PUMA's Claims Remain Unrebutted, Defendant Found
Liable for Infringement and Passing off
PUMA SE v. MAHESH KUMAR
The Delhi High Court adjudicated a trade mark dispute initiated by
Plaintiff PUMA SE for the unauthorized use of its well-known trade
marks “PUMA” and as well as its Form Strip logo
The Plaintiff sought a permanent injunction to prevent the
Defendant from manufacturing, supplying and selling
counterfeit goods of inferior quality affixed with the
registered trade marks of PUMA.
The Plaintiff company PUMA, is one of the world’s largest
sports brands with the sale of their products expanding to
more than 120 countries and its trade marks being
registered and in use since 1948. The Plaintiff’s trade
marks have also been declared as well-known marks in
India since 2019.
The Court found the Defendant guilty of infringement and
passing off on the basis of its finding that the Defendant
has replicated Plaintiff's trade marks to capitalize on the
Plaintiff's goodwill without authorization, thereby creating
confusion among both the trade and the general public,
constituting passing off.
The Court emphasized on the gravity of the offence of
counterfeiting and how it erodes brand value, deceives
consumers, undermines the national economy, and results in
the counterfeiter forfeiting its right to equitable
consideration by a Court.
The Court also confirmed the well-settled law that a mark
which is well-known requires a higher degree of protection,
as it is highly susceptible to piracy. Hence, it was decided
that any goods or products, that are identical to such a
degree, in the manner of appearance, for an identical
business, with an identical customer base, wherein it falls
under the category of counterfeit, will unquestionably
cause confusion and deception in the eyes of the public
and render the Defendant liable for the offence of
infringement.
Upon considering the report of the Local Commissioner,
arguments of the Plaintiff and the material placed on
record in support thereof, Court decreed the suit in favour
of the Plaintiff while imposing actual costs of Rs.9,00,000/-
and Rs. 2,00,000/- towards damages upon the Defendant.
$~25
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 725/2022, I.A. 17018/2022, I.A. 17019/2022 & I.A.
48178/2024
PUMA SE .....Plaintiff
Through: Mr. Ranjan Narula, Mr. Shakti Priyan
Nair and Mr. Parth Bajaj, Advocates
versus
MAHESH KUMAR .....Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 12.02.2025
MINI PUSHKARNA, J (ORAL)
IA/48178/2024 (Application on behalf of the plaintiff under Order XIII-
A read with Order VIII Rule 10 and Section 151 of the Code of Civil
Procedure, 1908 (“CPC”)
1. The present application is filed on behalf of the plaintiff under Order
XIIIA, read with Order VIII Rule 10, and Section 151 of the Code of Civil
Procedure, 1908 (“CPC”).
2. Present suit has been filed by the plaintiff seeking permanent
injunction inter alia, restraining infringement of their trademarks, „PUMA‟,
logo and Form strip logo by the defendant and for
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unfair trade competition, rendition of accounts, damages, delivery up, etc.
3. The plaintiff seeks a summary judgement against the defendant, on
the ground that the defendant has no prospect of the defending the claims of
the plaintiff.
4. The case, as canvassed by the plaintiff, is as follows:
4.1 The plaintiff company is one of the world‟s largest sports brands
engaged in designing, developing and marketing footwear, apparel and
accessories under their coined marks PUMA and logo since the
year 1948.
4.2 The plaintiff‟s well-known trademark, „PUMA‟ is registered in
several countries all around the world, including, India. Further, the earliest
registration of the plaintiff‟s mark, „PUMA‟ dates back to the year 1948, and
the earliest registrations for the plaintiff‟s marks „PUMA‟, logo
and in India is since the year 1977.
4.3 The plaintiff‟s products are available in more than 120 countries
worldwide and the plaintiff has been selling its products in India under their
marks since the 1980‟s, having extensively advertised its „PUMA‟ products
bearing the logos, by way of various printed media, i.e. newspapers,
magazines, trade journals, leaflets etc. all over the country. Further, the
plaintiff sponsors and advertises with various celebrities which are known
throughout the world.
4.4 The plaintiff‟s trademark „PUMA‟ has been declared as a well-known
trademark in India on 30th December, 2019, by the Trade Marks Registry
which was published in the Trade Marks Journal bearing no. 1934.
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4.5 The defendant is engaged in the business of stocking, selling, and
supplying counterfeit shoes bearing the plaintiff‟s marks, „PUMA‟,
logo and Form strip logo without
authorization/approval of the plaintiff.
4.6 In the 1st week of October, 2022, the plaintiff discovered large
quantities of counterfeit „PUMA‟ branded shoes being locally manufactured,
supplied and sold in bulk quantities at several shops in East Delhi. Upon
enquiry, the plaintiff‟s representative identified the defendant‟s
manufacturing unit at B1-424, Gali no. 15, B-Block, Harsh Vihar, Mandoli,
North-East Delhi- 110093.
