Full Judgment Text
SINDHU KRISHNAKUMAR
23.10.2018 19:25
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
rd
Date of Decision: 3 October, 2018
+ CS (COMM) 213/2018
GIORGIO ARMANI S P A & ORS ..... Plaintiffs
Through: None.
versus
YOGESH MORDANI & ORS ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
(Oral)
Prathiba M. Singh, J.
1 . Plaintiff No.1- Giorgio Armani S. P. A. is an Italian company and
Plaintiff No.2 is its Swiss subsidiary. The Plaintiff Nos.1 & 2 are known for
high end fashion products. They together own the ‘ ARMANI ’ marks, which
are Giorgio Armani, Armani Collezioni, Emporio Armani, AJ | Armani
Jeans, AX / Armani Exchange, Armani Junior, and Armani/Casa
(hereinafter `ARMANI’ marks) .
2. In India, the Plaintiff Nos.1 & 2 market and sell their products under
the ‘ARMANI’ marks through Plaintiff No.3 – Genesis La Mode Pvt. Ltd.
3. The name ‘ ARMANI ’ is coined from the founder of the Plaintiff
Company, namely Giorgio Armani. The ARMANI menswear label was
launched in the early 70’s. The reputation of the brand/founder grew by
leaps and bounds in the 1980’s, when Armani became the first fashion
designer since the 1940s to feature on the cover of the Time magazine. The
ARMANI label for products/garments expanded internationally into
numerous jurisdictions, including Europe, USA, the Americas and the Asia
Pacific. The Plaintiffs advertise and publicize their products through the
CS (COMM) 213/2018 Page 1 of 5
. It is pleaded in the plaint that the Plaintiff’s
website www.armani.com
ARMANI products enjoy great reputation even in India. Since 2008, the
products under the ARMANI marks have been sold in India and it is pleaded
that even prior to the year 2008, the marks had enjoyed transborder
reputation. Worldwide sales and advertisement figures have been set out in
the plaint. The ARMANI marks are registered in several countries of the
world, including India. The details of the same have been set out in the
documents.
4. The present suit was instituted against the Defendants, who are in the
business of organizing various events/exhibitions of high-end designer
products. The Defendant No.1 is the partner of Defendant Nos.2 and 3.
The said firms are M/s. Solo Mio and M/s. Luxury Solo respectively. The
Defendants together organize various exhibitions of high-end luxury brands.
The Plaintiffs claim that in April, 2014 they came across exhibitions held by
the Defendants in various five-star hotels, wherein the luxury products
bearing the ARMANI marks were being sold. Advertisements for these
exhibitions were carried in leading newspapers such as Hindustan Times,
Times of India etc. However, the Defendants were offering huge discounts
on these products. The Plaintiffs have relied upon an advertisement dated
th
28 September, 2013 (Ex.PW-1/7) wherein the Defendants have also
claimed that the products sold by the Defendants are under warranty. The
photographs of the exhibitions have been placed on record. The Plaintiffs
got purchase effected of some products bearing the ARMANI marks from
the exhibition of the Defendants. The said products were being sold by the
Defendants on the basis that they are genuine and are covered by warranty.
However, the Plaintiffs’ case is that the products have been sold without
CS (COMM) 213/2018 Page 2 of 5
authenticity cards or any price tags and hence the Defendants’ activities are
likely to cause huge damage to the Plaintiffs’ mark and business. It is also
pleaded that since the products did not bear price tags, which cannot be the
case in case the products are original, they can be easily inferred as being
counterfeit.
nd
5. The suit was first listed on 22 August, 2014, on which date, this
Court had granted an interim injunction restraining the Defendants from
selling any goods under the ‘ARMANI’ marks. The operative portion of the
said order is set out hereinbelow:
“ Accordingly, till the next date of hearing, defendants
are restrained from selling any goods under all the
brand names 'Giorgio Armani Group of companies
including the mark ARMANI', without informing the
customers that the goods which are being sold are not
subject to warranty or exchange by the plaintiffs
company. A statement shall also be made in the
advertisement, if any, to be issued by them to the effect
that the goods using the plaintiffs' trade mark, which
are being sold, are not subject to warranty or exchange
by the plaintiffs company.”
6. The Defendants had entered appearance and were directed to file their
written statement. However, no written statement has been filed till date.
The Plaintiffs thereafter, filed ex-parte evidence by way of an affidavit of
Sh. Rahul Sethi, who was the constituted attorney.
7. The evidence of the Plaintiffs has closed subsequently. The
Defendants and Plaintiffs were attempting settlement, which did not come
through in mediation proceedings. Thereafter, the Defendants stopped
appearing in the matter.
8. This Court has considered the averments on record as also the
CS (COMM) 213/2018 Page 3 of 5
evidence filed by the Plaintiffs. It is clear that the Defendants do not have
any right to use the various brands of ‘ GIORGIO ARMANI’ without the
permission of the Plaintiffs.
9. The fact that the Defendants are offering for sale products under the
various ARMANI marks and holding exhibitions in respect thereof shows
that they are well aware of the value of the said marks. The advertisements
placed on record show that the Defendants are offering huge discounts in the
sale of these designer products. The Plaintiffs have also placed on record
the ‘General Condition of Sale’ of Plaintiffs’ products. The Plaintiffs, being
owners of the trademark GIORGIO ARMANI and other trademarks, are
entitled to protection in law. It is a fact of which judicial notice can be
taken, that the Defendants have been injuncted in the past in respect of
brands such as Jimmy Choo, Burberry etc. Copies of the said orders have
been filed on record. A perusal of the photographs of the Defendants’
products clearly shows that the Defendants are using the said marks.
10. The legal position is quite clear. Under Sections 29 & 30 of the Trade
Marks Act, 1999, causing impairment to a product would also constitute
infringement. While the Defendants cannot be stopped from selling genuine
products of the Plaintiff, in accordance with the law, causing any
impairment or change in the condition of the products would be violative of
Section 30(3). Moreover, even genuine products have to be lawfully
acquired as per the said provision. The Defendants having not filed written
statement in this matter, despite having been served and having not taken the
position that the products are genuine, therefore, cannot be given any benefit
of doubt. The Defendants have neither argued nor pleaded that the products
are genuine. The fact that the original price tags of the Plaintiffs were also
CS (COMM) 213/2018 Page 4 of 5
missing and the products were being sold without price tags adds credence
to the argument that the products are counterfeit.
11. The use of a trademark without permission, consent or license of the
registered trademark owner, per se, results in the infringement of the mark.
12. The suit is therefore liable to be decreed for permanent injunction in
terms of para 41(a) and (b) of the plaint.
13. None appears for the Plaintiffs or presses for the decree of damages or
delivery up. Accordingly, prayers (c) and (d) are rejected. Decree sheet be
drawn accordingly.
14. The suit is disposed of in the above terms.
PRATHIBA M. SINGH
JUDGE
OCTOBER 03, 2018
Rahul
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