CS(COMM) 1236/2018& I.A. 15717/2018

11th January 2019

Petitioner Counsel: Mr. Karan Bajaj Ms. Shreya Sethi Ms. Kangan Roda Mr. Anirudh Bhatia
Respondent Counsel: None.

Cases Cited :
Para 5: Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508

JUDGEMENT

MANMOHAN, J.

1. Present suit has been filed for permanent injunction restraining infringement of trademarks, passing off, unfair trade practices, delivery up, rendition of accounts and damages. Today, learned counsel for plaintiff is permitted to re-number the prayer clause after initialing the same. The corrected prayer clause is reproduced hereinbelow:-

“A. Pass a decree of declaration that the trade marks BOSS, HUGO BOSS and BOSS formative/family of marks of the Plaintiff are well-known trade marks.
B. The Defendant, their partners, officers, employees, retailers, agents, distributors, suppliers, affiliates, subsidiaries, franchisees, representatives and assigns be restrained by a permanent injunction from:
i. Manufacturing, promoting, advertising, displaying, showcasing, selling and offering for sale any product bearing the impugned mark/name BOSS BIG BOSS/ BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s earlier well-known trade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks as a trade mark or a trade name or in any manner whatsoever, either as a trade mark or part of a trade mark, trade name or part of a trade name, corporate name or part of corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever so as to infringe the Plaintiff’s registered trade marks and formative marks;
ii. Manufacturing, promoting, advertising, displaying, showcasing, selling and offering for sale any product bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s earlier well-knowntrade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks in a manner which is identical or deceptively and confusingly similar to the writing style, fonts, stylization, layout, formation or in manner whatsoever so as to infringe the Plaintiff’s earlier trade marks;
iii. Manufacturing, promoting, advertising, displaying, showcasing any product bearing the impugned mark/name BOSS BIG BOSS/ BIG BOSS or any other mark deceptively or confusingly similar to the Plaintiff’s registered well-known trade mark BOSS, BOSS HUGO BOSS and other BOSS formative marks or using the said Impugned Mark, in any manner whatsoever, either as a trade mark or part of a trade mark, trade name or part of a trade name, corporate name or part of corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever so as to pass off its goods/services as that of the Plaintiff;
iv. Allowing or permitting third parties to use, any other indicia whatsoever to show any association of the Defendant’s product/services with the Plaintiff products manufactured and sold under the earlier trade marks BOSS, BOSS HUGO BOSS and/or BOSS formative marks;
v. Disposing of or dealing with its assets in a manner which may adversely affect the Plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the Plaintiff.
C. The Defendant, its partners, directors, principals, proprietor, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries, franchises, licensees, representatives, group companies and assigns be directed by a decree of mandatory injunction:
i. to hand over to the Plaintiff or its nominated representative all promotional material, catalogues, stationery labels, signs, prints packages, moulds, plates, dies, wrappers, receptacles and advertisements in its possession or under its control and any other material whatsoever bearing the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other trade mark identical or deceptively or confusingly similar to the Plaintiff’s registered well-known trade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks;
ii. Recall all the products and marketing, promotional and advertising materials that bear or incorporate the impugned mark/name BOSS BIG BOSS/BIG BOSS or any other trade mark similar to the Plaintiff’s earlier well-known trade marks BOSS, BOSS HUGO BOSS and other BOSS formative marks which has been manufactured, distributed, sold or shipped by it;
iii. to change the impugned name of the Defendant’s store so that the same does not contain the Plaintiff’s earlier well-known trade marks BOSS, BOSS HUGO BOSS and BOSS formative marks or any other mark/name which is deceptively and confusingly similar or virtually identical to the Plaintiff’s earlier wellknown trade marks BOSS, BOSS HUGO BOSS and BOSS formative marks and make full and fair disclosure of any company name/trade name which contains the Plaintiff’s registered well-known trade marks BOSS, BOSS HUGO BOSS and take steps to change the same;
iv. to shut down and cancel the webpage hptts://big-boss-clothes-showroom.business.site/ to the Plaintiff and to provide a full and fair disclosure of any other website/webpage/domain name obtained by the Defendant which is similar or contains the Plaintiff’s earlier well-known trade mark BOSS, BOSS HUGO BOSS and BOSS formative marks and take steps to cancel or transfer the same, as the case may be;
v. to make a full and fair disclosure of any trade mark application(s)/copyright applications filed for registration or registrations obtained for the impugned mark or any other mark/work which is identical or deceptively and confusingly similar to the Plaintiff’s in any language in or outside of India or any other mark which is identical and deceptively and confusingly similar to the Plaintiff’s earlier well-known trade mark BOSS, BOSS HUGO BOSS and BOSS formative marks;
vi. to make full and fair disclosures of third party websites which contains reference of the impugnedmarkand/or any other mark which is identical and deceptively and confusingly similar to the Plaintiff’s earlier well-known trade mark BOSS, BOSS HUGO BOSS and BOSS formative marks and immediately take steps to remove such references from such websites;
vii. to shut down its handles/pages from the social media website www.facebook.com available at https://www.facebook.com/Big-Boss-Branded- Clothes-103583460525445/ and https://www.facebook.com/ds.bogboss?hc_ref= ARSXyqB7n2EWscnBUcAhnB_KXIOE9y318Ofi WBVskM15zM8TgBWNcrqfgoK2SyUGMe4, bearing the Impugned Mark, and make a full and fair disclosure of any other social media handles/pages and/or third party websites bearing the impugned mark or any other mark which is identical and deceptively and confusingly similar to the Plaintiff’s earlier well-known trade mark BOSS, BOSS HUGO BOSS and BOSS formative marks.
D. The Defendant be called upon to allow inspection of their accounts to assist in ascertaining the amount of profits made by them and/or damages suffered by the Plaintiff by the Defendant’s use of the Impugned mark and a decree be passed in favour of the Plaintiff’s and against the Defendant for the amount found due. The Plaintiff’s be additionally granted exemplary and punitive damages for the loss suffered by the Plaintiff on account of illegal activities of the Defendant.
E. Costs of the suit be awarded to the Plaintiff; and
F. Any other relief which the Hon’ble Court thinks fit and proper in the circumstances of the case be allowed in favour of the Plaintiff’s and against the Defendant.”

