Uncoiling the ‘Serpent’: A Case Comment of Bulgari Spa v. Notandas Gems

The jurisdiction of the courts in cases of trademark infringement has been a moot point till now with various facets of IP infringements revealing due to social and technological advancements. With the rise of transactions on the e-commerce platforms and online shopping, the courts have tried to confer the territorial jurisdiction on the competent courts to decide the cases of trademark infringements. In the recent decision in Bulgari Spa v. Notandas Gems Pvt. Ltd. [CS(COMM) 658/2021], the Hon’ble Delhi High Court has removed the ambiguities in this regard and has determined whether the Hon’ble court has the jurisdiction to decide in case of trademark infringement where the transaction was consummated through website and no other cause of action has arose within the jurisdiction of the court. Furthermore, the Delhi High Court has cleared the clouds over the questions of infringement in case of composite marks and elements which form the ‘uniqueness’ in a design.

The jurisdiction of the courts in cases of trademark infringement has been a moot point till now with various facets of IP infringements revealing due to social and technological advancements. With the rise of transactions on the e-commerce platforms and online shopping, the courts have tried to confer the territorial jurisdiction on the competent courts to decide the cases of trademark infringements. In the recent decision in Bulgari Spa v. Notandas Gems Pvt. Ltd. [CS(COMM) 658/2021], the Hon’ble Delhi High Court has removed the ambiguities in this regard and has determined whether the Hon’ble court has the jurisdiction to decide in case of trademark infringement where the transaction was consummated through website and no other cause of action has arose within the jurisdiction of the court.

Facts of the case

The plaintiff, Bulgari Spa is a leading manufacturer and dealer of the luxurious jewellery since 1940s and its products (wristwatches and bracelets) were identified by its unique snake-like design in the jewellery market. The plaintiff in this respect undisputedly held four registered trademarks with a common word “SERPENTI”. Moreover, in 2015, the device mark of a snakehead as well as the design of its wristwatches was also registered under the Designs Act, 2000. On the other hand, the defendant, Notandas Gems Pvt. Ltd. was also a manufacturer of the high end luxury jewellery in India.

The dispute arose from the defendant starting to use the mark “SERPENTINE” and at the same time using a similar snake-like design for its manufactured bracelets. Subsequent to this, the plaintiff filed a suit for the trademark infringement and design infringement under the Trademarks Act, 1999 and Designs Act, 2000 respectively along with an injunction application.

Contentions raised by the Parties

The plaintiff at the first instance contended that the contended mark “SERPENTI” was identifiable with its wide range of niche jewellery which was used since the 1940s. In furtherance to that the plaintiff argued that the defendant was using the mark “SERPENTINE” which is phonetically similar to mark of the plaintiff and thus was deceptively similar to the plaintiff’s in respect of identical jewellery the marks are identifying which are bracelets and wristwatches. With respect to the claim of design infringement, the plaintiff contended that the products of the plaintiff were identifiable for its unique snake-like design which was duly registered under the Designs Rules, 2001. In furtherance to it, relying on the judgment given in Castrol India Ltd. v. Tide Water Oil Co. (India) Ltd. MANU/WB/0501/1994, the plaintiff submitted that for design infringement it is not necessary that the entire design or every aspect thereof, is infringed, it is sufficient if, as a whole, the design of the defendant is deceptively similar to that of plaintiff.

In response, the defendant made the submissions that the trademarks registered in the name of plaintiff are composite in nature and under section 17 of the Trademarks Act, 1999, the plaintiff could not claim exclusivity in respect of “SERPENTI” which comprises a part of the composite marks. The defendant also contended in this respect that the term “SERPENTI” was common to the trade in the jewellery market in India and several jewellery manufacturers and dealers in India use the same for their products. The defendant in its last and most important submission challenged the territorial jurisdiction of the Delhi High Court to hear and decide the present matter.

Territorial Jurisdiction

In deciding the territorial jurisdiction of the Delhi High Court, the learned bench upheld the jurisdiction test relevant for the e-commerce platforms. It was propounded that the where the website or platform merely provides information, the court would not have the jurisdiction to deal with the case unless and until it is shown that such information has been accessed by a person located within the jurisdiction of the court, thus creating a cause of action within the jurisdiction of the court. However, in the present case, the court interestingly pointed out that the defendant’s website was in fact interactive in nature and permits commercial transactions through it.

In such cases, the courts which have the jurisdiction over the places from which such commercial transactions can be effected and concluded will have the jurisdiction to deal with trademark infringements. Court in this regard relied on the principle given in the V. Guard Industries Ltd. v. Sukan Raj Jain MANU/DE/1209/2021, where it was held that 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 where such transactions can be carried out and consummated.

Relying on the principle laid down in Guard industries, the court held that Delhi being the place from where the commercial transactions from the defendant’s website can be concluded, the Delhi High Court has the territorial jurisdiction to decide the case.

Trademark Infringement

While taking note on the submissions of the defendant, the court observed that the plaintiff has used the word “SERPENTI” along with other words like “BVLGARI”, “HYPNOTIC”, etc. and not in singularity. In this respect it is a settled law that the trademark registered as a whole cannot possibly give any exclusive rights to the proprietor to the use of any particular word in it. However, the court while considering the matter also considered the apparent phonetic similarity between the marks “SERPENTI” and “SERPENTINE”. Applying the test of “Dominant part of mark” which was propounded in the South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. MANU/ DE/ 2574/ 2014, the Delhi High Court treated the word “SERPENTI” as the dominant part in all four registered marks and therefore, the case of injunction in the present matter is clearly made out.

In furtherance to its observations, the court also highlighted that the word “SERPENTINE” is not a mere adjectival of “SERPENTI” and is not commonly used in the jewellery market. Also it cannot be reasonably presumed that the bracelets are commonly manufactured and traded in the serpent shape and form and thus the word “SERPENTI” is prima facie associated with the plaintiff and act as a source identifier.

Design Infringement

The court while considering the question of design infringement tried to determine the factors to be considered for a registrable design. In this respect, the court held that as per the section 4 of the Designs Act, the novelty and originality are the sine qua non of any registrable design. The court further observed that the novelty of the products lies in their unique shape and configuration. In each case, the shape is in the form of a spiral with one loop of the spiral intersecting with the other and plain circular which makes the shape novel. Moreover, the intersection with trapezoid links, with alternate links being similar to each other makes for a novel configuration of the plaintiff’s products. In this aspect, the court concluded that the design of the defendant’s products are apparently dissimilar and can be easily distinguished from the plaintiff’s and therefore no case for design infringement can be made.

Conclusion

The observations Delhi High Court are highly important due to propounding and reaffirmation of several tests and therefore case sets as precedence on various legal issues relating to both the jurisdiction of the IP infringement cases and the infringement of trademarks and design. The court has correctly applied the “dominant part of mark” test in the case of composite marks and has rightly constructed the section 17 of Trademarks Act to give justice in the present matter.

The court in this case has once again has cleared the doubts regarding the territorial jurisdiction in the cases of IP infringement and has rightly reaffirmed the test given in Guard Industries to cover the e-commerce platforms and digital transactions within the ambit of Trademarks Act, thus securing the interests of the consumers and manufacturers at large, especially when the e-commerce platforms and the transactions on them are on constant rise.

The case also holds relevance from the design infringement perspective, and has rightly interpreted the essential requirements of the registering the design to propound the “novelty test”. The significance of the case also lies in the fact that more emphasis was placed on the novelty and uniqueness of the design rather than plain visual similarities.

Author: Pranay Agarwal – a student, of Gujarat National Law University,  in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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