We Have Heard Back from Our IP Counsel's Brazilian Associates. Please See Below

From: William Bissell [mailto:
Sent: 24 March 2018 20:01
To: 'Satyajit Sarna' <>
Cc: 'Harpreet Duggal' <>
Subject: RE: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

RA – CEO

Dear Satyajit,

Thanks very much for the update. I think it’s best that you get Viney’s advise on how to proceed, I’m fine either way.

Regards,

William

From: Satyajit Sarna [mailto:
Sent: 23 March 2018 16:40
To: Viney Singh <>; Mukesh Chauhan <>; Charu Sharma <>; Vanessa Singh - Legal <>; Mansi Jain - Legal <>; William Bissell <>
Subject: Fwd: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

Dear All,

We have heard back from our IP Counsel's Brazilian Associates. Please see below.

We had essentially written to them to take action against the brand "FABRINDIA" which has been retailing Indian garments in Brazil under a style which is visually similar to ours. The opposite party has written back saying they are amenable to a change of font/style, but cannot change their mark. We are therefore at a decision point. We can:

A. Accept a change of name/style etc and enter some kind of coexistence understanding.

B. File a lawsuit and take steps against their use of the mark "FABRINDIA".

This will require consideration on grounds of expense as well as whether there is real danger to our mark and brand equity, i.e. whether we see a future for Fabindia in Brazil.

Best regards,

Satyajit

------Forwarded message ------
From: Satyajit Sarna <>
Date: 23 March 2018 at 16:33
Subject: Re: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)
To: Manas Upmanyu <>
Cc: Vanessa Singh <>, Tia Malik <>, Mathew Varghese <>, Admin Admin <>, Rakesh Singh <>, Saachi Shante <>, Ananya Singh <>, J Sharanya <>, Vijay Sharma <>, ,

Dear Manas,

Thank you for your update. We will have to get back to you as to whether we can settle on a different font and style, or whether we need to file a suit to tackle the wordmark. We will consult internally and revert in a few days.

Best regards,

Satyajit

On 22 March 2018 at 22:41, Manas Upmanyu <> wrote:

Dear Vanessa,

I am writing to you with an update in the matter.

Our Local Associates in brazil have been in touch with the Opposite party and have received the following communication from the OP.

Response from FABRÍNDIA :

Our Local Associates have received a response, by means of which Ms. Daniele de Carvalho, who is in charge for FABRÍNDIA COMÉRCIO DE ROUPAS E IMPORTAÇÃO LTDA. - ME informed them there was no intention whatsoever to imitate the mark “FABINDIA”, moreover because it does not exist in Brazil.

However, upon receiving our warning letter, the OP has agreed that they will make changes to make their mark so as to not likely be confused with the mark “FABINDIA”. They agreed on the changes because of the fact that the mark “FABINDIA” was created in 1964, as mentioned in our warning letter and confirmed by them on the internet.

The OP informed that they would change the design of the letters that form the name of their company “FABRINDIA”. According to them, it will be totally different font/style, and this would involve changing the front of their store. The change would follow their mark in all media that they participate and that are part of their activity, be it in the internet or social networks, as well as other forms of advertising.

The OP informed that in the coming months it will be possible to perceive the changes, and they need this time because the changes demand costs that were not foreseen, mainly in the front of their store. They have not informed an exact deadline for such changes to be affected.

However, the OP has informed our Local Associates that they do not intend to change the name “FABRINDIA”, because it is consistent with source of the products they sell and which are manufactured in India.

Reply to the OP:

In reply to the OP’s letter, our Local Associates again wrote back to the OP that, among so many other forms available to designate their activities, the field of simple coincidence surpasses the fact that they chose an almost identical mark in conceptual, grammatical and phonetic aspects, with the same graphic style of the well-known mark “FABINDIA”, to designate activities in the same commercial segment.

As to the claim that the mark “FABINDIA” does not exist in Brazil, we reiterated that it enjoys special protection for well-known trademarks, regardless of being previously filed or registered in our country, as established by Article 6 bis of the Paris Convention and by Article 126 of the Brazilian Industrial Property Law .

Also, as demonstrated in our Warning Letter dated December 05, 2017, in addition to the prior rights to a well-known trademark, we highlighted that “FABINDIA” refers to the main part of the trade name FABINDIA OVERSEAS PRIVATE LIMITED. As provided in Article 8 of the Paris Convention, the trade name deserves protection without obligations of filing or registration, whether or not part of a trademark.

Therefore, we sustained that the maintenance of the imitation “FABRÍNDIA” was not possible, under the justification that it is consistent with the origin of the products sold by the OP. On the contrary, the continuation of this unlawful imitation after taking cognizance of the terms of our Warning Letter undermines any presumption of good faith intent.

We also emphasized that the gross imitation between trademarks operating in the same market segment is, of course, unanimously condemned by Brazilian legislation. In order to stress the illegality of their conduct, as well as the possibility of a conviction for infringement of the rights of FABINDIA, we cited two relevant case law from the Brazilian Superior Court of Justice on similar cases of undue use of well-known trademarks owned by foreign companies.

