TIMBER LAND CO Vs. A VIJAY

JUDGEMENT

(1.) This is a suit for permanent injunction, damages, rendition of accounts and delivery of the infringing material. The plaintiff is a company incorporated in U.S.A. and is engaged in the manufacturing and marketing of branded apparel and footwear under the trademark TIMBERLAND & TREE DEVICE. It is alleged in the plaint that the name TIMBERLAND was born in the year 1973 as the brand name for the plaintiff's original waterproof leather boots. In 1978- 79, the plaintiff added casual and boat shoes to its product line and in the year 1980, it extended into lifestyle brand by venturing into clothing and women's footwear. The line of products of the plaintiff-company now includes apparel, watches, socks, backpacks, kid's footwear and other gear and according to the plaintiff, the name/mark TIMBERLAND has acquired a substantial goodwill and reputation. The trademark TIMBERLAND is registered in 123 countries, including India in Class 25.

(2.) In India, the plaintiff-company owns the mark TIMBERLAND AND TREE DESIGN in clothing girl's and women's wear, boy's and men's wear, sportswear and evening wear, dresses blouses, tops, shirts, sweatshirts, T Shirts, skirts, shorts, pants, jogging pants, trousers, sweaters, suits, coats, topcoats, jackets, vests, smocks, bath robes, beach clothing, bathing suits, pyjamas, underclothing, socks, stocking, handkerchief, shawls, neckties, hosiery, tights, gloves, mittens, belts, suspenders, footwear, soles for footwear moccasins, boots sport boots, climbing boots, hiking boots vide registration No. 493266 and 493316 respectively both dated 22.06.1988. The plaintiff incurs substantial expenditure on advertisement and publicity of its products and the advertising expenses incurred in the years 2001, 2002 and 2003 come to US $ 41,417,000, 39,973,000 and 44,661,000 respectively.

(3.) It has been alleged that the plaintiff received information that defendant No. 5 M/s Sandler Wear International was selling unauthorized TIMBERLAND branded merchandised in Singapore. The plaintiff appointed a professional investigating agency to investigate the matter. It was reported to the plaintiff that defendant No.1 is trading under the name and style of defendant No.2 M/s Annai Exims. Defendant N.3 Annai Exims India Pvt. Ltd. is a company in which defendant No.1 Mr A. Vijay is a Director. Defendant No.4 Mr K. Ramaselvam is the President of defendant No.5 M/s Sandler Wear International, whereas defendant No.6 Mr N. Narayana Moorty is the Managing Director of defendant No.7 Shuttle Weaves International. Defendant No.8 Shuttle Weaves Colour Private Limited is a company in which defendant No.6 Mr N. Narayaana Moorty is a Director. Defendant Nos. 1 to 3 obtains orders in favour of defendant Nos. 4 to 7 which, in turn, contracts out production orders to defendant Nos. 1 and 2. The defendants, according to the plaintiffs, thus, are manufacturers, suppliers and exporters of garments under plaintiff's trademark TIMBERLAND and TREE DESIGN and have thereby infringed the registered trademark of the plaintiffs. It has also been alleged that by use of false markings and misrepresentation which is inherent in the use of counterfeit labels and marks, the defendants have passed off their goods as those of the plaintiff and on account of inferior quality of their products, the reputation of the plaintiff which has already suffered a lot will continue to suffer irreparable damage. The plaintiff has sought an injunction against manufacturing, selling, offering for sale or supply, advertisement of goods by the defendants under the trademark TIMBERLAND and/or TREE DEVICE or any mark confusingly similar to these similar marks. They have also sought delivery up of all goods, labels, material, etc. bearing the mark TIMBERLAND and TREE DEVICE alognwith negatives, dies, blocks, etc. wherein the said mark/name appears for the purpose of destruction by the representative of the plaintiff. It has also sought damages the amount of Rs 20,01,000/- besides rendition of accounts of profits, illegally earned by them.