Full Text
HIGH COURT OF DELHI
Date of Decision: 15th May, 2025
LOUIS VUITTON MALLETIER .....Plaintiff
Through: Ms. Pooja Dodd and Mr. Anuraj Tirthankar, Advocates.
Through:
JUDGMENT
1. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademarks of the plaintiff, passing off along with other ancillary reliefs.
PROCEEDINGS IN THE SUIT
2. Summons in the suit were issued to the defendants on 5th October,
2023. On the same date, an ex-parte ad interim injunction was passed in favour of the plaintiff and against the defendants.
3. The learned Joint Registrar has recorded in the order dated 6th May, 2024 that the defendant no.1 was deemed to have been served on 16th November, 2023 and the defendant no.3 was served on 15th November, 2023 and closed their right to file written statement since the maximum permissible period to file the same had lapsed. He further recorded the defendant no.2 would be deemed to have been served on 21st March, 2024.
4. Vide order dated 3rd October, 2024, all the defendants were proceeded against ex-parte.
5. On 12th November 2024, the present suit was decreed against the defendants in terms of the prayer clause contained in paragraphs no.41(a), (b), (c) and (d) of the plaint. On the said date, counsel for the plaintiff pressed for leading evidence in respect of the relief for declaration of the mark ‘LV (i.e., string of letters L and V)’ as a well-known mark as prayed for in prayer clause 41(e) of the plaint.
6. Accordingly, the plaintiff was directed to file an affidavit in support of its aforesaid prayer within two weeks.
7. In terms of the aforesaid order, an affidavit dated 31st January, 2025, of the plaintiff’s witness Mr. Nandan Singh Syunary was filed.
8. On 25th April, 2025, the plaintiff’s evidence was recorded by the learned Joint Registrar.
DECLARATION OF THE MARK ‘LV (I.E., STRING OF LETTERS L AND V)’ AS WELL-KNOWN TRADE MARK
9. The plaintiff-Louis Vuitton Malletier (“LVM”) is a company that manufactures, sells and distributes high-quality clothing, footwear, cosmetics, luggage and fashion accessories for men and women.
10. The plaintiff traces its history to the year 1854 when its founder, Mr. Louis Vuitton, established its business. Today, the plaintiff is part of the French Conglomerate, LVMH (Louis Vuitton Moet Hennessy), which owns a portfolio of 75 world-famous brands. In 1896, Mr Vuitton’s son created the highly distinctive logo featuring an interlocked string of letters L and V. The ‘LV’ Monogram comprises the initials of Mr. Louis Vuitton, formed by the interlocking of the letters ‘L’ and ‘V’, accompanied by three floral motifs. The hand-drawn typeface of the letter in the toile monogram design has remained unchanged since its inception and is partially inspired by Roman typography. At present, the plaintiff’s ‘LOUIS VUITTON’ mark, the toile monogram design, and the interlocking ‘LV’ logo are amongst the most globally recognised marks and constitute an integral and inseparable element of the plaintiff’s brand identity. ‘Louis Vuitton’ has over time been consistently shortened to ‘LV’ in reference to its business activities.
11. The plaintiff is considered as the world's most valuable luxury brand, ranked as the twelfth most valuable brand across all industries by credible fashion rating entities, and has a brand value of approximately USD 47.[2] billion, as on date. The popularity of the plaintiff can be measured from the fact that it regularly features in the list of top fashion brands in surveys conducted by different credible fashion rating entities.
12. In India, the plaintiff has several registrations for its different trademarks. The earliest registrations for the ‘LV’ marks date back to August 8, 1985. In particular, the plaintiff places reliance on the following registrations for its ‘LV’ marks in India:
1. LOUIS VUITTON 448229 25 8th August,
2. LOUIS VUITTON 2315405 3, 4, 6, 8, 9, 12, 25, 26 and 34 13th April, 2012
3. 441452 18 8th August,
4. 978462 9 20th December
5. 2316815 3, 4, 6, 8, 9, 12, 25, 26, and 34 17th April, 2012
6. 4879049 9 and 10 9th December
7. 3054827 9, 14, 18, 25, and 41 26th November
8. 3888470 9, 14, 18, and 25 8th March, 2018
9. 4086627 3, 9, 14, 16, 18, 24, 25, 35, 38, 41 17th July, 2018
12.1. Copies of the registration certificates/status sheets for the abovementioned marks extracted from the online records of the Trade Marks Registry have been exhibited as Exhibit PW-1/5 (Colly). Copies of the registration obtained by the plaintiff in different jurisdictions have been exhibited as Exhibit PW-1/6 (Colly).
