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2016 SCC OnLine Del 8 : (2016) 226 DLT 662 : (2016) 65 PTC
168

In the High Court of Delhi

(BEFORE MANMOHAN SINGH, J.)

Cartier International A.G. & Others .…. Plaintiffs

Mr. Pravin Anand, Adv. with Mr. Raunaq Kamath & Mr. Vishnu Rege,
Advs.
Versus
Gaurav Bhatia & Ors. .…. Defendants
Defendants are ex-parte.
CS (OS) No. 1317/2014
Decided on January 4, 2016
MANMOHAN SINGH, J.:— The plaintiffs have filed the present suit
seeking inter alia permanent injunction restraining infringement of
trademark, passing off, damages etc. It is alleged by the plaintiffs that
the defendants are operating an e-commerce website where they are
offering counterfeit products bearing the trademarks and logos of
various luxury brands, including those of the plaintiffs, for sale. The
defendants are ex-parte. The plaintiffs have produced the evidence by
way of affidavit of Pankaj Pahuja as PW-1. The same was tendered in
evidence as PW-1/A.
2. PW-1 has deposed that it has been signed on behalf of the
plaintiffs by Mr. Flavio Mascetti in his capacity of the constituted,
attorney of the plaintiff Companies. He identified the signatures of Mr.
Flavio Mascetti on the plaint at the points marked ‘C and ‘D’. It is
submitted that Mr. Flavio Mascetti is authorized to sign and verify the
plaint by virtue of Powers of Attorney executed in his favor by plaintiffs
which may be exhibited as Ex. PW-1/2 (colly).
3. The detailed affidavit of PW-1 has been filed on the lines of
averments made in the plaint. The plaintiff No. 1, Cartier International
A.G. is the holder and proprietor of the trademark CARTIER in relation
to, inter alia, a wide range of luxury products including watches,
jewellery, writing instruments and leather goods. Plaintiff No. 1 has
been engaged in manufacture and sale of luxury products under the
trademark CARTIER since 1847. On account of long, continuous and
extensive use coupled with the high quality standards maintained by
the plaintiff No. 1, the trademark CARTIER has acquired a distinct and
distinguished reputation so much so that the CARTIER brand is one of
the recognized luxury brands in the world. Apart from being plaintiff
No. 1's trademark, the word CARTIER also constitutes an integral and
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dominant part of plaintiff No. 1's corporate name/trading style. The

trademark/name CARTIER has thus become distinctive of plaintiff No.
1's business and products and is entrenched in the minds of the public,
including the Indian population at large, all of whom instantly and
unhesitatingly associate the mark/name CARTIER with the products
and business of plaintiff No. 1. The CARTIER brand is an important
source identifier of plaintiff No. 1 and its business as well as a carrier of
Plaintiff No. 1's reputation and associated goodwill. Internet extracts
pertaining to plaintiff No. 1 and the CARTIER brand have been
exhibited as Ex. PW-1/3 (colly).
4. The trademark CARTIER has also been recognized as a well-known
mark as provided under Section 2(zg) of the Trademarks Act, 1999 and
has consequently been incorporated in the list of well-known marks
maintained by the Trademarks Registry. A printout of the said list has
been exhibited as Ex. PW-1/4.
5. Plaintiff No. 2, Officine Panerai AG, is the holder and proprietor of
the trademark PANERAI in relation to watches and other horological and
chronometric instruments. Plaintiff No. 2 has been engaged in
manufacture and sale of watches under the trade mark PANERAI since
1860. On account of long, continuous and extensive use coupled with
the high quality standards maintained by plaintiff No. 2, the trademark
PANERAI has acquired a distinct and distinguished reputation so much
so that PANERAI is one of the most widely recognized luxury brands in
the world and is associated in the minds of the public with a proud
tradition of style, quality and craftsmanship. It is stated that PANERAI,
apart from being plaintiff No. 2's trademark, also constitutes an integral
and dominant part of plaintiff No. 2's corporate name/trading style. The
trademark PANERAI has thus become distinctive of plaintiff No. 2's
business and products and is entrenched in the minds of the public,
including the Indian population at large, all of whom instantly and
unhesitatingly associate the mark/name PANERAI with the products
and business of plaintiff No. 2. PANERAI is therefore an important
source identifier of plaintiff No. 2 and its business as well as a carrier of
plaintiff No. 2's reputation and associated goodwill. Internet extracts
pertaining to plaintiff No. 2 and the PANERAI brand have been
exhibited as Ex. PW-1/5 (colly).
6. Plaintiff No. 3, Richemont International S.A., is the older and
proprietor of the trademarks VACHERON CONSTANTIN and JAEGER
LECOULTRE in relation to watches and other horological and
chronometric instruments. Plaintiff No. 3 has been engaged in
manufacture and sale of watches under the trademark VACHERON
CONSTANTIN since 1819 and under the trademark JAEGER LECOULTRE
since 1903. Owing to long, continuous and extensive use coupled with
the high quality standards maintained by plaintiff No. 3, the
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trademarks VACHERON CONSTANTIN and JAEGER LECOULTRE

