Delhi District Court
Nike Innovate C V vs Owner Proprietor on 10 April, 2024
1
In the Court of Dig Vinay Singh, District Judge (Commercial Court)-03,
West, Tis Hazari Courts Extension Block, Delhi
CNR No. DLWT01-002370-2023
CS (COMM) No.277/2023
NIKE INNOVATE C. V
Having its principal office at
One Bowerman Drive, Beaverton, Oregon
97005-6453, United States of America
Through its Authorised Representative
Mr. Narendra Singh
E-1, LGF, Lajpat Nagar, New Delhi-110024 ......... Plaintiff
Versus
Ms. Kamna Bedi,
Proprietor of Swag Paaji
B-20, Market Road, Part-1, Mukherjee Park,
Chaukhandi, Subhash Nagar, Delhi-110018
R/o WZ-4, Second floor, Mukherjee Park, Tilak Nagar,
Rajouri Garden, West Delhi-110018 ...... Defendant
Date of institution :15.03.2023
Date of arguments :22.03.2024
Date of judgment :10.04.2024
JUDGMENT
1. This is a suit seeking decree of permanent injunction against infringement and passing off of Trade Mark & Copyright of the plaintiff, and rendition of accounts etc. Initially the suit was filed with the title of defendant as "Owner/Proprietor of Swag Paaji", as at that time the plaintiff was unaware Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 1 of 24 2 of the owner of the said showroom/ shop. Subsequently, ad interim ex-parte injunction was granted in favour of the plaintiff vide order dated 28.03.2023 and also a Local Commissioner (LC) was appointed to visit the property regarding infringed material, and upon execution of the Commission the name of owner of the shop came to be known as Ms. Kamna Bedi. Accordingly, vide order dated 08.08.2023 name of Ms. Kamna Bedi was added in the array of defendant.
2. As would be apparent from the above-mentioned paragraph, the suit involved urgent interim relief of injunction and appointment of Local Commissioner, qua which the plaintiff had filed separate applications under Order 39 Rules 1 & 2 CPC as well as under Order 26 Rule 9 CPC, on which order in favour of the plaintiff was passed on 28.03.2023 and therefore in terms of Section 12A of the Commercial Courts Act, the plaintiff was not required to undergo per-institution mediation. Otherwise, the dispute between the parties is a 'commercial dispute' within the definition of Section 2(1) (a) (xvii) of the CC Act.
3. Brief facts of the case are that the plaintiff is a limited partnership under the laws of the Netherlands, having principal office at United States of America. The suit has been instituted through Mr. Narendra Singh who is claimed to be duly authorized. The plaintiff avers that it is owner/ proprietor of trademarks "NIKE, Nike Shox, Nikefeit, Nike + Cardiokm", and logos " , , Nike Air ". The plaintiff operates its business in India through its subsidiary namely 'NIKE India Pvt. Ltd.', which is a Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 2 of 24 3 company registered under the Companies Act 1956 and which is authorized to market the goods of the plaintiff. The details of the registered trademarks of the plaintiff in India, under Class 25, are mentioned in para 10 of the plaint as follows:
Trademark Registration No. Class Registration valid till NIKE 346173 25 21.02.2027 453268 25 30.04.2027 509574 25 02.05.2030 NIKE SHOX 949269 25 22.08.2030 "NIKE" WORD 526647 25 22.03.2024 526650 25 22.03.2024 DEVICE 3.1. The said trademarks are valid and subsisting in favour of the plaintiff and the Legal Proceeding Certificates exist in favour of the plaintiff. It is claimed that the plaintiff thus has exclusive right to use the aforesaid trademarks which have their own distinctiveness on account of their unique design, effect, sign, graphics, style as a whole and even the NIKE marks are artistic work within the definition of Copyright Act 1957. The plaintiff spends substantial amounts on advertisement and promotion of its products Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 3 of 24 4 and enjoys huge goodwill and reputation in business community and public in general, not only in India but across the world. The products of the plaintiff have earned huge recognition and reputation in the market. The plaintiff claims its global sales turnover in para 15 of the plaint as follows:
2021 19,962 Million USD
2020 16,241 Million USD
2019 17,474 Million USD
2018 15,956 Million USD
2017 15,312 Million USD
2016 14,971 Million USD
3.2. It is claimed that the NIKE marks are prominent and essential feature of the plaintiff's products which are widely recognized by the consumers because of its superior quality and that the trademark of the plaintiff including swoosh logo are firmly etched in the minds of the people in the trade and commerce.
