Adidas Ag & Anr vs Asian Footwears Pvt Ltd & Anr on 7 May, 2025

[Cites 3, Cited by 0]

Delhi High Court - Orders

Adidas Ag & Anr vs Asian Footwears Pvt Ltd & Anr on 7 May, 2025

Bench: Amit Bansal

                          $~40
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +         CS(COMM) 429/2025
                                    ADIDAS AG & ANR.                                                  .....Plaintiffs
                                                 Through:                             Mr. Hemant Singh, Mr. Mamta Rani
                                                                                      Jha, Mr. Anubhav Chhabra, Ms.
                                                                                      Rishika Aggarwal & Ms. Ritu
                                                                                      Khandelwal, Advocates.
                                                                  versus

                                    ASIAN FOOTWEARS PVT LTD & ANR.          .....Defendants
                                                 Through: Mr. Rajiv Nayar, Senior Advocate
                                                          with Mr. Prateek Kumar, Ms. Ankita,
                                                          Ms. Manjira Dasgupta & Mr. Prabhav
                                                          Bahuguna, Advocates.
                                    CORAM:
                                    HON'BLE MR. JUSTICE AMIT BANSAL
                                                 ORDER

% 07.05.2025 I.A. 11499/2025 (O-XI R-1(4) of the Commercial Courts Act, 2015)

1. The present application has been filed on behalf of the plaintiffs seeking leave to file additional documents under the Commercial Courts Act, 2015.

2. The plaintiffs are permitted to file additional documents in accordance with the provisions of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018.

3. Accordingly, the application is disposed of.

I.A. 11500/2025 (u/s 12A of Commercial Courts Act, 2015)

4. As the present suit contemplates urgent interim relief, in light of the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Krithi, 2023 SCC Online SC 1382, exemption from the requirement of pre-institution CS(COMM) 429/2025 Page 1 of 10 This is a digitally signed order.

5. Accordingly, the application is disposed of.

I.A. 11501/2025 (for exemption from filing pleadings in the present suit with the seal of the plaintiffs)

6. The plaintiffs have filed the present application seeking exemption from filing the pleadings in the present suit with the company seal of the plaintiffs.

7. For the reasons stated in the application, the plaintiffs are exempted from filing the pleadings with the company seal.

8. The application is disposed of.

I.A. 11503/2025 (seeking exemption from filing clear/ typed copies of documents, etc.)

9. Allowed, subject to the plaintiffs filing clear/ typed copies of documents, documents with exact margins within four (4) weeks from today.

10. Accordingly, the application is disposed of. CS(COMM) 429/2025

11. Let the plaint be registered as a suit.

12. Issue summons.

13. Counsel enters appearance on behalf of the defendants and accepts summons in the suit and waive issuance of formal summons.

14. Written statement(s) shall be filed by the defendants within thirty (30) days from today. Along with the written statement(s), the defendants shall also file affidavit(s) of admission/ denial of the documents of the plaintiffs, without which the written statement(s) shall not be taken on record.

15. Liberty is given to the plaintiffs to file replication(s), if any, within CS(COMM) 429/2025 Page 2 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 thirty (30) days from the receipt of the written statement(s). Along with the replication(s) filed by the plaintiffs, affidavit(s) of admission/denial of the documents of the defendants be filed by the plaintiff.

16. The parties shall file all original documents in support of their respective claims along with their respective pleadings. In case parties are placing reliance on a document, which is not in their power and possession, its detail and source shall be mentioned in the list of reliance, which shall also be filed with the pleadings.

17. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

18. List before the Court on 27th May, 2025.

I.A. 11497/2025 (u/O-XXXIX Rules 1 & 2 of the CPC) and I.A. 11498/2025 (u/O XXVI Rule 9)

19. The present suit has been filed seeking relief of permanent injunction restraining the defendants from infringing the trademark of the plaintiffs and passing off, along with other ancillary reliefs.

20. The plaintiff no. 1, Adidas AG, is one of the world's leading manufacturers of athletic footwear, sportwear and sporting equipment. The business of the plaintiff no. 1 was founded in Germany by Mr. Adi Dassler, who was an athlete as well as a shoemaker. Since 1996, the plaintiff no.1 has been selling its products in India through its licensee, the plaintiff no. 2/ Adidas India Marketing Pvt. Ltd.

21. The 'Three Stripes' device mark was devised by Adi Dassler as a means of visually distinguishing his sports shoes from those made by other manufacturers considering the international range of such products and different languages spoken worldwide. The 'Three Stripes' device mark was CS(COMM) 429/2025 Page 3 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 first used on Adidas footwear in Germany in 1949. The said device mark, as originally used, comprises three equally-spaced parallel stripes (hereinafter referred to as the "Three Stripes device mark") applied to the shoe upper in context where its manner of use, configuration, arrangement, location and style upon footwear is unique and inherently distinctive. The 'Three Stripes' device mark quickly came to signify the quality and reputation of adidas footwear.

22. The plaintiffs' shoes bearing the 'Three Stripes' device mark, owing to their inherent quality and durability have acclaimed iconic status not only among the athletes, sports persons, but also among the common gentry as well.

