Delhi District Court
Through vs Sh.Dipak Das on 29 May, 2023
IN THE COURT OF Sh. ANURAG SAIN,
DISTRICT JUDGE, (COMMERCIAL COURT)-01,
PATIALA HOUSE COURT, NEW DELHI
CS (COMM) 338/2020
NIKE INNOVATE C.V.
One Bowerman Drive, Beaverton
Oregon-97005, USA
Through
Its Constituted Attorney
Meena Bansal,
R/o 96, Sukhdev Vihar,
Mathura Road,
New Delhi-110025 ...Plaintiff.
Vs.
Sh.Dipak Das
S/o Sudhangshu Das
House No.1 & 3,
Plot No. 1414, Gali No. 23,
Baba Surdaas Colony,
Tilipat, P.S. Palla,
Faridabad-121003,
Haryana
Also at:
Sh.Dipak Das
S/o Sudhangshu Das
Gali No.6, Pandey Mother Dairy,
Baba Surdaas Colony,
Tilipat, P.S. Palla,
Faridabad-121003,
Haryana
....Defendant
Nike Innovate C.V. Vs. Dipak Das Page no.1 of 15
Date of institution of the case : 06.07.2020
Date on which judgment was reserved : 09.05.2023
Date of pronouncement of the judgment : 29.05.2023
Appearance: Sh.Amit Chanchal, Advocate for plaintiff.
None for defendant. (defendant is ex-parte).
Judgment
1.This is a commercial suit brought by the plaintiff for permanent injunction restraining infringement of trademarks and copyright, passing off, delivery up, rendition of accounts etc.
2. Briefly stated, it is the case of the plaintiff that the plaintiff company has been engaged in the manufacturing, distribution and sale of large variety of goods including footwear, athletic shoes, boots, clothing, bags of all kinds, sporting goods, watches and other timing devices, eye-wear, including sunglasses and protective eye-wear for the practice of sports, consumer electronic products, sports balls, golf equipment and other allied/related products. The plaintiff's name changed various times including recent change from M/s Nike International Limited to M/s Nike Innovate C.V. The trademark NIKE was initially registered in US in the year 1971 and the same trademark has been registered in India during the period 1979 to 1989 on different occasions under the Trade Marks Act 1999 for the goods mentioned therein falling in class 18 and 25. The details are given in the plaint itself and also relevant documents are annexed.
Nike Innovate C.V. Vs. Dipak Das Page no.2 of 15
3. It is averred in the plaint that the art work involved in plaintiff's said trademark/label/Trade name are original artistic work and the plaintiff is the owner and proprietor of the copy right therein within the meaning of the Indian Copyright Act, 1957.
4. It is asserted that plaintiff is the proprietor and has been using the trade mark/label/Trade name continuously, extensively, commercially, openly and exclusively in relation to the said goods and business and carrying on its business there under and has built up a worldwide trade, goodwill and reputation and acquired proprietary rights therein.
5. The plaintiff has also been regularly and continuously promoting their goods and business under its said distinctive trademark/label/ Trade name through different means and modes including through their advertisements, publicities, promotions and marketing and marketing research and has already spent enormous amounts of money and efforts thereon.
6. It is contended that plaintiff owns and uses and is registered proprietor of its well-known trade mark NIKE, across numerous jurisdictions of the world including India and is also the owner and the registered proprietor of the globally established trade mark "Swoosh design" in numerous countries including India and plaintiff has also established a strong Brand portfolio with several wholly owned subsidiaries including Cole Haan, Converse Inc. Hurley International LLC, NIKE Golf and Umbro Ltd.
Nike Innovate C.V. Vs. Dipak Das Page no.3 of 15
7. The plaintiff on account of excellent business of their goods under the trademark labels achieved many awards (mentioned in the plaint).
