Delhi High Court
Louis Vuitton vs Gaurav Bhatia & Ors on 23 May, 2017
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Decided on: 23.05.2017
+ CS(COMM) 89/2017 and IA Nos. 13470/2014 & 21815/2014
LOUIS VUITTON ..... Plaintiff
Through: Mr Pravin Anand, Mr Dhruv Anand,
Ms. Udita Patro and Mr Shamim
Nooreyezdan, Advs.
versus
GAURAV BHATIA & ORS ..... Defendants
Through: Defendants are ex parte.
CORAM:
HON'BLE MS. JUSTICE DEEPA SHARMA
JUDGMENT
1. The present suit has been filed by the plaintiff seeking permanent
injunction against the defendants, restraining them from infringing its
trademark, copyright and also from passing off the goods of the plaintiff as
that of theirs and for rendition of accounts and damages.
2. The case of the plaintiff in brief is that it is registered company
existing under the laws of France and having its registered office at 2, rues
du Pont-Neuf, 75001- Paris, France. Col. J.K. Sharma (Retired) is the
authorized person representing the plaintiff under a Power of Attorney. It is
submitted that the plaintiff-company was founded by Mr Louis Vuitton and
CS(COMM) No.89/2017 Page 1
that it has a reputation of producing lifestyle goods having a distinctive
design and exclusive craftsmanship which looks elegant and high style.
They are specialized in the production and distribution of higher quality of
luggage, hand bags, travel and fashion accessories for men and women,
including ready to wear, shoes and jewellery. They maintain strict quality,
control and have exclusive retail network. Their distribution is through a
limited network of more than 460 exclusive stores located in selected cities
upon the work. They only sell their products through these exclusive stores
and outlets and their goods are available only at retain prices fixed by the
plaintiff. The plaintiff opened its first exclusive store in India in 2003 at
Oberoi Hotel in New Delhi and now they have stores one each in New
Delhi, Bangalore and Chennai and two in Mumbai. These are the only 5
places where they sell their products. The plaintiffs spent a huge sum in
advertisement of their products in India and their product has widespread
recognition in India. Their net sale in India during the period 2007-2010 was
approximately Rs. 213 crores. Their brand name LOUIS VUITTON was
ranked No.17 by survey conducted in Interbrand in 2012 and is considered
top fashion design. It is also a trademark and its initial in an intertwined
manner is also a trademark since 1854 which appears on number of its
CS(COMM) No.89/2017 Page 2
products and is a signature symbol of the plaintiff. It also uses a canvas
design with a flower pattern and intertwined initials of Louis Vuitton (LV)
and this pattern is emblematic symbol of the plaintiff. The design is known
as "Toile Monogram" and it is a registered trademark of the plaintiff. It
introduced 33 different colours called the "Murakami Monogram
Multicolour as variation to "Toile Monogram" and enjoys copyright over the
said pattern which is an artistic work and is registered under No. VAI-250-
120 with the Copyright Office of the United States of America. Its
registration numbers in India in classes 3,14, 18 and 25 are 441451, 448229,
441452, 448230, 448231, 441453, 448233, 448235, 448234 and 861145.
3. It is submitted that defendants 1, 2 and 3 are Directors of defendant
No.4 which is a trading company and operates trading under the name of
Digaaz e-commerce Pvt. Ltd. which operates an e-commerce website
www.digaaz.com on which it offers for sale lifestyle and fashion products. It
is found that the defendant is offering for sale and supplying counterfeit
products bearing several registered trademarks of the plaintiff on this
website. The domain name www.digaaz.com is registered in the name of
defendant No.2 and, therefore, it is directly under its control. It is submitted
that the plaintiffs came to know on 23.05.2013 of the infringement of its
CS(COMM) No.89/2017 Page 3
trademark by the defendants and also they discovered that the defendants
were indulging into counterfeit activities and supplying counterfeit goods of
plaintiff. The plaintiff found that the Registrar of the domain name
www.digaaz.com was NAME.COM, INC., located at 2500, East Second
Avenue, Second Floor, Denver, Colorado 80206, USA and the Internet
Service Provider (ISP) hosting the infringing website parked onthe said
domain name was Pioneer Elabs Limited, located at Plot No. 16, APIIC.