Therefore, in conclusion, the persistent conduct of the adverse party in unduly associating themselves with FABINDIA urgently requires compliance with all requests for our Warning Letter dated December 05, 2017 , in particular the immediate cease of the use of the sign “FABRÍNDIA” to designate their activities, replacing it with another that does not constitute a reproduction or imitation of the trade name or the well-known trademark “FABINDIA”, as well as the formal withdrawals of the domain name < fabrindia.com.br> and Trademark Application No. 911538313, for “Fabríndia - Roupas e Acessórios Indianos”, and the formal request for the change of trade name FABRINDIA COMERCIO DE ROUPAS E IMPORTACAO LTDA - ME.

Since we did not hear back from the OP, the Local Associates contacted them by telephone to emphasize the terms of our warning letter. During the telephone contacts, the LA found out that the spouse of Ms. Daniele de Carvalho is originally from India, and they have admitted that they knew FABINDIA before they started their business.

We have emphasised the seriousness of the matter, especially due to the fact that they were aware of FABINDIA’s mark and business. However, in spite of our continuous contacts, the OP has not agreed to cease the undue imitation of our mark. They informed that they would like to discuss a business opportunity with us and upon such contacts they would be willing to review their practices.

In view of this last position from FABRÍNDIA COMÉRCIO DE ROUPAS E IMPORTAÇÃO LTDA. – ME. Our Local Associates are of the view that the matter cannot be resolved matter amicably. Accordingly, our Local Associates have informed us that the next step would be to file a lawsuit against them.

Let me know what you think.

Best regards

/ / Manas Upmanyu
Associate
E.
D. 91-11-4289 9917
T. 91-11-4289 99 99 (Ext: 233)
D - 17, South Extension II,
New Delhi -110 049 INDIA
MU:AT: ::BT:

2017 Awards WTR1000: Gold – Trademark Enforcement & Litigation - India | Managing IP: Tier 1 - Trade Mark Contentious & Copyright - India| Chambers & Partners: Band 1 – Intellectual Property - India | Legal Era: Litigation Law Firm of The Year (New Delhi), Intellectual Property Law Firm of The year – India | Corporate Intl: IP Litigation Law Firm of The Year – India | ACQ Law Awards: IP Litigation Law Firm of The Year – India |

From: Kuldeep Sharma <>
Sent: Tuesday, December 12, 2017 12:01 PM
To: ; 'Manas Upmanyu' <>
Cc: 'Vanessa Singh' <>; 'Karan Bajaj' <>; 'Sudeshna Panigrahi' <>; 'Tia Malik' <>; 'Mathew Varghese' <>; 'Admin Admin' <>; 'Satyajit Sarna' <>;

Subject: RE: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

Dear Vijay,

Thanks for sharing the update.

Regards

Kuldeep

From: Vijay Sharma [mailto:
Sent: 11 December 2017 17:59
To: 'Kuldeep Sharma' <>; 'Manas Upmanyu' <>
Cc: 'Vanessa Singh' <>; 'Karan Bajaj' <>; 'Sudeshna Panigrahi' <>; 'Tia Malik' <>; 'Mathew Varghese' <>; 'Admin Admin' <>; 'Satyajit Sarna' <>; ; ;
Subject: RE: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

Dear Sirs,

This is to confirm that we have dispatched the attached warning notice to the opposite party on December 05, 2017. A scanned copy of the notice as sent is attached herewith.

We shall continue monitor this matter closely and will revert to you as soon as we have any news. In the meantime, please do not hesitate on contacting us for any additional clarification deemed necessary.

Regards,

/ / Vijay Sharma
Foreign Trade Mark Manager
E.
D. 91-11-4289 9944
T. 91-11-4289 99 99 (Ext: 128)
D - 17, South Extension II,
New Delhi -110 049 INDIA

From: Kuldeep Sharma [mailto:
Sent: Tuesday, November 21, 2017 11:42 AM
To: 'Manas Upmanyu'
Cc: 'Vanessa Singh'; 'Karan Bajaj'; 'Sudeshna Panigrahi'; 'Tia Malik'; 'Mathew Varghese'; 'Admin Admin'; 'Satyajit Sarna'; ;
Subject: RE: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

Dear Manas,

Please go ahead with this.

Will this be filed by the local counsel in Brazil or we will be filing it online from here?

Regards

KULDEEP KUMAR SHARMA

Head – Legal

Fabindia Overseas Private Limited

2nd Floor, C-40, Phase-II,

Okhla Industrial Area,

New Delhi – 110020

Tel: +91-11-40692000 Extn: 2057

Mobile: +91-9990274447

Email:

Website:

From: Manas Upmanyu [mailto:
Sent: 04 November 2017 16:45
To: Kuldeep Sharma <>
Cc: Vanessa Singh <>; Karan Bajaj <>; Sudeshna Panigrahi <>; Tia Malik <>; Mathew Varghese <>; Admin Admin <>; Satyajit Sarna <>; ;
Subject: Action against FABRINDIA in Brazil (L&S Ref.: CL-INF-BR1)

Dear Kuldeep,

I hope that you’ve been well.

The draft of the letter that we propose to send to the OP is attached for your review.

I’ll look forward to receiving you inputs on the same.

Best regards

/ / Manas Upmanyu
Associate
E.
D. 91-11-4289 9917
T. 91-11-4289 99 99 (Ext: 233)
D - 17, South Extension II,
New Delhi -110 049 INDIA
MU:AT: ::BT:

Satyajit Sarna

External Legal Consultant

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