The court upheld the protection of well-known trade marks under the Trade Marks Act, 1999 and granted a permanent injunction to prevent trademark infringement and passing off.

MANMOHAN, J.

1. Present suit has been filed for permanent injunction restraining infringement of trademarks, passing off, unfair trade practices, delivery up, rendition of accounts and damages. Today, learned counsel for plaintiff is permitted to re-number the prayer clause after initialing the same. The corrected prayer clause is reproduced here-in-below:-

“A. Pass a decree of declaration that the trade marks BOSS, HUGO BOSS and BOSS formative/family of marks of the Plaintiff are well-known trade marks.

B. The Defendant, their partners, officers, employees, retailers, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, representatives and assigns be restrained by a permanent injunction from:

i. Manufacturing, promoting, advertising, displaying, showcasing, selling and offering for sale any product bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s earlier well-known trade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks as a trade mark or a trade name or in any manner whatsoever, either as a trade mark or part of a trade mark, trade name or part of a trade name, corporate name or part of corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever so as to infringe the Plaintiff’s registered trade marks and formative marks;

ii. Manufacturing, promoting, advertising, displaying, showcasing, selling and offering for sale any product bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s earlier well-knowntrade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks in a manner which is identical or deceptively and confusingly similar to the writing style, fonts, stylization, layout, formation or in manner whatsoever so as to infringe the Plaintiff’s earlier trade marks;

iii. Manufacturing, promoting, advertising, displaying, showcasing any product bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s registered well-known trade mark BOSS, BOSS HUGO BOSS and other BOSS formative marks or using the said Impugned Mark, in any manner whatsoever, either as a trade mark or part of a trade mark, trade name or part of a trade name, corporate name or part of corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever so as to pass off its goods/services as that of the Plaintiff;

iv. Allowing or permitting third parties to use, any other indicia whatsoever to show any association of the Defendant’s product/services with the Plaintiff products manufactured and sold under the earlier trade marks BOSS, BOSS HUGO BOSS and/or BOSS formative marks;

v. Disposing of or dealing with its assets in a manner which may adversely affect the Plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the Plaintiff.

C. The Defendant, its partners, directors, principals, proprietor, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchises, licensees, representatives, group companies and assigns be directed by a decree of mandatory injunction:

i. to hand over to the Plaintiff or its nominated representative all promotional material, catalogues, stationery labels, signs, prints packages, moulds, plates, dies, wrappers, receptacles and advertisements in its possession or under its control and any other material whatsoever bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other trade mark identical or deceptively or confusingly similar to the Plaintiff’s registered well-known trade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks;

ii. Recall all the products and marketing, promotional and advertising materials that bear or incorporate the impugned mark/name BOSS BIG BOSS/BIG B