Delhi High Court
Absogain Retail Solutions vs Puma Se on 15 May, 2023
Neutral Citation Number: 2023:DHC:3369-DB
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ RFA(COMM) 39/2023 & CM APPLs. 10165-10166/2023
ABSOGAIN RETAIL SOLUTIONS ..... APPELLANT
Through: Mr. Saurabh Kamra and Ms. Sarita,
Advocates.
Versus
PUMA SE ..... RESPONDENT
Through: Mr. Raman Narula and Mr. Shashi P.
Ojha, Advocates
Reserved on : 13th April, 2023
% Date of Decision : 15th May, 2023
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
HON'BLE MR. JUSTICE SAURABH BANERJEE
JUDGMENT
MANMOHAN, J:
1. Present appeal has been filed challenging the Order dated
24th January, 2023 passed by the District Court, Tis Hazari, Delhi in CS
(COMM) No. 2057/2019, whereby a decree for permanent injunction was
passed restraining the appellant-defendant from manufacturing, trading,
selling, marketing, offering for sale through online shopping portals or
dealing in any other way, any goods including shoes and other accessories
and/or any other goods under the respondent-plaintiff's 'Form Strip logo'
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
as its logo/trademark or any other mark/logo which is
deceptively similar to the respondent-plaintiff's 'Form Strip logo'
which may amount to infringement of the respondent-plaintiff's
registered trademarks as mentioned in the plaint. Further, appellant-
defendant was directed to ensure delivery of all the infringing
finished/unfinished materials bearing the respondent-plaintiff's trademark
'Form Strip logo' i.e. the goods seized by the Local
Commissioner to the authorised representative of the respondent-plaintiff.
The respondent-plaintiff was also awarded damages to the tune of Rupees
three lakhs along with costs of the suit.
ARGUMENTS ON BEHALF OF THE APPELLANT-DEFENDANT
2. Learned counsel for the appellant-defendant stated that the Trial Court
had erred in not appreciating that the design, on appellant-defendant's
product i.e. product in question, which respondent-plaintiff claimed to be
identical to its registered trademark was nothing but a normal design and
that the appellant-defendant was not aware that the same was registered in
favour of the respondent-plaintiff. He stated that if the appellant-defendant
had known that the said design was a registered logo of the respondent-
plaintiff, the appellant-defendant would have never used the same.
3. He further stated that the Trial Court had failed to appreciate that it
had no territorial jurisdiction to try and decide the subject-suit. He submitted
that the finding of the Trial Court on the issue of territorial jurisdiction was
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
contrary to the law laid down by the Supreme Court of India in Indian
Performing Rights Society Vs Sanjay Dalia & Anr, [2015] 10 SCC 161. He
emphasised that the witness of the respondent-plaintiff [PW-1] had deposed
that, "I have no proof and I do not say that defendant was also selling his
goods in offline market." the witness further stated that, "I do not have any
proof that defendant has ever sold infringed goods in Delhi".
4. He also stated that the Trial Court had incorrectly interpreted the
language of the issue no.4 i.e. issue with regard to relief of damages, and
had wrongly awarded the damages, without appreciating that the issue no.4
was with respect to the entitlement to damages and not the quantum of
damages. He submitted that the decision of the Trial Court awarding
damages to the tune of Rupees Three lakhs was unreasonable, baseless and
beyond the issue/s framed and such part of the impugned judgment was
liable to be set aside.
5. He contended that the plaintiff had failed to produce any evidence to
show that the Power of Attorney ('POA') executed by the plaintiff in favour
of PW-1 was valid at the time of filing of the suit. In support of his
submissions, he relied upon the cross-examination of PW-1 which is
reproduced hereinbelow:-
"the MARK PW-1/9 is executed by........ who are also constituted
attorney of plaintiff as I m....... I have no knowledge that how he has
authority to execute MARK PW-1/9............ I have no knowledge
whether any board resolution was passed or not in this regard.....I
receive fixed salary from RNA Law Firm for acting as power of
attorney holder of plaintiff company....... it is correct that I have filed
many cases similar to present suit for plaintiff and I have got many of
them settled with opposite parties after taking settlement amount in
favour of RNA (Vol. Not in my name)"
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
ARGUMENTS ON BEHALF OF THE RESPONDENT-PLAINTIFF
6. Per contra, learned counsel for the respondent-plaintiff stated that
though the onus to prove that the Commercial Court had no territorial
jurisdiction to try the present suit was on the appellant-defendant, yet no
evidence was led by it. He further stated that the learned Commercial Judge
in its judgment took into account the following documents relied upon by
the respondent-plaintiff to conclude that the Commercial Court had the
jurisdiction to try the suit:-
i. "Exhibit-PW 4/A- Internet downloads from the plaintiff's website
showing sale of Puma products.
