Delhi District Court
Puma Se vs Tejasvi Mangla on 2 December, 2023
IN THE COURT OF SH. SANJEEV AGGARWAL
DISTRICT JUDGE (COMMERCIAL)-02
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM)-373/2022
CNR NO. DLND010034792022
PUMA SE
PUMA Way 1
Herzogenaurach, 91074 Germany
Also at -
117,A22,
WEA, Ajmal Khan Road
Karol Bagh
New Delhi
110005 ....Plaintiff
Versus
Tejaswi Mangla
12A/28,
Basement,Saraswati Marg,
W.E.A
Karol Bagh,
New Delhi - 110005 .... Defendant
Date of institution of suit : 22.04.2022
Date of reserving judgment : 21.11.2023
Date of pronouncement : 02.12.2023
JUDGMENT
1. Vide this judgment, I shall dispose off the present suit filed CS (COMM) 373/2022 Page No. 1 of 32 by the Plaintiff u/S. 134 & 135 of Trademarks Act, 1999 for permanent injunction restraining infringement of trademark, passing off, unfair trade competition, rendition of account, damages delivery-up etc.
2. Brief facts, which can be taken from the record are as under :
1. That Plaintiff is a Germany-based multinational corporation that is 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 designs. Puma is the proud sponsor of more than 30 national soccer teams in five different FIFA confederations. Furthermore, the sports giant has also enjoyed endorsement of some famous soccer celebrities like Pelé, Diego Maradona, Johan Cruyff, Enzo Francescoli and Lothar Matthäus. Puma's track suits and running shoes are simply one of the best in the world.
2. 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. PUMA offers performance and sport-inspired lifestyle products in categories such as Football, Running, Training and CS (COMM) 373/2022 Page No. 2 of 32 Fitness, Golf, and Motorsports. It engages in exciting collaborations with renowned design brands such as Alexander McQueen 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.
3. Those 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.
4. 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 CS (COMM) 373/2022 Page No. 3 of 32 affiliates the world over 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".
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5. That due to the global success of its products, the Plaintiff 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.
Needless to say, that Plaintiff's mark PUMA is a valuable asset to the Plaintiff business given the immeasurable reputation and goodwill amongst the purchasing public.
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6. 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 CS (COMM) 373/2022 Page No. 4 of 32 dates back to the year 1948.
Some of the worldwide registrations of Plaintiff's mark:
Trade Mark Country Regn. No. Regn. Date Cl.PUMA GERMANY 608870 01.10.1948 25 PUMA USA USA 797843 19.10.1965 25 PUMA AUSTRALIA 228918 15.05.1969 28
7. That the Plaintiff is also the registered proprietor of the trade mark PUMA & its abovesaid logos and its variants in several classes in India. Set out below are the Plaintiff's trade mark registrations for the PUMA and PUMA variant trade marks in India:
CS (COMM) 373/2022 Page No. 5 of 32Trade Mark Registration Filing date Class Renewed No. Status PUMA 323053 15/02/1977 18 15/02/2025 (WORD MARK) PUMA 323054 15/02/1977 25 15/02/2025 (WORD MARK) 450142 25/02/1986 18 25/02/2026 559635 03/10/1991 24 03/10/2028 699153 22/02/1996 09 22/02/2026 699154 22/02/1996 03 22/02/2026 700541 04/03/1996 16 04/03/2026 CS (COMM) 373/2022 Page No. 6 of 32 1264294 03/02/2004 41 03/02/2024 The abovesaid registered trademarks are valid and subsisting in the Register maintained by the Indian Trade Marks Registry and has full legal force.
8. That Puma trade mark/ trade name has been registered in the name of the Plaintiff in India bearing registration no. 450143 class: 25, 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. class 18 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, harness and saddler. Shoes and parts thereof which has been granted in favor of the Plaintiff for its distinctive mark is herein. The said registrations granted in favor of the Plaintiff are valid and subsisting and has full legal force. The Plaintiff has the exclusive right to use the said mark in view of the statutory rights available with the Plaintiff Company under the Trade Marks Act, 1999.