13. The plaintiff’s have successfully obtained orders by this Court against the infringers wherein the coordinate benches of the court have observed the ‘LOUIS VUITTON’ and ‘LV’ marks as ‘well-known marks’, which have been filed as document 8 of the documents filed along with the plaint. Further, the ‘LOUIS VUITTON’ mark is included in the list of ‘well-known marks’ of the Trade Marks Registry of India, and the same has been filed as document no. 9 of the documents filed along with the plaint.
14. Section 11(6) of the Trade Marks Act, 1999 (hereinafter the ‘Act’) sets out the factors to be considered while determining whether a mark is a well-known trade mark. For ease of reference, the same is set out below: “Section 11 – … (6) The Registrar shall, while determining whether a trade mark is a well known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including—
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.”
15. Section 11(7) of the Act lists the factors that the Registrar of Trade Marks need to consider while deciding whether a mark is known or recognised in the relevant section of the public for the purposes of Section 11(6) of the Act. The same is also set out below: “Section 11 – … (7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account—
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.”
16. Counsel for the plaintiff has drawn the attention of this Court to the following data, from the documents filed in the present suit, to satisfy each of the factors enumerated in the aforesaid sub-sections as being relevant in deciding whether the ‘LV’ marks (i.e. string of letters L and V) are eligible to be declared as well-known trade marks:
I. Knowledge and recognition in the relevant section of the public in
India obtained because of promotion [Section 11(6)(i)] a. Extracts from the plaintiff’s website have been exhibited as Exhibit PW-1/1 (Colly). Extracts from the plaintiff's website showing the use of ‘LV’ marks have been exhibited as Exhibit PW-1/3 (Colly). b. Return hits of the ‘LV’ marks on the leading search engines have been exhibited as Exhibit PW-1/2 (Colly). c. Copies of third-party articles and extracts from social media highlighting the use of ‘LV’ have been exhibited as Exhibit PW- 1/4 (Colly). d. Distinguished individuals belonging to the upper echelons of Indian society used the products crafted by the plaintiff. In early 1926, the plaintiff created a tea case for the Maharaja of Baroda which features the ‘LV’ logo. Copy of an article evidencing that the plaintiff’s products bearing the ‘LV’ marks were known in India as their goodwill had percolated into India as early as l900s has been exhibited as Exhibit PW-1/7. e. Brand reports conducted by different credible fashion rating entities, featuring the ‘LV’ marks in the list of top fashion brands in surveys, have been exhibited as Exhibit PW-1/8 (Colly). f. Plaintiff’s Financial Report for 2023, evidencing the growth and presence in markets worldwide, is annexed and marked as Exhibit PW-1/10. II.The duration, extent and geographical area of any use of that trade mark [Section 11(6)(ii)] a. Copies of the registration certificates/status sheets for the ‘LV’ marks extracted from the online records of the Trade Marks Registry have been exhibited as Exhibit PW-1/5 (Colly). Copies of the registration obtained by the plaintiff in different jurisdictions for its ‘LV’ marks have been exhibited as Exhibit PW-1/6 (Colly). b. Copies of invoices selected at random showing sales of the products under the ‘LV’ Marks for the FY 2022-2024 in India have been exhibited as Exhibit PW-1/9. The plaintiff has given its sales turnover for the financial years 2022- 24, which is set out below: PRODUCTS BEARING LV MARKS TOTAL SALES TURNOVER (2022-2024) (IN RUPEES)
LV INITIALES BELT 262,571,875 LV OPTIC BELT 65,588,780 LV JEWEL SUNGLASSES 48,490,678 LV WAIMA 37,897,882 LV 3 STEPS BELT 32,203,372 LV TRAINER SNEAKER 26,802,967 LV ASH 15,204,661 DAMIERLVBELT 15,184,322 LV GOLDEN MASK 7,755,085 LV SHAKE BELT 6,758,483 LV MATCH 6,271,610 LV ICONIC EARRINGS 5,556,796 LV FLORAGRAM BRACELET 5,543,690 LV RISE 5,188,560 LV SLIM BRACELET 5,175,146 LV CLASH 4,881,355 LV LOVERS PERFUMES 3,430,170 c. Plaintiff’s Financial Report for 2023, evidencing the growth and PW-1/10. d. Distinguished individuals belonging to the upper echelons of
