Shoppers Stop Ltd. v. Vinod’s Shoppers Stop
CS(OS) No. 458 of 2015
Delhi High Court
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, the Plaintiff had created a formidable reputation as a multi-brand retail chain of various products.
In January, 2015, the Plaintiff came to know that the Defendant is using the mark ‘Vinod’s Shoppers Stop’ for identical goods and services.
The Plaintiff filed the present suit for permanent injunction seeking to restrain the Defendant from infringing its trade mark , passing off, dilution etc. As the Defendant chose not to appear after the first date of return of summons, the matter was directed to be proceeded ex-parte by the Hon’ble Court.
The Plaintiff lead its ex-parte evidence and the following facts were uncontroverted
- Plaintiff has 81 stores across 38 cities including the prominent cities of Delhi, Mumbai, Kolkata, Chennai, Bangalore, Hyderabad, Ahmedabad, Pune, Jaipur, Noida, Agra and Gurgaon.
- 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.
- 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.
- The Plaintiff’s sales revenue in 2012-2013 was Rs. 2560 crores.
- The Plaintiff has an e-commerce website bearing the domain name http://www.shoppersstop.com under which it delivers to more than 1200 cities and towns across the country.
- The mark ‘SHOPPERS STOP’ is being extensively used by the Plaintiff pan India. The mark ‘SHOPPERS STOP’ has a nationwide presence and cuts through all age groups.
- The mark ‘SHOPPERS STOP’ has been extensively covered by the media as well. The Plaintiff also provides multiple advertisements on print media, including but not limited to Delhi Times and Times Nation.
There is merit in the Plaintiff’s case that the use of the trade mark ‘VINOD’S SHOPPERS STOP’ by the Defendant indicates to the consumer that the Defendant is associated with the Plaintiff or that there is a trade connection between them. The chances of the confusion are enhanced by the fact that both the parties are in the business of operating retail outlets that deal with fashion apparels. The Defendant is thus trying to exploit the reputation and goodwill of the Plaintiff in order to reap profits and gain unlawful advantage. This also constitutes a dilution of the Plaintiff’s trade mark in addition to infringement of trademark, trade name and passing off of the goods of the Defendant as those of the Plaintiff. The Plaintiff and the Defendant are undertaking the same activity, i.e., multi-brand retail outlets. The class of consumers of the goods and services of the Plaintiff and the Defendant are also identical.
The Plaintiff has been able to show that its mark Shoppers Stop has attained the status of a well known mark as defined under Section 2 (zg) of the Trade Marks Act 1999 i.e. “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.” It accordingly deserves a higher degree of 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.