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9. By virtue of prior international and Indian registration, immense reputation, actual use and sales in India, spill-
CS (COMM) 373/2022 Page No. 7 of 32over of the said reputation into India, long-standing use, vast publicity and promotion, the trademarks PUMA and logo has earned substantial goodwill and reputation and members of the trade and the public associate the said trademark with the Plaintiff and no one else. In the year 2019, the Plaintiff's mark PUMA and logo was ranked at 6th position by Forbes in its list of 'Forbes Fab 40' for the first time with brand value of $4 billion. In 2019, the Plaintiff's PUMA and logo became number one sportswear brand in India leaving behind its arch rivals.
10.In addition to the above, the Plaintiff's trade mark PUMA has also been declared as well-known trade mark in India by the Trade Marks Registry and the same was published in Trade Marks Journal No: 1934, 30/12/2019. Further, in the matter titled Puma Vs Uniqlo-TM 128/2018, the Ld. ADJ of Saket District vide its order dated 31.07.2018 while passing an interim order against the Defendant observed that the Plaintiff's PUMA is well-known in CS (COMM) 373/2022 Page No. 8 of 32 India.
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11.The Defendant is engaged in the business of stocking, selling, supplying garments (including track pants, T-
shirts etc.) and shoes under the mark PUMA, logo without authorization/ approval of the Plaintiff. The Defendant has been impleaded in the capacity of Ashok Kumar- John Doe as the name of the Defendant (s) is unknown to the Plaintiff at this point of time.....
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12.It is most respectfully submitted that the Plaintiff recently in the 3rd week of March 2022 through its representatives/field force was shocked to notice that the Defendant is stocking/supplying & selling counterfeit PUMA branded garments including track pants, T-shirts, and shoes, etc. throughout Delhi. The Plaintiff's representative visited the Defendant's premises and met the staff/salesman and enquired about Puma branded footwear and garments. It was revealed that the Defendant is stocking/supplying/selling Puma branded garments including track pants, T-shirts, and shoes, etc to the customers. It was further revealed that the Defendant CS (COMM) 373/2022 Page No. 9 of 32 is also supplying the Puma branded products throughout Delhi. Thereafter, the Plaintiff's representative enquired about the owner of the premises, however the staff did not reveal the identity of the owner of the premises. The Plaintiff's representative managed and purchased the Puma branded track pant from the Defendant, however no invoice was issued by the Defendant. The photograph of the products of Puma branded product is reproduced hereinbelow:
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13.That the Defendant adoption of identical trade mark/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 CS (COMM) 373/2022 Page No. 10 of 32 mark/logo is a calculated act to cause loss and injury to the Plaintiff's goodwill and its reputation & business and to dilute the distinctiveness of Plaintiff's mark PUMA and logo. 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.
14.The Defendant, by adoption of an identical mark PUMA and 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 logo only with the Plaintiff and no one else.
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15.That this Hon'ble Court has the jurisdiction to entertain and try the present suit as:
i. the Plaintiff is carrying on business within the CS (COMM) 373/2022 Page No. 11 of 32 jurisdiction of this Hon'ble Court through its various stores in Delhi including its stores at 42/A, Ground Floor, Khan Market, Opposite Gopal Mandir, New Delhi- 110003 and 01, F16, Rajiv Chowk, Block F, Connaught Place, New Delhi, Delhi 110001;
ii. the Plaintiff sells/ offers their wide range of products through online stores/ e-commerce websites such as www.flipkart.com, www.amazon.in, www.lifestylestores.com;
iii. The Hon'ble court also has jurisdiction since the Plaintiff's website www.puma.com is an interactive website and accessible to the consumers and general public at Delhi and the consumers in Delhi and those residing within the territorial jurisdiction of this court view and purchase the Plaintiff's products. It is a settled position that the possibility to conclude transactions through a website at a particular place is virtually identical to a seller having a shop in that place in the real world. Therefore, this Hon'ble Court has the territorial jurisdiction to try and entertain the present suit in view of section 134(2) of the Trade Marks Act, 1999. iv. The Plaintiff submits that the Hon'ble Court also has jurisdiction under Section 20 of CPC as the CS (COMM) 373/2022 Page No. 12 of 32 Defendant is residing in Delhi and further carrying on its business of trading, supplying/selling the counterfeit branded products by using the Plaintiff's abovesaid mark/logo to the customers and general public residing within the jurisdiction of this Hon'ble court. Therefore, the same gives jurisdiction to the Hon'ble Court to entertain the present suit.
