Full Text
HIGH COURT OF DELHI
Date of Decision: 14th November, 2024 C.O. (COMM.IPD-TM) 697/2022
PUMA SE .....Petitioner
Through: Mr. Ranjan Narula, Mr. Shakti Priyan
Nair and Mr. Parth Bajaj, Advs. M: 9711721913
Email: legal@rnaip.com
MILLS (REGD) AND ANR. .....Respondents
Through: Mr. Harish Vaidyanathan Shankar, CGSC
M: 9810788606 Email: hvscgscdhc@gmail.com C.O. (COMM.IPD-TM) 81/2023
PUMA SE .....Petitioner
Through: Mr. Ranjan Narula, Mr. Shakti Priyan
Nair and Mr. Parth Bajaj, Advs. M: 9711721913
Email: legal@rnaip.com
Through: Mr. Harish Vaidyanathan Shankar, CGSC
M: 9810788606 Email: hvscgscdhc@gmail.com
JUDGMENT
1. The present petitions have been filed under Section 57 of the Trade Marks Act, 1999 (“Trade Marks Act”) seeking removal of the trademarks, i.e. and /PUMAXE (Label) registered under nos. 1572831 under Class 35 and 1229883 under Class 24, in favour of respondent no. 1 from the Register of Trade Marks.
2. This Court vide order dated 14th October, 2024 has proceeded exparte against respondent no. 1. The relevant portion of the said order is reproduced as under: “xxx xxx xxx
1. Perusal of the order dated 01st August, 2024 shows that respondent no.1 has already expired and the legal representative of the deceased respondent no.1 was served on 19th July, 2024 via publication.
2. None has appeared for respondent no.1 despite service on the previous date.
3. None appears for the respondent no.1 even today.
4. Accordingly, respondent no.1 is proceeded ex-parte. …… ….. …….. xxx xx xxx”
3. Accordingly, this Court has proceeded to hear the present matters.
4. The facts as encapsulated in the pleadings, as necessary for adjudication of the present matters, are as under: 4.[1] The petition C.O. (COMM.IPD-TM) 697/2022 was initially filed before the Intellectual Property Appellate Board (“IPAB”), and consequent to the promulgation of Tribunals Reforms (Regulation and Conditions of Service) Ordinance, 2021 and after abolition of IPAB, the matter came before this Court. The petition C.O. (COMM.IPD-TM) 81/2023 was originally instituted before this Court itself. 4.[2] The petitioner is a company incorporated under the laws of Germany which through its subsidiaries in more than 120 countries including India, is engaged in the business of manufacturing and marketing a wide range of products, inter alia, sports shoes, apparel and accessories. 4.[3] The petitioner is the owner of the brand PUMA, which is its company name as well, and is associated with the public and trade doing business under the marks, and. The said marks are registered in various countries across the world, earliest of which dates back to the year
1948. Further, the petitioner has several domain names, i.e. www.puma.com and a dedicated Indian domain http://in.puma.com. 4.[4] The petitioner presently is carrying out its business in India under the corporate name, „Puma Sports India Private Limited‟ which was incorporated in 2005. However, the petitioner has been doing business in India since 1982 with its earliest India registration dating back to 15th February, 1977 along with various other registrations in other classes. 4.[5] In the course of these petitions, the petitioner‟s marks and have also been declared as well-known trademarks on 19th February, 2024 under Rule 124 of the Trade Mark Rules, 2017. The Trade Mark Journal no. 2144 dated 19th February, 2024 indicates the well-known declaration of the petitioner‟s marks on Sr. No. 68 & 69. 4.[6] The respondent no. 1 is stated to be engaged in the business of manufacturing and supplying clothing, footwear and headgear goods under impugned marks, i.e. and /PUMAXE (Label) registered under nos. 1572831 under Class 35 and 1229883 under Class 24. 4.[7] The petitioner in February, 2016 filed an opposition with the Trade Marks Registry against the application for the mark bearing application no. 1751339 in Class 25, sought to be registered by respondent no. 1 herein. However, as on date the said application stands refused on account of a successful opposition on part of the petitioner. 4.[8] Thus, being aggrieved by the impugned registrations bearing NO. 1572831 under Class 35 and 1229883 under Class 24 in favour of respondent no. 1, the present petitions came to be filed, seeking rectification and removal of the said marks from the Register of Trademarks.