3.3. The during a market survey in February 2023 plaintiff came to know that the defendant was engaged in the business of stocking, storing/ distributing/ marketing/ selling infringed products of the plaintiff, which contained falsified trademarks in which the trademark and the swoosh logo were used independently or jointly by the defendant from its premises at B-20, Punjabi Market Road, Part I, Mukherjee park, Chaukhandi, Subhash Nagar, Delhi-
110018, by the business name of 'Swag Paaji'. It was also learnt that the defendant was selling counterfeit shoes and other accessories/ apparels Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 4 of 24 5 through its instagram page at "https://www.instagram.com/explore/tags/swagpaaji/top/". The investigator the plaintiff also bought a pair of infringed shoes from the defendant, but the defendant did not issue any bill or invoice since the defendant was carrying on its business deceitfully and in clandestine manner. The plaintiff has attached the photographs of the original product as well the infringed product to put forth the similarity and the infringement, which are as follows:
PLAINTIFF'S PRODUCT DEFENDANT'S PRODUCT 3.4. Plaintiff claims that the defendant adopted the impugned trademark and swoosh logo which are apparently, visually, structurally, deceptively and confusingly similar to the trade mark of the plaintiff in respect of identical goods, which creates confusion in the minds of consumers and other persons involved in the trade and in this manner the defendant was trying to pass off its infringed goods as that of the plaintiff, which is not only Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 5 of 24 6 causing financial loss to the plaintiff but is also detrimental to its reputation and goodwill. As per plaintiff, the defendant deliberately was using the infringed trademarks to ride the goodwill and reputation of the plaintiff and therefore decree of permanent injunction must follow against the defendant as also delivering up of all the infringed goods, rendition of accounts, damages etc.
4. The defendant contested the suit claiming that the suit has not been properly instituted by a person duly authorized; the report of the Local Commissioner dated 27.05.2023 is biased; defendant is not indulged in any infringement; suit is based on false assertions; suit has not been valued properly in terms of judgment of Hon'ble High Court in the case of Vishal Pipes; Plaintiff has no rights in the trade mark either under the statutory law or under common law; plaintiff has no reputation or goodwill; no person from the market, trade or public identifies or associates or distinguishes the trademark of the plaintiff; and therefore the plaintiff is not entitled to any relief.
5. From the pleadings of the parties, initially followings issues were framed on 10.11.2023:-
"1. Whether the suit has been properly instituted and whether signatory of the plaint is properly authorized or competent to institute the suit? OP Plaintiff.
2. Whether the suit has not been properly valued? OP Defendant.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 6 of 24 7
3. Whether the plaintiff is entitled to the decree of permanent injunction, as prayed in Clause (a) to Clause (d) of the prayer clause of the plaint? OP Plaintiff.
4. Whether the plaintiff is entitled to prayer clause (e) of the plaint? OP Plaintiff
5. Whether the plaintiff is entitled to prayer clause (f), (g), & (h) of the plaint? OP Plaintiff
6. Relief."
6. Subsequently, an additional issue was framed in this matter to the following effect, as in the issues earlier framed, one issue regarding entitlement of plaintiff to one of the prayers, was inadvertently missed. The additional issue framed on 22.03.2024 reads as under:-
"Whether the plaintiff is entitled to decree of punitive damages against the defendant as prayed, if yes, how much? OP Plaintiff."