23. The plaintiffs' 'SAMBA' shoes are one of the oldest, finest and most popular shoes in the plaintiffs' repertoire. The plaintiff no. 1, over the years, owing to such much-deserved success and fanfare, continues to refine and improve the 'SAMBA' shoes. 'SAMBA' was first launched in the year 1972. The plaintiffs' 'SAMBA' shoes have undergone various changes over the years, the distinctive features pertaining to get-up, arrangement of features, look and feel, including placement of 'THREE STRIPES' device mark, etc., have remained the same.

24. Another model of the plaintiffs' shoes is one, titled 'SUPERSTAR', bearing the 'Three Stripes' device mark. The said model was launched in the year 1970, when it debuted as a low-top basketball shoe with an upper made entirely of leather featuring the famous Rubber Shell Toe. The distinctive features of the get-up, layout, arrangement of features, etc., of a typical 'SUPERSTAR' shoe features the 'THREE STRIPES' device mark on a low top leather upper with a Rubber Shell Cap.

CS(COMM) 429/2025 Page 4 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57

25. The plaintiffs have various trademark registrations, internationally, in respect of the 'Three Stripes' device marks, details of which are given in paragraph no. 19 of the plaint. The details of the plaintiffs' trademark registrations in India as given in paragraph no. 20 of the plaint are as follows:

26. In the first week of February, 2025, the plaintiffs came to know that the defendants are selling shoes bearing the 'Three Stripes' mark, through both online and offline means. Subsequently, on investigation, the plaintiffs came to know of multiple listings of the defendants' infringing shoes on their own website as well as third- party listing websites.

27. A side-by-side comparison of some of the shoes models of the plaintiffs with the infringing shoes, as given in paragraph no. 42 of the plaint is set out below:

CS(COMM) 429/2025 Page 5 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 CS(COMM) 429/2025 Page 6 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 CS(COMM) 429/2025 Page 7 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57

28. Counsel appears on behalf of the defendants on advance notice. The matter was passed over on the first call for the counsel to take instructions.

29. On the second call, counsel for the defendants submits that, without prejudice to the rights and contentions of the defendants, the defendants shall not sell any of the aforesaid models of shoes referred to in the table above, including the models 'SYDNEY-04', 'URBAN-13' and 'PRIDE'. 29.1. The aforesaid statement of the counsel for the defendants is taken on record. The defendants shall remain bound by the same.

30. Counsel for plaintiffs submits that there may be other shoe models being sold by the defendants that infringe the 'Three Stripes' registered mark of the plaintiffs.

31. Counsel for the defendants submits that other shoe models are not the subject matter of the present suit. However, without prejudice to the rights and contentions of the defendants, the defendants are ready and willing to settle the same with the plaintiffs.

32. Counsel for the plaintiffs submits that Local Commissioners may be appointed to visit the premises of the defendants to make an inventory of the allegedly infringing shoe models of the defendants, at the following addresses:

I. Asian Footwears Pvt. Ltd., J-20, Udyog Nagar Industrial Area, CS(COMM) 429/2025 Page 8 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 Main Rohtak Road, West Delhi, Delhi -110041 II. Asian Footwears Pvt. Ltd., 504-505, Crown Heights, RohiniSec-10, New Delhi-110085 III. Asian Footwears Pvt. Ltd. Plot No. 303, Sector 17, HSIIDC Industrial Estate Footwear Park, Bahadurgarh, Haryana - 124507 Jhajjar, IV. Asian Footwears Pvt. Ltd. Plot No. 304, Sector 17, HSIIDC Industrial Estate Footwear Park, Bahadurgarh, Jhajjar, Haryana-124507 V. Asian Footwears Pvt. Ltd. Plot No. 295, Sector 17, HSIIDC Industrial Estate Footwear Park, Bahadurgarh, Jhajjar,Haryana- 124507 VI. Asian Retail Ventures BT-1/98 and BT-1/99, Mangol Puri Industrial Phase- 1, Mangol Puri, Delhi-110083 VII. Asian Retail Ventures BT-1/100, Mangol Puri Industrial Phase-

1, Mangol Puri, Delhi -110083

33. Counsel for the defendants opposes the appointment of the Local Commissioners. However, he submits that he does not have any objection if the advocates/representatives of the plaintiffs visit the aforesaid premises and make an inventory of all the allegedly infringing products referred to in the table above.

34. The following directions are passed in this regard:

34.1. Two counsel of the plaintiffs, in the presence of the defendant's representatives and their counsel, shall be permitted to enter upon the premises of the defendants mentioned above, in order to make an inventory of all the products as detailed in the table above and/or any CS(COMM) 429/2025 Page 9 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57 other shoe models bearing the 'Three Stripes' device mark. 34.2. The defendants and their representatives are directed to provide full assistance to the representative of the plaintiffs and their counsel. 34.3. Both the representative(s) of the plaintiffs and defendants and their counsel shall have the liberty to take photographs and/or videos of the inventorized stock.

35. The aforesaid directions shall be carried out by the parties tomorrow.

36. List for further proceedings on 27th May, 2025.

37. In light of the order passed above, I.A. 11498/2025 is not pressed and the same is disposed of as such.

I.A. 11502/2025 (seeking exemption from effecting advance service upon the defendants)

38. In view of the order passed above, this application has become infructuous.

AMIT BANSAL, J MAY 07, 2025/at CS(COMM) 429/2025 Page 10 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/06/2025 at 21:00:57

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Delhi High Court - Orders