In the instant trademark infringement case before the Delhi District Court (“the Court”), Nike and its subsidiary Converse (“Nike”) filed a suit for permanent injunction against Mohd. Tarik @ Mehfooz Sheikh, Fareed Khan, and Sayyed Mohd. Zuber (“the defendants”).
Background of the Parties
Named after the Greek Goddess of Victory, Nike adopted the trademark NIKE and the SWOOSH logo in 1971 in relation to its footwear, athletic shoes, and related products. With a well-established global presence spanning 160 countries (including India), Nike is endorsed by renowned athletes and is associated with popular sports teams. One cannot think of shoes, without thinking of Nike.
On the other hand, the defendants are running a footwear and clothing business by adopting trademarks such as Nike, Nike Pro, Nike+ and device marks such as Swoosh, Converse, Converse All-Star, etc. The suit was initially filed under the John Doe principle, however, the defendants were subsequently identified and impleaded.
Nike’s arguments
Nike argued that its marks NIKE and CONVERSE are well-known trademarks and registered under the provisions of the Trademarks Act. On account of its high quality of goods and marketing techniques, its trademark and logo had acquired distinctiveness, ensuring that the purchasing public associates the products with Nike exclusively.
Nike contended that the defendant’s unauthorized adoption of trademarks/logos which are deceptively and confusingly similar to its registered trademarks, in relation to the same goods and services constitutes infringement, causing confusion among the purchasing public. It further stated that the defendants were passing off their sub-standard products as Nike’s, damaging its reputation and goodwill.
The defendants were proceeded against ex-parte since they neither entered appearance nor file a written statement, upon service.
Court’s observations
The court observed that the trademarks of the defendants were identical to Nike’s registered marks, in relation to identical goods and services. A presumption of likelihood of confusion among public was therefore likely to arise.
Distinguishing between passing off and trademark infringement, the Court observed as follows –
“45. …It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of their own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendants of the trademark of the plaintiffs are a sine qua non in the case of an action for infringement…”
The Court reiterated the well-settled principle of law that the test to determine deceptive similarity is not a side-by-side comparison. Rather, the marks must be compared as remembered by a person of average memory with imperfect recollection.
The Court found that Nike had succeeded in proving its case further affirmed by the Local Commissioner’s Report documenting infringing goods bearing NIKE and CONVERSE marks found in the defendants’ premises.
Conclusion
Through its judgment dated 07-09-2024, the Court held that Nike was entitled to a permanent injunction restraining defendants from using its trademarks/logos in relation to similar goods and awarded exemplary damages of
Rs.1 lakh- in favour of Nike.
Citation: Nike Innovate C.V. And Anr/ v. Mahfooz Shaikh, CNR. NO. DLND01-004491-2021, TM NO. : 10/2021 (Delhi District Court 7th Sept., 2024). Available at https://indiankanoon.org/doc/96769970/, visited on 21-10-2024.
Authored by Ms. Charishma, Associate (Innovation, Consulting & Strategy, BananaIP Counsels
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