Since 1873, Levi Strauss & Co. (Levi) has been a pioneer in the manufacturing of denim jeans. Levi were granted a patent in the US for an "Improvement in Pocket-Opening Fastenings" back in 1873, namely for riveted pockets, and making work pants durable and long lasting for working men. Levi adopted a distinctive stitching design, known as ‘Arcuate Stitching Design’ and used it on all its textiles including denim jeans.
Source- Judgment
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Levi was aggrieved by the fact that Imperial Online Services Private Limited (Imperial Online) was also selling denim jeans with the identical ‘Arcuate Stitching Design’ mark through the website www.urbanofashion.com and other e-commerce platforms. Levi found the products with the infringing mark on various e-commerce platforms.
Source- Judgement
*We do not claim any copyright in the above images. They have been reproduced for representational and educational purposes only.
Levi issued legal notices to Imperial Online. Thereafter, in compliance thereto, Imperial Online had executed undertakings as of February 16, 2021, inter alia acknowledged Levi’s rights in the 'Arcuate Stitching Design' mark and, in recognition thereof, promised to cease all usage of the said mark and also remove all goods bearing the impugned mark from circulation within six months from the date of undertakings. However, despite so undertaking, Imperial Online continued to manufacture and sell denims bearing the 'Arcuate Stitching Design' mark. Levi approached the Delhi High Court seeking an interim injunction against Imperial Online from infringing its trademark in the stitching design.
The Court in December 2021 granted an ad-interim injunction in favour of Levi and restrained Imperial Online from manufacturing, marketing, offering for sale any goods bearing any mark which was deceptively similar to Levi’s registered mark.
When the injunction order was served on Imperial Online, it filed a written statement and sought an initial extension of six months for disposal of the stock, however, it mentioned that the same could not be diligently adhered to due to the pandemic period and lockdowns impacted their sales. However, in compliance with its obligations as per the undertaking, it had cleared all stock containing the Arcuate Stitching Design Trademark and was in the process of updating its product listings across platforms to reflect its updated designs.
Meanwhile, Levi sent a takedown request to imperial online for its product listings on an e-commerce website like Amazon alleging a violation of its obligations under the Undertaking. Imperial Online sought an additional period of 3 weeks to effectuate the removal. Levi permitted Imperial Online to cease all use of the Arcuate Stitching Design mark by October 2021.
However, Levi claimed that Imperial Online’s products were still available on various e-commerce platforms and that was not abiding by the undertakings given by it as well as the ad-interim injunction granted by the Court on an earlier date and hence was guilty of contempt.
On the other hand, Imperial Online submitted that it was willing to suffer the decree of permanent injunction and had no intention of manufacturing and offering for sale textiles or garments with the ‘Arcuate Stitching Design’ mark of Levi. However, it objected to Levi’s demand for a sum of 8.5 lakhs as legal cost and damage.
The issues for consideration before the Court whether a stitching pattern, which was not the product design, but merely a pattern incorporated onto Levi’s products, served as a trademark, insofar as associating the jeans with Levi? Upon deliberation, the Court concluded the answer positively. The Court observed that since the trademark owner's stitching pattern, even in the absence of a corresponding name or a logo, uniquely identified the jeans as emanating from Levi, the pattern fulfilled its purpose in serving as a trademark.
The Court considering all the submissions and several precedents relied upon by Levis further observed that the ‘Arcuate Stitching Design’ mark had acquired a secondary meaning based on the following facts:
- The Stitching Design mark had been used on Levi’s jeans, pants, and trousers since the first pair of jeans were created by it in 1873
- The first trademark registration for the ‘Arcuate Stitching Design’ mark dates back to 1943, granted in the US.
- Since then, the mark had been registered as a trademark by Levi in several countries.
- The mark is also a registered trademark in India in class 25.
Hence, the Court was pleased to decree the matter in favour of Levi and awarded nominal costs of 4 lakhs to it, in order to bring an end to the matter expeditiously. Furthermore, a decree declaring the said mark to be a 'well-known' mark was passed. All the e-commerce platforms were directed to ensure that the said images containing Levi’s mark are removed from their websites and that no further sale of any garments with the ‘Arcuate Stitching Design’ mark is permitted on their platforms.
This decision is an important in the sphere of recognition and protection of non-traditional trademarks in India and shall be surely relied upon in future matters pertaining to similar subjects.