v. The Plaintiff is under the imminent and credible threat or apprehension that the Defendant would commence sale and supply the counterfeit products at a large scale to other traders and general public residing within the jurisdiction of this Hon'ble court and might have created accounts under different alias with online portals for selling/ supplying the spurious and counterfeit Puma products to the general public residing within the jurisdiction of this Hon'ble court. Hence, the cause of action has also arisen within the territorial jurisdiction of this Hon'ble Court. The products of the Defendant are being made available and purchased by the general public residing within the jurisdiction of this Hon'ble Court.
vi. The Plaintiff also invokes jurisdiction of this court within the meaning of Section 19 of the Civil CS (COMM) 373/2022 Page No. 13 of 32 Procedure Code as the Defendant by adopting identical trade mark has committed and violated the Plaintiff's intellectual property rights as well as common law rights. In other words, such wrong has been done within the local limits of the jurisdiction of this Court due to sale of the impugned products to public residing within the jurisdiction of this Hon'ble court. Further part of cause of action has accrued within the jurisdiction of this Court. Thus, conferring jurisdiction on this court.
Therefore, the present suit has been filed by the Plaintiff for permanent injunction restraining infringement of trademark, passing off, unfair trade competition, rendition of account, damages delivery-up etc.
3. Vide order dated 29.04.2022, an ad interim ex parte order was passed in favour of the Plaintiff and against the defendant, thereby restraining the defendant, its proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors are hereby restrained from stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including garments and footwear/or any other products including accessories under the Plaintiff mark PUMA and logo and any other mark/logo CS (COMM) 373/2022 Page No. 14 of 32 which is identical and similar to the Plaintiff's mark PUMA and logo.
Vide same order dated 29.04.2022, a Local Commissioner was also appointed for the seizure of the infringing products from the defendant's premises. Pursuant thereto, the commission was duly executed.
4. The local commissioner in her report has reported that on 07.05.2022, she visited 12A/28, Basement, Saraswati Marg, W.E.A Karol Bagh, New Delhi - 110005 and met Mr. Tejaswi Mangla, owner of the property and explained the court order dated 29.04.2022 to him. The Local Commissioner found several infringing products bearing the trademark and logo of the Plaintiff PUMA. She found total 704 T-shirt pieces and 3528 pieces of Track Pants bearing trademark and logo of the Plaintiff PUMA, which were seized from the premises and handed over to the Defendant on superdari.
5. Summons of the suit were issued to the Defendant, and he entered appearance through counsel on 28.05.2022. The Defendant filed his written statement on 21.05.2022 alongwith affidavit of admission / denial of documents of the plaintiff.
6. The relevant extracts of the written statement filed on behalf of the defendant are reproduced as under :
1. That the present suit is not maintainable neither CS (COMM) 373/2022 Page No. 15 of 32 on law nor on facts and is filed malafide and fails to disclose any just, cogent and enforceable cause of action against the answering Defendant as the Defendant is not dealing with the goods under the trademark alleged in the plaint. It is vitiated by the Plaintiff's willful suppressions and concealments. The Plaintiff is not entitled to any reliefs prayed for. The Plaintiff has filed a false, fabricated and concocted suit under Trade Marks Act, 1999 against the present Defendant.
2. That the Plaintiff has merged various cause of action in one suit which is not permissible in law.
Therefore the present suit is nothing but abuse process of law. Two different entity is enforcing its right in one suit is not permissible.
3. That the Plaintiff has not filed on record memorandum and articles of association or incorporation document of the plaintiff company. There is only vague allegation. The Plaintiff is a Germany based company whereas no document as to plaintiff's incorporation is placed on record.
