Delhi District Court
Puma Se vs Health And Sports And Others on 17 March, 2025
DLND010051802022
IN THE COURT OF MRS VINEETA GOYAL,
DISTRICT JUDGE (COMMERCIAL-03),
PATIALA HOUSE, NEW DELHI
CS (Comm) No.565 of 2022
CNR No. DLND01-005180-2022
In the matter of:
PUMA SE
PUMA Way 1,
Herzognaurach, 91074 Germany
Also at -
117, A22,
WEA, Ajmal Khan Road,
New Delhi-110005. ........ Plaintiff
Versus
Health & Sports
RZ-6H, Mahavir Enclave,
Palam Dabri Road,
New Delhi-110045. ..... Defendant No.1
Sh. Khushwant Singh
RZ, F-1 Palam Dabri Road,
Mahavir Enclave,
New Delhi-110045. ..... Defendant No.2
CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 1 of 15
Sh. Sachin Saxena
Ground Floor, R2 D-3,
1-B, Kh. No.69,
Main Palam Dabri Road,
Mahavir Enclave,
New Delhi-110045. ..... Defendant No.3
Date of institution of suit : 09.06.2022
Date of Judgment : 17.03.2025
Appearance : Sh. Shashi P.Ojha with Sh. Ranjan Narula and
Sh. Parth Bajaj, Ld.Counsels for plaintiff.
None for defendant no.2.
Suit against defendant nos.1 and 3 has already been
decreed vide order dated 07.11.2022.
JUDGMENT
1 The present suit has been filed seeking relief of permanent injunction restraining from infringement of trademarks, copyright of the plaintiff, passing off their goods and other ancillary reliefs.
2 The case set up by plaintiff in the plaint is as follows :-
2.1 The plaintiff is a company incorporated under the Laws of European Community under the laws of Germany. Ms. Sonu Kapoor being constituted attorney of the plaintiff, is duly authorized to sign and verify pleadings and institute the present CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 2 of 15 suit on behalf of the plaintiff.
2.2 The plaintiff is marketing and selling its products in India including in Delhi through its wholly owned subsidiary Puma Sport India Pvt Ltd under its well known trademark PUMA and (herein referred as PUMA). The plaintiff has also been supplying and carrying on its business through its various stores at Delhi including stores situated in Khan Market and Connaught Place, New Delhi. The plaintiff is also promoting its products through website www.puma.com, through an interactive website(s) and accessible to the consumers at Delhi.
2.3 The trademark PUMA was coined way back in 1948 by Rudolf Dassler and was officially registered on 01.10.1948. Due to its massive popularity, since, it came into existence in 1948 and continuous and exclusive use, the mark PUMA is synonym with every sports today. The plaintiff is one of the world's leading sport brands designing, developing, selling and marketing footwear, apparels & accessories but not limited to track suits, T-
shirts, shorts, polo shirts, Sport shoes, formal shoes, slippers, Flip flops, slippers, Sandals, Bags, ladies purse, wallets, smart / sport watches and other accessories and equipment of highest quality. The turn over and net sales of the plaintiff worldwide for the period 2012-19 is running into crores of rupees. The plaintiff's mark PUMA is a valuable asset to its business. The plaintiff has CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 3 of 15 spent huge sum of money on the advertisement and sales of its products.
2.4 The plaintiff is registered proprietor of trademark PUMA and its logos and variants in several classes viz 3, 9, 14, 16, 18, 24, 25, 28, 35, 41 in India as per details mentioned in para 12 of the plaint. All registrations are valid and subsisting. The plaintiff has exclusive right to use the said mark in view of the statutory right available with it under the Trade Marks Act, 1999 (hereinafter referred to as 'Act').
2.5 The plaintiff, with the passage of time, has built up unparallel reputation and goodwill and by virtue of its presence worldwide, and it's mark and logo come to exclusively associated with that of plaintiff's. It has crossed the physical boundaries and has acquired trans-border reputation in India. The plaintiff's trademark PUMA has been declared as well-known trademark in India by trademark registry and the same was published in Trademark Journal No. 1934, 30.12.2019.
