Delhi District Court
Puma Se vs Vir Interntional on 24 April, 2024
IN THE COURT OF SH. SANJAY SHARMA-II : DJ (COMMERCIAL-11)
(CENTRAL): TIS HAZARI COURTS, DELHI
CS (Comm.) No. 617/2020
CNR No.: DLCT01-002227-2020
PUMA SE
Puma Way 1
Herzogenaurach, 91074 Germany
Also at:
117, A22, WEA, Ajmal Khan Road
Karol Bagh, New Delhi-110005
..... Plaintiff
VERSUS
Rohit Kumar
Proprietor / Owner: Vir International
Near Heritage Public School
Opposite Kunal Timber Store
Block-H, Adarsh Enclave, Phase-6
Aya Nagar, New Delhi-110047
..... Defendant
Date of Institution : 14.02.2020
Date of Arguments : 18.03.2024
Date of Judgment : 24.04.2024
JUDGMENT
1. The plaintiff, through its Constituted Attorney Mr. Rakesh Chabbra, filed a suit for permanent injunction restraining infringement of trademark, passing off, delivery ups, damages and costs.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 1 of 20
2. The plaintiff has sought the prayers, as under:
"a) A decree for permanent injunction restraining the Defendants, their partners or proprietors, as the case may be, servants, agents, stockiest from trading, selling, marketing, manufacturing, offering for sale through online shopping portals or dealing in any other way, any goods including footwear i.e. shoes and Flip flops, and other accessories, and/or any other goods under the Plaintiff's PUMA, PUMA logo and Form strip logo as its logo/ trademark or any other mark/ logo which is Identical and similar to the Plaintiff's PUMA, PUMA logo and Form strip logo which may amount to infringement of the Plaintiff's registered trademarks as mentioned in this suit;
b) A decree for permanent injunction restraining the Defendants, their partners or proprietor, as the case may be, servants, agents, stockiest from trading, selling, manufacturing, marketing, offering for sale through online shopping portals or dealing in any other way, any goods including footwear i.e. shoes and Flip flops and other accessories and/or any other goods under the mark or any other goods under the Plaintiff's PUMA, PUMA logo and Form strip logo as its logo/ trademark or any other mark/ logo which may amount to passing off the Defendants goods as the goods of the Plaintiff;
c) An order for delivery up of all finished and unfinished goods, dies, blocks, labels and any other printed matter bearing the Plaintiff's PUMA, PUMA logo and Form strip logo to the authorised representative of the Plaintiff for the purpose of destruction/erasure;
d) An order for removing Plaintiff's PUMA, PUMA logo and Form strip logo or any other identical similar logo or trademark of the Plaintiff company from e-commerce websites /online shopping portals being sold under the name of the Defendants or its firms / proprietary concerns;
e) A decree for damages for a sum of Rs. 3,00,000/-
(three lakhs) in favour of the Plaintiff and/or an order of rendition of accounts of profits earned by the Defendants by its impugned illegal trade activities and a decree for the amount so found in favor of the Plaintiff on such rendition of account."
3. Vide order dated 18.02.2020, this Court restrained the defendant by way of an ex-parte interim injunction from using the mark PUMA, PUMA logo and Form strip logo.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 2 of 20
4. The relevant portion of order dated 18.02.2020 is, as under:
"36. Keeping in view the aforesaid facts and circumstances and as to what has been held by the Hon'ble Supreme Court in Midas's case (Supra) and as to what has been held by the Hon'ble High Court of Delhi in Devagiri Farm's case (Supra) and in view of the submissions made on behalf of the Plaintiff, in the circumstances, the Plaintiff has succeeded in making out a prima facie case for the grant of an ad-interim relief. The balance of convenience is also in favour of an interim relief being granted. I am satisfied that the Plaintiff would suffer irreparable injury and prejudice in the absence of an interim injuncted relief. Consequently, I grant ex-parte ad-interim injunction and order that till next date of hearing, the Defendants, partners / Proprietors, servants, agents, stockists, distributors are restrained from trading, selling, marketing, manufacturing, supplying, offering for sale, selling online or dealing in any other way, any goods including Footwear i.e. shoes and Flip Flops and other accessories, and / or any other goods under the infringed trade mark / label / name PUMA, PUMA logo and Form strip logo identical with or deceptively similar to the said trade mark / label / name PUMA, PUMA logo and Form strip logo of the Plaintiff and from causing passing off and violation of the Plaintiff's said trade mark / label / name PUMA, PUMA logo and Form strip logo."
