Anil Kumar, J.
1. This judgment shall dispose of plaintiffs’ suit for permanent injunction, passing off, infringement of copyright, rendition of accounts and damages in respect of their trade mark Lacoste and/or crocodile device and/or Chemise Lacoste.
2. Plaintiffs contended that plaintiff No.1 is a company organized under the laws of France and Mr. S.S. Negi is a constituted attorney duly authorized to sign, verify and institute the plaint on behalf of plaintiff No.1. Plaintiff No.2 is a company incorporated under the laws of India and Mr. S.S. Negi is also the constituted attorney of plaintiff No.2 and authorized to sign, verify and institute the plaint on behalf of plaintiff No.2.
3. The pleas of the plaintiffs are that they are internationally renowned manufacturer and dealer of clothing articles including T-shirts and are proprietors in India of copyright in artistic work consisting of a device of a crocodile which was prepared by Mr. Robert George and was first published in France in the year 1927. The copyright in the said device is currently valid and subsisting in India and in other parts of the world and plaintiff No.1 is the owner of all rights in the same. The plaintiffs are proprietor in India and have registration in `Lacoste and crocodile device’ and ‘crocodile device’ And both the registration are valid and subsisting. The devices of the plaintiffs are used extensively in India. The plaintiff No.2 is a licensee of plaintiff No.1. The products of the plaintiffs are manufactured to the highest and most stringent quality standards which are more astringent and strict than most of the electronic products. The colour fastness of the products of the plaintiffs is tested to washing at 90’C and it is also checked against Chlorine and light and to wet and dry rubbing and even to acid and alkaline perspiration.
4. The plaintiff averred about the sales of its products since 1993-1994 based on the books of accounts of plaintiff No.2. The plaintiffs also disclosed the sales promotion figures of its products from the books of the accounts of plaintiff No.2. The plaintiffs gave life history of its trade mark `Lacoste’ and `crocodile device’ since early 1930. They contended that for past many decades they have been extensively advertising in several leading international publications, periodicals and other media which also have circulations in India and to which members of Indian public have access. The products of the plaintiffs are available in duty-free shops of most leading international airports around the world. According to plaintiffs in or about September 1997 the plaintiff commenced its anti counterfeiting activities in India.
5. The plaintiffs asserted that on investigation by them, it transpired that the defendants are dealing in counterfeit products bearing registered trade mark of plaintiffs ‘LACOSTE’, ‘CROCODILE’ and ‘CHEMISE LACASTOE’. The defendants were not only using the trade mark ‘Lacoste’ but the labels and T-shirts sold by the defendants also reproduced the crocodile device of the plaintiffs in totality. The defendants have not only infringed the trade mark rights but have also infringed the copyright of the plaintiffs.
6. The plea of the plaintiff is that their internationally renowned goodwill, reputation and fame has been affected adversely by use of any of their marks by any of the traders who are not connected with the plaintiffs in respect of their goods and such counterfeit goods are causing confusion and deception in the minds of consuming public and members of trade. These counterfeit goods have not originated from the plaintiffs nor have they any nexus or affiliation with the persons who are counterfeiting the goods of the plaintiff. Counterfeiting and infringement of their trademark is also leading to dilution of the distinctive character of plaintiffs’ trade mark and their trade marks are being debased and eroded. Reproduction of the artistic work and crocodile device by the defendants amounts to infringement of their copyright which has made the defendants liable to seizure of all the material where the artistic work of the plaintiffs have been reproduced.
7. With these averments, plaintiff filed this suit for permanent injunction and other relief. On an application of the plaintiffs’, an ex parte interim injunction was granted by order dated 21st September, 2004 and defendants were restrained from using the trade mark ‘LACOSTE’ and ‘Chemise Lacoste’ with ‘CROCODILE’ device and they were also restrained from using the ‘CROCODILE’ device or any other trade mark which is deceptively or confusingly similar to the plaintiffs’ trade mark. On the applications of the plaintiffs’, Local Commissioners were also appointed to take into possession infringing and counterfeit products found at the premises of the defendants.
8. The Local Commissioners visited the premises of the defendants and seized the infringing and counterfeit goods and instead of giving them on superdari to the defendants, the goods were brought back to Delhi and were kept at M-19A, South Extension Part II, New Delhi and the Local Commissioners filed their reports dated 26.10.2004 and 27th October, 2004
9. Despite service, no one appeared on behalf of defendants and they were proceeded ex parte by order dated 29th September, 2005. The plaintiffs thereafter filed their evidence on affidavit and proved the documents.
10. The plaintiffs’ filed the evidence of Shri Anoop Singh, Constituted Attorney of the Plaintiff, who proved and exhibited the power of attorney in his favour as Ex.PW1/1. It was deposed that plaintiff No.1 is a company organized under the laws of France and the plaintiff No.2 is a company organised and existing under the laws of India and that the name of plaintiff No.1 was changed with effect from June 7, 2005 to ‘LACOSTE’. An additional deposition on affidavit of Shri Anoop Singh was also filed deposing that the plaint was signed and verified and instituted by Shri S.S. Negi who was also the constituted attorney of the plaintiff. There was no change in the constitution of the first plaintiff and the documents evidencing change of name of plaintiff No.1 was marked as ‘Mark A’. The deposition of the constituted attorney of the plaintiff was categorical that plaintiff No.1 is an internationally renowned company for its products bearing the trade mark ‘LACOSTE’ and/or ‘CROCODILE’ device. First plaintiff was stated to be the proprietor in India of the trade mark ‘LACOSTE’ and is also the proprietor of copyrights in the artistic work consisting of device of CROCODILE which crocodile device was prepared by one Mr. Robert George and was first published in France in the year 1927.
