Bulgari Spa v. Notandas Gems Private Limited
This case involves a dispute between two high-end luxury jewellery businesses, Bulgari Spa and Notandas Gems Private Limited, over alleged trademark infringement and design violations. Bulgari, the plaintiff, accused Notandas of infringing on their trademark 'SERPENTI', as well as their device mark of snakehead and the design of their wristwatch and bracelet. Notandas, the defendant, denied these claims, arguing against the exclusivity of Bulgari's trademark and asserting differences in their designs. The Delhi High Court issued an interim injunction in favour of Bulgari, prohibiting Notandas from using the mark 'SERPENTINE' and making various observations regarding jurisdiction, phonetic similarity, and design infringement. This abstract summarizes the contentions of both parties and the key points of the judgment rendered by the court.
Bulgari Spa v. Notandas Gems Private Limited
CS(COMM) 658/2021 & I.A. 16751/2021
Decided on 21 February 2022
BRIEF FACTS:
The parties involved in this case are engaged in the business of high-end luxury jewellery. The plaintiff has filed a lawsuit against the defendant to prevent them from violating their trademarks and design. The plaintiff argues that the defendant is infringing on their trademark 'SERPENTI', which is a part of four of the plaintiff's trademarks, as well as their device mark of snakehead and the design of their wristwatch and bracelet. At the time of the judgment, the plaintiff had valid and current registrations for all the mentioned marks and logos.
CONTENTIONS OF THE PLAINTIFF:
The party filing a legal complaint argued that their registered trademark 'SERPENTI' has gained widespread recognition in the jewellery industry and that the defendant's trade dress is deceptively similar to their own. They further claimed that the provisions of Section 17 of the Trade Marks Act, 1999, which prohibits an applicant from claiming exclusivity over a part of a composite mark if the same has not been separately registered, do not apply to their mark. According to them, the word 'SERPENTI' has been associated with their brand since the 1940s and is a dominant part of their composite mark, making it eligible to claim infringement. The plaintiff also argued that the defendant's use of their trademark constitutes "idea infringement" as 'SERPENTI' is neither a generic term nor descriptive of the goods it is used for. Regarding the infringement of their logo, the plaintiff contends that it is sufficient to prove infringement if the defendant's logo is similar to theirs as a whole.
CONTENTIONS OF THE DEFENDANT:
The defendant is strongly denying the plaintiff's contentions and putting forth several arguments in their defence. One of the primary arguments is that the plaintiff's trademark is a composite mark, and therefore, no exclusivity can be claimed on part of it. Additionally, the defendant is stating that the word 'SERPENTI' used by both parties to describe the shape of the goods in question is a common term in the trade, as several jewellery manufacturers use the form of a snake or serpent. They also claim that the plaintiff's and defendant's marks are not phonetically similar.
Furthermore, the defendant is contending that they are not infringing the plaintiff's snakehead design, as their design is entirely different from that of the plaintiff's. Lastly, the defendant is asserting that the Delhi High Court did not have territorial jurisdiction to adjudicate the lawsuit. All in all, the defendant is putting forth several compelling arguments to counter the plaintiff's claims.
JUDGEMENT:
An interim injunction has been issued by the Honourable High Court, prohibiting the defendant, their representatives, agents, heirs, partners, etc. from using the mark 'SERPENTINE' in relation to their products. The court made the following observations:
1. All courts that have jurisdiction over territories from which commercial transactions can be concluded through an interactive website would have the territorial jurisdiction to adjudicate for infringement.
2. The defendant uses the mark 'SERPENTINE' for the same nature of goods and caters to the same class of customers as the plaintiff. There is a phonetic similarity between the marks 'SERPENTI' and 'SERPENTINE.'
3. The plaintiff has coined the mark 'SERPENTI,' which is fanciful and cannot be claimed to be descriptive in the context of bracelets. Bracelets are not common in trade to be manufactured and sold in serpent form and shape.
4. 'SERPENTI,' being the dominant part of the plaintiff's composite mark, can make a case of infringement based on its reputation.
5. There is no infringement of the device mark of snakehead by the defendant since the defendant's mark is "completely distinct in shape, configuration, contour, and even visual appearance" from that of the plaintiff's.
6. The design of the defendant's bracelet does not infringe on the registered design held by the plaintiff in either the bracelet or the wristwatch. Since no averment to passing off has been mentioned in the plaint, there cannot be a case of passing off of the plaintiff's design.
CONCLUSION
The Delhi High Court granted an interim injunction in favour of Bulgari Spa against Notandas Gems Private Limited for infringing on their trademark 'SERPENTI'. The court established its authority to adjudicate the matter and found merit in Bulgari's arguments based on the phonetic similarity between the marks and its association with their brand reputation. The injunction protects Bulgari's intellectual property rights until a final judgment is reached.
