The Hon'ble Delhi High Court in PUMA SE vs ASHOK KUMAR TRADING AS R.K. INDUSTRIES [CS(COMM) 616/2022] held that selling counterfeit products bearing the PUMA trademark constitutes trademark infringement and unfair trade practices, warranting a decree in favor of the plaintiff, PUMA SE. The Court found that the defendant, Ashok Kumar Trading as R.K. Industries, was manufacturing and selling garments like t-shirts and track pants bearing the well-known PUMA mark and leaping cat device mark, which were confirmed as counterfeit after a sample purchase. An ex-parte ad-interim injunction was granted against the defendant on September 5, 2022, and a Local Commissioner's report revealed 383 pairs of lowers/track pants and 64 stickers bearing the impugned PUMA mark at the defendant's premises. Despite being served, the defendant failed to appear or file a written statement, leading the Court to classify them as a "first-time knowing infringer" and award a decree granting a permanent injunction and costs of Rs. 3.5 Lakhs in favor of PUMA SE.
Facts of the Case:
The Plaintiff, PUMA SE, is a German company engaged in the manufacture, marketing, and selling of sportswear and athletic shoes under the well-known trademark "PUMA," its variants in device and logo forms, as well as the leaping cat device mark. PUMA claims to be one of the world's leading sports apparel brands, designing, developing, selling, and marketing footwear, apparel, and sports accessories for over 70 years. The PUMA mark is globally renowned and endorsed by famous celebrities across the world, such as soccer celebrities like Pele and Diego Maradona. PUMA products are available in more than 20 countries, and the company employs over 10,000 people worldwide. In 2019, PUMA's sales were more than 5500 million euros, with promotional expenses exceeding 1100 million euros . In India, PUMA has various trademark registrations for the word mark "PUMA," the leaping cat device mark, and other connected logo forms and variants, with the earliest registration (No. 323053) dating back to 1977 in Class 18. In July 2022, a field inquiry revealed that the Defendant, Ashok Kumar Trading as R.K. Industries, was manufacturing, supplying, and selling garments, including t-shirts and track pants, bearing the Plaintiff's PUMA mark and the leaping cat device mark. A sample purchase executed on August 10, 2022, confirmed that the products purchased from the Defendant were counterfeit and did not originate from the Plaintiff. On September 5, 2022, the Court granted an ex-parte ad-interim injunction restraining the Defendant from advertising, selling, or offering for sale any products under the Plaintiff's PUMA mark or any deceptively/confusingly similar mark. A Local Commissioner appointed by the Court visited the Defendant's premises on September 25, 2022, and found a total of 383 pairs of lowers/track pants and 64 stickers bearing the impugned PUMA mark, which were handed over to the Plaintiff. The Defendant did not appear or file a written statement despite being served, and their right to file a written statement was closed on February 12, 2024.
Issue:
Whether the sale of counterfeit products bearing the PUMA trademark constitutes trademark infringement and unfair trade practices, warranting a decree in favor of the Plaintiff.
Held by the Court:
The Hon'ble Delhi High Court, in CS(COMM) 616/2022, held that:
The Court perused the ex-parte order dated September 5, 2022, which granted an ad-interim injunction in favor of the Plaintiff, and the Local Commissioner's report dated September 25, 2022, confirming the seizure of counterfeit PUMA-branded products from the Defendant's premises.
Relying on the decisions in Puma SE v. Ashok Kumar and Hindustan Unilever Limited v. Reckitt Benckiser India Limited, the Court observed that courts usually grant notional or compensatory damages in trademark infringement cases, unless there are extenuating circumstances and overwhelming evidence of wrongdoing, in which case punitive damages can be awarded.
Following the guidelines laid down in Koninlijke Philips and ors v. Amazestore and Ors, the Court classified the Defendant as a "first-time knowing infringer," warranting an injunction and partial costs as a proportionate award.
The Court awarded a decree in favor of the Plaintiff in terms of prayer 37(a) & (b) of the plaint, granting a permanent injunction restraining the Defendant from advertising, selling, or offering for sale any products under the Plaintiff's PUMA mark or any deceptively/confusingly similar mark.
The Court also awarded costs of Rs. 3.5 Lakhs to the Plaintiff, considering the actual litigation costs claimed by the Plaintiff of Rs. 6.09 Lakhs, including court fees, Local Commissioner's fees, and Counsel's fees.
The Court disposed of the suit and rendered pending applications, if any, infructuous.
Relevant Case Laws:
Puma SE v. Ashok Kumar, 2023 SCC OnLine Del 6764 The Court relied on this case and observed that courts usually grant notional or compensatory damages in trademark infringement cases, unless there are extenuating circumstances and overwhelming evidence of wrongdoing, in which case punitive damages can be awarded.
Hindustan Unilever Limited v. Reckitt Benckiser India Limited, 2014 SCC OnLine Del 490 This case was also cited by the Court in support of the principle that courts generally grant notional or compensatory damages in trademark infringement cases, except in cases with extenuating circumstances and overwhelming evidence of wrongdoing.
Koninlijke Philips and ors v. Amazestore and Ors, 2019:DHC:2185 The Court followed the guidelines laid down in this case for determining the appropriate relief in trademark infringement cases. Based on these guidelines, the Court classified the defendant as a "first-time knowing infringer," warranting an injunction and partial costs as a proportionate award.
The Court also referred to the principles established in Koninlijke Philips (supra) for awarding damages, stating that the situation would be of a repeated knowing infringer causing minor/major impact to the plaintiff, in which case costs plus partial/compensatory damages are to be awarded.
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