Levi Strauss & Co. vs Imperial Online Services Pvt. Ltd & Ors.
DATE OF ORDER:
24th March 2022
Justice Prathiba M. Singh
Petitioner: Levi Strauss & Co.
Respondent: Imperial Online Services Private Limited & Ors.
In the realm of non-traditional trademark protection, the well-known case of Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. is certain to become a seminal ruling. Whether stitching patterns qualified for trademark protection under the Trade Marks Act of 1999 was the central question in this case. The recognizable design of Levi's jeans was recognized as a well-known mark and granted trademark protection. To stop the defendants, Imperial Online Services Pvt. Ltd., from abusing the "Arcuate Stitching Design," Justice Pratibha M. Singh issued an injunction.
- In the current claim, Levi Strauss & Co., the plaintiff, is requesting relief in the form of a permanent injunction to prevent trademark infringement, copyright infringement, and trademark passing off. In the lawsuit, the plaintiff is requesting protection for its stitching design, which is referred to as the "Arcuate Stitching Design" mark.
- The plaintiff claims that the claimed mark was approved in 1873 and is applied to all textiles that the plaintiff manufactures and sells, including denim jeans. The plaintiffs claimed that the defendants offered denim jeans for sale on www.urbanofashion.com and other e-commerce sites bearing a mark akin to "Arcuate Stitching Design." A number of e-commerce websites, including amazon.in, flipkart.com, nykaafashion.com, myntra.com, snapdeal.com, limeroad.com, and paytmmall.com, are where the plaintiff found the infringing products.
- Notices had been delivered to the Defendants by the Plaintiff. The Defendants acknowledged the Plaintiff's exclusive and sole rights to the "Arcuate Stitching Design" mark in their response to the notices. The Defendants further agreed not to manufacture, distribute, or sell any more goods, including jeans, bearing the Plaintiff's mark or any stitching design similar to it, and to remove all infringing products within six months of the date of the undertakings.
- The Plaintiff filed the current lawsuit because the Defendants persisted in producing and marketing the aforementioned denim pants with the Plaintiff's Arcuate Stitching Design mark after the undertaking.
- Are patterns with stitching allowed to be protected as trademarks?
- Was the Levis logo imitated by Imperial Online Services?
ARE STICHING PATTERNS ELIGIBLE FOR PROTECTION AS A TRADEMARK?
- Simply put, a trademark is a mark that businesses use to make it easier for customers to identify their goods and services. As buyers, we recognize these products by their trademark and connect them to their owner.
- There are two types of trademarks: traditional and non-traditional. Examples of the former include words, names, devices, logos, labels and packaging, letters, numbers, and so on. Nevertheless, the idea of a trademark has evolved over time to include things' forms, colour schemes, noise levels, and scents.
- Traditional trademarks include the aforementioned categories. The question in question is whether a non-traditional trademark and the Arcuate Stitching Design pattern, which distinguishes Levi Strauss & Co. jeans, qualify as trademarks or not.
- Under Section 2(m) of the Trade Marks Act of 1999, which defines a mark as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, a form of product, packaging, or colour combination or any combination thereof, the action seeks trademark recognition for the design. This landmark ruling states that a stitching design can be trademarked and gives people pause to consider registering unusual or non-traditional marks as trademarks.
CONTENTIONS OF THE PARTIES
- The defendants filed a written statement after being served, stating that they could not strictly adhere to the original six-month extension for stock disposal because of the pandemic period and related lockdowns.
- They added that their sales were severely hampered by the lockdowns during COVID for more than two months.
- However, in compliance with the Undertaking's request, the Defendant deleted all inventory branded with the Arcuate Stitching Design Trademark and was currently updating its product listings on all platforms to reflect the revised designs.
- After notifying the Plaintiff of the delay in updating the product listings and the unexpected impact of the pandemic situation on its sales, the Defendant asked for an extra three weeks to finish the removal. Permission to cease using the Arcuate Stitching Design Trademark by October 15, 2021 was granted by the Plaintiff to the Defendant.
- The aforementioned makes it evident that the defendant's use of the Arcuate Stitching Design Trademark was initially honest and concurrent use. Following that, use was allowed until October 15, 2021, in compliance with Section 2(r)(ii)(c) of the Trade Marks Act, 1999.
- In addition, the defendant asserted that as of October 15, 2021, it had ceased selling any products bearing the Arcuate Stitching Design trademark and had taken down all of its products from all platforms. In a letter dated December 16, 2021, the Defendant also informed the Plaintiff of this fact.
- The plaintiff claimed that the defendants are in contempt of court because they are not following the court's ad interim injunction and are not honoring the promises they made in the undertaking.
- Attorney for the Defendants stated that the Defendants did not intend to manufacture or sell any fabrics, textiles, or clothing bearing the Plaintiff's "Arcuate Stitching Design" mark, and that they were willing to accept the permanent injunction. The Defendants counter that the Plaintiff is requesting legal costs and damages totalling Rs. 8.5 lakhs.
- The Single Judge Bench, which includes Justice Pratibha Singh, concludes after much consideration that a stitching design qualifies for trademark protection under Section 2(m) of the Trademark Act.
- The argument was that even in the absence of a logo or company name on the product, consumers would still identify the plaintiff with the design because it was so well-known. After being used for a century and a half, the mark seems to have evolved into a highly recognizable secondary symbol.
- The "Arcuate Stitching Design" mark ought to be recognized as a well-known mark due to the lengthy 150-year history of its use on Levi's jeans, pants, skirts, and other apparel, in addition to the previously mentioned factors. The lawsuit was ultimately won by the plaintiffs, and the Trademark Act's declaration of the "Arcuate Stitching Design" mark as a well-known mark was made by the court.
- The defendants were also mandated by the court to pay 4 lakhs in damages for violating the plaintiffs' design rights.
INTERNATIONAL OVERLAPPING BETWEEN DESIGN AND TRADEMARK
- Similar to the idea I have discussed above, there is a case. Over the course of 164 years, Burberry has maintained its pattern, but it has had to defend its "haymarket check" trademark against infringement.
- Following it thorough investigation and review of the available data, the Italian Supreme Court concluded that this pattern has gained goodwill and, as a result, serves as a trademark, or source indicator.
- Because the Burberry pattern is "known by a large portion of the public and can be immediately recognized as relating to the products and services for which the mark is used," it has been granted trademark recognition.
- The Court also acknowledged that consumers connected the trademark to Burberry's, and that any attempt to copy even a small part of the mark would lead to confusion among consumers regarding its affiliation with the original trademark.
- Comparably, the question of whether the "Isetan Tartan" pattern can be registered as a trademark is covered in the 2019 Singapore High Court case Scotch Whisky Association v. Isetan Mitsukoshi Ltd. The Japanese department store chain Isetan owns the checkered repeating pattern known as tartan, which is woven into wool fabric and consists of bands, stripes, or lines of various colors with a predetermined width and order. In this instance, the origin of this design was disputed.
To put it simply, a trademark is a symbol that companies use to identify their goods and services. As buyers, we recognize these products by their trademarks and connect them to their proprietor. There are two categories for trademarks: traditional and non-traditional. Names, words, devices, logos, labels and packaging, letters, numbers, and so forth are examples of the former. But over time, what constitutes a trademark has changed to encompass non-traditional trademarks, such as combinations of colors, shapes of objects, patterns on products, noises, and scents. This court decision states that the stitching design is patentable and opens the door to registering non-traditional or unusual marks as trademarks.