7. In support of its case, plaintiff examined two witnesses, i.e. PW1 Narendra Singh who is claimed to be authorized representative of the plaintiff and; PW2 Mr. Somu Prabal, who investigated and purchased infringed goods from the shop of the defendant.
8. On the other hand, defendant did not examine any witness in her favour and without examining any witness, the defendant closed her evidence vide a statement of the counsel dated 11.01.2024.
9. For the sake of clarity, let it be mentioned that after the matter reached the stage of final arguments, the non-framing of one of the issues as mentioned above was noticed and then the additional issue was framed. After framing Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 7 of 24 8 of additional issue, both the sides were asked whether they would like to lead additional evidence on the additional issue. But both the sides stated that no additional evidence was required to be lead and thereafter the matter was fixed for judgment after hearing the parties.
10. I have heard ld. Counsel for the plaintiff Ms. Priya Nagpal and Ld. Counsel for the defendant Sh. Neeraj Gogia.
11. Before discussing the evidence and the contentions of the two sides, let it be mentioned that the Local Commissioner appointed by the Court visited the premises of the defendant on 22.05.2023 and gave report Ext.PW1/12 (exhibited by PW1). The Local Commissioner was not separately examined as a witness and there was no need of examining the Commissioner separately as a witness. When Ext.PW1/12 was proved by PW1 no objection as to its mode of proof was raised by the defendant. In the cross- examination of PW1 also no question regarding Ext.PW1/12 was asked. In law, a Local Commissioner's report can be read in evidence in terms of Order 26 Rule 10(2) CPC.
11.1. In Haldiram India (P) Ltd. v. Berachah Sales Corpn., 2024 SCC OnLine Del 2265, it is observed as follows;
"43. In the context of assessment of damages, 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. This position has been settled by the recent decision of the Supreme Court in Committee of Management Anjuman Intezamia Masajid, Varanasi v. Rakhi Singh (2023 : INSC :
702), wherein the Supreme Court has observed that the report of the Local Commissioner and the evidence taken by him/her constitute evidence in the suit and form a part of the record. The evidentiary value of any report of the Commissioner is a matter to Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 8 of 24 9 be tested in the suit and is open to objections including cross-
examination. Accordingly, in the present case, the report of the Local Commissioner and the contents therein can be relied upon by the Court as evidence to assess the damages, as the same stands unchallenged."
11.2. Ext.PW1/12 reveals that when the Local Commissioner reached the shop of the defendant a sign board by the name of 'Swag Paaji' was already installed there and the defendant as well as her employee Mr. Sunny were present. The local Commissioner executed the commission, after some resistance by the defendant. The Local Commissioner seized 120 pairs of shoes bearing infringed trademark which were kept in 4 gunny bags. Also, 100 pieces of Lowers and T-shirts bearing infringed trademark were recovered which were kept in 5th gunny bag. During the execution of the Commission, as per the report of the LC, one of the gunny bags containing T-shirt and lowers went missing and the LC suspected the role of defendant in the missing of the bag. The photographs of the shop of the defendant and the infringed articles found at her shop, running into 9 pages is part of the report of the Local Commissioner's report.
