The Timber Land Co. vs A. Vijay & Ors.
2010 Latest Caselaw 5314 Del

        THE HIGH COURT OF DELHI AT NEW DELHI
%                    Judgment Reserved on: 12.11.2010
                     Judgment Pronounced on: 23.11.2010

+           CS(OS) No. 1516/2005


THE TIMBER LAND CO.                             .....Plaintiff


                           - versus -


A. VIJAY & ORS.                                .....Defendants

Advocates who appeared in this case:
For the Plaintiff: Ms Aparajith A. Rao, Adv.
For the Defendant: None.

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1.

Whether Reporters of local papers may be allowed to see the judgment? No

2. To be referred to the Reporter or not? No

3. Whether the judgment should be reported No in Digest?

V.K. JAIN, J

1. This is a suit for permanent injunction, damages,

rendition of accounts and delivery of the infringing material.

The plaintiff is a company incorporated in U.S.A. and is

engaged in the manufacturing and marketing of branded

apparel and footwear under the trademark TIMBERLAND &

TREE DEVICE. It is alleged in the plaint that the name

TIMBERLAND was born in the year 1973 as the brand name

for the plaintiff's original waterproof leather boots. In 1978-

79, the plaintiff added casual and boat shoes to its product

line and in the year 1980, it extended into lifestyle brand by

venturing into clothing and women's footwear. The line of

products of the plaintiff-company now includes apparel,

watches, socks, backpacks, kid's footwear and other gear

and according to the plaintiff, the name/mark

TIMBERLAND has acquired a substantial goodwill and

reputation. The trademark TIMBERLAND is registered in

123 countries, including India in Class 25.

2. In India, the plaintiff-company owns the mark

TIMBERLAND AND TREE DESIGN in clothing girl's and

women's wear, boy's and men's wear, sportswear and

evening wear, dresses blouses, tops, shirts, sweatshirts, T

Shirts, skirts, shorts, pants, jogging pants, trousers,

sweaters, suits, coats, topcoats, jackets, vests, smocks, bath

robes, beach clothing, bathing suits, pyjamas,

underclothing, socks, stocking, handkerchief, shawls,

neckties, hosiery, tights, gloves, mittens, belts, suspenders,

footwear, soles for footwear moccasins, boots sport boots,

climbing boots, hiking boots vide registration No. 493266

and 493316 respectively both dated 22.06.1988. The

plaintiff incurs substantial expenditure on advertisement

and publicity of its products and the advertising expenses

incurred in the years 2001, 2002 and 2003 come to US $

41,417,000, 39,973,000 and 44,661,000 respectively.

3. It has been alleged that the plaintiff received

information that defendant No. 5 M/s Sandler Wear

International was selling unauthorized TIMBERLAND

branded merchandised in Singapore. The plaintiff

appointed a professional investigating agency to investigate

the matter. It was reported to the plaintiff that defendant

No.1 is trading under the name and style of defendant No.2

M/s Annai Exims. Defendant N.3 Annai Exims India Pvt.

Ltd. is a company in which defendant No.1 Mr A. Vijay is a

Director. Defendant No.4 Mr K. Ramaselvam is the

President of defendant No.5 M/s Sandler Wear

International, whereas defendant No.6 Mr N. Narayana

Moorty is the Managing Director of defendant No.7 Shuttle

Weaves International. Defendant No.8 Shuttle Weaves

Colour Private Limited is a company in which defendant

No.6 Mr N. Narayaana Moorty is a Director. Defendant Nos.

1 to 3 obtains orders in favour of defendant Nos. 4 to 7

which, in turn, contracts out production orders to

defendant Nos. 1 and 2. The defendants, according to the

plaintiffs, thus, are manufacturers, suppliers and exporters

of garments under plaintiff's trademark TIMBERLAND and

TREE DESIGN and have thereby infringed the registered

trademark of the plaintiffs. It has also been alleged that by

use of false markings and misrepresentation which is

inherent in the use of counterfeit labels and marks, the

defendants have passed off their goods as those of the

plaintiff and on account of inferior quality of their products,

the reputation of the plaintiff which has already suffered a

lot will continue to suffer irreparable damage. The plaintiff

has sought an injunction against manufacturing, selling,

offering for sale or supply, advertisement of goods by the

defendants under the trademark TIMBERLAND and/or

TREE DEVICE or any mark confusingly similar to these

similar marks. They have also sought delivery up of all

goods, labels, material, etc. bearing the mark TIMBERLAND

and TREE DEVICE alognwith negatives, dies, blocks, etc.

wherein the said mark/name appears for the purpose of

destruction by the representative of the plaintiff. It has also

sought damages the amount of Rs 20,01,000/- besides

rendition of accounts of profits, illegally earned by them.

