Delhi District Court
Adidas A.G. vs . Sunil Kumar & Anr. on 31 October, 2018
IN THE COURT OF SH. ANIL ANTIL, ADJ05 SOUTH EAST
DISTRICT, SAKET COURTS, NEW DELHI.
TM No. 36/18
Adidas A.G. Vs. Sunil Kumar & Anr.
Adidas A.G.
AdiDasslerStrasse 1
Herzogenaurach91074
Germany
Also office at:
Adidas India Marketin Private Ltd.
Plot No. 93
Institutional Area
Sector 32, Gurgaon - 1220001
Through
It's Authorized Representative
Narendra Singh ..........Plaintiff
V E R S U S
1.Sunil Kumar Registrar of www.tredyshoes.in D360 Lajpat NagarII New Delhi110024 Also at B42, Focal Point, Moga, Punjab142001 .......Defendant no. 1
2. FastTrack Traders TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 1 of 10 41, Minerva Chakki Road Nadidad, Gujarat 387002 ........Defendant no. 2 Date of institution of the suit : 24.02.2018 Date of reserved for judgment : 31.10.2018 Date of pronouncement of judgment: 31.10.2018 SUIT DECREED EXPARTE JUDGMENT
1. The plaintiff has filed the suit for permanent injunction for restraining the defendant from passing off and infringing their trademarks, copyright, passing off, Delivery up, and for renditions of accounts.
2. Plaintiff's version as per averments in the plaint : 2.1 That the case of the plaintiff as set out in the plaint in nutshell is that plaintiff company is the owner of trademarks "adidas" its logos "3 Stripes", " Trefoil" and "3 Bars" and the said marks and logos are registered under the provisions of the Trademarks Act, in India. The plaintiff company is engaged in manufacturing, sale and distribution of sportswear, t shirts, lowers, jersey, jackets, caps and other apparel and accessories across the world.
2.2 That the plaintiff's Trademark "adidas" was created in 1949 as a combination of the name of its founder Adi Dassler. The plaintiff company TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 2 of 10 has a huge turnover against sale of its products worldwide including India. It is further avered that the word mark "adidas" and its logo are an artistic work under definition of Copyright Act owing to their unique design effect and style, the plaintiff company have the copyright over the logos of "adidas", since it's the original and pristine creation of the plaintiff. Thus, plaintiff is entitled to all relief pertaining to infringement of copyright in logo of "adidas", under the Copyright Act, 1957. The net global sales and gross profit of the plaintiff company is detailed in para 5 of the plaint. 2.3 That plaintiff company carries out its business in India through its franchise and company owned showrooms. Apart from common law rights, the plaintiff company is rightful owners to use the trademarks "adidas" its logos "3Stripes", " Trefoil" and "3 Bars" under the provisions of Trademarks Act in India. Some of the plaintiff's trademark "adidas" its logos "3Stripes", " Trefoil" and "3 Bars" registered under various classes of trade mark are detailed in para 8 of the plaint. 2.4 That plaintiff company have exclusive right to use said trademark and logos with respect to its products and no one is entitled to use the trademarks without a licence or assignment by the plaintiff company. 2.5 That the defendant no. 1 is registrant of an ECommerce Portal and engaged in online business of stocking, selling distributing and supplying infringing shoes of various brands along with infringing goods bearing the trademark "adidas" and logos of the plaintiff company through its website namely www.trendyshoes.in. The plaintiff is not aware of the exact TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 3 of 10 relationship, nexus and constitution of the defendant. He is called upon to disclose the same upon causing appearance before this Hon'ble court. 2.6 That during the first week of January, 2018 it was informed by the plaintiff company to its AR that the defendant no. 1 is distributing and selling shoes, in Delhi, through its internet site www.trendyshoes.in which bear mark, '"adidas" and logos "3Stripes", " Trefoil" and "3 Bars" and other registered mark of the plaintiff and/ or marks deceptively and confusing similar to word mark trademark 'adidas', and its logo and causing confusing and deception amongst the purchasing public and traders. 2.7 That the marks used by the defendant are identical and/or confusingly or deceptively similar to the registered trademarks of the plaintiff company and such use of the marks by the defendant violates the statutory rights of the plaintiff. The use of marks which are confusingly or deceptively similar to the registered trademarks of plaintiff in relation to similar goods with respect to which the marks are registered are likely to cause confusion in the mind of general public.
2.8 That the defendant is engaged in the distribution and sale of counterfeit apparels/goods. Defendant is thus reaping unfair advantage without any due cause and such an act is highly detrimental to the reputation of the trade marks of plaintiff company and same constitutes infringement within the meaning of Trademarks Act.
3. Process was issued to both the defendants. Defendants were duly served. Despite service none of the defendant has appeared to contest the suit, TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 4 of 10 nor the WS was filed. Vide order dated 31.07.2018, they were proceeded ex parte accordingly.
4. The plaintiff has led exparte evidence by way of an affidavit, reiterating the averments made in the plaint. In exparte evidence, AR of the plaintiff company Sh. Narender Singh stepped into the witness box and deposed vide affidavit of evidence exhibited as Ex.PW1/A reiterating the contents of the plaint and relied upon he documents which already stands exhibited as Ex.PW1/1 to Ex.PW1/12. Section 65B Indian Evidence Act in support of the electronic evidence was thereafter filed by the plaintiff.
