The Delhi High Court granted a permanent injunction and monetary damages against the defendants in Adidas AG (plaintiff) v. Keshav H. Tulsiani & Ors (defendants) [CS (COMM) 582/2018], restraining them from manufacturing, selling, marketing, or trading textile goods under ADIDAS marks or any other deceptively similar marks.
This order highlights that coined or arbitrary terms with no inherent linguistic meaning are deemed to have a high degree of distinctiveness and are given a wide ambit of protection under Indian trademark law. Further, one can also presume the likelihood of confusion/deception among the public when a mark is replicated by another, especially in closely related business fields. The dispute arose when the defendants adopted the word ADIDAS for their textiles business. The defendants contended bona fide and honest adoption of ADIDAS (meaning “devotee of elder sister” in Sindhi) based on personal affection and deep admiration for an elder sister, resulting from combining ADI (elder sister) and DAS (devotee) and reflecting familial devotion.
The defendants claimed prior use of the ADIDAS trademark for textiles since 1987, and that they had secured its registration in Class 24 when the plaintiff did not have commercial availability in India. They claimed that the court lacked the territorial jurisdiction and that the plaintiff’s inaction over two decades implied a tacit consent to the defendants’ use of the mark.
The court, in its decision against the defendants on July 19, 2024, found the plaintiff’s claim of infringement was well-founded given the similarity of goods and identity of marks used. The defendants failed to substantiate their claims of prior use or honest adoption with credible evidence and lost their registration status and their disengagement from the legal process, which all contributed in favor of the plaintiff. The plaintiff submitted evidence of prior Indian registrations back to 1971 and introduction into the Indian market in 1989 through Bata India Pvt Ltd., its licensee and distributor. The court acknowledged the plaintiff’s reputation garnered in other countries had spilled over into India and that its continuous legal efforts since the early 1980s negated claims of delay. In view of the plaintiff’s registered subsidiary and the defendants’ admission to selling in Delhi, the court confirmed…
Continue to read over here – https://www.inta.org/perspectives/law-practice/india-delhi-high-court-sides-with-adidas-in-dismissing-claim-of-prior-use/
Contributor(s)
Contributor to present post is Ankush Mehta.
Note:
“This article was written by Ankush for first publication in the INTA Bulletin. It has been reprinted with permission from the International Trademark Association (INTA).”
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