IN THE HIGH COURT OF DELHI
Decided On: 23.03.2018
Appellants: The
Polo/Lauren Company L.P.
Vs.
Respondent: Varsha & Co. and Ors.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: Ajay Amitabh Suman , Pankaj
Kumar , Kapil Kumar Giri and Vinay
Kumar Shukla , Advocates
JUDGMENT
1. Present suit has
been filed for permanent injunction restraining infringement, passing off, damages,
delivery up, rendition of accounts etc. against the defendants. The prayer
clause in the present suit is reproduced hereinbelow:-
"43. That under the
facts and circumstances of the present case the Plaintiff most respectfully
prays that this Hon'ble Court may kindly be pleased to:
(a) Pass a decree of
permanent injunction restraining the Defendant No. 1 and 2 by themselves as
also through their individual proprietors/partners/principles, agents,
representatives, distributors, assigns, heirs, successors, stockiest and all
others acting for and on their behalf from using, selling, soliciting,
exporting, displaying, advertising or by any other mode or manner dealing in or
using the impugned Trade Mark/Label POLO with or without the device of POLO
player and impugned domain name namely www.varshaa.com for that purpose or any
other word/mark/trade Mark/Label/Domain Names which may be identical with
and/or deceptively similar to the Plaintiff's said Trade Mark/Label/Domain
Names in relation to their impugned goods and business of readymade garments
and accessories and allied and cognate products and from doing any other acts
or deeds amounting to or likely to:
(i) Infringement of
Plaintiff's registered Trade Mark/Label [POLO WITH DEVICE OR POLO PLAYER and/or
other POLO formative trademarks and/or DEVICE OF POLO PLAYER] as mentioned in
Para No. 7 of the plaint.
(ii) Passing off and
violating of the plaintiff's rights in the Plaintiff's said Trade Mark/Label
[POLO, POLO WITH DEVICE OF POLO PLAYER and/or other POLO formative trademarks
and/or DEVICE OF POLO PLAYER].
(iii) Infringement of
Plaintiff's copyrights in artwork of said Trade Mark/Label [POLO; POLO WITH
DEVICE OF POLO PLAYER and/or other POLO formative trademarks and/or DEVICE OF
POLO PLAYER].
(b) Restraining the
Defendant No. 1 and 2 from disposing of or dealing with their asset including
their premises at the address mentioned in the Memo of Parties and their
stocks-in-trade or any other assets as may be brought to the notice of the
Hon'ble court during the course of the proceedings and on the Defendant's
disclosure thereof and which the Defendant is called upon to disclose and/or on
its ascertainment by the Plaintiff as the Plaintiff is not aware of the same as
per Section 135(2)(c) of the Trade Marks Act, 1999 as it could adversely affect
the Plaintiffs ability to recover the costs and pecuniary reliefs thereon.
(c) For an order for
deliver up of all the impugned finished and unfinished materials bearing the
impugned and violative impugned Trade Mark/Label or any other word/mark which
may be identical with or deceptively similar to the Plaintiff's said Trade
Mark/Label including its blocks, labels, display boards, sign boards, trade
literature and goods etc. to the plaintiff for the purposes of destruction and
erasure.
(d) For an order for
rendition of accounts of profits earned by the Defendant No. 1 and 2 by their
impugned illegal trade activities and a decree for the amount so found in
favour of the plaintiff on such rendition of accounts.
(e) Or, in the alternative
to the rendition of accounts, for a decree of Rs. 20,01,000/- (Rupees Twenty
Lakh and One Thousand Only) on account of damages sustained by the plaintiff
due to the impugned acts of the Defendant No. 1 and 2.
(f) Pass an order directing
Defendant No. 3 (Department of Telecommunications, Government of India) and
Defendant No. 4 (Department of Electronics & Information Technology) to
secure blocking of the Web Pages/URL(s)/Listings mentioned in Schedule 'A'
filed along with the documents.
(g) Pass an order directing
Defendant No. 3 (Department of Telecommunications, Government of India) and
Defendant No. 4 (Department of Electronics & Information Technology) to
secure blocking of any future Web Pages/URL(s)/Listings brought up by the
defendant Nos. 1 & 2 on their impugned website which infringe the rights of
the plaintiff as informed by the Plaintiff to the Defendants No. 3 & 4
through written communication.
(h) For an order for cost
of proceedings, and
(i) For such other and
further order as this Hon'ble Court may deem fit and proper in the facts and
circumstances of the present case."
2. Vide order dated 28th
September, 2015, an ad-interim injunction order was passed and defendant Nos. 3
and 4 were deleted from the array of parties. The relevant portion of the order
dated 28th September, 2015 is reproduced hereinbelow:-
"...Accordingly,
till further orders, defendant Nos. 1 & 2, their partners, proprietors,
agents, representatives, distributors, assigns, heirs, successors and stockists
are restrained from using, selling, soliciting, exporting, displaying,
advertising or by any other mode or manner dealing in or using the impugned
trade mark/label POLO with or without the device of POLO player or any other
word/mark/trademark/label, which may be identical with and/or deceptively
similar to the plaintiff's trade mark/label/domain names in relation to their
impugned goods or readymade garments and accessories and allied and cognate
products, through the website www.varshaa.com or otherwise."
