Delhi HC upholds injunction order stopping luggage-maker VIP from using ‘Carlton’ mark
In 2019, VIP had issued a legal notice to Carlton Shoes Limited, objecting to the use of ‘Carlton’ for bags, which VIP claimed to have been using for its bags, suitcases, etc., since 2006.
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The Delhi HC reprimanded Patanjali over its advertisements against Dabur. (Express Photo)A division bench of the Delhi High Court on Tuesday dismissed appeals challenging an injunction order against Indian luggage manufacturer VIP Industries from using the mark ‘Carlton’.
A division bench of Justices C Hari Shankar and Ajay Digpaul upheld a single judge’s order of July 17, 2023, ruling that Carlton Shoes Limited (CSL) had “goodwill of the CARLTON mark, as used by it in India, prior to the commencement of user of the CARLTON mark by VIP in 2006”.
A single judge order of July 17, 2023, dealing with cross suits of infringement by Carlton Shoes Ltd (CSL), incorporated in UK in 1992, and VIP Industries had injuncted VIP from using the ‘Carlton’ mark in respect of goods covered by Class 18 and had rejected VIP’s application for a similar injunction against CSL. Class 18 pertains to leather and imitations of leather, and goods made of these materials, and not included in other classes.
In 2019, VIP had issued a legal notice to CSL, objecting to the use of ‘Carlton’ for bags, which VIP claimed to have been using for its bags and suitcases and other such items since 2006. VIP had contended that it had been using the ‘Carlton’ mark for luggage, or travel luggage, and enjoyed the goodwill in the said mark for over 15 years, whereas CSL had never used the ‘Carlton’ mark for luggage till 2019.
It was argued that the goodwill earned by CSL in the ‘Carlton’ mark, by then, was only with respect to its use for footwear, and the goodwill earned by CSL by such use would not entitle them to maintain an action for passing off against VIP, even though there were some stray sales, by CSL, of Carlton purses and handbags.
Both CSL and VIP possess registrations of the mark ‘Carlton’ in Class 18.
The bench, deciding the appeals, framed the legal question: whether goodwill, for the purposes of determining a ‘passing off’ action, is of a mark, or of a mark in respect of particular goods or category of goods.
The bench ruled that “the goodwill that is required to be established in order to sustain a claim of passing off is goodwill in the mark, and not goodwill in the mark as used for any particular goods or services.”
Noting that the finding that “CSL having proved the existence of goodwill and reputation of the CARLTON mark, as used by it for more than 13 years prior to the commencement of user of the CARLTON mark by VIP for travel luggage, therefore, does not brook interference,” the court dismissed VIP’s appeals.
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