Recently, Justice Prathiba M. Singh, presiding a Delhi High Court bench, recognized that the red-box device "SUPREME" has acquired a secondary meaning due to its extensive usage. Taking into account the 29-year period during which the red-box device "SUPREME" has been utilized for readymade clothing and considering the factors mentioned in paragraph 19, the Court concluded that the mark has achieved the status of a 'well-known mark.' The court made these observations in a case where the defendant was using the ‘SUPREME’ mark on its T-shirts and was selling them through its websites.
Brief Facts:
A suit for grant of permanent injunction was filed by Charter 4 Corp. (the Plaintiff) seeking protection of its mark "SUPREME" in relation to readymade clothing and accessories. The Plaintiff adopted the mark in 1994 in the U.S.A., and it has been in use in India since 2006. With more than 700 registrations globally, Plaintiff asserted its mark's extensive use and continuity. The suit alleged that the Defendant, Dhanpreet Singh, operating as M/s. Punjabi Adda, was selling T-shirts using the "SUPREME" mark on websites www.punjabiadda.com and www.punjabiadda.us.
Contentions of the Plaintiff:
The Plaintiff contended that it has used different iterations of the "SUPREME" mark over the years and has garnered extensive media coverage and endorsements from celebrities worldwide. The Plaintiff claimed that its business model, characterized by scarcity and exclusivity, has created enormous notoriety for the brand. It further asserted that it has obtained over 700 trademark registrations globally, evidencing the widespread recognition of its mark. Additionally, the Plaintiff had successfully enforced its rights in the mark "SUPREME" in various countries, adding weight to its claim of being a well-known mark. The Plaintiff sought a declaration of its "SUPREME" red-box device mark as a "well-known" mark under Section 2(zg) of the Trade Marks Act, 1999.
Contentions of the Defendant:
The Defendant did not file a written statement in the suit but engaged in settlement talks with the Plaintiff.
Observations by the Court:
The Trade Marks Act, 1999, under Section 2(zg), provides for the recognition of well-known marks, affording them broader protection and preventing third parties from misusing them. The Act outlines various factors that courts must consider while determining the well-known status of a mark.
In this case, the Court evaluated the knowledge and recognition of the "SUPREME" mark among the relevant public, both in India and globally. The Plaintiff's extensive promotion, advertising, and presence on social media platforms contributed to its well-known status. The Court also examined the duration, extent, and geographical area of use and promotion of the mark, including its widespread registrations and successful enforcement actions in various countries. The fact that the "SUPREME" mark is associated with collaborations with high-profile brands, celebrities, and artists further established its notoriety.
In comparing this case to precedents, the Court referred to the Levi Strauss and Co. v. Interior Online Services Pvt. Ltd. case, where a mark was declared well-known based on its widespread advertising, continuous use, and sales success. Similarly, the Hermes International v. Crimzon Fashion Accessories Pvt. Ltd. case provided relevant factors for declaring a mark as well-known, including the knowledge and recognition of the mark among the relevant public and its extensive use and promotion.
Further, the Court observed that the "SUPREME" mark has acquired substantial goodwill and recognition due to its extensive use and high-quality products. The Defendant's activities of passing off counterfeit goods using the "SUPREME" mark raised concerns of confusion among consumers.
The decision of the Court:
The parties informed the Court of their settlement and filed an application under Order XXIII Rule 3 of the CPC. Considering the terms of the settlement and the Plaintiff's extensive use of the mark "SUPREME," the Court decreed the suit in favour of the Plaintiff. Defendant agreed not to seek any statutory rights through trademark or copyright applications for marks similar to Plaintiff's marks. The Defendant also paid Rs. 2 lakhs to the Plaintiff as per the settlement terms. The Court further recognized the "SUPREME" red-box device mark as a 'well-known' mark in respect of apparel and clothing. The suit was disposed of, and 50% of the court fee was directed to be refunded to the Plaintiff.
Case Name: Chapter 4 Corp vs Dhanpreet Singh Trading As M/S Punjabi Adda
Coram: Hon'ble Ms. Justice Prathiba M. Singh
Case No.: CS(Comm) 782/2022 & I.A. 18343/2022, 11834/2023 & 12263/2023
Advocates of the Plaintiff: Mr. Dushyant K Mahant, Mr. Jaskaran Singh and Mr. Alvin Antony, Advocates.
Advocates of the Defendant: Mr. Dhanpreet Singh, in Person
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