Delhi District Court
Puma Se vs . UniQlo on 17 January, 2019
IN THE COURT OF ANIL ANTIL, ADDITIONAL DISTRICT
JUDGE05, SOUTH EAST DISTRICT, SAKET COURTS, ND.
TM No. 128/2018
PUMA SE vs. UNIQLO
PUMA SE
PUMA Way - 1,
Herzogenaurach - 91074 Germany
Also at:
G4, South ExtensionI,
Main Market, Ring Road,
BlockG, New Delhi - 110049 ..........Plaintiff
Versus
UNIQLO
307/5, Basement Sailing Club Road,
Batla House, Near Bus Stand,
Okhla, New Delhi - 110025 ..........Defendant
Date of institution of the suit : 26.07.2018
Date reserved for judgment : 17.01.2019
Date of pronouncement of judgment : 17.01.2019
Decision - Suit Decreed
TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 1 of 11
JUDGMENT
1 The present suit was filed by the plaintiff for permanent injunction restraining infringement of trade marks, copyright, passing off, restrain of use of domain name damages, unfair competition and rendition of account.
2 Plaintiff's version as per averments in the plaint : 2.1 That the Plaintiff Company is the owner of trademarks PUMA and logo and the said marks and logos are registered as mentioned in para 11 of the plaint under the provisions of the Trademark Act in India.
2.2 PUMA is a Germanybased multinational corporation that is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world. It is one of the world's leading Sports brands designing, developing, selling and marketing footwear, apparel and accessories.
2.3 Plaintiff Company is one of the world's leading sports brands designing, developing, selling and marketing footwear, apparel and accessories, and equipment of the highest quality for over 65 years. The PUMA group owns the brands PUMA, Cobra Golf, Dobotex TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 2 of 11 and Brandon. It is further averred that the PUMA product is available more than 120 countries worldwide including India and are headquartered in Herzogenaurac W Germany. The trademark PUMA was coined way back in 1948 by Rudolf Dassler and officially registered on October 1, 1948.Plaintiff 2.4 That the company carries out its business in India through its franchise and Company owned showrooms. Its trademark and logo are well known trademarks and enjoy huge reputation and goodwill in India. Apart from common law rights, the Plaintiff Company is rightful owners to use the said trademarks and logo under the provisions of Trademarks Act, which are registered under various classes of Trademarks Rules in India.
2.5 Plaintiff Company has thus exclusive right to use said trademark and logos with respect to its products and no one is entitled to use the said trademarks logo or any mark deceptively and confusingly similar to that without a license or assignment by the Plaintiff Company.
2.6 That the defendant is engaged in the business of sale of garments and other products including trousers/shorts/tshirts etc. and has been selling and supplying varieties of garments bearing TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 3 of 11 the mark "PUMA" and "logo"(hereinafter referred as impugned trademark/logo) without authorization/approval of the Plaintiff.
2.7 That the Plaintiff in the last week of June, 2018 came across the Defendant's products i.e. trousers/shorts/tshirts bearing the impugned mark and logo, and unwary customers are likely to be easily deceived, confused or misled. Defendant is using the impugned trademark and/or logo similar to the registered trademarks of Plaintiff in relation to similar goods with respect to which the marks are registered are likely to cause confusion in the mind of general public.
2.8 It is further stated that in November 2017 the popular Indian Cricketer Virat Kohli launched his own clothing brand ONE8 in collaboration with the plaintiff. The plaintiff submits that the sale of such counterfeit products under a trade mark and logo identical to plaintiff's wellknown trademark and logo and also the popular Virat Kohli's brand ONE8 by the defendant is malafide and cannot be a matter of coincidence. The same is deliberate and a calculated move of the defendant aimed at causing misrepresentation and making illegal profits by associating itself with the plaintiff.
TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 4 of 11 Defendant is thus reaping unfair advantage without any due cause and such an act is highly detrimental to the reputation of the trademarks of Plaintiff Company and same constitutes infringement within the meaning of Trademarks Act.
2.9 That the Plaintiff being aggrieved by the continued/unauthorized use of its mark and logo by the defendant has instituted the present suit to protect its proprietary rights in the said mark PUMA & logo" and further protect the innocent public from being duped.
2.10 That on 13.07.2018 adinterim injunction was granted in favour of the plaintiff and against the defendant restraining him from using the impugned trademark/label/logo. None has appeared on behalf of defendant despite being duly served. No written statement was thereafter filed on behalf of defendant despite being given number of opportunities. Vide order dated 13.12.2018 right of the defendant to file written statement was stands closed and matter was listed for plaintiff evidence.
3 In the meantime, Ld. Counsel for plaintiff filed an application under Order 8 Rule 10 CPC stating that defendant was duly served, no written statement has been filed, therefore, plaintiff is entitled to a TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 5 of 11 Decree in terms of Order 8 Rule 10 CPC against defendant. No reply to the said application was filed by the defendant. 3.1 Ld. Counsel for plaintiff relied upon the judgments passed by Hon'ble High Court of Delhi titled as M/s Vini Cosmetics Pvt. Ltd. vs. M/s Abhay Enterprises & Others {CS (COMM) 1417/2016} decided on 01.10.2018; Sandisk LLC vs. Raj Enterprises & Others {CS (COMM) 990/2018 and IA No. 15226/2018} decided on 26.11.2018; Inter Ikea Systems B. V. & Others vs. Sham Murari & Others {CS (COMM) 104/2018 and IAs No. 26029/2014 & 26030/2014} decided on 07.09.2018 and Louis Vuitton Malletier vs. Kapil Pahuja & Others {CS (OS) 1320/2014} decided on 16.01.2018 to claim its relief in terms of Order 8 Rule 10 CPC. 4 Heard. Perused the records meticulously. I am of the considered view, plaintiff is entitled to a decree in its favour and against the defendant for the reasons stated as under.