12. PW1 Narendra Singh reiterated the averments of the plaint in his affidavit in evidence Ext.PW1/A while relying upon documents Ext.PW1/1 to Ext.PW1/12. Let it be mentioned here that during examination-in-chief of PW1, the counsel for the defendant raised objections as to the mode of proof of Ext.PW1/1 i.e. the Apostilled attorney stating that it was a coloured copy and not an original one. But this Court specifically noted that the document Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 9 of 24 10 produced by PW1 for perusal of this Court was indeed original as it contained the date and signature in original. Besides the Apostilled attorney the documents relied by PW1 are the Legal Proceeding Certificates in respect of the trademark registered in favour of the plaintiff as Ext.PW1/2 to Ext.PW1/7; The photograph of the pair of shoes purchased by PW2 allegedly from the shop of the defendant and the photograph of the original products of the plaintiff, respectively as Ext.PW1/8 & 9; print out of the screenshots of defendant's instagram page Ext.PW1/10 and certificate qua it under Section 65B of the Evidence Act Ext.PW1/11. In his evidence, PW1 also gave a calculation as to demand of damages from the defendant to the tune of Rs.5,10,000/- by calculating the price of 120 pairs of infringing shoes @ Rs.3000/- each and the cost of 100 infringing Lowers and T-shirts @ Rs. 1,500/- each. Plaintiff calculated the said stock to be of 15 days and multiplied the quantum with 2 months assuming that the defendant was running business for 2 months and thus is demanding a sum of Rs.20,40,000/- + a sum of Rs.1,82,400/- towards expenses etc. and also punitive damages of Rs.10,00,000/-. Nothing material could be brought out on record from the cross-examination of PW1 in order to impeach his credit worthiness or trustworthiness.
13. So far as PW2 Mr. Somu Prabal is concerned, all that he deposed is that being an investigator who conducts market survey, on the instructions of PW1 he conducted a market survey in February 2023 and from the shop of the defendant he purchased one pair of infringing shoes on 28.02.2023. He Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 10 of 24 11 deposed that the defendant did not give any invoice. He deposed that the pair of shoes sold by defendant to him were infringing trademark of the plaintiff and were not original products. In his cross-examination, PW2 admitted that the payment made against purchase of infringing goods was not made through the electronic modes and he was not issued any invoice by the defendant. He also admitted that he is employee of PW1 and he receives salary of Rs. 22,000/- per month from PW1. He denied that he was working with the law firm 'The Legist' or the company namely 'Legist Intellectual Property Rights Services Limited Company'. He also claimed that he did not undergo any training to conduct investigation or to differentiate the original and the spurious products of the plaintiff and he was merely explained the difference between the two by PW1.
14. Issue wise findings are as follows:
15. Issue no.1.
"Whether the suit has been properly instituted and whether signatory of the plaint is properly authorized or competent to institute the suit? OP Plaintiff."
15.1. Onus to prove this issue was on the plaintiff. The plaintiff proved Apostilled attorney Ext.PW1/1. It is claimed to have been executed by one Mr. Kimberly N. van Voorhis, Attorney-in-Fact at State of Oregon in Washington, which was notarized on 19.01.2022 and the Apostille was issued on 28.01.2022. It also contains stamp of the Collector of Stamps at New Delhi wherein stamp duty was charged on 09.05.2022.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 11 of 24 12 15.2. It is argued by the defendant that no board resolution has been proved by the plaintiff in favour of Mr. Kimberly; there is no proof that Mr. Kimberly was further competent to authorize Mr. Narendra and; Mr. Kimberly seems to be an employee with no power issued by the plaintiff company and; that the plaintiff partnership firm is based in Netherlands, whereas the attorney was executed at Oregon.
15.3. The attorney Ext.PW1/1 specifically records that the executor is authorized to act in the name of Nike Innovate C.V. The attorney has been signed and it has been issued an Apostille which certifies authenticity of the signature and the capacity of the person who has signed it in terms of the convention of 5th October 1961. There is no reason for this Court to doubt Ext.PW1/1 or the capacity of Mr. Kimberly.
15.4. With respect to the attorney in favour of PW1, the plaintiff relies upon the case of Jugraj Singh & Anr. Vs. Jaswant Singh & Ors. AIR 1971 SC 761 and the case of Citibank N.A. Vs. Juggilal Kamlapat Jute Mills Co. AIR 1982 Delhi 487, to lay stress on the point that under Section 85 of the Indian Evidence Act there is a presumption in favour of the said attorney to be validly executed.