ii. Exhibit-PW 1/6: Photographs of various celebrities promoting and
advertising Plaintiff's products.
iii. Internet downloads from the third-party website showing sale of Puma
products wwwflipkart.com.
iv. Internet downloads from the third-party website showing of Puma
products www.amazon.com.
v. Exhibit-PW 1/7 (Colly.): Internet downloads showing sale of infringing
products by the Defendant at wwwshopclues.com and advertisement of
Defendant's business activity on wwwjustdial.com.
vi. Exhibit-PW 1/8- Invoice dated 12.02.2019 issued by the Defendant for
sale of the infringing product.
vii. Defendant itself has filed listing of the infringing products on the website
www.shopclues.com in its reply to the Plaintiff's application for summary
judgement."
7. He further stated that the respondent-plaintiff had claimed rendition of
accounts and/or damages and in the absence of any evidence being led by
the appellant-defendant, the order for rendition of accounts could not be
passed.
8. He emphasised that the infringing products had been found to be sold
on an interactive website www.shopclues.com and an infringing product had
even been purchased against an Invoice (Exhibit PW1/8) by the respondent-
plaintiff.
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
9. He stated that the Local Commissioner appointed by the learned
Commercial Court had seized a total of 380 pairs of shoes. He stated that the
appellant-defendant was a serial offender as is apparent from the registration
application filed by it of a label mark which is a combination of the famous
registered designs of Slazenger and Channel. The said registration certificate
handed over in Court is reproduced hereinbelow:-
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
10. Consequently, according to him, the learned Commercial Judge was
right in presuming that the appellant-defendant had been selling the
infringing products for a considerable period of time, on account of which
the respondent-plaintiff had suffered huge losses.
11. He contended that the respondent-plaintiff's witness had produced a
validly executed POA in his favour as Ex. PW 2/1. He stated that in the
cross-examination, PW-1 was asked as to whether there was any contract
between him and RNA Law Firm or between RNA and plaintiff company to
which the witness had replied as under:-
"I have yearly contract with RNA but I have no knowledge about any
contract between RNA and plaintiff."
12. He contended that the above statement if examined in the context of
the judgment of this Court in Columbia Pictures Industries, Inc. And Ors.
Vs. Siti Cable Network Ltd., 2001 SCC OnLine Del 359, would clearly
show that there was no bar on a non-advocate accepting a POA and specially
when Mr.Rakesh Chhabra had not appeared in this case as a
pleader/advocate.
COURT'S REASONING
THE APPELLANT-DEFENDANT IS A REPEAT OFFENDER AND THE
ARGUMENT THAT IT WAS NOT AWARE OF RESPONDENT-
PLAINTIFF'S REGISTRATION IS NOT BELIEVABLE.
13. Having heard learned counsel for the parties and having perused the
paper book, this Court finds that the appellant-defendant's argument that it
was not aware of the respondent-plaintiff's registered design is not correct.
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
14. The appellant-defendant's and respondent-plaintiff's design are
reproduced hereinbelow:-
Respondent-Plaintiff's product with Appellant-Defendant's product
"Form Strip logo" with "Form Strip logo"
15. This Court is of the view that the respondent-plaintiff's design is
unique and is capable of being registered. This Court is also of the opinion
that the appellant-defendant could not have independently prepared a design
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
that is identical to respondent-plaintiff's registered design and used it for
identical products.
16. It also seems to this Court that the appellant-defendant has a 'passion'
for copying famous registered designs as is apparent from the registration
application filed by it qua a combination of designs of Slazenger and
Channel.
17. Consequently, the appellant-defendant is a repeat offender and the
appellant-defendant's argument that it was not aware of appellant-
defendant's registration or if it had known about the same, it would never
have used such a design, is only to be stated to be rejected.
IN VIEW OF THE TEST OF PURPOSEFUL AVAILMENT BEING
SATISFIED AND THE FAILURE OF THE APPELLANT-DEFENDANT TO
DISCHARGE THE ONUS OF PROOF, THE TRIAL COURT HAD THE
JURISDICTION TO HEAR AND TRY THE PRESENT SUIT
18. This Court also finds that the onus to prove that the Trial Court had no
territorial jurisdiction was cast upon the appellant-defendant which it had
failed to discharge as it admittedly did not lead any evidence.