4. The Plaintiff has not mentioned the name of copyright owner and has wrongly filed the instant suit. The present suit is not maintainable in law and nor on facts. It has been filed malafide and on false CS (COMM) 373/2022 Page No. 16 of 32 assertions. The plaintiff is not entitled to any reliefs prayed for. The Plaintiff has filed a false, fabricated and concocted suit under Trade Marks Act, 1999 and Copyright Act, 1957 against the present defendant.
5. That having regard to the claim of the Plaintiff as set out in the Suit, the Plaint is in direct contravention to the provisions of Order VII Rule 10/11 of the Code of Civil Procedure. The plaintiff is a foreign company and is neither selling any of their goods under their trademark within the jurisdiction of this Hon'ble court nor has any subordinate office.
6. That the suit at its very outset is not maintainable as the same is directly hit by the provision of clause a) of Order VII Rule 10/11 CPC and since the Plaint does not disclose any cause of action qua the claim as mentioned in the Plaint as well as the present suit is barred by section 20 of CPC or Section 134 of Trademarks Act, 1999. Neither the Plaintiff nor the answering Defendant reside, carry on business or work for gain within the territorial jurisdiction of this Hon'ble Court and as such the plaint is liable to be rejected/ returned on this ground only.
7. That at the very outset, the defendant seeks to emphasize that the Plaintiff have concocted a false and sham story before this Hon'ble Court and that CS (COMM) 373/2022 Page No. 17 of 32 their Suit deserves to be dismissed on this score alone. It is pertinent to mention here that the present suit is a sham and bogus story concocted by the Plaintiff, who is trying to extort money from the defendant illegally on the basis of a false and bogus statement of account, in the grab of present suit.
8. That it may not be out of place to mention here that the Plaintiff had not filed even a single document in support of the averments made in the Plaint pertaining to the territorial jurisdiction before this Hon'ble Court qua himself or defendant.
9. That, It is an interesting fact that the Plaintiff is trying to extort money from the Defendant by filing the present suit before this Hon'ble Court which has no territorial jurisdiction to try the present suit. Whereas the Plaintiff chose not to file any document in support of its claim that the answering Defendant had sold the alleged goods in the said jurisdiction. On the basis of the bald averments with no documentary evidence in support of the same the Plaintiff is trying to bring the present suit within the Jurisdiction of this Hon'ble Court.
10. The present suit is vitiated as the plaintiff has not approached this Hon'ble Court with clean hands and has deliberately made false and misleading statements CS (COMM) 373/2022 Page No. 18 of 32 only to derive unjust gains and advantages to the prejudice of defendant.
11. That the plaintiff is not entitled to any discretion of this Hon'ble Court either in the suit or in the injunction application. The conduct of the plaintiff is tainted, fraudulent and based on material suppressions. Equity and the interest of justice are against the plaintiff's and in favour of the defendant...
Therefore, it is stated that the suit of the plaintiff is liable to be dismissed.
7. During further arguments on the application of the plaintiff under Order XXXIX Rule 1 and 2 CPC, the Ld. Counsel for the defendant on 25.07.2022 gave the following statement:
"Under instructions of Defendant Sh. Tejasvi Mangla, I submit that without prejudice to the rights, contentions and averments of Defendant Sh. Tejasvi Mangla in pleadings in written statement, the granted ex-parte ad interim injunction in favour of Plaintiff and against the Defendant in terms of order dated 29.04.2022 may be confirmed, made absolute for the period of pendency of this case and in these terms the application of Plaintiff under Order XXXIX Rules 1 and 2 r/w Section 151 CPC of Plaintiff may be disposed."
The injunction application moved by the plaintiff u/O 39 Rule 1 & 2 CPC was consequently allowed and the ex-parte interim order CS (COMM) 373/2022 Page No. 19 of 32 dated 29.04.2022 was made absolute vide order dated 25.07.2022. However, thereafter the Defendant stopped appearing before this Hon'ble Court.
