Full Judgment Text
$~22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of decision :25 July, 2018
+ CS (COMM) 209/2018 & I.A. 14700/2014
M/S BVLGARI SPA ..... Plaintiff
Through: Mr. S. K. Bansal, Mr. Pankaj Kumar
& Mr. Kapil Kumar Giri, Advocates
(M-9810438450).
versus
M/S SMART COLLECTION & ORS ..... Defendants
Through: Mr. H. P. Singh, Advocate for D-1 to
6&8 (M-9810008116).
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The Plaintiff – M/s Bvlgari SPA ( hereinafter, „Plaintiff‟ ), is an Italian
jewellery and luxury goods company having the trademark „BVLGARI‟ ,
which is derived from the surname of the company’s Greek founder, Sotirios
Voulgaris, popularly known as Sotirio Bulgari. Although it started out as a
jewellery brand, it is now a luxury brand that produces and markets several
product lines including watches, fragrances, accessories and hotels. The
Plaintiff’s products are said to have achieved global repute and renown. In
India, the Plaintiff’s mark „BVLGARI‟ is registered in several classes
including class 3 as stated in paragraph 7 of the plaint. It is the case of the
Plaintiff that the mark „BVLGARI‟ is also an essential part of the domain
name and website www.bvlgari.com.
2. The Plaintiff avers that in the last week of April, it came across
various counterfeit products with the trademark „BVLGARI‟ and came to
know that the said products are being promoted through various social
CS (COMM) 209/2018 Page 1 of 9
media platforms and blog posts. Along with the Plaint, various images of
products promoted under the mark ‘ BVLGARI‟ along with the mark ‘ Smart
COLLECTION‟ have been placed. The original Plaint impleaded Defendant
No.1 as M/s. Smart Collection. Mr. Yasin Sayani original Defendant no.2
claimed that he was the owner of the trade mark ‘ SMART COLLECTION‟ .
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Hence M/s. Smart Collection was deleted vide order dated 6 October 2015.
An amended memo of parties was thereafter filed. Mr. Yasin Sayani, Mr.
Danish Sayani, Ms. Yasina Sayani, M/s Floressence Perfumes Pvt. Ltd, M/s
CrisModa Perfumes Pvt. Ltd., are Defendants 1-5. Defendant No.6, is M/s
Singh Collection who is claimed to be the seller of the infringing products in
Delhi. Defendant No.7 is M/s Cosmic International against whom there are
no specific allegations.
3. The claim of the Plaintiff is that the sale of these products is violative
of the Plaintiff’s rights in the trade mark ‘ BVLGARI ’, and since the products
are counterfeit, an injunction is liable to be granted. The Plaintiff also claims
that the Defendants are engaged in promotion and advertising of the
impugned goods and products bearing the trademark of the Plaintiff through
various blogs and social media websites as well. Paragraph 21 of the Plaint
reads as under:
“21. The enquiry of the Plaintiff revealed that the
defendants are engaged in the display, advertisement,
promotion, sale, delivering and distributing the
impugned goods and products bearing the trademark
of the Plaintiff not only in the markets but also on the
internet inclusive of the online shopping websites,
social networking sites, facilitating websites and
related media and blog-spots like
https:/ / www.facebook.com/pages/Smart-Collection-
Perfumes-18ml-from-France/242267372464372,
CS (COMM) 209/2018 Page 2 of 9
https:// www.facebook.com/scperfumeslSml,
https://www.facebook.com/groups/SmartCollectionPerf
umes/
https://www.facebook.com/perfumesmartcollection18m
l
https://www.facebook.com/SmartCollectionPerfumeMa
laysia
https://www.facebook.com/smartcollectionmalaysia
www.smartcollectionperfume81.blogspot.com,
www.smartcollectionperfumedeodorant.blogspot.com,
www.klsmartperfumes.blogspot.com, and are otherwise
dealing in the course of trade (hereinafter referred as
the “impugned activities”) in the impugned goods. The
screenshots taken from some such websites are filed
herewith this suit.”
4. In a common written statement filed on behalf of Defendant Nos.1 to
5 and 7 (as per amended memo of parties) , it was claimed that the Defendant
No.1 – M/s. Smart Collection does not exist as an entity, but is a trademark
owned by Mr. Yasin Sayani. Thus, the Defendants did not dispute that the
mark ‘ SMART COLLECTION ’ emanated from their stable of products. The
Defendants, however, challenged the territorial jurisdiction of this Court. It
was claimed that the Defendant No.5 – Cris Moda Perfumes Pvt. Ltd., is not
a company. It is actually a sole proprietary concern of Mr. Danish Sayani by
the M/s. Cris Moda Parfums. It is claimed to be a small scale industry which
manufactured and marketed its own perfumes under their registered
trademark ‘ Cris Moda Parfums ’. It is also claimed that the mark ‘ Cris Moda
Parfums‟ was assigned by Defendant no.4 to Defendant no.5. According to
the Defendants, M/s. Singh Collections has been impleaded only for the
purposes of vesting territorial jurisdiction in this Court. There is no
connection between the other defendants and M/s. Singh Collections. The
CS (COMM) 209/2018 Page 3 of 9
Defendants also categorically stated in the written statement as under:
“20 to 23................