Software Units Layout, Madhapur, Hyderabad 500 081. The plaintiff
thereafter notified the said ISP by electronic mail dated 25.07.2013 the fact
that the website www.digaaz.com was offering for sale and supplying
counterfeit products of the plaintiff against online orders and requested them
to remove the said website. It also sent a reminder on 06.08.2013. The said
ISP, however, has not replied the notices of the plaintiff. The plaintiff learnt
that the defendant has changed the ISP in October, 2013 and now another
ISP, Limestone Networks, located in Dallas, TX 75202, USA is hosting the
defendant‟s website. The change of the ISP by defendant is an indication of
the mala fide intention of the defendant to continue infringing the trademark
of the plaintiff negatively by indulging into counterfeiting activities. It is
also submitted that the act of the defendant offering the counterfeit products
CS(COMM) No.89/2017 Page 4
of the plaintiff which are identical to the product of the plaintiff amounts to
infringement of its trademark. It is further submitted that the defendants
were representing to the public on their website that the goods they are
supplying were 100% authentic while at the same time they are supplying
counterfeit products. The defendants are pricing the goods between
Rs.12,000/- to 59,000/- and are also offering discounts up to 80%. The
supply by the defendant of the counterfeit products of the plaintiff bound to
affect the goodwill of the plaintiff negatively and is bound to cause immense
and irreparable harm in reputation. The act of the defendant is also causing
loss of its business and he is also playing with the trust of the people which
they have in the products of the plaintiff. It is submitted that this Court has
the jurisdiction to entertain the present suit as the defendant‟s website is
active in Delhi as well and it is also targeting Delhi‟s customers and selling
articles in Delhi as well. It is further submitted that this Court has the
jurisdiction under Section 134(2) of the Trade Marks Act as well since the
plaintiff is a registered trademark and it is carrying on its business in Delhi
through its exclusive boutique at the Emporio Mall, DLF Emporio,Vasant
Kunj. On these facts, it is prayed that the defendants, their partners, officers,
servants, agents, distributors, stockists and representatives be restrained
CS(COMM) No.89/2017 Page 5
from manufacturing, selling and offering for sale, advertising, directly or
indirectly dealing in wallets, handbags, suitcases, luggage, purses, belts,
footwear, jewellery or any other goods bearing the trademark "Louis
Vuitton" or logo „ ‟ or the "Toile Monogram" pattern. It is also prayed
that the domain name of the defendant be suspended and ISP hosting the
impugned website of the defendant be directed to remove the said website. It
is also prayed that the defendant be directed to render the accounts of the
profit earned by them while indulging into the activities and supplying
counterfeit products.
4. The defendants were duly served. They put in appearance and filed
their written statement and also participated in the admission/denial of
documents. The matter was also referred at the request of the parties to
Delhi High Court Mediation and Conciliation Centre. Learned counsel for
the plaintiff brought to the notice of the Court that the defendant did not
appear in the Mediation Centre on all the four dates fixed by the learned
Mediator. The defendant thereafter stopped attending the Court‟s
proceedings. The plaintiff led their evidences and the witnesses of the
plaintiff were not cross-examined. Consequently, they were proceeded ex
parte.
CS(COMM) No.89/2017 Page 6
5. I have heard the arguments and perused the relevant record. The
plaintiffs have duly proved on record that Col. J.K. Sharma (Retired) holds a
Power of Attorney. The Power of Attorney is proved as Ex.PW-1/1. The
plaintiff has proved that they are the registered owner of the trademarks in
class 3, 14, 18 and 25 vide documents exhibited as Ex.PW-1/9 to Ex.PW-
1/17. The plaintiff‟s company has also proved on record that the defendant is
dealing with counterfeit products not only of plaintiff‟s company, but of
other luxury brand such as Montblanc, Hermes, Cartier, Burberry, etc. and
are offering these counterfeit products for sale on their website. The
documents are collectively exhibited as Ex.PW-1/32 (colly). The plaintiffs
have also proved on record their investigator‟s affidavit as Ex.PW-1/31
(colly) which shows that it came to know about the infringement of their
trademark by defendant only through investigator. The minutes of the
meeting of the Board of Director are proved as Ex.PW-1/2 and the
certificate of registration of the plaintiff company is prove as Ex.PW-1/3.
