Delhi High Court - Orders
Cross Fit Llc vs Mr Renjith Kunnumal & Anr on 8 July, 2021
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 251/2021 & I.A. 6927/2021
CROSS FIT LLC ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Saif
Khan, Mr. Shobhit Agrawal and
Mr. Deepank Singhal, Advs.
versus
MR RENJITH KUNNUMAL & ANR. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 08.07.2021
(Video-Conferencing)
I.A. 6927/2021 in CS(COMM) 251/2021
1. Despite service of notice, there is no appearance on behalf of the defendants. Nor has any response been filed to this application. As such, the court proceeds to decide the application in the absence of the defendants.
2. The plaintiff seeks an interim injunction against the defendants from using the mark "CrossFit", of which the plaintiff holds registration in class 99, both as a word mark and as a device mark, the word mark being registered since 14th July, 2011 and the device mark being registered since 21st January, 2014.
3. The plaintiff has been continuously and extensively using the Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 1 of 6 Signing Date:09.07.2021 21:19:15 said mark, on a global basis, for fitness and training services. The plaintiff also uses the mark "CrossFit" as part of its domain name www.crossfit.com, which was also registered in October, 1999. This Court has, in its order dated 30th October, 2015, in CS(OS) 2114/2014 (Cross Fit Inc. v. Gurpreet Singh) held the plaintiff's mark "CrossFit" to be a "well known trade mark" within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
4. The plaint further asserts that, as a result of priority of adoption and long, continuous and extensive use, the plaintiff's trademark "CrossFit" has acquired enviable goodwill and has become indelibly associated with the fitness or training services provided by the plaintiff.
5. Reliance has also been placed on a UNDRP (Uniform Domain Name Resolution Policy) complaint filed by the plaintiff titled "CrossFit, Inc. v. Results Plus Personal Training Inc.", in which the UNDRP, vide decision dated 28th June, 2013, passed orders for the transfer of 113 domain names which included the use of the word "CrossFit", in favour of the plaintiff. Some of these orders have also been placed on record.
6. The plaint alleges that, in March, 2018, the plaintiff came to know that the defendants were using the name "SFC CROSSFIT", including the identical mark "CrossFit" for imparting identical gym and fitness services. These services, it is further asserted, are also advertised on the defendants' website, Facebook pages and Online Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 2 of 6 Signing Date:09.07.2021 21:19:15 Trade Directories.
7. Vide email dated 29th March, 2018, the plaintiff, called upon the defendants to cease and desist from continuing to use the "CrossFit" mark. The Defendant No. 2, however, refused to do so, vide reply dated 20th April, 2018, and asserted that the mark "CrossFit" was generic. The mark used by the defendants is " ".
8. Though the defendants have, in their reply to the plaintiff's cease and desist notice, claimed adoption of the "CrossFit" mark since 2005, the plaint points out that Defendant No. 1 had returned to Calicut only in 2011 and that, therefore, there was no question for using the mark since 2005. As the defendants have not chosen to respond to the notice issued by this Court or file any reply to this application or to the assertions in the plaint to that effect, this assertion is treated, for the purposes of interim relief, as correct and uncontested.
9. It is also alleged, in the plaint, that the defendants "@sfccrossfit" Twitter page was created only in March, 2017 and that the defendants were following the plaintiff's official Twitter pages even prior thereto.
10. The plaintiff also wrote to Facebook, on 23rd September, 2020, to take down the Facebook page of the defendants, resulting in the defendants' Facebook page being taken down. This action, the plaint asserts, has not been challenged by the defendants. However, in Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 3 of 6 Signing Date:09.07.2021 21:19:15 November, 2020, the defendants created a new Facebook page changing "SFC CROSSFIT" to "SFC Calicut" with the handle "@swastikfightclub". This, according to the plaint, itself demonstrates that the defendants have acknowledged the infringing character of the use, by them, of the expression "CrossFit" as part of their mark or domain name. Despite this, the plaint alleges that the defendants continue to use the mark "CrossFit" in their course names, packages and as a hashtag, as well part of their primary website and the domain name thereof www.sfccrossfit.com. It is further alleged that the defendants are, by adopting this method, seeking to confuse the public into presuming an association between the plaintiff and the defendants and are guilty, thereof, of passing off their services as those of the plaintiff.
11. The averments in the plaint have remained uncontested, the defendants have not entered appearance in response to the summons issued or to the notice issued in this application. Written statement has also not been filed till date. The averments in the plaint and application, therefore, are deemed to be accepted, on the principle of non-traverse, for the purposes of the present application.
12. The averments in the plaint, treated as correct, make out a clear case of infringement, by the defendants, of the plaintiff's registered trademark "CrossFit". Prima facie, it is not possible to accept the contention of the defendants, as voiced in their reply to the plaintiff's cease and desist notice that the expression "CrossFit" is generic in nature. The word "CrossFit" has no known etymological significance Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 4 of 6 Signing Date:09.07.2021 21:19:15 and is, therefore, ex facie, an artificial and coined word. It is, therefore, entitled to an enhanced degree of protection under the Trademarks Act.
13. There is, apparently, no reason for the defendants to use the word "CrossFit" as part of its mark or domain name.
14. For all these reasons, a prima facie case for grant of interim injunction exists in the plaintiff's favour.
15. Non-grant of such relief, and continued use, by the defendants, of the "CrossFit" name as part of their mark/domain name, is bound to perpetuate the injury which the plaintiff is suffering. The balance of convenience is also, therefore, in favour of grant of injunction to the plaintiff.
16. The prayer clause in the present application reads thus:
"14. It is, therefore, respectfully prayed that this Hon'ble Court may be pleased to grant the following relief's in favour of the Plaintiff:-
a) An ex-parte order of ad interim injunction restraining the Defendants, their principal officers, partners, servants, representatives, agents, distributors and any other persons acting for and on behalf of the Defendants from using in the course of trade the mark 'CROSSFIT' or any other mark/logo identical and/or deceptively similar to the Plaintiff's mark 'CrossFit', whether offline or online, amounting to infringement of the trademark and passing off;
b) An ex parte order of ad-interim injunction directing the Defendants to immediately take down the impugned website and domain name Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 5 of 6 Signing Date:09.07.2021 21:19:15 www.sfccrossfit.com and all posts, listings, pictures etc. mentioning the word/mark 'CROSSFIT' from all websites, webpages, social media handles run by the Defendants; and Any other order(s) as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case may also be passed in favour of the Plaintiff."
17. In view of the aforesaid, the defendants are injuncted, during the pendency of the suit, from using, in the course of trade, the mark "CrossFit" or any other mark/logo identical or deceptively similar to the mark of the plaintiff, offline or online. They are also directed to immediately take down their website and domain name www.sfccrossfit.com as well as all listings, posts, pictures etc. which mention the word/mark "CrossFit" from all sites on the internet including their social media webpages.
18. I.A. 6927/2021 stands allowed in the aforesaid terms.
C. HARI SHANKAR, J.
JULY 8, 2021 dsn Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 251/2021 Page 6 of 6 Signing Date:09.07.2021 21:19:15