La Chemise Lacoste And Anr. vs Mr. A. Samad Kapadia And Ors.
2005 Latest Caselaw 1219 Del

JUDGMENT

Anil Kumar, J.

1. This judgment shall dispose of plaintiffs' suit for permanent injunction, passing off, infringement of copyright, rendition of accounts and damages in respect of their trade mark Lacoste and/or crocodile device and/or Chemise Lacoste.

2. Plaintiffs contended that plaintiff no. 1 is a company organized under the laws of France and Mr Surinder Singh Negi, is a constituted attorney duly authorized to sign, verify and institute the plaint on behalf of plaintiff no. 1. Plaintiff no. 2 is a company incorporated under the laws of India and Mr Surinder Singh Negi is also the constituted attorney of plaintiff no. 2 and authorized to sign, verify and institute the plaint on behalf of plaintiff no. 2.

3. The pleas of the plaintiffs are that they are internationally renowned manufacturer and dealer of clothing articles including T-shirts and are proprietors in India of copyright in artistic work consisting of a device of a crocodile which was prepared by Mr. Robert George and was first published in France in the year 1927. The copyright in the said device is currently valid and subsisting in India and in other parts of the world and plaintiff no. 1 is the owner of all rights in the same. The plaintiff fare proprietor in India and have registration in `Lacoste and crocodile device' and crocodile device and both the registration are valid and subsisting. The devices of the plaintiffs are used extensively in India. The plaintiff no. 2 is a license of plaintiff no. 1. The products of the plaintiffs are manufactured to the highest and most stringent quality standards which are more astringent and strict than most of the electronic products. The color fastness of the products of the plaintiffs insisted to washing at 90-ÝC and it is also checked against Chlorine and light and to wet and dry rubbing and even to acid and alkaline perspiration.

4. The plaintiff averred about the sales of its products since 1993-1994 based on the books of accounts of plaintiff no. 2. The plaintiffs also disclosed the sales promotion figures of its products from the books of the accounts of plaintiff no. 2. The plaintiffs gave life history of its trade mark `Lacost' and `crocodile device' since early 1930. They contended that for past many decades they have been extensively advertising in several leading international publications, periodicals and other media which also have circulations in India and to which members of Indian public have access. The products of the plaintiffs are available in duty-free shops of most leading international airports around the world. According to plaintiffs in or about September 1997 the plaintiff commenced its anti counterfeiting activities in India.

5. Plaintiffs disclosed that the main source of supply of counterfeit goods are in wholesale markets in Delhi. However they received information that the fake and counterfeit `Lacoste' products were also available in the city of Surat where seven unscrupulous shops, defendants, were found to be stocking and selling fake `Lacoste' branded T-shirts. The defendants were not only using the trade mark `Lacoste' but the T-shirts being sold by them also reproduced the `crocodile' logo of the plaintiff fin totality, thereby infringing not only the trademark rights but also the copyrights of the plaintiffs. Plaintiffs purchased the fake goods in the presence of an advocate notary public and produced the original notarial reports.

6. Plaintiffs further averred that the defendants are misleading and deceiving the public and selling fake products which are highly sub standard and are thus also causing harm to the reputation of the goods of the plaintiffs. The use of trademark of theplaintiffs by the defendants is likely to dilute the distinctive character of the plaintiffs' trademark and name. It was contended that reproduction of the artistic work in the `Crocodile logo' by the defendants amount to infringement of the copyriht in the artistic work of the plaintiffs. On these averments plaintiffs have claimed a perpetual injunction restraining the defendants from using trademark Lacoste and/or Crocodile device and/or Chemise Lacoste in any manner whatsoever infringing registred trademark of plaintiffs and passing of their fake goods as the goods of the plaintiff and restraining them from producing the device of the Crocodile in any material from or in any other manner infringing the copyright of the plaintiffs in the artistic work. The plaintiffs also claimed mandatory injunction seeking directions to the defendants to hand over all goods, packaging cartons, unfinished products bearing the trademark of the plaintiffs so that they may be destroyed besides claiming rendition of accounts for ascertaining the damages caused to the plaintiffs.

7. The plaintiffs were granted interim injunction dated 29th July,1999 restraining the defendants from using trade mark `Lacoste' as well as the device `Crocodile'. The defendants no. 1, 2, 3 and 5 were proceeded ex-parte on 4th November,1999 whereas defendant no. 4 was proceeded ex-party on 25th August,2000. Defendant no. 7 was dropped as a party by plaintiff on 28th September, 2000 and defendant no. 6 was also proceeded ex-parte on 25th May, 2004

8. Thereafter plaintiff filed the evidence on affidavit by filing the affidavit of Mr S.S. Negi, constituted attorney of the plaintiffs who deposed that he is the constituted attorney of the plaintiffs and power of attorney in favor of plaintiff no. 1 was exhibited as PW-1/1 and the license agreement between the plaintiff no. 2 and plaintiff no. 1 was exhibited as PW-1/2. The plaintiffs' witness categorically deposed that defendants have conspired together in common act of piracy and counterfeiting and inringement of plaintiffs' copyrights and its registered trademark. It was deposed that since common questions of law and facts arise therefore the defendants although carrying on business separately have been imp leaded as a party in the same suit.

9. It was deposed on behalf of plaintiffs that they are internationally renowned manufacturer of and dealer of clothing articles including T-shirts. The plaintiffs proved their artistic work as PW-1/3. The certificates of trade mark were proved as Ex PW1/4 and PW 1/5.

