Delhi High Court
Puma Se vs Hi-Tec Point Technologies P Ltd ... on 19 May, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 19th May, 2022
+ CS (COMM) 137/2021
PUMA SE ..... Plaintiff
Through: Mr. Ranjan Narula, Advocate (M-
9810089384)
versus
HI-TEC POINT TECHNOLOGIES
P. LTD. AND ORS. ..... Defendants
Through: Mr. Rahul Rajput, Advocate for D1
and D2.
Mr. Lakshay Agarwal, Mr.
Yashvardhan & Ms. Kritika Nagpal,
Advocates for D-6.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1.
This hearing has been done through hybrid mode.
I.A. 7860/2022 (u/O XXIII Rule 3 CPC) in CS(COMM) 137/2021
2. The present suit has been filed by the Plaintiff- PUMA SE seeking
protection of its mark 'PUMA' which was coined and adopted by it
internationally in 1948. The Plaintiff's brand 'PUMA' is one of the world's
leading sports brand designing, developing, selling and marketing footwear,
apparel and accessories. The mark 'PUMA' has been used in India from
1980's onwards and the same is registered under several classes. Defendant
No.1- M/s Hi-Tech Point Technologies Pvt. Ltd. started a Global Positioning
System (hereinafter 'GPS') service through electronic application by the
name 'PUMA GUARD'. Defendant No.2 - Black Box GPS Technology
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
OPC Pvt. Ltd. also launched a device with GPS tracking and anti-theft
capabilities under the mark 'PUMA'.
3. Defendant No.1 filed an application for registration of the mark
'PUMA THE VEHICLE GUARD' in Class-9 on 23rd February, 2013 on
'proposed to be used' basis. On coming across the said application,
correspondence was entered into between the parties. However, the
Defendants refused to comply with the requisitions of the Plaintiff. The
Plaintiff also came across two domain names, namely, 'www.pumaguard.in'
and 'www.pumaguard.com' where Defendant No. 2 was promoting and
selling its GPS and anti-theft vehicle devices under the impugned mark.
After effecting a purchase on 15th February, 2021 from Defendant No.2, the
present suit was filed.
4. Vide order dated 24th March, 2021, an ex parte ad-interim injunction
was granted in the following terms:
"13. In view of the above, the Plaintiff has made out a
prima facie case, the balance of convenience also lies
in favour of the Plaintiff and irreparable cause would
be caused to the Plaintiff in case the Defendants are
not restrained, as prayed for. Accordingly, the
Defendants, their directors, partners or proprietors as
the case may be, servants, agents, affiliates, associates,
stockiest are restrained from manufacturing, stocking,
warehousing, trading, supplying, selling, marketing, in
any manner including online sale or dealing in any
other way, any goods including antitheft and GPS
vehicle devices and/or any other products under the
trade marks
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
or any other name/ mark which is identical and
deceptively similar to the Plaintiff's mark PUMA
including use of it as a domain name not limited to
pumaguard.in and pumaguard.com or key words or
meta-names, Twitter handle, Facebook channel,
LinkedIn profile, YouTube channel, app name or any
other online media which may amount to infringement
or passing off of the Plaintiff's registered trademarks
as mentioned in paragraph 12 of the plaint."
5. Vide the said order, a Local Commissioner was also appointed to visit
the premises of Defendant No.2 and prepare an inventory of the products
with the impugned mark. The Local Commissioner executed the
commission in Chandigarh in Defendant No.2's premises and made an
inventory of the GPS tracking devices under the name 'PUMA'.
Photographs were also taken by the Local Commissioner. The said devices
were 19 18 in number and one packaging was also found bearing the mark
'PUMA'. The same were returned on superdari to Defendant No.2.
6. The Defendants who are impleaded in the present suit are Defendant
Nos.1 and 2 who are the contesting parties. Defendant No.3- Endurance
Domains Technology LLP is the Registrar of the domain name
'www.pumaguard.in'. Defendant No.4- PDR Solutions Fzc is the webhost of
the website 'www.pumaguard.in'. Defendant Nos.5 and 6 are the Registrar
and web host respectively of the website 'www.pumaguard.com'. Defendant
No.7- Google LLC has included Defendant No.1's GPS tracking application
on the Google Play Store. Defendant No.8- Apple Inc. has also included the
Defendant No.1's application on its `App store'. Defendant No.9- Twitter
Inc, Defendant No.10-LinkedIn Corporation and Defendant No.11-Facebook
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
Inc. are social media platforms where the Defendant No.2's products are
being promoted, advertised and business is being solicited.