15.5. In the case of Citibank (supra), after discussing various judgments, it was held that the Courts have been consistently taking the view that under Section 85 of the Evidence Act it would also be presumed that the person executing the Power of Attorney on behalf of a corporate body was competent to do so. It was also held that the said presumption is Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 12 of 24 13 though rebuttable. In the said case, the Court specifically dealt with an issue as to authorization of the AR of the plaintiff namely N, who had claimed that Power of Attorney was executed in his favour by another person namely A, for the bank. In the said suit the PoA in favour of A was proved and it was duly authenticated by the Notary Public and in the cross- examination the AR of the plaintiff stated that he did not even remember as to who executed the PoA in favour of Mr. A. 15.6. In the present case also, the facts are somewhat similar, as the AR of the plaintiff is unaware as to who executed Attorney in favour of Mr. Kimberly, but the attorney executed by Mr. Kimberly in favour of PW1 is duly authenticated and Notarized.
15.7. Reference may also be made usefully to the judgment of the Supreme Court in the United Bank of India v. Naresh Kumar & others (1996) 6 SCC 660, in which, in para 13, it is said that there is a presumption of valid institution of a suit once the same is prosecuted for a number of years. This test as laid down by the Supreme Court is also satisfied in the present case inasmuch as the suit in fact has been prosecuted for more than one year by the plaintiff for seeking an appropriate decree. In the case of Naresh Kumar (Supra) Supreme Court has said that the cases filed by the companies should not be dismissed on technical ground with respect to validity of institution, and in fact the Supreme Court went on further to hold that as long as the suit is contested to the hilt, it ought to be held that the suit was validly instituted and filed.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 13 of 24 14 15.8. Accordingly, the contention of defendant as to authorization in favour of PW1 is rejected.
15.9. Issue no.1 is decided in favour of the plaintiff and against the defendant.
16. Issue no.2 "Whether the suit has not been properly valued? OP Defendant."
16.1. During arguments, Ld. Counsel for the defendant did not raise any argument qua valuation of the suit. The improper valuation of the suit was claimed by the defendant in her WS, based on the judgment of Hon'ble Delhi High Court in the case of Vishal Pipes Ltd. v. Bhavya Pipe Industry, 2022 SCC OnLine Del 1730, which has been overruled by the Division Bench of Hon'ble High Court in the case of Pankaj Ravjibhai Patel v. SSS Pharmachem (P) Ltd., 2023 SCC OnLine Del 7013, by overruling the directions contained in Para 66 (iv) and (v) of Vishal Pipes.
16.2. The plaintiff has valued the suit for rendition of accounts and tentatively valued the suit for court fees and jurisdiction at Rs.5 lakhs; for permanent injunction at Rs.200/- each; and Rs.200/- for delivery up of the impugned material, and appropriate court fees has been paid.
16.3. Whenever a plaintiff values a suit seeking damages/ rendition of accounts, it is usually valued tentatively and depending upon the decree and the quantum of damages a plaintiff can always be asked to pay the difference Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 14 of 24 15 of court fees, if any. There is absolutely no problem with the plaintiff in valuing the present suit and in absence of any material or argument against the valuation done, this Court has no hesitation to hold that the suit has been properly valued.
16.4. Issue no.2 is decided against the defendant and in favour of the plaintiff.
17. Issue no.3 "Whether the plaintiff is entitled to the decree of permanent injunction, as prayed in Clause (a) to Clause (d) of the prayer clause of the plaint? OP Plaintiff."
17.1. Under Clause (a) to (d) of the prayer clauses of the plaint, the plaintiff sought injunction against the defendant from dealing with goods bearing infringed trademark and copyright of the plaintiff or from passing off the goods. Onus to prove this issue was on the plaintiff.
