Delhi District Court
Puma Se vs Sahib Karan Singh Vig on 13 April, 2023
IN THE COURT OF SH. SUDHANSHU KAUSHIK :
ADDITIONAL DISTRICT JUDGE-02 & WAQF TRIBUNAL :
PATIALA HOUSE COURTS : NEW DELHI
TM No.270/2021
CNR NO.DLND01-010650-2016
PUMA SE
PUMA WAY-1,
HERZOGENAURACH, 91074 Germany
ALSO AT:
42/A, GROUND FLOOR,
KHAN MARKET, OPP. GOPAL MANDIR,
NEW DELHI-110003
...PLAINTIFF
VERSUS
1. SAHIB KARAN SINGH VIG
TRADING AS KAVISA FOOTWEAR
2346/14, BEADONAPURA, KAROL BAGH,
NEW DELHI-110005
GODOWN AT :
SHOP NO.35, RANI JHANSI MARKET,
GALI NO.13 ½, BEADONPURA,
KAROL BAGH, NEW DELHI-110005
ALSO AT:
HOUSE NO.1740, FIRST FLOOR,
AATRAM LANE, G.T.B.NAGAR,
EAST MUKHERJEE NAGAR S.O,
NORTH WEST DELHI, DELHI-110009
2. RAMESH KUMAR
TRADING AS JEET FOOTWEAR,
2352/14, BEADONPURA, KAROL BAGH,
NEW DELHI-110005
ALSO AT:-
M-2, MODEL TOWN,
DELHI
TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 1 of 16
3. YOGESH GUPTA
TRADING AS SONU FOOTWEAR,
2352/14, BEADONPURA, KAROL BAGH,
NEW DELHI-110005
ALSO AT:-
A-763, MANDAWALI,
DELHI-110092
...DEFENDANT NO.3
DATE OF INSTITUTION OF SUIT : 22.09.2016
DATE OF ARGUMENTS : 21.03.2023
DATE OF JUDGMENT : 13.04.2023
DECISION : SUIT DECREED
JUDGMENT
1. Plaintiff has instituted the present suit seeking permanent injunction against infringement of trade-mark, passing-off and damages.
2. The facts, as disclosed in the plaint, are; Plaintiff is a company established and incorporated under the laws of European Community respectively under the laws of Germany and is operating its store at 42/A, Ground Floor, Khan Market, Opposite Gopal Mandir, New Delhi; The suit has been instituted by Mr. Rahul Sethi, who has been duly authorized to sign and verify the pleadings and institute the present suit on behalf of plaintiff; It has been submitted that plaintiff is one of the world's leading sports brands designing, developing, selling and marketing footwear, apparel and accessories under its well TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 2 of 16 known and world renowned trademark PUMA, PUMA logo and Form Strip logo appearing on the products manufactured, marketed and sold by the plaintiff; Plaintiff claims itself to be the sole owner and proprietor of trademark PUMA, PUMA logo and Form Strip logo; It has been further submitted that the plaintiff has a sole right to utilize the trademark PUMA, PUMA logo and Form Strip logo and products in the name and style of PUMA, PUMA logo and Form Strip logo' along with artistic work label depicting thereon; The plaintiff has also got registered various forms of the said words/marks and has sole authority to use these marks.
3. Plaintiff filed the suit alleging that unknown persons have started using its trademark on inferior quality counterfeit products. Plaintiff alleged that the infringed product are carrying deceptively similar trademark so as to confuse the general public that the infringed goods are the goods of plaintiff. Plaintiff alleged that it is suffering huge loss of business and reputation on account of the sale of the infringed products. Along with the suit, plaintiff filed an applications under Order XXXIX Rule 1 & 2 CPC & Order XXVI Rule 9 CPC and sought directions that a Local Commissioner may be appointed to search the area where counterfeit goods are being sold. TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 3 of 16
4. The application under Order XXVI Rule 9 CPC was allowed on 22.09.2016 and a Local Commissioner was appointed to carry out the search of the counterfeit products at three different Premises/Shops/Godowns bearing No.2346/14 & 2352/14, Beadonpura, Karol Bagh, New Delhi-110005 and Shop No.35, Rani Jhansi Market, Gali No.13 ½, Beadonpura, Karol Bagh, New Delhi- 110005. The Local Commissioner carried out search of aforesaid premises.
5. Firstly, the Local Commissioner reached at premises of M/s Pawan Shoes and met defendant No.3/Yogesh Gupta, who stated himself to the owner of the shop. He carried out search of the shop of defendant No.3 and counterfeit products bearing the trade-mark and logo of the plaintiff were recovered. The counterfeit/ infringed products were seized and inventory was prepared. The seized products were handed over to defendant No.3 on superdari. Photographs of the spot as well as the seized counterfeit products were obtained.