respectively have each acquired a distinct and distinguished reputation
so much so that VACHERON CONSTANTIN and JAEGER LECOULTRE are
two of the most widely recognized luxury brands in the world and are
associated in the minds of the public with a proud tradition of style,
quality and craftsmanship. Apart from being plaintiff No. 3's trademark,
the words VACHERON CONSTANTIN also constitutes an integral and
dominant part of the corporate name/trading style of one of plaintiff No.
3's subsidiary companies viz. Vacheron & Constantin SA.
7. The words JAEGER LECOULTRE in addition to being plaintiff No.
3's trademark, similarly same is also dominant part of the corporate
name of one of plaintiff No. 3's subsidiary companies viz. Jaeger
LeCoultre. The trademarks/names VACHERON CONSTANTIN and
JAEGER LECOULTRE have thus become distinctive of plaintiff No. 3's
business and products and are entrenched in the minds of the public,
including the Indian population at large, all of whom instantly and
unhesitatingly associate the marks/names VACHERON CONSTANTIN
and/or JAEGER LECOULTRE with the products and business of plaintiff
No. 3. It is stated that VACHERON “CONSTANTIN and JAEGER
LECOULTRE are important source identifiers of plaintiff No. 3 and its
business as well as carriers of plaintiff No. 3 and the above mentioned
subsidiaries' reputation and associated goodwill. Internet extracts
pertaining to plaintiff No. 3, its subsidiaries and the VACHERON
CONSTANTIN and JAEGER LECOULTRE brands have been exhibited as
Ex. PW-1/6 and Ex. PW-1/7 respectively.
8. The plaintiffs are a part of the world renowned Richemont Group,
a group of companies comprising the world leaders in the field of luxury
goods, with particular strengths in watches, writing instruments,
jewellery, leather and accessories and clothing. They are engaged in the
manufacture and sale of a wide range of luxury products under their
respective trademarks. Plaintiff Nos. 2 and 3 deal in watches and other
horological and chronometric instruments while plaintiff No. 1 deals in
jewellery, writing instruments and leather goods as well. A list of the
plaintiffs' popular product collections has been exhibited as Ex. PW-1/8.
9. The plaintiffs have successfully secured registrations of their
respective trademarks and the names of their prominent product
collections. The details of the plaintiffs' trademark registrations in India
are as under:
S. Reg. No. Trade Mark Class Date
No.
1. 253395 CARTIER 14 12/12/1968
2. 289891 CARTIER 18 02/08/1973
3. 551274 PASHA 14 17/05/1991
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4. 1248639 CABOCHON 18 10/11/2003

5. 1246395 PANERAI 14 28/10/2003
6. 774844 OFFICINE 14 19/09/1997
PANERAI
FIRENZE
7. 1342959 MARINA 14 07/03/2005
MILITARE
8. 774842 LUMIOR 14 19/09/1997
9. 551999 VACHERON 14 03/06/1991
CONSTANTIN
10. 202130 JAEGER 14 28/04/1961
LECOULTRE

10. The above trademarks are referred to as the “suit trademarks”.

The extracts from the website of the Trade Mark Registry along with the
corresponding registration certificates pertaining to the suit trademarks
have been exhibited as Ex. PW-1/9, Ex. PW-1/10, Ex. PW-1/11, Ex. PW
-1/12, Ex. PW-1/13, Ex. PW-1/14, Ex. PW-1/15, Ex. PW-1/16, Ex. PW-
1/17, Ex. PW-1/18 respectively.
11. The plaintiffs have also secured multiple registrations for the suit
trademarks in several countries across the world. Details of the
plaintiffs' WIPO International trade mark registrations in relation to the
suit trademarks have been exhibited as Ex. PW-1/19.
12. It is deposed in the affidavit of PW-1 that on account of long and
continuous use coupled with extensive sales spanning a wide
geographical area, the plaintiffs' products and by extension the suit
trademarks have acquired tremendous reputation and goodwill amongst
consumers and the members of the trade all over the world. The well-
known character of the plaintiffs' trademarks are reflected from the
plaintiffs' worldwide sales from 2003 to 2013 which is collectively in
excess of one billion USD. The plaintiffs have a successful presence in
India as indicated by turnover in India from 2003 to 2013 which is
collectively in excess of 100 million USD.
13. It is stated in the affidavit that the plaintiffs have incurred
substantial expense towards the advertisement and promotion of their
products sold under the suit trademarks through mediums of electronic
and print media. The plaintiffs' worldwide consolidated advertisement
expenses from 2003 to 2013 are collectively in excess of 500 million
USD. With specific reference to India, the advertising expenses incurred
by the plaintiffs from 2003 to 2013 are collectively in excess of 7
million USD.
14. In order to identify the source, origin and sponsorship of their
products, the plaintiffs have extensively employed, caused to be
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advertised and publicized certain distinct trade dress elements in

