Delhi District Court
Puma Se vs Somnath Sindwani on 12 September, 2024
DLCT010028502023
IN THE COURT OF MS. ILLA RAWAT :
DISTRICT JUDGE COMMERCIAL COURT- 03:
(CENTRAL) : TIS HAZARI (EXTENSION BLOCK) :
DELHI.
CS ((Comm): 335/2023
CNR No. DLCT010028502023
In the matter of :-
PUMA SE
PUMA Way 1
Herzogenaurach, 91074
Germany
Also at:-
117, A22,
WEA, Ajmal Khan Road, Karol Bagh,
New Delhi-110005
...Plaintiff
Versus
SOMNATH SINDWANI
Owner/Proprietor of Somnath Sindwani Footwear
Shop No. S9A, Pratap Chambers,
Gali No. 12, Karol Bagh,
New Delhi-110005
Also at:-
Basement, Shop no. S9A, Pratap Chambers,
Gali no. 12, Karol Bagh,
New Delhi-110005.
...Defendant
Date of Institution : 22.02.2023
Order reserved on : 12.09.2024
Order passed on : 12.09.2024
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 1 of 30
SUIT UNDER SECTION 134&135 OF THE TRADE
MARKS ACT, 1999 FOR PERMANENT INJUNCTION
RESTRAINING INFRINGEMENT OF TRADEMARK,
UNFAIR TRADE COMPETITION, RENDITION OF
ACCOUNT, DAMAGES, DELIVERY UP ETC.
EX-PARTE JUDGMENT
1.Vide this judgment I shall dispose off the suit for permanent injunction in respect of infringement of trademark, unfair trade competition, rendition of account, damages delivery up etc., filed by the plaintiff against the defendant.
2. Brief facts of the case are that plaintiff is a company established and incorporated under the laws of European Community respectively under the laws of Germany at PUMA Way 1, Herzogenaurach, 91074, Germany. Ms. Anita Rawat being constituted attorney of the plaintiff was duly authorized to sign and verify pleadings, and to institute the present suit on behalf of plaintiff.
3. It is averred in the plaint that the Plaintiff is marketing and selling its products in India including in Delhi through its wholly owned subsidiary Puma Sports India Pvt. Ltd. under its well-known and world-renowned trademark PUMA, logo and Form strip logo CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 2 of 30 (hereinafter referred to as PUMA) and has also been supplying, selling and carrying on its business through its stores at Delhi including its stores at 117A, 22, WEA, Ajmal Khan Road, Karol Bagh, New Delhi-110005 and UB-5, Bunglow Road, Kamla Nagar, New Delhi- 110007. The Plaintiff is also promoting its Puma branded products and selling its wide range of products through its website www.puma.com, which is an interactive website, created on 19.09.1997, and accessible to the consumers at Delhi and the Plaintiff's products can be viewed and purchased by the consumers in Delhi. The Plaintiff has been supplying/selling its PUMA branded products in India since 1980's.
4. It is further averred that the present suit has been instituted in order to protect the Plaintiff's rights in their well-known and world-renowned trademark PUMA, logo and Form strip logo (hereinafter referred to as PUMA & its logo) that appears on the products manufactured, marketed and sold by the Plaintiff. Further, it has been instituted to protect unauthorized use of the Plaintiff's renowned mark PUMA, logo and Form strip logo by the Defendant in relation to stocking, supplying and selling shoes without authorization/approval of the Plaintiff, resulting in infringement of the Plaintiff's registered trademark/logo.
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 3 of 30
5. It is also averred that Plaintiff is a Germany- based multinational corporation famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world. The company's soccer shoes are known for their durability and ground-breaking design and is a sponsor of more than 30 national soccer teams in five different FIFA confederations. Puma's track suits and running shoes are one of the best in the world.
6. It is further averred that PUMA is one of the world's leading Sports brands designing, developing, selling and marketing footwear, apparel and accessories. For over 70 years, PUMA has established a history of making fast product designs for the fastest athletes on the planet. It engaged in exciting collaborations with renowned design brands such as Alexander MacQueen and Mihara Yasuhiro to bring innovative and fast designs to the sports world. The PUMA group owns the brands namely PUMA, Cobra Golf, Dobotex and Brandon.
7. It is further averred that PUMA products are available in more than 120 countries worldwide including India and employ more than 10,000 people worldwide and are headquartered in Herzogenaurach, Germany. The trademark "PUMA" was coined way back in 1948 by Rudolf Dassler and was officially registered on October 1, 1948. Due to its massive popularity since it came into existence in 1948 and continues and extensive use, the PUMA word mark, device mark trademark is synonym with every sport today.