8. Replication has been filed by the plaintiff to the above written statement of the defendant, in which the averments made in the plaint have been reiterated and those made in the written statement have been denied.
9. From the pleadings of the parties, following issues were framed vide order dated 09.10.2023 :
1. Whether the plaintiff is entitled for permanent injunction as prayed in prayer Clause 40 (a) of the plaint ?
OPP.
2. Whether the plaintiff is entitled for permanent injunction as prayed in prayer Clause 40 (b) of the plaint ? OPP.
3. Whether the plaintiff is entitled for relief as prayed in prayer Clause 40 (c) of the plaint ? OPP.
4. Whether the plaintiff is entitled for relief as prayed in prayer Clause 40 (d) of the plaint ? OPP.
5. Whether the plaintiff is entitled for decree for damages of Rs. 4,00,000/- as prayed in prayer Clause 40 (e) of the plaint?OPP.
6. Whether the plaintiff is entitled for compensator/punitive damages as prayed in prayer Clause 40 (f) of the plaint ? OPP CS (COMM) 373/2022 Page No. 20 of 32
7. Whether this Court has no territorial jurisdiction to try the present suit ? OPD
8. Relief.
10. The Plaintiff in support of its case has examined Ms. Sonu Kapoor, its AR as PW-1 who has relied upon / proved the following documents:
S. No. No. of Exhibits Details of the Documents
1. Exhibit PW1/1 Power of Attorney dated 13.09.2022
2. Exhibit PW1/2 Copy of the Commercial Registry (de-exhibited and Extract of the Plaintiff Company in marked as Mark A) Germany
3. Exhibit PW1/3 Internet downloads from the Plaintiff's website showing various plaintiff stores in Delhi
4. Exhibit PW1/4 Affidavit under Section 65B of Indian Evidence Act
5. Exhibit PW1/5 Internet downloads showing history of PUMA, logo
6. Exhibit PW1/6 (colly) Internet downloads from the plaintiff's website and third party websites showing sale of Puma products CS (COMM) 373/2022 Page No. 21 of 32
7. Exhibit PW1/7 Documents showing various celebrities promoting Plaintiff's PUMA products
8. Exhibit PW1/8 (colly) Copy of few Trademark Certificates (LPCs) for the mark PUMA, registered in favour of Plaintiff in India
9. Exhibit PW1/9 (colly) Photocopies of sales invoices issued by the Plaintiff
10. Exhibit PW1/10 (colly) Internet downloads showing worldwide registrations obtained for the PUMA trademarks in countries like USA, Australia, Germany
11. Exhibit PW1/11 Internet download from third party website showing Plaintiff's Brand ranking according to various indexes
12. Exhibit PW1/12 Internet extracts showing PUMA completing 50 years
13. Exhibit PW1/13 Internet download from third party website showing Plaintiff as a most valuable brand in 2019 as per Forbes
14. Exhibit PW1/14 Internet download from Trademark Registry observing PUMA as a well-
known mark in India published in Trademarks Journal No. 1934, 30/12/2019
15. Exhibit PW1/15 Photograph of the Defendant's product
16. Exhibit PW1/16 Plaintiff' Company analysis report CS (COMM) 373/2022 Page No. 22 of 32 confirming the Defendant's product as counterfeit
17. Exhibit PW1/17 (Colly) Local Commissioner's report Further PW1 has also relied upon the report of the Ld. Local Commissioner in her affidavit in evidence.
11. The cross-examination of PW1 was NIL, as nobody had appeared on behalf of the defendant 09.10.2023. Thereafter, vide separate statement dated 09.10.2023, AR of the plaintiff had closed the plaintiff's evidence and the matter was fixed for defendant's evidence. The defendant had neither filed affidavit of any witness nor supplied advance copy of the same to the opposite party, consequently vide order dated 07.11.2023, the defendant's evidence was closed.
12. I have heard Sh. Shashi P. Ojha, Ld. Counsel for the plaintiff and also gone through the written submissions filed on behalf of the plaintiff as well as the record. The defendant, despite opportunity had failed to address final arguments. Accordingly, it is presumed that he has got nothing more to say in the matter except what is already on the record.
