04 May 2022

BULGARI SPA VS NOTANDAS GEMS PRIVATE LIMITED

FACTS:

The parties to the present suit deal in high end luxury jewellery and the plaintiff has filed the suit to restrain the defendants from infringing their trademarks and design. The plaintiff claims that the defendant is infringing its:

  1. trademark ‘SERPENTI’ that is part of four of the plaintiff’s trademarks,
  2. device mark of snakehead, and
  3. design of its wristwatch and bracelet.

The plaintiff held valid and subsisting registrations in the aforementioned marks and logo on the date of judgment.

CONTENTIONS OF THE PLAINTIFF:

The plaintiff contended that the mark ‘SERPENTI’ has become ‘indelibly identified’ with their jewellery and that the defendant’s trade dress is deceptively similar to the plaintiff’s. They further claim that the plaintiff’s mark is not hit by the provisions of Section 17 of the Trade Marks Act, 1999 which prohibits an applicant from claiming exclusivity over a part of composite mark if the same has not been separately registered. The plaintiff proposed that the word ‘SERPENTI’ has gained a reputation since the 1940s and constitutes a dominant part of their composite mark, making it eligible to claim infringement. The plaintiff contends that the case is of “idea infringement” by the defendant as the trademark ‘SERPENTI’ is neither common to the trade nor descriptive of the goods it is used for. In respect of logo infringement, the plaintiff contends that is it sufficient to prove infringement, if the defendant’s logo as similar to the plaintiff’s, as a whole.

CONTENTIONS OF THE DEFENDANT:

While denying the Plaintiff’s contentions, the defendant claims that the plaintiff’s trademark is a composite mark and therefore, no exclusivity can be claimed on part of it. They further claim that the plaintiff and defendant’s marks are not phonetically similar and the word ‘SERPENTI’ describes the shape of goods in question and is common to the trade since there are several jewellery manufactures using the form of serpent/snake. The defendant contends that they are not infringing the plaintiff’s design of snakehead since their design is completely different from the plaintiff’s. The defendant also contended that the Delhi High Court did not have territorial jurisdiction to adjudicate the suit.

JUDGMENT:

The Hon’ble High Court, issued an interim injunction restraining the defendant and their representatives, agents, heirs, partners, etc. from using the mark ‘SERPENTINE’ in respect of their products and observed the following:

  1. All Courts that have jurisdiction over territories, from which commercial transactions can be concluded across an interactive website, would prima facie have territorial jurisdiction to adjudicate for infringement.
  2. The defendant uses the mark ‘SERPENTINE’ in the same nature of goods and caters to the same class of customers as that of the plaintiff and that there is phonetic similarity between the marks ‘SERPENTI’ and ‘SERPENTINE’.
  3. The plaintiff has coined the mark ‘SERPENTI’, which is fanciful and cannot be claimed to be descriptive in context of bracelets. The bracelets are not common in trade to be manufactured and sold in serpent form and shape.
  4. ‘SERPENTI’ on the basis of reputation, can be treated as the dominant part of the plaintiff’s composite mark and therefore, can make a case of infringement.
  5. There is no infringement of the device mark of snakehead by the defendant since the defendant’s mark is “completely distinct in shape, configuration, contour and even visual appearance” from that of the plaintiff’s.
  6. The design of defendant’s bracelet does not infringe registered design held by the plaintiff in either the bracelet or the wristwatch. Since no averment to passing off has been mentioned in the plaint, there cannot be a case of passing off of the plaintiff’s design.