8. It is contended that defendant is engaged in manufacturing and marketing, sale, use, trading of readymade garments, apparels, clothing, sports-wear, shoes, footwear, boot, sports related accessories, and other allied/related products and also tags, labels, cut-outs, boards, accessories, machineries and allied and cognate items. The defendant has been arrayed as Ashok Kumar based on John Deo principle as applicable in India, as the name of the proprietor is not known. The defendant has adopted and started using the trademark NIKE (with or without SWOOSH DEVICE), DRI-FIT, FLYKNIT, NIKE AIR, in relation to their impugned goods and is also using the same trade dress along with the impugned trademark/label in order to give a false description to its goods to wrongly link the same with the plaintiff and to wrongly convey to the public and customers that the impugned goods are coming from the source and origin of the plaintiff.
9. It is also contended that defendant is not the proprietor of the impugned trade mark/label and has adopted and is using the same in relation to the impugned goods and business to which defendant has no right whatsoever. It is further asserted that due to defendant's impugned activities, the plaintiff is suffering huge losses both in business and reputation, which are incapable of being assessed in monetary terms.
10. On an application moved by the plaintiff under Order Nike Innovate C.V. Vs. Dipak Das Page no.4 of 15 39 Rule 1 and 2 and under Order 26 Rule 9 r/w Section 151 CPC, after hearing the arguments, vide order dated 08.07.2020, keeping in view the facts and circumstances of the case, finding the case of the plaintiff prima facie strong on merits and observing that in case injunction was not granted, it would suffer irreparable loss and its goodwill would be frittered, restrained the defendant by itself/themselves as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists etc. are hereby restrained from manufacturing, marketing, using, selling, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit or online marketplaces or online websites through social medias or by any other mode or manner dealing in or using the impugned trade mark/label NIKE (with or without Swoosh Device), DRI-FIT, FLYKNIT, NIKE AIR, or any other word/mark/trade Mark/Label which may be identical with and/or deceptively similar to the Plaintiff's said Trade mark/Label in relation to their impugned goods and business of readymade garments, apparels, clothing, sports-wear, shoes, footwear, boot, sports related accessories and other allied/related products, tags, labels, cut-outs, boards, accessories, machineries and allied and cognate items from doing any other acts or deeds amounting to or likely to.
11. Local Commissioners were also appointed to inspect the premises of the defendant and take into custody all the impugned goods Inspect the premises and take into custody the impugned goods, sign boards, advertisement materials etc. bearing the impugned trademark/trade name or any other Nike Innovate C.V. Vs. Dipak Das Page no.5 of 15 trademark/trade name deceptively similar to the Plaintiff's said trademark/trade name and make inventory thereof.
12. During the execution of the commissions on 16.07.2020, huge quantity of infringed goods were recovered. Application was moved for substitution since earlier the orders were against John Doe/unknown persons. This court vide order dated 24.09.2020 on the basis of report of the Local Commissioner, substituted the John Doe with defendant Dipak Das.
13. Defendant was duly served through publication on 27.03.2021. As neither the defendant appeared nor filed any written statement, hence, he was proceeded exparte vide order dated 02.11.2021 by ld. Predecessor of this Court.
14. In order to prove its case, plaintiff examined Sh. Anand Arya, AR of the plaintiff as PW-1. He tendered his affidavit Ex.PW-1/A in evidence and proved the following documents:
S. Documents Exhibit
NO
1 Photographs of the products under Ex.PW-1/1
the Trade mark/label of the plaintiff. (colly) 2 Photographs of the impugned Ex.PW-1/2 products under the Trade mark/label (colly). of the defendant.
3. Analysis report regarding impugned Ex.PW-1/3 products under the impugned trade (colly).
mark/label of the defendant Nike Innovate C.V. Vs. Dipak Das Page no.6 of 15
4. Status and registration certificates of Ex.PW-1/4 some of the trademar regsitrations in (Colly). India
5. Copy of Legal Proceeding Ex.PW-1/5 Certificates with respect to the (colly) plaintiff's registered trademark/labels (OSR)
6. Assignment Deed of the plaintiff Ex.PW-1/6 and Schedule A (colly).
7. Power of attorney executed by the Ex.PW-1/7 plaintiff company (OSR)
8. Documents showing sals of the Ex.PW-1/8 plaintiff's products withing the (colly).
jurisdictionof this Hon'ble court.
