IMPORTANT POINT
Trademark infringement and passing off under the Trade Marks Act, 1999, and the seriousness of counterfeiting in eroding brand value and misleading consumers.

JUDGMENT

1. Summons in this suit were issued by this Court on 20 January 2022, on which date notice was also issued in IA 1081/2022 filed with the suit under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) with an ad interim order passed thereon. Fresh summons were directed to be issued on 4 May 2022 and again on 12 December 2022.

2. Defendant 1 was served on 18 January 2023, and it has been so noted in the next order dated 2 February 2023. Defendants 2 and 3 were deleted from the array of parties, leaving Defendant 1 as the sole surviving defendant, vide order dated 28 March 2023. As no written statement was filed by the defendant, the right of the defendant to file written statement was closed vide order dated 11 July 2023 passed by the learned Joint Registrar(Judicial).

3. The assertions and allegations in the plaint have, therefore, gone unrebutted and are deemed to be admitted on the principle of nontraverse.

4. Having heard Mr. Ranjan Narula, learned Counsel for the plaintiff and having perused the material on record, I am of the opinion that no contentious issue of fact or law arises, and that the suit is liable to be decreed in the plaintiffs favour, exercising the jurisdiction visited in this Court by Order VIII Rule 10 of the CPC.

5. The plaintiff is a company based in Germany, which manufactures sportswear and athletic shoes, under the brand "PUMA" with the mark of a leaping PUMA, resulting in the logo. The plaintiff also uses a distinctive Form strip logo.

6. Under the aforesaid marks and logos, the plaintiff has been manufacturing and selling its products in over 120 countries. It is asserted that the mark "PUMA" was coined in 1948.

7. In India, the plaintiff is the proprietor of the following marks, registered under the Trade Marks Act, 1999:

8. It is asserted that these registrations are valid and subsisting as on date.

9. The plaintiff has provided its sales figures, in India, of the products bearing the PUMA brand which, in the year 2021 till filing of the suit, was in the region of Rs. 1,237 crores in 2021 alone. The plaintiff also spends considerable amounts towards advertisement and promotion of its brands.

10. In the year 2021 from April till September, the plaintiff had spent over Rs. 51.5 crores towards advertisement and promotion.

11. The plaintiffs PUMA mark has also been declared as a well-known mark in India by the Trademarks Registry as published in the Trademark Journal no. 1942 on 24 February 2020.

12. The Defendant 1 is engaged in making and selling counterfeit PUMA products, using the plaintiffs PUMA and Form strip logo, through its revealingly titled website www.sastajoota.com.

13. The plaintiff has also provided screenshots of various sites on which the Defendant 1s products are sold as well as photographs of the Defendant 1s products, which vouchsafe the allegation that the defendants are selling counterfeit duplicate PUMA sportswear and shoes. These may be reproduced thus:

14. The aforenoted facts make it clear that Defendant 1 is using marks which are identical to the plaintiffs registered trademarks, on goods which are identical to the goods on which the plaintiff uses its marks and is selling the goods to the very same consumers who form the consumer target base of the plaintiff through the very same channels. As such, the triple identity test, which envisages identity of marks, goods and consumers and availability of the goods through identical sources and outlets, is satisfied in the present case. One may even say the quadruple identity test stands satisfied.

15. The facts of the present case, in fact, directly invoke Section 29(2)(c) read with 29(3)[

29. Infringement of registered trade marks. -

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or

a person using by way of permitted use, uses in the course of trade, a mark which because of -

(c) its identity with the registered trade mark and the identity of the goods or services covered by