It is further denied that the blogs and websites so
stated in the corresponding para of the plaint do not
belong to the Defendants nor do they have any
association or connection with the same. The
Defendant categorically submits that it in no manner
runs or administers these blogs or websites or
advertises through Face Book pages and that the
claims of the Plaintiff are totally false, baseless and
are being made to mislead and prejudice this Hon'ble
Court against the Defendant. Rest of the paras are
denied.
24 to 30. The Contents of paras 24 to 30 of the plaint
are incorrect, wrong and denied. Plaintiff is put to
strict proof thereof. It is submitted by the Defendants
that the suit is bad on account that the present
Defendants have never sold any products with the
trademark BVLGARI. Therefore, the Defendants have
no reason to sell goods with a false description or have
ever indulged in counterfeiting of the Plaintiff
products. The question of selling products with
phonetically, visually and structurally similar marks of
the Plaintiff products does not arise, nor have the
Defendants copied the artistic work or copyright of the
Plaintiff or have tried to give false description or have
ever tried to link themselves with the customers of the
Plaintiff. The Defendants have their own trademark to
bank upon and do not require any leave or licence
from the Plaintiff nor have the Defendants have ever
violated the trademarks of the Plaintiff to lead to
infringement or passing off. The present suit is an ill
founded suit and has been filed with ulterior motives.
The averments made in these paragraphs are
absolutely ill founded and are liable to be rejected. Any
chance of confusion or deception cannot arise. The
Defendants have never tried to cash upon the goodwill
and reputation of the Plaintiff, if any. It is submitted by
CS (COMM) 209/2018 Page 4 of 9
the Defendants that the Plaintiff have not produced any
document of the sales in India or the accounts to show
that they have suffered huge losses and business
reputation. It is submitted by the Defendants that the
Plaintiff have miserably failed to show any kind of
damage suffered by them.”
It is further pleaded that no document proving sales of the impugned product
has been placed on record by the Plaintiff or that the Plaintiff has suffered
any loss or damage. Thus, in brief, the case of the Defendants is that this
court lacks territorial jurisdiction as also that they have never used the mark
‘ BVLGARI‟. The Defendants also denied that the blogposts set out in the
plaint belong to them.
5. In the written statement filed by Defendant No. 6 (earlier Defendant
No. 7), i.e., M/s Singh Collection, they have categorically denied having any
association with the other Defendants in the suit, and contended that they
have been wrongfully impleaded in the suit. Defendant No.6 denied all
allegations of dealing in any counterfeit products, as also any goods
manufactured by the other Defendants. They further averred that the
Plaintiff had failed to produce any documentary evidence to show that the
impugned goods are being manufactured/sold by Defendant No.6.
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6. Initially, on 8 August, 2014, an ex-parte ad-interim injunction was
granted. Mediation was also explored between the parties, however the same
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failed. The matter was listed for case management hearing on 25 July,
2018.
7. The documents filed by the Plaintiffs on record, in order to show
misuse of the trademark, „BVLGARI‟ are printouts of the packagings bearing
the mark „BVLGARI‟ and ‘ SMART COLLECTION ’. The screenshots are
CS (COMM) 209/2018 Page 5 of 9
clearly visible on the record. The images also show that they have been
taken from websites/URLs such as
www.smartcollectionperfume.wordpress.com. There is no denial by the
Defendants that this URL does not belong to them. The fact, that the word
„BVLGARI‟ is being used along with the trademark ‘ SMART
COLLECTION ’, clearly shows that the Defendants were misusing the word
and mark „BVLGARI‟ . This shows that the complaint of the Plaintiff is not
completely baseless. Images of the packagings and the screen shots of the
posts, which show the use of the mark „BVLGARI‟ along with the
Defendants’ mark ‘ SMART COLLECTION ’, goes to show that the
Defendants are attempt to ride piggyback on the reputation of the Plaintiff’s
mark ‘ BVLGARI‟ .