6. Secondly, Local Commissioner proceeded to shop M/s Kavisa Footware, 2364, Beadonapura, Karol Bagh, New Delhi and met defendant No.1/Sahib Karan Singh, who claimed himself to the owner of the said shop. He carried out search of the shop of defendant No.1 TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 4 of 16 and counterfeit products bearing the trade-mark and logo of the plaintiff were recovered. The counterfeit/infringed products were seized and inventory was prepared. The seized products were handed over to defendant No.1 on superdari. Photographs of the spot as well as the seized counterfeit products were obtained.
7. Lastly, Local Commissioner went to shop M/s Jeet Footware, 2352/14, Beadonapura, Karol Bagh, New Delhi and met defendant No.2/Ramesh Kumar, who claimed himself to the owner of the said shop. He carried out search of the shop of defendant No.2 and counterfeit products bearing the trade-mark and logo of the plaintiff were recovered. The counterfeit/infringed products were seized and inventory was prepared. The seized products were handed over to defendant No.1 on superdari. Photographs of the spot as well as the seized counterfeit products were obtained.
8. The Local Commissioner submitted report in the court. Thereafter, on an application filed by the plaintiff, the name of defendants were substituted in the plaint. Defendant No.1 & 3 contested the suit by filing separate written statements but they entered into a settlement with the plaintiff. The suit qua them was decreed. Defendant No.2 did not file written statement and chose to remain absent. He was TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 5 of 16 proceeded ex-parte vide order dated 16.09.2017.
9. On the basis of the pleadings of the parties, following points for determination were framed:
1. Whether the plaintiff has concealed and suppressed the material facts from the court?
2. Whether the suit is not valued for the purpose of court fee?
3. Whether the suit has been instituted by an authorized person?
4. Whether this court lacks territorial jurisdiction to try and entertain the present suit?
5. Whether the plaintiff is the owner of the mark/trademark PUMA and the logo of PUMA as disclosed in the plaint?
6. Whether the defendants have infringed trade mark 'PUMA' of the plaintiff?
7. Whether the defendants had been importing and passing off the counterfeit imported goods as the goods of the plaintiff?
8. Whether the plaintiff is entitled to a decree of permanent injunction, as prayed for?
9. Whether the plaintiff is entitled to damages, if so, at what rate?
10. Whether the plaintiff is entitled to a decree for rendition of accounts, as prayed for?
10. During the course of proceedings, counsel for plaintiff made a statement that he does not intend to press the relief sought in the suit in respect of delivery of finished & unfinished counterfeit goods, rendition of accounts and damges. Separate statement of the counsel was recorded.
11. I have gone through the record.
12. The High Court of Delhi observed in the matter of "Indian Performing Rights Society Ltd. Vs Gauhati Town Club" TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 6 of 16
MANU/DE/0582/2013 that where the defendant is ex-parte and the material before the court is sufficient to allow the claim of the plaintiff, the time of the court should not be wasted in directing ex-
parte evidence to be recorded which mostly is nothing but repetition of the contents of the plaint. This was a suit wherein plaintiff has claimed infringement of a registered trade-mark and violation of its copyright by the defendant as well as passing off the goods. In the matter, the court relied on the report of the Local Commissioner as well as other material placed on record and decreed the suit without requiring the plaintiff to lead further evidence. Similar view was taken by the court in the matter of "United Coffee House Vs Raghav Kalra & Anr." 2013 SCC OnLine Del 2133 and "S.Oliver Bernd Freier Gmbh & Company KG Vs Jaikara Apparels & Anr." 2014 SCC OnLine 2686.
13. Relying upon the rationale of the judgments given in "Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors." [CS (OS) 3466/2012 decided on 20th February, 2014 by the High Court of Delhi] and S.Oliver Bernd Freier Gmbh & Company KG's case (supra), the High Court of Delhi decreed a trade-mark suit for infringement in the matter of "Imagine Marketing Pvt. Ltd. Vs Green TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 7 of 16 Accessories" 2022 SCC OnLine Del 805 with following observations:
"8. Insofar as Defendant No.6 is concerned, the Local Commissioner had visited the premises bearing the address M/s. Shree Balaji Accessories, Building No.2827, Ground Floor, Gali No.8, Opposite Max Plaza, Beadonpura, Karol Bagh, New Delhi-110005 and met a few employees, as also, Mr. Dinesh, who claim to be the Manager of the Defendant No.6-Shop. Various goods bearing the Plaintiff's mark 'BOAT' were found at the said premises. A total of more than 120 pieces of Bluetooth headsets, Wireless Headsets, Earphones, Wireless Earphones, Portable Speakers and packaging material were also found. The same were seized by the Local Commissioner.
