Bulgari S.P.A vs Prerna Rajpal ( 2024) Copyright Infringement in Luxury jewellery domain

Introduction

The court's decision in this case is based on key principles of intellectual property law. The court considered the principle of copyright protection, which safeguards original artistic works from being copied without permission. This principle ensures that creators retain exclusive rights to their unique designs and creations, preventing others from benefiting unfairly from their efforts.

Further, the court applied the principle of trademark protection, which aims to prevent consumer confusion by safeguarding distinctive marks used by brands to identify their products. By protecting trademarks, the law helps maintain brand integrity and ensures that consumers can trust the origin and quality of the goods they purchase. In this case, the court's focus was on upholding these principles to protect the rights of the Plaintiff and maintain fair competition in the marketplace.

Facts of the Case

1. Parties Involved:

·         Plaintiff: Bulgari S.P.A, an Italian luxury brand which is sepcialized in crafting and trading innovative jewellery, watches, fragrances, and accessories made from precious materials.

·         Defendant: Ms. Prerna Rajpal, trading as 'The Amaris Flagship Store', engaged in the business of manufacturing, trading, selling, marketing, advertising, promoting, and displaying jewellery and ornaments.

2. Plaintiff’s Collections:

·         The case involves two of Bulgari's collections: "SERPENTI" and "B.ZERO1," which include bracelets, rings, necklaces, and pendants.

3. Trademark Details:

·         Bulgari adopted the trademark "SERPENTI" in 1940 for wristwatches, later extending it to jewellery. The term is derived from ancient Greek and Roman mythology symbolizing seductive serpents, wisdom, vitality, and the circle of life.

·         The Plaintiff holds registrations for the "SERPENTI" trademark in multiple jurisdictions and has applied for its registration in classes 9, 14, 18, and 25 in India.

4. Trademark Variants:

·         The Plaintiff also owns trademarks "BVLGARI SERPENTI," "BVLGARI," "BVLGARI BVLGARI," and B.ZERO1 and SERPENTI variants and formatives used in their business.

5. Trade Dress and Distinctiveness:

·         Bulgari's products are recognized for their novel patterns, stone placement, vibrant color combinations, ornamentation, and distinctive appearance. These elements contribute to the trade dress of Bulgari’s goods, which have acquired distinctiveness and association with Bulgari.

6. Product in Dispute:

·         Bulgari asserts rights over the "Serpenti Ocean Treasure Necklace," a meticulously handcrafted product with unique artistic qualities. It is considered an original artistic work under the Copyright Act, 1957, with copyright registration in Rome, Italy, and protection in India via the Berne Convention.

7. Defendant’s Business:

·         Ms. Prerna Rajpal’s business involves selling jewellery and ornaments through a physical store, website (www.amarisjewels.com), and social media platforms.

8. Discovery of Infringement:

·         In August 2022, Bulgari found that the Defendant's website had significantly copied the idea, design, presentation, decoration, color scheme, and overall look of their SERPENTI collection.

9. Cease-and-Desist Notice:

·         Bulgari issued a cease-and-desist notice to the Defendant on 4th August 2022. The Defendant admitted to being inspired by Bulgari's designs but denied any resemblance. They also promised to remove all SERPENTI-related designs from their website.

10. Lack of Compliance:

·         Despite Bulgari's subsequent requests for the destruction of infringing goods and reiteration of their rights, the Defendant did not respond, leading to the filing of the instant suit.

Plaintiff's Arguments

1. Trademark Infringement:

·         The Defendant's use of designs resembling Bulgari’s "SERPENTI" and "B.ZERO1" collections amounts to trademark infringement.

2. Trade Dress Infringement:

·         The Defendant has copied Bulgari’s distinct patterns, stone placement, color combinations, and overall appearance, violating Bulgari’s trade dress rights.

3. Copyright Infringement:

·         The Defendant’s products infringe upon Bulgari's copyright in the "Serpenti Ocean Treasure Necklace," an original artistic work under the Copyright Act, 1957.

