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Synopsis

The Delhi High Court, recently, in a trademark infringement suit filed by Puma emphasized that a mark that is well known needs a higher degree of protection as it is highly susceptible to piracy. The bench of Justice Mini Pushkarna held, “a mark which is well-known requires a higher degree of protection, as it is highly susceptible to piracy”. 

Puma had approached the court against the defendants, who were engaged in the business of stocking, selling, and supplying counterfeit shoes bearing the plaintiff’s marks "PUMA," its logo, and the Form Strip logo without authorization or approval.  

In the first week of October 2022, the plaintiff discovered a substantial quantity of counterfeit "PUMA"-branded shoes being locally manufactured, supplied, and sold in bulk at multiple shops in East Delhi. Upon further inquiry, the plaintiff’s representative identified the defendant’s manufacturing unit in Mandoli, North-East Delhi.

It was argued that the defendant replicated every essential feature of the plaintiff’s marks to unlawfully benefit from its goodwill, thereby misleading consumers and the trade, which constituted passing off.  

The court noted that the trademarks of the plaintiff, namely "PUMA," had been recognized as well-known marks by the Trade Marks Registry on December 30, 2019.

Furthermore, by an order dated October 18, 2022, the court had appointed a Local Commissioner to inspect the defendant's premises. In compliance with the order, the Local Commissioner submitted a report on November 14, 2022, documenting the infringing materials found at the site. The report included an inventory of such materials.

The court had also noted that the infringing materials discovered at the defendant's premises consisted of counterfeit goods bearing the plaintiff’s registered marks. The Local Commissioner’s observations and attached photographs provided clear evidence of counterfeiting activities involving the plaintiff’s products. Additionally, the photographs demonstrated that the defendant had engaged in counterfeiting goods from several other well-known brands.

Upon examining the evidence, the court found that:

• The defendant is manufacturing counterfeit products under the plaintiff registered and well-known marks. Further, counterfeit products of other known brands as well are found, i.e. Adidas, Nike etc. 
• The counterfeit products found are spats, shoe soles, shoes and screen film bearing the infringing marks. Moreover, a metal mould for the logos is found, wherein the marks of various other known brands, i.e. Adidas, Nike, Lee Cooper etc. are imprinted, showing that the operation of the defendant was not just limited to creating counterfeit products of the plaintiff, rather for known marks of other brands as well.

Furthermore, the court reiterated that counterfeiting posed a serious threat and warranted strict action. The court observed that “Any goods or products, that are identical to such a degree, in the manner of appearance, for an identical business, with an identical customer base, wherein it falls under the category of counterfeit, will unquestionably cause confusion and deception in the eyes of the public”. The court emphasized that counterfeiting represented the most blatant form of trademark infringement and passing off.

The court also acknowledged that the plaintiff's marks, being well-known, possessed inherent strength that linked them exclusively to the plaintiff’s operations. It was noted that stronger marks warranted broader legal protection. Given that well-known trademarks were more susceptible to piracy, they required a higher degree of legal protection.

In light of the above, the court found no valid defense presented by the defendant. The court, therefore, concluded that the defendant had infringed upon the plaintiff’s registered marks and engaged in passing off the plaintiff’s products. The plaintiff’s counsel had sought reimbursement for actual litigation costs, including Rs. 1,00,000/- for the Local Commissioner’s fee and Rs. 8,00,000/- for other legal expenses.

Considering the circumstances, the court determined that this case warranted the imposition of actual costs due to the clear establishment of counterfeiting by the defendant. Additionally, the plaintiff was held entitled to damages, and the court imposed a penalty of Rs. 2,00,000/- on the defendant.

For Plaintiff: Advocates Ranjan Narula, Shakti Priyan Nair and Parth Bajaj
Case Title: Puma SE v Mahesh Kumar (2025:DHC:1552)