5. The Court, vide the said order, also appointed Ld. Local Commissioner to visit and inspect the premises of the defendant, as under:
"(i) The Local Commissioner will search the premises of the Defendant No. 1 and/or any other premises identified by the Representative of the Defendant No. 1, where the infringing goods / products bearing the infringed trademark/label/name PUMA, PUMA logo and Form strip logo, may be kept, stocked, sealed or are lying and will seize the same. He will make an inventory of the seized goods bearing the infringed trade mark / label / name PUMA, PUMA logo and Form strip logo, as also any carton, dies, label, wrapping, printed material in finished or unfinished condition bearing the said infringed trade mark / label / name PUMA, PUMA logo and Form strip logo and seal the same in gunny bags or sealing material, as he deems fit and appropriate, under his seal and signatures to be marked with a non-delible ink.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 3 of 20 If convenient, the Local Commissioner may retain a few samples of goods and packaging material. The rest of the goods and packaging material will be sealed and returned to the concerned Defendant under Superdari, of the expected market value of the seized goods, on his undertaking not to deal with the infringing products and to produce the same before the Court when directed. In case Defendant No. 1 refused to do so, same be released to the Plaintiff's Authorized Representative (AR) or to any person authorized by Plaintiff's AR.
(ii) The Local Commissioner will also inspect and sign the books of accounts, ledger, cash registers, stock registers, invoices, day books etc. of the Defendant No. 1 and copies thereof may be made physically or electronically under the directions of the Local Commissioner.
(iii) The Local Commissioner will be entitled to seek police assistance from the concerned Police Station and the Officer-in-Charge of the Police Station is directed to provide adequate assistance to the Local Commissioner for execution of the Commission. If necessary, in the event the premises is found locked, the Local Commissioner shall be entitled to break open the locks in the presence of the Police authorities, for the purpose of execution of the Commission.
(iv) In the event any other premises, warehouses, stores or shops are identified by the Defendant No. 1 as premises where similar infringing activities are being undertaken, or otherwise come to the knowledge of the Plaintiff, whether the premises were so identified are those of Defendant No. 1 or any other person, the Local Commissioner will be authorized to execute the Commission at those premises. The directions given above will also be applicable for the execution of the Commission at the premises so identified.
(v) The entire proceedings are also required to be photographed / videographed by the Local Commissioner at the expenses of the Plaintiff.
(vi) The Local Commissioner shall not take into custody the material, which do not bear the infringed trademark.
(vii) The Local Commissioner will serve a copy of the Plaint and the entire suit record as well as copy of the order, upon the Defendant No. 1 or his representative, at the time of execution of the Commission.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 4 of 20 Service as aforesaid will constitute issuance and compliance with the requirements of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908.
(viii) The Commission shall be executed within two weeks from today after giving due notice of the Commission to the Defendant No. 1 on the spot. The Local Commissioner shall file his report before this Court within two weeks after the execution of the Commission.
(ix) The arrangements for the execution of the Commission and the fees of the Local Commissioner shall be paid by the Plaintiff, subject to final orders in the suit. The Local Commissioner shall be entitled to fees of Rs. 75,000/-, in addition to out of the pocket expenses. The fees of the Local Commissioner shall be paid by the Plaintiff in advance. Plaintiff is directed to bear the travelling / ministerial expenses of the Local Commissioner. The Plaintiff is also directed to provide the complete paper book to the Local Commissioner prior to execution of the Commission."
6. The defendant entered appearance on 15.03.2021. He sought time to engage a counsel and file written statement. He also expressed willingness to settle the case. Thereafter, he did not appear. Accordingly, the defendant was proceeded ex-parte, vide order dated 07.02.2022.