2.6 The grievance of the plaintiff is that in the 2 nd week of May, 2022, through its representative / field force, it has learnt that the defendant is engaged in the business of stocking, selling, supplying counterfeit PUMA branded garments without authorization / approval of the plaintiff. The plaintiff's CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 4 of 15 representative visited at the defendants' premises and enquired about PUMA branded footwear and garments and managed to obtain few PUMA branded garments including track pants and t- shirts. The defendant is committing a fraud to defraud the consumers to make unjust monetary gains. The defendant being fully aware of plaintiff's right in the well-known trademark indulged into illegal activities of stocking and supplying PUMA branded counterfeit products with sole intention to pass off its fake products as that of plaintiff's products. By copying well- known trademark / logo of the plaintiff, in respect of its inferior quality goods, the defendant has infringed the plaintiff's registered trademark / logo. The defendant, by adoption of an identical mark in respect of identical or similar products / goods, has attempted to derive unfair and cause misrepresentation in the minds of trade and common man and thus would amount to passing off. This Court has territorial jurisdiction to entertain the present suit.
2.7 Accordingly, the plaintiff has filed the present suit.
3 This court, vide order dated 09.06.2022, granted an ex- parte ad interim injunction in favour of the plaintiff and against the defendant. The relevant portion of the said order is as under :-
"12. As a result, ad-interim injunction is granted in favour of the plaintiff and against the defendant, its proprietor, partners, servants and agents, etc., restraining them from stocking, wholesaling, supplying, selling, marketing in any manner including online sale or dealing CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 5 of 15 in any other way, any goods including garments / or any other products including accessories under the plaintiff's mark PUMA and logo and any other mark / logo which is identical and similar to the plaintiff's mark PUMA and logo which may amount to infringement of its registered trademarks as mentioned in paragraph 12 of the plaint till 25.07.2022."
4 Vide the aforesaid order, one Local Commissioner was appointed to seize and inventorize the infringing goods bearing the trademark / label PUMA and PUMA logo which may be identical with or deceptively similar to the plaintiff's trademark / label PUMA and its logo in relation to goods including garments and business. The report of Local Commissioner has been placed on record. As per report of Local Commissioner, he visited at the premises of defendant and seized counterfeit products bearing trademark of plaintiff and released on superdari to the defendant. The details of seizures are as follows :-
Shop No. CN-1441, RZ D-3, 73 Pieces Mahavir Enclave, Palam, Track Pants - 22 Dabri Road, New Delhi. T-Shirt - 5 Sweat Shirt - 1 Shoes with box - 15 Slippers - 10 Shoes - 20 Shop No. RZ-6H, Mahavir 2 Bags (143 pieces) Enclave, Palam, Dabri Road, Track Pant - 55 New Delhi. T-Shirt - 59 Jacket - 29 CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 6 of 15 Shop No. RZ-F-1 A/1/24, 90 pieces Mahavir Enclave, Palam, Track pants - 80 Dabri Road, New Delhi. T-Shirt - 5 Cap - 1 Shorts - 4
5 On the application filed by plaintiff, looking into the report of Local Commissioner, the defendant Ashok Kumar was substituted by Rahul Sherawat (defendant no.1), Khushwant Singh (defendant no.2), Sachin Saxena (defendant no.3) vide order dated 25.07.2022. The defendant nos. 1 and 3 appeared, however defendant no. 2 did not appear despite publication in newspaper 'The Statesman'. The defendant no. 2 did not file any written statement within prescribed time limit and hence, the right of defendant no. 2 to file written statement stands forfeited. It is relevant to note here that defendant no.2 was present at the time of visit of Local Commissioner. Thus the defendant no.2 obviously have knowledge of the orders passed by this court and the present proceedings yet for the reasons best known to him, has stayed away. While defendant nos. 1 and 3 put their appearance and had settled the matter with the plaintiff and made statement to the effect that they would not be dealing in future under the impugned trademark i.e. PUMA and PUMA logo and any deceptively similar trademark / label of the plaintiff, consequently, the suit stands decreed qua defendant nos. 1 and 3 vide orders dated 07.11.2022.
CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 7 of 156 In view of the above, in the absence of any defence of defendant no.2, Ld. Counsel for the plaintiff filed the present application u/o XIIIA r/w Order VIII Rule 10 r/w Section 151 of CPC for passing summary judgment and prayed that plaintiff is thus entitled to decree of permanent injunction in terms of prayers made in the plaint.