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 4 of 30
8. It is further averred that the Plaintiff Company on its own and through its subsidiaries/ affiliates world- wide is engaged in the business of manufacturing and marketing a wide range of products, inter alia, sports shoes, apparel and accessories including but not limited to track suits, T-shirts, shorts, polo shirts, Sports shoes, formal shoes, slippers, Flip-flops, Slippers, Sandals, Bags, ladies purse, bags, wallets, smart/ sport watches and other accessories and equipment of the highest quality. The Plaintiff and their subsidiaries and affiliates over the world are one of the world's leaders in the sporting goods industry with sports brands built on a passion for sports and a sporting lifestyle and providing highest value to consumers. Further, the Plaintiff is also engaged in the manufacturing and marketing of fashion products under the name "PUMA".
9. The figures reflecting the Plaintiff (worldwide) net sales for the period from 2012 to 2019 are detailed in para 8 of the plaint.
10. It is further averred that due to the global success of its products, they are widely recognized all over the world. Further, due to the maintenance of exacting and constant high standards of quality and effectiveness, Plaintiff goods have the distinction of being one of the Plaintiff best known and popular products. Moreover, "PUMA", being the umbrella brand of the Plaintiff, have become a source identifier for the Plaintiff and its group of companies. The plaintiff's mark PUMA is a valuable asset CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 5 of 30 to the Plaintiff business given the immeasurable reputation and goodwill amongst the purchasing public. The figures reflecting the Plaintiff (worldwide) advertisement and promotional figures for the period from 2012 to 2019 are detailed in para 9 of the plaint.
11. It is further averred that the plaintiff has spent huge sums of money on the advertisement and sales promotion of its products. As an advertisement method, the plaintiff company sponsors various prominent celebrities, teams and athletes.
12. It is further averred that the Plaintiff's PUMA trademarks are registered in various countries around the world, including but not limited to commonwealth nations like Australia, Bangladesh, Canada, China, Denmark, Germany, Greece, Hong Kong, Indonesia, Japan, United States, etc. The earliest worldwide registration for the PUMA trade mark dates back to the year 1948.
13. It is further averred that the Plaintiff is the registered proprietor of the trade mark PUMA and its logos and variants in several classes in India. The Plaintiff's trade mark registrations for the PUMA and PUMA variant trade marks in India are detailed in para 12 of the plaint. The said registered trademarks are valid and subsisting in the Register maintained by the Indian Trade Marks Registry and have full legal force.
14. It is further averred that the Plaintiff has been CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 6 of 30 extensively advertising its products under the mark "PUMA" through various print media including newspapers, magazines and trade journals, leaflets and other promotional literature and the said materials are being extensively distributed all throughout the country for several years now.
15. It is further averred that PUMA trade mark/trade name/logo has been registered in the name of the Plaintiff in India bearing registration no.450143, 407833 and 323376 in class 25, in respect of clothing and footwear for sports, athletic and leisure purposes, including training suits, leisure suits training sweaters jerseys, shorts and hoses all - weather suits, tennis and ski - sportswear, gloves (for wear) caps and headbands bathing drawers and bathing costumes, boots, shoes and slippers and in Class 18, bearing registration no.450142 in respect of leather and imitations of leather and articles made from these materials and not included in other classes, skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips and harness and saddler. Shoes and parts thereof which has been granted in favour of the Plaintiff for its distinctive logo mark. The said registration granted in favour of the Plaintiff is valid and subsisting and has full legal force. The Plaintiff has the exclusive right to use the said logo mark in view of the statutory rights available with the Plaintiff Company under the Trade Marks Act, 1999.
16. It is further averred that the leaping Puma logo depicts the company's dashing corporate image and the CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 7 of 30 durability of its products. The use of a bold font with the leaping cat on one side instantly casts an impression on the user of the product. The Puma logo is a sign of courage and challenge. The leaping Puma, another term for cougar, is depicted in the Puma logo. The reflection of the power and energy of this Puma can be seen in its products. The Puma logo alone is a showcase of the company's reliable products that enjoy a high reputation in the international sportswear market. The bold font in Puma logo is the projection of the company's stability and dominance.
