With increase in demand for luxury brands in India, the fashion market is becoming a paradise for knockoffs, counterfeits, and the grey market goods. Grey market is a parallel market where authentic brands are sold at lower prices by unauthorised sellers. In other words, genuine brands are bought from one market and imported and sold in another market without the consent of the owner of the brand. Grey market goods are readily available at discounted price online, questioning the brand exclusivity. Their growing prevalence in the Indian fashion market cause serious impediments in the growth of the fashion industry. In India, many online stores already sold apparels and accessories from companies like Abercrombie and Fitch, Aeropostale and so on even before these companies had opened stores in India. [1]
Awareness and collaboration of the brands with local authorities are helping to tackle this pricky situation efficiently. Courts and other related authorities are gaining the required expertise and knowledge to develop a robust IP jurisprudence to tackle and help brands in trademark infringement. Christian Louboutin v. Nakul Bajaj & Ors[2] is a notable case where the Delhi High Court granted protection to Cristian Louboutin stating that the brand would suffer grave loss if injunction was not granted. The plaintiff filed a suit against the defendant stating that the defendant sold the plaintiff’s luxury products on their website by misrepresenting them to be affiliated or sponsored or approved by the plaintiff. The plaintiff claimed that there was a infringement of the trademark and end of the opulence and exclusivity enjoyed by the plaintiff on it’s products because of their display on the defendant’s mark. Courts understand the need to protect the brand with alacrity and rapidly gaining confidence and expertise in doing so.
Hermès v. Da Milano[3] is another example where the courts showed their expertise in dealing with grey market goods and protecting the plaintiff against trademark infringement. The court granted preliminary injection to Da Milano from selling handbags that resemble the Hermès’s Birkin Bag. However, later the two parties settled the case outside the court where the plaintiff allowed the defendant to sell their handbags without the legally protected element i.e. the ornamental or decorative part of the plaintiff’s handbag viz a horizontal belt and flap having three protruding lobes.
The Indian government and courts are working to curb the problem if not eliminate it. Though the courts are ready to tackle problem of counterfeits and the grey market goods, it is important for the brand to be vigilant about the unauthorised trade of their products. One cannot simply ignore the fact that sometimes these high-end luxury brands themselves directly sell their good to the grey market players or turn a blind eye to such sales to boost their sale revenue. This is done to improve short term results and unload the excess stock. The proprietors of these well-known brands should avoid such practice for short term results and be more prompt in acting against the grey market players and counterfeits to avoid dilution of their well-known marks.
[1] Business Standard, https://www.business-standard.com/article/companies/india-s-online-grey-market-for-us-clothing-brands-112080400101_1.html 25th January, 2013
[2] Christian Louboutin SAS v. Nakul Bajaj & Ors., CS (COMM) 344/2018
[3] Ranjan Narula, Mayur Varshney, ‘Countering Counterfeits’ , 25th December 2017 https://www.legaleraonline.com/article-detail?newsname=countering-counterfeits