Delhi High Court: In a case where application was filed under Order 39 Rules 1 and 2 read with Section 51 of the Civil Procedure Code, 1908 (Code) in a trademark and copyright infringement suit, the Single Judge Bench of Jyoti Singh, J. Passed an Order granting ex-parte ad-interim injunction to American Eagle and restraining Ektarfa Garments from selling any counterfeited products.
Plaintiffs incorporated in United States of America (USA), were owned subsidiaries of a common parent company, American Eagle Outfitters, Inc. (collectively called ‘plaintiff’), which had been engaged in business of designing, marketing, and selling readymade clothing, footwear, fashion accessories and related goods, around the world, including India. Plaintiff used one or more eagle device marks on readymade clothing, fashion accessories and related goods and services, such as retail store services and online retail store services. Plaintiff had obtained trade mark registrations for its trade marks in over 65 countries.
Plaintiff stated that by virtue of the provisions of the law in USA, they are the claimant in the copyright in its trademark and were entitled to protection in India by virtue of Berne Convention, 1886 and the International Copyright Order, 1999. Plaintiff was the first owner of copyright in trademark by virtue of the Copyright Act, 1957 and was also the owner of ‘FLYING EAGLE’ Device Mark in India. Moreover, plaintiffs’ goods bearing their trade marks were sold in over 1300 retail stores including India and were also sold through www.ae.com website. Further, plaintiff had spent huge amount of money on its advertising initiatives and over the years, the American Eagle Outfitters mark had come to be commonly known as American Eagle.
Submissions on behalf of the Plaintiff
It was submitted that defendants were engaged in the business of manufacturing, selling/offering for sale counterfeit readymade clothing bearing plaintiff’s marks. Moreover, plaintiff’s ‘American Eagle’ mark also featured in the product description of the counterfeit clothing offered for sale on defendant’s website www.ektarfa.co.in/www.ektarfa.com, mobile app and social media pages such as Facebook, Instagram, etc.
Counsel for the plaintiff contended that plaintiff was a registered proprietor of its trademark in various clauses, therefore, considering the goodwill of the plaintiff’s mark, any unauthorized use by the defendants of identical or deceptively similar mark would lead to trade mark infringement. Further, defendants were clearly misrepresenting the customers and deceiving them into believing that there was a trade connection between the plaintiffs and the defendants, with a view to free ride on plaintiff’s reputation. It was also submitted that plaintiff has a copyright in the original artistic work in the ‘Eagle Device’, which was the most prominent element of defendant’s mark and thus there was an infringement of the copyright under Section 51 of the Copyright Act, 1957.
Analysis, Law, and Decision
The Court opined that plaintiff had made out a prima facie case for grant of ex parte ad interim injunction and plaintiff was likely to suffer irreparable harm if the injunction is not granted. Thus, the Court held that “defendants, their partners, managers, employees, agents, dealers, licensees, companies, retailers, wholesalers, distributors or any persons/entities that were under the control of the Defendants or were related or affiliated to the Defendants, as the case may be, and all others, acting for and on behalf of the Defendants, were restrained from manufacturing, marketing, offering for sale and selling, whether directly or indirectly, and whether on the Internet or otherwise, any goods, including, in particular, readymade garments, bearing the plaintiff’s marks ‘American Eagle Outfitters’ and ‘American Eagle’ and marks that incorporate the plaintiff’s marks or any other mark that was identical/deceptively similar in any manner whatsoever, amounting to trademark infringement, copyright infringement and passing off the trademarks of the plaintiff, till the next date of hearing”.
[Retail Royalty Company v. Ektarfa Garments, 2022 SCC OnLine Del 3882, decided on 14-11-2022]
Advocates who appeared in this case :
For the Plaintiff(s): Advocate Urfee Roomi;
Advocate Janaki Arun;
Advocate Anubhav Chhabra;