Delhi High Court
Skechers Usa Inc & Ors vs Pure Play Sports on 25 May, 2016
Author: Vipin Sanghi
Bench: Vipin Sanghi
$~26.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ Date of Decision: 25.05.2016
% I.A. No.6279/2016 in CS(COMM) 573/2016
SKECHERS USA INC & ORS
..... Plaintiffs
Through: Mr. Jayant Bhushan, Senior Advocate
along with Mr. Aman Singhal,
Ms.Zoya Nafis, Ms. Raashi Jain and
Mr. Ketan Paul, Advocates.
versus
PURE PLAY SPORTS
..... Defendant
Through: Mr. Akhil Sibal, Mr. Rupesh Gupta &
Mr. Nikhil Chadha, Advocates.
CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI
VIPIN SANGHI, J. (OPEN COURT)
1. The operative part of the order was passed in Court today on this
application. I am proceeding to record the summary of my reasons for
granting ad interim injunction in favour of the plaintiffs.
2. The case of the plaintiffs is that the plaintiffs are engaged in the
business of designing, developing and marketing uniquely and distinctively
designed lifestyle footwear for men, women and children. Plaintiffs No.1 &
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 1 of 18
2 are incorporated in United States of America, plaintiff No.3 is
incorporated in India and is a marketing arm of plaintiffs No.1 & 2 in India.
The plaintiffs offer their footwear in distinct categories, one of them being
the SKECHERS GOwalk footwear line. The plaintiffs claim that their
product reflects a combination of style, comfort, quality and value that
appeals to a broad range of consumers. Its products are sold through
department and specialty stores, athletic and independent retailers, boutiques
and internet retailers. They are also available on e-commerce websites and
their own retail stores. The plaintiffs claim that the consumers are attracted
to the plaintiffs shoe designs on account of their youthful brand image and
fashion-forward designs.
3. In 2011, plaintiff No.1 introduced and launched its GOwalk series
designed for walking and casual wear. The products in the said series offer
performance features in a comfortable casual slip-on style. The product line
is known for its lightweight and flexible design and promotes natural foot
movement while walking. Since the launch of the original GOwalk series, it
has evolved through the second and third lines, i.e. GOwalk 2 and GOwalk 3
respectively. The plaintiffs state that the global net sales of GOwalk 3 shoes
(part of the GOwalk series) from January 1, 2014 to April 27, 2016 were
around USD 308 million (approximately INR 2000 crores) including around
USD 200,000 (approximately INR 14 crores) in India. The plaintiffs state
that they have sold over 85, 000 pairs of shoes in India during December
2014 to December 2015, and over 37,000 pairs of shoes between January
2016 to March 2016.
4. The plaintiffs use a variety of trademarks and other intellectual
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 2 of 18
property rights, including the mark SKECHERS. The plaintiffs state that
GOwalk 3 series has been advertised during 2015-16 through various
publications and magazines, such as Best Health, Chatelaine, Optimyz and
Women's Fitness, Men's Health, Myer Emporium Magazine, Shop Smart
Magazine, Vogue, Take 5 Magazine. The Plaintiff No. 1 has also promoted
GOwalk 3 series through advertisements in leading newspapers across the
globe, including advertisements in Sunday Tasmanian, Herald Sun
Newspaper, Women's Weekly, Wairapa Times, Wanganui Times, NZ
Women's Weekly, Sunday Telegraph, Bay of Plenty Times, Northern
Advocate.
5. The plaintiffs also state that the total expense made by them in India
in 2015 for marketing and promotion of their products is to the tune of
Rs.9.4 crores. During January 2016 to March 2016, the plaintiffs have
incurred promotional expenses to the tune of Rs.2.55 crores. The
advertisements in respect of GOwalk 3 shoes published in Magazines and
leading newspapers in India, including Femina and Filmfare.
6. GOwalk 3 incorporates more advanced performance technologies
including a high rebound "Goga Mat" insole, adaptive "GO Pillars" on the
outsole and "Memory Form Fit" for a custom-fit experience. The
identifying distinct features of the GOwalk 3 footwear of the plaintiffs are
enlisted as follows:
the positioning of responsive points on the sole of the shoe in
distinguishing colors;
Light weight of the shoe;
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Side "S" logo of Skechers; and
"Goga Mat" used in the cushioning of the inside sole of the shoe.