9. Report of Ld. Local Commissioner. Ex.PW-1/9 (colly)
10. Affidavit filed in compliance of Ex.PW-
Order XI Rule 6 (3) of CPC 1/10
15. I have heard Ld. Counsel Sh.Amit Chanchal for the plaintiff and perused the record.
16. A perusal of the unrebutted testimony of PW-1 and the documents placed and exhibited on record reveals that the plaintiff is the registered proprietor of the trademark 'Nike' engaged in the business of manufacture, distribution and sale of large variety of goods including footwears, athlete shoes, boots,clothings, sporting goods, watches, eye-wears, including sunglasses, consumer electronic products, sport balls and/or allied/related products. Earlier it was known by the name of Nike International Limited. The documents show that Nike was originally known as Blue Ribbon Sports BRS which was found in 1964. It adopted the mark 'Nike' in 1971 which it had been using in stylized manner in conjunction with the other Nike Innovate C.V. Vs. Dipak Das Page no.7 of 15 marks/words 'Swoosh Device' in relation to its goods/business. It has created many marks over a period of time viz., Nike, Nike Golf, Nike Pro, Nike+, Nike Skateboarding, Nike Bauer, Swoosh Device etc. as evident from para 3 of the plaint. The plaintiff has given a history of adoption and expansion of its trade/marks stating that the word/mark 'Nike' is an essential feature of the plaintiff's trading style/trade name. The artwork involved in the same is the original artistic work of which it is the owner within the meaning of Section 14 of the Copyrights Act, 1957. It has applied for and obtained various trademark registrations pertaining to its mark/label as detailed in para 7 in class 25 and 18 including other classes which adoption is honest and bonafide to the exclusion of others. It has been using the same continuously and uninterruptedly in relation to its goods and business and acquired enormous amount of goodwill and reputation. The same is evident from the photographs Ex.PW-1/1 (colly) and Ex.PW-1/2 (colly).
17. Testimony of PW-1 and the documents reveal that it operates in more than 160 countries around the globe including India. It is known for its quality. It invests heavily on R & D and its products are available at various malls within the jurisdiction of this court. It also got the domain name registered in its favour i.e. www.nike.com, www.nikeinc.com which are distinctive and they have acquired secondary significance. The public trade/industry worldwide distinguish the plaintiff's goods under the said mark/domain name from the plaintiff's source and origin alone and they have acquired secondary significance with the said goods. It is also the proprietor of Nike Innovate C.V. Vs. Dipak Das Page no.8 of 15 trademark/label/tradename/domain name. Its goods are highly recognized and are in demand and its mark has become a well known trademark within the meaning of Section 2 (1) (zg) of the Act.
18. Testimony of PW-1 and the documents reveal that plaintiff never authorized anyone to manufacture/trade goods using the said mark/trade-name.
