Delhi High Court - Orders
Crossfit, Llc vs Mohan Lal Sirvi on 30 October, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 835/2022 & I.A. 20324/2022
CROSSFIT, LLC ..... Plaintiff
Through: Mr. Saif Khan, Mr. Shobhit Agarwal
and Mr. Prajjwal Kushwaha, Advs.
(M:7791065506)
Versus
MOHAN LAL SIRVI ..... Defendant
Through: Mr. Arnav Goyal, Adv. (8529644576)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 30.10.2023
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Crossfit LLC, a company incorporated in United States of America. The suit has been filed against the Defendant - Mohan Lal Sirvi for running and operating a gym and fitness centre using the mark 'CROSSFIT' unauthorisedly.
3. The plaint avers that the Plaintiff is mainly engaged in the business of providing products and services in the health, fitness training and competition, and nutrition space. The Plaintiff's business traces its origin to its first gym called 'CrossFit Santa Cruz' started in 1995 in California, USA by its founder, Greg Glassman.
4. It is claimed that the mark 'CROSSFIT' is an arbitrary mark, originally coined and adopted by Mr. Glassman in 1985. Thereafter, the Plaintiff has been continuously using the mark 'CROSSFIT' in commercial space in relation to its products and services. The Plaintiff also used the mark 'CROSSFIT' as a part of its domain name www.crossfit.com, which This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:15 was registered in 1999.
5. The Plaintiff is also the registered proprietor of the mark 'CROSSFIT' under various classes in India which are valid and subsisting. The details of the Plaintiff's trade marks in India are provided below:
6. The Plaintiff has also provided a list of all of its registrations granted in other jurisdictions at paragraph 10 of the plaint.
7. The Plaintiff's case is that the Defendant is the sole proprietor of the business under the name 'Cross Fit Gym', which is a proprietorship firm owned and managed by him. It has been offering fitness services under the mark 'CROSS FIT' and advertising its services through various social media platforms. It is stated that the Defendant also uses the mark 'CROSS FIT' as part of hashtags, course names, etc., so as to gain more 'hits' on online searches. The Defendant also had virtual presence, and operated an social media pages.
8. According to the Plaintiff, the mark 'CROSSFIT' is a "well-known"
mark under Section 2(1) (zg) of the Trade Marks Act, 1999. Vide order dated 2nd December, 2022, an interim injunction was granted by this Court This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:15 in the following terms.
"22. Prima facie use of the impugned marks, which are identical to Plaintiff mark, for soliciting business from public at large in absence of any licence authorisation/ license from Plaintiff amounts to infringement. The use and adoption infringing mark by Defendant prima facie appears to an attempt to create unauthorized association with Plaintiffs mark; targeting customers to deceive them into believing that Defendant is an authorized affiliated/ licensee of Plaintiff; balance of convenience also lies in favour of Plaintiff and against the Defendant; irreparable loss would be caused in ease an ex- parte injunction is not granted. Accordingly, till the next date of hearing, Defendant or its partners, parties or any such person acting for and on its behalf are restrained from using in the course of trade, the mark 'CROSS FIT' and logo or any other mark/ logo which is identical and/ or deceptively similar to Plaintiff's mark 'CrossFit', including as part of domain name, social media, hashtags, metalags, email IDs, etc. and offering any services as 'CROSS FIT' amounting to infringement of the trademark and passing off and Defendant is further directed to immediately take down all posts, listings, pictures etc. mentioning the word/ mark 'CROSS FIT' from all websites, webpages, social media pages run by the Defendant including content available on Justdial and social media platforms mentioned above."
9. Vide the said order, a Local Commissioner under Order XXVI Rule 9 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:16 CPC was also appointed. A perusal of the Local Commissioner's report dated 12th December 2022, shows that the Defendant had substantially used the mark/name 'CROSS FIT GYM' both in the premises located at Malviya Nagar, Jaipur, Rajasthan and on its stationery etc.
10. Further, the Ld. Counsel for the Plaintiff points out that in the present case, the Defendant had stated in paragraph 8 of the written statement as under:
"8. That without prejudice to the rights of the defendant in and for the trademark "CROSS FIT"
and the submissions made in this Written Statement, the defendant humbly submits that the defendant has already ceased to the use of the mark "CROSS FIT" and does not intend to use the same in future."
11. It is stated by the Defendant in its written statement, that it adopted the mark 'CROSS FIT' in 2017 and has been using the mark since then. The relevant extract of the written statement is as follows:
"4. That, the suit is bad on account of delay, latches and acquiescence. That, the defendant adopted the trademark "CROSS FIT" in the year 2017, honestly and bonafidely. The defendant adopted the same honestly and bonafidely, as the mark denotes a name/type/manner of exercise which is very common and generic in nature. The defendant has been using the mark since 16.05.2017 after filing application for registration of trademark before the trade mark registry and has been carrying out various advertisement and promotions openly, widely through various medias of advertisement and publicity during the past 5 years with bonafide intention and to the complete knowledge of the plaintiff. In fact, having complete This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:16 knowledge open, contentious and extensive use coupled promotions and advertisement by the defendant of the trademark "CROSS FIT" in the city of Jaipur, Rajasthan, the plaintiff did not pursue the matter after sending a demand letter dated 05.02.2020 through E-mail, admittedly, acquiesced in the use of the trademark "CROSS FIT" by the defendant."
12. In Cross Fit Inc. v. Gurpreet Singh [CS (OS) No. 2114/2014, judgment dated 30th October 2015], this Court declared 'CROSSFIT' as a well-known mark under Section 2(1) (zg) of the Trade Marks Act, 1999. The relevant portion of the decision of this Court is as follows:
"15. The plaintiff's mark CrossFit is a well-known mark under Section 2(1)(zg) of the Trademarks Act, 1999 and under Section 11(9) and 11(10) along with Section 11(6) and (7) of the Act."
13. At this stage, the Defendant submits that it does not intend to re- commence the use of the mark/name 'CROSS FIT'.
14. Considering the following aspects i.e.,:
That the Plaintiff's mark has been declared as "well-known" under Section 2(1)(zg) of the Trade Marks Act, 1999, That there are various registrations existing in favour of the Plaintiff; The prior adoption of the said mark 'CROSSFIT' lies in favour of the Plaintiff, and Statements made by the Defendant in the written statement and recorded vide order dated 26th April 2023, the Defendant stated that he would give up the use of the impugned mark 'CROSS FIT'. the suit deserves to be decreed in terms of paragraphs 53(a) to (d) of the plaint. The Defendant shall take down all listings on social media platforms This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:16 and other online listing within four weeks, if not done yet.
15. Insofar as the damages/costs are concerned, ld. Counsel for the Plaintiff submits that the Plaintiff is entitled to a decree without leading any additional evidence. Ld. Counsel for the Defendant submits that the Defendant is willing not to pay any damages, inasmuch as 'CROSS FIT' would be deemed to be a descriptive mark. Mr. Khan, ld. Counsel appearing for the Plaintiff submits that the Defendant has applied for the mark 'CROSS FIT' and is not entitled to take this defence. Ld. Counsel for the Plaintiff may move an appropriate application in accordance with law.
16. The matter shall proceed as part-decreed, and the interim injunction application I.A.203244/2022 under Order XXXIX Rule 1 and 2 of CPC shall be disposed of based on the decree.
17. List on 16th January, 2024.
PRATHIBA M. SINGH, J.
OCTOBER 30, 2023/dk/bs/dn This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 31/10/2023 at 21:50:17