$ * + IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on:
8. h February, 2017 Pronounced on:
21. t February, 2017 CS (OS) 576/2014 BURBERRY LIMITED & ANR. ..... Plaintiffs Through: Ms. Astha Joshi, Advocate versus DIGAAZ.COM/DIGAAZ-ECOMMERCE PVT. LTD. & ORS. ..... Defendants Through: Ex parte CORAM: HON'BLE MR. JUSTICE R.K.GAUBA JUDGMENT
1 This civil suit alleging infringement of the trademark and passing off by the defendants of their products as that of the plaintiff seeking various reliefs including prohibitory injunction, damages, etc. was initially instituted against five defendants, the second defendant then described as Digaaz e-Commerce Pvt. Ltd., 84 Wall Street, Eatontown, New Jersey, 07724, USA. On the basis of submissions made on 13.02.2015, the name of the said defendant was deleted from the array leaving four defendants in the fray, they being, Digaaz.com/Digaaz e-Commerce Pvt. Ltd., House No.3159, Sector CS (OS) 576/2014 Page 1 of 8 47D, Chandigarh, Punjab, India (the first defendant), Mr. Gaurav Bhatia Co-Founder and Director, House No.3159, Sector 47D, Chandigarh Punjab, India (now the second defendant), Mr. Dixit Sahni, Co-Founder and Director, House No.3159, Sector 47D, Chandigarh, Punjab, India (now the third defendant) and Mr. Ashish Sobti, Director, House No.3159, Sector 47D, Chandigarh, Punjab, India ( now the fourth defendant).
2. As per the plaint, the first plaintiff is a company established and incorporated under the laws of England, the second plaintiff being its subsidiary and a company incorporated under the Indian Companies Act, the former marketing and selling its products in India through the latter.
3. The plaint described the first defendant as a private limited company incorporated in India, engaged in the business of online sales of wide range of products including men’s and women’s apparels, footwear, bags, handbags, wallets, accessories like sunglasses, etc., the other defendants being its co-founders, subscribers and Directors.
4. As per the averments in the plaint, the business of the first plaintiff was founded in 1856 by Thomas Burberry in Basingstoke, England. Over the past one and a half century, trading under “T. BURBERRY”, “BURBERRY & Sons”, BURBERRYS and now BURBERRY, the business has flourished to the extent that the plaintiffs are now one of the most renowned luxury brands in the world today.
5. The plaintiff claims to have valid registrations for the BURBERRY mark in numerous jurisdictions around the world, CS (OS) 576/2014 Page 2 of 8 including the United Kingdom, China, Australia and Indonesia. In India, the trade mark BURBERRY is registered in classes 3,9,14,18,24 and 25 under No.905509, 1102678, 1102679, 905508, 673837 and 905511, respectively. Further, the plaintiffs BURBERRY CHECK trademark is registered in various classes including classes 18, 24 and 25 under nos.905510, 1465073 and 905507 respectively and Equestrian Knight Device is also registered in India in several classes including in classes 18, 24 and 25 vide registration No.905512, 677682 and 677683. Additionally, the plaintiffs have been offering its products in India at least since 1980. Further, the BURBERRY CHECK has been used as a sign of origin since the 1920s and is a registered trademark in more than seventy countries worldwide.
6. It is the case of the plaintiff that its products are sold through a diversified network of retail, digital commerce, wholesale and licensing channels in over 70 countries including India, all its products carrying, on swing tickets, packaging, etc., the images of its mark BURBERRY, the Equestrian Knight Device and the BURBERRY CHECK, pictorially shown thus:-
"CS (OS) 576/2014 Page 3 of 8 7. According to the claim of the plaintiffs its trademark BURBERRY is well known and substantial goodwill and reputation has accrued to it on account of relentless adherence to unmatchable standards of quality and intelligent marketing strategies. The plaintiffs brand BURBERRY has been recognized as a famous brand a number of times in the annual review of Best Global Brands by Interbrand. In the 2011 edition, Burberry was ranked 95th best global brand, moving up to 82nd position in 2012, and in the 2013 edition, Bruberry was ranked at the 77th position in the best global brands worldwide. In addition, in the 2008 Leading Luxury Brands review by Interbrand, Burberry was ranked number 11 in the world.
8. It is further claimed that the plaintiffs’ products are freely available in India and have been well known to people in India for a long time. Products bearing Plaintiffs trademarks have been available in India since at least 1980. Prior to that Indians traveling abroad would have brought products under the mark BURBERRY as gifts and souvenirs for their relatives and friends while returning to India from their foreign sojourns. Hence, even prior to 1980, the plaintiffs CS (OS) 576/2014 Page 4 of 8 marks were well known because of purchase and import of such products by Indians traveling abroad, extensive advertisement in international newspapers and magazines which also enjoyed the circulation and readership in India.