4. Passing Off:

·         The Defendant’s actions amount to passing off their goods as those of Bulgari, causing confusion among consumers and damaging Bulgari’s goodwill and reputation.

5. Defendant’s Acknowledgment:

·         The Defendant admitted to drawing inspiration from Bulgari’s designs, indicating awareness of the similarity and infringement.

6. Failure to Comply with Cease-and-Desist:

·         The Defendant’s failure to comply with the cease-and-desist notice and subsequent requests for the destruction of infringing goods necessitates judicial intervention.

Defendant's Arguments

1. Inspiration Not Infringement:

·         The Defendant acknowledged drawing inspiration from Bulgari's designs but denied that their products were similar or constituted infringement.

2. Removal of Designs:

·         The Defendant claimed to have removed all SERPENTI-related designs from their website and undertook not to promote them in the future.

COURT JUDGEMENT

1.      Prima Facie Similarity:

• The Court finds that the Defendant's "Shield-It Necklace" is visually and structurally similar to the Plaintiff's "Serpenti Ocean Treasure Necklace" with similar color combinations and ornamentation placements.

2.      Strong Case of Copyright Infringement:

• The Plaintiff has presented a strong initial case of copyright infringement based on their Italian copyright registration for the "Serpenti Ocean Treasure Necklace."
• India's recognition of the Berne Convention under Section 40 of the Copyright Act, 1957, supports the Plaintiff's claim of being the original author of the artistic work.

3.      Section 15(2) of the Copyright Act Not Applicable:

• The Court agrees with the Plaintiff that the copyright in the artistic work does not fall under the bar of Section 15(2) of the Copyright Act. This is because: a. The Plaintiff has not produced any item with the design more than 50 times. b. The product has not been produced by an industrial process.

4.       Trademark Infringement:

• The Plaintiff has established their rights over the "SERPENTI" trademark, which has multiple registrations and previous protection by the Court.
• The Defendant's use of the "SERPENTI" mark for similar products constitutes a clear case of infringement under Sections 29(2)(c) read with 29(3) of the Trade Marks Act, 1999.

5.      Injunction Granted

• The Court finds that the Plaintiff would suffer irreparable loss without an ex-parte ad-interim injunction. The balance of convenience favours the Plaintiff.
• The Court has ordered that the Defendant and anyone associated with them must immediately stop making, selling, marketing, or advertising the "Shield-It Necklace" or any similar items that infringe on Bulgari's "Serpenti Ocean Treasure Necklace" copyright.
•  They are also prohibited from using the "SERPENTI" mark or any similar marks that could be confused with Bulgari's trademarks. These restrictions apply to all forms of advertising, including online and physical stores.

CONCLUSION AND ANALYSIS

First, the court recognized Bulgari’s Italian copyright registration and how it extends to India through the Berne Convention. This means that international treaties play a big role in protecting creative works across different countries. For companies, this shows how important it is to register their designs in multiple countries to keep them safe from being copied.

Second, the court looked closely at the similarities between Bulgari’s "Serpenti Ocean Treasure Necklace" and the Defendant’s "Shield-It Necklace." They found that the designs were very similar in appearance and structure. This part of the decision shows that the court takes the protection of unique and original designs very seriously.

Third, the court found that the Defendant’s use of the "SERPENTI" trademark was an infringement of Bulgari’s trademark rights. This is important because trademarks help consumers identify the source of goods and protect them from being misled. By protecting trademarks, the court ensures that consumers can trust the brand names and know they are getting genuine products.

For Bulgari, this case means they should keep a close watch on the market to catch any infringements quickly and ensure their designs and trademarks are registered in all important markets. They should also work on making the public aware of their trademarks and designs to help identify and stop potential infringements.

For the Defendant, this case shows the importance of doing thorough research to ensure new designs don’t infringe on existing rights. They should seek legal advice before launching new products and focus on creating unique designs to avoid legal troubles.