3. The ad-interim order was
confirmed on 21st March, 2018 till the disposal of the suit. The remaining
defendants were also proceeded ex parte on 21st March, 2018.
4. Learned counsel for the
plaintiff states that he has instructions to only press for prayer 43(a) and
(h) of the plaint.
5. Learned counsel for the
plaintiff states that in view of the judgment of this Court in Satya
Infrastructure Ltd. &Ors. v. Satya Infra & Estates Pvt. Ltd.,
MANU/DE/0511/2013 the present suit be decreed qua the reliefs in paragraph
43(a) and (h) of the plaint. The relevant portion of the said judgment relied
upon by learned counsel for the plaintiff is reproduced hereinbelow:-
"I am of
the opinion that no purpose will be served in such cases by directing the
plaintiffs to lead ex parte evidence in the form of affidavit by way of
examination-in-chief and which invariably is a repetition of the contents of
the plaint. The plaint otherwise, as per the amended CPC, besides being
verified, is also supported by affidavits of the plaintiffs. I fail to fathom
any reason for according any additional sanctity to the affidavit by way of
examination-in-chief than to the affidavit in support of the plaint or to any
exhibit marks being put on the documents which have been filed by the
plaintiffs and are already on record. I have therefore heard the counsel for
the plaintiffs on merits qua the relief of injunction."
6. The relevant facts of
the present case as pointed out by the learned counsel of the plaintiffs are as
under :-
A) The plaintiff is a
limited partnership engaged in the business of manufacture, distribution and
sale of a wide range of apparel and clothing for men, women and children,
clothing accessories, etc.
B) The plaintiff adopted
the trademark POLO in 1967, and has been using the word POLO per se and in
conjunction with other marks/words and DEVICE OF POLO PLAYER, in various
stylized and artistic formats with and/or without the DEVICE OF POLO PLAYER.
The plaintiff is the registered owner of the aforesaid trademarks/labels under
various Classes of the Trade Marks Act, 1999. In support of the aforesaid
submission the plaintiff has filed legal proceeding certificates of the
plaintiff's registered trademarks in India.
C) The art works involved
in the plaintiff's trademark/label are original artistic works and the
plaintiff is the registered owner and proprietor of the copyright therein.
D) The word/mark POLO and
DEVICE OF POLO PLAYER are a material part of the plaintiff's trademark/label
and are invented and arbitrary trademarks. The word/mark POLO is also the most
essential feature of the plaintiff's trading style/trade name "The
Polo/Lauren Company L.P." and by virtue of continuous and uninterrupted
use, the plaintiff's trademark/label has become distinctive and is associated
with and has acquired secondary significance with the plaintiff's goods and
business.
E) The plaintiff also uses
the domain names, www.polo.com, www.polo-ralph-lauren.in, www.pologolf.in,
www.prl.in, www.global.polo.com for the sale of its goods.
F) The revenue generated by
the plaintiff for sale of its products under the said trademark/label
worldwide, for the year 2015 was USD 7,620 million. In support of the aforesaid
statement the plaintiff has filed consolidated statements of income, cash
flows, equity, selected/quarterly financial information.
G) The defendant No. 2 is
the proprietor of defendant No. 1 and is engaged in the business of
manufacturing, marketing, selling, supplying, soliciting and trade of readymade
clothing and other allied/related products.
H) In July, 2015, while
making a random search of web-sites selling readymade garments and accessories,
the plaintiff came to know that the defendant's are selling readymade garments
bearing the word/mark/label POLO with or without the DEVICE OF POLO PLAYER
through their website www.varshaa.com. The plaintiff made an online purchase of
goods bearing the plaintiff's trademark/label from the defendants' website
which showed that the goods were counterfeit and the said fact was confirmed by
the plaintiff's production department. In support of the aforesaid submissions
the plaintiff has filed a copy of invoice raised by the defendants dated 16th
July, 2015.
I) The trademark/label POLO
and DEVICE OF POLO PLAYER adopted by the defendants in relation to their goods
and services are identical with and deceptively similar to the plaintiff's
trademark/label in each and every respect including phonetically, visually,
structurally, in its basic idea and in its essential features. The defendants'
use of the plaintiff's trademark/label wrongly conveys to the public that the
defendants' goods originate from the plaintiff.
J) The defendants have
dishonestly and fraudulently adopted the plaintiff's trademark/label with the
intent to take advantage of and trade upon the goodwill and reputation of the
plaintiff.
7. Having heard learned
counsel for the plaintiff and having perused the documents placed on record,
this Court is of the opinion that the plaintiff has proved the facts stated in
the plaint.
8. In view of the above
facts, the suit is decreed in favour of the plaintiff and against defendant in
terms of prayer clause 43(a) of the plaint along with the actual costs. The
costs shall amongst others include the lawyers' fees as well as the amounts
spent on purchasing the court fees. The plaintiff is given liberty to file on
record the exact cost incurred by it in adjudication of the present suit, if
not already filed. Registry is directed to prepare a decree sheet accordingly.
Consequently, the present suit stands disposed of.