17. It is further averred that the Plaintiff's marks PUMA and its logos are being used extensively by them and their affiliates in respect of shoes since 1948 and is thus identified and distinguished with the Plaintiff's goods and no else. The very depiction of the aforesaid logo mark connotes and denotes the Plaintiff's products. The said logo mark has been used in India by Plaintiff from 80's and with passage of time created a niche in the market and the same is inextricably associated with the Plaintiff. The trade and consumers recognize the aforesaid logo mark as source identifier of the Plaintiff Company's products. Any use of the said distinctive logo mark by any other person without the express permission of the Plaintiff Company in any manner whatsoever tantamount to misrepresentation and confusion in the eyes of the gullible consumers. The purchasers of the Plaintiff's products include men, women and children of all age groups thereby covering all segments of the society at large. Therefore any use of the said mark by anyone without the authorization of the CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 8 of 30 Plaintiff Company would amount to violation of the Plaintiff's intellectual property rights in the said mark.
18. It is further averred that the Plaintiff Company created and adopted a distinctive Form Strip logo in 1956 and has been using the same since the year 1958. In order to accord statutory protection to its Form strip logo the Plaintiff had filed a trademark application before the Indian Trademark Registry and the same has been registered in the name of the Plaintiff in India bearing registration no. 407833, dated 11/07/1983 in class 25 in respect of Shoes and parts thereof included in class 25. The said registration granted in favour of the Plaintiff is valid and subsisting and has full legal force. The plaintiff has the exclusive right to use the said logo mark in view of the statutory rights available with the Plaintiff Company under the Trade Marks Act, 1999.
19. It is further averred that due to the global success of its products, they are widely recognized all over the world. Further, due to the maintenance of exacting and constant high standards of quality and effectiveness, Plaintiff's goods under its house mark PUMA have the distinction of being one of the Plaintiff's best known and popular products. Further, the Plaintiff has spent huge sums of money on the advertisement and sales promotion of its Puma branded products worldwide. The sales and advertisement figures of plaintiff company in India pertaining to sale of its PUMA branded goods from the CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 9 of 30 year 2012 to 2021 are detailed in para 21 of the plaint.
20. At the time of filing the suit, the Plaintiff company impleaded the Defendant in the capacity of John Doe (Ashok Kumar) as the name of the Defendant (s) was unknown to the Plaintiff at that point of time.
21. The Defendant is stated to be engaged in the business of stocking, supplying and selling shoes bearing the plaintiff's trademark Form Strip logo without authorization/approval of the Plaintiff.
22. In the third week of January 2023, the plaintiff through its representative/field force, was intimated about the infringing activities of the defendant and came to know that defendant is stocking, supplying and selling shoes bearing the trademark Form Strip logo to the local retailers and general public residing throughout Delhi, U.P. and Haryana. Thereafter, the Plaintiff's representative(s) visited the Defendant's premises and purchased shoes bearing the impugned mark Form Strip logo , however, no invoice was issued. The pictorial comparison of the Plaintiff's products with the infringing products are given in para 28 of the plaint.
23. It is further averred that the Defendant despite being aware of the Plaintiff's right in the well-known mark Form Strip logo indulged itself into illegal CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 10 of 30 activities of stocking, selling and supplying PUMA branded counterfeit products with sole intention to pass-off its fake products as those of the Plaintiff's products. By copying well-known trademark/logo of the Plaintiff, in respect of its inferior quality goods, the Defendant has infringed the Plaintiff's registered trademarks/logo.
24. It is further averred that the Defendant has copied the well-known Form Strip logo which is clearly evident from the Defendant's infringing product. Such use and adoption by the Defendant is not authorized and legitimate. The adoption and use of the plaintiff's renowned Form Strip logo on the shoes by the Defendant amounts to willful infringement of the Plaintiff's registration for the mark Form Strip logo within the meaning of Section 29(1) to (4) of the Trade Marks Act, 1999.
25. It is claimed that the Defendant's products and infringing material under the Plaintiff's Form Strip logo has an obvious reference to the Plaintiff's distinctive well-known mark PUMA and its logos, as the same have been associated with the Plaintiff by all segments of the society. Due to popularity of the Plaintiff unique mark and logo associated with the Plaintiff goods, the Defendant adoption and use of the Plaintiff's Form Strip logo in respect of the same or similar goods are likely to create misrepresentation in the minds of trade and CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 11 of 30 common man and thus would amount to passing off.
