,05,000/- (Rupees one crore five thousand only) in favour of the Plaintiff, jointly and severally against each of the Defendants on account of loss of sales, reputation and goodwill of the Plaintiff’s’ trade marks caused by the activities of the Defendants and a decree for the said amount be passed in favour of the Plaintiffs.
(g) An order for costs of the proceedings.”
3. Vide order dated 05th February, 2018, this Court granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-
"Consequently, till further orders, the defendants, their proprietors, officers, servants, gents, distributors, stockists, representatives and anyone acting for or on their behalf are restrained from manufacturing, selling and/or offering for sale, advertising, directly or indirectly dealing in any products including but not limited to leather goods, belts, watches, the Star Device or any similar trademark and/or device in any manner whatsoever."
4. On 05th February 2018, this Court also appointed three Local Commissioners. During the execution of the local commissions, the defendants were found to be infringing the plaintiff’s trademarks and were found in possession of 1155 counterfeit products of the plaintiff. The relevant portions of the Local Commissioners reports are reproduced hereinbelow:-
Report of First Local Commissioner
“4. It is most respectfully submitted that after a detailed search an
