Full Judgment Text
$~23
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of decision :25 July, 2018
+ CS (COMM) 211/2018 & I.A. 14144/2014
M/S LVMH FRAGRANCE BRANDS SA ..... 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 – LVMH Fragrance Brands SA. ( hereinafter, „Plaintiff‟ ),
is a multinational luxury goods conglomerate, headquartered in Paris. The
company was formed by the merger of Louis Vuitton with Moet Hennessy
in 1987. It controls 60 subsidiaries across the globe, „GIVENCHY‟ being one
of them. „GIVENCHY‟ is a French fashion, accessories and perfume brand,
founded by Count Hubert de Givenchy in 1952. M/s Parfums Givenchy S.A.
France, the predecessor of the Plaintiff company, was established in 1957
and since then „GIVENCHY‟ has become renowned brand for fragrances,
perfumery and other cosmetics worldwide. The Plaintiff‟s products are
claimed to be sold in more than 100 countries in the world. In India, the
Plaintiff‟s mark „ GIVENCHY ‟ is registered in several classes including
classes 3, 18, and 25, as stated in paragraph 7 of the plaint. It is the case of
the Plaintiff that the mark „ GIVENCHY ‟ is also an essential part of the
domain name and website www.givenchy.com.
CS (COMM) 211/2018 Page 1 of 8
2. The Plaintiff avers that in the last week of April, 2014, it came across
various counterfeit products with the trademark „ GIVENCHY ‟ and came to
know that the said products are being promoted through various social
media platforms. 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‟ . Hence M/s.
th
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 and Defendant no.7 is M/s Cosmic International. There are
no allegations against Defendant Nos. 6 and 7.
3. The claim of the Plaintiff is that the sale and promotion of these
products is violative of the Plaintiff‟s rights in the trade mark „ GIVENCHY ‟,
and since the products are counterfeit, an injunction is liable to be granted.
4. In a common written statement filed on behalf of the Defendant
Nos.1-5, & 7, it was claimed that the Defendant No.1 – M/s. Smart
Collection does not exist, but is a trademark owned by Defendant No.2 i.e.
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 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
CS (COMM) 211/2018 Page 2 of 8
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
Defendants also categorically stated in the written statement as under:
“25 to 31. The Contents of paras 25 to 31 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 GIVENCHY. 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
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.”
CS (COMM) 211/2018 Page 3 of 8
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.
st
6. Initially, on 1 August, 2014, an ex-parte ad-interim injunction was
granted. Mediation was also explored between the parties, however the same
th
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 „ GIVENCHY ‟ are printouts of the packagings
bearing the mark „ GIVENCHY ‟ and „ SMART COLLECTION ‟. The
screenshots are clearly visible on the record. The fact, that the word
„ GIVENCHY ‟ is being used along with the trademark „ SMART
COLLECTION ‟, clearly shows that the Defendants were misusing the word
and mark „ GIVENCHY ‟. 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 „ GIVENCHY ‟ along with the
Defendants‟ mark „ SMART COLLECTION ‟, go to show that there is more
than what meets the eye.
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 „ GIVENCHY ‟ along with the mark
CS (COMM) 211/2018 Page 4 of 8
„ SMART COLLECTION ‟. Thus, it appears that the Defendants did make an
attempt to sell the products co-branding the same as „ GIVENCHY ‟ along
with their own mark „ SMART COLLECTION ‟. Such a use even with co-
branding is completely illegal and unlawful and cannot be permitted. The
Defendant no.6 has merely denied that he sells the products of the other
defendants.
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 „ GIVENCHY ‟. 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, as `Use‟ constitutes cause of action
in a trade mark infringement suit. Since the Defendants admit that they
don‟t intend to use the mark „ GIVENCHY ‟ 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 product, using the mark „ GIVENCHY ‟ and „SMART
COLLECTION‟ are:
CS (COMM) 211/2018 Page 5 of 8
Defendants’ use of the Plaintiff’s mark
11. The Plaintiff‟s proprietary rights are not in dispute. A perusal of the
product images of the Defendants‟ infringing products as also the Facebook
page screenshot 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. Moreover, the screenshot of the Facebook page shows that this is a
Facebook page of the Defendants under the name and style “ Smart
Collection Perfumes ”. 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
CS (COMM) 211/2018 Page 6 of 8
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
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 Facebook and other websites with the mark „ GIVENCHY ‟
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.
12. These leave no manner of doubt that the Defendants were using the
Plaintiff‟s mark „ GIVENCHY ‟. Ld. Counsel for the Defendants however
clearly submits that the Defendants do not intend to use the mark
„GIVENCHY‟ . Thus, a permanent injunction is liable to be granted against
the Defendants from using the mark „ GIVENCHY ‟. 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 „ GIVENCHY ‟,
permanent injunction as prayed for is granted.
13. The Defendants, while having their own brands, appear to have
clearly made an attempt to co-brand their products under the „ SMART
COLLECTION‟ range with the mark „ GIVENCHY ‟, at least as per the online
images filed on record. It is thus clear that the defendants are liable to pay
nominal damages and costs of the litigation. The sales being clandestine, the
CS (COMM) 211/2018 Page 7 of 8
damages are assessed for an amount of Rs.1 Lakh, along with costs of
Rs.50,000/-. The suit is decreed in terms of para 37 (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 „ GIVENCHY ‟ 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) 211/2018 Page 8 of 8