CASE STUDY OF LEVI STRAUSS & CO. v. IMPERIAL ONLINE SERVICES PRIVATE LIMITED & ORS.

Introduction

The famous case of Levi Strauss & Co. v. Imperial Online Services Pvt. Ltd. is bound to become a landmark decision in the field of non-traditional trademark protection. The fundamental question in this case was whether stitching patterns were qualified for trademark protection under the Trade Marks Act, 1999. The distinctive style on Levi’s jeans was granted trademark protection and was designated as a well-known mark. Justice Pratibha M. Singh ordered an injunction to prevent the defendants, Imperial Online Services Pvt. Ltd, from misusing the ‘Arcuate Stitching Design’.

Facts of the Case 

The plaintiffs, Levi Strauss & Co., a well-known clothing brand, filed a suit in the Delhi High Court against Imperial Online Services Private Limited & Ors. for trademark infringement, passing off, and copyright infringement of their trademark ‘Arcuate Stitching Design’. The first trademark registration for the ‘Arcuate Stitching Design’ was issued in the United States in 1943. The plaintiffs have registered the trademark in various countries since then, as evidenced by the documentation on file. The complaint also included a request that the ‘Arcuate Stitching Design’ be declared a well-known mark under the rules of the Trademark Act of 1999.

Are stitching patterns eligible for protection as a trademark?

In plain terms, a trademark is a mark used by merchants to aid in identification of their products/services. It is the trademark that we as consumers use to identify these goods and associate it with its owner. Traditional and non-traditional trademarks are two sorts of trademarks. Names, words, gadgets, logos, labels/packaging, letters, numbers, and so forth are examples of the former. However, over time, the conception of trademarks has extended to colour combinations, form of things, product patterns, noises and smell. The aforementioned types fall under the category of traditional trademarks. This dispute is about whether a non-traditional trademark and a pattern of Arcuate Stitching Design, which is a distinctive characteristic of Levi Strauss & Co. jeans, should be considered a trademark or not. The action seeks trademark recognition for the design under Section 2(m) of the Trade Marks Act of 1999, which defines a mark as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, a form of products, packaging, or colour combination or any combination thereof. This historic decision declares that the stitching design can be trademarked and leaves a scope for people to ponder upon securing trademark registration for unusual or non-traditional marks.

Contentions of the plaintiff and defendants

The plaintiff claimed that they registered the trademark in 1873 and have used it on their clothing, mostly jeans, ever since. They discovered, however, that the defendants were selling the jeans with the identical logo emblazoned on them via www.urbanfashion.com and other e-commerce websites. To begin, the plaintiffs notified the defendants and served them with a cease-and-desist letter to prohibit them from infringing on their trademark. The defendants admitted to the violation and agreed to stop selling the infringing items within six months. However, the plaintiffs discovered that the jeans with the infringing mark were still being sold on e-commerce sites.

The Court issued an injunction barring the defendants from selling illegal content until the next hearing. As a result, the Court found that after instructing the defendants not to infringe on the plaintiff’s mark, just exhibiting these items on any platform would violate the injunction order.

Judgment 

Following extensive deliberation, the Single Judge Bench comprising Justice Pratibha Singh determines that a stitching design is eligible for trademark protection under Section 2(m) of the Trademark Act. The reasoning was that the design was so well-known that buyers would associate it with the plaintiff even if there was no logo or corporate name connected to the item. As a result of its century and a half usage, the mark appears to have become an extremely identifiable symbol with secondary significance.

Considering the extended period of 150 years that the ‘Arcuate Stitching Design’ mark has been used for Levi’s jeans, trousers, pants, and other clothing, as well as the reasons described above, the mark should be designated as a well-known mark. As a result, the plaintiffs won the lawsuit, and the Court issued an order declaring the ‘Arcuate Stitching Design’ mark to be a well-known mark under the Trademark Act. In addition, the Court ordered the defendants to pay 4 lakhs in damages for infringing on the plaintiffs’ design.

International overlapping between design and trademark

There is a case similar to the concept that I have discussed above. The Burberry pattern has subsisted for the last 164 years but had to protect its ‘haymarket check” trademark from infringers. After a lot of discussion and evidence, the Italian Supreme Court opined that this pattern has acquired goodwill and therefore it functions as a trademark i.e., a source indicator. The Burberry pattern was recognized as a trademark because it is “known by a large portion of the public and can be immediately recognized as relating to the products and services for which the mark is used.”[1] The Court also recognized the fact that the consumers associated the trademark with that of Burberry’s and if anyone would try to replicate even a portion of that mark, it would confuse the consumers of its association with the original trademark.

Similarly, there is a 2019 Singapore High Court case of Scotch Whisky Association v. Isetan Mitsukoshi Ltd. which discusses whether registration of ‘Isetan Tartan’ pattern as a trademark is permissible. Tartan is a checkered repeating pattern of bands, stripes, or lines of different colours of a specified width and order, woven into a wool fabric owned by the Japanese Department store chain, Isetan. The origin of this design was debated in this case.[2]

Conclusion

As a result, we might conclude that this case is a step toward the legalization of non-traditional trademarks. Since it recognizes a stitching mark as a trademark, it looks to be a landmark ruling. Given the current abundance of counterfeit products on the market, this case will open the way for designers to protect and own their inventions as trademarks. The trademark protection will not only give them the ownership rights but also the monetary benefits over that trademarked design. 

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[1] TFL ‘Italian Supreme Court Confirms that Burberry’s “Check” is, in face, a Famous Trademark (16 October 2020) < https://www.thefashionlaw.com/italian-supreme-court-confirms-that-burberry-check-pattern-is-in-fact-famous/  > accessed 20 October 2020

[2] https://spicyip.com/2019/12/an-indian-perspective-on-the-isetan-tartan-trade-mark-dispute-recently-decided-by-the-singapore-hc.html