10. The attorney of the plaintiffs deposed that the products are manufactured after maintaining and strictly adhering to the highest and most stringent quality controls. The products are manufactured at a state of the art manufacturing facility locatedat NOIDA. The plaintiffs proved the sales of `Lacoste' products on the basis of chartered accountants certificate certifying sales in India. The plaintiffs further deposed that they have spent large sums of money in promoting the sale of its products bearing the trademarks `Lacoste' and `Crocodile device'.

11. It was deposed that plaintiff commenced its anti counterfeiting activities in India some years ago. The plaintiffs initiated actions against several wholesale dealer in the markets in India who were dealing in fake products of the plaintiffs. The plaintiffs also got the information that `Lacoste' products were being sold in the city of Surat. The representatives of the plaintiff visited the city of Surat and found about seven shopkeepers, defendants, indulging in the stocking and selling counterfeit and fake T-shirts. The fake and counterfeit T-shirts were purchased in presence of a notary and notorial reports were proved by the plaintiffs as exhibits PW 1/7 to exhibits PW 1/13. The plaintiffs also produced the infringing products, T-shirts purchased from the defendants no. 1 to 7 which were exhibited as exhibit PW 1/14 to exhibits PW 1/20 respectively. The attorney of the plaintiff deposed that on an analysis of the quality of the products sold by defendants, they were found to be extremely subsandard. The quality of fabric used, the buttons, shoulder straps and the crocodile logo were all of very inferior quality. With a view to deceive the public the product was mentioned to be made in France. It was thus deposed that the strategy of the defendants is to make large but illegal profits by deceiving members of the trade and public by offering sub standard material instead of high-quality goods of the plaintiff. It was categorically stated that the use of the trademark of the plaintiffs by the defendants is likely to dilute the distinctive character of the plaintiffs trademark and name and what is distinctive is likely to be debased and eroded. The illegal activities of the defendants are thus causing irreparable loss and injury to the plaintiffs business and reputation. According to plaintiff reproduction of the artistic work in the crocodile logo by the defendants amount to infringement of the copyright in the artistic work of the plaintiffs. The plaintiffs, therefore, contended that the defendants have made themselves liable to seizure of all such material, all packaging cartons, unfinished products, plates, stones, blocks, moulds, duplicating equipment or other devices, used or intended to be used for making and printing copies of the plaintiffs trademarks and artistic works.

12. On perusal of the pleadings and evidence produced by the plaintiffs, it is apparent that pleas of the plaintiffs have remained un-rebutted. The plaintiffs have proved that they are the renowned manufacturers, dealers of clothing articles including T-shirts and they have a copyright in artistic working consisting of a device of a 'crocodile'. The plaintiffs have also proved the registration of their trade marks in respect of clothing including boot, shoes and sleepers. Registration of 'Lacoste'nd 'Crocodile device' are valid and subsisting and renewed up to 19th January, 2014. The plaintiffs have successfully established that they have the exclusive right to use these trade marks in respect of said goods for which they have registered trade marks.

13. From the pleas and the evidence led by plaintiffs, it is also established that plaintiffs have used the trade mark 'Lacoste' and the 'Crocodile device', extensively in India through its licensee, plaintiff No. 2 in respect of articles of apparel foremen, women and children. The plaintiffs have successfully established thereby the quantum of sales of its products in India on the basis of the accounts in India and the amount spent in publicity and advertisements.

14. The purchase of counterfeit or fake articles has also been successfully established by the plaintiffs from defendant Nos.1 to 6. The specific deposition of the plaintiffs that quality of products sold by defendant Nos.1 to 6 had been extremely sub-standard as well as quality of fabric used, the buttons, the shoulders stripes, the crocodile like, the reinforcement tape around the collar are of inferior quality have also remained un-rebutted.

15. In the circumstances, it is apparent that defendants are selling illegally the counterfeit and fake products of the plaintiffs and considering the entirety of circumstances, the plaintiffs have been able to make out a case for perpetual and mandatory injunction. Considering the amount spent by the plaintiffs on publicity and advertisements and the sales of plaintiffs of its products in India, its reasonable to infer that the plaintiffs shall suffer irreparable loss and injury in case defendants 1o 6 are not restrained from dealing in counterfeit and fake products.

16. Consequently, the suit of the plaintiffs for perpetual injunction is decreed and the defendants 1 to 6 are restrained from using the trade mark 'Lacoste' and/or 'Crocodile device' and/or chamise Lacoste in any manner infringing the plaintiffs registered trade marks and passing off their goods as the goods of the plaintiffs. The defendants are also restrained from reproducing the device of crocodile in any material form and from infringing the copyright of the plaintiffs in the artistic work in any maner. A decree for mandatory injunction is also passed in favor of plaintiff and against the defendants no. 1 to 6 directing them to handover the counterfeit and fake goods, packaging material, cartons, unfinished products bearing the trade mark 'Lacoste'and/or chemise Lacoste and/or crocodile device to the plaintiffs for their destruction.

17A. preliminary decree for rendition of account is also passed in favor of plaintiffs and against the defendants 1 to 6 to render their accounts for a period of three years prior to the institution of the suit to the plaintiffs in order to ascertain the damages suffered by plaintiffs. Shri Kartikay Anand Advocate, 201 Lawyer' Chamber, Delhi High Court, New Delhi is appointed as a Local Commissioner to go into accounts and submit his report within a period of three months. The fee of the Local Commisioner shall be Rs. 15,000/- payable by plaintiffs. Cost of the suit is also awarded to the plaintiff against the defendants and the suit is decreed in terms hereof.

18. The decree sheet be drawn in terms hereof.