4.7 The plaintiff is the prior adopted, user and the registered proprietor of
the marks in question and the said marks are distinctive of the plaintiff‟s
goods, therefore the adoption and copying of the plaintiff‟s marks by the
defendant and applying them on inferior quality counterfeit products which
amounts to infringement under Sections 29 (1) and (2) of the Trade Marks
Act, 1999 (“the Act”).
4.8 The defendant has copied each and every essential feature of the
plaintiff‟s marks in order to ride upon the goodwill of the plaintiff, thereby,
creating misrepresentation on the minds of the trade and common man
which amounts to passing off.
5. I have heard learned counsel for the plaintiff and perused the record.
6. At the outset, it is noted that this Court vide order dated 18th October,
2022 passed an ex-parte ad-interim injunction against the defendant
restraining them from advertising, manufacturing, selling, offering for sale,
etc., any products, including shoes, sportswear, accessories etc., under the
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plaintiff‟s mark, 'PUMA', logo and the Form strip logo
or any other mark, which is identical, or deceptively / confusingly
similar to the plaintiff‟s trademarks.
7. It is noted that the defendant was initially „John Doe‟ at the time of
filing the present suit, and vide order dated 11th March, 2024, the present
defendant was impleaded and directed to file their written statement.
8. It is further noted that the defendant failed to file their written
statement within the statutory period, therefore, vide order dated 18th
September, 2024 the right of defendant to file a written statement was
closed. Consequently, the defendant was proceeded ex-parte vide order
dated 09th December, 2024, which is reproduced as under:
“xxx xxx xxx
1. Perusal of the order sheets show that defendant has not filed any
written statement, despite expiry of the statutory period.
2. Accordingly, the defendant is proceeded ex-parte.
3. Learned counsel appearing for the plaintiff submits that an
application for summary judgment has already been filed on behalf of
the plaintiff. However, the same is not before this Court.
4. At request, re-notify on 12th March, 2025.
xxx xxx xxx”
9. The plaintiff is the proprietor of its registered marks in various
countries, the earliest registrations of which, date back to the year 1948.
Details of the said registrations are reproduced as under:
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10. Further, the plaintiff is the registered proprietor of the various marks
in India, which are valid and subsisting, details of which, are reproduced as
under:
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11. At this stage, it is pertinent to note that the trademarks of the plaintiff,
i.e. „PUMA‟ have been declared as a well-known mark by the Trade Marks
Registry on 30th December, 2019, under the application no. 816409, and the
same was published at Sr. No. 05, in the Trade Marks Journal bearing no.
1934. The relevant portion of the Trade Marks Journal dated 30th December,
2019, is reproduced as under:
12. During the course of the present proceedings, the plaintiff‟s marks
and , have also been declared as well-known marks and
published in Trade Marks Journal bearing no. 2144 dated 19 th Febraury,
2024 at Sr. Nos. 68 and 69 respectively. The relevant portion of the Trade
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Marks Journal dated 19th February, 2024 is reproduced as under:
13. This Court also notes that vide order dated 18th October, 2022 this
Court had appointed a Local Commissioner to visit the premises of the
defendant. In furtherance to the same, the Local Commissioner filed a report
dated 14th November, 2022, recording the infringing materials found on the
site. The inventory list in the Local Commissioner‟s report, is reproduced as
under:
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14. This Court also records that the infringing materials found on the site
of the defendant are counterfeit goods of the plaintiff‟s products, affixed
with the plaintiff‟s registered marks. A clear indicative of the counterfeiting
activity towards the plaintiff‟s products, are the observations and
photographs as attached by the Local Commissioner in its report.
Furthermore, the photographs further show that the defendant is undertaking
counterfeiting of goods from several other well-known brands as well. The
said photographs are reproduced as under:
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15. Perusal of the above brings forth the following:
i. The defendant is manufacturing counterfeit products under the
plaintiff‟ registered and well-known marks, „PUMA‟, and
. Further, counterfeit products of other known brands as well
are found, i.e. Adidas, Nike etc.
ii. The counterfeit products found are spats, shoe soles, shoes and
screen film bearing the infringing marks. Moreover, a metal mould for
the logos is found, wherein the marks of various other known brands,
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i.e. Adidas, Nike, Lee Cooper etc. are imprinted, showing that the
operation of the defendant was not just limited to creating counterfeit
products of the plaintiff, rather for known marks of other brands as
well.
16. This Court in the case of Louis Vuitton Malletier Versus Capital
General Store and Others, 2023 SCC OnLine Del 613 elucidated upon the
seriousness of counterfeiting and the actions of the counterfeiters, making
the following observations:
“xxx xxx xxx
33. Counterfeiting is an extremely serious matter, the ramifications
of which extend far beyond the confines of the small shop of the
petty counterfeiter. It is a commercial evil, which erodes brand
value, amounts to duplicity with the trusting consumer, and, in the
long run, has serious repercussions on the fabric of the national
economy. A counterfeiter abandons, completely, any right to
equitable consideration by a Court functioning within the confines
of the rule of law. He is entitled to no sympathy, as he practices,
knowingly and with complete impunity, falsehood and deception.