7. The plaintiff is a multinational corporation established and incorporated under the laws of Germany. The plaintiff has been marketing and selling its products in India including in Delhi through its wholly owned subsidiary Puma Sports India Pvt. Ltd. The plaintiff is one of the leading sporting brands in the world, which is engaged in designing, developing, selling and marketing footwear, apparels and accessories. The products of the plaintiff are sold under the mark 'PUMA' as also the leaping cat device thereof. The products are also sold globally as also in India. The plaintiff started using the mark 'PUMA' since 1948 in Germany and got the mark first registered in Germany on 1 st October, 1948. The said mark is a well-known mark.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 5 of 20
8. The plaintiff has collaboration with various designer brands such as Alexander McQueen and Mihara Yasuhiro. The plaintiff's products are sold in more than 120 countries. The worldwide net sales of the plaintiff for the year 2019 is claimed to be in the range of 5 billion euros. The 'PUMA' brand is the umbrella brand of the plaintiff and is endorsed by a large number of internationally well-known celebrities including Usain Bolt, Virat Kohli, Sara Ali Khan, K.L. Rahul, etc. The plaintiff invests a substantial amount of money in advertising and promotion. In the year 2019, the figure was more than 1 billion euros worldwide. The plaintiff is also promoting and selling its 'PUMA' branded products through its website hosted on the domain name www.puma.com, which is accessible to the consumers at Delhi. The domain name was registered on 19 th September, 1997 and has been in use since then. The plaintiff has been supplying / selling its PUMA branded products in India since 1980's.
9. The trademark 'PUMA' is registered in Germany since 1948, in the USA since 1965, and in Australia since 1969. The details of the earliest international registrations are, as under:
Trademark Country Regn. No. Regn. Date Class PUMA Germany 608870 01.10.1948 25 PUMA USA 797843 19.10.1965 25 PUMA Australia 228918 15.05.1969 28
10. In India, the mark 'PUMA' as also the 'leaping cat device' are registered since 1977 and 1986. The details of the said registrations are, as under:
Trademark Regn. No. Filing date Class Renewed Status PUMA (WORLD MARK) 323053 15/02/1977 18 15.02.2025 PUMA (WORLD MARK) 323054 15/02/1977 25 15.02.2025 CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 6 of 20 450142 25/02/1986 18 25.02.2026 559635 03/10/1991 24 03/10/2028 699153 22/02/1996 09 22/02/2026 699154 22/02/1996 03 22/02/2026 700541 04/03/1996 16 04/03/2026 1264294 03/02/2004 41 03/02/2024 412852 08/11/1983 28 08/11/2024 424934 27/07/1984 14 27/07/2025 450143 25/02/1986 25 27/02/2027 PUMA 532578 03/07/1990 28 03/07/2024 PUMA 449270 05/02/1986 24 05/02/2027 PUMA 323053 15/02/1977 18 15/02/2025 PUMA 323054 15/02/1977 25 15/02/2025 407833 11/07/1983 25 11/07/2024 CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 7 of 20
11. The mark 'PUMA' apart from being registered for shoes is also registered for apparels, clothing, sportswear, gloves, caps, slippers in classes 25 and 18 bearing numbers 450143 and 450142 respectively. In India, the sales of the Plaintiff for the year 2021 is more than Rs. 1,000/- crores with more than Rs. 51 crores being spent on advertising and promotion. The mark 'PUMA' and 'leaping cat device' are well known marks and has in fact been declared such as by the Trademark Registrar as on 30th December, 2019.