13. Ld. Counsel for the plaintiff has relied upon the following judgment(s) in support of his contentions :
CS (COMM) 373/2022 Page No. 23 of 32a) Kaviraj Pandit Durgadutt Sharma Vs. Navratna Pharmaceutical Laboratories AIR 1965 SC 980;
b) Bloomerberg Finance LP Vs. Prafull Saklecha and Ors. 2013 (56) PTC 243(DEL);
c) Laxmikant V. Patel Vs. Chetanbhai Shah & Ors. AIR 2002 SC 275;
d) TV Venugopal VS. Ushodaya Enterprises Ltd. And Ors (2011) 4 SCC 85;
e) Christian Louboutin SAS Vs. Ashishi Bansal & Ors. 2018(75) PTC 353(Del);
f) Adidas AG & Ors. Vs. Praveen Kumar & Ors. MANU/DE/1708/2019;
g) Puma Se Vs. Ashok Kumar CS(COMM) 703/2022 dated 20.10.2023.
14. My issuewise findings are :
Issue(s) no. (1) to (7)
1. Whether the plaintiff is entitled for permanent injunction as prayed in prayer Clause 40 (a) of the plaint ?
OPP.
2. Whether the plaintiff is entitled for permanent injunction as prayed in prayer Clause 40 (b) of the plaint ? OPP.
3. Whether the plaintiff is entitled for relief as prayed in prayer Clause 40 (c) of the plaint ? OPP.
4. Whether the plaintiff is entitled for relief as prayed in prayer Clause 40 (d) of the plaint ? OPP.
5. Whether the plaintiff is entitled for decree for damages of Rs. 4,00,000/- as prayed in prayer Clause 40 (e) of the plaint?OPP.
6. Whether the plaintiff is entitled for compensator/punitive damages as prayed in prayer Clause 40 (f) of the plaint ? OPP CS (COMM) 373/2022 Page No. 24 of 32
7. Whether this Court has no territorial jurisdiction to try the present suit ? OPD All these issue are taken up together, as they are interconnected with each other and are being disposed off vide common discussion.
15. In the judgment Laxmikant V. Patel (supra), it has been held by the Hon'ble Supreme Court as under :
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 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 CS (COMM) 373/2022 Page No. 25 of 32 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 for 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 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 CS (COMM) 373/2022 Page No. 26 of 32 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).
16. In view of above evidence of PW1 supported by various documents in favour of the plaintiff including various invoices as well sales figures and analysis of record, the plaintiff has been able to prove that they are the prior user and proprietor of the trademark PUMA, logo and the said trademark has acquired distinct features and they are regularly engaged in manufacturing, marketing and selling of large variety of goods including casual apparel, sports apparel, footwear and other allied products under the said trade name along with label/device/logo. The said trademark/ label has acquired immense goodwill and reputation in favour of the Plaintiff. The averments made CS (COMM) 373/2022 Page No. 27 of 32 by PW1 have gone unchallenged, uncontested, no cross-examination was carried out qua PW1 nor defendant lead any evidence despite opportunity.
17. From the report of Ld. Local Commissioner, the pleadings on record and the testimony of PW1, it is clear that the defendant was engaged in the business of stocking, selling, supplying garments (including track pants, T-shirts etc.) and shoes under the mark PUMA, logo. The defendant chose not to appear despite having knowledge of the proceedings, which are pending before this Court. The Local Commissioner's report along with the evidence of PW1 also clearly reveals that the defendant was engaged in the stocking, selling, supplying of counterfeit products. The testimony of PW1 has gone unrebutted, unchallenged. There is nothing to disbelieve her unrebutted testimony.