2. Vide order dated 19th November, 2018, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendant. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:-

“Consequently, till further orders, this Court restrains the defendant its partners, affiliates, subsidiaries, franchisees, representatives and assigns from manufacturing, promoting, advertising, displaying, showcasing selling and offering for sale any product bearing the impugned mark BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the plaintiff’s trade marks BOSS, BOSS HUGO BOSS and other formative BOSS marks as a trade mark or a trade name or in any manner whatsoever, either as a trademark or part of a trade mark, trade name or part of a trade name, corporate name or part of a corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever.”

3. Since despite service none entered appearance on behalf of the defendant, it was proceeded ex parte on 20th December, 2018.

4. At this stage, learned counsel for the plaintiff gives up prayers A, B (v), C (i) to (iii), (v), (vi) and D of the prayer to the suit. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.

5. This Court is also of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held as under:-

“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-inchief 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 examinationin-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.”

6. In the plaint, it is averred that plaintiff is a global manufacturer and merchant in clothing and apparel for men and women, luxury items, fashion accessories, perfumes, leather goods, cases and bags, undergarments, sun glasses etc. in India and throughout the world.

7. It is further averred that plaintiff is a proprietor of BOSS, HUGOBOSS,BOSSHUGO BOSS and other BOSS formative marks. It is stated that the predecessor in title of the plaintiff adopted the marks BOSS, HUGOBOSS and other BOSS formative marks as the most essential part its business name and the company HUGO BOSS GmbH was incorporated in Germany in 1948. It is stated that the plaintiff adopted the mark BOSS HUGO BOSS in 2003. The marks BOSS, BOSSHUGO BOSS and other BOSS formative marks are registered in Classes 9, 14, 18, 25, and 35 under the Trade Marks Act, 1999. Vide assignment deed dated 23rd December, 2004, the aforesaid registrations were assigned in favour of the plaintiff.

8. It is also averred in the plaint that plaintiff has been extensively advertising its products under the aforesaid marks in major international magazines such as Time, News Week, Fortune, The Business World, Vogue, Vanity Fair etc.The plaintiff has also been advertising its marks in the leading dailies of India such as The Hindustan Times, The Times of India and The Economic Times. The publication expenses incurred by plaintiff in India since November 2003 is Rs.8,16,733/-.

9. In the plaint, it is stated that plaintiff is the owner of the website www.hugoboss.com which exclusively sells plaintiff's products under the aforesaid marks.

10. It is the plaintiff's case that in 2016 the revenue generated by the plaintiff under aforesaid trademarks was € 2.692.846.707 worldwide and € 2.180.420 in India. The plaintiff incurred expenses in 2016 of € 23.5 million towards advertising and promoting the goods under the aforesaid marks.

11. Learned counsel for the plaintiff states that in July, 2018 the plaintiff’s counsel came across a store bearing the impugned name BOSS BIG BOSS, located in New Delhi, which is virtually identical to the plaintiff’s well-known trade marksBOSS and BOSS HUGO BOSS. Upon further investigations it was revealed that the defendants operated two Facebook pages under the names ‘Bigg Boss Branded Clothes’& ‘DS BigBoss’, which prominently displayed the hoarding of the defendant’s store as its profile and cover photo. It is stated that the defendant also operates a web page http://big-boss-clothesshowroom. business.site, wherein the defendant claims to be a ‘Bigg Boss Designer Clothes Showroom’. Further investigations revealed that the store is offering for sale multi branded clothes and high fashion products including designer outfit & kurtas, tops, jeans, ladiesreadymade garments etc. A pictorial representation of the plaintiff and defendant’s marks is reproduced hereinbelow:-

Plaintiff earlier well-known Trade Marks DeFendant's impugned mark/name
BOSS HUGO BOSS BOSS BIG BOSS

12. Learned counsel for the plaintiff states that a physical investigation conducted by the counsel for the plaintiff revealed that the defendant adopted the impugned mark a year ago. However the same could not be verified. He states that a conversation with the store manager revealed that the defendant claims to be only using the impugned mark/name BIGG BOSS and BOSS BIG BOSS for the name of its store and does not sell products under the impugned marks.

13. In the opinion of this Court, the defendant has no real prospect of defending the claim, as it has neither entered appearance nor has it filed its written statement. Further, the plaintiff is the registered owner of the trade marks in question.

14. In view of the above, the present suit is decreed in favour of the plaintiff and against the defendant in accordance with prayer B (i) to (iv) and C (iv) and (vii) of the present plaint along with actual costs.The costs shall amongst others include lawyers’ fees as well as the amounts spent on purchasing the Court fees. The plaintiff is given liberty to file on record the exact cost incurred by him in adjudication of the present suit, if not already filed.Defendant is directed to cancel the impugned webpage https://big-boss-clothesshowroom. business.site/,and social media websites i.e. https://www. facebook. com / Big- Boss- Branded-Clothes-103583460525445/ andhttp://www.facebook.com/ds.bogboss?hc_ref=ARSXyqB7n2EWsc nBUcAhnB_KX1OE9y318OfiWBVskM15zM8TgBWNcrqfgoK2SyU GMe4. Registry is directed to prepare a decree sheet accordingly.

15. With the aforesaid observations, present suit and pending application stand disposed of.