Back
2023 Supreme(Del) 3358
IN THE HIGH COURT OF DELHI AT NEW DELHI
Jyoti Singh, J.
Carlton Shoes Ltd. & Anr. – Appellants
Versus
Vip Industries Ltd. – Respondent
CS(COMM) 730 of 2019 & CS(COMM) 52 of 2020
Decided On : 17-07-2023
Mr. Sandeep Sethi, Senior Advocate with Mr. C.A. Brijesh, Ms. Shreyosi Pal and Mr. Ishith Arora, Advocates, for the Plaintiffs in CS(COMM) 730/2019 and for the Defendant in CS(COMM) 52/2020.
Mr. Akhil Sibal, Senior Advocate with Mr. Nishad Nadkarni, Mr. Ankur Sangal Ms. Deboshree Mukherjee, Mr. Ankit Arvind and Ms. Shifa Ashraf, Advocates, for the Defendant in CS(COMM) 730/2019 and for the Plaintiff in CS(COMM) 52/2020.
Headnote:(A) Trade Marks Act, 1999 - Sections 28 and 29 - Trade mark infringement and passing off actions - Parties in dispute over the use of the trademark CARLTON in relation to goods under Class 18. Both parties claimed prior adoption and user rights, with the court finding that Carlton established its use and goodwill in India prior to VIP. VIP's claims of earlier rights were dismissed due to lack of evidence establishing market presence before Carlton's use, as well as confusion among consumers regarding product origin. (Paras 62, 66, 68)
(B) The court ruled that registered proprietors of similar marks cannot sue each other for infringement under Section 28(3) of the Act. However, actions for passing off remain viable. The threshold for proving passing off involves establishing goodwill, misrepresentation, and damage. The court highlighted the importance of territoriality in claiming transborder reputation. (Paras 42-46)
Facts of the case:
Carlton established its CARLTON mark in 1993/1994, sought to prevent VIP from using the CARLTON mark claiming prior rights for the same goods. VIP asserted rights based on an earlier acquisition of marks but failed to demonstrate prior market presence. (Para 66)
Findings of Court:
Carlton's goodwill and trademark rights affirmed, while VIP’s claims rejected due to insufficient market evidence in India, affirming Carlton's established user and market presence. (Paras 62-68)
Issues: Determination of prior user rights based on market presence, goodwill, confusion among consumers regarding goods, and assessment of claims of passing off against the statutory trademark rights of the parties. (Paras 42-46)
Ratio Decidendi: Two registered proprietors of similar trademarks cannot infringe against each other but can pursue claims of passing off. The court stressed the need to demonstrate transborder goodwill in the jurisdiction where the claim is made, concluding that Carlton had established prior user rights. (Paras 42-46)
Result: Carlton’s request for an injunction against VIP was granted, restraining VIP from using the CARLTON name in relation to the relevant goods. (Para 66)
| Table of Content |
|---|
| 1. overview of carlton's trademark claims (Para 1 , 2 , 3 , 4 , 5) |
| 2. history and relevance of carlton's brand (Para 6 , 7 , 8 , 9 , 10) |
| 3. vip's claims regarding trademark usage (Para 11 , 12 , 13 , 14 , 15) |
| 4. background of disputes and trademark notices (Para 16 , 17 , 18 , 19) |
| 5. arguments from carlton regarding ip rights (Para 20 , 21 , 22 , 23 , 24) |
| 6. critique of vip's trademark claims (Para 25 , 26 , 27 , 28 , 29) |
| 7. court's observations on prior user principle (Para 30 , 31 , 32 , 33) |
| 8. discussion on passing off principles (Para 34 , 35 , 36 , 37) |
| 9. historical context of proprietary claims (Para 38 , 39 , 40 , 41) |
| 10. interpretation of statutory provisions on trademarks (Para 42 , 43 , 44 , 45) |
| 11. comparison of legal tests for passing off (Para 46 , 47 , 48 , 49) |
| 12. court's decision on the jurisdictional principle (Para 50 , 51 , 52 , 53) |
| 13. final ruling and implications for parties (Para 54 , 55 , 56 , 57) |
| 14. court's final remarks on the sustainability of claims (Para 58 , 59 , 60 , 61) |
| 15. conclusion and orders made by the court (Para 62 , 63 , 64 , 65 , 66 , 67 , 68) |
JUDGMENT
Jyoti Singh, J.
I.A. 18443/2019 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs) in CS(COMM) 730/2019 and
I.A. 1369/2020 (under Order 39 Rules 1 and 2 CPC, by Plaintiff) in CS(COMM) 52/2020
1. This judgment will dispose of the aforesaid two applications filed by each party for interim injunction. On account of similitude of facts and common questions of law being inextricably linked, both applications were heard together and are being decided by this common judgment. To the extent the facts are different in the two suits, the same shall be adverted to in the later part of the judgment.
CS(COMM) 730/2019
2. CS(COMM) 730/2019 is filed by Carlton Shoes Limited and Carlton Overseas Private Limited (hereinafter referred to as `Carlton'), seeking a decree of permanent/perpetual injunction restraining the Defendant (VIP) and all others acting on its behalf inter alia from using Carlton's registered trademark/name CARLTON/CARLTON LONDON/[IMG] (device mark) and CARLTON formative marks as well as from using any other mark(s) identical/deceptively similar thereto, amounting to infringement and passing off.
3. As per the averments in the plaint, Plaintiff No. 1/Carlton Shoes Ltd. is a Company incorporated under the laws of England and Plaintiff No. 2/Carlton Overseas Pvt. Ltd., is its Affiliate Company incorporated under the provisions of the Companies Act, 1956 having its registered office at Delhi. Carlton is a celebrated manufacturer and designer of shoes for women, men and children and over the years have expanded the fashion business through accessories such as bags, belts, jewellery, perfumes, watches, etc., under the umbrella brand CARLTON LONDON. For its business, Carlton uses CARLTON LONDON in several variants and the brand portfolio includes various products.
4. It is averred that Carlton's history can be traced back to the year 1989 when Mr. Baljit Virk established a Company in East End of London for ladies' fashion shoes and has been in business of manufacturing and marketing footwear since 1971 in UK. The mark CARLTON gets its inspiration from the name of Mr. Virk's son, Mr. Carljit Virk (born in 1978) and was first adopted in 1992 when Carlton Shoes Limited was incorporated under the laws of England. Carlton Overseas Private Limited was incorporated in 1993 in India. In addition to the mark CARLTON, Plaintiff No. 1 also adopted inter alia the mark CARLTON LONDON, in order to denote the place of origin of the company and designed an artistic logo [IMG] to be used in conjunction with the trademarks CARLTON/CARLTON LONDON.
5. It is further averred that with sheer determination and hard work, within a span of 50 years in the footwear industry and 27 years since the use of the brand CARLTON LONDON, Carlton has produced and sold more than 5 million pairs of footwear and thousands of bags and accessories. Carlton has 19 exclusive retail ou