5. On behalf of the petitioner, the following submissions are made: 5.[1] The petitioner due to inadvertence/oversight missed the publication of the impugned marks. Therefore, could not file an opposition towards the same. The said marks came to knowledge of the petitioner, only on account of filing an opposition to another attempt of registration of a mark by respondent no. 1. 5.[2] The impugned marks are deceptively similar to the prior mark of the petitioner, and it relates to identical business for sales and marketing of clothing, footwear and headgear business. Further, due to the extensive usage of marks by the petitioner, the public associates the mark, „PUMA‟, with the petitioner only. Hence, the marks of respondent no. 1 are incapable of distinguishing with those of the petitioner and being deceptively similar. 5.[3] The petitioner is the prior adopter of the mark, „PUMA‟ internationally as well as in India. Further, the marks of respondent no. 1 being deceptive similar are bound to cause confusion. Therefore, registration of the impugned marks is contrary to Sections 11 (1)(a) & (b) of the Trade Marks Act. 5.[4] The petitioner‟s trademark, „PUMA‟ is associated to the petitioner itself and holds a well-known reputation in India and internationally. Therefore, registration of the impugned marks is liable to be cancelled as per the provisions of Section 11 (2) of the Trade Marks Act. 5.[5] The respondent no. 1 has no intention for usage of the impugned mark, i.e. under registration no. 1572831 in Class 35, as the impugned mark was registered on 31st March, 2009 without any bona fide use, till date. The impugned mark has not been used for a continuous period of five years up to a date of three months before filing of this petition. Thus, the impugned mark is liable to be removed from the register under provision of Section 47 (1)(b) of the Trade Marks Act. 5.[6] The mark of the petitioner has been declared as a well-known trademark on 19th February, 2024 under Rule 124 of the Trade Mark Rules,
2017. Therefore, by virtue of Section 11 (2) of the Trade Marks Act, the same will be protected and the impugned mark is liable to be cancelled.
6. I have heard learned counsel for the petitioner and have perused the record.
7. At the outset this Court notes that the petitioner has various Indian registrations under several Classes relating to the word „PUMA‟, which are valid, subsisting and renewed as on date. Further, the earliest of petitioner‟s registration dates back to 15th February, 1977. A table indicating the Indian registrations of the petitioner, is reproduced as under
8. The petitioner also has several international trademark registrations in its favour. Documents confirming the same are placed on record. Table indicating some of the early international trademarks of the petitioner, is reproduced as under:
9. The aforesaid brings forth that the petitioner has its first international trademark registration for the mark „PUMA‟ on 01st October, 1948 in Germany and first Indian registration dating back to 15th February, 1977. In contrast both of respondent no. 1‟s registrations, i.e. and /PUMAXE (Label) registered under nos. 1572831 under Class 35 and 1229883 under Class 24 have a prior use claim of 13th April, 1992 and 01st April, 1996. Therefore, prima facie the petitioner‟s marks have prior claim and seniority over the marks of respondent no. 1.
10. Further, the petitioner has earned substantial revenue and spent considerable amounts on advertisements internationally. Figures indicating the revenue from the year 2012-2018 and expense on advertisement from the year 2012-2017 as given in the petition, is reproduced as under:
11. This Court also records the submissions of learned counsel for the petitioner, that during the course of the petition, the petitioner‟s marks, and have been declared as well-known marks on 19th February, 2024 under Rule 124 of the Trade Mark Rules, 2017. The Trade Mark Journal no. 2144 dated 19th February, 2024 indicates the well-known declaration of the petitioner‟s mark on Sr. No. 68 & 69 on page 18410 of the Journal. A screenshot of the same is reproduced, as under:
12. At this stage, it would be relevant to examine the grounds for refusal and protection, as provided for „well-known‟ trademarks under Section 11 (2) of the Trade Marks Act. The same is reproduced as under:
11. Relative grounds for refusal of registration.—(1) Save as provided in Section 12, a trade mark shall not be registered if, because of— ………. (2) A trade mark which— (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a wellknown trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. xxx xxx xxx” (Emphasis Supplied)
13. Therefore, in view of the aforesaid, the petitioner‟s marks, and which have been declared as „well-known‟, are entitled to receive the highest degree of protection. 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, has held as follows:
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 that the trademark „ROOH AFZA‟is a well-known mark.