relation to their products. The trademarks and trade dress of the
plaintiffs' respective ranges of products are also promoted via the
websites www.cartier.com, www.panerai.com,
www.vacheronconstantin.com and www.jaeger-lecoultre.com. These
websites were launched several years ago to facilitate public awareness
and serve as comprehensive guides to the plaintiffs' business activities
and products. The plaintiffs regularly host advertising, campaigns etc.
and publish cautionary notices warning third parties about misuse of
any of the suit trademarks in order to safe guard and monitor use
thereof. As a result, the consumers as well as traders of such goods
instantly recognize the shape and configuration of entire range of the
plaintiffs' product lines and collections. On account of the plaintiffs'
overwhelming presence and activities all over the world including in
India, knowledge and awareness of the suit trademarks is implicit and
use thereof by any other entity is bound to create, a connection,
affiliation or association with the plaintiffs, in the minds of the
consumer and the trade.
15. It is deposed in the affidavit of PW-1 that defendant No. 4 is a
company trading under the name and style of Digaaz e-Commerce Pvt.
Ltd. and that defendant Nos. 1 to 3 are the directors thereof. The
defendants operate an ecommerce website www.digaaz.com where they
offer lifestyle and fashion products for sale. The defendants' website
www.digaaz.com has been found to be offering for sale and supplying
counterfeit products bearing several registered trademarks of the
plaintiffs including the suit trademarks. The domain name
<digaaz.com> is registered in the name of defendant No. 1 and an
extract from www.whois-search.com providing the details of this
domain name has been exhibited as Ex. PW-1/20. The Articles of
Association of the defendant No. 4 Company has been exhibited as Ex.
PW-1/21. An invoice evidencing that the defendants are carrying on
business in New Delhi has been exhibited as Ex. PW1/22.
16. It is submitted in the plaint and deposed in the affidavit that in
the month of February, 2014 the plaintiffs were informed by another
related company of the Richemont Group viz. i.e. Montblanc Simplo
Gmbh (hereinafter referred to as ‘Montblanc”) that the defendants are
selling and supplying counterfeit products of various luxury brands
including those of the plaintiffs and Montblanc on their website
www.digaaz.com. The plaintiffs were also informed that Montblanc had
initiated a suit being CS (OS) No. 2563 of 2013 for infringement of
trademark, copyright and passing off against the defendants before this
Court and an ex-parte injunction was granted in favor of Montblanc on
18th December, 2013 restraining the defendants, their partners, if any,
officers, servants, its, distributors, stockists and representatives from
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manufacturing, selling and/or offering for sale, advertising, directly or

indirectly dealing in writing instruments, wallets, watches, leather
goods, jewelry or any other goods bearing the trademarks MONTBLANC,
MEISTERSTUCK, the Three Ring Device and/or the Star Device or any
similar trademark and/or device amounting to an infringement of
registered Trademarks Nos. 168115, 228166, 845371, 605697, 713587
749405 and 174504 and also from directly or indirectly infringing the
copyright contained in the service guide accompanying the Montblanc's
products and from doing any other act amounting to passing off of their
goods as those of Montblanc.
17. The plaintiffs immediately initiated enquiries which confirmed
that the defendants are offering for sale and supplying counterfeit
goods bearing the suit trademarks at heavily discounted prices on their
website www.digaaz.com. The printouts from the defendants' said
website prominently displaying the counterfeit products bearing the
suit trademarks which are being offered for sale have been exhibited as
Ex. PW-1/23. Printouts from third party websites pertaining to the
defendants have been exhibited as Ex. PW-1/24.
18. In addition to offering for sale and supplying counterfeit goods
bearing the suit trademarks through their website, the defendants are
providing these goods with model names identical to those used in
relation to the plaintiffs' original product lines and collections. The
plaintiffs do not even manufacture corresponding original products or
the counterfeit products bearing the suit trademarks being offered for
sale on the defendants' website www.digaaz.com. A table of
comparison between the counterfeit products being offered for sale by
defendants and the corresponding original product of the plaintiffs has
been exhibited as Ex. PW-1/25.
19. The following factors establish that the defendants are offering
counterfeit products bearing the suit trademarks for sale on their
website www.digaaz.com:
(i) The plaintiffs like all world class luxury brands do not sell their
products at discounted rates whereas the defendants are offering
discounts as high as 95% on the products bearing the suit
trademarks being offered for sale on their website
www.digaaz.com.
(ii) None of the plaintiffs have ever authorized the defendants to deal
in products under their respective trademarks.
(iii) Some of the products bearing the suit trademarks being offered
for sale on the defendants' website do not have a corresponding
original product being sold by the plaintiffs.
20. It is alleged in the affidavit that these factors establish that the
impugned products bearing the suit trademarks being offered for sale
on the defendants' website www.digaaz.com do not originate from the
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plaintiffs and are in fact counterfeit.