Even while remaining within the confines of the provision with which
it is seized - in this case, Order 39 Rule 2A - the Court is, therefore,
required to be economically and socially sensitized, and to send a
deterrent message to others who indulge, or propose to indulge, in the
practice of counterfeiting.
xxx xxx xxx”
(Emphasis Supplied)
17. Moreover, the Division Bench of this Court in the case of Jawed
Ansari Versus Louis Vuitton Malletier & Ors.,
MANU/DEOR/136880/2023, upheld the view of a Single Judge of this
Court, while observing that counterfeiting is indeed a serious menace and
should be dealt firmly.
18. Any goods or products, that are identical to such a degree, in the
manner of appearance, for an identical business, with an identical customer
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base, wherein it falls under the category of counterfeit, will unquestionably
cause confusion and deception in the eyes of the public. Further, it has been
succinctly observed, that “Counterfeiting is „hard core‟ or „first degree‟
trademark infringement and the most blatant and egregious form of „passing
off‟.” (See: 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 25.10 (4th ed. 2008)). Thus, it stands established that the
defendant is infringing upon the rights of the plaintiff under their well-
known and registered marks, by engaging in the blatant act of counterfeiting.
19. Further, the plaintiff‟s marks are well-known, which in such
designation, have a strength associated to their marks, which brings
association of consumers only to the plaintiff in relation to the strata of
plaintiff‟s operation. It was observed by J. McCarthy, that, “The stronger
the mark, the broader the scope of protection given to it” (See: McCarthy
on Trademarks and Unfair Competition, 4th ed., Vol. 2, para 15.25).
20. It is settled law that a mark which is well-known requires a higher
degree of protection, as it is highly susceptible to piracy. Thus, the Division
Bench of this Court in the case of Hamdard National Foundation (India)
and Another Versus Sadar Laboratories Pvt. Ltd., 2022 SCC OnLine Del
4523, held as follows:
“xxx xxx xxx
63. As noted above, the trademark „ROOH AFZA‟ has been used in
respect of the appellant's product for over a century. Prima facie, it is
a strong mark. It is also well settled that the requirement of
protection varies inversely with the strength of the mark; the
stronger the mark, the higher the requirement to protect the same.
Trademarks serve as source identifiers. It is also well-settled that in
case of a well-known mark, which has acquired a high degree of
goodwill, the mark requires higher protection as it is more likely to
be subjected to piracy from those who seek to draw an undue
advantage of its goodwill. In the present case, the appellants claim
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that the trademark „ROOH AFZA‟ is a well-known mark.
64. In Planters Nut & Chocolate Co. v. Crown Nut Co., the United
States Court of Appeals for the Federal Circuit had observed that a
mark's fame is an incentive for competitors “to tread closely on the
heels of a very successful trademarks”. In cases of a weak trademark,
where the trademark has not acquired significant goodwill, a higher
degree of similarity is permissible. However, strong marks which
have acquired immense goodwill are vulnerable from competitors
seeking to ride on their goodwill. Such marks require a higher
degree of protection and it is necessary to ensure that the marks of a
competitor do not come close to the said senior marks.
xxx xxx xxx”
(Emphasis Supplied)
21. Taking note of the above, this Court can proceed to pass a summary
judgement, on account of no defence being put forth by the defendant and
the right to filing a written statement being closed, no purpose will be served
in adducing ex-parte evidence from the plaintiff, as the defendant has no real
prospect of succeeding or defending the unrebutted claims as put forth by
the plaintiff‟s (See: Su-Kam Power Systems Ltd. Versus Kunwer Sachdev
and Another, 2019 SCC OnLine Del 10764).
22. Even so, in consideration of the evidence placed before this Court by
way of the Local Commissioner report and the narration as recorded above,
it is apparent that the activity of the defendant constitutes infringement of
the plaintiff‟s registered marks and passing off of the plaintiff‟s products.
23. This Court notes the submission of learned counsel for the plaintiff,
who prays for actual cost of litigation, wherein Rs. 1,00,000/- is sought
towards the Local Commissioner‟s Fee along with actual expenses, and Rs.
8,00,000/- towards litigation costs.
24. In view of the above, the present is befitting case for grant of actual
costs on account of a clear case being made out for counterfeiting against the
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defendant.
25. Further, the plaintiff is also held entitled to damages. In the facts and
circumstances of the present case, damages of Rs. 2,00,000/- is imposed
upon the defendant.
26. Accordingly, the following directions are issued:
I. The suit is decreed in favour of the plaintiff and against the defendant,
in terms of para 38 (a) and (b) of the plaint.
II. The plaintiff is held entitled to actual costs of Rs. 9,00,000/-.
III. The plaintiff is held entitled for payment of damages of Rs.2,00,000/-.
IV. The aforesaid amounts shall be payable by the defendant, within a
period of three months, from today.
27. Suit is decreed in the aforesaid terms. The Registry is directed to draw
up a decree sheet, in terms thereof.
28. With the aforesaid directions, the present suit along with the pending
applications, stands disposed of.
MINI PUSHKARNA, J
FEBRUARY 12, 2025
ak
Corrected & Released on: 9th March, 2025
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