Full Judgment Text
$~23 & 24
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Date of Decision: 14 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
versus
SH JUGAL KISHORE JAIN T/A M/S ASHISH JAIN TEXTILE
MILLS (REGD) AND ANR. .....Respondents
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra
and Mr. Alexander Mathai Paikaday,
Advs.
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
versus
JUGAL KISHORE JAIN AND ANR. .....Respondents
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra
and Mr. Alexander Mathai Paikaday,
Advs.
M: 9810788606
Email: hvscgscdhc@gmail.com
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present petitions have been filed under Section 57 of the Trade
Marks Act, 1999 (“Trade Marks Act”) seeking removal of the trademarks,
Signature Not Verified
C.O. (COMM.IPD-TM) 697/2022 & C.O. (COMM.IPD-TM) 81/2023 Page 1 of 13
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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.
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2. This Court vide order dated 14 October, 2024 has proceeded ex-
parte against respondent no. 1. The relevant portion of the said order is
reproduced as under:
“xxx xxx xxx
st
1. Perusal of the order dated 01 August, 2024 shows that respondent
no.1 has already expired and the legal representative of the deceased
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respondent no.1 was served on 19 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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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
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India since 1982 with its earliest India registration dating back to 15
February, 1977 along with various other registrations in other classes.
4.5 In the course of these petitions, the petitioner‟s marks
and
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have also been declared as well-known trademarks on 19
February, 2024 under Rule 124 of the Trade Mark Rules, 2017. The Trade
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Mark Journal no. 2144 dated 19 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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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
st
impugned mark was registered on 31 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
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trademark on 19 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.
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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
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registration dates back to 15 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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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
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trademark registration for the mark „PUMA‟ on 01 October, 1948 in
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Germany and first Indian registration dating back to 15 February, 1977. In
contrast both of respondent no. 1‟s registrations, i.e.
and
/PUMAXE (Label) registered under nos. 1572831 under Class 35 and
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1229883 under Class 24 have a prior use claim of 13 April, 1992 and 01
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:
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
11. This Court also records the submissions of learned counsel for the
petitioner, that during the course of the petition, the petitioner‟s marks,
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have been declared as well-known marks on 19
and
February, 2024 under Rule 124 of the Trade Mark Rules, 2017. The Trade
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Mark Journal no. 2144 dated 19 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:
Signature Not Verified
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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:
“xxx xxx xxx
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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
(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 well-
known 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:
“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 that the trademark
„ROOH AFZA‟ is a well-known mark.
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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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
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is necessary to ensure that the marks of a competitor do not come close
to the said senior marks .
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65. In Kenner Parker Toys v. Rose Art Industries , 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.
xxx xxx xxx”
(Emphasis Supplied)
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:
“xxx xxx xxx
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.
xxx xxx xxx”
(Emphasis Supplied)
15. At this stage, on account of establishing petitioner‟s prior use,
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
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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
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07
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/kr
Signature Not Verified
C.O. (COMM.IPD-TM) 697/2022 & C.O. (COMM.IPD-TM) 81/2023 Page 13 of 13
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:26.11.2024
09:47:07