7. Apart from claiming exclusive ownership in the trade mark, the
plaintiffs also claim exclusive intellectual property in the unique elements
and features of its GOwalk 3 series of footwear which constitute a distinct
trade dress and acts as a unique source identifier of their footwear.
8. On account of the long, extensive and continuous use of the
distinctive trade dress by the plaintiffs No. 1 and 2, the use by any other
unrelated entity of the same, similar or deceptively similar trade dress would
cause, and is likely to cause in the mind of the consumer, and the trade, a
connection, affiliation or association with the plaintiffs No. 1 and 2.
9. The grievance of the plaintiffs against the defendants is that they have
introduced, and are marketing footwear which are exact replica and look-
alikes of the footwear designed, sold and marketed by the plaintiffs under
GOwalk 3 series. The grievance of the plaintiffs is that unique and distinct
elements and features comprising the trade dress of the plaintiffs' footwear
sold under GOwalk 3 series have been copied by the defendants, aimed at
misleading, confusing, and causing deception to the public and members of
the trade as to the source of origin of their footwear, and to claim a false
association with the plaintiffs, resulting in passing off their produces by the
defendant, as those of the plaintiffs. Apart from producing photographs of
the similar products, i.e. the plaintiffs products sold under the GOwalk 3
series and the similar products of the defendant, the original shoes were
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also produced before the Court by the plaintiffs to enable this Court to see
for itself and assess whether the defendants have adopted a near identical
trade dress to that of the plaintiff, which is likely to cause confusion
amongst consuming public with regard to the source from where the
defendants products originate. Though the plaintiffs have set out in their
plaint the comparison of several models/ products, I may for the present
purpose only take note of some of them. Some of these photographs
showing the comparison and the plaintiffs averments in relation thereto are
as follows:
Plaintiff Defendant's
The Plaintiffs' shoe has a very The visual characteristics of the
distinctive and unique outsole with outsole have been copied identically
responsive rebound Go Pillars in the Defendant's shoe including the
technology. positioning of Go Pillars
(aesthetically if not technically).
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Plaintiff Defendant's
The Plaintiffs' shoe has a very The position of the linings and
peculiar mid sole with multiple stitching on the mid sole has been
linings and stitching. The 'S' logo of copied on the Defendant's shoe. In
the Plaintiffs has been placed on the fact the position of placing the logo
right side of the shoe towards the has also been copied.
end.
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 6 of 18
Plaintiff Defendant's
The Plaintiffs' shoe has a very The back end of the Defendant's
distinctive get up at the back end of shoe is a blatant copy of the
the shoe. The triangular hole and u- Plaintiffs' shoe. The triangular hole
shaped lining and a creative patch has been identically cut and the
have been distinctively designed. linings and stitching at the back end
along with the U-shaped patch are
also identical to the Plaintiffs' shoe.
Plaintiff Defendant's
The insole of the Plaintiffs' shoe has The insole of the Defendant's shoe is
been designed using Skechers Goga a blatant copy of the visual features
Mat Technology with responsive of the Plaintiffs' shoe.
feedback and the heel is designed
with Skechers Memory Form Fit.
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 7 of 18
Plaintiff Defendant's
Plaintiff Defendant's
10. Mr. Bhushan, learned senior counsel for the plaintiffs submits that the
present is a passing of action in relation to the trade dress on the plaintiffs
goods which is unique and is clearly a source identifier. In support of his
submissions, Mr. Bhushan has placed reliance on the judgment in Colgate
Palmolive Company & Anr. Vs. Anchor Health and Beauty Care Pvt. Ltd.,
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 8 of 18
2003 (27) PTC 478 (Del), and Gorbatschow Wodka KG Vs. John Distillers
Limited, 2011 (47) PTC 100 Bom.
11. In Colgate (supra), the Court after referring the detailed submissions
of the parties and taking note of the decisions relied upon on other side
observed as follows:
"52. It is the overall impression that customer gets as to the
source and origin of the goods from visual impression of colour
combination, shape of the container, packaging etc. If illiterate,
unwary and gullible customer gets confused as to the source
and origin of the goods which he has been using for longer
period by way of getting the goods in a container having
particular shape, colour combination and getup, it amounts to
passing off. In other words if the first glance of the article
without going into the minute details of the colour combination,
getup or lay out appearing on the container and packaging
gives the impression as to deceptive or near similarities in
respect of these ingredients, it is a case of confusion and
amounts to passing off one's own goods as those of the other
with a view to encash upon the goodwill and reputation of the
latter".
