The High Court of Delhi Grants Permanent Injunction in Favour of Louis Vuitton

19th May, 2023 - 7:27 am Categories: Legal Issues Trademark 0 Comments

Introduction

The High Court of Delhi (“the Court”) on 18^th April 2023, in Louis Vuitton Malletier vs Santosh & Ors.^[1], issued a permanent injunction restraining the Defendants from infringing and selling counterfeit products under the Plaintiff’s luxury brand “Louis Vuitton”. The Court also ordered the Defendants to pay INR 9.59 Lakhs as damages and costs incurred.

The Plaintiff is the registered proprietor of the “Louis Vuitton” word mark, the “LV” logo, the Toile monogram pattern, the Damier pattern, and the LV flower pattern (collectively referred to as ‘Louis Vuitton trademarks’) in India in Classes 3, 14, 18 and 25. Further, the word mark “Louis Vuitton”, the “LV” logo and the Toile monogram have acquired the status of well-known trademarks, which was recognised in the judgement of Louis Vuitton Malletier v. Manoj Khurana^[2], where the court held that “it is clear that even in India, the LV logo, the Toile Monogram and the Damier pattern are well-known mark under Section 11(6) of the Trademarks Act, 1999” and through the decision in Louis Vuitton Malletier v. Abdul Salim^[3], where it was held that “The marks of the Plaintiff are undoubtedly well known, transcending borders and known/recognized by all who are connoisseur of such goods”. The Plaintiff’s trademark is also included in the list of well-known trademarks by the Indian trademark Office.

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In January and February, 2018, during periodical market surveys conducted by the Plaintiff, they found out about the infringing and counterfeit activities of the Defendant nos. 1 to 3. Defendant no. 1 is the sole proprietor of the Defendant no. 2 entity. Defendant no. 3 owns and operates a manufacturing unit. Following this, in January and February 2018, the Plaintiff availed the services of an investigator to ascertain the business activities of the Defendants, which confirmed that the Defendants were infringing the Plaintiff’s registered and well-known trademark “Louis Vuitton” in relation to their counterfeit activities.

Proceedings in the Suit

On being satisfied that a prima facie case of trademark infringement and passing off exists, the Court granted an ex parte ad interim injunction order in favour of the Plaintiff, restraining Defendant nos. 1 to 3 from using the Plaintiff’s registered trademarks. The Court appointed three local commissioners who found a total of 9554 infringing products found at the Defendants’ premises. The commissioners confirmed that the Defendants were indulged in manufacturing and selling the counterfeit products, which amounted to trademark infringement.

Throughout the proceedings, the Defendants chose not to appear, did not file any written statements and failed to take the requisite steps to contest the present suit. Thus, the Court proceeded ex parte in the matter. On behalf of the Plaintiff, ex parte evidence by way of affidavit was filed in support of the averments made in the plaint which were not rebutted, and therefore, it was established that the Plaintiff was the registered owner of the ‘Louis Vuitton trademarks’ and the said registrations were valid and subsisting.

Order

The Court held that the actions of the Defendants, by taking unfair advantage of the reputation and goodwill of the Plaintiff’s mark and by deceiving the unwary consumers of their association with the Plaintiff by dishonestly adopting the registered mark, had resulted in the dilution of the Plaintiff’s trademarks. Further, it held that the manufacturing and selling of counterfeit products by the Defendants amounted to trademark infringement and passing off as the Plaintiff had satisfactorily established their statutory as well as common law rights over the Louis Vuitton trademarks on account of the long usage of the marks. Owing to the immense goodwill vested in the “Louis Vuitton” trademarks, the Court granted a permanent injunction in favour of the Plaintiff. Based on the findings of the local commissioners, the Court held that the present case was not one of innocent adoption and, therefore, held that the Plaintiff was entitled to damages of INR 5,00,000/- and also awarded costs of INR 9,59,412/- payable by Defendant nos. 1 to 3.

The dilution of a trademark occurs when the impugned mark is similar to a well-known mark having a reputation in India and causes a detrimental effect to its distinctive character^[4] by mere association. The similarity between two marks can cause confusion among the general public, leading to a loss of singular association and gradual dilution of the distinctiveness of the mark as a whole. Such dilution can have negative consequences for the long-term future of the brand if not addressed through legal recourse.

Author: Sarah Wilson , A Student at Christ (deemed to be University) Bengaluru, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

[1] CS(COMM) 635/2018

[2] 2015 SCC OnLine Del 1168

[3] 2009 SCC OnLine Del 1312

[4] 2010 (166) DLT 177