7 Order XIII A of the CPC, as amended, sets out the procedure by which court can decide a claim arising out of a commercial dispute without recording oral evidence. As per order XIII A, summary judgment can be passed by courts on a claim pertaining to a commercial suit. The term claim has been defined to include (i) part of the claim ; (ii) any particular question on which claim (whether whole or part) depends or / and (iii) a counter claim.
8 Order XIII-A Rule (3) makes it clear that the Summary Judgment provisions shall not apply to a Commercial Suit originally filed as a summary suit under Order XXXVII of the CPC. Under Order XIII-A Rule 3, the Court can give Summary Judgment either in favour of the plaintiff or the defendant on the ground, inter alia, that the plaintiff has no real prospect of succeeding on the claim or that the defendant has no real prospect in successfully defending the claim, as the case may be. However, the said Order makes it clear that (a) a Summary Judgment can CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 8 of 15 only be made upon an application being made by a party, (b) such an application can only be made after service of summons, and (c ) such an application must be made before issues are framed.
9 In case of EBAY Inc. vs. Mohd. Waseem, reported in 2022 SCC Online Delhi 3879, the Hon'ble Delhi High Court observed that in the event the defendants have failed to appear to the proceedings and voluntary chosen not to respond to the plaint, it is indicative of the fact that defendants have nothing substantial to argue, by way of a response to the allegations in the plaint.
10 The Hon'ble High Court of Delhi in case of Chirstial Broadcasting Network Inc. vs. CPN News Private Limited, 2018 SCC Online DEL 11666, has held as follows :-
"The scope of Order 8 Rule 10 CPC in commercial suits particularly under the New Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015 has being examined by this court in Nirog Pharma Pvt. Ltd. vs. Umesh Gupta & Anr., 235(2016)DLT354 . This court held as follows:
"11. Order VIII Rule 10 has been inserted by the legislature to expedite the process of justice. The courts can invoke its provisions to curb dilatory tactic, often resorted to by defendants, by not filing the written statement by pronouncing judgment against it. At the same time, the courts must be cautious and judge the contents of the plaint and documents on record as being of an unimpeachable character, not requiring any evidence to be led to prove its contents. ...........
28. The present suit is also a commercial suit within the definition of the Commercial Courts, Commercial Division and Commercial Appellate Division of High CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 9 of 15 Courts Act, 2015 and it was the clear intention of the legislature that such cases should be decided expeditiously and should not be allowed to linger on. Accordingly, if the defendant fails to pursue his case or does so in a lackadaisical manner by not filing his written statement, the courts should invoke the provisions of Order VIII Rule 10 to decree such cases."
11 In case of Disney Enterprises Inc. & Anr. vs. Balraj Muttneja & Ors., {CS (OS 3466/2012) decided on 20.02.2014} , the Hon'ble High Court has observed as under :-
"3. Though the defendants entered appearance through their counsel on 01.02.2013 but remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex-parte vide order dated 04.10.2013 and the plaintiffs permitted to file affidavits by way of ex-parte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex- parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd. Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint."
12 I have gone through the averments made in the plaint and gone through the documents filed by the plaintiff.
13 The plaintiff, to establish its case, has relied upon documents viz photographs of impugned products, copy of plaintiff's company analysis report confirming defendant's CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 10 of 15 products as counterfeit, internet download from trademark observing PUMA as well as known mark in India published in Trade Mark Journals No. 1934 dated 30.12.2019 ; copy of Certificate issued in legal proceedings, worldwide registration ; sale invoices ; internet downloaded history of PUMA, sale of PUMA products, Power of Attorney as well as Certificate u/s. 65 B of Indian Evidence Act and Declaration u/o XI Rule 6 of Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Ordinance, 2015.
