Valmiki J. Mehta JUDGMENT
Valmiki J. Mehta, J.
CS (OS) No. 2872/2015, I.A. No. 19847/2015 (Stay) and I.A. No. 19848/2015 (under Order XXVI Rule 9 CPC)
1. When this case came up day before yesterday the following Order was passed:-
"I.A. No. 19849/2015 (exemption)
1. Exemption allowed subject to just exceptions. I.A. stands disposed of.
CS(OS) No. 2872/2015 and I.A. Nos. 19847/2015 (stay) & 19848/2015 (under Order 26 Rule 9 CPC)
2. This Court was inclined to grant ex-parte interim orders today because prima facie it appears that defendants are trying to ride on the goodwill of the plaintiff created by the trademarks of the plaintiff "AMERICAN EAGLE OUTFITTERS/AMERICAN EAGLE". It may be noted that defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance with respect to the trademarks of the plaintiff much less for the same line of specialized goods being casual clothing. It is also noted that it is not as if the defendants are in the market for a long time and plaintiff has approached this Court with delay noting that Courts look at the issues differently where the defendants are producing goods for a reasonable long period of time as compared to a case where defendants have recently entered into the market or are yet to enter into the market.
3. Counsel for the defendants who appears without caveat is put to notice of the above aspects and that if the defendants seek to act fairly to ensure that their trademark should be such which would remove any scope of deceptive similarity with the trademarks of the plaintiff or that the defendants will not take advantage and ride upon the goodwill of the plaintiff.
4. List on 23rd September, 2015.
5. It is made clear that no adjournment shall be granted on the next date and if the defendants do not come to the Court by giving sufficient basis for their adoption of trademark "URBAN EAGLE AUTHENTIC OUTFITTERS", this Court in accordance with law will be inclined to grant ex-parte orders as prayed for by the plaintiff."
2. Defendants have appeared with instructions and during the course of hearing counsel for the defendants, of course without prejudice to the rights of the defendants, has suggested as under:-
(i) Though the defendants will not use the trade mark "URBAN EAGLE AUTHENTIC OUTFITTERS" as it is, and will remove from its trade mark the expression "AUTHENTIC OUTFITTERS" leaving only the expression and trade mark "URBAN EAGLE";
(ii) With respect to the existing stocks bearing the trade mark "URBAN EAGLE AUTHENTIC OUTFITTERS", the said stocks were requested to be bifurcated in two parts, one part being the goods already lying in the retail shops/stores and the second part being the goods lying in the warehouses/godowns of the defendants. So far as the goods lying in the retail shops/stores are concerned, it is stated on behalf of the defendants that the word "AUTHENTIC OUTFITTERS" will be removed from the existing stocks with retailers and such stocks with the existing device of eagle remaining will be disposed of in a period of three months. So far as the stocks in the godowns/warehouses are concerned, it was said that the labels from the same would be removed by the defendants and only the word mark "URBAN EAGLE" will be used and even the existing device of eagle will be replaced with a new eagle device.
(iii) To ensure that there is no doubt or dispute as to the stocks lying with the defendants or with the retailers or in the godowns/warehouses, Local Commissioners can be appointed who would be given by the defendants the details of the stocks with t........