Trademark Dispute: Bulgari S.p.A. vs. Prerna Rajpal (The Amaris Flagship)

INTRODUCTION

The realm of trademark law in India has witnessed dynamic evolution in recent years, with courts playing an increasingly assertive role in safeguarding brand identity, consumer trust, and commercial goodwill. In the upcoming paragraphs, we’ll know about the trademark dispute between Bulgari S.P.A and Prerna Rajpal The Amaris Flagship. The period between 2024 and 2025 has been particularly significant, marked by a series of landmark decisions that have refined the interpretation of the Trade Marks Act, 1999, and expanded jurisprudence on infringement, passing off, honest concurrent use, and protection of well-known marks.

From disputes involving global giants like IKEA and Pfizer to homegrown legacy brands such as Amul and Moti Mahal, Indian courts have not only reaffirmed the foundational principles of trademark law but also responded to emerging complexities posed by digital commerce, franchising relationships, and deceptive marketing tactics. This article compiles ten of the most influential trademark rulings delivered during this period, each analysed through its factual matrix, legal issues, judicial reasoning, and statutory application, providing critical insights into the evolving contours of trademark protection in India.

Case 1: Bulgari S.P.A. vs. Prerna Rajpal Trading as The Amaris Flagship

Background

Citation: 2024 SCC OnLine Del 3339
Court: Delhi High Court
Date Decided: 29 April 2024
Judge: Justice Sanjeev Narula

Bulgari S.P.A., an Italian luxury brand renowned for its distinctive jewellery collections, including the “Serpenti” line, discovered that The Amaris Flagship Store, operated by Prerna Rajpal in Delhi, was marketing a necklace named “Shield-It!” This necklace bore a striking resemblance to Bulgari’s “Serpenti Ocean Treasure Necklace.” Despite issuing cease-and-desist notices, Amaris continued to promote the allegedly infringing product, prompting Bulgari to initiate legal proceedings.

Plaintiff’s – Bulgari Defendant’s –  Amaris

Legal Issues

1. Whether Amaris’s “Shield-It!” necklace infringed upon Bulgari’s registered trademark “SERPENTI” under the Trade Marks Act, 1999.
2. Whether the design of the “Shield-It!” necklace constituted a substantial reproduction of Bulgari’s copyrighted “Serpenti Ocean Treasure Necklace,” thereby infringing upon Bulgari’s rights under the Copyright Act, 1957.

Parties’ Contentions

Plaintiff (Bulgari S.P.A.):

• Asserted ownership of the “SERPENTI” trademark, registered in multiple jurisdictions, including India.
• Claimed that the “Serpenti Ocean Treasure Necklace” is an original artistic work, protected under copyright laws.
• Alleged that Amaris’s “Shield-It!” necklace was a blatant imitation, replicating the design, structure, and ornamentation of Bulgari’s product.
• Argued that Amaris’s use of the “SERPENTI” mark and similar designs was likely to cause confusion among consumers, amounting to passing off.

Defendant (Prerna Rajpal trading as The Amaris Flagship):

• Acknowledged inspiration from Bulgari’s designs but denied substantial similarity.
• Contended that the term “SERPENTI” is descriptive and not exclusively associated with Bulgari.
• Argued that the design differences were sufficient to distinguish the products and avoid consumer confusion.

Decision

The Delhi High Court granted an ad-interim injunction in favour of Bulgari, restraining Amaris from:

• Manufacturing, marketing, or selling the “Shield-It!” necklace or any product resembling Bulgari’s “Serpenti Ocean Treasure Necklace.”
• Using the “SERPENTI” trademark or any deceptively similar mark in relation to their products.

Ratio Decidendi

• The court found prima facie evidence that Amaris’s “Shield-It!” necklace was visually and structurally similar to Bulgari’s “Serpenti Ocean Treasure Necklace,” indicating potential copyright infringement.
• Recognized Bulgari’s trademark rights over “SERPENTI,” noting that Amaris’s use of the identical mark on similar products constituted infringement under Sections 29(2)(c) and 29(3) of the Trade Marks Act, 1999.
• Held that the “Serpenti Ocean Treasure Necklace,” being handcrafted and produced in limited quantities, did not fall under the purview of Section 15(2) of the Copyright Act, 1957, and thus retained copyright protection.

LEGAL ANALYSIS

Trade Marks Act, 1999: Sections 29(2)(c), 29(3)

• (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,
• (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

Copyright Act, 1957: Section 15(2)

• (2) Copyright in any design, which is capable of being registered under the 3 [***] 4 [Designs Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

Bibliography

• Bulgari S.P.A. v. Prerna Rajpal Trading as The Amaris Flagship [2024] SCC OnLine Del 3339
• ‘Delhi High Court Grants Interim Injunction in Favour of Bulgari S.P.A for Its Design Infringement of Serpenti Necklace by Amaris Flagship’ (SCC Online, 16 May 2024) https://www.scconline.com/blog/post/2024/05/16/del-hc-grants-injunction-favour-bulgarispa-design-infringement-serpenti-necklace-amaris-legal-news/
• ‘Protecting Elegance: How Bulgari Overcame Its Imitators Before The Delhi High Court’ (Naik Naik & Co, 18 June 2024) https://naiknaik.com/2024/06/18/protecting-elegance-how-bulgari-overcame-its-imitators-before-the-delhi-high-court/