64. In Planters Nut & Chocolate Co. v. Crown Nut Co.24, 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.
65. In Kenner Parker Toys v. Rose Art Industries20, the United States Federal Court has observed as under:— “A strong mark, on the other hand [as opposed to weak marks] casts a long shadow which competitors must avoid.”
66. Prima facie, the word „ROOH AFZA‟ has served as the source identifier for the appellant's product for over a century and it has acquired immense goodwill. We are of the view that the said mark requires a high degree of protection and it is essential to ensure that the competitors keep a safe distance from the said mark.
67. Given the overall commercial impression, prima facie, we are of the view that the impugned trademark lacks sufficient degree of dissimilarity, which is required to protect the appellant's trademark.
14. Further, a Coordinate Bench of this Court in the case of Allied Blenders & Distillers Pvt. Ltd. Versus SNJ Distillers Limited and Another, 2023 SCC OnLine Del 2251, while observing the scope of protection to a well-known mark, has held as follows:
46. The next station on this journey is an important landmark where the trademark ‘Officer's Choice’ was declared as a ‘well-known trademark’ under Section 2(1)(zg) of 1999 Act in Surya Rao (supra). Needless to state that having been declared as a well-known mark, ‘Officer's Choice’ is entitled to protection not just qua identical/similar goods in same class but across all classes, including classes in respect of which it holds no registration and/or for goods or services it has yet to enter in. [Ref. Disney Enterprises, Inc. v. Rajesh Bharti, 2013 SCC OnLine Del 605]. The strength of the mark ‘Officer's Choice’ is thus evident from its status as a ‘well-known’ and ‘arbitrary mark’ and it needs no emphasis that if law protects such a mark across classes and dissimilar goods, it cannot permit use of a deceptively similar mark for identical goods.
15. At this stage, on account of establishing petitioner‟s prior use, goodwill and scope of protection provided to a well-known mark, it would be relevant to compare the competing marks. A comparative table is set out, as below:
16. Perusal of the marks shows that the impugned marks are deceptively similar to the petitioner‟s prior used and registered „PUMA‟ trademarks. The services covered under the impugned marks relate to sales and marketing of clothing, footwear and headwear business, which is identical to the petitioner‟s products/ services and business. Further, on account of the mark of the petitioner being accorded the position of a well known mark, the same are entitled to highest degree of protection. Thus, the impugned marks cannot qualify for protection as trademarks, as the members of the trade and public would invariably associate the same with the petitioner. The adoption of deceptively similar marks by the respondent no. 1, is bound to cause confusion and deception in the minds of the members of the trade and public, as to the source or origin of the goods.
17. This Court also notes the submission of learned counsel for the petitioner that the respondent no. 1 has not been using one of the impugned marks, i.e. bearing registration no. 1572831 under Class 35 for a continuous period of five years and more. Moreover, no document has been placed on record to indicate any bona fide and continuous usage of the mark. The submissions made by the petitioner in this regard, have remained uncontroverted.
18. In view of the aforesaid detailed discussion, it is evident that the impugned marks of respondent no. 1, i.e. and /PUMAXE (Label), are liable to be removed from the Register.
19. Accordingly, the impugned registrations of respondent no. 1‟s trademarks, i.e. and /PUMAXE (Label) registered under nos. 1572831 under Class 35 and 1229883 under Class 24, are hereby cancelled, and directed to be removed from the Register of Trade Marks. Rectification of its Register be carried out by the Registrar of Trade Marks, and its website be updated, in terms, thereof.
20. The Registry of this court is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.
21. Accordingly, with the aforesaid directions, the present petitions are disposed of. MINI PUSHKARNA, J NOVEMBER 14, 2024