26. It is alleged that the Defendant's adoption of impugned marks Form Strip logo is dishonest and motivated by a desire to usurp the vast reputation and goodwill of the Plaintiff which is enjoyed by the Plaintiff not only in India but throughout the world. The Defendant's unlawful adoption of an identical mark/logo is a calculated act to cause loss and injury to the Plaintiff's goodwill and its reputation and business and to dilute the distinctiveness of Plaintiff's mark PUMA and its logos. The loss and injury to the Plaintiff's reputation being caused/ likely to be caused by such dilution is not capable of being calculated in monetary terms. Hence, an immediate order of injunction restraining the Defendant is imperative.
27. It is also alleged that the Defendant, by adoption of impugned marks Form Strip logo in respect of identical products/goods has attempted to derive unfair advantage and cause misrepresentation. The misrepresentation is bound to cause confusion and deception in the minds of the purchasing public which includes men, women and children who identify the mark PUMA and its logos only with the Plaintiff and no one else.
28. It is claimed that Plaintiff has suffered and is likely to suffer irreparable loss and injury to their goodwill and reputation on account of unfair trade practice committed by the Defendant. The Plaintiff claimed that the CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 12 of 30 infringing goods, allegedly sold and supplied by the Defendant, under the impugned marks/logos may be of inferior quality, and the traders and consumers may get confused and deceived into buying the impugned products from the Defendant.
29. Thus aggrieved by infringement and passing of its trademark "PUMA, logo and Form strip logo , the Plaintiff has filed the present suit praying that :-
(a) The Plaintiff be granted a decree for permanent injunction restraining the Defendant, its proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors from manufacturing, stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including shoes or any other products under the impugned trademark PUMA, logo and Form strip logo , or any other mark/logo which is identical and similar to the Plaintiff's mark mark/logo, which may amount to infringement of Plaintiff's registered trademarks, as mentioned in para 12 of the plaint.
(b) The Plaintiff be granted a decree for permanent injunction thereby restraining the defendant, its proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors from manufacturing, stocking, wholesaling, CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 13 of 30 supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including shoes or any other products under the impugned trademark PUMA, logo and Form strip logo , or any other mark/logo which is identical and similar to the Plaintiff's mark mark/logo, which may amount to passing off.
(c) The Defendant be directed to disclose information about sale of the total shoes under the Plaintiff's mark PUMA and its logo with details of payments received.
(d) An order be passed directing Defendant to deliver up of all finished and unfinished goods, dies, blocks, labels, packaging materials and any other printed material bearing the plaintiff's mark PUMA, logo and Form strip logo to the authorized representative of the Plaintiff for the purpose of destruction/erasure/obliteration;
(e) A decree for damages for a sum of Rs. 4,00,000/- be granted in favour of Plaintiff and against Defendant.
(f) A decree of compensatory/punitive damages be also passed against the defendant.
(g) Grant of an order for the costs of proceedings.
30. The suit was initially filed by Plaintiff against an unknown Ashok Kumar. Pursuant to application Under Order XXXIX Rule 1&2 CPC and Order XXVI Rule 9 CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 14 of 30 CPC, this Court, vide its order dated 07.03.2023, had granted ex-parte stay in favour of Plaintiff restraining the Defendant, its proprietor or partners, servants, agents, affiliates, associates, stockists, distributors are restrained from stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including shoes or any other products under the impugned mark Form Strip logo or any other mark/logo identical with or deceptively similar to the Plaintiff's mark Form Strip logo , PUMA, logo and leaping Puma logo which amounted to infringement and from causing passing off of the Plaintiff's registered trademarks as mentioned in para 12 of the plaint. The Court also appointed a Local Commissioner vide the said order. The Ld. Local Commissioner visited the premises of the Defendant and submitted her report on 23.03.2023. In her report Local Commissioner gave the name of the person found engaged in the infringing activities. On basis of the said report plaintiff filed an application Under Order 1 Rule 10 CPC for impleading a person namely Somnath Sindwani as Defendant to the suit which was allowed vide order dated 19.05.2023 and Sh. Somnath Sindwani was permitted to be impleaded as Defendant in place of Sh. Ashok Kumar, in the suit.
31. It is a matter of record that defendant could not be served at given address through ordinary process and CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 15 of 30 was ultimately served through publication in newspaper 'The Statesman' dated 09.11.2023. The defendant, however, did not appear before the Court to contest the case by filing Written Statement. Accordingly, opportunity of defendant to file Written Statement was closed vide order dated 27.03.2024 and he was was also proceeded ex-parte vide order of the same date.
