Delhi District Court
Through Its Authorized Representative vs Discount Junction/Lavanya Trading ... on 5 August, 2023
IN THE COURT OF MS SAVITA RAO, DISTRICT JUDGE
COMMERCIAL COURT-02, SOUTH WEST,
DWARKA COURTS, DELHI
CNR No. DLSW01-008104-2020
CS (Comm) No. 165/2020
In the matter of :-
Adidas AG
(A company registered in Germany)
having its office at
Adi- Dasseler Strassee 1
Herzogenaurach - 91074
Germany and also at:
Adidas India Marketing Pvt. Ltd.
Plot no. 93, Institutional Area
Sector - 32, Gurgaon - 122003
Through its Authorized Representative
Mr. Narendra Singh
............Plaintiff
Vs.
Discount Junction/Lavanya Trading Company
WZ, Plot no. 37
Ram Dutt Enclave, Near Lal Mandir
Uttam Nagar, Delhi - 110059
Through its Owner/Proprietor
Mr. Jatin Jain
.........Defendant
Date of institution of the case : 10.11.2020
Date of final arguments : 24.07.2023
Date of judgment : 05.08.2023
EX-PARTE JUDGMENT
1.This is suit for Mandatory and Permanent injunction, Passing off, Infringement of Trademark and Copyright and Rendition of CS (Comm) No. : 165/2020 1/9 Accounts, filed by plaintiff against the defendant.
2. Plaintiff Company, as stated, is engaged in manufacturing, sale and distribution of sportswear, t-shirt, lowers, jackets, apparels, caps, other apparels and accessories across the world. Plaintiff Company carries out its business in India through its franchise and company owned showrooms and advertises in India and other parts of the world through print, digital advertisement, social media, brochures, and packaging of their goods. Plaintiff Company is one of the world's largest sports brand and its products are available in more than 160 countries worldwide including India.
3. Plaintiff is the registered proprietor of various trademarks in India, details of which are given in tabular format in the plaint. As stated, registration of said trademarks stands renewed from time to time by the trademark Registry and the said trademarks, on account of renewal, are valid and subsisting in favour of the Plaintiff Company till date. Plaintiff Company has thus the exclusive right to use said trademarks with respect to its products and no one is entitled to use the "adidas marks" and/or any mark identical and /or confusingly or deceptively similar to the "adidas marks" without a license or assignment by the Plaintiff Company. Plaintiff spends huge amount of money in advertising and promotion of its products under the "adidas marks" in India and abroad. The "adidas marks" enjoy huge goodwill and reputation in business community and public in general in India and across the world. On account of good quality and standards of manufacturing the goods under the "adidas marks" of the Plaintiff have earned huge recognition in the market.
4. As further stated, in the last week of October, 2020, it came to the knowledge of the Plaintiff that Defendant is engaged CS (Comm) No. : 165/2020 2/9 in selling/marketing/distributing products under the falsified trade mark 'adidas' and device of 'three stripes' or 'trefoil' (adidas marks). The use of falsified marks by Defendant which are visually, structurally identical and/or deceptively and confusingly similar to Plaintiff's well-known registered trademark 'adidas' and device of 'three stripes' or 'trefoil' (adidas marks) are unauthorised and illegal. The infringing goods stored and sold by the Defendant are readily available in vicinity of Uttam Nagar and nearby localities of Delhi. Defendant does not issue any invoice/bill for the purchase and carry its business in a very clandestine manner. Photographs of the infringing goods of the Defendant bearing trademarks identical and/or deceptively and confusingly similar to the "adidas marks" of the Plaintiff and photographs of the original product of the Plaintiff were also placed on record alongwith the plaint.
5. As submitted, the quality of stitching/pasting/packaging of the product of Defendant is of a poor/bad quality and the products being sold by the Defendant are not well finished as compared to the high end finished products of Plaintiff. The label on the tongue of the shoe (Defendant's products) are fake and counterfeit. Furthermore the goods stored, distributed and sold by the Defendant do not carry care label, security label, and MRP label or proper packaing. The adoption of the impugned trademark adidas and/or device/logo of 'Three stripes' and/or Trefoil by defendant being deceptively similar to Plaintiff's well- known trademark adidas and device/logo of 'Three stripes' and Trefoil, amounts to violation of Plaintiff's prior rights and also amounts to infringement of Plaintiff's registered trade marks as well as passing off under the Trade Marks Act, 1999. By CS (Comm) No. : 165/2020 3/9 adopting the deceptively similar impugned device/logo for identical goods, Defendant is not only riding on such goodwill of Plaintiff but also attempting to show some association with the Plaintiff. Goods of plaintiff are sold popularly and unwary consumers will be duped into buying inferior quality goods by mistaking it for Plaintiff's products which is subjected to stringent quality test to ensure safe and quality products reach the consumers.