5 It is useful herein to refer to the decision by the Hon'ble High Court of Delhi in "Satya Infrastructure Ltd. & Ors Vs. Satya Ifra & Estates Pvt. Ltd, MANU/DE/0511/2013" wherein the Hon'ble court has held that:
"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 6 of 11 exparte evidence in the form of affidavit by way of examination in chief and which invariably is a repetition of the contents of the plaint. The plaintiff otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination in chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiff's on merits qua the relief of injunction."
6 The relevant facts of the present case are that the plaintiff is the rightful owners to use the trademark PUMA and PUMA logo as well as ONE8 under the provisions of the Trademarks Act in India. Plaintiff Company thus has exclusive right to use the said trademark PUMA or ONE8 or the logo with respect to its products and no one is entitled to use the said trademarks/ logo or any mark deceptively and confusingly similar to that without a license or assignment by the Plaintiff Company.
7 Perusal of the documents and pleadings filed by the plaintiff transpires that plaintiff's trademark are all registered and valid as on the date of filing of the suit. The registration gives exclusive rights to the plaintiff TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 7 of 11 to protect their rights in said marks and take infringements actions against any party in violation thereof. By virtue of long, extensive and continuous use of trademark, plaintiff's marks have become inseparable and synonymous with the goods of the plaintiff. All the documents filed on behalf of the plaintiff are duly supported with an affidavit and there is no reason to disbelieve the averments and contents thereof.
8 In fact I have no hesitation to say that in the facts of the case defendant is involved into manufacturing/ selling fake and suprious goods. And if the defendant is permitted to use the impugned mark which are deceptively similar and confusingly to that of the plaintiff's company, it will not only cause wrongful loss to the plaintiff company, but it will also cause grave prejudice and harm to public. Not to mention about loss to the goodwill of the plaintiff.
9 Besides as stated above, no written statement has been filed by the defendant to deny and controvert the allegations of the plaintiff. The defendant did not come forward to disprove the case of plaintiff its stand. In the opinion of this court, the defendant has no real prospect of defending the claim, as it has neither entered appearance nor filed its written statement. Further the plaintiff is the registered user of the trade marks in question. Consequently, plaintiff is entitled to a decree TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 8 of 11 for injunction in its favour and against the defendant. 10 Damages 10.1 In the present suit, plaintiff is also claiming rendition of account by the defendant and damages in terms of prayer clause 'e' of the plaint. 10.2 A reference to the decision of Hon'ble High Court of Delhi titled as "The Heels V. Mr. V. K. Abrol and Anr., CS (OS) No. 1385 of 2005 decided on 29.03.2006" would be profitable, wherein the Hon'ble Court has held:
"This court has taken a view that where a defendant deliberately stays away from the proceedings with the result that on enquiry into the accounts of the defendant for determination of damages cannot take place, the plaintiff cannot be deprived of the claim for damages as that would amount to a premium on the conduct of such defendant. The result would be that parties who appear before the court and contest the matter would be liable to damages while the parties who choose to stay away from the court after having infringed the right of the plaintiff, would go scotfree. This position cannot be acceptable.
No doubt it is not possible to give an exact figure of damages on the basis of actual loss, but certain token amounts on the basis of the sales of the TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 9 of 11 plaintiff can certainly be made. The plaintiff is unnecessarily dragged into litigation and the defendants must bear consequences thereof. In fact in such a case both compensatory and punitive damages ought to be granted apart from the costs incurred by the plaintiff on such litigation. In view of the given sales figure of the plaintiff. I consider it appropriates to grant a decree of damages in favour of the plaintiff and against the defendants for a sum of Rs. 3 lakh apart from costs of the suit. '
11 In view of my finding that the plaintiff is entitled to the relief of permanent injunction, also taking in to consideration the proposition of law stated above, I am of the view that defendant shall also be liable to pay punitivecumcompensatory damages to the tune of Rs.1 lakh to the plaintiff.
12 Relief.
In view of my above discussion, the application is allowed and disposed of accordingly. The suit is decreed in favour of the plaintiff and against the defendant in terms of the prayer clauses (a) to (d) of the plaint with punitivecumcompensatory damages to the tune of Rs. 1 lakh.
The suit stands disposed off as decreed.
TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 10 of 11 Cost of the suit is awarded in favour of the plaintiff and against defendant.
Decree sheet be drawn accordingly.
File be consigned to Record Room.
Announced in the open Court (Anil Antil)
Today on 17.01.2019 ADJ05, South East, District(SE)
Saket Court, New Delhi
TM No. 128/2018 PUMA SE vs. UNIQLO Page no. 11 of 11