Delhi District Court
Through vs Sanjeev Kadian on 22 February, 2022
In the Court of Shri Dinesh Bhatt, District Judge (Commercial
Court)01, Tis Hazari Courts, West District, Delhi
CS (Com.) No. 384/2019
CNR No. DLWT010022992019
Reebok International Ltd.
At 4th Floor, 1112 Pall Mall
London, SW1Y5LU
England (UK)
Also at:
Reebok India Company
Office No.6, 2nd Floor, SectorB
Pocket No.7, Plot No.11, Vasant Kunj
New Delhi110070
Through
Its Authorised Representative
Mr. Narendra Singh
E1, LGF, Lajpat NagarIII
New Delhi110024.
........Plaintiff
Versus
Sanjeev Kadian
Dalip Bhawan, Plot No.12
Baprola, Nangloi
Delhi110042
CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.1 of 11
........Defendant
Date of Institution : 25032019
Date of hearing of arguments :15022022
Date of decision :22022022
EXPARTE J U D G M E N T
1.The plaintiff Reebok International Ltd has filed the present suit for mandatory and permanent injunction, passing off, infringement of trademark and copyright and rendition of accounts against the defendant. The plaintiff company is engaged in manufacturing, sale and distribution of sports, fitness and casual footwear, apparel, accessories and equipments across the world. Plaintiff is owner of various trademarks and intellectual property rights in India and "Reebok" is the most reputed trademark of the plaintiff company. That the plaintiff company incurs huge amount of money in advertising and promotion of its various products under the trademark Reebok worldwide and on account of its quality and standards of manufacturing and ever introducing new technologies and by putting its skillful and untiring efforts in advertising and marketing, goods of the plaintiff company has acquired an enviable reputation worldwide and the trademark Reebok has become a well known trademark. That the said trademarks of the plaintiff company are registered in India under the Trade Marks Act, 1999 and enjoy their CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.2 of 11 protection under the Law.
2. Plaintiff has further stated in its plaint that the trademarks and logos of plaintiff company are registered under the provisions of the Trade Marks Act, 1999 in India and that the registrations of various trademarks are valid and subsisting in favour of the plaintiff company. That the plaintiff is the rightful owner of the trademarks and is entitled to use the said "Reebok" word mark and logos/device under the provisions of the Trademarks Act in India for all apparels, clothing, foot wear etc and that the said "Reebok" word marks and logos are registered under the Trademark Act, 1999 which are valid and subsisting in favour of the plaintiff till date. That the logos and trademarks of the plaintiff company have their own figurative distinctiveness on account of its unique design effect, sign, graphics, style as a whole and that the logos are an artistic work under the definition of copyright act owing to their unique design effect and style, the plaintiff company has copyright over the logos since it's the original and pristine creation of the plaintiff company.
3. That the plaintiff sells its products in a unique packaging under the trademark "Reebok" and all the packaging material bear he plaintiff's trademark / logo "Reebok" very prominently in a unique style and all the footwears of the plaintiff company have a label with "Reebok", CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.3 of 11 trademark sewed or heat sealed onto them. That plaintiff's trademarks are well known in India due to its international presence and association with all major sports since long, even before inception of its business operations in India and that on account of long, continuous and extensive usage of world mark "REEBOK" and other registered trademarks and logos of the plaintiff company have become the distinguishing factors for products of the plaintiff in India.
4. That the plaintiff operates in India through its wholly owned subsidiary Reebok India Company having its registered office at Delhi and since very inception the plaintiff company has been on a strong growth trajectory. That the plaintiff company is present in more than 325 cities in India. That plaintiff incurs huge amount of money in advertising and promotion of its various products under the trademark "Reebok" and its logos in India. That on account of its goods quality and standards of manufacturing and untiring efforts in advertising and marketing, goods of the plaintiff have acquired an enviable reputation and goodwill in India. Plaintiff has given details of its sales turnover in para 8 of the plaint. The copies of the trademark certificates / legal proceedings in respect of the trademarks in favour of the plaintiff company have been annexed with the plaint.