17.2. Ld. Counsel for the defendant vehemently argued that when PW2 was not in possession of any invoice and he did not make payment to the defendant through electronic modes, there is no proof that PW2 purchased the pair of infringing shoes from the shop of the defendant, more particularly when the purchased goods were never physically produced in the Court. 17.3. Against it counsel for the plaintiff argues that the photographs of the said purchased pair of shoes were produced in the Court and photographs are exhibited also.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 15 of 24 16 17.4. The said argument of the defendant need not hold this Court any further for the simple reason that even if for the sake of arguments, it is assumed that the plaintiff fails to prove about purchase of any infringed goods from the shop of the defendant, the report of the LC clinches the issue against the defendant.
17.5. The LC's report, which is unrebutted, establishes that the LC seized 120 pairs of shoes bearing infringed trademark/ logo/ swoosh logo of the plaintiff. Besides it 100 pieces of Lowers and T-shirts were also seized, but the said gunny bag, in which the Lowers and T-shirts were kept, went missing. Nevertheless, the photographs forming part of report of LC Ext.PW1/12 indeed establishes that not only shoes but also apparels bearing infringed trademark of the plaintiff were found at the shop of the defendant at the time of execution of Commission. The shoes also contained infringed trademark of the plaintiff.
17.6. Instead of answering as to how come such large quantity of shoes and apparels with infringed trademarks were found at the shop of the defendant, the defendant tried to attack the case of the plaintiff on flimsy grounds such as; that the plaintiff did not prove that it was enjoying global reputation; or that it was operating globally; or that it spent huge amount in advertisement; or that its turnover etc. etc. None of those contentions raised by the defendant helps the case of the defendant in any manner. 17.7. Even if PW1 and PW2 did not undergo any particular training to distinguish the products of the plaintiff with the infringed ones, it is a matter of common Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 16 of 24 17 knowledge that there is always a distinction between an original product and an infringed one and those who are associated with the original company can always clearly distinguish it, without undergoing any training for it. It was in fact for the defendant to have established as to how come and from where the defendant came in possession of those goods. 17.8. During arguments, counsel for defendant claimed that admittedly, the goods which were recovered from the shop of the defendant by the LC were bearing endorsement that they were made in Vietnam and therefore those were actually imported goods and not infringed ones. This contention does not help the defendant for the simple reason that if the defendant claim that she had procured those goods by way of importing from any country outside India, the onus was on the defendant to have proved through document as to the legitimate importing of goods. Defendant chose not to lead any evidence whatsoever.
17.9. When the defendant did not lead evidence and did not prove that she imported the products in question she cannot argue that the plaintiff's witnesses were unable to distinguish the products or that the products recovered from her shop were genuine. For the same reason, absence of training certificate in favour of PW1 and PW2 is immaterial. 17.10. Another argument of the defendant is that the report of LC is biased, and that it was impossible for the defendant to have removed one full gunny bag from in front of the eyes of the LC accompanied by the AR of the plaintiff as well as Policemen. It is also argued that the physical stature of Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 17 of 24 18 the defendant lady was not such that she can remove any such gunny bag. But then from the LC's report itself it is evident that one of the employees (namely Sunny) of the defendant was present at the shop and who was asked to go away. What if that Mr. Sunny or someone else on behalf of defendant did the mischief by removing one gunny bag during execution of Commission. Merely because during execution of Commission one gunny bag was removed, which was quite possible in the midst of fiasco in the shop of the defendant at the time of execution of Commission since the defendant initially created ruckus in the shop, the report of LC cannot be doubted. The said report clearly makes it evident that apparels were also recovered from the shop of the defendant.
17.11. The defendant never filed any objection to the LC's report. Therefore, it does not now lie in the mouth of the defendant to claim that the LC's report is biased.
17.12. Merely because the law firm 'The Legist' which instituted the present suit is a sister concern in which PW1 was an employee, cannot be a reason for this Court to doubt the credibility of the case particularly in view of the LC's report.
17.13. It is a matter of common knowledge that Nike is a well-known brand in shoes and apparels and also that it does operate globally including in India. It is also matter of knowledge that it enjoys good reputation. Therefore, even if the plaintiff failed to prove sales and turnover of the plaintiff or the Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 18 of 24 19 amounts spent in advertising etc. it would not make any difference in decision of this Court.