9. From the Local Commissioners' reports, and the pleadings on record it is clear that the Defendants are engaged in manufacturing or selling or offering for sale various electronic or electric products bearing the mark 'BOAT' as also the logos thereof. The Defendants choose not to appear despite having knowledge of the proceedings which are pending before this Court. The Local Commissioners' reports along with the evidence there of also clearly reveals that the Defendant Nos.1 and 6 were engaged in the sale of counterfeit products.
10. Under these circumstances, following the rationale of the judgment of a ld. Single of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20th February, 2014], no ex parte evidence would be required in this matter. The same has been reiterated by the Court in S. Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors.
[210 (2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors. [2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in Disney Enterprises Inc. (supra), are as under:
3. Though the defendants entered appearance through their counsel on 01.02.2013 but TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 8 of 16 remained unrepresented thereafter and failed to file a written statement as well. The defendants were thus directed to be proceeded ex-parte vide order dated 04.10.2013 and the plaintiffs permitted to file affidavits by way of exparte evidence.
4. The plaintiffs, despite having been granted sufficient time and several opportunities, have failed to get their affidavits for leading ex-parte evidence on record. However, it is not deemed expedient to further await the same and allow this matter to languish, for the reason that I have in Indian Performing Rights Society Ltd.
Vs. Gauhati Town Club MANU/DE/0582/2013 held that where the defendant is ex-parte and the material before the Court is sufficient to allow the claim of the plaintiff, the time of the Court should not be wasted in directing ex-
parte evidence to be recorded and which mostly is nothing but a repetition of the contents of the plaint.
11. Thus, the Plaintiff, being the owner of the registered trademark 'BOAT' in various forms, including the logo, is entitled to protection of its rights in the trade mark 'BOAT', as also device mark and the logos thereof. Accordingly, the present suit is decreed in terms of the reliefs sought in paragraph 30 (a), (b), and (c) of the amended plaint."
14. Coming to the present matter, although, defendant defendant No.1 & 3 filed their written statement but they compromised the matter with the plaintiff while defendant No.2 chose to remain absent during trial and he was proceeded ex-parte. The situation in the present matter is TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 9 of 16 akin to the one in Imagine Marketing Pvt. Ltd.'s case (supra) where the ex-parte matter was decreed by the High Court of Delhi without insisting on the plaintiff to lead evidence. In view of this, there is not point in directing the plaintiff to lead further ex-parte evidence, which would be nothing but a repetition of the contents of the plaint.
15. Counsel for plaintiff submitted that defendants were found in possession of counterfeit products. He has submitted that the counterfeit products were meant to be sold and passed off as the products of the plaintiff. He has mentioned that plaintiff's claim stands established and the suit may be decreed. In order to support his arguments, he has relied on the decision in the matter of "Durga Dutt Vs Navratana" AIR 1965 SCC 980, "Laxmikant Patel Vs Chetan Bhai" AIS 2002 SCC 275, "Christian Louboution Vs Ashish Bansal"
2018 (7) PTC 353 and "Adidas AG Vs Praveen Kumar" CS (Com.) 1269/2019.
16. Plaintiff has placed on record the registration certificate of the trademark PUMA logo registered under No.450143 dated 25.02.1996 in Class-25 issued by Controller of the Trademark. Besides the said registration certificate, plaintiff has also placed on record the registration certificate No.323054 dated 15.02.1997 under Class-25, TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 10 of 16 registration certificate No.460833 dated 11.07.1988 under Class-25, registration certificate No.323053 dated 15.02.1977 under Class-18, registration certificate No.450142 dated 25.02.1996 under Class-18, registration certificate No.449270 dated 05.02.1986 under Class-24 and registration certificate No.559653 dated 05.02.1986 under Class-
24. These certificates demonstrate that plaintiff is the registered owner of the trademark. Thus, it is established that plaintiff is the owner of the trademark.
17. Defendant No.1 & 3 challenged the territorial jurisdiction of this court to try and entertain the present suit. Although, they settled the matter with the plaintiff but since, it is a legal question, I deem it fit to deal with the same. The High Court of Delhi, while dealing with a similar argument on the territorial jurisdiction, observed in the matter of "Burger King Corporation Vs Techchand Shewakramani & Ors." CS (COMM) 919/2016 & CC(COMM) 122/2017 as under;
"18. Thus, the provisions of Section 134 of the TM Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the CPC. If the Plaintiff can make out a cause of action within the territorial jurisdiction of this Court under Section 20, no reference needs to be made to Section 134.