14 The copies of trademark certificates along with documents demonstrate that plaintiff is registered owner of trademark / logo PUMA. Thus it is established that plaintiff is the owner of the trademark. Section 28 of the Trade Marks Act, 1999, provides that valid registration of the trade mark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which trademark is registered. It further empowers the owner of trademark to obtain relief with regard to infringement of the trademark in the manner provided under the Act. Further, Section 29 of the Trade Marks Act, 1999 provides that a registered trade mark is infringed by a person, who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical or deceptively similar, to the trademark in relation to the goods or services in respect of CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 11 of 15 which the trademark is registered and in such manner as to render the use of the trademark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 further provides that a trademark is infringed by using a mark which is identical or similar with a registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Further, Sub-Section (3) of Section 29 provides a presumption in respect of a mark that is likely to create confusion on the part of public on account of identity with the registered trademark and identity of the goods or services covered by such registered trademark.
15 Further in case of Laxmikant V. Patel vs. Chetanbhat Shah & Anr., reported in AIR 2002 SCC 275 , on the aspect of riding upon the goodwill of plaintiff and passing of, reliance can be placed upon para 10 of the judgment wherein it was observed that "a person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 12 of 15 basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
16 Reverting to the facts of the case in hand, from the pleadings and Local Commissioner report, there is irrefutable evidence to show that counterfeit goods bearing the trademark and logo of the plaintiff were recovered from the possession of defendant no.2. In these premises, defendant no.2 can safely be said to have given false description to their goods and thereby infringed the trademark /logo of the plaintiff. Such infringement if left unchecked would also be not in interest of consumer, in as much as the consuming public may be purchasing counterfeit products and paying higher price presuming the same to that of plaintiff's brand which need to be protected. Thus, the examination of all the aforesaid unrebutted material leads to inescapable conclusion that plaintiff is entitled to a decree of permanent decree of injunction and passing off in terms of Prayer
(a) & (b) of Para 40 of the plaint.
17 As discussed above, since the plaintiff is entitled for decree of infringement of trademark as well as passing off, plaintiff is also held entitled to relief of delivery up of the goods for the purpose of destroying the same, which were seized by the Local Commissioner at the time of inspection at the shop of CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 13 of 15 defendant no.2.
18 So far as relief of damages is concerned, as noticed above, plaintiff has proved seizure of counterfeit goods from the shops of defendant no.2. No account books could be recovered from the shop of defendant no.2. The defendant no. 2 of his own did not produce any account books. Rather defendant no. 2 deliberately chosen to stay away from the proceedings ensuring that he is not required to produce its accounts. However, in the matter of Addidas AG vs. Praveen Kumar; CS (COMM) 1269/2019, decided on 14.05.2019, the Hon'ble High Court of Delhi granted damages after taking note of report submitted by Local Commissioner. In the present case, defendant no.2 was found in possession of 90 pieces of apparels. From the list of inventory placed on record by Local Commissioner, it is not possible to make the exact analysis of the profits earned by defendant no. 2 from selling the counterfeit products / goods. Thus, in the given situation, Court finds that the plaintiff is entitled to nominal damages on account of violation of trade mark rights of the plaintiff. Keeping in view, all the facts and circumstances, the number of the items seized from the premises / shops of the defendant no. 2, the Court holds that plaintiff is entitled to a sum of Rs.50,000/- from defendant no. 2 by way of damages.
CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 14 of 1519 As a result of the foregoing findings, suit of plaintiff is hereby decreed in its favour and against defendant no. 2 with cost. Decree of permanent injunction is hereby passed in favour of plaintiff and against defendant no. 2 in terms of the prayer 40 (a) & (b) of the suit. Suit of the plaintiff is also decreed for relief of delivery up, and defendant no. 2 is directed to deliver to the plaintiff within 30 days from today, the goods with infringed trade mark and PUMA logo, seized by the local commissioner from their shops, during inspection, for the purpose of their destruction in the presence of representative of the plaintiff. Suit is also decreed in favour of the plaintiff and against the defendant no. 2 for recovery of nominal damages to the tune of Rs.50,000/- each along with costs.
20 The suit is decreed in above terms.
Decree sheet be prepared.
File be consigned to record room.
Digitally signed by VINEETA GOYAL VINEETA Date:
GOYAL 2025.03.17
17:27:52
+0530
Pronounced in the open Court (VINEETA GOYAL)
th
on this 17 March, 2025 District Judge (Commercial-03) Patiala House, New Delhi CS (COMM) : 565/22 PUMA SE Vs. Health & Sports & Ors. Page 15 of 15