7. Order dated 27th July, 2021 notes that a submission was made on
behalf of Defendant Nos.7, 10 and 11 that they shall block/deactivate the
links specified in the order on their websites. On behalf of Twitter Inc., it
was confirmed that the Twitter handle of Defendant Nos.1 and 2 has been
changed. The relevant paragraphs of the said order are set out below:
"2. Ms. Aishwarya Kane, leamed counsel for
Defendant No. 7/ Google LLC submits that in terms of
the order dated 24th March, 2021, there were no
specific directions issued to Defendant No. 7 for taking
down or blocking/deactivating the offending content on
the website 'YouTube.com'. Having heard the counsel,
it is directed that Defendant Nos. 7, 10 and 11 shall
block/deactivate the following links on their
respective websites:
a)https://www.youtube.com/channel/UC0xmJL_7Dpsyf
XeIc-5-vdg
b)https://www.linkedin.com/in/pumathevehicleguard/?
originalSubdomain=in
c)https://www.facebook.com/PumaTheVehicleGuard/1/
3. Mr. Deepak Gogia, learned counsel for Defendant
No. 9/Twitter Inc. states that the Defendant Nos. 1
and 2 have already changed their Twitter handle as
also noted by the leamed Joint Registrar in the order
dated July, 2021. In these circumstances, Mr. Narula
does not press for any specific directions against
Defendant No. 9."
8. Mr. Narula, ld. Counsel for the Plaintiff confirms that after the said
order was passed, the application of the Defendant No.1 has been removed
from Apple's App Store. However, he submits that Defendants' profile on
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
LinkedIn continues to exist and the application continues to be visible on the
Google Play Store.
9. During the pendency of the suit, the Plaintiff and Defendant Nos.1
and 2 have arrived at a settlement. An application under Order XXIII Rule 3
CPC has been filed jointly by the parties. The terms and conditions of the
settlement are contained in paragraphs 3(I) to (XII) of the joint application.
The terms and conditions are extracted herein below:
"3. That the parties submit that during the pendency of the
present proceedings, the Plaintiff and the Defendant No. 1 & 2
(hereinafter referred to as the "Defendants") have arrived at a
settlement on the following terms & conditions as more
particularly set out hereinafter: -
I. The Defendants acknowledge and recognize
that the Plaintiff is the proprietor of its well-
known trade mark PUMA;
II. The Defendants undertakes that with
immediate effect that the their directors, partners
or proprietors as the case may be, servants,
agents, affiliates, associates, stockiest and all
other persons directly under the control of the
Defendants have stopped and agree not to, at any
time in the future, manufacture, market, offer for
sale including online sale or dealing in any other
way, any goods including anti-theft and GPS
vehicle Devices and/ or any other security and
surveillance products under the Plaintiff's trade
mark PUMA or any other goods. Further not to
use PUMA as a trade mark/tradename/domain
name or any other mark which is identical and/or
deceptively similar to the Plaintiff's mark PUMA
which may amount to infringement of the
Plaintiff's registered trademarks and passing off;
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
III. The Defendants further undertake not to
pursue or file any appeal against Trade Mark
Registry order dated 16 September, 2018 vide
th
which the Defendants trade mark application for
registration of the mark under No. 2483675 in
class 9 was refused/ abandoned. The Defendants
further undertake not to file any fresh application
for registration of the mark PUMA or any other
deceptively similar mark in future.
IV. The Defendants confirm that they have
stopped running their websites
www.pumaguard.in & www.pumaguard.com with
immediate effect. The Defendants undertake not
to operate their websites www.pumaguard.in &
www.pumaguard.com at any time in future or
incorporate any new website containing the mark
PUMA as part of their domain name. The
Defendant further undertakes not to use any
email/website/ domain name containing the mark
PUMA. The Defendants also undertake to transfer
the domain names www.pumaguard.in &
www.pumaguard.com to the Plaintiff. Further, the
Defendants will have 'no objection' to the above
domain names being transferred by the respective
Registrars in the name of the Plaintiff.
V. The Defendant undertakes to remove from
third parties websites/ online directory and other
online resources, the goods bearing the mark
PUMA or any advertisement for PUMA products
placed anywhere within 30 days of execution of
the present application. The Defendant further
undertakes that in future it will not use directly or
indirectly or advertise its business/
services/products under the impugned mark
PUMA or any mark deceptively similar thereto.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
VI. The Defendants agree and undertake to
deactivate/ disable the access and take down the
software application under the name 'PUMA
GUARD' from app stores (Apple & Google Play
stores) within 7 days from the date of signing of
the present application.