17.14. In view of the above discussion, the plaintiff is entitled to decree of permanent injunction against the defendant from storing, stocking, manufacturing, selling, offering for sale or any other manner dealing with the products bearing infringed trade mark or copyright of the plaintiff, directly or indirectly and in any manner.
17.15. Issue no.3 is accordingly decided in favour of the plaintiff and against the defendant.
18. Issue no.4.
"Whether the plaintiff is entitled to prayer clause (e) of the plaint? OP Plaintiff"
18.1. In view of the discussion under issue no.3, the plaintiff also becomes entitled to delivery up of all of the goods seized by the LC which were released to the defendant on superdari. Once it is established that the products in which the defendant was dealing were infringed, those products have to be properly destroyed in the interest of the plaintiff and by the plaintiff. Accordingly, the defendant has to be directed to deliver those infringed goods to the plaintiff so that the plaintiff can do the needful. 18.2. Issue no.4 is also accordingly decided in favour of the plaintiff and against the defendant.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 19 of 24 20
19. Issue no.5 "Whether the plaintiff is entitled to prayer clause (f), (g), & (h) of the plaint?
OP Plaintiff"
19.1. Despite opportunity the defendant did not lead any evidence and did not disclose the name of anyone else who is/ are engaged in the manufacturing, stocking, selling etc. of the infringed goods. The defendant also did not provide all the documents and information regarding the infringement of the trademark, if any, in the possession of the defendant and the defendant also did not file its account books etc. in order to allow this Court to consider the prayer of rendition of accounts by the defendant. 19.2. Nevertheless, during final arguments Ld. Counsel for the plaintiff confined the present suit to the prayers contained under issue no. 3 and 4 and stated that some lump sum damages be allowed in favour of the plaintiff and the plaintiff is not insisting on passing any decree for rendition of accounts etc. 19.3. Subsequently, after final arguments were heard on 22.03.2023, the plaintiff even filed an application on 28.03.2024 seeking dropping of prayers in Clauses (f), (g) and (h) from the plaint. Accordingly, the present judgment is confined to the remaining reliefs sought by the plaintiff. 19.4. Therefore, so far as prayers contained in clauses (f), (g) and (h) are concerned, as the plaintiff has given up those reliefs, and no finding is required to be arrived at qua those issues.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 20 of 24 21
20. Additional issue "Whether the plaintiff is entitled to decree of punitive damages against the defendant as prayed, if yes, how much? OP Plaintiff."
20.1. Qua the amount of punitive damages, the plaintiff in its evidence by way of affidavit mentioned that since 120 pairs of shoes bearing infringed trade mark and 100 Lowers and T-shirts with similar infringed trademarks were recovered by the Local Commissioner, therefore the plaintiff be awarded punitive damages worth Rs.10 lakhs. In the said calculation given by the plaintiff, the plaintiff has stated as follows in para no.49 to 51:-
"49. I state that Defendant did not file any document pertaining to his accounts, in such circumstances, Plaintiff is claiming damages against Defendant. For the purpose of damages, Plaintiff relies upon 120 pairs of infringing shoes, 100 pieces of infringing lowers and T- shirts bearing the trademarks of Plaintiff seized from Defendant at the time of commission in the following manner;
i. 120 pairs of infringing shoes * Rs.3,000/- each = Rs.3,60,000/-
ii. 100 infringing lowers and t-shirts * Rs.1,500/- each= Rs.1,50,000/-
Total = Rs.5,10,000/-
50. I state that if the quantity seized by the local commissioner is the stock for 15 days (considering the fast-moving nature of the products), and the Defendant has been doing business for at least 2 months prior to the institution of the present suit and the grant of ex- parte ad interim injunction by this Hon'ble Court, then the value of the Defendant's products comes to be Rs.20,40,000/-. I state that further, Fees of the Local Commissioner: Rs.60,000/-, Court Fees:
Rs.7,400/-, Other expenses: 15,000/-, Attorney Fees: Rs.1,00,000/- totaling to Rs.1,82,400/- is also to be awarded to the Plaintiff.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 21 of 24 22
51. I state that Plaintiff is entitled to the punitive damages worth Rs.10,00,000/- for loss of business of the Plaintiff and for riding on the goodwill and reputation of the Plaintiff."