12. The global sales figures for the period from 2012 to 2017 is, as under:
YEAR NET SALES (IN MILLIONS)
2012 -€. 3270.7
2013 -€. 2985.3
2014 -€. 2972
2015 -€. 3387.4
2016 -€. 3626
2017 -€. 4135.9
13. The global advertisement and promotional figures for the period from 2012 to 2017 is, as under:
YEAR NET SALES (IN MILLIONS)
2012 -€. 609.3
2013 -€. 544.1
2014 -€. 599.7
2015 -€. 697.6
2016 -€. 732.3
2017 -€. 822.9
14. The case of the plaintiff is that the defendant is selling footwear bearing mark PUMA, PUMA logo and Form strip logo unauthorizedly. The defendant is infringing rights of the plaintiff and passing off the goods as that of the plaintiff.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 8 of 20
15. The plaintiff examined its Attorney Mr. Rakesh Chhabra as PW-1. He deposed, on strength of affidavit Ex.PW1/A. He relied on documents, as under:
Sl No. Description Exhibit 1. Copy of Power of Attorney Ex.PW1/1
2. Internet downloaded copy of the Ex.PW1/2 plaintiff's website showing the plaintiff stores in Delhi
3. Internet downloaded copy showing Ex.PW1/3 history of PUMA, PUMA logo and Form Strip Logo
4. Internet downloaded copy from the Ex.PW1/4 plaintiff's website and from the third party website showing sale of PUMA products
5. Copy of documents showing various Ex.PW1/5 celebrities promoting the plaintiff's PUMA products
6. Trademark Certificates (LPCs) for mark Ex.PW1/6 PUMA, PUMA logo and Form strip logo
7. Internet downloads showing worldwide Ex.PW1/7 registrations obtained for the PUMA trademark in countries like USA, Australia, Germany
8. Internet extracts showing PUMA Ex.PW1/8 completing 50 years
9. Court orders in favour of the plaintiff Ex.PW1/9
10. Photographs of the defendant's product Ex.PW1/10
11. Certificate under Section 65B of 'The Ex.PW1/11 Indian Evidence Act, 1872'
12. Local Commissioner's Report Ex.PW1/12 APPEARANCE:
16. I have heard arguments of Mr. Shashi P. Ojha, Ld. Counsel for the plaintiff and examined the pleadings and documents.
17. The case of the plaintiff is that the plaintiff is a registered proprietor, adopter and user of the mark PUMA, PUMA logo and Form strip logo in relation to sportswear, apparels and accessories since 1948.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 9 of 20
18. The case of the plaintiff is that the defendant is marketing and selling footwear i.e. shoes and flip flops under the mark PUMA, PUMA logo and Form strip logo.
19. The plaintiff has led evidence that it is a registered proprietor of mark PUMA since 1948 in respect of sportswear, apparels and accessories. The plaintiff has led evidence that the said mark is a well-known mark. The plaintiff has led evidence that it has incurred substantial expenses on the advertisement and promotion of the said mark. The plaintiff has led evidence that its sales figures are to the extent of 5 billions in euros.
20. In Puma Se & Anr. vs. Nikhil Thermoplast Ltd. & Ors., 2017 SCC OnLine Del 9997, Hon'ble High Court of Delhi was dealing with a case pertaining to sale of footwear under the PUMA Strip Logo through e-commerce portals. Hon'ble High Court of Delhi held, as under:
"11. Having heard learned counsel for plaintiffs as well as having perused the papers, this Court is of the view that due to extensive use over a substantial period of time, the plaintiffs' PUMA mark along with the Form Strip Logo has acquired reputation and goodwill.
12. Further, as the plaintiffs' evidence has gone unrebutted, said evidence is accepted as true and correct. Consequently, the allegation that the trademark Form Strip Logo used by defendants on their goods sold under e-commerce portal www.shopping.Indiatimes.com. amounts to infringement of plaintiffs' mark Form Strip Logo is accepted. The use of impugned mark by the defendants is bound to cause incalculable loss of reputation and loss of sales to the plaintiffs."
21. In Puma Se vs. Girish Vohra Owner and Proprietor of Girish Enterprises, 2023 SCC OnLine Del 4533, Hon'ble High Court of Delhi was dealing with a case relating to imitation of colour, design and overall look of PUMA RS-X 3D series by the defendant in relation to shoes manufactured by it.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 10 of 20
22. Hon'ble High Court of Delhi held, as under:
"7. I have physically seen the two shoes and it is clear that the Defendant 2 has deliberately used a colour scheme, an overall design and look and appearance, for its BERKINS range of shoes which imitates the colour scheme, design and appearance of the plaintiff's RS-X 3D range of shoes.
