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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Cross Fit LLC - Appellant
Versus
RTB Gym and Fitness Centre - Respondent
CS(COMM) 543 of 2021
Decided On : 06-09-2022
Key Points: - Plaintiff seeks permanent injunction and damages for use of CROSSFIT mark; court decrees permanent injunction and monetary relief (!) (!) (!) (!) (!) - Defendant’s non-compliance with injunction and court orders leads to contempt consideration and appointment of Local Commissioner to ensure compliance (!) (!) (!) (!) - Local Commissioner duties include removal of infringing material, inventory seizure, and handing over to plaintiff on superdari; costs awarded due to flagrant non-compliance (!) (!) (!) (!) (!) (!) - Plaintiff awarded costs of Rs. 10,00,000; payment deadline and remedies outlined (!) (!) - Plaintiff authorized to approach online intermediaries for takedown of infringing listings; 48-hour takedown requirement after notice (!) - Prior interim injunction and its conversion to permanent injunction; defendant served but did not appear (!) (!) - Contempt jurisprudence cited to justify contempt action for continued use of CROSSFIT despite injunction (!) (!)
| Table of Content |
|---|
| 1. plaintiff's ownership and use of the trademark 'crossfit' (Para 2 , 3 , 4 , 5 , 6 , 7) |
| 2. procedural history and initial court orders (Para 8 , 9 , 10) |
| 3. grants of permanent injunction and summary of reliefs (Para 11 , 12) |
| 4. contempt of court consideration and implications (Para 13 , 14 , 19 , 22) |
| 5. consequences of the defendant's non-compliance (Para 15 , 16 , 17 , 18) |
| 6. appointment of local commissioner for compliance (Para 23 , 24 , 25 , 26 , 27) |
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff seeking permanent injunction restraining infringement of trademark, passing off, dilution and tarnishment of trademark, unfair competition, damages, rendition of accounts, delivery up, and other reliefs. The Plaintiff claims to be the proprietor of the registered trademark `CROSSFIT' used in respect of services in the health, fitness and nutrition sector. The details of the Plaintiff's registrations in respect of the mark `CROSSFIT' are set out below:
3. The Plaintiff is a company based out of California, USA incorporated under the name CrossFit Inc., in the year 2004. Thereafter, the Plaintiff was incorporated in the State of Delaware, USA in the year 2008. As set out in the Plaint, the Plaintiff is mainly engaged in the business of providing products and services in the health, fitness and nutrition space. The business model of the Plaintiff includes providing services for strength training, fitness programs in addition to conducting fitness seminars and providing trainer certifications. It has operations in more than 145 countries and has more than 1.3 lakh accredited CrossFit Level 1 trainers. There are more than 15,000 gyms which are affiliated with the Plaintiff and are using the mark `CROSSFIT'.
4. The Plaintiff coined and adopted the mark `CROSSFIT' in the year 1995 and has been continuously and extensively using the said mark in respect of its products and services. In India, the first `CROSSFIT' gym was opened in the year 2009 and it has more than 40 licensees/affiliates. The Plaintiff also registered the domain name `www.crossfit.com' in October, 1999. The Plaintiff has obtained various registrations for the word and device mark `CROSSFIT' in India and in other jurisdictions, including European Union, Australia, USA, Japan, Bahrain, China, Israel, Jordan, Kuwait, Saudi Arabia and United Arb Emirates. The `CROSSFIT' mark is used by the Plaintiff, as also, its licensees across the world. It has collaborations with various other companies and foundations, and has organized several events, including the `CROSSFIT' Games, which are held annually since the year 2007. The mark is extensively advertised and popularised. The advertising expenses incurred by the Plaintiff in respect of services provided by the Plaintiff under the mark `CROSSFIT' is stated to be over USD 2.5 million in the year 2016. The Plaintiff's sponsorship revenue for the year 2018-21 was also around USD 25 million.
5. The grievance of the Plaintiff is that the Defendant is a gym and fitness centre owned and operated by its proprietor Mr. Arun Sharma and is using the identical mark `CROSSFIT' in respect of identical services relating to gym and fitness. The Plaintiff acquired knowledge of the use of the said mark by the Defendant in September, 2020. The case of the Plaintiff is that the Defendant has been prominently displaying the mark `CROSSFIT' at its premises, literature, online pages as hashtags since March, 2018. The mark `CROSSFIT' as used by the Defendant is depicted below:
6. The Defendant was also using the mark `CROSSFIT' on various online directories and social media platforms, including Facebook, Instagram, Justdial, Fitternity etc. The screenshots of the Defendant's web pages using the mark `CROSSFIT' have been placed on record and some of them are reproduced below:
7. In these circumstances, the Plaintiff has filed the p
Trademark owners are entitled to seek injunction and damages against unauthorized use of identical marks which may lead to consumer confusion and unfair competition.
Strict compliance with court orders and consequences of contumacious conduct
Trademark infringement and passing off granted as Plaintiff established extensive goodwill and unauthorized use by Defendants led to significant damages.
Trademark infringement and passing off can be established based on the use of deceptively similar marks and failure to comply with interim injunction orders.
Trademark protection serves both the individual brand owner's interests and the consumer's right to accurate product representation, especially in cases of counterfeiting.
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