TOMMY HILFIGER LICENCING LLC Vs. IMPORTEXPORT & ORS

JUDGEMENT

(1.) The present suit for permanent and mandatory injunction has been filed by the Plaintiff seeking protection of its trademarks "TOMMY HILFIGER", "TOMMY", "TOMMY GIRL" and the "FLAG logo" (Plaintiff's trademarks). The Plaintiff was founded in the year 1977 and has been doing business in over 65 countries, through various subsidiaries. The Plaintiff's trademarks are registered in classes 3, 25, 9 and various other classes under the Trade Marks Act, 1999. The Plaintiff had also entered into an arrangement with one M/s GVM International in 2004 for sale of readymade garments and accessories in India. The Plaintiff claims that though the mark was originally created in the U.S., due to extensive use in India through the above mentioned franchise, the Plaintiff's marks are well known marks.

(2.) The allegation in the present suit is that Defendant No.1 and Defendant No.2 are selling infringing products bearing the Plaintiff's trademarks on the website of Defendant No.3 i.e. w w w. shopclues.com. The Plaintiff, in fact, made a purchase through the website on 5th July, 2014 and upon verifying the said T-shirt, it was found that the product was counterfeit. A legal notice was issued on 16th July, 2014 calling upon Defendants 1 and 3 not to use the impugned trademarks. In its reply dated 31st July, 2014, the Defendant No.3 claimed that it has removed the infringing products from the website. However, according to the Plaintiff, the products continued to remain on the website of the Defendants and hence the present suit came to be filed.

(3.) On 2nd September, 2014, an ex-parte ad interim injunction was granted in the following terms: