Delhi High Court Pronounces Lifelong Ban on ‘Sastajoota’ for Peddling Counterfeit ‘PUMA’ Merchandise
In a landmark case before the Delhi High Court, Defendant 1, operating under the name ‘Sastajoota‘, was found guilty of distributing counterfeit ‘PUMA’ sportswear and shoes. Presiding over the case, C. Hari Shankar, J.*, delivered a decisive judgment. The court ruled that Defendant 1, along with anyone acting on their behalf, will face a permanent injunction, preventing them from engaging in any form of dealings related to products bearing the “PUMA” mark. This injunction encompasses physical and online sales and includes a wide range of products, such as footwear, sportswear, apparel, and associated accessories, bearing either the “PUMA” mark or any marks or logos identical or deceptively similar to the Form strip logo.
PUMA mark Context
The plaintiff, a German-based company, specializes in the production of sportswear and athletic shoes under the renowned brand “PUMA.” This brand is represented by a distinctive leaping PUMA logo, which was established in 1948. Furthermore, the plaintiff also employs a unique Form strip logo. Notably, the “PUMA” mark was officially recognized as a well-known trademark in India by the Trade Marks Registry in 2020.
On the other hand, Defendant 1 has been involved in the illicit production and distribution of counterfeit PUMA products. They have unabashedly used the plaintiff’s “PUMA” trademark and Form strip logo for this purpose, primarily operating through their openly named website, www.sastajoota.com. The plaintiff submitted a comprehensive body of evidence, including screenshots from various websites where Defendant 1’s products were available for purchase, along with photographic evidence that irrefutably confirmed the sale of counterfeit “PUMA” sportswear and shoes by the defendants.
Legal Analysis and Verdict
The Court keenly observed that Defendant 1 had employed marks that were entirely identical to the plaintiff’s registered trademarks. Notably, these marks were affixed to products that were also identical to those for which the plaintiff’s marks were intended. Furthermore, the defendants were targeting the same consumers who constituted the plaintiff’s primary consumer base, and they were doing so through identical distribution channels. Consequently, the Court concurred that the “triple identity test,” which hinges on the alignment of marks, goods, consumers, and distribution sources, was unequivocally met.
In addition, the Court invoked the provisions of Section 29(2)(c) in conjunction with Section 29(3)1 of the Trade Marks Act, 1999. These sections dictate that when rival marks are indistinguishable and pertain to identical goods or services, it is presumed that confusion will arise in the minds of consumers. As a result, the Court unequivocally declared that the current case clearly demonstrated infringement and the wrongful passing off of the registered “PUMA” word mark, the registered device marks, and the rights held by the plaintiff.
Court’s Verdict and Costs Awarded
The Court handed down a decisive ruling, permanently restraining Defendant 1 and any individuals acting on their behalf from engaging in any form of trade, whether physical or online, related to a wide range of products. These products include but are not limited to footwear, sportswear, apparel, and associated accessories, all bearing the “PUMA” mark, the Form strip logo, or any other marks or logos that bear a striking resemblance or seek to deceive.
Furthermore, the Court held that Defendant 1’s actions were that of a counterfeiter, and their unnecessary legal actions against the plaintiff warranted a response. In light of this, the plaintiff was deemed entitled to recover the actual costs incurred during this litigation from Defendant 1. Consequently, the Court ordered Defendant 1 to pay the plaintiff a sum quantified at Rs. 4,59,520 as costs.