Bulgari SPA v. Notandas Gems Pvt. Ltd.
(2022) 90 PTC 171
In the High Court of Delhi
CS (Comm) 658/2021 & I.A. 16751/2021
Before Justice C. Hari Shankar
Decided on February 21, 2022

Relevancy of the Case: Territorial jurisdiction based on the interactiveness of a website and the defendant’s store location in a trademark infringement case

Statutes and Provisions Involved

• The Trade Marks Act, 1999 (Section 17, 30, 134)
• The Code of Civil Procedure, 1908 (Section 20)
• The Design Act, 2000

Relevant Facts of the Case

• The plaintiff and the defendant are both involved in manufacturing and selling luxury jewellery.
• The plaintiff’s registered trademarks are Bvlgari Serpenti, Serpenti Hynoptic, Serpenti Incantati, and Serpenti Seduttori. There is another trade mark: a device mark of a snakehead. Apart from this, the plaintiff also has multiple design registrations under the Design Act, 2000.
• The plaintiff claims that the defendant has used the word “Serpentine” in their product, resulting in trademark infringement.
• The plaintiff has claimed the High Court’s jurisdiction as the defendants have a store in South Delhi. Further, the plaintiff states that the defendant’s website is accessible from the court’s territorial jurisdiction.

Prominent Arguments by the Advocates

• The plaintiff’s counsel submitted that the mark Serpenti has become a part of the plaintiff’s business identity. This mark has been in use since the 1940s. The defendant has adopted a similar trade dress, which is identical to the plaintiff’s. Further, the word Serpenti is a prominent part of the plaintiff’s registered marks. An affected party can claim infringement for prominent words in the case of composite marks. The words “Serpenti” and “Serpentine” are also phonetically similar to each other.
• The defendant’s counsel opposed considering the work “Serpenti” as the prominent part of the registered marks. She outlined that the word serpentine is merely an adjectival form of the word “serpent”. The plaintiff cannot claim exclusivity in this respect. The Serpenti is a common mark in the jewellery industry. The defendant’s counsel further pointed out that this suit is bad for the want of territorial jurisdiction. The South Delhi has been closed for a while. The defendant has only one store, which is in Mumbai.
• In the rejoinder, the plaintiff’s counsel submitted that customers can transact through an interactive website from anywhere. Such customer, if affected, can file a suit before the court having territorial jurisdiction of their area.

Opinion of the Bench

• The court accepted the plaintiff’s counsel’s submission on the issue of jurisdiction.
• In the scope of bracelets, the term “Serpenti” cannot be treated as a descriptive word. However, the snakehead on the plaintiff’s product differs from the defendant’s.

Final Decision

• The plaintiff has made a prima facie case for trademark infringement of the word “Serpenti”. However, there is no prima facie case for design infringement.
• The court granted an interim injunction restraining the defendants from using the word “Serpentine”.

Srikari Ammanamanchi, an undergraduate student at the NALSAR University of Law, prepared this case summary during her internship with The Cyber Blog India in May/June 2022.