Infringement and Passing off for Commercial Gain: Calvin Klein Fragrances

LexOrbis India

On July 21, 2023, a Single Judge Bench, in the matter of Coty Germany GMBH v. Xeryus Retail Private Limited & Anr. [CS(COMM) 1298/2018 & I.A. 8603/2023] decreed the suit in favour of the Plaintiff on the grounds of infringement and passing off. As far as the factual matrix goes, the issue arose between the Plaintiff and the Defendants on account of the unauthorized and illegal use of the marks , andby the latter. The Defendants were found to be using the Plaintiff’s reputed marks on their products and also sold testers of the perfumes manufactured by the Plaintiff, which were not intended for retail sale to customers. The Plaintiff asserted before the court that it was a reputed name in the field of perfumes and was also the holder of a number of “Calvin Klein” / “CK” formative registrations in class 3 in India, inter alia, dating back to 1992. The Plaintiff further submitted that its trademarks “Calvin Klein” / ”CK” were first adopted and founded on the basis of the name of its founder in the year 1967 and had been in use since then. It was also stated that the particular way of representing/using the Plaintiff’s marks in a special stylized manner was unique in itself, thereby constituting original artistic works within the meaning of the Indian Copyright Act, 1957, which were strongly associated with the Plaintiff, being duly entitled to protection. It was further stated by the Plaintiff that it sold a wide variety of fragrances under these marks which had become extremely popular amongst the public in general. The Plaintiff also operated the website, through which it disseminated information about its products and the brand, and the same was accessible globally.

The Plaintiff’s grievance was that the Defendants, through their websites and, were using the Plaintiff’s marks for their products and were also selling the testers of the Plaintiff’s perfumes. The main concern of the Plaintiff was that the Defendants engaged themselves in unfair trade practices which harmed the reputation of the Plaintiff as the tester products of the Plaintiff were not meant to be sold for commercial value but were intended to enable prospective customers to sample and analyse the fragrances before deciding to purchase them. The Defendants were earning money by luring the customers to buy these testers which were not meant to be sold, thereby hampering the goodwill and reputation of the Plaintiff. The mala fide intent of the Defendants and the dishonest adoption and use of the Plaintiff’s marks , andby them was also particularly asserted by the Plaintiff. It was also noted that the Written Statement filed by Defendants in this case was struck off vide an order of the court passed on November 8, 2019, on account of the unreasonable delay in filing the same beyond the statutory deadline of 120 days. Even afterwards, the Defendants repeatedly failed to cooperate and appear in the present matter and thus, vide an order dated February 13, 2023, the court proceeded ex-parte against the Defendants. It was held that the Defendants had failed to establish their case and the statements made in the Plaint were, therefore, deemed to be admitted. It was further held that the act of the Defendants showed that they had no substantial defence to offer. Further, the Plaintiff in its plaint had also prayed for an award of damages for a sum of Rs. 2,00,01,000/- [USD 240521 (approx.)]. The court held that the case made out by the Plaintiff established infringement by the Defendants as well as passing off of their goods and the Plaintiff’s testers as the Plaintiff’s products meant for commercial sale, thereby defrauding the purchasing public at large. The court further awarded costs of Rs. 1,00,000/- [USD 1203 (approx.)] in favour of the Plaintiff to be paid by the Defendants.



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