21. The plaintiffs came to know in February, 2014 that the
defendants were selling and supplying counterfeit products of various
luxury brands including those of the plaintiffs on their website
www.digaaz.com and issued cease and desist notices to the defendants
on 20th February, 2014 which has been exhibited as Ex.PW-1/26. There
has been no response to these notices.
22. The defendants has falsely claimed on their website
www.digaaz.com that “…We cover world's most coveted brands and
guarantee 100% authenticity to offer you safe and secure shopping…”
Moreover the Defendants quote exorbitant prices for these counterfeit
goods for eg : The defendants indicate on their website that a
‘PANERAI LUMINOR MARINA WATCH’ originally costs INR 7,02,000/-
(approximately Seven Lakh Rupees) but the defendants are offering the
said watch for sale at an alleged ‘discount’ for INR 92,000/-. The watch
however is a counterfeit product which is not even worth INR 2000. The
customers however are duped into buying the defendants' counterfeit
products under the mistaken belief that these are original while the
defendants make massive illegal profits from these transactions.
23. Many customers have already been cheated as per evidence
produced by the defendants who have purchased large quantities of
counterfeit products including those bearing the plaintiffs' trademarks,
from the defendants' website www.digaaz.com for exorbitant sums of
money.
24. Upon learning about the defendants' infringing activities, the
plaintiffs instructed their attorneys to issue a cease and desist letter to
the defendants calling upon them to cease and desist from selling
counterfeit products under the suit trademarks on their website
www.digaaz.com.
25. The cease and desist notices were sent to the defendants on
behalf of each of the plaintiffs on 20th February, 2014 and has been
exhibited as Ex.PW-1/26 (colly). The defendants however chose to
ignore the said notices though the same were delivered to the
defendants on the same day. On enquiries conducted on behalf of the
plaintiffs confirmed that, despite receipt of the plaintiffs' notices, the
defendants continued to offer for sale counterfeit products under the
suit trademarks on their website www.digaaz.com.
26. After delivery of the product, the customers usually discovered
that the defendants' product is in fact counterfeit and lodged
complaints with the defendants. The defendants however always
refused to refund the money or to replace the counterfeit product with a
corresponding original product. This has come on record that many
consumer complaints have been lodged by the customers who have
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been cheated by the defendants and purchased counterfeit products

from the website www.digaaz.com.
Document(s) Exhibit No(s)
Printouts from Ex-PW 1/23
www.digaaz.com
showing
counterfeit
products bearing
plaintiffs'
trademarks
Sample Ex-PW1/28
consumer
complaints

27. It is deposed that the adoption and use of the suit trademarks
and model names by the defendants on their products makes it evident
that by offering such goods for sale on their website, the defendants
are aiming to mislead consumers and members of the trade into
believing that the products sold by the defendants have originated or
are endorsed, and/or are authorized by the plaintiffs. The defendants
state as follows on the website www.digaaz.com:
“At Digaaz.com, we strive to bring to you the latest in lifestyle
and consumer merchandise products through lively sales and
aspiring deals and discounts. We cover world's most coveted brands
and guarantee 100% authenticity to offer you safe and secure
shopping.”
28. The defendants thus made an obvious misrepresentation on their
website since the products offered for sale and supplied are counterfeits
bearing the plaintiffs' trademarks.
29. It is also alleged in the affidavit of PW-1 that apart from dealing
in the counterfeit goods bearing the suit trademarks, the defendants
also offered for sale and supply of counterfeit goods of other luxury
brands through their website www.digaaz.com. Some of the counterfeit
products on the defendants' website are being offered for sale under
various other luxury brands including Montblanc, Louis Vuitton,
Burberry, Hermes, Chanel, D&G, Prada, Givenchy, Dior, Bvlgari, Tory
Burch, Fendi, Bottega Veneta, etc.
30. The volume of counterfeit goods sold by the defendants
demonstrates that the defendants are seasoned infringers and
counterfeiters with a regular supply of counterfeit goods. Many of the
right holders of these brands have instituted proceedings against the
defendants before this Court and have obtained orders restraining the
defendants from selling counterfeit products bearing their respective
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trademarks and logos. The orders granting interim injunctions in favour

