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HIGH COURT OF DELHI
LEVI STRAUSS AND CO – Appellant
Versus
IMPERIAL ONLINE SERVICES PRIVATE LIMITED & ANR. – Respondent
CS(COMM)-657/2021
Key Points: - The suit seeks a permanent injunction restraining trademark infringement, copyright infringement, and passing off regarding the 'Arcuate Stitching Design' mark (!) (!) (!) . - The Defendants were found to have failed to abide by their undertakings dated 16th February, 2021, to remove infringing products within six months (!) (!) (!) . - The Court held that the mere exhibition of images attributed to the Defendants on e-commerce platforms is violative of the injunction order (!) (!) . - The 'Arcuate Stitching Design' mark is considered a well-known mark with acquired secondary meaning due to its use since 1873 (!) (!) (!) . - The suit is decreed awarding a permanent injunction and declaring the mark as a well-known mark in terms of paragraph 76(h) of the plaint (!) (!) . - The Defendants are restrained from seeking statutory rights by applying for trademarks or copyrights in respect of the 'Arcuate Stitching Design' mark (!) . - The Defendants are directed to ensure the removal of infringing images from e-commerce platforms within 30 days (!) (!) . - The Defendants are ordered to pay a sum of Rs. 4 lakhs as nominal costs for failing to abide by repeated undertakings (!) (!) . - The Court affirmed that the stitching pattern performs a trademark function by associating the jeans with the Plaintiff (!) (!) . - The case was disposed of with the next date of hearing cancelled (!) (!) .
What are the rights of the Plaintiff regarding the 'Arcuate Stitching Design' mark as a well-known trademark?
What constitutes a violation of the injunction order when infringing images are displayed on e-commerce platforms?
How to determine if a stitching pattern qualifies as a trademark deserving protection under the law?
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IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 24th March, 2022
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CS (COMM) 657/2021 & I.A. 16736/2021
LEVI STRAUSS AND CO.
..... Plaintiff
Through:
Mr. Dushyant K. Mahant, Mr. Urfee
Roomi and Mr. Vishesh Kumar,
Advocates. (M:9811600017)
versus
IMPERIAL ONLINE SERVICES PRIVATE LIMITED
& ORS.
..... Defendants
Through:
Ms. Shilpa Gamnani, Advocate.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
This hearing has been done through hybrid mode.
2. The present suit seeking permanent injunction restraining trademark
infringement, copyright infringement, passing off of trademark and other
reliefs has been filed by the Plaintiff - Levi Strauss & Co. In the suit, the
Plaintiff seeks protection of its stitching design, which is known as ‘Arcuate
Stitching Design’ mark. The said mark, as per the Plaintiff, was adopted in
1873 and is used on all the textiles including denim jeans, which are
manufactured and sold by the Plaintiff. The said mark is as extracted below:
2022:DHC:1222
3. The grievance of the Plaintiff is that the Defendants were also selling
denim jeans with the identical ‘Arcuate Stitching Design’ mark through the
website www.urbanofashion.com and other e-commerce platforms. The
Plaintiff found the products with the infringing mark on various e-commerce
platforms
including
amazon.in,
flipkart.com,
nykaafashion.com,
myntra.com, snapdeal.com, limeroad.com and paytmmall.com. The mark
used by the Defendants is depicted below:
4.
The Plaintiff had issued notices to the Defendants. Out of the
Defendants impleaded in the present case, the Defendant Nos.2 to 5 are the
directors of Defendant No.1 company. In response to the notices which were
issued by the Plaintiff, the Defendants through their counsels had executed
undertakings on 16th February, 2021. In the said undertakings, the
Defendants acknowledged the sole and exclusive rights of the Plaintiff in the
‘Arcuate Stitching Design’ mark. The Defendants also undertook that within
six months from the date of undertakings, i.e., 15th August, 2021, all the
infringing products would be removed and no further manufacturing,
distribution, or sale of good including jeans shall be undertaken by the
Defendants with the infringing mark or stitching design similar to Plaintiff’s
mark. The relevant extracts of the undertaking dated 16th February, 2021 are
2022:DHC:1222
set out below:
Annexure A);
Annexure B under its own brand names,
2022:DHC:1222
trademark shown in Annexure A;”
5.
However, it is the submission of the ld. counsel for the Plaintiff that
despite giving the undertaking, the Defendants continued to manufacture
and offer for sale the said denim jeans with the Plaintiff’s ‘Arcuate Stitching
Design’ mark, which has led to filing of the present suit by the Plaintiff.
6.
Vide order dated 22nd December, 2021, this Court had granted ad-
interim injunction in terms of paragraphs (a) and (b) of the prayer in the
application, which reads as under:
2022:DHC:1222
(a) and (b) in this application”
2022:DHC:1222
7.
Post the Defendants being served, written statement has been filed by
them. In the written statement, it is explained that an initial extension of six
months was sought for disposal of the stock, however, the same could not be
diligently adhered to due to the pandemic period and lockdowns associated
thereto. The relevant paragraphs read:
2022:DHC:1222
Trade Marks Act, 1999 (Act).
11. The Defendant states that it has not sold
any products bearing the Arcuate Stitching
Design Trademark after 15 October 2021
and had also effectuated complete removal
of its products containing the Trademark
across all platforms by such date. This fact
8.
Even today, submission of ld. Counsel for the Plaintiff is that the
products of the Defendants are still available on various e-commerce
platforms. It is furt
