Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2025 Supreme(Online)(Del) 48394

IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of decision: July, 09, 2025

CS(COMM) 383/2021, I.A. 10356/2021-Stay, I.A. 12633/2025-by plaintiff O-XIIIA r/w O VIII R-10 CPC

PUMA SE .....Plaintiff
Versus
HIMANSHU SHARMA .....Defendant

Through: Mr. Ranjan Narula, Mr. Shakti Priyam Nair and Mr. Parth Bajaj, Advocates.
Through: None.

CORAM: HON'BLE MR. JUSTICE SAURABH BANERJEE

Advocates:
For the Appellants/Petitioners: Ranjan Narula, Shakti Priyam Nair, Parth Bajaj
For the Respondents: None

Counterfeiting of well-known trademarks constitutes a grave commercial malpractice. Where a defendant willfully evades judicial proceedings and fails to contest evidence, the court may grant a summary judgment and award damages to protect the proprietor's intellectual property rights.

Headnote:The plaintiff, a globally reputed brand in sports apparel, sought a permanent injunction and damages against the defendant for selling counterfeit shoes bearing its well-known registered trademarks and logo via the website 'www.theshoeskart.com'. The plaintiff relied on the Trade Marks Act, 1999, specifically S.29(1) and S.29(2), and Order XIIIA read with Order VIII Rule 10 of the Code of Civil Procedure, 1908, to seek a summary judgment after the defendant failed to appear or file a written statement. The main issue was whether the defendant's unauthorized use of a well-known trademark and subsequent evasion of judicial proceedings entitled the plaintiff to a summary judgment. The court reasoned that since the defendant was proceeded ex-parte and had not disputed the evidence, including an Analysis Report, the averments were deemed admitted. The court observed that counterfeiting is a "grave and egregious offence" and "commercial malpractice" that necessitates a stringent approach, particularly when a defendant willfully evades proceedings to avoid liability. The present suit is decreed in terms of prayer paragraphs (a)(b)(c)(d)(g) of the plaint as also the plaintiff is entitled to actual costs of Rs.5,90,000/- as sought by the plaintiff.

1. The plaintiff, by way of the captioned suit, seeks permanent injunction, infringement of trademark, passing off, damages, delivery up, etc., against the defendant.

2. As per the plaintiff, it is one of the most reputed companies/ brands engaging in the business of selling, manufacturing, and advertising sports apparel and accessories inter alia, throughout the globe. The plaintiff has spent substantial amounts towards the advertisement and marketing of its brand, within India and in international markets, and has also generated significant revenue therefrom. The plaintiff, in order to carry out business, has secured multiple registrations for their trademark in various countries, and their trademark has garnered a well-known status in India by the Trade Mark Registry vide Trade Mark Journal bearing no.2144 dated 19.02.2024.

3. The defendant herein is engaged in the business of stocking, selling, and supplying counterfeit shoes bearing the plaintiff’s trademarks i.e.

“ PUMA ”/ and logo i.e. and also engaged in selling the counterfeiting products and the registrant of domain name/ website i.e. “www.theshoeskart.com,” on which the aforementioned products are sold.

4. In or around the second week of July 2021, the plaintiff received a customer complaint about the substandard quality of the plaintiff’s shoes purchased from the website of the defendant. Subsequent to the investigation, it was revealed that the products in question were counterfeit, as the products were being sold unauthorisedly by the defendant and, as a result, thereof infringing the plaintiff’s intellectual property rights, therefore, in light of the above, the plaintiff instituted the present suit.

5. This Court vide order dated 18.08.2021 restrained the defendant

from using the plaintiff’s trademarks i.e. “ PUMA ”/ and logo i.e. (trademark) as also the Domain Name Registrar (DNR) of defendant was directed to suspend the access to the domain name “https://theshoeskart.com/” of defendant and its URL’s i.e. https://www.theshoeskart.com/ and respective IP address, i.e. 23.227.38.74 as the plaintiff’s trademarks have been in use continuously since 1948 and are registered in India since 1983 under Classes 25 and 18 of the Trade Marks Act, 1999 (TM Act) and pertinently since the plaintiff’s trademark has been declared as a well-known mark vide Trade Mark Journal bearing no.2144 dated 19.02.2024.

6. Further, as the defendant failed to appear and file its written statement within the permissible time period, despite service of summons upon it by publication on 07.01.2024, his right to file written statement was closed vide order dated 06.02.2025.

7. It is under these circumstances that the plaintiff has preferred the present application under Order XIIIA read with Order VIII rule 10 of the Code of Civil Procedure (CPC) for passing of a summary judgment.

8. As per learned counsel for the plaintiff, the plaintiff is the prior adopter, continuous user, and the proprietor of the trademark involved in the present lis as also the said trademark has acquired distinctiveness, being exclusively associated with the plaintiff’s products. The unauthorised adoption and blatant counterfeiting of the plaintiff’s trademarks by the defendant, constitutes a manifest infringement within the contemplation and protection bestowed under Sections 29(1) and 29(2) TM Act.

9. Learned counsel for the plaintiff also submits that the evidence i.e. the Analysis Report issued by the plaintiff’s Brand Protection Manager dated 12.08.2021, and the numerous customer complaints about the counterfeit product sold by the defendant, reflect the blatant counterfeiting of the plaintiff’s trademark and reveals the obvious mala fides on the part of the defendant to ride upon the goodwill and global repute of the plaintiff’s well-established trademark.

10. This Court has heard the submissions advanced by the learned counsel for the plaintiff and has also gone through the pleadings as well as perused the documents on rec

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