6. Use of the trademarks and logos of the Plaintiff by defendant, as stated, is a deliberate act to ride upon the goodwill and reputation of the Plaintiff. Defendant is infringing the trademarks and logos of the Plaintiff and is passing off its goods and business as that of the Plaintiff and are thereby making illegal gains to himself and causing wrongful loss to the Plaintiff and also the loss of business opportunity to the Plaintiff. Defendant is earning illegal profits on account of the unlawful use of impugned trademark adidas and/or device/logo of 'Three stripes' and/or Trefoil and if the Defendant is not restrained from continuing the same, plaintiff shall continue to have irreparable losses of business as well as injure the goodwill of its products. Hence, the instant suit was filed alongwith application under order 39 rules 1 & 2 CPC r/w section 151 CPC.
7. After filing of the suit, vide order dated 02.12.2020 ex- parte injunction was granted in favour of plaintiff and against the defendant and the matter was listed for issuance of summons and notice of application to the defendant for 08.01.2021. Defendant was served by way of publication in newspapers ' Rashtriya Sahara' and ' The Statesman' on 28.07.2022. However, it failed to appear before the court or to file written statement within stipulated CS (Comm) No. : 165/2020 4/9 period. Hence, was proceeded ex-parte vide order dated 24.08.2022 by Ld. Predecessor of this court and matter was listed for PE. Sh. Narendra Singh, AR of plaintiff company was examined as PW1 and arguments were addressed.
8. Plaintiff, in support of its claim, has relied upon following documents:
1. Photocopy of certificate of incorporation of plaintiff company as Mark A
2. Photocopy of Power of attorney in favor of Ms.Sarah Talbot as Mark D.
3. Photocopy of power of attorney in my favor as Ex. PW1/2
4. Photocopies of Legal Proceeding Certificates as Ex.
PW1/3 to Ex. PW1/8.
5. Photographs of infringing product of defendant as Mark B (4 pages)
6. Photographs of original product of plaintiff as Mark C (3 pages)
7. Affidavit of investigator as Ex. PW1/9
9. As already noted, defendant was proceeded ex-parte and had also not filed written statement along with statement of truth, affidavit of admission and denial of documents as well as its own documents within the stipulated period of 30 days from service and even upto 120 days from the date of service along with an application for condonation of delay.
10. The averments made in the plaint (which is supported with the affidavit and statement of truth) remained uncontroverted, unrebutted and unchallenged for the failure of defendant to file any written statement and to contest the matter. I do not find any reason CS (Comm) No. : 165/2020 5/9 to disbelieve the version of the plaintiff and the averments made in the plaint supported by the documents on record. Coloured pictures of the original goods and fake goods have also been filed on record. In terms of Report of Local Commissioner, 423 Adidas bags, 13 pair of Adidas shoes, 22 empty shoes cartons i.e. total 458 Adidas Articles were recovered from the premises of defendant, which all were seized, sealed and packed in baggages. Photographs as well as Inventory of goods seized from the premises of defendant was also filed on record by Local Commissioner.
11. From the perusal of documents on record, it is clear that the defendant has knowingly, intentionally and dishonestly infringed the impugned trademark/label/trade dress of plaintiff; passed off its goods/shoes and business as that of the plaintiff; infringed the plaintiff's copyright in the said Trademark/Label/Trade dress by using, publishing, reproducing the same and defendant apparently is guilty of falsification and unfair trade practices. Mis-conduct of the defendant is in complete violation of plaintiff's statutory and common law rights and amounts to infringement of the registered trademark/label and copyright of the plaintiff.