8. The Defendants are in the identical trade i.e., manufacturing/selling
perfumes, fragrances, etc. There is no reason as to why the images ought to
have appeared online with the mark „BVLGARI‟ along with the mark
‘ SMART COLLECTION ’. Thus, it appears that the Defendants did make an
attempt to sell the products co-branding the same as „BVLGARI‟ along with
their own mark ‘ SMART COLLECTION ’. Such a use even with co-branding
is completely illegal and unlawful and cannot be permitted.
9. When the suit was taken up for case management hearing, learned
counsel for the Defendants, apart from challenging the jurisdiction of this
Court, did submit that the Defendants have not sold the products under the
mark „BVLGARI‟ . Insofar as jurisdiction is concerned, the Defendants’
website, videos and images are accessible from within Delhi. They are being
actively promoted in Delhi and hence there is illegal `use’ of the mark,
which confers jurisdiction on this Court. Since the Defendants admit that
CS (COMM) 209/2018 Page 6 of 9
they don’t intend to use the mark „BVLGARI‟ and also because there is no
proof of actual sales but the documents show use of the mark and there is no
serious dispute as to the same, no useful purpose would be served in sending
the matter to trial. Both Ld. Counsels for the Plaintiff and the Defendants do
not have an objection in this Court disposing of the matter finally.
10. The Defendants appear to be adopting various marks of third parties,
as is evident from the records wherein the injunctions have been granted
against them from using the trademarks Tommy Hilfiger, Lacoste, Calvin
Klein, Christian Dior and other well known brands. The Defendants also
appear to be clandestinely making the sales. The images of the Defendants’
co-branded products, using the mark „BVLGARI‟ and ‘ SMART
COLLECTION‟.
Defendants’ use of the Plaintiff’s mark
11. The Plaintiff has established its rights in the mark ‘ BVLGARI‟ . The
global reputation of this mark is also clearly evidenced from the record. The
CS (COMM) 209/2018 Page 7 of 9
above images leave no manner of doubt that the Defendants were using the
Plaintiff’s mark „BVLGARI‟ . Thus, a permanent injunction is liable to be
granted against the Defendants from using the mark „BVLGARI‟ . However,
since there is no evidence of sales and the entire evidence appears to be a
clandestine business, and further, keeping in view the fact that the
Defendants completely denied that they sold products bearing the mark
„BVLGARI‟ , permanent injunction as prayed for is granted.
12. The Plaintiff’s proprietary rights are not in dispute. A perusal of the
product images of the Defendants’ infringing products as also the promotion
on Facebook shows that the products being promoted and sold by the
Defendants are virtually identical to the Plaintiff’s product packaging,
except for the appearance of the mark ‘ SMART COLLECTION‟ in logo
form. The Defendants do not deny that this Facebook page belongs to them.
A perusal of the actual online Facebook page with this name, also shows
that several products of the Defendants are being offered for sale and
promotion. They all bear the mark „SMART COLLECTION‟ . Thus, the
averment of the Defendants that they are not selling the infringing products
is unconvincing. Promotion and sales through social media is almost
untraceable. The manner, in which social media pages can be immediately
changed or taken down, makes it difficult for any IP owner to keep track.
Moreover, pages on social media platforms can be uploaded by anyone. In
such cases, it is to be seen as to who is the ultimate beneficiary of the said
publicity and advertising. In the case of online sales, promotion and
advertising, due to the fluid nature of the internet i.e., that changes can be
made instantly, the `Beneficiary test‟ would have to be adopted. Inference
would have to be drawn that the person who ultimately benefits is the person
CS (COMM) 209/2018 Page 8 of 9
who has directly put up the said page or is instrumental in getting the same
put up. In the present case, there is a clear admission that the mark „SMART
COLLECTION‟ belongs to the Defendant no.1 and all the defendants are
related to each other. There can be no reason for the co-branding images
appearing on the products as also on Facebook and other websites with the
marks ‘ BVLGARI‟ being used with „SMART COLLECTION‟ . The only
persons who would benefit from such use and promotion would be the
Defendants. Hence they should be held to be liable.
13. The Defendants are liable to pay damages and costs of the litigation.
The sales being clandestine, the damages are assessed for a nominal amount
of Rs.1 Lakh, along with costs of Rs.50,000/-. The suit is decreed in terms
of para 36 (a), (d) & (e). Further decree of damages for Rs.1.5 Lakhs is
granted in favour of the Plaintiff against the Defendants. The present order
be communicated by the Plaintiff to the Customs Authorities to ensure that
counterfeit products bearing the mark „BVLGARI‟ are not permitted to be
either imported or exported.
14. Suit is decreed in the above terms. Decree sheet be drawn up
accordingly. All pending applications are also disposed of.
PRATHIBA M. SINGH, J.
JUDGE
JULY 25, 2018/ dk
CS (COMM) 209/2018 Page 9 of 9