Can a business deliberately ride upon the reputation of a globally recognized trademark by selling counterfeit products bearing identical branding and yet escape liability merely because the products are sold through local retail channels? This question formed the central issue before the Saket District Court, New Delhi in The Polo/Lauren Company L.P. v. Buti Button & Anr.1, where the Court was required to examine the scope of trademark infringement, counterfeiting and judicial protection available to internationally reputed brands under the Trade Marks Act, 1999.
The judgment assumes significance because it reiterates the stringent protection according to registered trademarks under Sections 28 and 29 of the Trade Marks Act, 1999 while simultaneously emphasizing that counterfeiting constitutes one of the most egregious forms of trademark infringement. The Court also examined the principles governing territorial jurisdiction under Section 134 of the Trade Marks Act 1999 and states the growing judicial approach favoring punitive damages in cases involving deliberate commercial deception and counterfeit trade practices.
Emergence of the Counterfeit Trademark Dispute
The plaintiff asserted ownership over several registrations relating to the “POLO” and “RALPH LAUREN” trademarks in India and abroad and contended that the marks had acquired substantial goodwill through extensive international use in relation to clothing and lifestyle products. The dispute emerged when the plaintiff discovered that counterfeit products carrying deceptively similar branding were allegedly being sold by the defendants. The plaintiff argued that the defendants had dishonestly adopted the impugned marks to exploit the plaintiff’s commercial reputation and consumer recognition.
Considering the seriousness of the allegations, the District Court appointed a Local Commissioner to inspect the defendants’ premises. During the inspection, counterfeit goods bearing the impugned marks were recovered and photographic evidence was placed before the Court, strengthening the plaintiff’s allegations of counterfeiting.
Territorial Jurisdiction Under the Trade Marks Act
The defendants challenged the maintainability of the suit by arguing that the Court lacked territorial jurisdiction. The Court examined Section 134 of the Trade Marks Act, 1999, this provision creates an exception to the ordinary rule under Section 20 of the Code of Civil Procedure, 1908. Referring to Indian Performing Rights Society Limited v. Sanjay Dalia2, the Court observed that Section 134 was enacted to facilitate effective enforcement of intellectual property rights. Since the plaintiff’s products were commercially available within Delhi, the Court held that territorial jurisdiction was properly established.
Trademark Registration and Infringement
The Court held that trademark infringement must be assessed from the perspective of an ordinary consumer and depends on whether the impugned mark is deceptively similar and likely to cause confusion. Finding that the defendants had used visually and structurally similar marks on identical goods, along with a similar overall trade presentation, the Court concluded that there was a likelihood of consumer confusion. This approach is consistent with the principle laid down in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai3 that trademark disputes should be judged based on the overall consumer impression. The Court observed that the defendants had intentionally attempted to commercially benefit from the plaintiff’s established goodwill by marketing counterfeit products bearing substantially identical branding.
The judgment is consistent with Puma SE v. Mahesh Kumar4, where the Delhi High Court recognized counterfeiting as one of the gravest forms of trademark infringement warranting strict judicial intervention. Apart from granting a permanent injunction restraining further use of the infringing marks, the Court awarded damages amounting to ₹5 lakh against the defendants. The Court emphasized that damages in counterfeit trademark disputes perform not merely a compensatory function but also a deterrent one intended to discourage future violations. This reasoning reflects the principles articulated in Time Incorporated v. Lokesh Srivastava5, where the Delhi High Court observed that punitive damages are necessary in cases involving deliberate commercial dishonesty and intellectual property piracy.
Conclusion
The decision in The Polo/Lauren Company L.P. v. Buti Button & Anr. reinforces the protection available to registered trademark proprietors under the Trade Marks Act, 1999. Through its application of Sections 28, 29, 134 and 135, the Court held that unauthorized use of identical or deceptively similar marks on competing goods constitutes actionable infringement. The ruling also demonstrates the evidentiary significance of local commission proceedings in establishing infringing activity and reflects the judicial approach of granting both injunctive relief and damages where violations are established. The judgment therefore serves as another illustration of the courts’ commitment to effective enforcement of trademark rights under the statutory framework.
Citations
Expositor(s): Adv. Aparna Shukla,
