Shoppers Stop Ltd vs Softobell Inc. & Ors

MANMOHAN, J

I.A. 14807/2018

Present application has been filed seeking impleadment of Aeora Solutions Pvt. Ltd. as defendant No.6. Â

Since the party sought to be impleaded has been served and none appears for it, the present application is allowed. Plaintiff is permitted to re-file the

amended memo of parties during the course of the day.

CS(COMM) 204/2016 & I.As. 6941/2015, 17211/2015 AND 1136/2016

Present suit has been filed for permanent injunction restraining infringement of trade mark, passing off, dilution, unfair competition, delivery up,

rendition of accounts, damages etc.The prayer clause is reproduced hereinbelow:

“28. It is therefore respectfully prayed before this Hon’ble Court that it may be pleased to grant the following orders in favour of the Plaintiff

and against the Defendants:

a. A Decree for permanent injunction restraining the Defendants their directors, executives, partners, proprietors, as the case may be, their officers,

servants and agents or anyone acting for and on their behalf from manufacturing, marketing, selling, offering for sale on the websites, e-commerce or

otherwise, advertising or in any manner dealing in any goods and/or services including but not limited to apparels under the trademark “VETTERN

FRATTINIâ€, or from adopting any other mark which is identical or deceptively similar to the Plaintiff’s trade mark “VETTORIO

FRATINIâ€​ amounting to infringement of the Plaintiff’s registered trademarks as provided in Para 8 of the Plaint;

b. A Decree for permanent injunction restraining the Defendants their directors, executives, partners, proprietors, as the case may be, their officers,

servants and agents or anyone acting for and on their behalf from manufacturing, marketing, selling, offering for sale on the websites, e-commerce or

otherwise, advertising or in any manner dealing in any goods and/or services including but not limited to apparels under the trademark “VETTERN

FRATTINI†and/or from adopting any other mark which is identical or deceptively similar to the Plaintiff’s trade mark “VETTORIO

FRATINI†amounting to passing off or doing any other thing which will lead to passing off of the goods and services of the Defendants as those of

the Plaintiff;

c. A Decree for permanent injunction restraining the Defendants their directors, executives, partners, proprietors, as the case may be, their officers,

servants and agents or anyone acting for and on their behalf from manufacturing, marketing, offering for sale on the websites, e-commerce or

otherwise, advertising or in any manner dealing in any goods and/or services including but not limited to apparels under the name “VETTERN

FRATTINIâ€, or from adopting any other trade mark which is identical or deceptively similar to the trade mark “VETTORIO FRATINI†thus

amounting to dilution of the Plaintiff’s trademark;

d. A Decree for delivery up of all the products, goods, labels, cartons, brochures, advertising material and any other document bearing the mark

“VETTERN FRATTINI†or any other mark the use of which may amount to Passing Off or Infringement of Trade Marks of the Plaintiff to the

authorized representative of the Plaintiff for the purpose of destruction/erasure;

e. A Decree for rendition of accounts of profits illegally earned by the Defendants on account of the sale of the products bearing the marks which are

identical and/or deceptively similar to the Plaintiff’s trademarks “VETTORIO FRATINI†and a decree for the amount so found due be

passed in favour of the Plaintiff;

f. A decree for damages to be determined by this Hon’ble Court in its discretion be passed against the Defendants and in favour of the Plaintiff;

g. An order for costs of the proceedings; And/or any further order as this Hon’ble Court may deem fit and proper in the facts and circumstances

of the present case.â€​

Today, learned counsel for the plaintiff gives up prayers (d), (e) and (f) of the prayer clause to the suit. The statement made by learned counsel for

plaintiff is accepted by this Court and plaintiff is held bound by the same.

Vide order dated 08th February, 2015 this Court granted an ex parte ad interim injunction against the defendant. Relevant portion of the ex parte ad

interim injunction is reproduced hereinbelow:

“In my view the plaintiff has made out a prima facie case in its favour inasmuch as the impugned mark of the defendant is clearly phonetically and

visually similar to the mark of the plaintiff. Balance of convenience is also in favour of the plaintiff. The defendants are restrained by an ex parte ad

interim injunction from manufacturing, selling or dealing with the trade mark “VETTERN FRATTINI†or any other mark which is deceptively

similar to the plaintiff’s trade mark “VETTORIO FRATINI†till further orders. The plaintiff to comply with order 39 Rule 3 CPC within three

days from todayâ€​

Since none appeared on behalf of defendants No.1, 2 and 5 despite service, the defendant nos. 1 and 2 were proceeded ex-parte on 11 th July,

2016 and the defendant no.5 was proceeded ex parte on 17th January, 2017. Today, since none appeared on behalf of defendant No.6 despite service,

defendant No.6 is proceeded ex parte.