12. In Gorbatschow (supra), it was the shape of the vodka bottle which
gave rise to the controversy in the proceedings. The plaintiff brought a quia
timet action to restrain the defendant from launching its product in a bottle
having the shape similar to that of the plaintiffs for vodka. The plaintiffs
alleged that the defendant had adopted a deceptive variation of the shape of
the bottles of the plaintiffs. The word mark of the defendant was, however,
markedly different from that of the plaintiff. Salute in respect of its vodka.
The Court found that the shape of the defendants bottle for vodka was
similar to that of the plaintiffs. The Court reiterated the well-settled legal
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 9 of 18
position of law as follows:
"18. Now, it is a well settled principle of law that in
considering as to whether the mark of the Defendant bears a
distinctive similarity to the mark of the Plaintiff, the Court must
have due regard to the overall impact of the rival marks. In
Hiralal Prabhudas vs. Ganesh Trading Co., a Division Bench
of this Court, after citing precedents formulated the test that
must be applied thus:
"What emerges from these authorities is (a) what
is the main idea or salient features, (b) marks are
remembered by general impressions or by some
significant detail rather than by a photographic
recollection of the whole,(c) over similarity is the
touchstone, (d) marks must be looked at from the
view that first impression of a person of average
intelligence and imperfect recollection, (e) overall
structure, phonetic similarity and similarity of idea
are important and both visual and phonetic tests
must be applied, (f) the purchaser must not be put
in a state of wonderment, (g) marks must be
compared as a whole, microscopic examination
being impermissible, (h) 1 1984 (4) PTC 155 VBC
16 nms3463.10-2.5 the broad and salient features
must be considered for which the marks must not
be placed side by side to find out difference in
design and (i) overall similarity is sufficient. In
addition, must also be taken into consideration the
nature of the commodity, the class of purchasers,
the mode of purchase and other surrounding
circumstances."
Consequently, what the Court must consider, prima facie,
at this stage, are the broad and salient features of the two rival
shapes. A meticulous attempt to find differences in the two
shapes on a comparison side by side is impermissible.
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 10 of 18
... ... The Defendant has no explanation whatsoever for
adopting that design. The fact that the Defendant made
enquiries prior to the registration of the mark can provide no
answer in the facts of this case. The Defendant is engaged in
the same trade and it is impossible to accept that the Defendant
would VBC 17 nms3463.10-2.5 not have been conscious of the
shape which was used by the Plaintiff for its bottles of Vodka
both internationally and in India.
The adoption of the shape by the Defendant is prima facie not
honest ... ...".
13. The Court relied upon John Haig and Company Limited v. Forth
Blending Company Limited, 70 RPC 259, wherein it had been, inter alia,
observed:
"If the goods of a trader have, from the peculiar mark or get-up
which he has used, become known in the market by a particular
name, the adoption by a rival or second trader of any mark or
get-up which will cause his goods to bear the same name in the
market is a violation of the rights of the first trader
The action of a trader who copies a rival's established get-up
need not be fraudulent, and he need have no intention of
obtaining any benefit from his rival's goodwill and reputation -
indeed he may be ignorant of his existence - but if the result of
his innocent action are that the public are likely to be misled,
he will be interdicted, per Halsbury, L.C., in Cellular Clothing
Coy. Ltd. v. Maxton & Murray (supra) at p. 31. If, however, the
Court is satisfied that the trader who is sued intended to obtain
some benefit from his rival's established get-up and was thus
fraudulent, the Court will be more ready to grant interdict,
"Kerly", p.576. The same principle was applied by the House
of Lords in Reckitt & Colman Products Limited Vs. Borden
Inc., 1990 (13) R.P.C. 341. In a judgment of the High Court of
Ontario in Jay-Zee Food Products Inc. vs. Home Juice Co. Ltd.,
32 C.P.R. (2d) 265, a similar principle was applied while
granting an interlocutory injunction:
I.A. No.6279/2016 in CS(COMM) 573/2016 Page 11 of 18
"In my view, there is really no doubt that the use of
the two bottles in the same area for the same
business must cause confusion between the wares
and business of the two companies. The
combination of the ears, the shape of the bottle and
the circle with the leaves would lead any but the
most sophisticated observer to the conclusion that
the products in either bottle emanated from the
same source."
