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IN THE HIGH COURT OF DELHI AT NEW DELHI
AMIT BANSAL, J.
Retail Royalty Company and Another - Plaintiffs
Versus
Nirbhay Marg News Broadcast Private Limited - Defendant
CS(COMM) No. 601 of 2022 and I.A. No. 14027 of 2022 (O-XXXIX R-1 & 2 of CPC)
Decided On : 25-04-2023
Trademark Infringement - Permanent Injunction - Copyright Act, 1957, Trademarks Act, 1999 - The court granted a permanent injunction in favor of the plaintiffs, restraining the defendant from using the impugned marks, and awarded damages and costs to the plaintiffs.
Fact of the Case:
The plaintiffs, owners of the Flying Eagle mark, sought permanent injunction against the defendant for trademark and copyright infringement. The defendant, despite being served, failed to appear and file a written statement.
Finding of the Court:
The court found that the plaintiffs proved their ownership of the Flying Eagle mark, its validity, and goodwill. The defendant's impugned marks were deemed identical/deceptively similar to the plaintiffs' mark, constituting trademark and copyright infringement. The court proceeded ex parte against the defendant and decreed permanent injunction, damages, and costs in favor of the plaintiffs.
Issues: Trademark and copyright infringement, validity of the Flying Eagle mark, defendant's failure to appear and file a written statement.
Ratio Decidendi: The defendant's failure to respond and defend the case indicated lack of substantial defense. The plaintiffs' ownership, validity, and goodwill of the Flying Eagle mark were established, leading to the grant of permanent injunction, damages, and costs.
Final Decision: The court decreed permanent injunction against the defendant, awarded damages and costs to the plaintiffs, and disposed of all pending applications.
JUDGMENT :
Amit Bansal, J.
The present suit has been filed seeking the relief of permanent injunction restraining the defendant from the infringement of the trademark and copyright of the plaintiffs, passing-off and other ancillary reliefs.
Brief Facts
2. The case setup by the plaintiff is as follows:
3. Plaintiff no. 1, Retail Royalty Company and plaintiff no. 2, AEO Management Co., incorporated under the laws of the State of Nevada, United States of America are wholly owned subsidiaries of a common parent company, American Eagle Outfitters, Inc.
4. The parent company of the plaintiffs, since its foundation in 1977 has been engaged in the business of designing, marketing and selling readymade clothing, footwear, fashion accessories and related goods, around the world, including in India.
5. The plaintiffs are the proprietors of various trademarks including the Flying Eagle device mark [IMAGE] (hereinafter referred to as the “Flying Eagle mark”), that is used on and in relation to readymade clothing, footwear and related accessories. Over the years, the plaintiffs have also used a variation of the plaintiffs' mark [IMAGE], which features additional serrations on the right wing. The Flying Eagle mark was created by an employee of the plaintiffs in 2003.
6. The Plaintiffs' goods bearing the Flying Eagle mark are sold in over one thousand three hundred (1300) retail stores around the world, including in India. The plaintiffs have opened 33 stores in India. The goods of the plaintiffs are available in their retail stores as well as on the e-commerce websites such as www.ae.com, www.myntra.com, amazon and more.
7. The plaintiff no. 2 is the first owner of the copyright in the Flying Eagle mark, bearing registration no. AA-122033/2017 by virtue of the Copyright Act, 1957.
8. The plaintiffs are the registered proprietors of the Flying Eagle mark in various Classes including Class 38 of the Trade Marks Act, 1999 dealing in telecommunications. The earliest registration for the Flying Eagle mark in India dates back to the year 2006. Details of the trademark registrations of the plaintiffs' Flying Eagle mark in India have been tabulated in paragraph no. 17 of the plaint. The said mark of the plaintiffs is also registered by the plaintiffs in various other countries.
9. The plaintiffs have also filed their global sales turnover in respect of the goods bearing the Flying Eagle mark from the financial year 2009-2010 to 2021-2022. The turnover of the plaintiffs in the year 2009-2010 was around 2.928 billion USD, whereas the turnover in the financial year was around 5.010 billion USD. The plaintiffs' revenues have shown substantial increase.
10. The plaintiffs have also provided the advertising expenses incurred by the plaintiffs in respect of the goods bearing the Flying Eagle mark. In the year 2009, the plaintiffs spent around 68.9 million USD towards advertising expenses and in the year 2021 the plaintiffs spent around 173.6 million USD. The plaintiffs have also advertised goods bearing the Flying Eagle mark in various print medias, direct mailings and other channels.
11. Owing to the extensive and continuous use of the Flying Eagle mark within India, the said mark has acquired a status of ‘well-known trademark’ under Section 2(1) (zg) of the Trademarks Act, 1999.
12. Defendant, Nirbhay Marg News Broadcast Private Limited is a company engaged in the business of providing broadcasting services, transmitting streamed sound and audio-visual recordings via the internet, transmission of advertising programs and media advertising communications via digital communications and related services under the marks, [IMAGE] (hereinafter referred to as impugned marks’). The impugned marks features the Device of Eagle. The defendant offers/advertises its services through its website located at http://nirbhaymargnews.com/, where the defendant's mark is prominently featured as a corporate logo and as a favicon.
13. The plaintiffs became aware of the defendant's unauthoriz
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