8. Inasmuch as the plaintiff has also placed on record sufficient material to establish the goodwill and reputation commanded in the Indian market by the said RS-X range of shoes, the facts of the plaint make out case of passing off, by the defendant, through its BERKINS range of shoes, of the RS-X range of shoes of the plaintiff. There is every likelihood of a customer mistaking the products of the defendant for that of the plaintiff, given the strikingly similar appearance of the two products."
23. In Puma Se vs. Gajari Online Services Pvt. Ltd., 2023 SCC OnLine Del 7808, Hon'ble High Court of Delhi was dealing with a rectification petition seeking cancellation of mark of the respondent - Gajari Online Services Pvt. Ltd. pertaining to registration of Lion Device on the ground that it infringed 'leaping cat device' of the petitioner - Puma Se. Hon'ble High Court of Delhi held, as under:
"20. Considering the clear imitation of the Petitioner's leaping cat device mark, and the identity between the Petitioner's and the Respondent's mark, the Court is of the view that the said mark is liable to be cancelled.
21. Moreover, the Petitioner is, clearly, a prior user of the leaping cat device since 1967 and the first registration in India dates back to 1977.
22. Under these circumstances, the trade mark bearing no. '3685324' dated 23rd November, 2017 in Class 35, registered in the name of Respondent - Gajari Online Services Private Limited, is liable to be cancelled under Section 57 of The Trade Marks Act, 1999."
24. In Puma SE vs. Ashok Kumar, 2023 SCC OnLine Del 6764, the defendant was engaged in manufacturing and supply of shoes bearing the mark 'PUMA' and the 'leaping cat device'.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 11 of 20
25. Hon'ble High Court of Delhi held that the Local Commissioner's report can be read in evidence under Order 26 Rule 10 (2) CPC, as under:
"22. The settled legal position is that the Local Commissioner's report can be read in evidence in terms of Order XXVI Rule 10(2) CPC. In ML Brother LLP v. Mahesh Kumar Bhrualal Tanna [CS(COMM) 126/2022] this Court held as under:
"10. Order 26 Rule 10(2) CPC stipulates that the report of the Commissioner and the evidence taken by the Commissioner shall be evidence in the suit and shall form part of the record. The said provision reads as under:
10. Procedure of Commissioner.- (1) The Commissioner, after such local inspection as he deems necessary and after reducing to writing the evidence taken by him, shall return such evidence, together with his report in writing signed by him, to the Court.
(2) Report and depositions to be evidence in suit. Commissioner may be examined in person. The report of the Commissioner and the evidence taken by him (but not the evidence without the report) shall be evidence in the suit and shall form part of the record: but the Court or, with the permission of the Court, any of the parties to the suit may examine the Commissioner personally in open Court touching any of the matters referred to him or mentioned in his report, or as to his report, or as to the manner in which he has made the investigation.
11. In Levi Strauss & Co. v. Rajesh Agarwal 2018 IAD (Delhi) 622, this Court examined the said provision and held that once the Commissioner has filed the evidence along with his report, it becomes evidence in the suit itself. Under Order 26 Rule 10(2) CPC it is not mandatory to examine the Commissioner to admit the report of the Commissioner as evidence in the suit. The relevant observations are as under:
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 12 of 20
8. The Local Commissioner is in fact a representative of the Court itself and it is for this reason that Order 26 Rule 10 (2) of CPC clearly provides that once the Commissioner has filed the evidence along with his report the same shall be treated as evidence in the suit and shall form part of the record. XXX XXX XXX
10. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e. the Commissioner is appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has an option to examine the Commissioner personally in open Court. Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report. In the present case, a perusal of the written statement filed by the Defendant clearly reveals that the Defendant does not challenge the Commissioner's report. Para of the written statement is set out below..."