19. Testimony of PW-1 and the reports of the Local Commissioner reveal that in June 2020, the plaintiff's came across with the goods of the defendant who were manufacturing and marketing jerseys,t-shirts, apparels, clothings, sportswear and other allied/related products including tags using the trademark 'Nike' (with or without Swoosh Device), Swoosh Device, FLYKNIT, NIKE AIR, DRI-FIT in relation to their impugned goods. On study and comparison, it found that impugned goods are identical with and/or deceptively similar to the plaintiff's trademark/label/ tradename/domain name in each and every respect including phonetically, visually, structurally in its basic idea and essential feature. The defendant has copied the artistic features involved in the mark/trade label/tradename/domain name with an intention to wrongly convey the public and customers that the impugned goods are coming from source and origin of the plaintiff though they are neither the proprietors nor were authorized to do so. The very act of the defendant amounts to infringement as provided under Section 29 (4) of the Trademarks Act, 1999. The intention of the defendant appeared to be passing off their goods as those of the Nike Innovate C.V. Vs. Dipak Das Page no.9 of 15 plaintiff to earn illegal profits damaging the goodwill and reputation of the plaintiff. Averments show that because of the impugned acts, the plaintiff has suffered loss in reputation and business. The said goods of the defendant are available on various websites and in the stores/shops located in the region of New Delhi District. Reports of the Local Commissioner reveal that counterfeit goods were seized from the place of the defendant. The plaintiff has filed the photographs of the products bearing trademark/labels of plaintiff Ex.PW-1/1 (colly) and the photographs of the impugned goods/products under the impugned trademark/label of defendant Ex.PW-1/2 (colly) and on a careful comparison, I find that impugned goods are identical and deceptively similar to the plaintiff's trademark/label/tradename/domain name in each and every respect including phonetically, visually, structurally in its basic idea and in its essential features. The documents Ex.PW-1/4 show that plaintiff is the registered owner of the trademarks which are well known trademarks. It incurs huge expenditure on promotion of its goods. The plaintiff has submitted the analysis report regarding impugned products Ex.PW-1/5.
20. There is no material indicating that defendant had any authority to manufacture/sale/trade the impugned goods using the trademark/tradename of the plaintiff.
21. I am of the view that plaintiff has proved its case and is entitled to an equitable relief of permanent injunction. The suit of the plaintiff is accordingly decreed. The defendant by itself/themselves as also through his/their individual Nike Innovate C.V. Vs. Dipak Das Page no.10 of 15 proprietors/partners,agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf are restrained from manufacturing, marketing, using, selling, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit or on online market places or online websites or through social medias or by any other mode or manner dealing in or using the impugned trademark/label NIKE (with or without SWOOSH DEVICE), FLYKNIT, NIKE AIR, DRI-FIT or any other word/mark/trademark/label which may be identical with and/or deceptively similar to the plaintiff's said trademark/label NIKE (with or without SWOOSH DEVICE), DRI-FIT, FLYKNIT, NIKE AIR, DRI-FIT and its other variants/formative trademark/labels in relation to their impugned goods and business of readymade garments, apparels, clothing, sports-wear, shoes, footwear, boot, sports related accessories and other allied/related products [hereinafter referred to as 'the impugned goods' & 'impugned business'] ; tags, labels, cut-outs, boards, accessories, machineries and allied and cognate items and from doing any other acts or deeds amounting to or likely to infringement of plaintiff's aforesaid registered trademark NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT, passing off and violation of the plaintiff's right in the plaintiff's said trademark NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT, DRI-FIT and its other variants/formative trademarks/labels; violation of plaintiff's proprietary rights in its trade name; infringement of plaintiff's copyrights in its labels NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT,DRI-FIT as prayed for in prayer Clause 37
(a) of the plaint.
Nike Innovate C.V. Vs. Dipak Das Page no.11 of 15
22. Now coming to the damages, though the plaintiff has not filed any document to substantiate its claim for damages but there is no denial of the fact that because of the impugned activities of the defendant, the plaintiff has suffered loss in its business and reputation since in such like business, the customers and trade channels are the same. In the instant case, the defendant had tried to encash the goodwill and reputation of the plaintiff by passing off their goods as that coming from the source and origin of the plaintiff.
23. In the present case, Local Commissioner was appointed by the Court vide order dated 08.07.2020 and as per the report of the Local Commissioner dated 23.07.2020, huge amount of infringing articles were seized by her, which was detailed in her report. From the report of local commissioner and pleadings on record, it is clear that the defendant was engaged in the business of selling and manufacturing various counterfeit products of Nike brand.
24. In the case of Hero Honda Motors Ltd v/s Shree Assuramji Scooters, 2006 (86) DRJ 113, it was observed that the time has come when the courts dealing actions for infringement of trademarks,copyrights etc should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages Nike Innovate C.V. Vs. Dipak Das Page no.12 of 15 also, which may spell financial disaster for them. It was held that in such cases, damages must be awarded and the defendant who chooses to stay away from the proceedings of the court, should not be permitted to enjoy the benefits of evasion of court proceedings.
