PUMA SE, PUMA WAY 1, HERZOGENAURACH, 91074, GERMANY vs GAJARI ONLINE SERVICES PVT LTD. C-398-399, SECTOR-10, NOIDA GAUTAM BUDHA NAGAR, UP
$~45
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision:-8th December, 2023.
+ C.O. (COMM.IPD-TM) 231/2022
PUMA SE, PUMA WAY 1, HERZOGENAURACH,
91074, GERMANY ….. Petitioner
Through: Mr. Ranjan Narula, Advocate (M:9891584230).
versus
GAJARI ONLINE SERVICES PVT LTD.
C-398-399, SECTOR-10, NOIDA GAUTAM
BUDHA NAGAR, UP ….. Respondent
Through: Mr. Harish Vaidyanathan Shankar, CGSC, with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday & Mr. Krishnan V., Advocates (M: 9810788606).
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The present petition was filed before the erstwhile IPAB in 2020. Post the enactment of the Tribunal Reforms Act, 2021, the petition was transferred to this Court. The present rectification petition under Section 57 of the Trade Marks Act, 1999 has been filed by Petitioner-Puma SE seeking cancellation/rectification of the trade mark bearing no. 3685324 dated 23rd November, 2017 in Class 35 registered in the name of Respondent-Gajari Online Services Private Limited. The relevant extract from the Trade Marks Journal No. 1829 dated 25th December 2017 is set out below:-
3. The case of the Petitioner is that it is a leading manufacturer and seller of various sport-inspired lifestyle products including in categories such as Football, Cricket, Running, Training 6 Fitness, Golf, and Motorsports etc.
4. The Petitioner sells products under the mark PUMA. The Petitioners mark PUMA with the leaping cat device mark (hereinafter, the Petitioners mark) is extracted below:
5. The Petitioners case is that it has been using the mark PUMA since 1948 in Germany, and got the mark first registered in Germany on 1st October, 1948. The Petitioner has been marketing and selling its products in India including in Delhi through its wholly owned subsidiary Puma Sports India Pvt. Ltd. under its well-known and world-renowned trademark PUMA.
6. The Petitioner claims to be one of the leading sporting brands in the world, which is engaged in designing, developing, selling and marketing footwear, apparels and accessories. The products of the Plaintiff are sold under the mark PUMA as also the leaping cat device thereof. The products are also sold globally as also in India. Though the main product of the Petitioner is sporting shoes, it also sells apparels and accessories including track suits, T-shirts, shorts, polo shirts, formal shoes, slippers, flipflops, sandals, bags, ladies purse, wallets, smart/sport watches, etc.
7. The PUMA brand has collaborations with various designer brands such as Alexander McQueen and Mihara Yasuhiro who enables the Petitioner to launch new and innovative products to the sporting community. The worldwide net sales of the Petitioner for the year 2019 is claimed to be in the range of 5 billion euros.
8. The PUMA brand is the umbrella brand of the Petitioner and is endorsed by a large number of internationally well-known celebrities including Usain Bolt, Virat Kohli, Sara Ali Khan, K.L. Rahul, etc. The Petitioner also invests a substantial amount of money in advertising and promotion. In the year 2019, the figure was more than 1 billion euros worldwide.
9. The Petitioner is also promoting and selling its PUMA branded products through its website hosted on the domain name www.puma.com, which is accessible to the consumers in Delhi. The domain name was registered on 19th September, 1997 and has been in use since then. The Petitioner has been supplying/selling its PUMA branded products in India since 1980s.
10. The mark PUMA is registered in Germany since 1948, in the USA since 1965, and in Australia since 1969. The details of the earliest international registrations are set out below:
11. In India, the mark PUMA as also the leaping cat device are registered since 1977 and 1986. The details of the some of the said registrations are set out below:
Marks
Registration No.
Date
Class
323376
28th February 1977
25
450143
25th February 1986
25
12. The grievance in the present petition is that the device which is registered by the Respondent vide registration no. 3685324, though a lion, possesses the same attributes and characteristics as the leaping cat device of the Petitioner. Since puma cats and lion belong to the same family of cat family, Felidae, considering the visual similarity, the manner in which it is depicted could lead to confusion if used on apparel, shoes, and other sporting goods, potentially being mistaken for the Petitioners leaping cat device mark. Thus, clearly, the Petitioner is a person aggrieved within the meaning of Section 57 of the Trade Marks Act, 1999.