12. This position of law has been reiterated by this Court in Vinod Goel v. Mahesh Yadav [RFA 2022/DHC004806 CS (COMM) 413/2021 Page 9 of 14 598/2016 decided on 23rd May, 2018] wherein the Court observed as under:
"7. It is the settled proposition in law that when a Commissioner is appointed, he acts as the officer of the Court and it is not necessary for the Commissioner to be examined. This is clearly laid down by the Supreme Court in Misrilal Ramratan & Ors. Mansukhlal & Ors. v. A. S. Shaik Fathimal & Ors., 1995 Supp (4) SCC 600, wherein the Court held as under:
"It is now settled law that the report of the Commissioner is part of the record and that therefore the report cannot be overlooked or rejected on spacious plea of non-examination of the Commissioner as a witness since it is part of the record of the case.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 13 of 20
8. Even this Court, recently in Levis Strauss v Rajesh Agarwal [RFA 127/2007 decision dated 3rd January, 2018], held as under: "11. The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e. the Commissioner is appointed as a representative of the Court and evidence collected by the Commissioner along with the report of the Commissioner would be evidence in the suit, subject to any objection raised by any party. If any party has any objection to Commissioner's report or to the evidence, such party has an option to examine the Commissioner personally in open Court.
Such examination is however, neither compulsory nor required especially in cases where the party does not challenge the report."
9. Mr. Prag Chawla clearly concedes that there 2022/DHC/004806 CS (COMM) 413/2021 may be no requirement to examine the Local Commissioner once the Commissioner is appointed by a Court.
10. Under these circumstances, since the Commissioner had visited the suit property and had submitted the report, it is deemed appropriate that the matter is remanded back to the Trial Court to decide the matter afresh after taking into consideration the report of the Local Commissioner. Mr. Y.D. Nagar dated 5th January, 2000 in Suit No. 2198/1999."
26. The relevant part of the report of Ld. Local Commissioner is, as under:
"7. That thereafter the undersigned approached the Godown-1' however the same was locked. Immediately thereafter one person i.e. Mr. Rohit Kumar claiming to be owner approached the undersigned. The copy of the order dated 18.02.2020 was read out to him and contents of the same was also explained to him (as requested by him) by the undersigned and a copy of the plaint was also served upon him by the representative of the plaintiff in presence of undersigned.
8. That upon understanding the contents of the order dated 18.02.2020, Mr. Rohit Kumar opened the locks of the Godown- 1, Co-operated and assisted the undersigned to execute the commission. That a copy of Identification proof of Mr. Rohit Kumar is annexed hereto as Annexure LC-1.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 14 of 20
9. That the undersigned searched and inspected the Godown-1' and found footwear bearing the trademark/logo of the plaintiff company PUMA.
10. That upon identification of the goods bearing the trademark/logo of the plaintiff company PUMA, the same were collected, counted and separately kept in plastic bags with marking "A" "B" "C" and an inventory list was prepared accordingly. The following goods were found from the spot:
S. No. Particulars Total goods
1. Puma Footwear (Plastic bag marked as "A") 80 pair
2. Puma Footwear (Plastic bag marked as "B") 80 pair
3. Puma Footwear (Plastic bag marked as "C") 50 pair
4. Puma brand logo 5 pieces (Inventory of Articles is annexed herewith as Annexure LC-2)
11. That the above goods/ articles carrying the trademark/logo/label of plaintiff Company PUMA were taken into custody, seized and sealed in different gunny bags with marking "A" "B" &"C" as per the direction of Hon'ble Court, so that there should not be any tampering. That out of aforementioned seized goods, one pair of footwear and one brand label was collected as sample and separately sealed and the same is in possession of undersigned. The sample product is provided along with this report as Annexure LC-3.
12. That the seized articles were released on Superdari to the owner of the premises namely Rohit Kumar and Superdarinama was executed by him in this regard with an undertaking that I shall produce the goods which are sealed by the Local Commissioner before the Hon'ble Court and further undertake that I shall not remove, sell or dispose off the goods seized by the Local Commissioner and shall produce them before the Hon'ble Court as when called upon to do so."
27. In Puma SE vs. Brijendra Singh Trading AS Sastajoota, 2023 SCC OnLine Del 6690, Hon'ble High Court of Delhi was dealing with a case pertaining to sale of sportswear and shoes carrying the mark and Form strip logo through online portal.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 15 of 20
28. Hon'ble High Court of Delhi held, as under:
"11. The plaintiff's PUMA mark has also been declared as a well-known mark in India by the Trademarks Registry as published in the Trademark Journal no. 1942 on 24 February 2020.