of Montblanc, Louis Vuitton and Burberry have been exhibited as Ex.PW
-1/27 (colly).
31. It is stated in the affidavit of PW-1 that unlawful nature of the
defendants' infringing activities is further demonstrated by the
numerous consumer complaints lodged against the defendants which
shows that hundreds of consumers have been duped by the defendants
into believing that the goods offered on its website are genuine goods
of various luxury brands including those sold under the suit
trademarks. Sample consumer complaints have been exhibited as
Ex.PW-1/28 (colly).
32. It is also deposed in the affidavit that one of the many
customers who was cheated by the defendants and had purchased
counterfeit watches from the website www.digaaz.com lodged a
complaint before the Cyber Crime Cell of the Chandigarh Police which
was registered as Case FIR No. 397 dated 24th September, 2014 under
Section 406, 420 IPC and 66(A) IT Act of P.S. - Sector 39, Chandigarh.
The FIR has been exhibited as Ex.PW-1/29.
33. During the investigation the Cyber Cell received several more
complaints from other consumers who had purchased counterfeit
products from the defendants and also ascertained that apart from the
website www.digaaz.com, the defendants were also selling their
counterfeit products on the website www.watchcartz.com, and
www.luxecart.com. On 24th September, 2014 raids were conducted at
the defendants' premises in Chandigarh where thousands of counterfeit
products bearing the trademarks of various luxury brands including the
suit trademarks were seized. The seizure memo along with a clear
typed copy has been exhibited as Ex.PW-1/30 (colly). Printouts from
third party websites containing news articles about the defendants and
the pending criminal proceedings have been exhibited as Ex.PW-1/31
(colly).
34. The Chandigarh Cyber Cell's investigation and raid confirm that
the defendants are offering for sale of counterfeit products including
those bearing the suit trademarks on the impugned websites
www.digaaz.com, www.watchcartz.com and www.luxecart.com. The
Cyber Cell also confirmed that the defendants procure the counterfeit
products from New Delhi, Ludhiana and Chandigarh at throw away
prices and sell these at exorbitant rates cheating both customers and
brand owners and making enormous illegal profits in the process.
35. On 8th October, 2014 defendant Nos. 1 and 2 were arrested by
the Cyber Cell and were remanded in judicial custody for 14 days. The
matter is still pending against them and is at the stage of filing charge
sheet.
36. Apart from the defendants' counterfeit products, the Cyber Cell
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has seized/sealed movable property as well as immovable properties

belonging to the defendants.
Document(s) Exhibit No(s)
FIR lodged Ex-PW 1/29
against the
defendants
Seizure memo Ex-PW1/30
(along with clear
typed copy)
indicating details
of seized
counterfeit
goods.
News articles Ex-PW1/31
pertaining to the
criminal
proceedings
against the
defendants,
seizure of
counterfeit
products and the
defendants
arrest.

37. The defendants have not filed any written statement in this suit.
They have also failed to admit or deny the documents of the plaintiffs.
They have also failed to cross-examine PW-1. The evidence of the
plaintiffs' has gone unrebutted. Therefore, the evidence of the plaintiffs
and documents filed by the plaintiffs are deemed to be admitted under
the provision of Order XII Rule 2-A CPC.
38. The plaintiff No. 1, Cartier International A.G. is the proprietor of
the trade mark/name CARTIER in relation to a wide range of luxury
products including watches, jewellery, writing instruments and leather
goods. The trade mark/name CARTIER was adopted in 1847. The trade
mark CARTIER has been declared as a well-known mark.
Document(s) Exhibit No(s)
Internet extracts Ex-PW 1/3
about Plaintiff
No. 1 and
relevant CARTIER
product
collections
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Plaintiff No. 1's Ex-PW1/9 to Ex-PW1/12, Ex-PW1/15 and Ex-

registrations PW1/16
List of well- Ex-PW 1/3
known marks
including
CARTIER

39. It is a matter of fact that plaintiff No. 2, Officine Panerai AG, is

the holder and proprietor of the trade mark/name PANERAI in relation
to luxury products viz. watches and other horological and chronometric
instruments. The trade mark PANERAI was adopted in 1860.
Document(s) Exhibit No(s)
Internet extracts Ex-PW 1/5
about Plaintiff
No. 2 and
relevant PANERAI
product
collections
Plaintiff No. 2's Ex-PW1/13 and Ex-PW1/14
registrations

40. It has come on record that the plaintiff No. 3 Richemont

International S.A., is the holder and proprietor of the trademarks
VACHERON CONSTANTIN and JAEGER LECOULTRE in relation to luxury
products viz. watches and other horological and chronometric
instruments. The trademarks VACHERON CONSTANTIN and JAEGER
LECOULTRE were adopted in 1819 and 1903 respectively and also
constitute the trading style of plaintiff No. 3's wholly owned subsidiary
companies viz. Vacheron & Constantin SA. and Jaeger LeCoultre
respectively.
Document(s) Exhibit No(s)
Internet extracts Ex-PW 1/6
about Plaintiff
No. 3's and
relevant
VACHERON
CONSTANTIN
product
collections
Internet extracts Ex-PW 1/7
about Plaintiff
No. 3 and
relevant
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VACHERON
CONSTANTIN
product
collections
Plaintiff No. 3's Ex-PW1/17 and Ex-PW1/14
registration

41. All the plaintiffs admittedly are a part of the world renowned
Richemont Group and are engaged in the manufacture and sale of a
wide range of luxury products under their respective suit trademarks.
Apart from above registrations obtained by the plaintiffs for the suit
trademarks in India, the plaintiffs have also obtained international
WIPO registrations for these marks. As a result, in addition to strong
common law rights resulting from long, continuous and extensive use,
the plaintiffs also assert strong statutory rights in the suit trademarks,
both in India and abroad.
Document(s) Exhibit No(s)
Plaintiffs' popular Ex-PW 1/8
product collection
The plaintiffs' Ex-PW 1/19
WIPO
international
trade mark
registrations.