Vide documents Ex.PW-1/5 (Colly), the plaintiff‟s witness has proved that
the plaintiff specializes in the production and distribution of high quality
luggage, handbags, travel and fashion accessories, men's and women's ready
to-wear, shoes and jewellery under the brand name „Louis Vuitton‟ the logo
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„ ‟ and the 'Toile Monogram' pattern since the year 1854. The extract of
the plaintiff website is also proved on record as Ex.PW-1/22 (colly), Ex.PW-
l/24(colly), Ex.PW-1/27, Ex.PW-1/28, Ex.PW-1/29 and Ex.PW-l/33(colly)
showing that public identifies plaintiff‟s products from its trade dress which
includes logo „ ‟ compromising of „Toile Monogram‟. The Article of
Association of defendant-company is exhibited as Ex.PW-1/23. The print
out of defendant‟s website www.digaaz.com displaying counterfeit product
of plaintiff‟s trademark is proved as PW-1/29 (colly). The print out of the
complaints received from the consumer regarding the products supplied by
the defendant are exhibited as Ex.PW-1/33 (colly). The copy of the First
Information Report (FIR) registered against the defendants is exhibited as
Ex.PW-1/35. The seizure memo indicating the volume of counterfeit
products recovered from the defendant's premises is exhibited as Ex.PW-
1/36. Some other complaints is also proved as Ex.PW-1/38 and Ex.PW-1/39
(Colly). A complaint by one of the consumers against the defendant on its
website was registered by the cyber cell of the Chandigarh Police vide FIR
No. 397/2014 under Sections 406/420 IPC and 66 of IT ACT PF, PS-39,
Chandigarh as Ex.PW-1/35. Documents showing that defendants No. 1 and
2 were arrested by the Cyber Cell and remained in judicial custody for 14
CS(COMM) No.89/2017 Page 8
days is also proved on record as Ex.PW-2/1 to Ex.PW-2/4 (colly) by the
Sub-Inspector of Cyber Crime Investigation Cell.
6. I have heard the arguments and perused the relevant record. From the
documents placed on record, it is apparent that the suit has been filed by a
duly authorized person. Various documents showing the registration of the
trademark in favour of the plaintiff proves that the plaintiff is the registered
owner of the trademark Louis Vuitton and logo „ ‟ and "Toile Monogram"
pattern. The documents on record also conclusively show that the defendants
1 and 2 have been indulging into supply of counterfeit products of the
plaintiff and for that purpose, two FIRs have already been registered. The
fact that they were arrested and remained in judicial custody clearly proves
that the defendants have infringed the trademark of the plaintiff and also the
copyright which vest in the plaintiff and is also indulging into the business
of passing off the counterfeit goods as that of the plaintiffs. The defendants
have also claimed the damages and has relied on the findings in the case
Microsoft Corporation vs. Yogesh Papat 2005 (30) PTC 245 (Del) and
Ardath Tobacco Company & Ors. v. Munna Bhai, 2009(39) PTC 208
(Del).
CS(COMM) No.89/2017 Page 9
7. There is no doubt that the plaintiff is entitled for the damages because
the defendants have infringed his trademark and the copyright and has been
selling counterfeit products of the plaintiff and has, therefore, caused losses
not only in goodwill and reputation, but also financial. However, there is no
evidence on record to ascertain the actual damages suffered by the plaintiff.
The Courts are not supposed to do the guess work and grant damages for the
losses suffered by the plaintiff. The damages have to be actual and not
superfluous.
8. In view of the above discussion, I hereby restrained the defendants,
their partners, officers, servants, agents, distributors, stockists and
representatives from manufacturing, selling and offering for sale,
advertising, directly or indirectly dealing in wallets, handbags, suitcases,
luggage, purses, belts, footwear, jewellery or any other goods bearing the
plaintiff‟s trademark "Louis Vuitton" or „ ‟ logo or the "Toile Monogram"
pattern. The defendants are also restrained from using the domain name and
directed to remove the said website from ISP. The defendants are also
directed to render the accounts of the profit earned by them. However, no
damages are granted.
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9. The suit stands disposed of with no order as to costs. Decree sheet be
drawn accordingly
DEEPA SHARMA
(JUDGE)
MAY 23, 2017
BG
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