M/S Bvlgari Spa vs M/S Smart Collection & Ors
2018 Latest Caselaw 4246 Del

$~22
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
                            Date of decision :25th July, 2018
+               CS (COMM) 209/2018 & I.A. 14700/2014
       M/S BVLGARI SPA                                ..... Plaintiff
                     Through: Mr. S. K. Bansal, Mr. Pankaj Kumar
                              & Mr. Kapil Kumar Giri, Advocates
                              (M-9810438450).
                     versus

       M/S SMART COLLECTION & ORS               ..... Defendants
                    Through: Mr. H. P. Singh, Advocate for D-1 to
                              6&8 (M-9810008116).
       CORAM:
       JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)

1. The Plaintiff - M/s Bvlgari SPA (hereinafter, „Plaintiff‟), is an Italian jewellery and luxury goods company having the trademark „BVLGARI‟, which is derived from the surname of the company's Greek founder, Sotirios Voulgaris, popularly known as Sotirio Bulgari. Although it started out as a jewellery brand, it is now a luxury brand that produces and markets several product lines including watches, fragrances, accessories and hotels. The Plaintiff's products are said to have achieved global repute and renown. In India, the Plaintiff's mark „BVLGARI‟ is registered in several classes including class 3 as stated in paragraph 7 of the plaint. It is the case of the Plaintiff that the mark „BVLGARI‟ is also an essential part of the domain name and website www.bvlgari.com.

2. The Plaintiff avers that in the last week of April, it came across various counterfeit products with the trademark „BVLGARI‟ and came to know that the said products are being promoted through various social

media platforms and blog posts. Along with the Plaint, various images of products promoted under the mark 'BVLGARI‟ along with the mark 'Smart COLLECTION‟ have been placed. The original Plaint impleaded Defendant No.1 as M/s. Smart Collection. Mr. Yasin Sayani original Defendant no.2 claimed that he was the owner of the trade mark 'SMART COLLECTION‟. Hence M/s. Smart Collection was deleted vide order dated 6th October 2015. An amended memo of parties was thereafter filed. Mr. Yasin Sayani, Mr. Danish Sayani, Ms. Yasina Sayani, M/s Floressence Perfumes Pvt. Ltd, M/s CrisModa Perfumes Pvt. Ltd., are Defendants 1-5. Defendant No.6, is M/s Singh Collection who is claimed to be the seller of the infringing products in Delhi. Defendant No.7 is M/s Cosmic International against whom there are no specific allegations.

3. The claim of the Plaintiff is that the sale of these products is violative of the Plaintiff's rights in the trade mark 'BVLGARI', and since the products are counterfeit, an injunction is liable to be granted. The Plaintiff also claims that the Defendants are engaged in promotion and advertising of the impugned goods and products bearing the trademark of the Plaintiff through various blogs and social media websites as well. Paragraph 21 of the Plaint reads as under:

"21. The enquiry of the Plaintiff revealed that the defendants are engaged in the display, advertisement, promotion, sale, delivering and distributing the impugned goods and products bearing the trademark of the Plaintiff not only in the markets but also on the internet inclusive of the online shopping websites, social networking sites, facilitating websites and related media and blog-spots like https:/ / www.facebook.com/pages/Smart-Collection- Perfumes-18ml-from-France/242267372464372,

https:// www.facebook.com/scperfumeslSml, https://www.facebook.com/groups/SmartCollectionPerf umes/ https://www.facebook.com/perfumesmartcollection18m l https://www.facebook.com/SmartCollectionPerfumeMa laysia https://www.facebook.com/smartcollectionmalaysia www.smartcollectionperfume81.blogspot.com, www.smartcollectionperfumedeodorant.blogspot.com, www.klsmartperfumes.blogspot.com, and are otherwise dealing in the course of trade (hereinafter referred as the "impugned activities") in the impugned goods. The screenshots taken from some such websites are filed herewith this suit."