14. Reliance was also placed on Kemp and Company v. Prima Plastics
Ltd., 2000 PTC 20 96 (Bom). In this decision, the learned Judge observed:
"If the Plaintiff has to succeed on the ground of passing off, he
must show something more than mere similarity between the
goods. Exceptions apart, where an article is shaped in an
unusual way not primarily for giving same benefit in use or for
any other practical purpose, but capricious in order purely to
give an article a distinctive appearance, characteristic of that
particular manufacturer's goods, a case may be made out by
the Plaintiff that he has reputation and goodwill in the
distinctive appearance of the article itself which could provide
him a cause of action in passing off if his goods were copied."
15. On the other hand, the submission of learned counsel for the
respondents Mr. Akhil Sibal, firstly, is that there is a vast price difference in
the products of the plaintiff and those of the defendant. He submits that the
word mark is also completely different, as the plaintiff uses SKECHERS
with its unique logo, whereas the defendants use PURE PLAY that their
distinct logo. Thus, there is no likelihood of confusion. Mr. Sibal submits
that the word mark of the parties are printed inside the sole of the shoes.
Therefore, any consumer who goes to buy shoes cannot, but, see the word
mark prominently. Mr. Sibal submits that the texture of the materials used
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in making the shoes in question is common to trade. The plaintiffs products
have the texture of a wiremash on the shoe upper, which is used by several
other manufacturers. Mr. Sibal submits by reference to the printouts from
the defendants website that the manner of display of the defendants shoes
does not betray the intention of the defendant to mislead or confuse the
public at large. He submits that even the defendants shoes are not amongst
the cheapest and, thus, the consumers who buys the said shows would do so
with full consciousness and knowledge. He further submits that the shoes of
the plaintiffs, and those of the defendant are sold in dedicated store.
Therefore, the consumer interested in buying plaintiffs shoes would go to
the plaintiffs exclusive stores, whereas those consumers who are interested
in buying the defendants shoes would go to their exclusive stores-thereby
eliminating any possibility of any confusion. Mr. Sibal submits that in
Gorbatschow (supra), the rights in the unique bottle shape of the plaintiff
had been got registered in several jurisdictions, and in India, the application
for registration of the plaintiffs design was pending. However, in the present
case, the plaintiffs have not got their design or trade dress (as a trademark)
registered, and no application has been made. He further submits that in
Gorbatschow (supra) the action before the Court was initiated before the
defendants had launched their product in the market. However, in the
present case, the defendants are also well-entrenched in the market, and are
selling their products. Mr. Sibal submits that in the seize and desist notice
issued by the plaintiffs on 09.03.2016, the figures with regard to its sales of
GOwalk3 series shoes was disclosed by the plaintiffs as "Over a million
GOwalk3 shoes have been sold worldwide of which around 35,000 have
been sold in India alone". However, the figure mentioned in the present
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application is different, and appears to be inflated.
16. Mr. Sibal has also sought to place reliance on the judgment of the
Division Bench of this Court in Kellogg Company Vs. Pravin Kumar
Bhadabhai & Anr., ILR (1996) II Delhi 11. In this case, while taking note
of Kerly's Law on trademarks, the Court observed that cases of passing off,
premised on get up or trade dress, are rather few, since traders do not rely on
get up alone to distinguish their goods. The trade names or word marks are
ordinarily present too. The Division Bench also referred to Fiasons Limited
Vs. EJ Gottwin, 1976 RPC 653 (3). In this case, the items in question were
grow-bags. The word mark affixed on their bags by the parties were distinct.
The Court held that it was inconceivable that anyone seeing the defendants
grow-bags would fail to observe that it was the product of the defendant, and
that an ordinary consumer would not be misled. The Court further held that
if the defendants grow-bag had not contained its word mark, or if word
marks had not been so prominently displayed, it may have reached a
different conclusion. Other similar instances were dealt with by the Division
Bench in the said decision. The Court rejected the argument of confusion
leading to passing off.
17. Mr. Bhushan, in his rejoinder, by reference to the record, has pointed
out that the shoes of the plaintiffs and the defendants are being sold even in
the same stores, and it is incorrect to suggest that the shoes of the plaintiffs
and the defendants are sold only on exclusive stores.