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5. Plaintiff has stated in his plaint that defendant is engaged in manufacturing, distribution and sale of infringing goods including shoes and other accessories bearing the falsified trademarks of the plaintiff company from its manufacturing unit situated at Dalip Bhawan, Plot No.12, Baprola, Nagloi, Delhi110041. It is stated that in the last week of February, 2019 it came to the knowledge of the plaintiff company that the defendant is illegally and unauthorizedly manufacturing and selling infringing products including shoes and other accessories bearing the Mark "Reebok", its logos and other trademarks of the plaintiff company which are identical and deceptively and / or confusingly similar to that of the plaintiff's products. That the defendant has used plaintiff's trademark which are substantial imitation of the trademark of the plaintiff. That the defendant by dishonestly adopting an identical mark and trade dress has been passing off its goods as that of the goods of the plaintiff company. That by use of plaintiff's trademarks by the defendant which are identical and / or confusingly similar to the registered trademark of the plaintiff company, the defendant is reaping unfair advantage without any due cause and such an act is highly detrimental to the distinctive character and repute of the trademark of the plaintiff company and amounts to infringement within the meaning of the Trade Mark Act, 1999.
6. It is stated that the cause of action in favour of plaintiff first arose CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.5 of 11 when the defendant started manufacturing, stocking, distributing and selling infringing shoes and other accessories bearing trademarks identical and / or confusingly or deceptively similar to the trademark and secondly arose in the lst week of February, 2019 when the plaintiff learnt that such infringing goods are being freely manufactured, stored, distributed and sold in Nangloi Market and other parts of the country by the defendant and its associates. It is stated that the cause of action is still accruing on a continuous basis.
7. The plaintiff has stated that this court has the territorial jurisdiction to entertain and try the present suit. That the plaintiff has valued the suit and paid the requisite court fees on the same.
8. Plaintiff has prayed for grant of mandatory and permanent injunction restraining the defendant, its associates and agents, officers, employees, distributors, representative and assigns from using the trademark "Reebok", its logos and other registered trademarks of the plaintiff on goods including shoes and other accessories in any form and manner and /or trademarks identical and / or confusingly or deceptively similar to the trade mark "Reebok" and its logos and other registered trademarks of the plaintiff, thereby infringing plaintiff's registered trademarks.
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9. Defendant has filed WS stating that the suit was not maintainable as defendants were not dealing with the goods in violation of Trademark Act as alleged in the plaint. Plaintiff had not mentioned the name of the copy right owner and, therefore, wrongly filed the suit. The suit was liable to be rejected under order VII rule 10 /11 CPC. Plaintiff has concocted a false story. This court has no territorial jurisdiction to entertain the suit. The plaintiff was not entitled for any reliefs. On merits, the defendant denied the authorization as well as the existence / incorporation of the plaintiff company. He also denied that the plaintiff had applied to obtain trademark registrations. In short, defendant has denied plaintiff entitlement and all the allegations.
10. Replication was filed to the WS filed by the defendant denying the preliminary objections and reiterating the contents of the plaint.
11. Vide order dated 25.03.2019, Ld. Local Commissioner appointed, who seized impugned goods from the defendant premises and filed its report alongwith inventory. The seized goods were released to the defendant on superdari.
12. Defendant through counsel appeared and requested for settlement. However, no settlement could be arrived at. Thereafter, defendant stopped appearing in the matter and was proceeded exparte on CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.7 of 11 08042021.
13. Plaintiff has also instituted mediation proceedings which is stated to be a nonstarter. Nonstarter report has been placed on record.
14. I have heard the counsel for the plaintiff and perused the case file.
15. Plaintiff has examined one witness as PW1 Sh Narendra Singh and thereafter closed his evidence. PW1 has tendered in evidence his affidavit Ex. PW1/A and relied on documents Ex. PW1/1, Ex. PW1/2 and Ex. PW1/4 to Ex. PW1/11 (OS&R) and Ex. PW1/12 to Ex. PW 1/14. PW1 has deposed on the similar lines as that of the plaint.