4. In a common written statement filed on behalf of Defendant Nos.1 to 5 and 7 (as per amended memo of parties), it was claimed that the Defendant No.1 - M/s. Smart Collection does not exist as an entity, but is a trademark owned by Mr. Yasin Sayani. Thus, the Defendants did not dispute that the mark 'SMART COLLECTION' emanated from their stable of products. The Defendants, however, challenged the territorial jurisdiction of this Court. It was claimed that the Defendant No.5 - Cris Moda Perfumes Pvt. Ltd., is not a company. It is actually a sole proprietary concern of Mr. Danish Sayani by the M/s. Cris Moda Parfums. It is claimed to be a small scale industry which manufactured and marketed its own perfumes under their registered trademark 'Cris Moda Parfums'. It is also claimed that the mark 'Cris Moda Parfums‟ was assigned by Defendant no.4 to Defendant no.5. According to the Defendants, M/s. Singh Collections has been impleaded only for the purposes of vesting territorial jurisdiction in this Court. There is no connection between the other defendants and M/s. Singh Collections. The

Defendants also categorically stated in the written statement as under:

"20 to 23................

It is further denied that the blogs and websites so stated in the corresponding para of the plaint do not belong to the Defendants nor do they have any association or connection with the same. The Defendant categorically submits that it in no manner runs or administers these blogs or websites or advertises through Face Book pages and that the claims of the Plaintiff are totally false, baseless and are being made to mislead and prejudice this Hon'ble Court against the Defendant. Rest of the paras are denied.

24 to 30. The Contents of paras 24 to 30 of the plaint are incorrect, wrong and denied. Plaintiff is put to strict proof thereof. It is submitted by the Defendants that the suit is bad on account that the present Defendants have never sold any products with the trademark BVLGARI. Therefore, the Defendants have no reason to sell goods with a false description or have ever indulged in counterfeiting of the Plaintiff products. The question of selling products with phonetically, visually and structurally similar marks of the Plaintiff products does not arise, nor have the Defendants copied the artistic work or copyright of the Plaintiff or have tried to give false description or have ever tried to link themselves with the customers of the Plaintiff. The Defendants have their own trademark to bank upon and do not require any leave or licence from the Plaintiff nor have the Defendants have ever violated the trademarks of the Plaintiff to lead to infringement or passing off. The present suit is an ill founded suit and has been filed with ulterior motives. The averments made in these paragraphs are absolutely ill founded and are liable to be rejected. Any chance of confusion or deception cannot arise. The Defendants have never tried to cash upon the goodwill and reputation of the Plaintiff, if any. It is submitted by

the Defendants that the Plaintiff have not produced any document of the sales in India or the accounts to show that they have suffered huge losses and business reputation. It is submitted by the Defendants that the Plaintiff have miserably failed to show any kind of damage suffered by them."

It is further pleaded that no document proving sales of the impugned product has been placed on record by the Plaintiff or that the Plaintiff has suffered any loss or damage. Thus, in brief, the case of the Defendants is that this court lacks territorial jurisdiction as also that they have never used the mark 'BVLGARI‟. The Defendants also denied that the blogposts set out in the plaint belong to them.

5. In the written statement filed by Defendant No. 6 (earlier Defendant No. 7), i.e., M/s Singh Collection, they have categorically denied having any association with the other Defendants in the suit, and contended that they have been wrongfully impleaded in the suit. Defendant No.6 denied all allegations of dealing in any counterfeit products, as also any goods manufactured by the other Defendants. They further averred that the Plaintiff had failed to produce any documentary evidence to show that the impugned goods are being manufactured/sold by Defendant No.6.

6. Initially, on 8th August, 2014, an ex-parte ad-interim injunction was granted. Mediation was also explored between the parties, however the same failed. The matter was listed for case management hearing on 25 th July, 2018.

7. The documents filed by the Plaintiffs on record, in order to show misuse of the trademark, „BVLGARI‟ are printouts of the packagings bearing the mark „BVLGARI‟ and 'SMART COLLECTION'. The screenshots are

clearly visible on the record. The images also show that they have been taken from websites/URLs such as www.smartcollectionperfume.wordpress.com. There is no denial by the Defendants that this URL does not belong to them. The fact, that the word „BVLGARI‟ is being used along with the trademark 'SMART COLLECTION', clearly shows that the Defendants were misusing the word and mark „BVLGARI‟. This shows that the complaint of the Plaintiff is not completely baseless. Images of the packagings and the screen shots of the posts, which show the use of the mark „BVLGARI‟ along with the Defendants' mark 'SMART COLLECTION', goes to show that the Defendants are attempt to ride piggyback on the reputation of the Plaintiff's mark 'BVLGARI‟.

