Delhi High Court: Plaintiff, Aero Club filed the present suit, seeking an injunction against defendant, Sahara Belts restraining them from manufacturing, offering for sale, selling, advertising, directly or indirectly any products bearing the registered trade mark ‘WOODLAND’ of plaintiff. Prathiba M. Singh, J.*, restrained defendant by way of permanent injunction from manufacturing, selling, offering for sale, advertising or in any manner selling any products bearing the ‘WOODLAND’ word mark ‘TREE device 
, ‘WOODLAND’ label or any other mark which was identical or deceptively similar to plaintiff’s mark. The Court held that defendant was liable to pay damages of Rs. 10,00,000 and costs of Rs. 1,00,000 to plaintiff.
Background
Plaintiff adopted the ‘WOODLAND’ mark in 1992 along with a distinctive device. The said mark was used for manufacture, sale and export of various products including footwear, apparel products, lifestyle products like belts, wallets, shoes, shirts, T-shirts etc. The mark ‘WOODLAND’, ‘WDL’, ‘TREE device 
’ and ‘WOODLAND’ label were registered by plaintiff. Plaintiff submitted that the ‘Tree Device’ and ‘Woodland Label’ of plaintiff were also protected for its original artistic works under Section 2(c) of the Copyrights Act, 1957.
Plaintiff came to know that defendant, Sahara Belts was selling counterfeit ‘WOODLAND’ products and so plaintiff appointed an investigator, who revealed that the shop was owned by one Javed Alam who was marketing and selling counterfeit products i.e., belts, belt-buckles and wallets bearing the registered ‘WOODLAND’ mark.
The Court, vide an order dated 12-04-2019, passed an ex-parte ad interim injunction and appointed a local commissioner to affect a search and seizure of the infringing products at defendant’s premises. The Local Commissioner’s report dated 03-0502019 revealed that a large quantum of counterfeit products like belts, wallets and belt-buckles were found at defendant’s premises.
Analysis, Law, and Decision
The Court observed that defendant was selling infringing products with an identical ‘WOODLAND’ mark, logo, tree device and packaging as that of plaintiff. Further, more than 11,000 counterfeit products were seized from defendant’s premises consisting of wallets, bags, belts, belt-buckles, etc. The Court opined that it was clear that defendant was aware that products sold by him were counterfeit products and thus, it could not be sold in this brazen manner.
The Court relied on ML Brother LLP v. Maheshkumar Bhuralal Tanna, 2022 SCC OnLine Del 1452, wherein it was held that “Local Commissioner’s report could be read in evidence in terms of the provisions of Order XXVI Rule 10(2) Civil Procedure Code, 1908 where it was not challenged by any party”.
Thus, the Court restrained defendant by way of a permanent injunction from manufacturing, selling, offering for sale, advertising or in any manner selling any products bearing the ‘WOODLAND’ word mark ‘TREE device 
, ‘WOODLAND’ label or any other mark which was identical or deceptively similar to plaintiff’s mark. The Court held that the seized products should be handed over by defendant to plaintiff’s representative on 10-10-2023 and plaintiff was free to destroy or donate the said products to some charity, if the same were usable.
The Court, after considering the quantum of seized goods being more than 11,000 products, opined that it was clear that defendant had indulged in deliberate piracy and manufactures/sales of counterfeit products. The Court relied on Koninlijke Philips N.V. v. Amazestore, 2019 SCC OnLine Del 8198 and opined that plaintiff was liable to be awarded damages. The Court opined that defendants use of the ‘WOODLAND’ mark and logo on substandard goods not only violated plaintiff’s statutory and common law rights but also jeopardized plaintiff’s brand equity and diluted its marks. The Court also opined that sale of counterfeits destroyed the market for genuine goods and might render the trade mark and brand itself completely useless as large-scale piracy of a brand reduced the value of the brand, and the sale of such counterfeit goods also goes against public interest.
The Court held that defendant was liable to pay damages of Rs. 10,00,000 and costs of Rs. 1,00,000 to plaintiff.
[Aero Club v. Sahara Belts, 2023 SCC OnLine Del 7466, decided on 22-11-2023]
*Judgement authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiff: Prithvi Singh, Devyani Nath, Advocates
For the Defendant: Bhuvneshwar Tyagi, Advocate