32. During course of proceedings, Ld. Local Commissioner was asked for clarification since there were specific directions in order dated 17.03.2024 that the seized goods were to be handed over to the plaintiff or its AR. The concerned Local Commissioner appeared through VC on 02.08.2023 and informed the Court that the goods which were seized during commission proceedings were handed over to defendant as per agreement arrived at between the AR of plaintiff and the defendant. Though this fact had not been mentioned in the report filed by the Local Commissioner, AR of plaintiff Sh. Krishanpal Singh, who was present in the Court on 02.08.2023 affirmed that the goods had been handed over to defendant as he had agreed for it. He, however, stated that he had inadvertently agreed for the same.
33. In order to prove its case plaintiff examined its Authorized Representative Ms. Anita Rawat as PW-1. She has reiterated the averments made in plaint in her affidavit Ex.PW-1/A. She has relied upon following documents :-
Sr. Document Exhibit No.
No.
1 Copy of Power of Attorney Ex.PW-1/1
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 16 of 30
(OSR)
2 True copy of Commercial Register Ex.PW-1/2
Entry of the plaintiff.
3 Internet downloads from the plaintiff's Ex.PW-1/3
website showing various plaintiff
stores.
4 Copy of invoice from PUMA store in Mark-A
Karol Bagh
5 Certificate U/s 65B of the Evidence Ex.PW-1/5
Act, 1872
6 Internet downloads showing history of Ex.PW-1/6
PUMA and PUMA logo
7 Internet downloads from the plaintiff's Ex.PW-1/7
website and third party websites (colly) showing sale of Puma products 8 Documents showing various celebrities Ex.PW-1/8 promoting plaintiff's PUMA products
9. Internet downloads showing Ex.PW-1/9 Worldwide registration obtained for the (colly) PUMA trademarks
10. Trademark Certificates (LPCs) for the Ex.PW-1/10 mark PUMA, PUMA logo and Form (colly) (OSR) strip logo registered in favour of plaintiff in India
11. Photocopies of sale invoices issued by Mark-B the plaintiff.
12. Internet download from third party Ex.PW-1/12 website showing plaintiff's Brand ranking
13. Internet download from Trademark Ex.PW-1/13 Registry observing PUMA as a well-
known trademark in India published in Trademarks Journal No. 1934, dated 30.12.2019
14. Photograph of the defendant's product Ex.PW-1/14
15. Report of the Local Commissioner Ex.PW-1/15
34. No other witness was examined on behalf of plaintiff.
35. Arguments were addressed by Ms. Shivangi Kohli, Counsel for Plaintiff. Written submissions were also CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 17 of 30 filed on behalf of Plaintiff. Plaintiff also filed English translation of Ex.PW-1/2 i.e. plaintiff's commercial register entry. Following judgments have been relied upon by plaintiff in support of prayers made in the plaint:-
(i) Kaviraj Pandit Durga Dutt Vs. Navratna Pharmaceutical Laboratories: Civil Appeals No.522&523 of 1962, decided on 20.10.1964.
(ii) Laxmikant V. Patel Vs. Chetanbhat Shah & Ors.:
8266- 8267 of 2001.
(iii) Christian Louboutin Sas Vs Ashish Bansal & Ors:
2018VIIAD(Delhi)125; 2018/DHC/4666
(iv) Adidas AG Vs. Praveen Kumar: CS(Comm) 1269/2018
(v) Puma Se Vs. Ashok Kumar:CS(Comm) 703/2022
36. I have heard Ld. Counsel for plaintiff. I have also gone through the record as well as written submissions filed on behalf of Plaintiff.
37. Since the instant matter proceeded against De- fendant on basis of the report Ex. PW-1/15, of Ms. Shagun Bharti, Ld. Local Commissioner, the observations made therein are very relevant for the present suit. More particu- larly in view of the judgment in case of Levi Strauss & Co. Vs Rajesh Agarwal 246 (2018) DLT 577 wherein it has been held:-
"9. The Local Commissioner is in fact a representa- tive 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 form part of the record.
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 18 of 30
10. It is a settled proposition that the Local Com- missioner need not be examined in every matter. If any party wishes to examine the Commissioner for whatsoever reason or if the court wishes to seek any clarification in respect of the Commissioner's re- port, then the option to examine the Commissioner exists. In Misrilal Ramratan & Ors. Mansukhlal & Ors Vs. A. S. Shaik Fathimal & Ors., 1995 Supp (4) SCC 600 the Supreme court categorically holds that the Commissioner's report cannot be rejected on the specious plea of non-examination of the Commis- sioner. The relevant portion of the judgment reads as under:
"It is now settled law that the report of the Commis- sioner is part of the record and that therefore the re- port 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."
