Delhi High Court: A Single Judge Bench of Amit Bansal, J.* granted permanent injunction to Louis Vuitton, a French luxury fashion, for its marks “Louis Vuitton, initials “LV”, Toile monogram pattern, Dameir pattern and LV flower pattern. Further, the Court held that the defendants had blatantly infringed the said marks and hence, were entitled to pay costs of Rs. 9.59 lakh to the plaintiff.
Background
The plaintiff company, Louis Vuitton Malletier, incorporated under the laws of France was a French luxury fashion and leather goods company owning the brand “Louis Vuitton” since 1854. In addition to the trade mark “Louis Vuitton”, the initials “LV”, represented in an intertwined manner had also been used as a trade mark by the plaintiff since 1896. The plaintiff had also continuously used the canvas design with a flower pattern and the intertwined initials of “Louis Vuitton”, which was known as “Toile monogram” and was also associated as an emblematic symbol of the House of Louis Vuitton. “Louis Vuitton” word mark, “LV” logo, Toile monogram pattern, Damier pattern, and LV flower pattern was registered by the plaintiff in India in Classes 3, 14, 18 and 25.
The plaintiff’s “Louis Vuitton” word mark, the “LV” logo and the Toile monogram pattern had acquired the status of ‘well-known trade marks’ in Louis Vuitton Malletier v. Abdul Salim, 2009 SCC OnLine Del 1312 and Louis Vuitton Malletier v. Manoj Khurana, 2015 SCC OnLine Del 11683.
In 2018, the plaintiff found about the infringing and counterfeiting activities of the defendants that they were engaged in manufacturing and selling and/or offering for sale, trading, advertising, and directly dealing in goods bearing the plaintiffs registered trade marks. Thus, the plaintiff availed the services of an investigator, which confirmed that the defendants were infringing the plaintiff’s registered and well-known trade mark “Louis Vuitton” in relation to their business of counterfeiting activities.
Analysis, Law, and Decision
This Court had passed an Order on 23-2-2018 granting an ex-parte ad interim injunction in favour of the plaintiff, thereby restraining the defendants from using the plaintiff’s registered trade marks “Louis Vuitton”, “LV” logo, Toile monogram pattern, Damier pattern, and LV flower pattern.
The Court noted that the evidence filed by the plaintiff was not rebutted therefore, the Court opined that the plaintiff was the registered owner of the name/mark “Louis Vuitton”, the “LV” logo, the Toile monogram pattern, the Damier pattern and the LV flower pattern and the said registrations were valid and subsisting. The Court further noted that the report of the Local Commissioners showed that the defendants were indulging in manufacturing and sales of counterfeit products, which had the identical marks as that of the plaintiff and a total of 9554 infringing products were found at the premises of the defendants including labels, buttons, tags, apparels bearing the trade marks of the plaintiff.
The Court also opined that “the manufacturing and selling of the counterfeit products by the defendants not only amounted to infringement of the registered trade marks of the plaintiff but also, to passing off the goods of the defendants as that of the plaintiff. Moreover, the defendants had taken unfair advantage of the reputation and goodwill of the plaintiff’s marks and had also deceived the unwary consumers of their association with the plaintiff by dishonestly adopting the plaintiff’s registered marks without any plausible explanation. Such acts of the defendants would also lead to dilution of the plaintiff’s marks”.
The Court thus held that the various registrations and the long usage of “Louis Vuitton” marks by the plaintiff, and the goodwill vested in these marks, entitled the plaintiff for grant of permanent injunction. The Court further directed that the goods seized by the Local Commissioners, which were lying in superdari with the defendants were to be handed to the representatives of the plaintiff for the purpose of destruction.
The Court relied on Hindustan Lever Ltd. v. Satish Kumar, 2012 SCC OnLine Del 1378 wherein it was observed that “one of the reasons for granting relief of punitive damages was that despite of service of summons/notice, the defendant had chosen not to appear before the Court. It showed that the defendant was aware of the illegal activities otherwise, he ought to have attended the proceedings and given justification for the said illegal acts. Since the defendant had maintained silence, therefore, the guilt of the defendant spoke for itself and the Court, under these circumstances, felt that to avoid future infringement, relief of punitive damages was to be granted in favour of the plaintiff”.
The Court therefore opined that the defendants had blatantly infringed the Louis Vuitton marks of the plaintiff and had also failed to appear before this Court. The Court further opined that this was not a case of innocent adoption and therefore, the plaintiff was entitled to damages of Rs. 5 lakhs, payable by the defendants. Moreover, the Court noted that the statement of costs filed by the plaintiff showed that Rs. 3,22,500 was incurred for court fees and Local Commissioners fees, and the plaintiff also claimed that expenses of Rs. 35,698 had been incurred and Rs. 6,01,214 was the legal fees. Therefore, this Court awarded Rs. 9,59,413 as costs to the plaintiff, which had to be paid by Defendants 1, 2 and 3.
[Louis Vuitton Malletier v. Santosh, 2023 SCC OnLine Del 2183, decided on 18-4-2023]
Advocates who appeared in this case:
For the Plaintiff: Dhruv Anand, Udita Patro, Sampurna Sanyal, Nimrat Singh, Advocates.
*Judgment authored by: Justice Amit Bansal