42. The plaintiffs' worldwide sales turnover from 2003 to 2013 was
collectively in excess of one billion USD. The plaintiffs' sales turnover in
India from 2003 to 2013 was collectively in excess of 100 million USD.
The plaintiffs' worldwide consolidated advertisement expenses from
2003 to 2013 were collectively in excess of 500 million USD. The
advertising expenses incurred by the plaintiffs in India from 2003 to
2013 are collectively in excess of 7 million USD.
43. There is no denial on behalf of the defendants that defendant
No. 4 is a company viz. Digaaz e-Commerce Pvt. Ltd. and defendant
Nos. 1 to 3 are the directors thereof. The defendants are operating an e
-commerce website www.digaaz.com where they are offering for sale
products bearing the trademarks of various luxury brands. The domain
name <digaaz.com> is registered in favor of defendant No. 2.
Document (s) Exhibit No(s)
Whois Search Ex-PW 1/20
results providing
details of domain
name
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<digaaz.com>
Articles of Ex-PW1/21
Association of
Defendant No. 4
Company
Third party Ex-PW1/24
websites
pertaining to the
defendants

44. The defendants have been found to be offering for sale and
supplying massive quantities of counterfeit products bearing several
registered trademarks of various luxury brands including the plaintiffs
on their website www.digaaz.com.
Document(s) Exhibit No(s)
Printouts from Ex-PW 1/23
www.digaaz.com
showing
counterfeit
products bearing
plaintiffs'
trademarks
Table of Ex-PW1/25
Comparison
between the
defendants'
counterfeit
products and
plaintiffs' original
corresponding
product

45. Many third party luxury brands including Montblanc, Louis

Vuitton and Burberry have instituted proceedings against the
defendants and obtained injunction orders from this Court restraining
the defendants from selling counterfeit products bearing their
respective trademarks and logos.
Document(s) Exhibit No(s)
Third party Ex-PW 1/27
orders restraining
the defendants
from selling
counterfeit
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products bearing
the trademarks,
Mount Blanc,
Louis Vuitton,
Burberry etc.

46. The adoption and use of the suit trademarks by the defendants
in relation to the counterfeit products being offered for sale on their
website amounts to infringement of registered trade mark Nos. 253395,
98671, 551274, 1246395, 774844, 1342959, 774842, 551999 and
202130 in class 14 and trademark Nos. 289891 and 1248639 in class
18.
47. The purchasing public is bound to assume some sort of
association or connection between the defendants' products and the
plaintiffs thereby leading to confusion as to the source of origin of the
defendants' goods and passing off of the defendants' goods as those of
the plaintiffs.
48. The defendants have used the plaintiffs' registered trademarks
on and/or in relation to their goods with a view to trade their business
on the reputation and goodwill enjoyed by the plaintiffs. The use of the
same suit trademarks along with the copying of various styles of the
plaintiffs are a tell tale sign of the defendants' attempts at deception.
49. Thus, the use of the suit trademarks by the defendants, on their
counterfeit products amounts to a deliberate and wilful infringement of
the plaintiffs' proprietary rights by the defendants. The plaintiffs have
made classic case of infringement of trademark and passing off.
50. The other important factors in the present case are that the
website www.digaaz.com is owned and operated by identified entities
in India viz. Digaaz e-Commerce Pvt. Ltd. and its directors.
51.1 The defendants are selling counterfeit products of various
luxury brands on their website www.digaaz.com. These products are
sourced and sold directly to the customers by the defendants who have
been caught in possession of massive quantities of counterfeit
products. Defendant Nos. 1 and 2 were arrested by the Cyber Crime
Cell, Chandigarh.
51.2 The defendants were selling their counterfeit products on not
one but 3 websites viz. www.digaaz.com, www.watchcartz.com and
www.luxecart.com.
52. The defendants have made huge profits from their counterfeiting
activities and have cheated thousands of customers in the process.
53. As per the case of the plaintiffs, the defendants have purchased
sufficient immovable property with the profits made from their illegal
activities including those involving the plaintiffs' trademarks and this
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immovable property has already been sealed by the Chandigarh police.

54. It is alleged by the plaintiffs that they have suffered irreparable
loss and injury on account of the defendants' acts of selling counterfeit
products bearing the plaintiffs' trademarks. It is submitted on the
behalf of the plaintiffs that the following factors to be considered by
assessing the damages payable by the defendants to the plaintiffs. The
details provided by the plaintiffs are as follows:
(i) Actual illegal and unfair profits earned by the defendants from
selling counterfeit products bearing the suit trademarks of the
plaintiffs;
(ii) Actual revenue lost by the plaintiffs due to loss of sales of their
original products on account of the illegal/infringing activities of
the defendants;
(iii) Damage to plaintiffs' valuable reputation and goodwill due to the
availability of spurious products of the defendants in the market.
(iv) The punitive component of the damages i.e. a multiplier of the
above figure.
(v) Attorney fees, costs and legal expenses.
55. It is deposed in the affidavit of PW-1 that the defendants have
made massive illegal profits from the sale of counterfeit products
bearing the suit trademarks on their websites. All such profits convert
into losses suffered by the plaintiffs since the success of the
defendants' e-commerce websites and the sale of counterfeit goods on
the websites are attributable to the immense reputation of the
plaintiffs' brands viz. CARTIER, PANERAI, VACHERON CONSTANTIN and
JAEGER LECOULTRE. The defendants have deliberately stayed away
from the proceedings and have not provided their accounts of the illegal
profits earned by them.
56. It is submitted that the period can safely be assumed as three
years as the defendants' website www.digaaz.com has been operational
for at least 3 years which is evidence by:
• The domain name <www.digaaz.com> was created on 3rd April,
2012.
• The website www.digaaz.com was operational as early as at
least 29th June, 2012 which is evidenced by internet extracts from
www.web.archive.org which has been exhibited as Ex.PW-1/32
(colly).
57. The number of visitors to the defendants' website
www.digaaz.com which can be assessed as under;
• The website www.alexa.com which is run by Alexa (an
amazon.com company), a world leading web traffic analysing
company specialized in evaluating traffic received by individual
websites, had ranked the defendants' website as 4500th among 30
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million websites surveyed. This rank indicates that the defendants'