20.2. The plaintiff has relied upon the cases of Christian Louboutin Sas Vs. Ashish Bansal & Anr., 2018 (75) PTC 353 (Del); Cartier International AG & Ors. Vs. Gaurav Bhatia & Ors., 2016 (65) PTC 168 (Del); Pepsico Inc & Anr. Vs. Psi Ganesh Marketing & Anr., 2014 (59) PTC 275 (Del); Microsoft Corporation Vs. Deepak Raval, 2006 (33) PTC 122 (Del) and; Time Incorporated Vs. Lokesh Srivastava and Anr, 2005 (30) PTC 3 (Del), in support of its claim that in matters of infringement even where the defendant chooses to stay away from the proceedings, not only compensatory damages, but also punitive damages ought to be awarded in order to discourage and dis-hearten law breakers who indulge in such violation.
20.3. In the present case before this Court though the defendant contested the matter, but the defendant neither led any evidence, nor ever tendered its books of accounts, and the obvious reason for not doing it was to escape giving damages. In view of the above-mentioned authorities, punitive damages ought to be awarded against the defendant.
20.4. Having perused the report of the Local Commissioner which specifies the quantity of goods recovered from the shop of the defendant and having gone through the calculation provided by the plaintiff PW1 in para no.49 to 51 of the affidavit in evidence, and also having perused judgments relied upon by the plaintiff, in the facts and circumstances of the present case, interest Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 22 of 24 23 of justice would be met if the plaintiff is awarded punitive damages as a lump sum amount to the tune of Rs.5,00,000/-.
21. Relief 21.1. Accordingly, decree of permanent injunction is passed in favour of the plaintiff and against the defendant and accordingly the defendant, her servants, agents, distributors, representatives and anyone acting for or on her behalf are permanently restrained from using, manufacturing, selling, offering for sale, advertising or displaying (including in audio, print, visual media or otherwise), directly or indirectly or dealing in any other manner or mode with the impugned trademark/copyright such as "Nike", "Nike Shox", "Nikefeit", "Nike+Cardiokm" and logos , and "Nike Air" ("Nike marks") on shoes and other accessories, and/or any other trademark identical with or deceptively similar to the plaintiff's trademark and passing off its products and business as that of the plaintiff company.
21.2. The defendant is also directed to deliver all the goods seized by the LC as per Ext.PW1/12 within a period of 2 weeks from the date of decree to the DH so that the DH may properly destroy those goods.
21.3. The defendant shall also pay punitive damages to the tune of Rs.5,00,000/-
(Rs. Five Lakhs) to the plaintiff.
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 23 of 24 24 21.4. The plaintiff shall also be entitled to the cost of the suit. Decree sheet be prepared accordingly.
21.5. A copy of the judgment be supplied to the plaintiff as well as the defendant through electronic modes in compliance of Order 20 Rule 1(1) of CPC. File be consigned to the record room.
Announced in the open Court
on 10th April 2024 Digitally signed
DIG by DIG VINAY
SINGH
VINAY Date:
2024.04.10
SINGH 14:43:09
+0530
(DIG VINAY SINGH)
District Judge (Commercial Court)-03
West / Tis Hazari / Delhi (m)
Judgment dated 10.04.2024; CNR No.DLWT01-002370-2023; CS (COMM) No.277/2023; Nike Innovate C.V Vs. Ms. Kamna Page 24 of 24