Delhi HC Refrains ‘Repeat Offenders’ From Using Puma’s ‘Form Strip Logo’, Upholds Cost Imposed
While upholding an order passed by the Tis Hazari Court whereby a decree for permanent injunction was passed restraining the Appellant-Defendant from manufacturing, trading, selling, marketing, offering for sale through online shopping portals, or dealing in any other way, any goods including shoes and other accessories and/or any other goods under the Respondent-Plaintiffs ‘Form Strip logo’, the Delhi High Court has held that its logo/trademark or any other mark/logo which was deceptively similar to the Respondent’s 'Form Strip logo’ amounts to infringement of Respondent’s registered trademarks.
Finding that the Appellant has a ‘passion’ for copying famous registered designs as is apparent from the registration application filed by it qua a combination of designs of Slazenger and Channel, the Division Bench of Justice Manmohan and Justice Saurabh Banerjee observed that “the appellant-defendant is a repeat offender and the appellant-defendant’s argument that it was not aware of respondent-plaintiffs registration or if it had known about the same, it would never have used such a design, is only to be stated to be rejected”.
Advocate Saurabh Kamra appeared for the Appellant, whereas Advocate Raman Narula appeared for the Respondent.
In a brief background of the case, the Appellant was directed to ensure delivery of all the infringing finished/unfinished materials bearing the Respondents trademark ‘Form Strip logo’ i.e. the goods seized by the Local Commissioner to the authorized representative of the Respondent. The Respondent was also awarded damages to the tune of INR 3 lakhs along with costs of the suit.
While disagreeing with the contention of the Appellant that it was not aware of the Respondents registered design, the High Court observed that the Respondents design was unique and capable of being registered and the Appellant had a passion for copying famous registered designs as was apparent from the registration application filed by it qua a combination of designs.
The Bench found that the onus to prove that the Trial Court had no territorial jurisdiction was cast upon the Appellant which it had failed to discharge as it admittedly did not lead any evidence.
“The Commercial Judge after examining the downloads from the respondent-plaintiffs website, third party websites showing sale of Puma products at www.flipkart.com, www.amazon.com etc. and internet downloads showing advertisement of defendants business activity at www.justdial.com and an invoice dated 12th February, 2019 issued by the defendant showing sale of infringing products by the defendant at www.shopclues.com which admittedly is an interactive websites accessible from Delhi, concluded that the Trial Court had the territorial jurisdiction to try this suit.” Added the Bench.
Since the Appellant was a repeat offender and the infringing products were found to have been sold on the interactive website like www.shopclues.com, the High Court stated that the present case fell in the category “repeatedly known infringer which causes minor impacts to the respondent plaintiff” and the Commercial Court had thus rightly quantified the damages at Rs. 3 lakhs.
Accordingly, the High Court dismissed the appeal but without any order as to further costs.
Cause Title: Abstain Retail Solutions v. Puma Se
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