website received a high amount of traffic, which can be estimated at
around 100,000 visitors or hits per month.
• Based on this high amount of traffic, the defendants' website
can be estimated to have received approximately 36 lakh hits in
three years that this website was operational.
• Even if it is assumed that as little as 1% of these hits converted
into sales and that each such sale was for Rs. 10,000/- the turnover
of this website for the two years that it has been operational would
have been at least Rs. 36 crores.
58. The plaintiffs submit that even if 10% of this turnover is
attributed to the revenue generated from the sale of counterfeit
products bearing any of the suit trademarks viz. CARTIER, PANERAl,
VACHERON CONSTANTIN or JAEGER LECOULTRE, then the illegal profits
made by the defendants' under the suit trademarks would amount to
Rs. 3.6 Crores.
59. It is submitted that the other way which can be used for
computing damages payable by the defendants is by assessing the
number of counterfeit products which are likely to have been sold by
the defendants since at least June 2012. This can be assessed using
the recording of a telephone conversation which took place in August
2013 between the defendants' sales representative with a customer
who had purchased a counterfeit product bearing the MONTBLANC
trademark from the defendants. The compact disk containing the
recording of the telecon along with a transcript of the conversation has
been exhibited as Ex. PW-1/33 (colly).
60. The plaintiffs have provided other way of methodology of
computation of damages is as under:
• In the transcript, the sales representative confirms that the
defendants have sold more than 1000 MONTBLANC pens through the
website www.digaaz.com.
• Even though over 2 years have lapsed since this telecom when
the defendants confirmed that they had already sold 1000
counterfeit MONTBLANC pens, using their sales figure as a basis, if it
is presumed that the defendants have till date sold at least 1000
counterfeit products under each of the brands CARTIER, PANERAI,
VACHERON CONSTANTIN or JAEGER LECOULTRE, amounting to a
total of 4000 counterfeit products bearing the suit trademarks and if
the cost of each of such product is estimated to be Rs. 63,000/-
(being the average price quoted by the defendants for the
counterfeit products under the suit trademarks being offered for sale
on the website www.digaaz.com) the total illegal turnover of this
website from the sale of counterfeit products under the suit
trademarks amounts to Rs. 25 Crores.
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61. It is stated that the volume of consumer complaints against the

defendants clearly establishes that the defendants have made
extensive sales and consequently massive profits by virtue of their
illegal activities.
62. It is established on record that the defendants were found in
custody of thousands and thousands of counterfeit products including
those bearing the suit trademarks. Over 730 watches were recovered
from the defendants' premises and around one third of these depicted
the suit trademarks. The average price quoted for counterfeit watches
bearing the suit trademarks being offered for sale on the defendants'
website www.digaaz.com was Rs. 75,000 and it therefore stands to
reason that the defendants were found in possession of approximately
1.82 crore worth of counterfeit watches alone under the suit trademarks
on a single day.
63. It is stated that the above computing methods reveal that the
defendants have amassed several crores of rupees worth of profits by
unauthorizedly using the suit trademarks on their website
www.digaaz.com and by selling counterfeit products under the suit
trademarks through the said website. The defendants on account of
sale of counterfeit products bearing the plaintiffs' trademarks are also
representative of the loss of sales of the plaintiffs.
64. The defendants were selling their counterfeit products at
relatively exorbitant prices which is indicated by the average price
quoted by the defendants for the products available on their website
under the suit trademarks which is approximately Rs. 63,000/-. It is
alleged that the consumers who have been duped into purchasing
counterfeit products from the defendants' website have the financial
capacity to purchase the original luxury products sold by the plaintiffs
and would have done so had they not purchased the counterfeit
products from the defendants' website.
65. It appears from the conduct of the defendants who have
deliberately stayed away from the present proceedings with the result
that an enquiry into their accounts for determination of damages could
not take place.
66. It is well settled that damages in such cases must be awarded
and a defendant, who chooses to stay away from the proceedings of the
Court, should not be permitted to enjoy the benefits of evasion of court
proceedings. Any view to the contrary would result in a situation where
the defendant who appears in Court and submits its account books
would be liable for damages, while a party which chooses to stay away
from court proceedings would escape the liability on account of failure
of the availability of account books.
67. A party who chooses not to participate in court proceedings and
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stay away must, thus, suffer the consequences of damages as stated