VII. The Defendants agree and undertake to
deactivate/ disable their profile under the name
PUMA/'PUMA GUARD' from YouTube,
LinkedIn, Facebook & Twitter.
VIII. The Defendants further agree for destruction
of the infringing products seized by the local
commissioner and other inventory lying in their
power and possession in the presence of the
Plaintiff's representative.
IX. The Defendants agrees to pay an amount of
Rs. 3,50,000/- (Three Lakh Fifty Thousand) as
cost of these legal proceedings to the Plaintiff
vide Demand Draft no. Rs 50,000/- dated
02/12/2021 drawn on The Karur Vysya bank
Limited and Demand Draft no. Rs 300000/- dated
11/08/2021 drawn on The Karur Vysya bank
Limited and
X. The aforesaid undertakings have been given
and signed by Mr. Rajesh Vaidya on behalf of
Defendant no 1 and Mrs Madhu Vaidya on behalf
of Defendant no 2 on behalf of the Defendants and
Ms. Sonu Kapoor on behalf of the Plaintiff. All
aforesaid undertakings shall be binding on the
parties, partners, legal heirs, servants, agents,
representatives and assigns in the business;
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
XI. That parties have agreed that full court fees
of the present suit will be refunded to the Plaintiff
as parties have settled the despite amicably.
XII. The Defendants understood that in the event
of breach of any of the terms of the present
settlement, the Plaintiff would be entitled to
forthwith and without any notice, terminate the
present settlement and pursues appropriate legal
remedies and reliefs available to it including but
not limited to liquidated damages;
4. That in view of the aforesaid undertaking given by
Defendants, the Plaintiff undertakes to forgo its claim of
rendition of account/damages against the Defendants as stated in
paragraph No. 47 (j-m) of the plaint and the parties agree that in
view of the above undertakings and acknowledgements a decree
for permanent injunction be passed in favour of the Plaintiff and
against the Defendants as per Paragraph No. 47 (a-c) of the
plaint."
10. As per the terms of the settlement, Defendant No.1 and 2 have
acknowledged the rights of the Plaintiff in the mark 'PUMA'. They have
also confirmed that they have stopped using the mark 'PUMA' for their GPS
tracking devices or any other such similar products which may amount to
infringement and passing off. Defendant Nos.1 and 2 have also undertaken
not to pursue trademark application 2483675 which has been refused by the
Registrar of Trade Marks. The Defendants' websites are also stated to be
longer been operational.
11. The Court has perused the terms of settlement. The same are lawful.
There is no impediment in recording the settlement. The terms of settlement
shall be binding on the parties and all other acting for and on their behalf.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
12. Accordingly, the suit is decreed against Defendant Nos.1 and 2 in
terms of paragraphs 3(I) to 3(XII) and 4 as set out above. In addition, the
suit is decreed in terms of paragraph 47 (a) to (c) of the Plaint. None of the
other reliefs are pressed.
13. In order to give full effect to the injunction/decree which has granted
today, it is directed that Google LLC shall remove Defendant No.1's app -
'PUMA GUARD' from its Google Play Store. The LinkedIn profile of
Defendant No.1 and 2 shall also be removed by Defendant No.10. Copy of
this order be emailed by ld. Counsel to the plaintiff to the said defendants for
compliance.
14. In future, if there are any other URLs where the Defendants' products
are being advertised, either on the internet or on any other social media
platforms, the Plaintiff is permitted to write to the Defendants arrayed as
Defendant Nos.7 to 11 in the present suit along with the copy of the order
with a request for take down of the said URLs. If the said URLs are not
taken down, the Plaintiff is permitted to avail of its remedies in accordance
with law.
15. On behalf of Defendant No.6 - Quadrant Televentures Limited, it is
submitted that the said Defendant is merely a host of the website
'www.pumaguard.com' and is proforma party.
16. In view of the decree passed today, Defendant Nos. 3 and 5 i.e.,
Endurance Domains Technology LLP and Public Domain Registry (PDR)
are directed to transfer the domain names 'www.pumaguard.in' and
'www.pumaguard.com' to the Plaintiff. The details of the person in whose
favour the transfer is to be effected shall be communicated by the Plaintiff to
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
the said two Defendants within two weeks. Upon receipt of the said details,
the transfer shall be effected within a period of two weeks thereafter.
17. Parties are left to bear their own costs.
18. The suit along with all the pending applications are disposed of in the
above terms.
PRATHIBA M. SINGH
JUDGE
MAY 19, 2022
Rahul/SK
