Establishment of statutory and common law rights over trademarks, infringement, passing off, and grant of remedies.

JUDGMENT :

AMIT BANSAL, J.

1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks of the plaintiff, passing off their goods as that of the plaintiff's, dilution and other ancillary reliefs.

Brief Facts

2. The case set up by the plaintiff in theplaint is that the plaintiff company, Louis Vuitton Malletier incorporated under the laws of France is a French luxury fashion and leather goods company owning the brand, Louis Vuitton. Louis Vuitton merged with Moet Hennessy SA to form the LVMH Group, the luxury conglomerate.

3. The plaintiff opened its first store in India at the Oberoi Hotel in New Delhi in 2003. Currently, there are three Louis Vuitton stores in India, details of which have been filed along with the plaint.

4. The name “Louis Vuitton” is derived from the name of its founder, Mr. Louis Vuitton and has been used as a brand since 1854. In addition to the trademark “Louis Vuitton”, the initials “LV”, represented in an intertwined manner has also been used as a trademark by the plaintiff since 1896. The plaintiff has also continuously used the canvas design with a flower pattern and the intertwined initials of “Louis Vuitton”, which design is known as “Toile monogram” and is associated as an emblematic symbol of the House of Louis Vuitton.

5. The plaintiff got registered the “Louis Vuitton” word mark, the “LV” logo, the Toile monogram pattern, the Damier pattern and the LV flower pattern (collectively referred to as ‘Louis Vuitton trademarks’) in India in Classes 3, 14, 18 and 25 under registrations no. 441451, 448228, 448229B, 448230B, 448231, 441453B, 448233B, 448235, 448234, 861145, 1335385 and 1335386, details of which have been filed along with the plaint.

6. The plaintiff's “Louis Vuitton” word mark, the “LV” logo and the Toile monogram pattern have acquired the status of ‘well-known trademarks’, which fact has been recognised in the judgments of this court in Louis Vuitton Malletier v. Abdul Salim, 2009 SCC Online Del 1312 and Louis Vuitton Malletier v. Manoj Khurana, 2015 SCC Online Del 11683. Further, the plaintiff's “Louis Vuitton” trademark has also been included in the list of ‘well-known trademarks’ by the Indian Trademark Office.

7. During the periodical market surveys conducted by the plaintiff in January and February, 2018, the plaintiff found about the infringing and counterfeit activities of the defendants no. 1 to 3. Defendant no. 1, Mr. Santosh is the sole proprietor of the defendant no. 2 entity. Defendant no. 3 owns and operates a manufacturing unit.

8. It has been averred in the plaint that the defendants no. 1 to 3 are engaged in manufacturing and selling and/or offering for sale, trading, advertising and directly dealing in goods bearing the plaintiffs registered trademarks. Pursuant thereto, the plaintiff availed the services of an investigator in January and February, 2018, to ascertain the business activities of the defendants. The investigation confirmed that the defendants are infringing the plaintiff's registered and ‘well-known trademark’ “Louis Vuitton” in relation to their business of counterfeit activities.

9. Accordingly, the present suit has been filed.

Proceedings in the Suit

10. This Court, vide order dated 23rd February, 2018 granted an ex parte ad interim injunction in favour of the plaintiff, restraining the defendants no. 1 to 3 from using the plaintiff's registered trademarks “Louis Vuitton”, “LV” logo, the Toile monogram pattern, the Damier pattern and the LV flower pattern. The relevant portion of the said order is as under:

“Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiff and balance of convenience is also in its favour. Further, irreparable harm or injury would be caused to the plaintiff if an interim injunction order, is not passed.

Consequently, till further orders, the defendants, their partners, if any, o