KOHLI SPORTS PRIVATE LIMITED vs ASHI SPORTS
$~41
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 1st December, 2023
+ CS(COMM) 858/2023, I.As. 23949/2023, 23950/2023, 23951/2023 & 23952/2023
KOHLI SPORTS PRIVATE LIMITED ….. Plaintiff
Through: Ms. Swathi Sukumar, Mr. Essenesse Obhan, Ms. Yogita Rathore, Ms. Anjali Swami, Mr. Pratyush Rao, Mr. Rishubh Agarwal & Mr. Ritik Raghuwanshi, Advs. (M. 9580680148).
versus
ASHI SPORTS ….. Defendant
Through: Mr. Siddharth Bambha & Mr. Aman Thukral, Advs. (M. 9891602513)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
I.As. 23950/2023 & 23951/2023(for exemption)
2. This is an application filed by Plaintiff seeking exemption from filing original/certified/translated copies of documents with proper margins, etc.
3. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, Commercial Courts Act, 2015) and the DHC (Original Side) Rules, 2018.
4. Exemption is allowed, subject to all just exceptions. Accordingly, these applications are disposed of.
I.A.23952/2023 (for additional documents)
5. This is an application filed by the Plaintiff seeking leave to file additional documents under the Commercial Courts Act, 2015.
6. The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
7. Accordingly, this application is disposed of.
CS(COMM) 858/2023
8. Let the plaint be registered as a suit.
9. Issue summons to the Defendant through all modes upon filing of the Process Fee.
10. The summons to the Defendant shall indicate that the written statement(s) to the plaint shall be positively filed within 30 days from the date of receipt of summons. Along with the written statement(s), Defendant shall also file an affidavit of admission/denial of the documents of Plaintiff, without which the written statement(s) shall not be taken on record.
11. Liberty is given to the Plaintiff to file the replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by Plaintiff, an affidavit of admission/denial of documents of Defendant, be filed by Plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
12. List before the Joint Registrar for marking of exhibits on 9th February, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs. List before Court on 29th January, 2024.
I.A.23949/2023 (u/O XXXIX Rules 1 & 2 CPC)
13. Issue notice in the application.
14. The present suit raises an interesting question – whether the shape of a cricket helmet can be a trade mark?
15. The Plaintiff – M/s Kohli Sports Private Limited has filed the present suit seeking permanent injunction restraining passing off, infringement of copyright, unfair trade practice, rendition of accounts, damages, etc.
16. The Plaintiff claims to be a pioneer in the manufacture and sale of helmets for cricket players. The Plaintiff is registered in India and manufactures its helmets in Ludhiana. It also has an associate company called Kohli Sports U.K. ltd. which is registered in England. According to the Plaintiff, it launched its cricket helmets with a distinctive shape in 2014 under the mark SHREY. The said mark was derived from the name of one of the children of the Plaintiffs founder who demised in an unfortunate tragedy. There are two separate varieties of SHREY helmets which are stated to be manufactured namely Shrey Master Class Air and Shrey Koroyd. The first helmet is manufactured using titanium and is rated as one of the lightest helmets in the world.
17. The case of the Plaintiff is that its cricket helmets under the mark SHREY have various distinctive features including the shape of the grill, shape of ear guards, the manner in which the grill protects the face of the cricketer etc.
18. As per the Plaintiff, the distinctive shape and configuration of its helmets have, over the last nine years achieved trademark status. Ms. Swati Sukumar, ld. Counsel appearing for the Plaintiff submits that the sheer number of players who wear the Plaintiffs helmets is itself proof of the distinctiveness that the helmets have achieved. It is submitted that 80% of the IPL teams wear the Plaintiffs helmet. Even in the recent ICC World Cup, 2023 almost 70% of the players wore Plaintiffs helmet. The following table is extracted to show the same :
19. Ms. Swati Sukumar, ld. Counsel further submits that the first invoice of the Plaintiff is of 2014. Ld. Counsel also emphasises that Defendant has copied the entire design of Plaintiffs cricket helmets. The comparison between the Plaintiffs helmet and Defendants helmet is set out below:
20. Ld. Counsel further submits that the following distinctive elements have also been picked by the Defendant from the Plaintiffs helmet:
21. Ld. Counsel, also points out that the content of the website of the Plaintiff has also been copied by Defendant and it is uncanny that even the spelling mistakes have been replicated. The comparative chart of the websites is set out below:-
22. Ld. Counsel for Defendant, submits that Plaintiffs cricket helmet was launched only in 2020 and there are various other cricket helmets which have similar features. Thus, Plaintiffs cricket helmets have not achieved the distinctiveness that the Plaintiff claims. He further submits that insofar as the website is concerned, Defendant is willing to change the content of its website.
23. In response, Ms. Sukumar, ld. Counsel submits that the 2020 launch is was only of a separate series of the Plaintiffs helmets known as Koroyd helmets which are made of a different material. She has referred to the www.espncricinfo.com website printout to show that the Plaintiffs helmet was in use even as of 2015.
24. The Court has heard ld. Counsels for the parties and has perused the record.
25. In the case of a shape trade mark the threshold of distinctiveness that is required to be achieved is much higher than a mere device or word trade mark. In such a case, the shape has to be so distinctive that it should be capable of being associated with the entity, even without any name or mark being present on the product.
26. A perusal of the documents which has been placed on record does show that almost all the famous Indian cricketing stars are wearing the Plaintiffs helmet and the preference for the said helmet is, therefore, not doubted. Further, one of the online articles relating to helmets describes the Plaintiffs helmet in the following manner:
The question as to whether the Plaintiffs helmet has attained such a level of distinctiveness to be protected as a shape trade mark would have to be considered and adjudicated by the Court.
27. At this stage, ld. Counsel for the Defendant submits that the Defendant is willing to explore mediation in this matter and effect some changes so as to ensure that the design/shape of its cricket helmets is not identical to that of the Plaintiffs helmet. This submission is without prejudice to the Defendants stand that the design itself cannot be monopolised by the Plaintiff.
28. In view of the above submissions, the following directions are issues:
i) The Defendant shall take down its website within 48 hours and ensure that any new website which is put up does not have any content from the Plaintiffs website.
ii) The parties are referred to mediation in order to enable the Defendant to suggest some options for change in the design of its helmet so as to ensure that the Plaintiffs grievance is duly addressed.
iii) The above shall be without prejudice to the rights and contents of both parties.
29. Considering the nature of the matter, the matter is referred to mediation before Justice Nageswara Rao (Retd), Judge, Supreme Court. The Ld. Mediator shall be paid a fee of Rs.3,00,000/-. The same shall be shared equally by both parties.
30. Let the first meeting before the ld. Mediator be held on 6th December, 2023 at 11 am, Sector 15A, Noida. The contact details of the Ld. Mediator are: lnrao.office@gmail.com and Ms. Nikita, Advocate (8800127168).
31. Let the reply to the injunction application be filed within four weeks. Rejoinder, thereto, within two weeks.
32. If there is no settlement, the matter shall be heard on the next date of hearing.
33. List before the Joint Registrar on 9th February, 2024.
34. List before the Court on 29th January, 2024.
PRATHIBA M. SINGH
JUDGE
DECEMBER 01, 2023
dj/kt
CS(COMM) 858/2023 Page 2 of 2