Copyright prosecution against Calvin Klein scrubbed out

India

In an unusual case opposing two US companies, the Delhi High Court has absolved Calvin Klein Cosmetic Co (CKCC), a licensee of the CK and CALVIN KLEIN trademarks, of any liability in the sale of products allegedly infringing copyright held by St Ives Laboratories Inc USA (Case 1238/2004, December 14 2004)).

St Ives, a producer of cosmetic products and toiletries, filed an action in the Delhi High Court against CKCC and the owners of two shops located in the Ghaffar market in North Delhi - a market notorious for selling counterfeits. St Ives alleged that CKCC and the shop owners had infringed its rights in a literary work registered under the Indian Copyright Act 1957 under the title Apricot Scrub by producing and selling cosmetic products bearing the marks CK or CALVIN KLEIN and the phrase 'apricot scrub'.

However, upon examining St Ives's claim and the accompanying documents, CKCC discovered that the products at issue were not genuine Calvin Klein products. The products' packaging claimed that they had been produced by 'Calvin Klein Cosmetics Co New York'. However, CKCC does not - directly or indirectly - manufacture or market apricot scrub.

In the meantime, the High Court had granted St Ives an ex parte interim injunction against CKCC and the other defendants. Soon after being served with the court papers at its offices in the United States, CKCC filed an application at the Delhi High Court seeking (i) the vacation of the ex parte injunction order, and (ii) the deletion of its name from the defendants' list.

After hearing CKCC's and St Ives's arguments, the court absolved CKCC of any liability and set aside the interim injunction operating against it with immediate effect. The court further ordered (i) the deletion of CKCC from the list of defendants in the suit, and (ii) the proceedings to continue against the remaining defendants.

Binny Kalra, Anand & Anand, New Delhi

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