Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 204/2016
SHOPPERS STOP LTD ..... Plaintiff
Through: Mr. Sagar Chandra, Advocate with
Ms. Surabhi Iyer and Ms. Shubhie
Wahi, Advocates.
versus
SOFTOBELL INC. & ORS ..... Defendants
Through: Ms. Savni Dutt, Advocate with
Ms. Gitanjali Mathew, Advocate for
defendant No.3.
Ms. Nupur Lamba and Ms. Surbhi
Singh, Advocates for defendant
No.4.
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% Date of Decision: 01 November, 2018
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
J U D G M E N T
MANMOHAN, J: (Oral)
I.A. 14807/2018
Present application has been filed seeking impleadment of Aeora
Solutions Pvt. Ltd. as defendant No.6.
CS (COMM) 204/2016 Page 1 of 8
Since the party sought to be impleaded has been served and none
appears for it, the present application is allowed. Plaintiff is permitted
to re-file the amended memo of parties during the course of the day.
CS(COMM) 204/2016 & I.As. 6941/2015, 17211/2015 AND
1136/2016
1. Present suit has been filed for permanent injunction restraining
infringement of trade mark, passing off, dilution, unfair competition,
delivery up, rendition of accounts, damages etc.The prayer clause is
reproduced hereinbelow:
“28. It is therefore respectfully prayed before this Hon’ble
Court that it may be pleased to grant the following orders
in favour of the Plaintiff and against the Defendants:
a. A Decree for permanent injunction restraining the
Defendants their directors, executives, partners,
proprietors, as the case may be, their officers, servants
and agents or anyone acting for and on their behalf from
manufacturing, marketing, selling, offering for sale on the
websites, e-commerce or otherwise, advertising or in any
manner dealing in any goods and/or services including
but not limited to apparels under the trademark
“VETTERN FRATTINI”, or from adopting any other
mark which is identical or deceptively similar to the
Plaintiff’s trade mark “VETTORIO FRATINI” amounting
to infringement of the Plaintiff’s registered trademarks as
provided in Para 8 of the Plaint;
b. A Decree for permanent injunction restraining the
Defendants their directors, executives, partners,
proprietors, as the case may be, their officers, servants
and agents or anyone acting for and on their behalf from
manufacturing, marketing, selling, offering for sale on the
websites, e-commerce or otherwise, advertising or in any
manner dealing in any goods and/or services including
CS (COMM) 204/2016 Page 2 of 8
but not limited to apparels under the trademark
“VETTERN FRATTINI” and/or from adopting any other
mark which is identical or deceptively similar to the
Plaintiff’s trade mark “VETTORIO FRATINI” amounting
to passing off or doing any other thing which will lead to
passing off of the goods and services of the Defendants as
those of the Plaintiff;
c. A Decree for permanent injunction restraining the
Defendants their directors, executives, partners,
proprietors, as the case may be, their officers, servants
and agents or anyone acting for and on their behalf from
manufacturing, marketing, offering for sale on the
websites, e-commerce or otherwise, advertising or in any
manner dealing in any goods and/or services including
but not limited to apparels under the name “VETTERN
FRATTINI”, or from adopting any other trade mark
which is identical or deceptively similar to the trade mark
“VETTORIO FRATINI” thus amounting to dilution of the
Plaintiff’s trademark;
d. A Decree for delivery up of all the products, goods,
labels, cartons, brochures, advertising material and any
other document bearing the mark “VETTERN
FRATTINI” or any other mark the use of which may
amount to Passing Off or Infringement of Trade Marks of
the Plaintiff to the authorized representative of the
Plaintiff for the purpose of destruction/erasure;
e. A Decree for rendition of accounts of profits illegally
earned by the Defendants on account of the sale of the
products bearing the marks which are identical and/or
deceptively similar to the Plaintiff’s trademarks
“VETTORIO FRATINI” and a decree for the amount so
found due be passed in favour of the Plaintiff;
f. A decree for damages to be determined by this Hon’ble
Court in its discretion be passed against the Defendants
and in favour of the Plaintiff;
CS (COMM) 204/2016 Page 3 of 8
g. An order for costs of the proceedings;
And/or any further order as this Hon’ble Court may deem fit
and proper in the facts and circumstances of the present
case.”
2. Today, learned counsel for the plaintiff gives up prayers (d), (e)
and (f) of the prayer clause to the suit. The statement made by learned
counsel for plaintiff is accepted by this Court and plaintiff is held bound
by the same.