III. The duration, extent and geographical area of any promotion of the trade mark including advertising or publicity and presentation, at fairs, or exhibition of the goods or services to which the trade mark applies [Section 11(6)(iii)] a. Copies of third-party articles and extracts from social media highlighting the use of ‘LV’ have been exhibited as Exhibit PW- 1/4 (Colly). b. Brand reports conducted by different credible fashion rating entities, featuring the ‘LV’ marks in the list of top fashion brands in surveys, have been exhibited as Exhibit PW-1/8 (Colly). c. Plaintiff’s Financial Report for 2023 evidencing the growth and PW-1/10. d. Plaintiff’s products featuring the ‘LV’ marks are routinely endorsed by well-known figures in the entertainment and fashion industries, such as Madonna, Sean Connery, Michelle Williams, Jennifer Connelly, Angelina Jolie, Gisele Bündchen, David Bowie, and Deepika Padukone (Louis Vuitton’s first Indian brand ambassador) [Para 16, Pg 13 of the Affidavit] e. The plaintiff has also led extensive advertising campaigns in renowned fashion publications such as Elle, Vogue, and Vanity Fair. The plaintiff has also engaged prominent creatives in its marketing initiatives—for instance, its first television commercial was directed by acclaimed French director Bruno Aveillan and translated into thirteen languages. Additionally, celebrated fashion photographer Annie Leibovitz has photographed several internationally recognised personalities, including Steffi Graf, Andre Agassi, and Catherine Deneuve, for the plaintiff’s print advertisements. [Para 16, Pg 13 of the Affidavit]
IV. The duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark [Section 11(6)(iv)] a. Return hits of the ‘LV’ marks on the leading search engines have been exhibited as Exhibit PW-1/2 (Colly). b. Copies of the registration certificates/status sheets for the ‘LV’ marks extracted from the online records of the Trade Marks Registry have been exhibited as Exhibit PW-1/5 (Colly). Copies of the registration obtained by the plaintiff in different jurisdictions for its ‘LV’ marks have been exhibited as Exhibit PW-1/6 (Colly). c. Distinguished individuals belonging to the upper echelons of d. Plaintiff’s Financial Report for 2023 evidencing the growth and PW-1/10.
V. The record of successful enforcement of the rights in that trade mark in particular, the extent to which the trade mark has been recognised as a well-known trade mark. a. Copies of the orders passed by this Court against infringers wherein the coordinate benches of the court have observed the ‘LOUIS VUITTON’ and ‘LV’ marks as ‘well-known marks’ are filed as document 8 with the plaint.
17. I have heard the submissions made by counsel for the plaintiff and gone through the material placed on record.
18. On the strength of the averments made in the plaint as well as the nature and volume of the documents placed on record, I am of the view that the plaintiff has established well beyond doubt that the LV (i.e. string of letters L and V) mark have acquired the status of well-known trade marks within the meaning and scope of Section 2(1)(zg) of the Act.
19. The standalone letters ‘L’ and ‘V’, as the central elements of the interlocked logo, have acquired substantial recognition and distinctiveness, such that their use immediately evokes an association with the plaintiff’s products, owing to their long-standing connection with the plaintiff’s heritage and goodwill.
20. The letters ‘L’ and ‘V’ have evolved beyond merely functioning as an acronym for ‘LOUIS VUITTON’ and have come to serve as independent and distinctive source identifiers of the plaintiff’s luxury brand. This distinctiveness is the result of extensive and prominent use in global advertising campaigns, product branding, and cultural references, further reinforcing the association of ‘L’ and ‘V’ with the plaintiff. In addition to their registration as part of the interlocked monogram, the combination of the letters ‘L’ and ‘V’ has also been prominently and independently used in connection with a wide array of the plaintiff’s luxury goods, including leather products, clothing, eyewear, watches, and accessories. It is pertinent to note that the mark ‘LOUIS VUITTON’ has been declared as a wellknown mark by the Registrar of Trade Marks, and the mark ‘LV’ serves as an acronym for the name ‘LOUIS VUITTON’.
21. The long duration for which the ‘LV’ mark have been in use by the plaintiff, wide geographical area of their use, their knowledge among the general public and their goodwill and reputation due to the extensive promotion, publicity and extensive revenue generated by the plaintiff, in India as well as other countries, the ‘LV’ marks have achieved the status of well-known trade marks. Accordingly, the plaintiff fulfils all the criteria set out in Section 11(6) read with Section 11(7) of the Act for declaring the ‘LV’ marks as well-known trade marks in respect of leather goods, apparel, footwear, watches and accessories.
22. Accordingly, in terms of prayer clause contained in paragraph no.41(e) of the plaint, a decree of declaration is passed declaring the ‘LV’ mark (i.e. string of letters L and V) as well-known trade mark within the meaning of Section 2(1)(zg) of the Act.
23. Let the decree sheet be drawn up. AMIT BANSAL, J MAY 15, 2025