Similar is the view taken by a Ld. Single judge of this Court in Harbhajan Singh Vs. Smt. Shakuntala Devi Sharma & Anr. MANU/DE/0058/1976: AIR 1976 DELHI 175.
16. The impugned judgment/order dated 28 th No- vember, 2006 is set aside. The plaintiff is entitled to permanent injunction in terms of prayers (i), (ii) & (iii) of the plaint. Learned counsel for the Ap- pellant does not press the relief (iv) for damages. The Local Commissioner found only 57 pairs of jeans in the Defendant shop bearing the infringing marks. The Court fee deposited by the plaintiff is to the tune of Rs. 7,400/- in the suit and Court fee deposited in the present appeal is to the tune of Rs. 7350/- i.e. a total of Rs. 14,750/- is awarded as costs. The suit is decreed in terms of prayer clauses (i), (ii) & (iii) of the plaint with costs of Rs. 14,750/-. Decree sheet be drawn. The appeal is allowed in the above terms. All miscellaneous ap- plications are disposed of as infructuous."
38. It was further held in case of ML Brother LLP Vs Maheshkumar Bhuralal Tanna 2022 (91) PTC 270 (Del) that:-
"11. In Levi Strauss & Co. Vs. Rajesh Agarwal MANU/DE/0019/2018 : 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 exam- ine the Commissioner to admit the report of the Com-
CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 19 of 30 missioner as evidence in the suit. The relevant obser- vations are as under:
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 re-
port the same shall be treated as evidence in the suit and shall form part of the record.
xxxxxxxxx
10.The rationale behind Order 26 Rule 10 (2) of CPC is clear i.e. the Commissioner is appointed as a repre- sentative of the court and evidence collected by the Commissioner along with the report of the Commis- sioner would be evidence in the suit, subject to any ob- jection raised by any party. If any party has any objec- tion to Commissioner's report or to the evidence, such party has an option to examine the Commissioner per- sonally in open Court. Such examination is however, neither compulsory nor required especially in cases were 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..."
13. In view of Order 26 Rule 10 (2) CPC and the judg- ments discussed above, the settled legal position that emerges is that the report of the Local Commissioner can be treated as evidence in the suit where it is not challenged by any party. Accordingly, in the present case the report of the Local Commissioner and the contents therein can be relied upon by the court as evi- dence as the same is unchallenged.
39. The relevant observations made by Ms. Shagun Bharti, the Local Commissioners, are as under:-
"C. That the undersigned first visited at Shop No. S-9A, Pratap Chambers Karol Bagh which is a one room from where the shop is operated and where the shop owner Mr. Somnath as found.... ..Thereafter, the undersigned in the presence of representative of the Plaintiff Company and with the help of Police officials seized 09 pair of shoes and the same were collected in a sack which was sealed and signed...
D. ...the undersigned and representative of Plaintiff with the help of Police officials inspected only two godowns where they found several pair of shoes which were identical and having the similar trademark of the Plaintiff Company. CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 20 of 30 E. That the representative of the Plaintiff company found 53 pair of shoes from those two godown and the same were seized in two sacks out of which one sack was containing 24 pair of shoes and the other sack was filled with 29 pair of shoes. Both the sacks were seized and signed by the undersigned..
F. ...the Defendant was asked to show the Books of Accounts, Ledgers, Invoices, or Books of Accounts etc. but the Defendant refused to do so by stating that he does not maintain any such record or data...
G. That total 62 pair of shoes were seized in three sacks out of which one is containing 09 pairs, other is containing 24 pairs and the last sack is containing 29 pair of shoes and each sack is signed and sealed by the undersigned and kept by the defendant with undertaking to produce the same as and when the same would be required by the Hon'ble Court.
40. It appears from the report of the Local commissioner that she counted the counterfeit goods, prepared on the spot inventory of the seized material and thereafter placed the counterfeit items in three sacks and sealed with her signatures. The seized goods were later released to the defendant on superdari. The Original Inventory Lists, Superdginamas as well as Photographs of the counterfeit goods form part of the report of the Ld. Local Commissioner. As per the inventories and report prepared by the Ld. Local Commissioner goods detailed in foregoing paragraphs, were recovered.
