Court grants permanent relief to Samsonite in respect of their Trademark “American Tourister”
In the case of Samsonite IP Holding v. A.K. Prasad, a Delhi District Court issued a permanent injunction in favour of the Plaintiff, restraining the Defendant from infringing the Plaintiff’s trademark and copyright or passing off the impugned goods of the Defendant as those of the Plaintiff. Vide the said Order, the Court restrained the Defendant from using, issuing, selling, soliciting, exporting, displaying, advertising or by any other means, dealing with or using the mark “AMERICAN TOURISTER” or any other mark identical with or deceptively similar word/label/mark/device to the Plaintiff’s trademark.
The Plaintiff claimed well-known status of their brand and stated that they have a strong presence in over 100 countries across the world. They also claimed that their trademarks/labels, including “AMERICAN TOURISTER” have become sufficiently distinctive in the trade to be capable of protection and have become synonymous and distinctive indicum of the Plaintiff in relation to their goods, specifically, luggage, business and computer bags, outdoor and casual bags, travel accessories and slim protective cases for personal electronic devices.
The Plaintiff alleged that they came across the impugned goods of the Defendant in a market in New Delhi bearing the falsified trademark/label which was identical with and deceptively similar to the Plaintiff’s mark, “AMERICAN TOURISTER”, in each and every respect including phonetic, visual and structural similarity. The counterfeit goods also seemed to incorporate the basic idea and essential features of the mark/label belonging to the Plaintiff. The Plaintiff thus claimed that Defendant’s actions were detrimental to the distinctive character and goodwill of the Plaintiff’s well-known trademark.
The Court considered the matter and decided the case on its merits, without the presence of the Defendant and granted a decree of permanent injunction in favour of the Plaintiff. The Court held that, ‘the plaintiff has succeeded in bringing on record that the trademark American Tourister is registered in his favour and the defendant was found using the trademark of plaintiff by falsifying the mark of plaintiff and was passing off his product as that of plaintiff. Accordingly, I am of the opinion that the defendant is guilty of infringing the trademark of the plaintiff and passing off laptop bags as his goods and the plaintiff is entitled to permanent injunction’.
Furthermore, the Court also granted an order of delivery up in favour of the Plaintiff. An order of rendition of accounts was not granted because the Court observed that since the Defendant did not participate in the proceedings, his accounts could not be sought, and rendition of accounts is not possible in such circumstances.