18. Thus, the Plaintiff, being the owner of the registered trademark PUMA, logo in various forms, including the logo, is entitled for protection of its rights in the trade mark PUMA, logo. As a consequence, the plaintiff is entitled to decree of permanent injunction restraining the defendant, its proprietor of partners as the case may be, servants, agents, affiliates, associates, stockiest, CS (COMM) 373/2022 Page No. 28 of 32 distributors from stocking, wholesaling, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including garments, footwear and/or any other produces under the plaintiff's mark PUMA, logo or any other mark/ logo which is identical and similar to the plaintiff's mark PUMA, logo, which may amount to infringement or passing off of the plaintiff's trademarks, as stated above. Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 40 (a) and (b) of the plaint and Issue Nos. 1 & 2 are answered accordingly in favour of the plaintiff and against the defendant.
19. Since the Defendant had stopped appearing and had not disclosed the sale of total garments and footwear under the impugned mark with details of payments received, the said relief as sought in paragraph 40 (c) cannot be granted. Thus, issue no. 3 is answered accordingly.
20. Insofar as the relief of delivery up as sought in paragraph 40
(d) is concerned, the Plaintiff or a representative thereof, is permitted to visit the premises of defendant, upon which the defendant shall handover all the seized products handed over to him on superdari by the Ld. Local Commissioner on 07.05.2022 to the representatives of the Plaintiff for the CS (COMM) 373/2022 Page No. 29 of 32 purpose of destruction, as per law. Thus, issue no. 4 is answered accordingly.
21. Insofar as the relief of damages, as sought in the present suit is concerned, it is clear from the report of the Ld. Local Commissioner and the testimony of PW1 that the defendant has blatantly infringed the trademark and logos, as also the packaging of the Plaintiff's products. The Local Commissioner has reported in her report that she found total 704 T-shirt pieces and 3528 pieces of Track Pants bearing trademark and logo of the Plaintiff PUMA, which were seized from the premises of the defendant. Considering the quantum of counterfeit products, which were seized from the premises of the defendant, as per the report of the Ld. Local Commissioner, the suit is decreed in favour of the plaintiff and against the Defendant for a sum of Rs.3,50,000/- (Rs. Three Lakhs Fifty Thousand only). Issue no. 5 is answered accordingly in favour of the plaintiff and against the defendant.
22. It has also been argued by Ld. Counsel for the Plaintiff that plaintiff had to get a Local Commissioner appointed and also to bear the cost(s) for execution of the commission. In these circumstances, additional cost(s) of Rs.1,50,000/- (Rs. One Lakh Fifty Thousand only) is also awarded in favour of the Plaintiff and against the Defendant. Thus, issue no. 6 is answered accordingly.
23. Insofar as issue no. 7 is concerned, in view of above CS (COMM) 373/2022 Page No. 30 of 32 observations and analysis of record and the testimony of PW1, it is clear that this court has jurisdiction, as the plaintiff has successfully proved that the plaintiff is carrying on business within the jurisdiction of this Court and also through various e-commerce websites such as www.flipkart.com. www. amazon.in, www.puma.com etc., which are accessible with the territorial jurisdiction of the Court and same is also proved by PW1 through various documents exhibited during her examination in the Court. Further, from perusal of the record, it is apparent that the defendant is carrying on its business of trading, supplying / selling the counterfeit branded products by using the plaintiff's abovesaid mark / logo to the customers and general public residing within the jurisdiction of this Court, therefore, part of cause of action has arisen within the jurisdiction of this Court.
Further, the defendant, despite opportunity, as discussed above has not lead any evidence to the contrary whatsoever. Accordingly, since defendant has failed to lead any evidence with regard to the above issues, the onus to prove which was upon him, the issue no. 7 is decided in favour of the plaintiff and against the defendant.
24. Issue No. 8Relief In view of the above discussions and the above judgments (supra) relied upon by Ld. Counsel for the plaintiff, the present suit is decreed in favour of the plaintiff and against the defendant in terms of the findings on the above issues. I hereby also award cost of litigation as Rs.
CS (COMM) 373/2022 Page No. 31 of 321,00,000/- (Rs. One Lakh only) in favour of the Plaintiff.
Decree be made accordingly.
File be consigned to record room.
Announced in the open court today on 02.12.2023.
(Sanjeev Aggarwal) District Judge (Commercial)-02 Patiala House Courts, New Delhi CS (COMM) 373/2022 Page No. 32 of 32