12. The Defendant 1 is engaged in making and selling counterfeit PUMA products, using the plaintiff's PUMA and Form strip logo, through its revealingly titled website www.sastajoota.com.
13. The plaintiff has also provided screenshots of various sites on which the Defendant 1's products are sold as well as photographs of the Defendant 1's products, which vouchsafe the allegation that the defendants are selling counterfeit duplicate PUMA sportswear and shoes.....
14. The aforenoted facts make it clear that Defendant 1 is using marks which are identical to the plaintiff's registered trademarks, on goods which are identical to the goods on which the plaintiff uses its marks and is selling the goods to the very same consumers who form the consumer target base of the plaintiff through the very same channels. As such, the triple identity test, which envisages identity of marks, goods and consumers and availability of the goods through identical sources and outlets, is satisfied in the present case. One may even say the quadruple identity test stands satisfied.
15. The facts of the present case, in fact, directly invoke Section 29(2)(c) read with 29(3) of the Trade Marks Act, 1999, under which, where the rival marks are identical, and used in respect of identical goods or services, the Court would presume the likelihood of confusion in the minds of the consumer.
16. The assertions in the plaint, thus, clearly make out a case of infringement and passing off, by the defendant, of the registered PUMA word mark as well as the registered device marks of the plaintiff."
29. On examination of the evidence led by the plaintiff and report of Local Commissioner, it is evident that the defendant is using identical mark and 'leaping cat device' of the plaintiff in relation to slippers / flip flops. The plaintiff is a registered proprietor of the said marks and device. The said marks are well- known marks. The plaintiff is a prior adopter and user of the said mark and device since 1948.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 16 of 20
30. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, Hon'ble Supreme Court of India held, as under (pg. 989 - 990):
"The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods"
31. As regards damages, in Cartier International A.G. & Others vs. Gaurav Bhatia & Ors., (2016) 226 DLT 662, Hon'ble High Court of Delhi held, as under:
"66. It is well settled that damages in such cases must be awarded and a defendant, who chooses to stay away from the proceedings of the Court, should not be permitted to enjoy the benefits of evasion of court proceedings. Any view to the contrary would result in a situation where the defendant who appears in Court and submits its account books would be liable for damages, while a party which chooses to stay away from court proceedings would escape the liability on account of failure of the availability of account books."
32. In Inter Ikea Systems BV Anr vs. Imtiaz Ahamed and Another, (2017) 237 DLT 247, Hon'ble High Court of Delhi held, as under:
"21. It is well settled that damages in cases like the present one must be awarded and a defendant, who elects to stay away from the court proceedings, should not be permitted to enjoy the benefits of staying away from the said proceedings. With regard to the relief of damages claimed by the plaintiffs herein, it may be noted that courts have been granting both, exemplary and punitive damages against the defendant in ex-parte matters of similar nature....."
33. In Jawed Ansari vs. Louis Vuitton Malletier & Ors., FAO (OS) (Comm.) 65/2023 decided on 10.04.2023, Hon'ble High Court of Delhi held, as under:
"This Court is in agreement with the view of the learned Single Judge that counterfeiting is a serious menace which needs to be dealt with firmly....."
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 17 of 20
34. In Puma SE vs. Ashok Kumar (supra), Hon'ble High Court of Delhi held, as under:
"32. The Plaintiff has also prayed for general, exemplary, compensatory and punitive damages. No evidence has been led by the Plaintiff in this matter. In any event, the nature of the Defendant's outlet leaves no doubt in the mind of the Court that proper assessment of the sale and profit earned may also not be determinable. The Defendant is obviously aware of the brand equity enjoyed by the 'PUMA' mark and has deliberately chosen to manufacture and sell counterfeit products under the said mark and ride piggy-back on the Plaintiff's goodwill and reputation.