5. For the sake of brevity and to avoid repetition the contents are not reproduced. The AR of plaintiff relied upon the documentary evidence Ex. PW 1/1 to Ex. PW1/12 i.e.: S. Particulars of Documents Documents exhibited/marked No. as 1 Copy of certificate of incorporation Ex.PW1/1 (OSR) 2 Copy of power of attorney in favour of Ex. PW1/2 (OSR) Mr. Narendra Singh 3 Copy of the registration certificates and Ex. PW1/3 (OSR), Ex. PW1/4 (OSR), Ex. PW1/5 (OSR), Ex.
legal proceedings of the trademarks of PW1/6 (OSR) plaintiff company 4 Screenshots/print outs of the website Ex. PW1/7 (colly) portal www.tredyshoes.in along with affidavit under Section 65B of Indian Evidence Act, 1872 5 Copy of invoice and email dated Ex. PW1/8 (colly) TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 5 of 10 03.01.2018 6 Copy of invoice Mark A 7 Photographs of the counterfeit goods Ex. PW1/10 (colly) 8 Photographs of the original goods of the Ex. PW1/11 plaintiff
9. Print out of www.whois.com/ whois/ Ex. PW1/12 trendyshoes.in
6. Heard. Perused the records meticulously. I am of the considered view, plaintiff is entitled to a decree in his favour and against the defendants for the reasons stated as under.
7. Perusal of the documents and Pleadings filed by the plaintiff transpires that plaintiff's trademark are all registered and valid as on the date of filing of the suit. The registration gives exclusive rights to the plaintiff to protect their rights in said marks and take infringements actions against any party in violation thereof. By virtue of long, extensive and continuous use of trademark, plaintiff's marks have become inseparable and synonymous with the goods and services of the plaintiff.
8. As held by the Hon'ble High court of Delhi in "The Royal Bank of Scotland Group PLC Vs. Sharekhan Limited, 216(2015) DLT 197", that:
'In order to establish infringement, the main ingredients of Section 29 of the Act are that the plaintiff's mark must be registered under the TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 6 of 10 Act; the defendant's mark is identical with or deceptively similar to the registered trade mark; and the defendant's use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trade mark is likely to deceive and cause confusion as the registration show the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question. If court find that the defendant's mark is closely, visually phonetically similar, even then no further proof is necessary.'
9. In the present case, comparison of the marks as detailed in para 19 of the plaint reflects the similarity between the impugned marks of defendants and the marks of the plaintiff; defendant's marks are structurally, visually and phonetically similar to the plaintiff's marks. In fact it is a case of counterfeit goods, which the defendants are manufacturing and selling.
10. Customers base of the products of both the parties are same. The representation of the marks by the defendant tends to cause confusion in the minds of the general public/customers as to the identity of source. If the defendant is permitted to use the impugned mark which are deceptively similar and confusingly to that of the plaintiff's company, it will not only cause wrongful loss to the plaintiff company, but it will also cause grave prejudice and harm to public. Not to mention about loss to the goodwill and reputation of the TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 7 of 10 plaintiff. Besides there is all likelihood of 'dilution' of the trademark of the plaintiff and in terms thereof plaintiff is entitled to protection under clause 4 of Section 29 Trademarks Act.
11. Be that as it may be, defendants are exparte. Nothing has come on record to disbelieve the case of the plaintiff or to doubt the authenticity and veracity of the document filed on record. The defendant did not come forward to disprove the case of plaintiff his stand. Consequently plaintiff is entitled to a decree for injunction in his favour and against the defendant.
12. Damages 12.1 In the present suit plaintiff is also claiming rendition of account by the defendant and damages in terms of prayer clause 'j' of the plaint. 12.2 A reference to the decision of Hon'ble High Court of Delhi titled as " The Heels V. Mr. V. K. Abrol and Anr. , CS (OS) No. 1385 of 2005 decided on 29.03.2006" would be profitable, wherein the Hon'ble court has held:
"This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that on enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 8 of 10 position cannot be acceptable.
No doubt it not possible to give an exact figure of damages on the basis of actual loss, but certain token amounts on the basis of the sales of the plaintiff can certainly be made. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences thereof. In fact in such a case both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff ono such litigation. In view of the given sales figure of the plaintiff. I consider it appropriates to grant a decree of damages in favour of the plaintiff and against the defendants for a sum of Rs. 3 lakh apart from costs of the suit. ' 12.3 In view of my finding that the plaintiff is entitled to the relief of permanent injunction, also taking in to consideration the proposition of law stated above I am of the view plaintiff is entitled to compensatory and punitive damages to the tune of Rs. 2 lakhs in his favour and against the defendant.
13. Relief.
In view of my above discussion, the present suit is decreed in favour of the plaintiff and against the defendant in terms prayer clauses (a) & (b) of the plaint with compensatory and punitive damages to the tune of Rs. 2 lakhs. The defendants shall be jointly and severally liable to pay the damages.
The suit stands disposed off as decreed.
Cost of the suit is awarded in favour of the plaintiff and against Defendant.
TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 9 of 10 Decree sheet be drawn accordingly.
File be consigned to record room.
Announced in the open court (Anil Antil) today ie. 31.10.2018 ADJ05/(SE)/Saket Court, New Delhi TM No. 36/18 Adidas A.G. Vs. Sunil Kumar & Anr. Page no. 10 of 10