CS(COMM) 730/2019 & 52/2020 Page 1 of 53

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IN THE HIGH COURT OF DELHI AT NEW DELHI

%

+

CS(COMM) 730/2019

CARLTON SHOES LTD. & ANR.

..... Plaintiffs

Through:

Mr.

Sandeep

Sethi,

Senior

Advocate

with

Mr.

C.A.

Brijesh,

Ms. Shreyosi Pal and Mr. Ishith Arora,

Advocates.

versus

VIP INDUSTRIES LTD.

..... Defendant

Through: Mr. Akhil Sibal, Senior Advocate

with Mr. Nishad Nadkarni, Mr. Ankur

Sangal

Ms.

Deboshree

Mukherjee,

Mr. Ankit Arvind and Ms. Shifa Ashraf,

Advocates.

+

CS(COMM) 52/2020

VIP INDUSTRIES LTD.

..... Plaintiff

Through:

Mr.

Akhil

Sibal,

Senior

Advocate with Mr. Nishad Nadkarni,

Mr.

Ankur

Sangal,

Ms.

Deboshree

Mukherjee, Mr. Ankit Arvind and Ms. Shifa

Ashraf, Advocates.

versus

CARLTON SHOES LTD. & ANR.

..... Defendants

Through:

Mr. Sandeep Sethi, Senior

Advocate

with

Mr.

C.A.

Brijesh,

Ms. Shreyosi Pal and Mr. Ishith Arora,

Advocates.

CORAM:

HON'BLE MS. JUSTICE JYOTI SINGH

Digitally Signed

By:KAMAL KUMAR

Signing Date:19.07.2023

18:18:12

Signature Not Verified

CS(COMM) 730/2019 & 52/2020 Page 2 of 53

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

Digitally Signed

By:KAMAL KUMAR

Signing Date:19.07.2023

18:18:12

Signature Not Verified

CS(COMM) 730/2019 & 52/2020 Page 3 of 53

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