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* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(COMM) 500/2022 & I.A. 11470/2022, I.A. 17287/2022, I.A.
9217/2023
LEVI STRAUSS AND CO ..... Plaintiff
Through: Mr. Dushyant K. Mahant, Mr. Urfee
Rooi, Ms. Janaki Arun, Ms. Jaskaran
Singh, Ms. Anuja Chaudhury and Ms.
Soumya Jain, Advocates.

versus

NAB PRODUCTIONS PRIVATE LIMITED AND ORS

& ORS. ..... Defendants
Through: Mr. Sujoy Kumar and Mr. Raghav
Kumar, Advocates for D-1 to 4.
Mr. Gaurav Gupta, Authorized
Representative of D-5, through VC.

CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA

ORDER
% 22.01.2024

I.A. 1606/2024(under Order III Rule 4(2) r/w Section 151 of CPC)

1. Mr. Sujoy Kumar, counsel appearing for Defendants No. 1 to 4, states

that he has not received any communications/ instructions from his clients
despite efforts made by him to contact them. Accordingly, the instant
application is filed seeking discharge of Mr. Sujoy Kumar and Mr. Raghav
Kumar, Advocate on Record for Defendants No. 1 to 4, from representing
the said Defendants.
2. Mr. Sujoy Kumar points out that the said Defendant were already

CS(COMM) 500/2022 Page 1 of 9

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 proceeded ex-parte, as recorded in order dated 21st December, 2023.
Nonetheless, he states that the said Defendants have been duly intimated of
the hearing scheduled for today through e-mail, WhatsApp and courier. All
these communications have been delivered, however, none of the said
Defendants have contacted the counsel. They are also not represented today
by any other counsel.
3. In view of the above, application is allowed with the direction Mr.
Raghav Kumar, Advocate and Mr. Sujoy Kumar, Advocate are discharged
from representing Defendants No. 1 to 4.
4. Disposed of.

I.A. 25119/2023 (under Order XXIII Rule 3 of CPC)

5. This joint application on behalf of Plaintiff and Defendant No. 5 seeks

passing of a consent decree in accordance with the terms of settlement
delineated at Paragraph No. 3 of the instant application.
6. Mr. Gaurav Gupta, constituted attorney of Defendant No. 5, who has
joined the proceedings through video conferencing mechanism, confirms the
terms of settlement mentioned in the application and assures the Court that
he will honour the same.
7. The Court has perused the terms of the compromise and finds the
same to be lawful. It is noted that the application is duly supported with
affidavits of the authorized representatives/ constituted attorneys of Plaintiff
and Defendant No. 5.
8. In light of the above, the present suit is decreed in favour of Plaintiff
and against Defendant No. 5, in terms of the settlement recorded in
Paragraph No. 3 of the instant application, which shall form part of the

CS(COMM) 500/2022 Page 2 of 9

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 decree. The parties shall remain bound by the said terms of settlement.
9. Decree sheet be drawn up.
10. With the above directions, the application is disposed of.

CS(COMM) 500/2022

11. Mr. Dushyant K. Mahant, counsel for Plaintiff, presses for a decree
against Defendants No. 1 to 4 under Order VIII Rule 10 read with Order
XIIIA of the Code of Civil Procedure, 1908 (CPC).
12. Plaintiff/ Levi Strauss & Co. is a multinational company incorporated
under the laws of the State of Delaware, United States of America (USA),
having headquarters in San Francisco, USA. Plaintiff is the proprietor of
various trademarks in India and around the world. Amongst Plaintiff’s most
prominent marks is the ‘Arcuate Stitching Design mark’, used on and in
relation to readymade clothing, most prominently for denim jeans [“ASD
mark”]. The ASD Mark is shown as below:

CS(COMM) 500/2022 Page 3 of 9

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 13. Plaintiff’s ASD Mark has received world-wide recognition, having
first been used in the year 1873. Documents to support this statement have
been placed on record. In India, Plaintiff has secured statutory trademark
rights, registration details whereof are mentioned in Paragraph No. 41 of the
plaint. Moreover, the ASD Mark has also been recognised by this Court as
having status of a ‘well-known’ mark1. Additionally, Plaintiff has incurred
substantial expenses in advertising, inter alia, denim jeans bearing
Plaintiff’s ASD Mark. Details of such expenses have also been enumerated
in the plaint.
14. In the instant suit, Plaintiff’s grievance arises on account of alleged
infringing activities of Defendants No. 1 to 4. Defendant No. 1/ Nab
Productions Private Limited is a company wherein Defendants No. 2 and 3
are the Directors and Defendant No. 4 is the ‘Head– Planning and
Operations.’ Plaintiff claims that the said Defendants manufacture
readymade garments through Defendant No. 5/ JMK Hosiery, which include
denim jeans bearing the ASD mark on the pockets. Defendants’ impugned
stitching design mark [“Impugned Mark”] is reproduced as under:

15. Mr. Mahant points out that the Impugned Mark is nearly identical to
Plaintiff’s ASD Mark. The similarity between the two marks is immediate

1
Judgment dated 24th March, 2022, in CS(COMM) 657/2021 titled ‘Levi Strauss & Co. v. Imperial Online

CS(COMM) 500/2022 Page 4 of 9

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 and unassailable, and thus is bound to create confusion in the minds of
general public. A comparison of the impugned stitching designs used by
Defendants is as follows:

Impugned Stitching Design Mark Plaintiff’s Arcuate Stitching Design

Mark

16. On 13th November, 2019, Plaintiff’s Indian representative issued legal

notice to Defendant No. 1 asserting their prior rights to the ASD Mark,
which Defendant No. 1 responded to by indicating intention to amicably
resolve the matter. Subsequently, Defendant No. 1 sent written undertakings
dated 18th January, 2020, duly executed by Defendants No. 2 and 3 on

Services Private Limited.’