9. The plaint alleged that in September, 2013 it came to light that the defendants were dishonestly selling or offering for sale counterfeit products styled and marketed to be products of the plaintiffs under its trademark BURBERRY, BURBERRY CHECK and Equestrian Knight Device as their products in the nature of men’s shirts, handbags, etc. blatantly infringing the plaintiffs intellectual property rights, posting advertisements and offering for sale such products on their website www.digaaz.com without the permission or authorization from the plaintiff and in spite of the legal notices sent on 03.12.2013 and 19.12.2013 had failed to cease and desist from such infringing activity thereby not only infringing the plaintiffs trademarks but also passing off their products as that of the plaintiffs illegally thereby gaining wrongfully.
10. On the above noted averments, the plaintiffs prayed for decree of permanent injunction against infringing or passing off besides directions for delivering up of infringing/counterfeit products/materials and damages in the sum of Rs.20 lacs in addition to costs.
11. The defendants could not be served by ordinary mode and, thus, on the request for substituted service in terms of Rule 20 of Order V of the Code of Civil Procedure, 1908 (CPC) being granted, service was effected by proclamation published in newspapers in terms of CS (OS) 576/2014 Page 5 of 8 directions and orders dated 13.02.2015 and 15.05.2015. Since in spite of such service, the defendants would not appear, they were set ex parte by order dated 21.01.2016.
12. The plaintiffs led ex parte evidence by examining Mr. Rahul Sethi (PW-1), constituted attorney of the first plaintiff, deposing on the strength of his affidavit (Ex.PW-1/A). By the said evidence, the plaintiffs’ witness proved his authorization through power of attorney (Ex.PW-1/1) and the authorization in favour of the signatory on behalf of the second plaintiff (Ex.PW-1/2). Besides proving all the averments in the plaint, the said witness also proved copies of the trademark registration certificate in favour of the plaintiff (collectively Ex.PW- 1/6) thereby proving on record that the trade mark BURBERRY is registered in classes 3,9,14,18,24 and 25 under nos.905509, 1102678, 1102679, 905508, 673837 and 905511, respectively. Further, the plaintiffs BURBERRY CHECK trademark is registered in various classes including classes 18, 24 and 25 under nos. 905510, 1465073 and 905507 respectively and Equestrian Knight Device is also registered in India in several classes including in classes 18, 24 and 25 vide registration No.905512, 677682 and 677683.
13. The witness of the plaintiffs (PW-1) also proved photographs of the impugned products sold or offered to be sold by the defendants (Ex.PW-1/7) and the screenshots (collectively Ex.PW-
to PW-1/11) taken from the defendants website www.digaaz.com, evidencing sale of the infringing counterfeit products styled as those of the plaintiffs.
14. The evidence of PW-1 has also proved that for purposes of investigation prior to filing of the suit, the plaintiffs had made a CS (OS) 576/2014 Page 6 of 8 sample purchase of the counterfeit products, its screenshot (Ex.PW- 1/11) and bill invoice (PW-1/12) evidencing the said transaction.
15. The plaintiffs’ witness further proved screenshot (Ex.PW-1/16) taken from the website of the defendants demonstrating dishonest use of the plaintiffs’ trademarks on the counterfeit products. He further proved copies of the legal notices dated 03.12.2013 (Ex.PW-1/13) and legal notice dated 19.12.2013 (Ex.PW-1/15) besides proving delivery (Ex.PW-1/14) of the former whereby the defendants had been called upon by the plaintiffs to cease and desist from such illegal activity infringing the rights of the plaintiffs in their registered trademarks.
16. Since the defendants did not appear to contest in spite of service and since the plaintiffs’ evidence has gone unrebutted, a case for grant of relief in the nature of prohibitory injunction as prayed in the suit has been made out. There is, however, no evidence brought on record to prove existence of any infringing/counterfeit material bearing the impugned marks or all blocks/dyes, stationery or any other material for delivering up which a decree deserves to be granted for its destruction. Similarly, the witness of the plaintiff was silent on the claim for damages, there being no material submitted on which the losses incurred by the plaintiffs due to the infringing activity could be assessed.
17. In above view, the suit is partly decreed with costs. The defendants, their companies, their directors, partners, proprietors, officers, servants, agents, associates and representatives or any other person acting for on their behalf are restrained permanently from:-
"CS (OS) 576/2014 Page 7 of 8 (i.) using, selling, offering for sale, marketing, trading, directly or indirectly dealing in or advertising on their websites www.digaaz.com or on other social networking websites, any products bearing or using the trademarks BURBERRY, BURBERRY CHECK and EQUESTRIAN KNIGHT DEVICE marks and/or any other trademark(s) confusingly or deceptively similar to plaintiffs BURBERRY, BURBERRY CHECK and EQUESTRIAN KNIGHT DEVICE trademarks so as to result in their infringement or dilution of their distinctive character; and (ii) from doing any other thing, as may be likely to lead to passing off of the defendants’ goods or business as and for those of the plaintiffs.
18. Decree sheet shall be drawn up accordingly. FEBRUARY21 2017 vk (R.K. GAUBA) JUDGE CS (OS) 576/2014 Page 8 of 8