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3. Vide order dated 08 February, 2015 this Court granted an ex
parte ad interim injunction against the defendant. Relevant portion of
the ex parte ad interim injunction is reproduced hereinbelow:
“In my view the plaintiff has made out a prima facie
case in its favour inasmuch as the impugned mark of the
defendant is clearly phonetically and visually similar to the
mark of the plaintiff. Balance of convenience is also in favour
of the plaintiff. The defendants are restrained by an ex parte
ad interim injunction from manufacturing, selling or dealing
with the trade mark “VETTERN FRATTINI” or any other
mark which is deceptively similar to the plaintiff’s trade mark
“VETTORIO FRATINI” till further orders. The plaintiff to
comply with order 39 Rule 3 CPC within three days from
today”
4. Since none appeared on behalf of defendants No.1, 2 and 5
despite service, the defendant nos. 1 and 2 were proceeded ex-parte on
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11 July, 2016 and the defendant no.5 was proceeded ex parte on 17
January, 2017. Today, since none appeared on behalf of defendant
No.6 despite service, defendant No.6 is proceeded ex parte.
CS (COMM) 204/2016 Page 4 of 8
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5. It is pertinent to mention that on 09 May, 2018, the
intermediaries, i.e. the defendants No.3 and 4 were directed to disclose
the sales made by the defendants No. 1,2 and 5 on the online sales
portals of defendant nos. 3 and 4 under the mark „VETTERN
FRATTINI‟ as well as revenue generated by such sales. The defendants
No.3 and 4 have disclosed on their online sale portals the sales made by
defendants No.1, 2 and 5 under the mark VETTERN FRATTINI as well
as the revenue generated by such sales.
6. Learned counsel for defendant nos.3 and 4 undertake before this
Court that they will not list the products of defendants No.1, 2, 5 and 6
bearing the mark VETTERN FRATTINI on their online portals.
Learned counsel for defendants nos.3 and 4 also state that in the event
they are informed by the plaintiff of any alleged illegal listing of its
products, the said defendants shall disclose the details of the sellers of
the infringing products in response to the plaintiff‟s request within
forty-eight working hours.
7. The undertakings given by the learned counsel for defendants
No.3 and 4 are accepted by this Court and the said parties are held
bound by the same. Registry is directed to prepare a decree sheet
against defendant nos. 3 and 4 accordingly
8. Learned counsel for plaintiff prays 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 be
decreed qua the defendants No.1, 2 , 5 and 6 in terms of para 28(a), (b)
and (c) of the prayer clause of the suit along with actual costs. The
CS (COMM) 204/2016 Page 5 of 8
portion of the said judgment relied upon by learned counsel for the
plaintiffs 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.”
9. The relevant facts of the present case are that the plaintiff was
established in 1997 and is engaged in the marketing of various
consumer and household goods including cosmetics, textiles,
readymade garments, footwear, gift items, jewelry, electric and
electronic items, lighting, etc.
10. It is stated in the plaint that one of the leading fashion brands of
the plaintiff is “VETTORIO FRATINI” for men‟s apparels such as
pens, wallets, footwear, belts, sunglasses etc. It is stated that the
plaintiff adopted the mark VETTORIO FRATINI in 2003 and has been
using it continuously since.
11. It is the case of the plaintiff that sales for the goods under the
mark VETTORIO FRATINI in the financial year 2013-2014 was INR
13,95,36,000. It is also stated that the plaintiff has spent large amount
on advertisement and promotion of its mark VETTORIO FRATINI
CS (COMM) 204/2016 Page 6 of 8
12. It is stated that the plaintiff owns registration for the mark
VETTORIO FRATINI under various classes of the Trade Mark Act,
1999.
13. Learned Counsel for the plaintiff states that in August 2014, the
plaintiff‟s representative came across goods being sold under the mark
„VETTERN FRATTINI‟. He states that the plaintiff conducted further
investigations which revealed that the products bearing the impugned
marks were available on the defendant No.3‟s website bearing the
packaging of the defendant No.2 under the name and address of the
defendant no.1.
14. Learned counsel of the plaintiff states that the plaintiff addressed
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cease and desist notices dated 21 October, 2014 to defendants No.1, 3
and 4. He states that the defendant no.1 did not reply to the same. He
further states that defendants No.3 and 4 replied to the cease and desist
notice stating that they have removed the goods bearing the impugned
mark. However, he states that at the time of filling of the suit the
plaintiff came across the goods bearing the impugned mark on
defendants No.2 and 3‟s website.
15. In the opinion of this Court, the defendant nos.1, 2, 5 and 6 have
no real prospect of defending the claim. In view of the aforesaid, the
suit is decreed in favour of the plaintiffs and against the defendants
No.1, 2, 5 and 6 in accordance with paragraph 28(a), (b), and (c) of the
plaint along with the actual costs. The costs shall amongst others
include the lawyers‟ fees. The plaintiff is given liberty to place on
record the exact cost incurred by it in adjudication of the present suit, if
not already filed.
CS (COMM) 204/2016 Page 7 of 8
16. Registry is directed to prepare a decree sheet qua the remaining
defendants accordingly.
17. Consequently, the present suit and pending applications stand
disposed of.
MANMOHAN, J
NOVEMBER 01, 2018
sp/js
CS (COMM) 204/2016 Page 8 of 8