HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO. KG v. MS. SHEETA SABHARWAL T/A BOSS BIG BOSS

1. Present suit has been filed for permanent injunction restraining infringement of trademarks, passing off, unfair trade practices, delivery up, rendition of accounts and damages. Today, learned counsel for plaintiff is permitted to re-number the prayer clause after initialing the same. The corrected prayer clause is reproduced hereinbelow:- 2019:DHC:217

2. Vide order dated 19th November, 2018, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendant. The relevant portion of the ex-parte injunction order is reproduced hereinbelow:- “Consequently, till further orders, this Court restrains the defendant its partners, affiliates, subsidiaries, franchisees, representatives and assigns from manufacturing, promoting, advertising, displaying, showcasing selling and offering for sale any product bearing the impugned mark BOSS BIG BOSS/BIG BOSS or any other mark deceptively or confusingly similar to the plaintiff’s trade marks BOSS, BOSS HUGO BOSS and other formative BOSS marks as a trade mark or a trade name or in any manner whatsoever, either as a trademark or part of a trade mark, trade name or part of a trade name, corporate name or part of a corporate name, company name or part of a company name, or a domain name or part of a domain name or in any other manner whatsoever.”

3. Since despite service none entered appearance on behalf of the defendant, it was proceeded ex parte on 20th December, 2018.

4. At this stage, learned counsel for the plaintiff gives up prayers A, B (v), C (i) to (iii), (v), (vi) and D of the prayer to the suit. The statement made by learned counsel for plaintiff is accepted by this Court and plaintiff is held bound by the same.

5. This Court is also of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., 2013 SCC OnLine Del 508 has held as under:- “I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-inchief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examinationin-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction.”

6. In the plaint, it is averred that plaintiff is a global manufacturer and merchant in clothing and apparel for men and women, luxury items, fashion accessories, perfumes, leather goods, cases and bags, undergarments, sun glasses etc. in India and throughout the world.

7. It is further averred that plaintiff is a proprietor of BOSS, HUGOBOSS,BOSSHUGO BOSS and other BOSS formative marks. It is stated that the predecessor in title of the plaintiff adopted the marks BOSS, HUGOBOSS and other BOSS formative marks as the most essential part its business name and the company HUGO BOSS GmbH was incorporated in Germany in 1948. It is stated that the plaintiff adopted the mark BOSS HUGO BOSS in 2003. The marks BOSS, BOSSHUGO BOSS and other BOSS formative marks are registered in Classes 9, 14, 18, 25, and 35 under the Trade Marks Act,

1999. Vide assignment deed dated 23rd December, 2004, the aforesaid registrations were assigned in favour of the plaintiff.

8. It is also averred in the plaint that plaintiff has been extensively advertising its products under the aforesaid marks in major international magazines such as Time, News Week, Fortune, The Business World, Vogue, Vanity Fair etc.The plaintiff has also been advertising its marks in the leading dailies of India such as The Hindustan Times, The Times of India and The Economic Times. The publication expenses incurred by plaintiff in India since November 2003 is Rs.8,16,733/-.

9. In the plaint, it is stated that plaintiff is the owner of the website www.hugoboss.com which exclusively sells plaintiff's products under the aforesaid marks.

10. It is the plaintiff's case that in 2016 the revenue generated by the plaintiff under aforesaid trademarks was € 2.692.846.707 worldwide and € 2.180.420 in India. The plaintiff incurred expenses in 2016 of € 23.[5] million towards advertising and promoting the goods under the aforesaid marks.

11. Learned counsel for the plaintiff states that in July, 2018 the plaintiff’s counsel came across a store bearing the impugned name BOSS BIG BOSS, located in New Delhi, which is virtually identical to the plaintiff’s well-known trade marksBOSS and BOSS HUGO BOSS. Upon further investigations it was revealed that the defendants operated two Facebook pages under the names ‘Bigg Boss Branded Clothes’& ‘DS BigBoss’, which prominently displayed the hoarding of the defendant’s store as its profile and cover photo. It is stated that the defendant also operates a web page http://big-boss-clothesshowroom.business.site, wherein the defendant claims to be a ‘Bigg Boss Designer Clothes Showroom’. Further investigations revealed that the store is offering for sale multi branded clothes and high fashion products including designer outfit & kurtas, tops, jeans, ladiesreadymade garments etc. A pictorial representation of the plaintiff and defendant’s marks is reproduced hereinbelow:-

12. Learned counsel for the plaintiff states that a physical investigation conducted by the counsel for the plaintiff revealed that the defendant adopted the impugned mark a year ago. However the same could not be verified. He states that a conversation with the store manager revealed that the defendant claims to be only using the impugned mark/name BIGG BOSS and BOSS BIG BOSS for the name of its store and does not sell products under the impugned marks.

13. In the opinion of this Court, the defendant has no real prospect of defending the claim, as it has neither entered appearance nor has it filed its written statement. Further, the plaintiff is the registered owner of the trade marks in question.