4. The defendants 4 to 8 were proceeded ex parte vide

order dated November 28, 2007. The plaintiff compromised

with defendants 1 to 3 during pendency of the suit. Under

the settlement, they undertook not to use the trademark

TIMBERLAND or any other mark/name/trading style

containing the word TIMBERLAND. They also agreed for

destruction of all the packaging material stationery, etc.

bearing the mark TIMBERLAND.

5. The plaintiff has filed the affidavit of PW1 Colonel

J.K. Sharma by way of ex parte evidence. In his affidavit,

Colonel J.K. Sharma who is the constituted attorney of the

plaintiff has supported, on oath, the case set up in the

plaint. The certificate of registration in respect of the

trademark TIMBERLAND and TREE DESIGN are Ex.PW-1/5

and PW-1/6. According to the witness by virtue of long

standing use and extensive publicity, these trademarks

have acquired substantial goodwill and reputation in about

137 countries. According to him, the products of the

plaintiff are sold in all major markets, including U.S.A.,

U.K., Italy, France, Germany, Spain, Canada, Japan,

Singapore, Hong Kong, Malaysia, Africa, Europe, North

America, Central America, South America, Australia and

New Zealand. According to him, in the year 2001 to 2007,

the plaintiff incurred expenditure of US$ 41,417,000,

39,973,000, 44,661,000, 42,400,000, 36,600,000,

27,801,000, 28,929,000. He further stated that the

defendants have adopted identical trademarks

TIMBERLAND and TREE DEVICE for identical products,

thereby falsely implying to the customers that these are the

products of the plaintiff. The photographs alongwith the

negative in respect of the products of the defendants are

Ex.PW-1/11 A-O. He has also stated that as a part of the

settlement of the plaintiff with defendants 1 to 3, they gave

a letter Ex. PW-1/12 stating therein that the merchandise

bearing the mark TIMBERLAND was supplied to defendant

Nos. 2 and 3 by defendant No.7.

6. This witness also stated that on one point of time,

the plaintiff had entered into a licence agreement with

defendant No.5 which was signed by defendant No.4 as its

President. This agreement came to an end on 31 st October,

1999. The copy of the agreement is Ex.PW-1/15. According

to him even during the subsistence of the agreement there

was an embargo on defendant No.5 producing excess goods

or overrun.

7. Two Local Commissioners were appointed by this

Court vide order dated 28th October, 2005 to visit the

premises of defendants and prepare an inventory of the

spurious brand apparel bearing the trademark

TIMBERLAND/TREE DESIGN lying there. A perusal of the

report of one Local Commissioner would show that when he

visited the premises of defendant No.7 Shuttle Weaves

International at 8-Kanniannin Koli Street, Shenoy Nagar,

Chennai and, the Head Office of defendant No.6 Shuttle

Weaves International and defendant No.5 M/s Sandler Wear

International at 15 Gajapathy Street, Shennoy Nagar,

Chennai, no spurious goods/article were found at 8-

Kanniannin Koli Street, despite a thorough search. When

he reached the second destination at 15 Gajapathy Street,

Shennoy Nagar, Chennai, which was the Head Office of

defendant No.5 M/s Sandler Wear International and

defendant No.7 Shuttle Weave International, he found one

shirt, containing the infringing the trademark TIMBERLAND

of 'L' size. No other infringing spurious goods/article was

found by him in that premises.

8. Another Local Commissioner Mr B.R. Ahuja

appointed by this Court vide order dated 28 th October, 2005

visited the premises of defendant No.5 M/s Sandler Wear

International and defendant No.7 Shuttle Weave

International at 25 School Street, Mangadu. He found

several sewing machines installed there and fabrication

activity going on by several operators. On the ground floor,

washing machines for garments were found installed and

washing activity was going on there. Several large size

cardboard boxes were found stacked on the ground floor

and on checking, those boxes were found to contain duly

wrapped shirts bearing the trademark TIMBERLAND and

TREE DEVICE. A total stock of about 4000 shirts bearing

the trademark TIMBERLAND and TREE DEVICE was found

there. These goods were handed over on superdari to one

Maru Thappan, who was present on the spot. A perusal of

the superdarinama shows he was at that time was working

as Manager with defendant No.5 M/s Sandler Wear

International. It thus stands established from the report of

Shri B.R. Ahuja, Local Commissioner that defendant No.5

M/s Sandler Wear International has been manufacturing

apparel bearing plaintiff's registered trademark

TIMBERLAND. The shirts bearing the trademark

TIMBERLAND were found on 5 th November, 2005, many

years after the agreement Ex.PW-1/5 between the plaintiff

and defendant No.5 expired on 31st October, 1999.

