Swarovski Ag & Anr vs Royal Images Catalogue Company ...
2014 Latest Caselaw 4557 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                           Order delivered on: 17th September, 2014

+                           CS(OS) 50/2009

       SWAROVSKI AG & ANR                              ..... Plaintiffs
                   Through          Ms.Payal Chawla, Adv. with
                                    Ms.Snigdha Dash, Adv.

                         versus

       ROYAL IMAGES CATALOGUE COMPANY PVT. LTD. & ORS
                                               ..... Defendants
                    Through Defendant No.3 is ex-parte.

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (Oral)

I.A. No.4197/2014 (u/O XXIII R 3 CPC) & CS(OS) 50/2009

1. The plaintiffs filed the suit for permanent injunction and damages and infringement of trade mark SWAROVSKI against the defendants. Originally the suit was filed against three defendants. The defendant No.4 was impleaded later on during the pendency of the suit. The suit against defendants No.1 and 2 was decreed on 9th August, 2010. The defendant No.3 i.e. M/s Venus Industries is already ex-parte.

2. The above mentioned joint application is filed by the plaintiffs and defendant No.4 under Order XXIII Rule 3 CPC for recording the terms and conditions of the settlement. It is stated in the application

that during the pendency of the suit proceedings, they have arrived at a settlement. The terms and conditions of the settlement are mentioned in para 2 of the application which is signed by the plaintiffs and defendant No.4. The application is also supported by the affidavit of defendant No.4 and affidavit of Mrs. Sukanya Dutta Roy, authorized representative of the plaintiffs, which was filed subsequently after filing of the application. Hence, the present application is allowed. Both the parties shall be bound by the terms and conditions of the settlement mentioned in the application. The decree is passed in terms of prayer clause A(i), A(ii) and B(i) of the plaint. The other reliefs are not pressed by the plaintiffs. Decree be drawn accordingly.

3. The application is disposed of.

CS(OS) 50/2009

1. The plaintiff No.1 is a company existing under the laws of Principality of Liechtenstein who is the owner of the intellectual property in the trade mark "SWAROVSKI" and has inter alia licensed its trade mark to plaintiff No.2.

2. Brief facts of the case are that the plaintiff No.1 is the world's leading manufacturer of cut crystal, crystal jewellery stones and jewellery, textile fashion applications and accessories, interior design, lighting and lighting components, crystal artifacts including figurines and collectibles, crystal accessories. Plaintiff No.1 commenced its business over a century ago and has since then been using SWAROVSKI as its trade mark and as a dominant part of its trade name. Plaintiff No.1 has production facilities in over 16 countries,

including India and has a distribution network in over 42 countries worldwide. Plaintiff No.1 also operates more than 800 exclusive SWAROVSKI retail shops and more than 500 independent retail shops worldwide.

3. Plaintiff No.1 commenced its business operations in India under its trade mark "SWAROVSKI" through plaintiff No.2 since the year 1996 through the launch of its production unit and in the year 2000, a trading unit was launched. Since then the said trade mark has been used uninterruptedly in India by the plaintiffs. The plaintiffs at the relevant time had over thirteen exclusive SWAROVSKI outlets and nine shops stores in India.

4. The plaintiffs in addition to the extensive use of the trade mark "SWAROVSKI" worldwide have also undertaken extensive publicity campaign worldwide including India to promote its trade mark. The plaintiffs have also extensively advertised its trade mark "SWAROVSKI" in all media including the print and electronic media. The plaintiffs organize and sponsor events, promotional campaigns, exhibitions and seminars in which its trade mark "SWAROVSKI" is prominently visible. With the growing popularity of the trade mark "SWAROVSKI", plaintiff No.1 launched a website www.swarovski.com.

5. Plaintiff No.1's trade mark "SWAROVSKI" has been registered in more than 90 countries worldwide and is a registered proprietor of the trade mark "SWAROVSKI" in India, details of which are mentioned in para 8 of the plaint.

6. The promotional expenses incurred by the plaintiff No. 1 for years 2003-2007 and upto September, 2008 are given in Para 9 of the plaint. The turnover of plaintiff No.1's trade mark "SWAROVSKI" throughout the world and in India for the years 2003-2007 are given in the para 10 of the plaint.

7. It is the case of the plaintiffs that it came to the knowledge of the plaintiffs that the defendants were advertising on a catalogue, cutlery using plaintiff No.1's well known trade mark "SWAROVSKI". The said catalogues are being printed and circulated by the defendant No.1 advertising the product of defendant No.3 and are being distributed by defendant No.2 to its members as loyalty points.

8. It is stated by the plaintiffs that the use of the aforesaid trade mark by the defendants which is identical/deceptively similar to the plaintiff No.1's famous trade mark "SWAROVSKI" had been deliberately chosen in an effort to ride upon the goodwill and reputation of the latter in collusion with each other along with defendant no.3.

9. The suit against defendants No. 1, 2 and 4 has already been decreed in favour of the plaintiff on the basis of the settlement arrived at between them.

10. As far as defendant No.3 is concerned, the said defendant has already been proceeded ex-parte vide order dated 8th January, 2014. In ex-parte evidence against the said defendant, the plaintiffs have already filed affidavit of Mrs.Sukanya Dutta Roy as evidence who has reiterated the averments made in the plaint and also proved the documents placed on record which have been exhibited in Court.

11. Having heard the learned counsel for the plaintiffs and having gone through the contents of the affidavit coupled with the documents placed on record, this Court is of the view that the plaintiffs have been able to prove its case against defendant No.3 who along with the other defendants was infringing the plaintiff's trade mark SWAROVSKI. The suit against the defendant No.3 is also decreed in favour of the plaintiffs. The plaintiffs are entitled for cost. Counsel's fee fixed at Rs.30,000/- tentatively and damages to the tune of Rs.1 lac are granted to the plaintiffs against the defendant No.3. Decree be drawn accordingly.

(MANMOHAN SINGH) JUDGE SEPTEMBER 17, 2014