41. The report Ex. PW-1/15 (colly) submitted by Local Commissioner and perusal of the photographs of infringed goods annexed with it clearly reveals that defendant was dealing in infringed goods bearing trademark CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 21 of 30 of the plaintiff.
42. Even otherwise it has been held in the case of Kaviraj Pandit Durga Dutt Vs. Navratna Pharmaceutical Laboratories (supra) that:
29."When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise;
for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide s. 21). A point has sometimes been raised as to whether the words 'or cause confusion"
introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, in deceptively similarly. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exit to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 22 of 30 the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence of question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
43. Similar observations were made in case of Adidas AG Vs. Praveen Kumar (supra) . Hence, plaintiff is entitled to a decree for permanent injunction as prayed for in clause (a) of the prayer clause.
44. It is also apparent that defendant's adoption and use of plaintiff's Form strip logo in respect of his products, which are similar to goods marketed and sold by plaintiff, is intentional and is likely to create misrepresentation in the minds of trade and common man that the same are goods marketed and sold by plaintiff. The following observations made in case of Laxmikant V. Patel Vs. Chetanbhat Shah & Ors.(supra) in this regard:-
"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 23 of 30 in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
11. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and observe the same having been awkwardly termed as passing off and state:-
The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.
12. In Oertli Vs. Bowman (1957) RPC 388, (at page 397) the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-
proprietary right to the exclusive use of the mark or get- up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 24 of 30 three elements of passing off action are the reputation of goods,possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97).
45. The plaintiff is thus entitled to decree of permanent injunction as prayed for in clause (b) of the prayer clause.
46. The plaintiff has prayed for damages of Rs. 4,00,000/- and has relied upon judgment in case of Christian Louboutin Sas Vs Ashish Bansal & Ors:
2018VIIAD(Delhi)125; 2018/DHC/4666 wherein it was that:-
"15. Under the given facts and circumstances of this case where the defendants reclused themselves from the proceedings, cannot be permitted to enjoy the benefits of evasion or covert priorities as has been CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 25 of 30 using the domain websites and have been infringing the plaintiffs' trademark certainly makes the defen- dants liable to pay the damages to the plaintiffs. Hence, a decree for a sum of 20.00 Lac in favour of the plaintiffs and against defendants, is also passed on account of infringing the registered marks, trade dress and violating interim order. The plaintiffs shall also be entitled to interest @ 10% pa on the dam- ages so awarded from the date of filing of the suit till the date of realisation. Costs of the suit is also awarded to the plaintiff and against the defendants. The defendants are jointly and severally liable to pay the damages and costs to the plaintiff. Decree sheet be drawn."
47. Further in case of Louis Vuitton Malletier Vs. Capital General Store & Ors. : AIR 2023 Delhi 39; 2023/DHC/810, it has been held that "26. Counterfeiting is an extremely serious matter, the ramifications of which extend far beyond the confines of the small shop of the petty counterfeiter. It is a com- mercial evil, which erodes brand value, amounts to du- plicity with the trusting consumer, and, in the long run, has serious repercussions on the fabric of the national economy. A counterfeiter abandons, completely, any right to equitable consideration by a Court functioning within the confines of the rule of law. He is entitled to no sympathy, as he practices, knowingly and with complete impunity, falsehood and deception. Even while remaining within the confines of the provision with which it is seized-in this case, Order XXXIX Rule 2A-the court is, therefore, required to be econom- ically and socially sensitized, and to send a deterrent message to others who indulge, or propose to indulge, in the practice of counterfeiting.
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30. Keeping in mind the power vested in the Court to mould the order to ensure substantial justice, I am of the opinion that the interests of justice would best be subserved if, in the present case, the defendant is directed to pay, to the plaintiff, 5 lakhs within a period of four weeks from today, failing which Mr. Javed Ansari, the proprietor of Defendant 2, shall suffer incarceration in civil prison in Tihar Jail for a period of one week."
48. For the purposes of damages plaintiff has relied upon the inventory prepared by the Local CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 26 of 30 Commissioner. The PW-1 Ms. Anita Rawat, AR of plaintiff has given estimate of Rs. 4,00,000/- as damages in her evidence affidavit Ex. PW-1/A. The plaintiff has also relied upon case of Puma Se Vs. Ashok Kumar (supra) in support of its claim of damages/punitive damages.