13. Mr. Ranjan Narula, ld. Counsel for the Petitioner, submits that the Petitioners leaping cat device has, in fact, been declared a well-known mark in terms of Section 2(1)(zg) of the Trade Marks Act, 1999 read with Rule 124 of the Trade Marks Rules, 2017 in the Registrar of Trademarks. The same was included in the category of well-known marks on 2nd October, 2023 and the extract thereof is set out below:-
Trade Marks Journal No: 2124, 02/10/2023
Publication of the Trademarks under Rule 124 of Trade Marks Rules, 2017
A. Publication of the trademark u/r 124 (4) of Trade Marks, Rules 2017, proposed to be included in the list of Well-Known Trademarks.
Whereas request has been received by Registrar of Trade Marks u/r 124 of Trade Marks Rules, 2017 for determination of Well-Known trademarks (details as per Schedule I) and after consideration of request and perusal of the documents, Registrar is of the view that objection, if any, from general public are to be called for in accordance to the provision of rule 124 (4) of the Trade Marks Rules, 2017.
Therefore, Objection from general public, if any, is invited before the determination of the mark mentioned in scheduled I as well-Known trademark. If, anyone has any objection in this regard, may file objection with reasons along with supporting documents, if any, within the period of 30 days from the date of publication to the Registrar of Trade Marks at Trade Marks Registry, Mumbai, Boudhik Sampada Bhavan, S M Road, Antop Hill, and Mumbai 400037.
Schedule I: List of trademark proposed to be included in the list of Well-Known trademarks
S. No.
Trade Mark
Well-Known Application no.
Applicant and Address
6.
816513
PUMA SE
PUMA WAY 1, 91074 HERZOGENAURACH, GERMANY.
7.
816516
PUMA SE
PUMA WAY 1, 91074 HERZOGENAURACH, GERMANY.
14. It was published for objection on 2nd October, 2023 and no objections have been received by the Petitioner in respect of the well-known declaration. Thus, the same ought to be construed as a well-known mark in terms of the provisions of the Trade Marks Act, 1999.
15. The two competing marks are:-
Petitioners leaping cat device mark
Respondents mark
16. A comparison of these two marks clearly shows that the Respondents mark is an imitation of the Petitioners mark. Such similarity is evident in the angle of the leaping animal, the depiction of the front and the back limbs, and even the tail, all of which are almost identical. The continued use of this mark would affect the purity of the Register of Trade Marks as the same is likely to cause deception and confusion, in terms of Section 11(2) and (3) of the Trade Marks Act, 1999.
17. Moreover, the impugned registration would also contravene Section 11(2) of the Trade Marks Act, 1999, since the detailed services for which the Respondent has obtained the registration are general in nature and would affect the Petitioners business as well. It is also stated that the Respondent has filed other trade mark applications, which are currently being opposed by the Petitioner. The Petitioner has also filed an Opposition no. 844867 dated 21st May, 2018 under Section 21 of the Trade Marks Act, 1999 to Respondents application no. 3703673 dated 15th December 2017 in class 25 in respect of the following mark of the Respondent:
18. In the present case, the Respondent has been repeatedly served as have been recorded in the orders passed by this Court as also by ld. Joint Registrar. However, no reply to the present petition has been filed. Notice in present petition was issued way back in 2020. Thereafter, on repeated instances, viz. 10th January 2023, 27th September 2023 and 18th July 2023, the Respondent was directed to appear and file their reply.
19. Considering the clear imitation of the Petitioners leaping cat device mark, and the identity between the Petitioners and the Respondents mark, the Court is of the view that the said mark is liable to be cancelled.
20. Moreover, the Petitioner is, clearly, a prior user of the leaping cat device since 1967 and the first registration in India dates back to 1977.
21. Under these circumstances, the trade mark bearing no. 3685324 dated 23rd November, 2017 in Class 35, registered in the name of Respondent-Gajari Online Services Private Limited., is liable to be cancelled under Section 57 of the Trade Marks Act, 1999.
22. Ordered accordingly.
23. Let the Registrar of Trade Marks give effect to the present order within two weeks and the same be reflected on the website. Let the Registry communicate a copy of the present order to the office of the Controller General of Patents, Designs and Trademarks of India on the e-mail: llc-ipo@gov.in for compliance of this order.
24. The present petition is allowed and disposed of in the above terms. All pending applications are disposed of.
PRATHIBA M. SINGH
JUDGE
DECEMBER 08, 2023
Mr/dn
C.O. (COMM.IPD-TM) 231/2022 Page 2 of 2