Delhi High Court takes a step forward in strengthening the nonconventional trademark jurisprudence

Introduction

Changing consumer sensibilities have led brands to redefine their business strategies and attempt to create indispensable assets. This has played an integral role in the augmentation of unique forms of intellectual property. A recent judgement of the Hon’ble High Court of Delhi in the case of Levi Strauss and Co. v. Imperial Online Services Private Limited & Ors.[1], has granted permanent injunction in favour of the Plaintiff for its stitching design of the Levi’s jeans pocket, known as the ‘Arcuate Stitching Design’ mark.

Background

The Plaintiff claimed that they adopted the ‘Arcuate Stitching Design’ mark in the year 1873 and it has since been used on all textiles including denim jeans manufactured by the Plaintiff. Further, the Plaintiff alleged that the Defendant was selling their denim jeans with the identical ‘Arcuate Stitching Design mark’ through a website www.urbanfashion.com as well as vide popular third-party platforms such as Flipkart, Amazon and Myntra.

The Plaintiff also argued that the Defendant was continuing to infringe upon its rights despite being sufficiently apprised of the same in the past. The Plaintiff placed reliance on the undertakings issued by the Defendant in the past, agreeing to cease use of the Plaintiff’s mark. The Plaintiff, additionally laid emphasis on the continuous act of infringement by the Defendant, being in apparent violation of the ad interim injunction order dated December 22, 2021, wherein the Defendant was restrained by the Court from “manufacturing, marketing, offering for sale and selling, whether directly or indirectly, and whether on the internet or otherwise, any goods, including, most prominently, denim jeans, bearing the Impugned Stitching Design mark which are deceptively similar to the Plaintiffs Arcuate Stitching Design mark…”.

Decision

With regards to the subject matter, the Court noted that, “Under the law of trade marks, the definition of `mark’ has evolved over time. Traditionally, trademarks included names, words, devices, logo, label/packaging, letters, numerals etc. However, this list of trademarks has expanded over the years to include colour, combination of colours, shape of goods, patterns of products, smell, and sound marks etc.”

Notably, the Court took into account the fact that the design in question was the stitching pattern incorporated on the Plaintiff’s products, representation of which is provided as follows:

With respect to the question of whether a stitching pattern or design should be worthy of receiving trademark protection, the Court noted that the decision should be based on whether the pattern has an “acquired meaning” or is distinctive per se.

The Court, in reaching its conclusion, also considered the decision of Lois Sportswear, USA, Inc. v. Levi Strauss & Co. wherein the U.S District Court for the Southern District of New York held that the “Levi’s arcuate mark is a strong mark that qualifies for a high degree of protection. In addition to its status as an incontestable registered mark, the Levi’s arcuate mark is a fanciful design which has no function other than as a source indicator...Evidence of sales success, advertising expenditures, and length and exclusivity of use are factors relevant to a determination of the strength of a mark…the Levi arcuate mark is not merely a fragment of a larger mark including the Levi name but instead has an independent degree of recognition and connection with Levi Strauss…”

It is also worth noting that the United States Court of Appeals, Second Circuit in Lois Sportwear, U.S.A., Inc. v. Levi Strauss & Co. had affirmed the above decision.

Furthermore, the Hon’ble Court in the present matter also considered another decision taken by the United States Court of Appeals, Ninth Circuit in the case of Levi Strauss Co. v. Abercrombie Fitch where the court had recognized the Plaintiff’s rights and the value of their trademark in the “Arcuate Stitching Design” mark.

Keeping the decisions made by the US courts in mind, the Hon’ble High Court of Delhi, in the present matter observed that “it is important to note that the trademark in question i.e., the ‘Arcuate Stitching Design’ mark has been used on jeans, pants, and trousers of the Plaintiff since the first pair of jeans were created by it in the year 1873 and it serves as a unique identifier in respect of the goods of the Plaintiff.”

Based on the reasons mentioned above, the Court granted a permanent injunction in favour of the Plaintiff, restraining the Defendant from selling products bearing the said mark or seeking any statutory rights by applying for trademarks or copyrights in respect of the ‘Arcuate Stitching Design’ mark. The Court also stated that if any such application has already been filed by the Defendant, it must be withdrawn within 30 days. Additionally, the Court awarded nominal costs to the tune of INR 4 lakhs in favour of the Plaintiff.

Comments

The interesting decision by the Delhi High Court has established that a stitching pattern is protectable as a trademark in India. In addition, this decision also seems to have paved the way for more non-conventional marks to enforce protection in the future. Considering section 2(m) of the Trademark Act, 1999 which defines a trademark as, “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours or any combination thereof;”, this decision broadens the scope of protection for non-conventional trademarks in the country.

For any queries, please feel free to write to the author, Ms. Vrinda Sehgal, at vrinda@iprattorneys.com.

[1] CS (COMM) 657/2021