In a landmark decision on April 29, 2024, the Delhi High Court delivered a significant verdict in favour of Bulgari S.P.A., a luxury brand synonymous with innovative jewellery, watches, and accessories. Justice Sanjeev Narula granted an ad-interim injunction to Bulgari, protecting the brand from ongoing trademark and copyright infringement by The Amaris Flagship Store, operated by Ms. Prerna Rajpal. Let's dive into the details of this fascinating case and understand the Court's reasoning behind the decision.
The Background: David vs. Goliath In The Luxury World
Bulgari S.P.A (“Bulgari”), the Italian luxury giant, is renowned globally for its exquisite designs. Bulgari initiated a lawsuit against Ms. Prerna Rajpal's store, alleging that her business ‘The Amaris Flagship Store' (“Amaris”), was infringing upon two of their iconic collections: ‘SERPENTI' and ‘B.ZERO1'. Bulgari holds trademark registrations for ‘BVLGARI SERPENTI', ‘BVLGARI', ‘BVLGARI BVLGARI', and variations of ‘B.ZERO1' and ‘SERPENTI' across numerous classes worldwide, establishing their prior usage. Bulgari contended that Amaris had replicated their designs, violating their intellectual property rights.
The conflict surfaced in August 2022 when Bulgari discovered Amaris copying designs from their ‘Serpenti Ocean Treasure Necklace' an original artistic piece. Despite cease-and-desist notices, Amaris continued marketing products resembling Bulgari's designs and denied that there was any similarity between the two. Bulgari stressed their ownership of the ‘SERPENTI' trademark and copyright in the ‘Serpenti Ocean Treasure Necklace', emphasizing the distinctiveness and goodwill associated with their brand. They provided evidence of trademark registrations, copyright ownership, and instances of infringement by Amaris.
The Arguments: Defending Creativity & Originality
Bulgari's case rested on the evidence and submissions of their registered trademarks and copyrights in multiple jurisdictions, including India. Bulgari argued that their brand's goodwill was based on the patterns, ornamentation, placement of stones, and distinctive overall appearance of their products. They argued that Amaris's products, such as the ‘Shield-It Necklace', bore striking similarities to Bulgari's ‘Serpenti Ocean Treasure Necklace', for which Bulgari held a copyright registration in Rome. This, they claimed, was a clear case of copyright infringement and passing off. Bulgari presented side-by-side comparisons of the designs, highlighting the alleged infringements. They accused Amaris of copying patterns, ornamentation, and the overall trade dress of their products, leading to potential consumer confusion and damage to Bulgari's brand reputation.
Further, Bulgari asserted that the defendant's products copied the distinctive artistic elements of their ‘Serpenti Ocean Treasure Necklace', thus infringing on their copyright. They emphasized that their design is protected under the Copyright Act, 1957, supported by its registration in Italy and the Berne Convention, which extends this protection to India as per Section 40 of the Copyright Act, 1957. Bulgari further argued that their works did not fall under the exclusion of Section 15(2) of the Copyright Act, 1957, because they had not reproduced any article more than 50 times, nor had the product been produced by any industrial process.
Court's Analysis
The Court examined the evidence, including Bulgari's trademark registrations and previous judicial recognition of Bulgari's ownership of their distinctive designs and marks. It noted substantial similarities, visually and structurally between the contested designs and acknowledged the merit of Bulgari's claims.
The Court also recognized Bulgari's exclusive rights over
the ‘SERPENTI' trademark and the originality of its
artistic works through its various registrations worldwide.
Consequently, it was held that Amari's use of the identical
mark for their identical products made a clear case of trademark
infringement under Section 29(2)(c) read with Section 29(3) of the
Trade Marks Act, 1999.
The court found that Bulgari had established a prima facie case for
trademark infringement. The defendant's use of the
‘SERPENTI' mark on similar products was deemed likely
to cause consumer confusion. The Court emphasized that
Bulgari's trademarks had gained significant recognition and
protection under the Trade Marks Act, 1999, due to their extensive
use and registration worldwide.
Judgement: Protecting Bulgari's Creative Legacy
Based on the evidence and arguments presented by Bulgari, Justice Sanjeev Narula granted an ad-interim injunction in favour of Bulgari. A detailed comparison of the contested designs revealed striking similarities, indicative of potential copyright and trademark infringement by Amaris, and hence, the Court restrained The Amaris Flagship Store from:
- Manufacturing, marketing, importing, exporting, using, selling, soliciting, displaying, and advertising on the internet or through physical stores, websites, and social media pages their ‘Shield-It!' necklace or any products resembling Bulgari's ‘Serpenti Ocean Treasure Necklace'
- Using the ‘SERPENTI' trademark or similar variations of the marks in any of their jewellery products' name, description, or promotion, including social media posts.
The Court observed that an immediate injunction was crucial to prevent further damage and loss to Bulgari's brand reputation and market presence.
Conclusion
The Delhi High Court's decision to uphold Bulgari's rights marks a significant victory for intellectual property protection across jurisdictions. It safeguards Bulgari's original creative work and sets a vital precedent in the industry, emphasizing the importance of originality protected under Indian intellectual property laws.
The case reinforces the protection of well-known trademarks in India, underscoring the importance of registration and consistent use in building a robust trademark portfolio. Further, the Court's acknowledgment of Bulgari's international copyright registrations under the Berne Convention highlights the global nature of intellectual property rights and the necessity for businesses to secure and enforce these rights across different jurisdictions. The acceptance of videographic evidence by the Court also sets a precedent for the inclusion of digital records in legal proceedings, reflecting the evolving nature of evidence in the digital age.
This case underscores the importance of respecting creative integrity and serves as a warning to those who attempt to infringe upon well-established trademarks and copyrights worldwide. Additionally, the stringent measures taken against Amaris serve as a deterrent to potential infringers, indicating that the courts are vigilant in protecting intellectual property rights.
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