19. The learned Commercial Judge after examining the downloads from
the respondent-plaintiff's website, third party websites showing sale of
Puma products at www.flipkart.com, www.amazon.com etc. and internet
downloads showing advertisement of defendant's business activity at
www.justdial.com and an invoice dated 12th February, 2019 issued by the
defendant showing sale of infringing products by the defendant at
www.shopclues.com which admittedly is an interactive websites accessible
from Delhi, concluded that the Trial Court had the territorial jurisdiction to
try this suit.
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
20. In our opinion, the test of purposeful availment as stipulated by this
Court in Banyan Tree Holding (P) Ltd. vs. A. Murali Krishna Reddy &
Anr., 2009 SCC OnLine Del 3780, World Wrestling Entertainment, Inc.
Vs. Reshma Collection & Ors. 2014 (60) PTC 452(Del.)(DB) and Burger
King vs. Tekchand, 2018 (76) PTC 90 (Del.) stood satisfied and therefore
the Trial Court had the jurisdiction to hear and decide the present suit.
AS THE APPELLANT-DEFENDANT IS A REPEAT OFFENDER AND THE
INFRINGING PRODUCTS WERE SEIZED BY THE LOCAL
COMMISSIONER AND FOUND TO BE SOLD ON INTERACTIVE
WEBSITE, THE COMMERCIAL COURT HAS RIGHTLY QUANTIFIED
THE DAMAGES AT RUPEES THREE LAKHS.
21. One of us (Manmohan, J) sitting singly, in Koninlijke Philips N.V. &
Anr. Vs. Amazestore & Ors., 2019 SCC OnLine Del 8198 after a detailed
analysis, held that the rule of thumb that should be followed while granting
damages can be summarised in a chart as under:-
# Degree of mala fide conduct Proportionate award
(i) First-time innocent infringer Injunction
(ii) First-time knowing infringer Injunction + Partial Costs
Repeated knowing infringer Injunction + Costs + Partial
(iii) which causes minor impact to damages
the Plaintiff
Injunction + Costs + Compensatory
Repeated knowing infringer
damages.
(iv) which causes major impact to
the Plaintiff
Infringement which was
deliberate and calculated Injunction + Costs + Aggravated
(v) (Gangster/scam/mafia) + damages (Compensatory +
wilful contempt of court. additional damages)
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
22. Since in the present case, the appellant-defendant is a repeat offender
and the infringing products were found to have been sold on the interactive
website www.shopclues.com and an infringing product was purchased
against the invoice Exhibit PW1/8 and the Local Commissioner appointed
by the learned Commercial Court had seized 760 pieces i.e. 380 pairs of
shoes, this court is of the view that the present case falls in category (iii) of
the chart above and the Commercial Court has rightly quantified the
damages at Rupees three lakhs.
IN VIEW OF SECTION 85 OF THE EVIDENCE ACT AND NO ISSUE
WITH REGARD TO POA HAVING BEEN FRAMED, THERE WAS NO
FAILURE TO PROVE THE POA.
23. The appellant-defendant's argument that the respondent-plaintiff
failed to lead any evidence to prove that the POA relied upon by the PW-1
was validly executed is contrary to the facts and untenable in law.
24. In the opinion of this Court, it is of no relevance that the respondent-
plaintiff did not lead any evidence to prove that the POA was validly
executed as neither any issue had been framed with regard to the same nor
appellant-defendant filed an application under Order XIV Rule 4 of the
Code of Civil Procedure, 1908 seeking amendment of those framed.
25. Secondly, there is a presumption in law that every document
purported to be a POA and having been executed before and authenticated
by a Notary Public and the Indian Consul was so executed and
authenticated. Section 85 of the Indian Evidence Act reads as under:-
"85. Presumption as to powers-of-attorney.
The Court shall presume that every document purporting to be a power-
of-attorney, and to have been executed before, and authenticated by, a
Notary Public, or any Court, Judge, Magistrate, Indian Consul or Vice-
Consul, or representative of the Central Government, was so executed
and authenticated."
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
Neutral Citation Number: 2023:DHC:3369-DB
26. Moreover, the Supreme Court in United Bank of India Vs. Naresh
Kumar and Others, (1996) 6 SCC 660 has held that, "Procedural defects
which do not go to the root of the matter should not be permitted to defeat a
just cause."
CONCLUSION
27. In view of the aforesaid findings, this Court is of the opinion that the
present appeal is bereft of merits. Accordingly, the same is dismissed but
without any order as to further costs.
MANMOHAN, J
SAURABH BANERJEE, J
MAY 15, 2023
TS/js/AS
Signature Not Verified
Digitally Signed By:JASWANT
SINGH RAWAT
Signing Date:16.05.2023