49. As is clearly brought out from observations made in case of "Puma Se Vs. Ashok Kumar (supra)", punitive damages cannot be awarded unless there are extenuating circumstances and overwhelming evidence. While referring to observations made in case of Hindustan Unilever Limited Vs. Reckitt Benckiser India Ltd. (2014) 57 PTC 495 (DB) it was held as under:-
"37. On the issue of damages, the settled legal position has been laid down in Hindustan Unilever Limited Vs. 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 or the compensatory damages."
50. In the instant case as is brought out from record, there was specific direction given to Local Commissioner, vide order dated 07.03.2023, that infringing goods be sealed and released to the plaintiff or its AR or to any other person authorized by the plaintiff's AR, on his undertaking to produce the same before the Court as and when directed by the Court. The AR of plaintiff, for reason best known to him, had an agreement with defendant, after infringing goods were seized by Ld. Local Commissioner, CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 27 of 30 whereby Local Commissioner was asked to hand over the seized goods to defendant himself. Thus plaintiff has not only failed to prove any extenuating circumstances but to the contrary there is overwhelming evidence to decline granting of punitive damages to the plaintiff.
51. As regards damages, as already observed herein above, plaintiff has prayed for grant of damages of Rs. 4,00,000/-. The PW-1/Ms. Anita Rawat has made similar statement in her affidavit Ex. PW-1/A. There is, however, no basis on which quantum of damages has been calculated. Even the estimated amount for which defendant was selling his products and consequent damages caused to plaintiff pursuant thereto has not been given. In other facts and circumstances as also taking into account the fact that AR of plaintiff agreed to handover infringed goods to defendant knowing fully well that defendant may not join the proceedings at a later stage and may vanish with the goods, in my considered opinion, plaintiff is entitled only to token damages in sum of Rs. 50,000/-.
52. The plaintiff has also prayed for grant of cost of suit. Ld. Counsel for plaintiff has also relied upon judgment in case of Adidas AG Vs. Praveen Kumar (supra) in support of of contention that plaintiff is entitled to cost of the suit. From perusal of record it is seen that the plaintiff has filed court fees of Rs. 7000/- with suit. The Court appointed the LC vide order dated 07.03.2023 and directed the plaintiff to pay Rs. 80,000/-towards fees of the LC which was actually paid. No fee certificate has been filed CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 28 of 30 by counsel for plaintiff.
53. After considering the above facts and the approximate actual expenses and by presuming that some expenses must have been incurred towards counsel fee, typing of the pleadings, photocopies of the documents, arranging of the gunny bags and photographer at the time of execution etc., I deem it proper to grant sum of Rs. 1.25 lakhs towards cost of the suit, which shall be payable by defendant to plaintiff.
54. No order for disclosure of information passed, as defendant is exparte.
55. Further as per report Ex. PW-1/15(colly) filed by Local Commissioner, the defendant did not produce any ledgers, Books of accounts, Invoices etc. Accordingly, decree of rendition of accounts of profits made by defendant cannot be granted in favour of the plaintiff.
56. In view of observations made above, the plaintiff is entitled to the following reliefs:-
(i) The plaintiff is also entitled to decree of permanent injunction against defendant. Accordingly, defendant, its proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors, are restrained from manufacturing, stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including shoes or any other products under the impugned trademark PUMA, CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 29 of 30 logo and Form strip logo , or any other mark/logo which is identical and similar to the Plaintiff's mark mark/logo, which may amount to infringement of Plaintiff's registered trademarks, as mentioned in para 12 of the plaint.
(ii) Plaintiff is also entitled to a decree for permanent injunction thereby restraining the defendant, its proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors from manufacturing, stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including shoes or any other products under the impugned trademark PUMA, logo and Form strip logo , or any other mark/logo which is identical and similar to the Plaintiff's mark mark/logo, which may amount to passing off.
(iii) The plaintiff is awarded damages in the sum of Rs. 50,000/-.
(iv) Cost of the suit in sum of Rs. 1.25 lakh, as directed hereinabove, is also awarded in favour of plaintiff.
57. Decree sheet be prepared accordingly and file be consigned to Record Room after due compliance.
Digitally signedILLA by ILLA RAWAT Date:
Announced in the open Court RAWAT 2024.09.12 16:37:45 +0530 on 12th September, 2024. (ILLA RAWAT) District Judge Commercial Court-03 Central District, THC, Delhi CS (COMM) 335/23 Puma Se Vs. Somnath Sindwani. Page No. 30 of 30