M/S Calvin Klein Trade Mark Trust vs M/S Smart Collection & Ors
2018 Latest Caselaw 4247 Del

$~12
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
                            Date of decision :25th July, 2018
+               CS (COMM) 97/2016 & I.A. 10772/2014
       M/S CALVIN KLEIN TRADE MARK TRUST             ..... 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 - Calvin Klein Trademark Trust. (hereinafter, „Plaintiff‟), is a trust created for management of trademark rights of M/s Calvin Klein, Inc., which is a multinational company, engaged in the business of manufacture, distribution and sale of wide range of clothing, fragrances, cosmetics, eyewear, watches. The company was founded by Mr. Calvin Klein in 1967 and since then been using the trademarks „CALVIN KLEIN‟ and „cK‟. The Plaintiff‟s products are claimed to be sold in more than 100 countries in the world. In India, the Plaintiff‟s marks „CALVIN KLEIN‟ and „cK‟ is registered in several classes including classes 3, 9 18, and 25, as stated in paragraph 6 of the plaint. It is the case of the Plaintiff that the marks „CALVIN KLEIN‟ and „cK‟ are also an essential part of the domain name and websites i.e., www.calvinklein.com and www.calvinkleinjeans.com.

2. The Plaintiff avers that it came across various counterfeit products with the trademark „CALVIN KLEIN‟ and „cK‟ and came to know that the

defendants are engaged in manufacturing, marketing, supplying and soliciting and trading in fragrances and perfumes. The Plaint however, does not set out the details of the defendants and in what manner the mark is being misused by the Defendants. Along with the Plaint, a website screen shot of a product image has been filed which shows the use of the mark "ETERNITY Calvin Klein" along with the mark SMART COLLECTION. 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 5th March 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 and Defendant no.7 is M/s Cosmic International. There are no allegations against Defendant Nos. 6 and 7.

3. The claim of the Plaintiff is that the Defendants are not entitled to use the mark „CALVIN KLEIN‟ and „cK‟. On the basis of the screen shot it is averred that the defendants are giving a false trade description. The Plaintiffs pray for permanent injunction and damages.

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, 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 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:

"The Contents of paras 22 to 27 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 cK or CALVIN KLEIN. 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 photo shots of the website shown in these paragraphs do not belong to the Defendants. 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 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.

5. Defendant no.6, M/s. Singh Collections (earlier Defendant No.7) filed a separate Written statement and averred that there is not a single allegation against the said firm in the entire plaint. There is no cash memo of any proof of purchase filed on record to show that the infringing product was sold by it.

6. Initially, on 28th May, 2014, an ex-parte ad-interim injunction was granted. On 5th March, 2015, in view of the submissions made by Defendant Nos.2 to 6, and Defendant No.8 in para 21 of their Written Statement, M/s Smart Collection was deleted from the array of parties as it was merely a trademark owned by Defendant No.2, and was not a firm. Thereafter admission/denial of documents was conducted by way of affidavit. On 28 th February 2017, a preliminary issue was framed - "Whether this court has the territorial jurisdiction to try and entertain the suit? OPP". The matter was listed for case management hearing on 25th July, 2018. A perusal of the admission/denial affidavits shows that the Defendants have denied all documents filed by the Plaintiff. No documents were filed by the Defendants.

7. The documents filed Plaintiffs on record in order to show misuse of the trademarks „CALVIN KLEIN‟ and „cK‟ are printouts of the packagings bearing the said marks and „SMART COLLECTION‟ in the form of screenshots. The URL of the screenshots is not clear. Only the image of the

bottle bearing the mark „ETERNITY‟ along with „SMART COLLECTION‟ is visible. However in the outer packaging the mark „CALVIN KLEIN‟ is also used. Except this image there is nothing else on record. It is not clear as to from which source this printout was taken. The image showing the use of the mark CALVIN KLEIN along with SMART COLLECTION is set out below:

8. However, there should be no reason for this image to contain the Defendants mark SMART COLLECTION. It, thus, appears that there was some attempt made by the Defendants to sell products with the CALVIN KLEIN mark along with the mark SMART COLLECTION. It is however not clear as to what was the extent of sales or promotion.

9. 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 marks „CALVIN KLEIN‟ 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 „CALVIN KLEIN‟ along with their own mark „SMART COLLECTION‟. Such a use even with co-

branding is completely illegal and unlawful and cannot be permitted.

10. 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 marks „CALVIN KLEIN‟ and/or „cK‟. A preliminary issue in respect of territorial jurisdiction was framed by this Court on 28th February, 2017. Insofar as jurisdiction is concerned, the Defendants‟ infringing product image having been accessible from within Delhi, there is `use‟ of the mark CALVIN KLEIN. Since the Defendants admit that they don‟t intend to use the marks „CALVIN KLEIN‟ and/or „cK‟ and also because there is no proof of actual sales but the documents show use of the marks 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.

11. The Plaintiff‟s proprietary rights in the marks is not in question and neither is the Plaintiff‟s reputation and goodwill. The registrations of the Plaintiff‟s marks are public record. In view of the stand of the Defendants in the written statement that they have not used the mark „CALVIN KLEIN‟ and/or „cK‟ and that they have their own trade mark which they use, a permanent injunction as prayed, should put the issues raised in the present suit, at rest. Insofar as damages is concerned, in the present case there is no pleading or averment as to the URL links where the products are sold or advertised except one screenshot placed on record. However, since there is no evidence of sales and the entire allegation appears to be that of a clandestine business, and further, keeping in view the fact that the Defendants completely denied that they sold products bearing the marks

„CALVIN KLEIN‟ and/or „cK‟, the relief of damages and costs is not liable to be granted.

12. The suit is decreed in terms of para 33 (a) and (d). The present order be communicated by the Plaintiff to the Customs Authorities to ensure that counterfeit products bearing the marks „CALVIN KLEIN‟ are not permitted to be either imported or exported.

13. 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