19. What constitutes cause of action in the context of a suit alleging violation of rights in a trade mark, would therefore be the question. In a case involving trade mark infringement, TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 11 of 16 infringement happens when a person "uses in the course of trade"
any mark without the owner's consent. Thus, use of a mark is the cause of action in an infringement as also in a passing off action. If use takes place in a territory where the suit is filed, that Court has the jurisdiction to entertain the suit. When there is use of a mark, there is a cause of action to sue, where the use takes place. it is relevant to point out that "use" of a trademark as per Section 2(2) (c) of the TM Act is as under:
"(2) In this Act, unless the context otherwise requires, any reference -
...
(c) to the use of a mark,-
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;"
18. The court further observed in Burger King's case (supra) that in a suit involving right in a trade-mark, cause of action arises in each and every place where there is any form of use of said mark. The court held that the principles which apply to infringement action to determine use of trade-mark would equally apply to passing off actions. The court observed that Section 20 of CPC provides that suit could be filed in any place where the cause of action arises and therefore, the place where the trade-mark has been used in any form has jurisdiction and the suit can be filed in the court having territorial jurisdiction over the said place. In view of this clear and categorical TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 12 of 16 observation, the submissions that the court lacks territorial jurisdiction needs to be rejected. Plaintiff has submitted that defendants have been storing the counterfeit products at various locations in Delhi and the counterfeit goods are being sold to various customers in New Delhi. In view of this, the court in New Delhi has the territorial jurisdiction to try and entertain the present suit.
19. Plaintiff had a legal right to institute a suit for injunction to restrain defendants from manufacturing, storing and selling the counterfeit products bearing its trade-mark. Section 28 of the Trademarks Act, 1999 (hereinafter referred to as 'the Act') clarifies that the valid registration of a trademark shall confer on the registered owner of the trademark exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. The Section further empowers the owner of the trademark to obtain relief in respect of infringement of trademark in the matter provided under the Act. Section 134 of the Act provides the remedy of filing a suit for infringement of a trademark while Section 125 of the Act describes the relief which may be granted in a suit for infringement or passing off the trademark.
20. Section 29 defines the meaning of infringement of a registered TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 13 of 16 trademark. It provides that a registered trademark is infringed by a person, who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. Sub-Section (2) of Section 29 of the Act further clarifies that a trademark is infringed by using a mark which is identical or similar with the registered trademark to an extent that it is likely to cause confusion on the part of public that it has an association with the registered trademark. Sub-Section (3) of Section 29 of the Act provides a presumption in respect of a marks that is likely to create confusion on the part of the public on account of its identity with the registered trademark and the identity of goods or services covered by such registered trademark.
21. Now, coming to the aspect whether the defendant No.2 has infringed the trademark of the plaintiff. In the present matter, there is irrefutable evidence to show that slippers and material bearing the logo of the plaintiff were recovered from the possession of defendant No.2. Photographs of the recovered counterfeit goods were taken by the TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 14 of 16 Local Commissioner and copies of the same were filed along with the report. I have perused the same. The photographs show that defendant No.2 has used almost identical mark on the counterfeit goods recovered from his possession. The mark was affixed on the slippers which falls under the category of the same goods which are being manufactured by the plaintiff. Thus, defendant No.2 not only used the identical mark but also used the mark in respect of identical goods which are being sold by the plaintiff. The slippers recovered from the possession of defendant No.2 were certainly meant to be sold in the market for profit. In the present matter, there is evidence to establish that defendant No.2 had been using a mark exactly identical to the registered trademark of the plaintiff.
22. After having gone through the submissions advanced by counsel for the plaintiff and perusal of the record, I find that there is overwhelming evidence to establish the plaintiff's claim. Further, I find that Local Commissioner has also corroborated the version of plaintiff regarding infringement of trademark by defendant No.2. Accordingly, plaintiff is entitled to the decree of permanent injunction. Plaintiff has already given up the relief of damages, rendition of accounts and delivery of counterfeit goods. In view of TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 15 of 16 this, a decree of permanent injunction is passed against defendant No.2 whereby he is restrained for manufacturing, storing and selling the counterfeit products bearing the logo of the plaintiff. Cost of the suit is also awarded to the plaintiff.
23. Decree-sheet be prepared accordingly.
24. File be consigned to Record Room after necessary compliance. Announced in open Court on 13.04.2023 (Sudhanshu Kaushik) Addl. District Judge-02 & Waqf Tribunal, New Delhi District, Patiala House Courts, New Delhi/13.04.2023 TM No.270/2021 PUMA SE Vs Sahib Kiran Singh & Ors. Page 16 of 16