11. The witness of the plaintiffs categorically stated that the copyright in the artistic work of the CROCODILE device is currently valid and subsisting in India and other parts of the world and the first plaintiff is the present owner of all the rights in the same and the plaintiff No.1 has the exclusive right to reproduce the work in any material from and to obtain relief in respect of infringement of copyrights in the CROCODILE device. The witness of the plaintiff also deposed about the trade marks of the plaintiff in different classes and for different products which according to him have been renewed from time to time and are valid and subsisting. The witness proved the notarized copies of the registration certificate and renewal certificate of the trade marks as Ex.PW1/3.
12. The constituted attorney of the plaintiffs stated that the plaintiff and his predecessors are in business since 1934 and have trade mark registered for LACOSTE and CROCODIEL device in over 206 countries around the world and he proved the not arised copies of world-wide registration certificates for the trade mark LACOSTE and CROCODILE device as Ex.PW1/4. He also deposed about the use of the trade mark device by the plaintiffs in India and that the products of the plaintiffs are used strictly in accordance with the formulae and standards and specifications of plaintiff No.1 and the products are manufactured to the highest and most stringent quality stands in a state of art manufacturing facility at NOIDA. The deposition was also about the quality control measures taken from the grass root level as the yarn is taken from the wealthy source and well-known Vardhman Spinning Mills and the maturity of the fine cotton is strictly in accordance with the specifications of the plaintiff No.1 resulting in cost of production of the yarn being four times the cost of the yarn which is normally used by other manufacturers. The yarn used by the plaintiffs is spun in-house into fabric on specially imported machines and even the spinning is done at a very low speed so as to achieve the right quality of fabric. The fabric is dyed with Vat and reactive dyes and the yarn is put through special processing control before dying so that there is no shrinkage. The buttons used are made of mother of pearl and LACOSTE labels and packaging bags have immaculate quality standards. Finished garments are put through quality control test which are most stringent and the colour fastness is tested at 90 degrees Celsius. The quality of the product is checked against the chlorine and light and to wet and dry rubbing and even to acid and alkaline perspiration. The witness deposed about the sale of the plaintiffs since 1999 till 2005 worldwide as well as the sales in India from 1993 till 2003. The witness proved the not arised copy of the chartered accountant certificate as Ex.PW1/5 and a copy of user agreement between first and second plaintiff was deposed about and marked as ‘Mark B’.
13. Regarding the publicity of their products, the not arised copies of advertisements were proved and exhibited as Ex.PW1/6 and the constituted attorney of the plaintiffs also deposed about the expenditure incurred in promoting the sales of their products worldwide as well as in India.
14. It was categorically deposed on behalf of plaintiffs that on account of extensive sale and sales promotion activities, the trade mark LACOSTE and CROCODILE device are exclusively associated with the plaintiffs and they have been taking actions against the persons and companies who are infringing their trade mark and copyrights and making counterfeit products by filing cases. Certified copies of some of the orders taken against the infringers of trade mark and copyrights were proved and exhibited as PW1/7.
15. The witness of the plaintiffs stated that the activities of the defendants in manufacturing counterfeit products and infringing the trade mark and copyright of the plaintiffs is causing irreparable harm and injury to the plaintiffs’ products which are manufactured with high quality standards and the use of counterfeit products infringing the trade mark and the copyright is diluting the distinctive character of the plaintiffs’ trade mark and plaintiffs’ reputation is at stake and in case the defendants continue to infringe the trade mark and copyright of the plaintiffs’, the loss to their reputation and goodwill will be immense and it will not be compensated adequately monetarily.
15. The plaintiffs’, in the facts and circumstances and on the basis of the documents produced and the deposition of their witnesses, have been able to make out a case for grant of permanent injunction against the defendants from using their trade mark LACOSTE and/or CHEMISE LACOSTE and/or CROCODILE device. It is also inevitable to infer, in the facts and circumstances, that the plaintiffs shall suffer irreparable loss in case the defendants are not restrained from manufacturing counterfeit products and any monetary compensation will not adequately compensate the loss which is caused to the plaintiffs. Considering the facts and circumstances, it is apparent that inconvenience cause to the plaintiffs shall be much more in case the injunction as prayed for by them is not granted restraining defendants from using and infringing their trademark and artistic device and defendants’ passing off their goods as that of plaintiffs.
13. Therefore, a decree of perpetual injunction is passed agains
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t the defendants restraining them from using the trade mark LACOSTE and/or CHEMISE LACOSTE and/or CROCODILE device in respect of any goods manufactured, selling or offering for sale, marketing, advertising, promoting, displaying, using the trade mark of the plaintiffs without any permission and consent and licence of the plaintiffs and infringing the rights of the plaintiffs in any manner and passing off their goods as the goods of the plaintiffs and in any way incorporating the plaintiffs’ trade mark in any manner whatsoever. 14. A decree of mandatory injunction is also passed against the defendants directing them to handover to the plaintiff their goods, packaging and promotional material, catalogues, stationery and any material bearing the plaintiffs’ registered trade mark LACOSTE and/or CHEMISE LACOSTE and/or CROCODILE device and to destroy all products, labels, signs, prints, packages, moulds, plates, dies, wrappers, receptacles bearing plaintiffs’ trade mark LACOSTE and/or CHEMISE LACOSTE and/or CROCODILE device. The goods seized by the Local Commissioner are also allowed to be taken by the plaintiff bearing the trade mark LACOSTE and/or CHEMISE LACOSTE and/or CROCODILE device and are allowed to be destroyed. Cost of the suit is also awarded to the plaintiffs and against the defendants. 15. Decree sheet be drawn accordingly.