Introduction
Under a recent order of injunction, passed in the case of Federal Brands Ltd v. Levi Strauss India Pvt. Ltd, the Honorable Bombay High Court has temporary restrained Levi Strauss from using the words “Live-In” along with its trademark “Levi’s”in its hoardings and other materials, in respect of its campaigns and advertisements of jeans, apparel and clothing in India.
The aforesaid order arises out of the trademark infringement and passing off suit instituted in India by Federal Brands Limited against Levi Strauss.
Facts of the Case (Plaintiff’s contentions in brief)
The plaintiff, Federal Brands Limited, instituted an infringement and a passing off suit against Levi Strauss India Pvt. Ltd (Defendant), in respect of use by the Defendant of the mark “LIVE IN” in respect of jeans, apparel and clothing.
The plaintiff is the owner of the registered trademark “LIVE-IN”, “LIVE-IN KHAKIS”, “LIVE-IN CHINOS” “LIVE-IN UNRUFFLED” and “LIVE-IN COMFIES”. The Plaintiff, claimed to have sold goods of more than Rs. 1,000 crores under the said trademark and spent several crores of rupees on advertisement and promotion of the said trademark.
The plaintiff became aware of the defendant’s use of the identical mark on its products, advertising and marketing campaign as “LIVE IN LEVI’S”. The plaintiff received communications from its suppliers, distributors and retailers about the confusion in the market and the perception gathered that the plaintiff’s business was acquired by the defendant.
The plaintiff further claimed that the defendant was earlier making losses, but had now started making profits by riding on the success, goodwill and reputation of the plaintiff’s trademark.
Contentions of Levi Strauss (Defendant) (in brief)
The words “Live in” or “Lived in” are generic and descriptive of clothing and were used world over to describe the products of apparel and shoe industries commonly known as comfortable wear.
The parent company of the Defendant, L & S Company, was one of the first clothing manufacturers to use the “Live in” concept with respect to its goods in 1970’s in its advertising campaign by using “LIVE IN LEVI’S”. L & S Company revived the concept and started using the words “LIVE IN LEVI’S” in its advertising and marketing campaigns and spent substantial amounts on this campaign in India.
The Defendant had been using the term “Live in” as a description of goods and in accordance with honest practices followed by apparel and shoe industries in ordinary course of trade. The term “Live in” is a non-distinctive term common to the trade and is not adopted to distinguish the goods of one party from those of the others and therefore, does not qualify as a trade mark.
Several well known apparel companies had adopted and have been using the “Live in” concept and the associated terms “Live”, “Live in” and “Lived in” in connection with their products.
As the words “Live in” had never been used by the Defendant at any time separately from the Defendant’s mark “LEVI’S”, but was always used with the trade mark and never with greater prominence than the mark “LEVI’S” and as they were mostly used as a subtext to underline the quality of the product, it could be inferred that the Defendant never proposed, or intended, to use the words “LIVE IN” as a trade mark.
Court’s Order (In Brief)
The words “Live in” were not generic in nature. There was nothing to suggest that in India, the trade or customers are accustomed to regard the words “Live”, “Live in” and “Lived in” as generic or descriptive of goods.
The advertising campaigns which were referred by the defendant were international campaigns members and not advertisements in India. The only advertisements in India, were by the Defendant itself and these form the subject matter of the present dispute.
The plaintiff had a substantial reputation and goodwill in respect of the trademark “Live-In” which came to be exclusively associated with the plaintiff. The display of the words “Live-In” along with the defendant’s trademark Levi’s was clearly likely to cause confusion, if not deception, and the purchasers were likely to take it as a the connection between the respective owners of the trademark.
The Court also observed that, the words “Live-In” were almost always shown at least with equal prominence with word “LEVI’S” and that was good enough to earn plaintiff an injunctive relief, they were asking for. 4.5 While the usage of the trademark “Live-In” by the defendants would cause irreparable injury to the plaintiff, no real loss / serious prejudice was likely to be caused to the defendant if it was injuncted from using the words. The balance of convenience was therefore in favour of the plaintiff.
The Court ordered the defendant to remove the words “Live-In” from its hoardings and other materials in respect of its campaigns and advertisements.
Analysis and Comments
The judgment is significant because even when Levi’s is a globally popular brand having substantial reputation and goodwill, the words “Live-In” being a registered trade mark in India, owned by an Indian Company, namely Federal Brands Limited, it is entitled to stop any person in India from using the trade mark in a manner causing confusion in public about its association with Federal Brands Limited.
A peculiar aspect of this case is the usage of the trade mark not specifically on the products sold under the Levi’s brand, but in the advertisements and marketing campaigns of Levi’s Strauss based on the concept of “Live-In”. Considering that the words “Live-In” were registered trade marks in India, the usage of the same even in advertisements make out a case of trade mark infringement and also passing off in India when the said trade mark “Live-In” had helped Federal Brands Limited earned substantial goodwill and reputation in India.
On the question of awarding damages, it remains to be seen whether the Courts consider the aspects of reputation of Levis and the fact that the words “Live-In” were used as a part of their advertising campaign across the world and not just in India, perhaps hinting that Levis did not have an intention to pass off the products under the trade mark “Live-In”.
About Bulwark Solicitors
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