Delhi High Court
Puma Se & Anr vs Nikhil Thermoplast Ltd & Ors on 22 August, 2017
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 992/2016
PUMA SE & ANR ..... Plaintiffs
Through Ms. Astha Joshi, Advocate
versus
NIKHIL THERMOPLAST LTD & ORS ..... Defendants
Through None
% Date of Decision: 22nd August, 2017
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J (Oral):
1. Present suit has been filed for permanent injunction restraining
infringement of trademark, passing off, unfair trade competition,
delivery up, damages etc. The prayers in the plaint are reproduced
hereinbelow:
"a) A decree for permanent injunction restraining the
Defendant, its servants, agents, stockiest from
manufacturing, trading, selling, marketing, offering for
sale or dealing in any other way, any goods including
clothing, T-shirts, pants, track pants, shorts, footwear,
headwear and/or any other goods under the Form Strip
mark and logo either together or in isolation to
each other and the mark Form Strip using the mark as
their trademark or any other mark/logo which is
deceptively similar to the Plaintiffs mark PUMA and Form
Strip log which may amount to infringement of the
Plaintiffs registered trademarks as mentioned in this suit.
b) A decree for permanent injunction restraining the
Defendant, its servants, agents, stockiest from
manufacturing, trading, selling, marketing, offering for
sale or dealing in any other way, any goods including
clothing, T-shirts, pants, track pants, shorts, footwear,
headwear and/or any other goods under the mark Form
Stip logo mark, PUMA, and logo either together
or in isolation to each other and the mark and form using
the mark Form Device as their trademark or any other
mark/logo which is deceptively similar to the Plaintiffs
mark PUMA and Form Strip logo which may
amount to passing off the Defendant's goods as the goods
of the Plaintiffs.
c) An order for delivery up of all the goods, dies,
blocks, labels and any other printed matter bearing the
impugned mark/name to the authorised representative of
the Plaintiffs for the purpose of destruction/erasure;
d) A decree of damages against the Defendant and in
favor of the Plaintiffs, this relief is valued at Rs. 20 Lac on
account of their illegal activities.
e) An order for costs of the proceedings.
f) Any other orders as this Hon'ble Court may deem
fit and proper in the facts and circumstances of the
present case."
2. At the outset, learned counsel for the plaintiff states that the
plaintiff confines it's prayer to prayers (a), (b) and (e) of the prayer
clause. Learned counsel for the plaintiffs gives up the prayers for
delivery up and damages.
3. Vide order dated 19th October, 2015; this Court restrained the
defendants by way of an ex parte interim injunction from using the
Form Strip Logo . The relevant portion of the order dated 19th
October,2015 is reproduced hereinbelow:-
"I have heard the learned counsel for the plaintiffs
and have also gone through the averments made in the
plaint and has also examined the products of the plaintiffs
as also that of the defendants, produced in the course of
arguments. I am of the view that the plaintiffs have been
able to make out a strong prima-facie case for the grant
of an ex-parte ad interim injunction in their favour.
Accordingly, till the next date of hearing, the defendants,
their Directors, servants, agents and stockists, etc. are
restrained from manufacturing, selling, marketing, or
offering for sale or dealing in any other way, any goods
including clothing, T-shirts, pants, track pants, shorts,
footwear, headwear and/or any other goods under the
Form Strip Logo and mark PUMA that is
identical/deceptively similar to the plaintiffs' registered
Form Strip Logo, that may amount to infringing of their
trademark.
Compliance of Order XXXIX Rule 3 CPC be made
within two weeks."
4. Despite entering appearance on 3rd December, 2015 and 23rd
February, 2016, the defendants did not appear thereafter and did not
file their written statement. Accordingly, the defendants were
proceeded ex-parte vide order dated 4th March, 2016.
5. In the plaint, it has been averred that plaintiffs' brand PUMA is
one of the world's leading sport brands, designing, development,
selling or marketing footwear, apparels and accessories. The
plaintiffs' and its variants are registered in several classes under the
Trademarks Act, 1999.
6. It has been further averred that the plaintiffs created and
adopted a distinctive Form Strip logo in 1956. The said Form
Strip logo appears in a unique style on both sides of the shoes
manufactured by the plaintiffs. The said Form Strip logo appears on
the shoe manufactured/marketed and sold by the plaintiffs globally
including in India. It has been also averred that the Form Strip logo is
registered in Class 25 under the Trademarks Act, 1999.
7. Ms. Astha Joshi, learned counsel for the plaintiffs states that in
August 2015 the plaintiffs came across the defendants' products, i.e.,
footwear under the mark ROCK-STEP using a devise / logo identical
to plaintiffs' Form Strip logo . She further states that upon
investigation it was found that defendants were supplying their shoes
with a logo deceptively similar to that of the plaintiffs' logo through e-
commerce portals such as www.shopping.Indiatimes.com.
8. Ms. Joshi further states that the very adoption of Form Strip
logo in respect of inferior quality goods by the defendants
amounts to infringement of the plaintiffs registered trademarks. She
also states that the use of impugned logo by the defendants in respect
of identical goods of the plaintiffs amounts to dilution of the plaintiffs'
well known trademark.
9. The plaintiffs have filed their evidence by way of an affidavit of
PW-1 Mr. Rahul Sethi.
10. The plaintiffs witness has proved the copies of trademark
registration certificates in favour of the plaintiffs as Ex.PW1/5
(collectively). The witness has further proved the invoices of
infringed goods purchased by the plaintiffs as Ex. PW-1/10 and Ex.
PW1/12.
11. Having heard learned counsel for plaintiffs as well as having
perused the papers, this Court is of the view that due to extensive use
over a substantial period of time, the plaintiffs' PUMA mark along
with the Form Strip Logo has acquired reputation and goodwill.
12. Further, as the plaintiffs' evidence has gone unrebutted, said
evidence is accepted as true and correct. Consequently, the allegation
that the trademark Form Strip Logo used by defendants on
their goods sold under e-commerce portal www.shopping.
Indiatimes.com. amounts to infringement of plaintiffs' mark Form
Strip Logo is accepted. The use of impugned mark by the
defendants is bound to cause incalculable loss of reputation and loss of
sales to the plaintiffs.
13. Keeping in view the aforesaid facts, the suit is decreed in terms
of prayers (a) and (b) of the prayer clause as well as actual cost
incurred by the plaintiff. The cost shall amongst others include the
lawyers' fees, local commissioner's fee as well as the amounts spent
on purchasing the court fees.
14. Registry is directed to prepare a decree sheet accordingly.
MANMOHAN, J
AUGUST 22, 2017
mk/rn
