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Synopsis

The Delhi High Court, recently, granted a permanent injunction to Adidas Company against a Sindhi Textile Company in a trademark infringement suit. The court noted that the company was successful in establishing prior use of the park. The court further noted that the Sindhi textile company failed to demonstrate honest adoption—an essential element in prior use claims involving identical marks.

“The Plaintiff’s claim of infringement is thus well-founded, given the similarity of goods and the identity of the marks used. The Defendants have failed to substantiate their claims of prior use or honest adoption with credible evidence and have lost their registration status”, the bench of Justice Sanjeev Narula held. 

Advocate Ranjan Narula, representing the company Adidas, claimed that their grievance stemmed from the Defendants’ use of the ‘ADIDAS’ mark in their textiles business. Keshav H Tulsiani applied for the wordmark ‘ADIDAS’ in class 24 in 1992, which was opposed by the Plaintiff’s Licensee, M/s Bata India Pvt. Ltd. 

Advocate Narula notified the court that although the Assistant Registrar of Trademarks allowed the registration in 1999, the High Court of Bombay upheld this decision in 2000. Despite this, the mark appeared as ‘registered’ in 2010. The Plaintiff then filed for the mark’s removal, and in 2018, the Intellectual Property Appellate Board ordered the removal of the impugned mark. The Defendants also filed applications for variants of the ‘ADIDAS’ mark, which the Plaintiff opposed, and these oppositions are pending.

Keshav H Tulsiani asserted that the adoption of the trademark ‘ADIDAS’ was both bona fide and honest. The choice of a mark identical to that of the Plaintiff was based on personal affection. Tulsiani had harbored a deep admiration for his elder sister, known as ‘ADI’ within the Sindhi community, from childhood. This admiration was so profound that he was frequently referred to as her devotee (‘Das’ in Sindhi). Hence, the term “ADIDAS” (meaning devotee of elder sister) was devised by combining ‘ADI’ (elder sister) and ‘DAS’ (devotee) to signify this familial devotion. Keshav H Tulsiani further contended that they adopted the trademark at a time when the Plaintiff had not yet established any commercial presence in India. 

The court, on the issue of territorial jurisdiction, noted that Plaintiff had effectively established that this Court possessed territorial jurisdiction to entertain the present suit under Section 134(2) of the Act and Section 20 of the Code of Civil Procedure, 1908.

The court, on the issue of whether the suit was barred by delay, acquiescence, and laches, noted that the burden of proving this issue rested with the Defendants. However, the Defendants failed to present any evidence to meet this burden. Nonetheless, the Court independently examined whether the lawsuit was barred due to delay, acquiescence, or laches.

The court opined that the doctrines of delay, laches, and acquiescence are meant to prevent a Plaintiff from asserting their rights if they have unduly delayed taking action to the detriment of the Defendants. Delay and laches are equitable defenses that bar claims where the Plaintiff has unreasonably delayed, causing prejudice to the Defendant. However, these defenses require a thorough examination of the Plaintiff’s conduct and surrounding circumstances. 

The court, after thorough examination, observed that the Plaintiff has consistently and diligently pursued their rights without unreasonable delay, and there is no evidence of acquiescence or laches.

The court furthermore, noted that the Plaintiff provided extensive evidence demonstrating the international use of the “ADIDAS” mark prior to 1987 and its use in India from 1989. The Plaintiff’s documentary evidence, corroborated by witness testimony, starkly contrasted with the Defendants' failure to provide substantial proof supporting their claims.

Accordingly, the court allowed the application and granted a permanent injunction to the company. 

Case Title: Adidas AG v Keshav H Tulsiani & Ors