JUDGEMENT

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/ (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 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 outlets and 35 shop-in-shop stores and has sold products over 300 multi-brand retail stores in various countries in addition to sale on its own websites and several e-commerce/ online shopping forums and plans to open around 100 stores in the next 5 years. In order to safeguard its intellectual property rights in its most valuable trademarks, Plaintiff No. 1 applied for registration in the word mark CARLTON under Application No. 627450 in India as early as on 06.05.1994 in respect of class 18 goods i.e. leather and imitations of leather and classes, animal skins, hides, trunks and travelling bags, umbrellas, parasols, harness and saddlery, etc. Internationally, the earliest registration of the mark CARLTON LONDON under No. UK00002178254 was secured on 28.09.1998 in the United Kingdom in class 25 goods i.e. footwear including boots, shoes, etc. and the registrations are valid and subsisting. Subsequently, Carlton also secured registrations for the mark/device CARLTON and CARLTON comprising marks/device in various classes such as classes 3, 8, 9, 12, 14, 16, 18, 20, 30, 42 and 43 internationally and in Ind