Bvlgari SPA (Bulgari) and Notandas Gems Pvt. Ltd. (Notandas) both are engaged in the business of manufacturing high-end jewellery. Bulgari is the owner of the following trademarks –
Source - Judgement
*We do not claim any copyright in the above image. The same is used only for representational and academic purposes.
Bulgari approached the Delhi High Court alleging infringement of their trademark "SERPENTI" by Notandas who was using the mark “SERPENTINE” for their products.
Source - Judgement
*We do not claim any copyright in the above image. The same is used only for representational and academic purposes.
Bulgari contended that the mark "SERPENTI" was closely associated with their range of niche high-end jewellery and the same has been in use since the 1940. Bulgari further contended that Notandas had adopted a trade dress (packaging, design and colour-scheme) that was deceptively similar to theirs.
Against this, Notandas invoked Section 17 of the Trade Marks Act, 1999 (Act) to contend that, it was not permissible for Bulgari to claim exclusivity in respect of "SERPENTI" alone, which constituted a part of the composite mark (A composite trademark consists of a combination of elements. These elements may include words, devices, shapes, sounds, scents, and/or colours.) Notandas also invoked Section 30(2) of the Act to contend that "serpentine" being merely an adjective form of "serpent", Bulgari could not claim exclusivity in respect thereof. Notandas further contended that the Delhi High Court had no territorial jurisdiction to adjudicate on the matter as their exclusive store located in Delhi had been shut and mere interactivity of their website could justify invocation of the jurisdiction of the Court.
The Delhi High Court after considering the contentions of both parties framed the following issues –
i) Whether the Plaint was bad for want of territorial jurisdiction?
ii) Whether a prima facie case of infringement of a trademark was made out?
iii) Whether a prima facie case of infringement of design was made out? On the point of territorial jurisdiction, the Court relied on precedents to clarify the issue and noted that interactive websites can be divided under two heads namely;
(a) Websites which merely provide information and;
(b) Websites across which goods or services may be purchased or availed for consideration.
Where the website falls under the first category (a), the Court will not have territorial jurisdiction unless and until it is shown that such information was accessed by a person located within the jurisdiction of the Court before which the plaint is preferred. While under the second category (b), once the Defendant has made its goods, or services, available for consideration, online, it has, prima facie purposefully availed the jurisdiction of Courts in all territories to deal with a case of trademark infringement where such transactions can be carried out and consummated. With regards to trademark infringement, the Court noted there is a phonetic similarity between the expressions "SERPENTI" and "SERPENTINE". As far as invoking section 17 of the Act, the Court observed that section 17 has a proscription embedded against claiming exclusivity over a part of a composite mark unless such part is separately registered as a trademark. However, the Court noted that “SERPENTI” constitutes a prominent/dominant mark in Bulgari’s registered marks and Notandas had prima facie infringed upon the same for using "SERPENTINE" as their mark for their high-end jewellery brand.
As far as design infringement was concerned, Bulgari held design registrations in respect of bracelet and wristwatch.
-------------------------(Wristwatch)----------------------------(Bracelet)
Source - Judgement
*We do not claim any copyright in the above image. The same is used only for representational and academic purposes.
The Court noted that innovation and novelty run through the scheme of the Act and that Notandas’s design was different from Bulgari’s. Hence, no case of infringement could be made out. The Court concluded saying that at the most a case of passing off could be made out. However, no specific averments were present in Bulgari’s plaint. Accordingly, the Court granted an interim injunction restraining Notandas from using the trademark "SERPENTINE" in respect of any of its products and dismissed the application.
This judgement is important as the Court has cleared an all-time confusion regarding territorial jurisdiction with respect to online infringement in IP matters. This judgement shall help parties to decide the jurisdiction cautiously after analysing the two heads in cases of online infringement.