CS(COMM) 500/2022 Page 5 of 9

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 behalf of the Defendant No. 1, to the Plaintiff’s Indian representatives
[“Undertakings”]. The relevant portions of the said Undertakings are
extracted as follows:
“2. These undertakings bind not only NPIPL, but also its subsequent
assigns, related persons, entities or any concerns under its control, and the
directors of NPIPL in their individual and personal capacities

XXX ... XXX ... XXX

6. Within a period of five (5) working days from effective Date, NPIPL will
cease any and all uses of (a) the stitching designs and the tab device shown
in Annexure C; (b) the LS & Co. Marks incorporating the LS &Co. Marks;
and (d) any marks similar to the LS & Co. Marks, on and in relation to any
goods and/ or services, including, but not limited to, readymade garments
and related goods and service. Specifically, NPIPL will, within a period of
five (5) working days from the effective Date, destroy any inventory of
finished or unfinished jeans, and other materials , such as advertising and
promotion materials bearing the marks in 6(a) to (d) above that are in its
possessions or control;

XXX ... XXX ... XXX

8. NPIPL undertakes to never use or have any involvement in the
manufacture, distribution or sale of goods, including jeans, at any future
time, whether directly or indirectly, bearing any of the following (a) the
stitching designs and the tab device shown in Annexure C; (b) the LS & Co.
Marks; (c) any marks incorporating the LS & Co. Marks; or (d) any marks
similar to the LS & Co. Marks;”

XXX ... XXX ... XXX

13. NPIPL will not, whether directly or indirectly, through a related person,
entity or otherwise, cause, enable or assist another party to do any of the
acts that it is undertaking not to do;”

17. From the aforenoted extraction, it appears that the Undertakings bind
not only Defendant No. 1, but also any entities or persons related to the
Defendants and the directors of Defendant No. 1. Accordingly, it would
follow that all Defendants are bound by the Undertakings, as elucidated
below:

CS(COMM) 500/2022 Page 6 of 9

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 17.1. Defendants No. 2 and 3, being directors of Defendant No. 1, are
clearly bound by the Undertakings.
17.2. Defendant No. 4, being an employee of Defendant No. 1 and a related
party that is manufacturing readymade clothing for marketing and sale by
Defendant No. 1, is also bound by the terms of the undertakings.
17.3. Since Defendant No. 5 is a related/affiliated entity of Defendant No. 1
–– which is discernible from the fact that Defendant No. 5 is selling denim
jeans under the same brand names as Defendants No. 1 and 4 –– they are
also bound by the undertakings executed by Defendants No. 2 and 3.
18. Further, as per the above-extracted Paragraph No. 6, the Defendants
were under an obligation to cease any and all use of the Impugned Mark
within a period of five working days from 18th January, 2020 (being the
“Effective Date” as defined in Paragraph No. 3 of the Undertakings), i.e., by
23rd January, 2020. Moreover, as per Paragraph No. 8, Defendants also
undertook not to utilise any similarly infringing designs in the future.
However, despite the assurances made in the Undertakings, Defendants have
continued to produce infringing readymade clothes bearing the Impugned
mark.
19. In view of the above background, Mr. Mahant states that Plaintiff
would be satisfied if the Court were to grant permanent injunction in their
favour, as well as award the entire costs of the suit in their favour. He further
states that Plaintiff not pressing their prayers for damages.
20. The Court has considered the aforesaid. It is pertinent to note that the
suit has already been decreed against Defendant No. 5 in terms of settlement
arrived at with the Plaintiff. On the other hand, although Defendants No. 1
to 4 have been served, they have refrained from joining the present

CS(COMM) 500/2022 Page 7 of 9

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 proceedings and have been proceeded ex-parte. The statutory time period of
30 days, as well as the overall condonable limit of 120 days, to file written
statement has expired. Thus, Defendants No. 1 to 4 have no defence to the
present suit.
21. The terms of the Undertakings as extracted above clearly bind the
Defendants. Despite having assured and undertaken not to infringe
Plaintiff’s ASD Mark, Defendants brazenly and blatantly continued to do so
the same, which establishes that Defendants are habitual offenders.
Therefore, the Court is satisfied that Plaintiff is entitled to decree under
Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC), as well as
in terms of Order XIIIA Rules 3 and 6(1)(a) of CPC.
22. Accordingly, the suit is decreed in favour of Plaintiff and against
Defendants No. 1 to 4 in the following terms:
22.1. Decree is passed in favour of Plaintiff and against Defendants No. 1
to 4 in terms of prayers stated in Paragraphs No. 81(a) to 81(g) of the plaint.
22.2. As Plaintiff is not pressing for any damages, no directions are
required to be passed in respect of prayers stated in Paragraphs No. 81(h) to
(j) of the plaint.
22.3. As regards prayer stated in Paragraph No. 81(k), the Plaintiff is
entitled to actual costs, in terms of the Commercial Courts Act, 2015 and
Delhi High Court (Original Side) Rules, 2018 read with IPD Rules,
recoverable from Defendants No. 1 to 4, jointly and severally. Plaintiff shall
file its bill of costs in terms of Rule 5 of Chapter XXIII of the Delhi High
Court (Original Side) Rules, 2018 on or before 31st January, 2024. As and
when the same is filed, the matter will be listed before the Taxing Officer for
computation of costs.

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 23. Decree sheet be drawn up.
24. File be consigned to record room.
25. Disposed of, along with pending applications.

SANJEEV NARULA, J
JANUARY 22, 2024
d.negi

CS(COMM) 500/2022 Page 9 of 9

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