It is pertinent to mention that on 09th May, 2018, the intermediaries, i.e. the defendants No.3 and 4 were directed to disclose the sales made by the

defendants No. 1,2 and 5 on the online sales portals of defendant nos. 3 and 4 under the mark „VETTERN FRATTINI†as well as revenue

generated by such sales. The defendants No.3 and 4 have disclosed on their online sale portals the sales made by defendants No.1, 2 and 5 under the

mark VETTERN FRATTINI as well as the revenue generated by such sales.

Learned counsel for defendant nos.3 and 4 undertake before this Court that they will not list the products of defendants No.1, 2, 5 and 6 bearing the

mark VETTERN FRATTINI on their online portals. Learned counsel for defendants nos.3 and 4 also state that in the event they are informed by the

plaintiff of any alleged illegal listing of its products, the said defendants shall disclose the details of the sellers of the infringing products in response to

the plaintiffâ€​s request within forty-eight working hours.

The undertakings given by the learned counsel for defendants No.3 and 4 are accepted by this Court and the said parties are held bound by the

same. Registry is directed to prepare a decree sheet against defendant nos. 3 and 4 accordingly

Learned counsel for plaintiff prays that in view of the judgment of this Court in Satya Infrastructure Ltd. &Ors. Vs. Satya Infra & Estates Pvt.

Ltd., 2013 SCC OnLine Del 508,

“I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way

of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being

verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of

examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the

plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction.â€​

The relevant facts of the present case are that the plaintiff was established in 1997 and is engaged in the marketing of various consumer and

household goods including cosmetics, textiles, readymade garments, footwear, gift items, jewelry, electric and electronic items, lighting, etc.

It is stated in the plaint that one of the leading fashion brands of the plaintiff is “VETTORIO FRATINIâ€Â for menâ€s apparels such as

pens, wallets, footwear, belts, sunglasses etc. It is stated that the plaintiff adopted the mark VETTORIO FRATINI in 2003

and has been using it continuously since.

It is the case of the plaintiff that sales for the goods under the mark VETTORIO FRATINI in the financial year 2013-2014 was INR 13,95,36,000.

It is also stated that the plaintiff has spent large amount on advertisement and promotion of its mark VETTORIO FRATINI

It is stated that the plaintiff owns registration for the mark VETTORIO FRATINI under various classes of the Trade Mark Act, 1999.

Learned Counsel for the plaintiff states that in August 2014, the plaintiffâ€s representative came across goods being sold under the mark

„VETTERN FRATTINIâ€. He states that the plaintiff conducted further investigations which revealed that the products bearing the impugned

marks were available on the defendant No.3â€s website bearing the packaging of the defendant No.2 under the name and address of the defendant

no.1.

Learned counsel of the plaintiff states that the plaintiff addressed cease and desist notices dated 21st October, 2014 to defendants No.1, 3 and 4.

He states that the defendant no.1 did not reply to the same. He further states that defendants No.3 and 4 replied to the cease and desist notice stating

that they have removed the goods bearing the impugned mark. However, he states that at the time of filling of the suit the plaintiff came across the

goods bearing the impugned mark on defendants No.2 and 3â€​s website.

In the opinion of this Court, the defendant nos.1, 2, 5 and 6 have no real prospect of defending the claim. In view of the aforesaid, the suit is

decreed in favour of the plaintiffs and against the defendants No.1, 2, 5 and 6 in accordance with paragraph 28(a), (b), and (c) of the plaint along with

the actual costs. The costs shall amongst others include the lawyers†fees. The plaintiff is given liberty to place on record the exact cost incurred by

it in adjudication of the present suit, if not already filed.Â

Registry is directed to prepare a decree sheet qua the remaining defendants accordingly.

Consequently, the present suit and pending applications stand disposed of.