Delhi High Court Upholds Trade Mark Rights and Addresses Unconventional Defenses

Introduction

Recently, the Delhi High Court rendered a landmark judgment in the trade mark infringement case of Adidas AG v. Keshav Tulsiani. In this case, the Court granted a permanent injunction against the Defendant, Keshav Tulsiani, and imposed a fine of Rs. 14.22 lakh for the infringement of the trade mark “ADIDAS.” This decision underscores the Court's commitment to upholding trade mark rights and highlights the challenges associated with unconventional defenses in intellectual property disputes.

Background

The dispute in this case revolves around the use of the trade mark “ADIDAS.” The Plaintiff, Adidas AG, a renowned global sportswear brand, derives its name from the combination of its founder Adolf Dassler's first and last names. The brand has been in use since 1949 and has become a significant global entity known for its sports goods and apparel.

In contrast, the Defendant, Keshav Tulsiani, named his company “ADIDAS” out of familial admiration. The Defendant argued that the trade mark was chosen based on a Sindhi cultural term where “Adi” means elder sister and “Das” means devotee, signifying his affection for his sister. This argument, though novel, was scrutinized within the context of trade mark law and its implications.

Submissions of the Petitioner

Adidas AG argued that the Defendant's use of the name “ADIDAS” was a direct infringement of its trade mark. The Plaintiff presented evidence demonstrating that their mark was widely recognized and associated with their products well before the Defendant's use. They also countered the Defendant's claims of bona fide use, arguing that the resemblance between the two marks was likely to cause confusion among consumers. Additionally, the Plaintiff refuted claims of territorial jurisdiction and delay, asserting that their products were known in India before the Defendant's mark was registered.

Submissions of the Respondent

The Defendant contended that the use of “ADIDAS” was based on an honest intention and familial affection, rather than an attempt to mimic the Plaintiff's mark. Tulsiani argued that the case lacked territorial jurisdiction, as his business operations were outside the Court’s jurisdiction. He also claimed that his trade mark was registered before the Plaintiff’s, and that the Plaintiff's delay in filing the suit implied a waiver of rights due to estoppel and acquiescence. Furthermore, the Defendant highlighted the different usage styles of the mark to argue a lack of similarity.

Analysis of the Judgment

The Delhi High Court analyzed the case considering the evidence presented by both parties. The Court found that despite the Defendant’s argument of familial affection, the use of the mark “ADIDAS” bore a striking resemblance to the Plaintiff's established trade mark. The Court noted that the mark “ADIDAS” was a unique, coined term without any significant linguistic meaning. The Defendant’s argument of honest adoption was undermined by the lack of substantive evidence and the fact that the mark’s similarity was likely to mislead consumers.

Regarding territorial jurisdiction, the Court upheld the Plaintiff’s claim, noting that both parties' business operations had significant connections to Delhi. The Court also addressed the delay issue, emphasizing that the Defendant failed to provide adequate evidence to support claims of prior usage and consent. The Defendant's arguments about the delay in filing the suit were dismissed as insufficient to counter the established trade mark rights of the Plaintiff.

Finally, considering all the evidence and arguments, the Court stated that, “Given the identity of the marks, the allied nature of the goods under Classes 24 and 25, and the significant overlap in trade channels, there is a high likelihood of confusion among consumers. The Defendants have not provided evidence to counter this presumption of confusion or to show honest and distinct commercial use.”

Conclusion

The Delhi High Court’s decision in this case reaffirms the strength of trade mark protections in India and underscores the necessity for credible evidence in Defending against claims of infringement. The Court’s ruling not only reinforced the exclusive rights of Adidas AG but also established a precedent for evaluating the legitimacy of unconventional defenses in trade mark disputes. This case highlights the importance of respecting intellectual property rights and provides clear guidance for future cases involving similar issues.

Reference:

(CS(COMM) 582/2018, I.A. 14215/2019, I.A. 334/2020)