The Saket Bench of the Delhi District Court has that where the plaintiff proves registration of its trademark and establishes, through unrebutted evidence including registration documents, comparison of marks, and the Local Commissioner’s seizure report, that the defendants used an identical or deceptively similar mark on identical goods, the Court may hold that infringement is made out under Sections 28 and 29 of the Trade Marks Act, and where the mark and goods are identical, likelihood of confusion stands presumed. In such circumstances, the plaintiff is entitled to a decree of permanent injunction, delivery up of counterfeit goods, and damages.
The Court further laid down that, for purposes of territorial jurisdiction in a trademark action, Section 134 of the Trade Marks Act permits institution of the suit at the place where the plaintiff carries on business, and where the plaintiff’s evidence shows business activity within the jurisdiction of the Court, that Court is competent to entertain the suit notwithstanding the defendants’ objection.
The District Judge Arul Varma observed that while Section 20 CPC confers jurisdiction where the defendant resides or carries on business, Section 134 of the Trade Marks Act expands jurisdiction to the place where the plaintiff actually and voluntarily resides or carries on business or personally works for gain. Relying on Indian Performing Rights Society Ltd. v. Sanjay Dalia [(2015) 10 SCC 161], the Bench held that the plaintiff’s documents, particularly the list of licensees/authorised manufacturers and sales documents, showed that the plaintiff was carrying on business in South Delhi, and accordingly the Court had territorial jurisdiction.
On proprietary rights, the Bench observed that the plaintiff had established registration of its trademarks through the legal proceedings certificates and supporting registration material. The Bench reiterated that registration confers upon the registered proprietor the exclusive right to use the trademark in relation to the goods concerned and to obtain relief in respect of infringement under Sections 28, 134 and 135 of the Trade Marks Act, 1999.
On infringement, the Bench observed that Section 29 of the Trade Marks Act contemplates infringement where a person uses, in the course of trade, a mark identical with or deceptively similar to a registered trademark in relation to the goods for which it is registered, and that where both the mark and the goods are identical, confusion is to be presumed. The Bench further noted that deception is assessed by comparison of the two marks, and resemblance may be phonetic, visual, or in the basic idea represented by the plaintiff’s mark.
Applying those principles, the Bench found irrefutable evidence that counterfeit products bearing the plaintiff’s mark had been recovered from the defendants, that the photographs annexed with the Local Commissioner’s report showed the use of almost identical marks, and that the mark “RALPH LAUREN” had been affixed on identical goods manufactured and sold by the plaintiff. The Bench also observed that the defendants’ typography and trade dress were identical to those of the plaintiff’s products, leading to the inference that the defendants’ goods were counterfeit and that the defendants had acted with mala fide intent to take advantage of the plaintiff’s market presence and goodwill.
On damages, the Bench noted that punitive damages are intended to deter law breakers who indulge in trademark violations with impunity for profit. Having found continued infringement and misuse of the plaintiff’s trademark despite the injunction, the Bench held the plaintiff entitled to damages of Rs. 5 lakhs.
Briefly, the plaintiff, The Polo/Lauren Company L.P., instituted a suit for trademark infringement, passing off, copyright infringement, permanent injunction, delivery up, and damages against multiple defendants allegedly dealing in counterfeit goods bearing the plaintiff’s marks. The plaintiff pleaded that it is engaged in manufacture and sale of apparel and allied products under the internationally known mark POLO, that its trademarks are registered in India, and that the defendants were applying the plaintiff’s trademarks on counterfeit products.
An ad interim injunction was granted on March 05, 2012, and a Local Commissioner was appointed, who visited the defendants’ premises on Apr 18, 2012, who seized 5 counterfeit goods from defendant no. 4 and 13 counterfeit goods from defendant no. 7, while inspection at the premises of defendant nos. 1, 2, 3, 6 and 9 was obstructed. Defendant nos. 1, 2, 3 and 6 subsequently settled the matter before the Delhi High Court Mediation and Conciliation Centre, and defendant nos. 4, 5, 7, 8 and 9 were proceeded ex parte. The surviving defence in the written statements principally challenged territorial jurisdiction and denied infringement and passing off.
The plaintiff examined PW-1 Meena Bansal, who proved, among other documents, the representations of the plaintiff’s and defendants’ marks, legal proceedings certificates, status documents relating to the plaintiff’s trademarks, documents relating to foreign registrations, advertising material, documents showing the plaintiff’s history and products, authorisation letters, list of licensees and authorised manufacturers in India including South Delhi, documents showing sales in India including South Delhi, and the Local Commissioner’s report. On territorial jurisdiction, the plaintiff relied on documents showing that its authorised distributor was carrying on business in South Delhi.
