HC rules in favour of Louis Vuittion Malletier; says Defendants have infringed and passed off the trademarks of Louis Vuitton with a view of riding on its goodwill and reputation.
In the present suit, LOUIS VUITTON MALLETIER (Plaintiff) has filed a suit for permanent injunction restraining Iqbal Singh and Ors (Defendants) from infringement of its trademark, passing off, dilution, etc. of its registered marks. Plaintiff avers that it has been using its name “Louis Vuitton” and the initials of Louis Vuitton, namely “LV”, represented in an intertwined manner as a trademark since a long time. Furthermore plaintiff avers that it has been using “Toile Monogram” and “Murukami Monogram Multicolore” over which the plaintiff owns the copyright. The grievance of the Plaintiff is that the Defendants are dealing in infringing and counterfeit products bearing Plaintiff’s registered trademarks.
HC frames 8 issues and addresses each issue as follows –
- Whether the Plaintiff is the registered proprietor of the trademarks LOUIS VUITTON, the LV Logo and the Toile Monogram?
HC observes that evidence provided by the Plaintiff in the form of examination of its witness – Sales Manager, has proved that the Plaintiff is the registered owner of the Trademark “LOUIS VUITTON”, the “LV” logo and the “Toile Monogram” pattern and decides the first issue in favour of the Plaintiff.
- Whether the Defendants have infringed the registered trademarks of the Plaintiffs?
HC observes that the documents placed on record and the statement of the witness, elucidate that the Plaintiff is the registered proprietor of the aforementioned trademarks. HC further observes that on the issue of infringement, the said witness has deposed that the Defendants were involved in dealing with counterfeit products bearing the registered mark of the Plaintiff whilst also referring to the investigation carried out by the independent investigator Mr. D.C. Sharma. Further, HC finds that the reports of the Local Commissioner’s, the investigation report relied upon by the Plaintiff of the Defendant’s premises and the uncontroverted testimony of Plaintiff’s witness, clearly establishes that the Defendants were indeed involved in dealing with the counterfeit products and infringing the Plaintiff’s trademarks. Thus, HC holds that the Defendants have infringed the trademark of the Plaintiff.
- Whether the use of the trade marks LOUIS VUITTON, the LV logo, the Toile Monogram and/or any other deceptively similar mark by the Defendants amounts to passing off or amounts to unfair trade practice?
HC observes that HC and SC have accepted the following 5 characteristics as elucidated by Lord Diplock in Erven Warnink by and Others Vs. J. Townend & Sons (Hull) Ltd. and Others,  2 All ER 927
“(1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or in a quiatimet action will probably do so”.
The 5 essential characteristics mentioned above was also accepted in the matters of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1, Flamagas, SA vs. Irfan Ahmed and Ors and Baker Hughes Limited and Ors. vs. Hiroo Khushalani 74 (1998) DLT 715. In addition, HC after analyzing the above decisions holds that it is apparent that a plaintiff in an action for passing off must establish the following elements:
- The plaintiff has acquired a reputation or goodwill in his goods, name or mark;
- A misrepresentation, whether intentional or unintentional, which proceeds from the defendant by the use of the name or mark of the plaintiff or by any other method or means and which leads or is likely to lead the purchaser into believing that the goods or services offered by the defendant are the goods and services of the plaintiff, or that the goods and services offered by the defendant are the result of its association with the plaintiff;
- The plaintiff has suffered or is likely to suffer damage due to the belief engendered by the defendant’s representation.”
HC further observes that the position in law, and the evidence brought on record by the Plaintiff in the nature of the oral testimony of the witness- Mr. Nikhil Radhakrishnan, the investigation of the independent investigator and the reports of the Local Commissioners evidences that the Defendants have adopted and used the registered trademark of the Plaintiff in relation to their goods with an intention to ride off the reputation and good will enjoyed by the Plaintiff and such a usage would lead to loss of revenue for the Plaintiff and also affect the reputation of the Plaintiff. Thus, HC finds that the adoption of the registered mark of the Plaintiff by the Defendants is dishonest and there exists no plausible explanation by the Defendants to have adopted the said trademark and holds that Defendants have committed the tort of passing off.
- Whether the Plaintiff’s trademarks LOUIS VUITTON, the LV logo, the Toile Monogram and the Damier Pattern are deemed well known and recognized as such?
HC observes that the witness of the Plaintiff has deposed exhibiting erstwhile orders passed by HC wherein the Plaintiff’s registered trademark has been recognized as well known trademark and held –
“The sale figures, the trans-border reputation of the plaintiff and also taking into consideration that the brand of the plaintiff was established as far back as in the year 1854 and thereafter the brand has been successful all over the world, it leaves no room for doubt that the brand of the plaintiff (LOUIS VUITTON) can be declared as a well known brand in terms of Section 11(6) of the Trademarks Act, 1999.”
HC find that Plaintiff has established that it’s trademark “LOUIS VUITTON” trademark, the “LV” logo and the “Toile Monogram” pattern are well known and recognized and decides issue in favour of Plaintiff.
- Whether the present suit is liable to be dismissed for want of cause of action?
- Whether the Plaintiff is guilty of suppression of material facts? &
- Whether the Defendant’s adoption and use of the mark LOUIS VUITTON is bonafide?
HC decides the three issues together and observes that the Defendants are found to be guilty of infringing the Plaintiff’s trademark and dealing with counterfeit products. HC states that it cannot be said that the suit is without cause of action and there is also no basis for the Defendants to suggest that they are guilty of suppression of material facts. HC finds that the use of the Plaintiff’s trademark by the Defendant’s is certainly not bona fide and is being done only to cause confusion and deception in the mind of the general public and the consumers. HC states that it is apparent that the intent of the Defendants is to dilute the good will and reputation of the Plaintiff’s well known trademark. HC thus decides the issues in favour of the Plaintiff as well.
- Relief, costs, damages if any?
HC observes that although the Plaintiff may be correct in submitting that there may not be any precise calculation for estimation of the profits on account of illegal activities such as those practiced by the Defendants and also observes that the Plaintiff has not led any evidence with respect to the quantum of damages suffered by the Plaintiff. HC revisits the law relating to award of punitive damages as discussed elaborately in Hindustan Unilever Limited Vs. Reckitt Benckiser India Limited, 2014 (57) PTC 495 [Del][DB], Super Cassettes Industries Private Limited v. HRCN Cable Network, CS(COMM) 48/2015 and Flamagas S.A and Ors v. Ojas B. Shah CS (COMM) 99/2017. HC states that the reliance place by the Plaintiff on Whatman International Limited v. P. Mehta & Ors reported in 257 (2019) DLT 472 is misplaced as it is distinguishable from the present case. HC concludes that the flagrant infringing activities of the Defendants have impinged on the Plaintiff’s right and awards damages to the tune of Rs. 3,50,000/- (three lakh fifty thousand only) in favour of the Plaintiff .
HC passes and order making the interim order dated 2nd December 2011 against the Defendants absolute.