36. The use of 'PUMA' mark and logo by the Defendant on inferior quality products would not only result in violation of the Plaintiff's statutory and common law rights but will also lead to erosion of the brand equity of the Plaintiff and result in dilution of the marks. Such infringement if left unchecked would also be contrary to the consumer's interests, inasmuch as the consuming public may be purchasing the counterfeit products and paying a higher price presuming the same to be the Plaintiff's branded products. Thus, the sale of such counterfeit products is even contrary to the public interest.
37. On the issue of damages, the settled legal position has been laid down in Hindustan Unilever Limited v. Reckitt Benckiser India Ltd., (2014) 57 PTC 495 (DB), by the ld. Division Bench. In the said decision, the ld. Division Bench has clearly held that unless there are extenuating circumstances and overwhelming evidence of wrong doing, punitive damages cannot be awarded. Usually, the Court grants either notional damages damages or the compensatory damages."
35. The plaintiff has prayed for damages to the extent of Rs. 3,00,000/-. Ld. Local Commissioner seized 210 pairs of footwear bearing the mark and device of the plaintiff. The defendant was making unjust profit by indulging into sale of counterfeit products. The defendant also diluted the standard of the quality of the products of the plaintiff by using its mark and device on inferior products. In view of the facts and circumstances, the plaintiff is entitled to the damages, as prayed.
CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 18 of 20 CONCLUSION:
36. The defendant has no right to infringe statutory right of the plaintiff. The defendant is passing off its goods as that of the plaintiff. Therefore, the suit of the plaintiff is decreed and a decree of permanent injunction, damages and costs is passed in favour of the plaintiff and against the defendant, as under:
"a) The defendant is permanently restrained from trading, selling, marketing, manufacturing, offering for sale through online shopping portals or dealing in any other way, any goods including footwear i.e. shoes and Flip flops, and other accessories, and/or any other goods under the Plaintiff's PUMA, PUMA logo and Form strip logo as its logo/ trademark or any other mark/ logo which is identical and similar to the Plaintiff's PUMA, PUMA logo and Form strip logo;
b) The defendant is permanently restrained from trading, selling, manufacturing, marketing, offering for sale through online shopping portals or dealing in any other way, any goods including footwear i.e. shoes and Flip flops and other accessories and/or any other goods under the mark or any other goods under the Plaintiff's PUMA, PUMA logo and Form strip logo as its logo/ trademark or any other mark/ logo which may amount to passing off the Defendants goods as the goods of the Plaintiff;
c) The defendant is directed to deliver all finished and unfinished goods, dies, blocks, labels and any other printed matter bearing the Plaintiff's PUMA, PUMA logo and Form strip logo to the authorised representative of the Plaintiff for the purpose of destruction/erasure;
d) A decree for damages for a sum of Rs. 3,00,000/-
(three lakhs) is passed in favour of the Plaintiff and against the defendant;
e) The plaintiff shall be entitled to the Court fee, Local Commissioner's fee and lawyer's fee, as per rules; and
f) Accordingly, a decree sheet be drawn and file be signed Digitally consigned to record room." SANJAY SHARMA by SANJAY SHARMA Date:
2024.04.25 09:50:36 +0530 Announced in the open Court SANJAY SHARMA-II on this 24th April, 2024 DJ (Commercial-11) (Central) Tis Hazari Courts, Delhi CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 19 of 20 PUMA SE vs. Rohit Kumar CNR No.: DLCT01-002227-2020 CS (Comm.) No. 617/2020 24.04.2024 Present : Mr. Shashi P. Ojha, Ld. Counsel for the plaintiff (through Video Conferencing).
Vide separate judgment, the suit of the plaintiff is decreed and a decree of permanent injunction, damages and costs is passed in favour of the plaintiff and against the defendant. Decree sheet beDigitally drawn.
signed by File be consigned to record room. SANJAY SANJAY SHARMA SHARMA Date:
2024.04.25 09:50:48 +0530 Sanjay Sharma-II DJ (Commercial-11) Central, THC, Delhi 24.04.2024 CS (Comm.) No. 617/2020 PUMA SE vs. Rohit Kumar Page No. 20 of 20