18. Having myself seen the shoes of the plaintiff and compared the same
with those of the defendants, I am, prima-facie, satisfied that the visual
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impression gathered from the trade dress of the competing products is that
trade dress of the plaintiffs product is substantially copied by the defendants
which is likely to result in confusion. There is every likelihood that an
unwary and gullible customer may get confused as to the source of origin of
the shoes of the defendants, and may assume that the same come from the
source of the plaintiff as the shoes of the defendants have a remarkable
resemblance with those of the plaintiffs. No doubt, the trademarks of the
plaintiff, i.e. SKECHERS is inscribed on the inner sole of the plaintiffs
shoes, and the defendants mark PUREPLAY is similarly inscribed on the
inner sole of the defendants shoes, and there is no similarity in the said two
word marks. However, that by itself, does not appear to be sufficient to
dispel the possibility of confusion in the mind of an unwary customer. This
is, because, the several aspects of trade dress are strikingly similar between
the shoes of the plaintiffs and those of the defendants and the overall get up
and trade dress is also markly similar. The word marks of the parties are
printed on the inner sole, which is not what catches the attention of a
consumer looking to buy a stylish shoe. As the plaintiffs themselves state -
and this is evident from a visual examination of the shoes in question, the
"selling point" of these shoes in their catchy colour combinations, and
texture combinations, coupled with their cuts and stitching styles. It is these
features that would catch the attention of the consumer and it is likely that
the consumers - who would be youngsters more often than not, would
overlook the labels printed inside the shoe sole which contain the word
marks. So far as the logos of the parties are concerned, though they are
printed on the sides of the shoe uppers, they are not all that prominent, as to
immediately strike to the mind of a consumer. The logos, by themselves,
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may not even cause brand recall to the consumers.
19. The two logos of the plaintiffs and the defendant, as affixed on the
sides of the shoe uppers of the respective parties are not the prominent and
striking features in the overall trade dress of either of the parties. The
submission of learned counsel for the defendant, premised on the different
word marks of the plaintiffs and the defendant is answered in Colgate
(supra) in the following words:
"56. ... ... It is the unwary, illiterate and gullible persons who
determine by arriving at a conclusion whether the infringed
goods are confusingly similar in colour combination, get up,
lay-out printed over the container or packing. If it is not so then
the offence of passing off will cease to have its existence once
the guilty party chooses a different trade name.
57. Words "Colgate" and "Anchor" are distinct and have not
an iota of similarities either in look or in sound. That is why the
ingredients of trade dress, get up, colour combination, lay out
of the container or packing acquire significance and relevance
for determining the offence of passing off. This criteria flows
from the concept of action of passing off developed over the
years that it is the similarities and not the dissimilarities which
go to determine whether the action for passing off is required
or not. That is why in trademark cases even the deceptive
similarities are considered sufficient for infringement of
trademark. If similarities of trade dress are substantial from the
look of the two goods, it comes within the mischief of passing
off".
20. If one were to apply the aforesaid test - as laid down in Colgate
(supra) and Gorbatschow (supra) to the facts of this case, at this stage it
would appear that the adoption of several unique features by the plaintiffs on
its GOwalk series3 footwear by the plaintiffs gives their shoes a unique
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trade dress which acts as a source identifier. The distinctive get up at the
back of the shoe with an inverted triangular and stitching/ lining in U shape
below the said cut, appear to be completely capricious and prima-facie
cannot be described as functional. The very distinctive and unique outsole,
and suspension rebound go pillars on the sole have been completely copied
by the defendant.
21. The onus would lie heavily on the defendant to explain as to why the
defendants have adopted the strikingly similar get up and trade dress in
respect of their shoes as that of the plaintiffs. Prima-facie, at this stage it can
be said that the defendants shoes are a result of a conscious and substantial
imitation of the colour combination, textures, style, cut and stitching of the
plaintiffs shoes. The copying of - what the plaintiffs describe as the
"responsive rebound go pillars technology", by the defendants on the soles
of their shoes, in my view, is a give-away of the defendants attempt to copy
the plaintiffs trade dress.
22. Prima facie, reliance placed on Kellogg (supra) appears to be
misplaced, as, in that case the Court did not consider the trade dress to be
confusingly and deceptively similar, and the word marks were prominently
displayed. The price difference argument does not impress me because,
even according to the defendant, its shoes are also expensive - though not
expensive as those of the plaintiff. The shoes of both parties, prima facie,
appear to be sold, inter alia, at same stores.
23. I am, thus, inclined to injunct the defendants, as the continued
impugned activity of the defendants would cause prejudice to the plaintiffs
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on a day to day basis. However, it is made clear that the above view is a
tentative view, and would not come in the way of the Court forming its view
upon hearing of the above application.
VIPIN SANGHI, J.
MAY 25, 2016 B.S. Rohella I.A. No.6279/2016 in CS(COMM) 573/2016 Page 18 of 18