JUDGMENT :

Prathiba M. Singh, J.

1. This hearing has been done through hybrid mode.

I.A. 7860/2022 (u/O XXIII Rule 3 CPC) in CS(COMM) 137/2021

2. The present suit has been filed by the Plaintiff- PUMA SE seeking protection of its mark ‘PUMA’ which was coined and adopted by it internationally in 1948. The Plaintiff’s brand ‘PUMA’ is one of the world’s leading sports brand designing, developing, selling and marketing footwear, apparel and accessories. The mark ‘PUMA’ has been used in India from 1980’s onwards and the same is registered under several classes. Defendant No.1- M/s Hi-Tech Point Technologies Pvt. Ltd. started a Global Positioning System (hereinafter ‘GPS’) service through electronic application by the name ‘PUMA GUARD’. Defendant No.2 - Black Box GPS Technology OPC Pvt. Ltd. also launched a device with GPS tracking and anti-theft capabilities under the mark ‘PUMA’.

3. Defendant No.1 filed an application for registration of the mark ‘PUMA THE VEHICLE GUARD’ in Class-9 on 23rd February, 2013 on ‘proposed to be used’ basis. On coming across the said application, correspondence was entered into between the parties. However, the Defendants refused to comply with the requisitions of the Plaintiff. The Plaintiff also came across two domain names, namely, ‘www.pumaguard.in’ and ‘www.pumaguard.com’ where Defendant No. 2 was promoting and selling its GPS and anti-theft vehicle devices under the impugned mark. After effecting a purchase on 15th February, 2021 from Defendant No.2, the present suit was filed.

4. Vide order dated 24th March, 2021, an ex parte ad-interim injunction was granted in the following terms:

“13. In view of the above, the Plaintiff has made out a prima facie case, the balance of convenience also lies in favour of the Plaintiff and irreparable cause would be caused to the Plaintiff in case the Defendants are not restrained, as prayed for. Accordingly, the Defendants, their directors, partners or proprietors as the case may be, servants, agents, affiliates, associates, stockiest are restrained from manufacturing, stocking, warehousing, trading, supplying, selling, marketing, in any manner including online sale or dealing in any other way, any goods including antitheft and GPS vehicle devices and/or any other products under the trade marks or any other name/ mark which is identical and deceptively similar to the Plaintiff's mark PUMA including use of it as a domain name not limited to pumaguard.in and pumaguard.com or key words or meta-names, Twitter handle, Facebook channel, LinkedIn profile, YouTube channel, app name or any other online media which may amount to infringement or passing off of the Plaintiff's registered trademarks as mentioned in paragraph 12 of the plaint.”

5. Vide the said order, a Local Commissioner was also appointed to visit the premises of Defendant No.2 and prepare an inventory of the products with the impugned mark. The Local Commissioner executed the commission in Chandigarh in Defendant No.2’s premises and made an inventory of the GPS tracking devices under the name ‘PUMA’. Photographs were also taken by the Local Commissioner. The said devices were 19 18 in number and one packaging was also found bearing the mark ‘PUMA’. The same were returned on superdari to Defendant No.2.

6. The Defendants who are impleaded in the present suit are Defendant Nos.1 and 2 who are the contesting parties. Defendant No.3- Endurance Domains Technology LLP is the Registrar of the domain name ‘www.pumaguard.in’. Defendant No.4- PDR Solutions Fzc is the webhost of the website ‘www.pumaguard.in’. Defendant Nos.5 and 6 are the Registrar and web host respectively of the website ‘www.pumaguard.com’. Defendant No.7- Google LLC has included Defendant No.1’s GPS tracking application on the Google Play Store. Defendant No.8- Apple Inc. has also included the Defendant No.1’s application on its `App store’. Defendant No.9- Twitter Inc, Defendant No.10-LinkedIn Corporation and Defendant No.11-Facebook Inc. are social medi