25. Hon'ble Delhi High Court in Proctor & Gamble Company v. Joy Creators 2011 (450) PTC 541 Del, outlined the factors behind grant of damages. The relevant part of the said judgment reads as under:
23. Also, the Court needs to take note of the fact that a lot of energy and resources are spent in litigating against those who infringe the trademark and copyright of others and try to encase upon the goodwill and reputation of other brands by passing of their goods and/or services as those of that well known brand. If punitive damages are not awarded in such cases, it would only encourage unscrupulous persons who actuated by dishonest intention, use the well-reputed trademark of another person, so as to encase on the goodwill and reputation which that mark enjoys in the market, with impunity, and then avoid payment of damages by remaining absent from the Court, thereby depriving the plaintiff an opportunity to establish actual profit earned by him from use of the infringing mark, which can be computed only on the basis of his account books. This would, therefore, amount to putting premium on dishonesty and give an unfair advantage to an unscrupulous infringer over those who have a bona fide defense to make and therefore come forward to contest the suit and place their case before the Court.
26. In the instant case also, the defendant stayed away from the proceedings and from the testimony of the plaintiff and report on spot proceeding prepared by the Local Commissioner, Nike Innovate C.V. Vs. Dipak Das Page no.13 of 15 it is clear that the defendant is indulged in manufacturing or selling or offering for sale of impugned goods. Thus, in view of the aforesaid, I am of the view that the plaintiff is entitled to compensatory and punitive damages to the extent of Rs.2.0 lakhs as a consequence of infringement of the trademark of the plaintiff by the defendant.
27. In view of the aforesaid discussions, a decree of permanent injunction is passed in favour of the plaintiff and against the defendant by itself/themselves as also through his/their individual proprietors/partners,agents, representatives, distributors, assigns, heirs, successors, stockists and all other acting for and on their behalf are restrained from manufacturing, marketing, using, selling, trading, soliciting, importing, exporting, displaying, advertising, purveying, intending to sell/solicit or on online market places or online websites or through social medias or by any other mode or manner dealing in or using the impugned trademark/label NIKE (with or without SWOOSH DEVICE), DRI-FIT, FLYKNIT, NIKE AIR or any other word/mark/trademark/label which may be identical with and/or deceptively similar to the plaintiff's said trademark/label NIKE (with or without SWOOSH DEVICE), DIR-FIT, FLYKNIT, NIKE AIR and its other variants/formative trademark/labels in relation to their impugned goods and business of Readymade garments, apparels, clothing, sports- wear, shoes, footwear, boot, sports related accessories and other allied/related products [hereinafter referred to as 'the impugned goods' & 'impugned business'] ; tags, labels, flags, cut-outs, boards, accessories, machineries and allied and cognate items Nike Innovate C.V. Vs. Dipak Das Page no.14 of 15 and from doing any other acts or deeds amounting to or likely to infringement of plaintiff's aforesaid registered trademark NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT, DRI-FIT; passing off and violation of the plaintiff's right in the plaintiff's said trademark NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT, DRI-FIT and its other variants/formative trademarks/labels; violation of plaintiff's proprietary rights in its trade name; infringement of plaintiff's copyrights in its labels NIKE, SWOOSH DEVICE, NIKE AIR, FLYKNIT,DRI-FIT as prayed for in prayer Clause 37 (a) of the plaint. A decree of damages is also passed in favour of plaintiff and against the defendant for a sum of Rs. 2.0 lakhs. The plaintiff shall also be entitled to the cost of the proceedings.
28. Decree sheet be prepared accordingly.
29. File be consigned to record room.
Pronounced in the open Court (Anurag Sain)
on this 29th day of May, 2023 District Judge
(Commercial Courts)-01
New Delhi District,
Patiala House Courts
New Delhi
Nike Innovate C.V. Vs. Dipak Das Page no.15 of 15