Carlton Shoes Ltd. and Ors. v. VIP Industries Ltd.
This legal case involves a trademark dispute between Carlton, a manufacturer of footwear and fashion accessories, and VIP Industries, a company specializing in luggage and travel bags. Both parties claim rights to the "CARLTON" mark in class 18 goods, albeit for different product categories. The court analyzed evidence regarding the adoption, registration, and usage of the marks, considering factors such as consumer perception, likelihood of confusion, and trans-border reputation. While Carlton established a prima facie case of infringement, the court deferred injunctions pending the submission of additional evidence. The case highlights the complexities inherent in trademark disputes and the importance of thorough examination of factual evidence and legal principles.
Carlton Shoes Ltd. and Ors. v. VIP Industries Ltd.
CS(COMM) 730/2019 & CS(COMM) 52/2020
Decided on: July 17, 2023
Carlton is a well-known manufacturer of footwear and fashion accessories, with a long history of using the trademarks "CARLTON LONDON" and "CARLTON". These marks were adopted in 1992 and 1993 respectively. In order to protect its intellectual property, Carlton registered the word mark "CARLTON" under Application No. 627450 in India on May 6, 1994, for class 18 goods, such as leather, trunks, and bags. At the same time, the distinct mark "CARLTON LONDON" was also registered. The earliest registration for "CARLTON LONDON" internationally was on September 28, 1998, under No. UK00002178254, securing class 25 goods, including footwear, in the United Kingdom.
VIP Industries is a well-known figure in luggage and travel bags, with a history dating back to its incorporation in 1968. Initially adopting the mark "DIPLOMAT CARLTON" in 1980 and later "CARLTON" in 1986, VIP’s predecessor paved the way for the mark’s use. By applying for UK registrations on December 23, 1986 (class 25) and May 19, 1988 (class 18), VIP’s predecessor established its presence. VIP’s expansion to over 50 countries by 1994 fueled the application for "CARLTON" mark registration in India on July 26, 1995, valid in class 18. Subsequent acquisitions and assignments, notably from Carlton International PLC in 2004, solidified VIP’s rights. On April 21, 2006, VIP’s mark "CARLTON" was officially registered in class 18 in India through Application No. 1445045, marking usage since May 25, 2004.
It is important to note that Carlton’s mark "CARLTON" is registered in class 18, which encompasses leather goods and similar items, while VIP’s "CARLTON" mark is similarly registered in class 18, but encompasses travel bags, suitcases, laptop bags, and more.
Arguments on Behalf of the Plaintiff:
Carlton is claiming that VIP's use of identical or similar marks for class 18 goods is an infringement and passing off, leading to misrepresentation and confusion. Carlton is relying on statutory rights under Section 28 of the Trade Marks Act, 1999, and protection under Section 29. Carlton alleges that VIP's claims of prior adoption and use of the mark "CARLTON" are not backed by any evidence. Carlton also argues that VIP's delay in asserting their rights, along with Carlton's trans-border reputation, strengthens their claim. Carlton further asserts the existence of common law rights through the extensive use of the marks and their reputation.
Arguments on Behalf of the Defendant:
VIP is denying any infringement and asserting that they have been using the "CARLTON" mark since the 1980s. They claim ownership of common law rights and trans-border reputation due to substantial sales, advertising, and goodwill. VIP is also arguing that Carlton's use of the mark is fraudulent and relying on Section 34 of the Trade Marks Act, 1999. They also assert that Carlton's delay in seeking injunctions constitutes acquiescence. VIP claims that its adoption of the mark predates Carlton's usage and that Carlton has adopted the mark dishonestly. Moreover, according to VIP, both parties can coexist in the market as they deal in different goods, and there is no likelihood of confusion.
Court’s Decision:
The court reviewed the legal principles related to trademark infringement and passing off. It highlighted the importance of consumer perception, the likelihood of confusion, and the existence of registered and unregistered marks.
On the issue of infringement, the court examined the similarities between the marks and the goods in question. While both parties used the "CARLTON" mark, Carlton's usage preceded VIP's. However, VIP failed to prove its prior use before Carlton's registration of the mark. VIP's case relied on an assignment agreement in 2004, but it did not demonstrate usage by its predecessor before that.
The court considered VIP's claim of trans-border reputation and spill over effect. It held that VIP's reputation was mainly related to class 18 goods, while Carlton's reputation pertained to footwear and accessories. The spill over effect, as argued by VIP, was not established as there was no evidence of VIP's goods being sold in the footwear market.
Regarding the issue of delay, the court noted that Carlton's adoption of the mark in 1992 was followed by continuous use, substantial sales, and advertisements. Therefore, Carlton's delay in seeking injunctions did not imply acquiescence.
The court addressed the question of laches, holding that VIP was aware of Carlton's mark but did not assert its rights for over two decades. Thus, laches could be attributed to VIP, and the delay was not a bar to Carlton's claim.
The court concluded that Carlton had established a prima facie case of infringement. However, in the absence of material on balance of convenience and irreparable loss, the court deferred the grant of injunctions. It directed Carlton to furnish additional evidence within six weeks.
Court’s Analysis
The court acknowledged the validity of Carlton's registered trademark "CARLTON" for class 18 goods. Carlton established a prima facie case of infringement, but the court deferred the grant of injunctions pending the submission of additional evidence. The case underscores the complexities involved in trademark disputes, requiring a thorough examination of factual evidence, legal principles, and the specifics of each party's claims.
