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IN THE HIGH COURT OF DELHI AT NEW DELHI
V. Kameswar Rao, J.
Liberty Footwear Company - Appellant
Versus
Liberty Innovative Outfits Limited - Respondent
Civil Suit (Comm) No. 637 of 2019, 638 of 2019; Interlocutory Application No. 16177 of 2019, 18169 of 2019, 16180 of 2019, 18402 of 2019, 939 of 2020
Decided On : 26-05-2020
In two suits filed by the plaintiff, a registered partnership firm, against the defendants, the plaintiff sought to restrain the defendants from using the identical/deceptively similar mark LIBERTY, and deceptively similar trade name LIBERTY INNOVATIVE OUTFITS or any identical/deceptively similar mark/logo for its goods and services so as to result in violation of the statutory and common law rights of the Plaintiff in its well-known trademark ''LIBERTY'' along with damages / account of profits against the defendant. The defendants raised various objections, including that the plaintiff lacked the authority to institute the suits, that the plaintiff was not the registered proprietor of the trademark 'LIBERTY', and that the suits were barred by limitation and acquiescence.
Fact of the Case:
The plaintiff, a registered partnership firm, filed two suits against the defendants, seeking to restrain them from using the identical/deceptively similar mark LIBERTY, and deceptively similar trade name LIBERTY INNOVATIVE OUTFITS or any identical/deceptively similar mark/logo for its goods and services. The plaintiff claimed that the defendants' use of the mark and trade name infringed its well-known trademark ''LIBERTY'' and violated its statutory and common law rights. The defendants raised various objections, including that the plaintiff lacked the authority to institute the suits, that the plaintiff was not the registered proprietor of the trademark 'LIBERTY', and that the suits were barred by limitation and acquiescence.
Finding of the Court:
The court held that the plaintiff had the authority to institute the suits, that the plaintiff was the registered proprietor of the trademark 'LIBERTY', and that the suits were not barred by limitation or acquiescence. The court found that the defendants' use of the mark and trade name was likely to cause confusion and deceive the public, and that the defendants had not established any valid defense to the plaintiff's claims.
Issues: 1. Whether the plaintiff had the authority to institute the suits. 2. Whether the plaintiff was the registered proprietor of the trademark 'LIBERTY'. 3. Whether the suits were barred by limitation or acquiescence.
Ratio Decidendi: 1. The court held that the plaintiff had the authority to institute the suits because: * Adarsh Gupta, who filed the suits on behalf of the plaintiff, had a Power of Attorney from the plaintiff that authorized him to do so. * The defendants had not provided any evidence to show that the Power of Attorney had been revoked. * The defendants' contention that the suits could only be filed by a majority of the partners was rejected by the court, which held that a single partner can maintain an action on behalf of the partnership firm to protect its intellectual property rights. 2. The court held that the plaintiff was the registered proprietor of the trademark 'LIBERTY' because: * The plaintiff had produced evidence of assignments from other partnership firms that owned the trademark to the plaintiff. * The plaintiff had applied to the Trade Marks Registry to record the assignments, and the applications were pending. * The defendants had not provided any evidence to show that the assignments were invalid. 3. The court held that the suits were not barred by limitation or acquiescence because: * The plaintiff had taken steps to stop the defendants' infringing use of the trademark since 2009. * The defendants had not provided any evidence to show that the plaintiff had acquiesced in their use of the trademark.
Final Decision: The court granted the plaintiff's motion for a preliminary injunction, enjoining the defendants from using the mark and trade name LIBERTY.
JUDGMENT
V. Kameswar Rao, J. - I.As. 16177/2019 & 18169/2019 in CS(COMM) 637/2019 I.As. 16180/2019 & 18402/2019 in CS(COMM) 638/2019
1. By this order, I shall decide four applications being I.As. 16177/2019 (Order 39 Rule 1 & 2) & 18169/2019 (Order 39 Rule 4) in CS(COMM) 637/2019 and I.As. 16180/2019 (Order 39 Rule 1 & 2) & 18402/2019 (Order 39 Rule 4) in CS(COMM) 638/2019.
I.As. 16177/2019 & 18169/2019 in CS(COMM) 637/2019
2. Cs (COMM) 637/2019 has been filed by the plaintiff seeking to restrain the defendant from using the identical /deceptively similar mark LIBERTY, ,
and deceptively similar trade name LIBERTY INNOVATIVE OUTFITS or any identical/deceptively similar mark/logo for its goods and services so as to result in violation of the statutory and common law rights of the Plaintiff in its well-known trade mark ''LIBERTY'' along with damages / account of profits against the defendant. It may be stated here that on November 20, 2019, ad interim order was passed in favour of the plaintiff.
3. Some of the facts as noted from the plaint are, plaintiff, a registered partnership firm, was established in the year 1954. The plaintiff forms an integral part of Liberty Group of Companies and Firms (''Liberty Group'', for short), which includes partnership firms Liberty Group Marketing Division (''LGMD'', for short), Liberty Enterprise (''LE'', for short) and Liberty Shoes Limited (''LSL'', for short). The Liberty Group has since its establishment been engaged in the business of manufacturing and marketing footwear and fashion products. It is noted from the plaint that the foundation of the footwear business under the brand and banner of ''LIBERTY'' was established by the elder son of Freedom Fighter Late Lajja Ram Gupta, a renowned and respected resident of a small town Karnal of erstwhile Punjab, now in Haryana, before independence of India in 1944. The business was incorporated to help the shoemaker community of Karnal that was for generations engaged in the production of safety shoes for army men. It is the case of the plaintiff, that the plaintiff firm was established, founded by two sons of Late Lajja Ram Gupta, namely Late Dharam Pal Gupta and Late Purushottam Das Gupta with their nephew Late Raj Kumar Bansal. The Liberty Group operations started in the year 1954 from a retail outlet in Karnal and for well over six decades, the Liberty Group has been leading the Indian market with the most diversified variety of quality products under its brand such as leather bags, belts, wallets, stroller bags, school bags, ladies handbags, leather jackets, perfumes, deodorants, sweat shirts, sports & fitness apparels etc. It is the case of the plaintiff that today, the Liberty Group is amongst the largest footwear and leather accessories manufacturing group in India and forms an integral part of the leading fashion and lifestyle retail companies in India. It is also averred that the Liberty Group, in addition to its well-known trademark ''LIBERTY'', has launched various international and domestic brands/sub-brands including but not limited to TIPTOPP, FORCE 10, SENORITA, FORTUNE, PREFECT, FOOTFUN, GLIDERS, COOLERS, WINDSOR etc.
4. The plaintiff devised a unique and appealing corporate logo "LIBERTY LOGO"
(Fig.1)
in the year 1992 and has been continuously using the same ever since. The corporate logo has been used by the plaintiff extensively through several advertising mediums such as Cinema, Television, Radio, Audio Visuals, Digital Mediums so much so, that the public associate the said trademark / logo and the goods under it to be emanating from the business of the plaintiff and the Liberty Group alone.
5. The Liberty Group''s strong presence in the market is established from its expansive presence through 10 branch offices, 200 distributors, 5000 multi brand outlets and over 500 exclusive stores including 20 situated outside India. It is averred in the plaint, that the Liberty Group has been the recipient of plethora of prestigious awards
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