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IN THE
HIGH COURT OF DELHI AT NEW DELHI
+
CS(COMM) 673/2016
THE POLO/LAUREN COMPANY L P .....
Plaintiff
Through Mr. Ajay Amitabh Suman, Mr.
Pankaj
Kumar, Mr. Kapil
Kumar
Giri, Mr. Vinay Kumar
Shukla,
Advocates.
versus
M/S
VARSHA & CO AND ANR
Through Ex-Parte
..... Defendants
%
Date of Decision: 23rd March,
2018
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
J U D G M E N T
MANMOHAN, J: (Oral)
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,
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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‟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
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adversely affect the Plaintiff‟s
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 literatures 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 suh 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.
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(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. Vs. Satya Infra & Estates Pvt. Ltd., 2013
SCC OnLine Del 508 the present suit
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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
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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.
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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
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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.
MANMOHAN, J
MARCH 23, 2018
KA/mn
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