and set out by the plaintiffs as the Court in the present case are dealing
with counterfeiting products. It is rank case of dishonesty where the
piracy committed by the defendants is apparent on the face of the
record. It is just like printing of duplicate currency. The counterfeiter
can never be allowed to do such illegal activities. Cheating can never be
condoned by the Court unless the accused is punished.
68. Sub-Section (1) of Section 135 of the Trade Marks Act, 1999
provides that relief may be granted in any suit for infringement or for
passing off includes injunction and at the option of the plaintiff, either
damages or an account of profits. The plaintiffs have chosen the route
of damages. The plaintiffs in the present matter while establishing in
evidence have been able to prove the damages suffered by them.
Materials have been filed and proved accordingly. The damages which
they claim are attributable to flagrant infringement.
Punitive damages
69. With regard to the relief of damages as claimed by the plaintiffs
in para 44(g) of the plaint, this Court has previously granted both
exemplary and punitive damages against the defendants in ex-parte
matters of similar nature. In Time Incorporated v. Lokesh Srivastava,
(supra) while awarding punitive damages of Rs. 5 lakhs in addition to
compensatory damages also of Rs. 5 lakhs, Justice R.C. Chopra
observed that “time has come when the Courts dealing in actions for
infringement of trademarks, copyrights, patents etc., should not only
grant compensatory damages but also award punitive damages with a
view to discourage and dishearten law breakers who indulge in violation
with impunity out of lust for money, so that they realise that in case
they are caught, they would be liable not only to reimburse the
aggrieved party but would be liable to pay punitive damages also,
which may spell financial disaster for them.”
70. Further, this Court in Microsoft Corporation v. Rajendra Pawar,
2008 (36) PTC 697 (Del.) decided on 27th July, 2007 has held “Perhaps
it has now become a trend of sorts, especially in matters pertaining to
passing off, for the defending party to evade court proceedings in a
systematic attempt to jettison the relief sought by the plaintiff. Such
flagrancy of the Defendant's conduct is strictly deprecatory, and those
who recklessly indulge in such shenanigans must do so at their peril,
for it is now an inherited wisdom that evasion of court proceedings does
not de facto tantamount to escape from liability. Judicial process has its
own way of bringing to tasks such erring parties whilst at the same
time ensuring that the aggrieved party who has knocked the doors of
the court in anticipation of justice is afforded with adequate relief, both
in law and in equity. It is here that the concept of awarding punitive
damages comes into perspective.”
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71. In light of the above and reasons explained in earlier paras, a

decree for permanent injunction is also passed in favour of the plaintiffs
and against the defendants in terms of the prayer contained in
paragraph 44(a) to (e) of the plaint. The same reads as under : -
a) Decree for permanent injunction restraining the Defendants, their
partners, if any, officers, servants, agents, distributors, stockists
and representatives from manufacturing, selling and/or offering
for sale, advertising, directly or indirectly dealing in writing
instruments, wallets, watches, leather goods, jewelry or any other
goods bearing the suit trademarks or any similar trademark
and/or device amounting to infringement of trade mark.
b) Decree for permanent injunction restraining the Defendants, their
partners, if any, officers, servants, agents, distributors, stockists
and representatives from manufacturing, selling and/or offering
for sale, advertising, directly or indirectly dealing in watches,
writing instruments, wallets, leather goods, jewelry or any other
goods bearing the suit trademarks or any similar trademark
and/or device or doing any other act amounting to passing off of
the Defendants' goods as those of the Plaintiffs;
c) Decree for permanent injunction restraining the Defendants, their
principal officers, servants, agents, their affiliates, subsidiaries,
distributors, and all others acting for and on their behalf from
using trademarks, patterns, label, logo or device, which are
identical or deceptively or confusingly similar to the suit
trademarks or any similar trademark and/or device so as to
misrepresent its quality/origin and take unfair advantage of the
Plaintiffs' reputation and goodwill in the suit trademarks or any
similar trademark amounting to unfair competition, and/or
causing dilution of the suit trademarks;
d) Decree for furnishing to the Plaintiffs by the Defendants the data
of all transactions undertaken (including the data of the suppliers,
the number of purchases, etc.) during the course of their business
relating to goods bearing the suit trademarks;
e) Decree declaring the trademarks PANERAI, VACHERON
CONSTANTIN and JAEGER LECOULTRE as well-known trademarks;
72. In view of the facts of the present case, this Court is of the
opinion that in the present case Rs. 1 Crore as punitive damages be
granted in favour of the plaintiffs and against the defendants in terms
of para 44(g) of the plaint. Ordered accordingly.
73. The other relief is not pressed. The same is accordingly rejected.
74. The plaintiffs are also entitled for cost.
75. Decree sheet be drawn accordingly.
———
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