Defendant No.5 has not come forward to the Court to

explain why and how as many as 4000 shirts bearing the

mark TIMBERLAND were found in its premises. A perusal

of clause 3 of the agreement PW-1/15 shows that defendant

No.5 could not have produced excess goods or overruns.

Therefore, it cannot be accepted that the shirts found in the

premises of defendant No.5 on 05th November, 2005 were

surplused unsold stock.

9. The plaintiff is a large company and its products

are sold in more than 100 countries, including India. Its

trademark TIMBERLAND AND TREE DEVICE are also

registered in India vide trademark Registration No. 493266

and 493316 in respect of various products, including shirts

and other men's wear. The defendant have no right in law

either to manufacture, distribute or sell any readymade

clothes or other product for which the trademark

TIMBERLAND and TREE DEVICE are registered in India,

without a licence from the plaintiff-company. The use of the

trademark TIMBERLAND and/or TREE DEVICE by the

defendants is likely to induce the purchaser of these articles

to believe that these products were manufactured by or

under licence from the plaintiff company. If the quality of

the product manufactured and/or sold by defendant No.5 is

not as good as the quality of the genuine products of the

plaintiff-company, that may seriously affect the reputation

and credibility of the plaintiff-company by inducing the

purchaser of the spurious products to believe that the

quality of the products of the plaintiff has gone down and,

therefore, these products are no more worth being

purchased by them. Thus, besides causing financial loss to

the plaintiff on account of loss of the profit which it would

have earned by selling genuine products bearing the mark

TIMBERLAND and/or TREE DEVICE, the manufacture and

sale of merchandise bearing registered trademarks of the

plaintiff-company is also likely to deceive the purchaser of

these articles who will pay the price which the genuine

product of the plaintiff-company commands in the mark,

while they will be saddled with spurious products which

may not as good in quality as the genuine product of the

plaintiff company. Therefore, the plaintiff is entitled to

injunction sought by it against those who are engaged in

manufacturing, sale, etc. of such spurious products. The

manufacture of such goods by defendant No.5 is evident

from the report of Shri B.R. Ahuja, Local Commissioner and

the superdarinama executed by its manager. The letter

which defendant Nos. 1 to 3 handed over to the plaintiff at

the time of settlement with them shows involvement of

defendant No.7 in sale and distribution of such goods.

Moreover, the premises where spurious products were found

by the Local Commissioner was also the premises of

defendant No.7. Since defendant No.4 is alleged to be

trading under the name and style of Sandler Wear

International the plaintiff is also entitled to similar

injunction against him.

10. However, as far as defendant Nos. 6 and 8 are

concerned, the plaintiff has failed to prove any cause of

action against them. No product bearing the registered

trademark of the plaintiff-company has been found in the

premises of defendant No.8 Shuttle Weaves Colour Private

Limited. Since defendant No.6 is only a Director of

defendant No.8, there is no need for an injunction

individually against him and injunction against the

company will serve the purpose. I, therefore, hold that the

plaintiff is not entitled to any injunction against defendant

Nos. 6 and 8. For the reason given in the preceding

paragraphs, defendant Nos. 4, 5 and 7 are hereby restrained

from manufacturing, selling, supply, or advertising

garments or any type and cognate goods under the

trademark TIMBERLAND or TREE DEVICE or any other

mark deceptive similar to these registered trademarks of the

plaintiff-company. They are also directed to deliver all

goods, labels and other material, including negatives, dies,

blocks, stationery, letterheads, etc., which bear the

trademark TIMBERLAND and TREE DEVICE and is in their

possession for the purpose of destruction by the plaintiff-

company. No evidence has been led by the plaintiff to prove

any damage to it on account of unauthorized use of its

trademarks and no arguments were advanced by the

learned counsel for the plaintiff on relief for payment of

damages. The relief for rendition of accounts was also not

pressed during arguments. Hence, the relief for payment of

damages and rendition of accounts are not granted to the

plaintiff-company. No order as to costs.

Decree sheet be prepared accordingly.

(V.K. JAIN) JUDGE NOVEMBER 23, 2010 BG