In the case involving Vans Inc. (“Plaintiff”) and Gopal Goyal (“Defendant”), VANS Inc., the renowned skateboarding footwear and extreme sports apparel manufacturer, filed a suit alleging trademark infringement under the Ashok Kumar/ John Doe principles.
VANS in its suit, claimed ownership of multiple registered and pending trademarks in India, including the mark VANS and associated copyrights over its product designs. Through significant global marketing efforts, VANS as a brand has gained substantial reputation and goodwill in India and globally.
In June 2019, VANS discovered counterfeit products, including footwear bearing the mark “VANS” being sold in New Delhi. VANS sought an ex parte ad interim injunction from the Delhi District Court against Ashok Kumar (based on the ‘John Doe’ principle) and requested the appointment of a Local Commissioner. Following a favourable order, Mr. Gopal Goyal was impleaded as the Defendant. It was found that Mr. Goyal was using trademarks deceptively similar to VANS’ registered trademarks for manufacturing, marketing, and selling of footwear, sports products, and apparel. VANS alleged that this use of identical or confusingly similar trademarks was likely to cause consumer confusion and deception. Additionally, Mr. Goyal was counterfeiting goods and passing off inferior products as those of VANS, resulting in reputational damage and financial loss.
Mr. Goyal failed to file a written statement or contest the claims made by VANS, leading the Court to proceed ex parte against him.
The Court took into consideration the precedent set in Shaw Wallace & Co. Ltd. v. Superior Industries Ltd. to evaluate trademark similarity based on whether they are likely to deceive or confuse the average consumer. The Local Commissioner’s report revealed that Mr. Goyal possessed multiple boxes of infringing goods, including footwear branded with falsified VANS trademarks. These goods were of poor quality, lacked care and security labels, and bore trademarks identical or deceptively similar to the registered VANS marks.
The Court held that Mr. Goyal’s use of the infringing trademarks was not only fraudulent but also deceptive to the general public. It was also observed that VANS was likely to suffer reputational harm and financial losses due to the likelihood of confusion and passing off of the infringing goods.
Consequently, the Court granted a permanent injunction against Mr. Goyal, restraining him and other representatives from manufacturing, marketing, selling, distributing goods, or engaging in any online activities that infringe upon VANS’ trademarks or logos. Additionally, Mr. Goyal was ordered to deliver all infringing goods and materials. VANS was also awarded exemplary damages of ₹50,000 and the cost of the suit.
Citation: M/S VANS Inc. USA vs Ashok Kumar, Delhi District Court, 16th January 2024 [CS (COMM.) NO.: 441/2019 (OLD TM NO. 86/2019)] Available at: https://indiankanoon.org/doc/144536490/
Authored by Bhavishya B, Associate, BananaIP Counsels
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