8. The Defendants are in the identical trade i.e., manufacturing/selling perfumes, fragrances, etc. There is no reason as to why the images ought to have appeared online with the mark „BVLGARI‟ along with the mark 'SMART COLLECTION'. Thus, it appears that the Defendants did make an attempt to sell the products co-branding the same as „BVLGARI‟ along with their own mark 'SMART COLLECTION'. Such a use even with co-branding is completely illegal and unlawful and cannot be permitted.

9. When the suit was taken up for case management hearing, learned counsel for the Defendants, apart from challenging the jurisdiction of this Court, did submit that the Defendants have not sold the products under the mark „BVLGARI‟. Insofar as jurisdiction is concerned, the Defendants' website, videos and images are accessible from within Delhi. They are being actively promoted in Delhi and hence there is illegal `use' of the mark, which confers jurisdiction on this Court. Since the Defendants admit that

they don't intend to use the mark „BVLGARI‟ and also because there is no proof of actual sales but the documents show use of the mark and there is no serious dispute as to the same, no useful purpose would be served in sending the matter to trial. Both Ld. Counsels for the Plaintiff and the Defendants do not have an objection in this Court disposing of the matter finally.

10. The Defendants appear to be adopting various marks of third parties, as is evident from the records wherein the injunctions have been granted against them from using the trademarks Tommy Hilfiger, Lacoste, Calvin Klein, Christian Dior and other well known brands. The Defendants also appear to be clandestinely making the sales. The images of the Defendants' co-branded products, using the mark „BVLGARI‟ and 'SMART COLLECTION‟.

Defendants' use of the Plaintiff's mark

11. The Plaintiff has established its rights in the mark 'BVLGARI‟. The global reputation of this mark is also clearly evidenced from the record. The

above images leave no manner of doubt that the Defendants were using the Plaintiff's mark „BVLGARI‟. Thus, a permanent injunction is liable to be granted against the Defendants from using the mark „BVLGARI‟. However, since there is no evidence of sales and the entire evidence appears to be a clandestine business, and further, keeping in view the fact that the Defendants completely denied that they sold products bearing the mark „BVLGARI‟, permanent injunction as prayed for is granted.

12. The Plaintiff's proprietary rights are not in dispute. A perusal of the product images of the Defendants' infringing products as also the promotion on Facebook shows that the products being promoted and sold by the Defendants are virtually identical to the Plaintiff's product packaging, except for the appearance of the mark 'SMART COLLECTION‟ in logo form. The Defendants do not deny that this Facebook page belongs to them. A perusal of the actual online Facebook page with this name, also shows that several products of the Defendants are being offered for sale and promotion. They all bear the mark „SMART COLLECTION‟. Thus, the averment of the Defendants that they are not selling the infringing products is unconvincing. Promotion and sales through social media is almost untraceable. The manner, in which social media pages can be immediately changed or taken down, makes it difficult for any IP owner to keep track. Moreover, pages on social media platforms can be uploaded by anyone. In such cases, it is to be seen as to who is the ultimate beneficiary of the said publicity and advertising. In the case of online sales, promotion and advertising, due to the fluid nature of the internet i.e., that changes can be made instantly, the `Beneficiary test‟ would have to be adopted. Inference would have to be drawn that the person who ultimately benefits is the person

who has directly put up the said page or is instrumental in getting the same put up. In the present case, there is a clear admission that the mark „SMART COLLECTION‟ belongs to the Defendant no.1 and all the defendants are related to each other. There can be no reason for the co-branding images appearing on the products as also on Facebook and other websites with the marks 'BVLGARI‟ being used with „SMART COLLECTION‟. The only persons who would benefit from such use and promotion would be the Defendants. Hence they should be held to be liable.

13. The Defendants are liable to pay damages and costs of the litigation. The sales being clandestine, the damages are assessed for a nominal amount of Rs.1 Lakh, along with costs of Rs.50,000/-. The suit is decreed in terms of para 36 (a), (d) & (e). Further decree of damages for Rs.1.5 Lakhs is granted in favour of the Plaintiff against the Defendants. The present order be communicated by the Plaintiff to the Customs Authorities to ensure that counterfeit products bearing the mark „BVLGARI‟ are not permitted to be either imported or exported.

14. Suit is decreed in the above terms. Decree sheet be drawn up accordingly. All pending applications are also disposed of.

PRATHIBA M. SINGH, J.

JUDGE JULY 25, 2018/dk