16. Plaintiff's case is that it is an incorporated company under the laws of United Kingdom and engaged in manufacturing, marketing and distribution of sports fitness and casual wear etc. since 1980 and has business turn over of several hundred crores per year. It was advertising its products on large scale and also maintaining excellent quality thereby had established itself as leading producer in the aforesaid articles. It was holder of registered trademark by the name of Reebok and its various connotations since 1984 and presently also its trademarks were continuing. Plaintiff has also claimed protection of copyright on the account of unique design, sign, graphics and style of the logo. It is CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.8 of 11 stated that plaintiff came to know in the last week of February, 2019 that the defendant was manufacturing and selling products with the logo of the plaintiff in an illegal and unauthorized manner. It also placed on record the photographs of the infringing products of the defendant and the original products of the plaintiff. It prayed that the mandatory and prohibitory injunction may be granted against the defendant and also claimed rendition of accounts and punitive damages.
17. Defendant neither crossexamined the plaintiffs witness nor lead any evidence on its behalf. Plaintiff has placed on record the registration certificates relating to the registered trademark by the word name Reebok and the graphic design, trade mark image as mentioned at pages no. 16, 21, 23 and 28 of the documents filed with the plaint. They have also supported their contentions in regard to their turnover on the basis of their statement of accounts. The photographs of the defendants goods vizaviz plaintiff's goods have also been placed on record as Ex. PW 1/13 & Ex. PW1/14. Ld. Local Commissioner's report to extent of seizure of fake goods also supports the plaintiff's contention. Plaintiff's version to the extent of their entitlement to use the registered trade mark is unrebutted and also supported from the documents placed on record. However, in regard to claim of punitive damages no specified amount has been claimed. No evidence in regard to the damages has been lead. As far as the seizure of goods is concerned it is mentioned in the report CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.9 of 11 of the Ld Local Commissioner that 1020 shoes have been recovered and around 8000 logo stickers were seized. Plaintiff has not lead any specific evidence with regard to actual value of the goods nor any evidence has been lead as to any price which might have been earned in the market or what was the actual prices earned by the defendant. There is also no evidence in regard to the actual loss caused to the plaintiff or wrongful gain to the defendant. However, on the basis of the seizure memo it can atleast be presumed that defendant was involved in large scale production of counterfeit goods. Thus a lumsum amount of Rs.2 lac is awarded as damages in favour of the plaintiff and against the defendant. In addition, defendant to also deliver all the seized goods to the plaintiff as per seizure memo and superdarinama dated 27.03.2019 prepared by the Ld. Local Commissioner.
18. Accordingly, (1) suit is decreed in favour of the plaintiff and against the defendant and mandatory and permanent injunction is passed against defendant thereby restraining the defendant, its associates and agents, officers, employees, distributors, representative and assigns from using the trademark "Reebok", its logos and other registered trademarks of the plaintiff on goods including shoes and other accessories in any form and manner and /or trademarks identical and / or confusingly or deceptively similar to the trade mark "Reebok" and its logos and other registered trademarks of the plaintiff, thereby infringing plaintiff's CS (COMM.) No.384/19 Reebok International Vs. Sanjeev Kadian Page No.10 of 11 registered trademarks, (2) further, a decree of amount of Rs. 2 Lac is passed in favour of the plaintiff and against the defendant as damages / punitive damages and (3) Defendant is also directed to handover the goods seized by the Ld Local Commissioner to the plaintiff who shall be the owner of the said goods.
Suit is decreed with cost.
Decree sheet be drawn accordingly.
File be consigned to record room.
Announced in open (Dinesh Bhatt)
Court on 22022022 District Judge (Commercial Court)01
West, Tis Hazari Courts, Delhi
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