LI Network
Published on: October 24, 2023 at 16:12 IST
In a significant legal victory for ‘PUMA,’ the Delhi High Court recently granted compensation of Rs. 10 lakhs in a trademark dispute related to the use of the iconic ‘Leaping Cat Device’ mark.
The court’s decision, delivered by Justice Prathiba M. Singh, focused on the potential erosion of brand equity and dilution of marks caused by the defendant’s unauthorized usage of the ‘PUMA’ mark and logo on inferior quality products.
This case revolved around Puma Se, a renowned German company, filing a suit to seek an injunction against counterfeit ‘PUMA’ products produced and sold by ‘Kumkum Shoes,‘ a trading business based in Agra.
The court’s judgment emphasized that the defendant’s use of the ‘PUMA’ mark and logo not only violated the plaintiff’s statutory and common law rights but also posed a threat to the brand’s equity.
Furthermore, it pointed out that such infringement would be detrimental to the consumers as they might unknowingly purchase counterfeit products at higher prices, assuming them to be genuine PUMA items. The court saw this as contrary to the public’s interests.
The defendant’s deliberate avoidance of legal proceedings aimed at avoiding the disclosure of their accounts led the court to rule in favor of PUMA, awarding them monetary compensation for the infringement.
Factual Background
PUMA, a globally recognized brand endorsed by numerous well-known celebrities, including Usain Bolt, Virat Kohli, and K.L. Rahul, has been distributing its branded products in India since the 1980s. In India, ‘PUMA’ and the ‘Leaping Cat Device‘ were registered as trademarks in 1977 and 1986, respectively. The plaintiff argued that these marks were well-known, as declared by the Trademark Registrar in 2019. In September 2022, PUMA discovered counterfeit ‘PUMA’ products being sold in Agra, Uttar Pradesh.
An investigation revealed that the defendant, ‘Kumkum Shoes,’ was manufacturing, selling, and supplying counterfeit products bearing the ‘PUMA’ mark and the ‘Leaping Cat Device’ in Uttar Pradesh, Delhi, and Haryana. Taking swift action, PUMA filed a suit, obtained an interim injunction, and appointed a Local Commissioner. The defendant’s failure to provide a reply or written statement led to the judgment being ruled in favor of PUMA.
Court’s Observations and Ruling
The court estimated that the defendant was manufacturing and selling around 800 to 1000 pairs of counterfeit ‘PUMA’ shoes monthly, and it noted that most consumers would struggle to distinguish between genuine PUMA products and the counterfeits when placed side by side. The court categorically identified the defendant’s full-scale operation in the production of counterfeit ‘PUMA’ shoes, emphasizing the substantial quantity.
The court concluded that PUMA deserved monetary compensation for the deliberate infringement and profiteering from the sale of counterfeit products under the ‘PUMA’ brand. In light of the evidence, the defendant’s profits from this endeavor were substantial. Costs of raw materials, among other factors, indicated earnings of approximately Rs. 18 to Rs. 19 lakhs. The court found no mitigating factors and awarded Rs. 2 lakhs in costs to PUMA.
The defendant was directed to hand over the seized shoes to PUMA’s representative on November 1, 2023. In its final judgment, the Delhi High Court granted PUMA damages and costs of Rs. 10 lakhs and Rs. 2 lakhs, respectively, as a consequence of the trademark dispute.
Case Title: Puma Se v. Ashok Kumar