12. Plaintiff though has prayed for rendition of account of profits earned by the defendant, however, no document/material has been placed on record by the plaintiff. PW1 vide his affidavit of evidence also restricted his claim only qua order of permanent injunction alongwith damages and costs incurred by plaintiff in the present matter and did not press for grant of other reliefs, as were mentioned in prayer clause of plaint. For the purpose of computation of damages, plaintiff relied upon cost of 458 infringing shoes/accessories bearing the trademark of plaintiff company recovered from the premises of defendant amounting to CS (Comm) No. : 165/2020 6/9 Rs. 6,62,700/- . It was deposed by PW1 that if the quantity seized by the Local Commissioner is the stock for 15 days (considering the fast moving nature of the product) and defendant has been doing business for at least 2 months prior to institution of the case, then the value of defendant's products comes to Rs. 19,88,100/-. Hence, punitive damages worth Rs. 10,00,000/- have been claimed, besides the claim of Rs. 1,65,500/- which had been spent by plaintiff towards the expenses incurred in connection with present proceedings i.e. Fees of Local Commissioner, Attorney Fees, Court Fees and Miscellaneous Expenses.
13. It has been established on record that defendant has infringed the impugned trademark/trade dress of plaintiff; passed off its goods and business as that of the plaintiff; infringed the plaintiff's copyright in the said Trademark/Trade dress by using, publishing, reproducing the same. Suffice it is, if the product of defendant is likely to cause confusion in mind of general public. Plaintiff, therefore, is entitled for damages from defendant.
14. Local Commissioner was appointed and fees of Rs. 45,000/- was incurred by plaintiff towards fees of Local Commissioner, Present suit was filed on 10.11.2020 and total number of about 20 hearings have taken place in the matter. As regards claim of damages, this court is convinced that this is not a case of innocent adoption and defendant's conduct invites the award of damages. Taking a reasonable assessment of the volume of seizure made and nature of infringement indulged into by defendant, in the opinion of the court, plaintiff is entitled to nominal damages. Accordingly, plaintiff is awarded sum of Rs. 1,00,000/- (Rs. One lac only) as damages and Rs. 60,000/- towards Local commissioner Fees and Other expenses.
CS (Comm) No. : 165/2020 7/9Relief:
15. Instant suit is accordingly decreed with cost in favour of the plaintiff and against the defendant, thereby :
(1) defendant is restrained by itself as also through its partners, agents, representatives, officers, employees, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the trademark adidas and/or device/logo of 'Three stripes' and/or Trefoil and /or any other registered ' adidas marks' of the plaintiff on shoes and other accessories in any form and manner and/or trademark identical and/or confusingly or deceptively similar to the trademark trademark adidas and/or device/logo of 'Three stripes' and/or Trefoil and/or any other registered " adidas marks" of the plaintiff. (2) defendant is restrained by itself as also through its partners, agents, representatives, officers, employees, distributors, assigns, heirs, successors, stockists and all other acting for and on its behalf from using any trademark and copyright vested in the trademark Reebok and/or device/logo and/or any other registered " Reebok Marks" of the plaintiff on shoes and other accessories in any form and manner and/or copyright identical and/or confusingly or deceptively similar to the trademark trademark adidas and/or device/logo of 'Three stripes' and/or Trefoil and/or any other registered " adidas marks" of the plaintiff, in relation to impugned goods and business and/or other allied/related products and from doing any other acts or deed amounting to or likely to:
(i) infringing the registered Trade Marks of the plaintiff
(ii) passing off its goods and business as that of the goods and business of the plaintiff.CS (Comm) No. : 165/2020 8/9
(iii) infringing the plaintiff's copyright in the said Trade Mark/Label/Trade Dress by using, publishing, reproducing for the purpose of trade using the identical and deceptively similar impugned trade mark/label for the purpose of its impugned goods and business.
(3) for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trademark/label or any other identical and/or confusingly or deceptively similar trademark/label including labels, display boards, sign board, trade literatures and goods etc. to the plaintiff for the purpose of destruction and erasure.
16. Defendant is further directed to pay an amount of Rs. 1,60,000/- (Rs. One lac sixty thousand only) to the plaintiff towards damages and litigation expenses. If the payment towards decreetal amount is not cleared within one month, thereafter decreetal amount shall be payable alongwith interest at 12% p.a. till realization.
16. Decree sheet be prepared accordingly. After completion of formalities, file be consigned to record room.
Digitally signedSAVITA by SAVITA RAO Date:
RAO 2023.08.07
16:11:39 +0530
Announced in the open (SAVITA RAO)
court on this 5th day DISTRICT JUDGE
of August 2023 (COMMERCIAL COURT)-02
(S/W) DWARKA COURTS, DELHI
CS (Comm) No. : 165/2020 9/9