SHOPPERS STOP LTD. V. VINOD’S SHOPPERS STOP
CASE NO: CS (OS) 1954/2015
ATTORNEY(S): Mr. Ankit Rustogi (Advocate), Mr. Jayant Kumar (Advocate)
JUDGES: Hima Kohli, J.
CASE LAW:
A Plaintiff is a person who brings a case against another in the court of law. In this case, the Plaintiff was the proprietor of the mark ‘SHOPPERS STOP’ in all Classes and was using the same since 1991 as a trade mark and as part of trade name. Over the years, Plaintiff’s Shoppers Stop had created a formidable reputation as a multi-brand retail chain of various products.
In January 2015, the Plaintiff got to know that the Defendant is using the mark ‘Vinod’s Shoppers Stop’ for similar goods and services. The Plaintiff filed a suit for permanent injunction seeking to restrain the Defendant (Vinod’s Shoppers Stop’) from infringing its trade mark, passing off, dilution etc. As the Defendant did not appear after the first date of return of summons, the matter was forwarded to be proceeded by the Hon’ble Court’s ex-parte.
The Plaintiff led its ex-parte evidence and the following facts were uncontroverted:
1. The Plaintiff’s Shoppers Stop has 81 stores across 38 cities including the prominent cities of Delhi, Mumbai, Kolkata, Chennai, Bangalore, Hyderabad, Ahmedabad, Pune, Jaipur, Noida, Agra and Gurgaon.
2. The trademark ‘SHOPPERS STOP’ of the Plaintiff has been registered in almost all classes for the territory of India and Plaintiff also has foreign registrations in the territory of USA, UAE and the European Union.
3. Moreover, the Plaintiffs loyalty programme which is the First Retail Loyalty Programme called the First Citizens Club crossed the 2.8 million mark in 2012-2013 and is one of the largest loyalty programme across sectors.
4. The Plaintiff’s Shoppers Stop sales revenue in 2012-2013 was Rs. 2560 crores.
5. The Plaintiff has an e-commerce website bearing the domain name www.shoppersstop.com under which it delivers to more than 1200 cities and towns across the country.
6. The mark ‘SHOPPERS STOP’ is being extensively used by the Plaintiff pan India. The mark ‘SHOPPERS STOP’ has a country wide presence and has goods and services for all age groups.
7. The mark ‘SHOPPERS STOP’ has been extensively covered by the media as well. The Plaintiff’s Shoppers stop also provides various advertisements on the printed media.
COURT’S OBSERVATIONS:
There is an upper hand of Plaintiff’s in this case, that the use of the trade mark ‘VINOD’S SHOPPERS STOP’ by the Defendant shows to the customers that the Defendant is linked with the Plaintiff’s Shoppers Stop and/ or that there is a trade connection between them. There are chances of confusion enhanced by the fact that both the parties are in the same business of operating fashion apparel retail outlets.
The Defendant is trying to spoil the reputation and goodwill of the Plaintiff’s Shoppers Stop in order to extract profits and gain advantage unlawfully. This also states a dilution of the Plaintiff’s Shoppers Stop trade mark in addition to infringement of trademark, trade name and passing off of the goods of the Defendant as those of the Plaintiff’s Shoppers Stop. The Plaintiff and the Defendant are having the same activity, i.e., multi-brand apparel retail outlets. The class of consumers of the goods and services of the Plaintiff and the Defendant are also similar.
The Plaintiff has shown that its mark Shoppers Stop has achieved the status of being a well-known mark as defined under Section 2 (zg) of the Trade Marks Act 1999 i.e. “a mark that has become so substantial segment of the public who uses its products or receives such services that the usage of such mark in reference to other product or service would be taken as indicating a connection in the course of trade or rendering of services between the goods or services and a person using the mark in reference to the first-mentioned goods or services.” It accordingly requires a lot higher protection as explained in Ford Motor Company v. C R Borman 2014 (59) PTC 132.
The suit was decreed in favour of the Plaintiff and the Defendant was restrained from infringement of Plaintiff’s trade mark, passing off and unfair competition.