Safiya Malik

The High Court of Delhi Single Bench of Justice Saurabh Banerjee, in a recent judgement, has granted a summary judgment in favour of the plaintiff and directed the defendant to pay a sum of Rs. 8,00,000/- as actual costs and damages. The Court permanently restrained the defendant from using the plaintiff’s trademarks and ordered the suspension of the infringing domain name. The court issued these directives following the defendant’s non-appearance and failure to file a written statement, observing that the adoption and usage of the plaintiff’s trademarks by the defendant was deliberate and in bad faith.

The plaintiff initiated the suit seeking a permanent injunction against the defendant along with reliefs including trademark infringement, passing off, damages, and delivery up. The plaintiff is a reputed global entity involved in the business of selling, manufacturing, and advertising sports apparel and accessories. Substantial investments have been made by the plaintiff towards marketing in both Indian and international markets. The plaintiff has multiple trademark registrations worldwide, including India, and the trademarks have been recognized as well-known marks in India via Trade Mark Journal No. 2144 dated 19.02.2024.

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The defendant was allegedly engaged in the stocking, selling, and supplying of counterfeit shoes bearing the plaintiff’s registered trademarks and logo. Further, the defendant was found to be operating a website under the domain name "www.theshoeskart.com" through which the counterfeit goods were sold.

In July 2021, the plaintiff received a customer complaint regarding the substandard quality of products purchased from the defendant’s website. Subsequent investigation revealed these products to be counterfeit. This prompted the plaintiff to institute legal proceedings, asserting that the defendant’s actions amounted to infringement of intellectual property rights.

On 18.08.2021, the Court passed an interim order restraining the defendant from using the plaintiff’s trademarks and directed the Domain Name Registrar to suspend the domain name "https://theshoeskart.com" and associated IP addresses. The plaintiff’s trademarks have been in continuous use since 1948 and registered in India under Classes 25 and 18 since 1983.

Despite the service of summons by publication on 07.01.2024, the defendant failed to appear or file a written statement, leading to the closure of its right to file the same by order dated 06.02.2025. Subsequently, the plaintiff filed an application under Order XIIIA read with Order VIII Rule 10 of the CPC seeking summary judgment.

According to the plaintiff’s counsel, the plaintiff is the prior adopter, continuous user, and registered proprietor of the concerned trademarks, which have acquired distinctiveness and exclusivity. The defendant’s unauthorised and counterfeit use of the trademarks constituted a clear infringement under Sections 29(1) and 29(2) of the Trade Marks Act, 1999.

The plaintiff relied on the Analysis Report dated 12.08.2021 prepared by the Brand Protection Manager, along with numerous customer complaints, to substantiate the claim of counterfeiting. These documents and allegations were not denied or contested by the defendant.

The defendant, having failed to appear since 12.02.2024, was proceeded ex-parte. Given the defendant’s non-responsiveness and absence of any rebuttal to the plaintiff’s assertions, the Court deemed all pleadings and documents submitted by the plaintiff as admitted.

The Court stated the similarities between the plaintiff’s genuine products and the counterfeit goods sold by the defendant. The comparative analysis presented in court revealed that the counterfeit items bore identical trademarks, logos, and design elements, copied in entirety without any variation.

The Court noted that the defendant was engaged in the same line of business, targeting the same customer base and using identical trade channels as the plaintiff. These cumulative facts pointed towards a deliberate intention on the part of the defendant to exploit the goodwill and reputation of the plaintiff.

The court noted the defendant’s silence and its overall conduct as indicative of mala fide intent, intended to deceive consumers into believing that the counterfeit goods originated from the plaintiff.

The Court recorded that "the impugned mark of the defendant has been adopted by it in toto as all the essential elements of the plaintiff’s trademarks, including its logo and the form strip device, have been adopted by the defendant without a single variation thereof."

It further stated that "the silence of the defendant, coupled with its overall conduct, reflects that the choice of the defendant in both adopting and then using the trademarks of the plaintiff on the impugned products is mala fide, and with a clear intention to ride upon the goodwill and reputation of the plaintiff and its trademarks."

The judgment referred to previous case laws, noting that in Koninklijke Philips N.V. & Anr. v. Amazestore & Ors. it was held that "in cases involving deliberate and mala fide infringement, the Court must adopt a stringent approach while awarding damages."

Additionally, the Court cited Jawed Ansari v. Louis Vuitton Malletier & Ors., where the Division Bench recognised that "counterfeiting constitutes a grave and egregious offence and the implications constitute a commercial malpractice that undermines the value of established brands and deceives the unsuspecting consumers."

The Court observed that "when elements of counterfeiting are apparent, a defendant who wilfully evades judicial proceedings ought not to be permitted to derive any benefit therefrom." It noted that such conduct creates an inequitable scenario where compliant parties are penalised while non-compliant ones escape liability.

Stating the reputation of the plaintiff, the Court recorded: "this is a case wherein the plaintiff herein is by no means a fly by night operator, since it has wide wings spread in the field of the products it is manufacturing and which are involved herein."

The Court stated that "due to the long usage and association coupled with recognition, the plaintiff and its trademarks call for a higher degree of protection, more so, whence it/they are susceptible to act(s) of piracy/counterfeiting like the one by the defendant herein."

The Court granted summary judgment in favour of the plaintiff, holding that there was no real chance of the defendant succeeding, given its failure to present any defence. The Court stated: "after considering and carefully perusing the overall case of the plaintiff and the pleadings and documents filed by it, the case set up by the plaintiff against the defendant stands duly proved. This makes the plaintiff entitled for a summary judgment against the defendant."

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The suit was decreed in terms of prayer paragraphs (a), (b), (c), (d), and (g) of the plaint. Further, the Court awarded "actual costs of Rs.5,90,000/- as sought by the plaintiff" and "damages, conservatively estimated at Rs.2,10,000/- as well."

The defendant was directed to pay the total amount of Rs.8,00,000/- within ninety days. The Court ordered: "If the aforementioned sum is not paid within the said period of ninety days, the plaintiff shall also be entitled to claim an interest @ 6% per annum on the amount of Rs.8,00,000/- till the date of its actual realization."

The Registry was directed to draw up a Decree Sheet in terms of the judgment, and I.A. 12633/2025 was allowed. The suit was disposed of accordingly.

Advocates Representing the Parties:

For the Petitioners: Mr. Ranjan Narula, Mr. Shakti Priyam Nair and Mr. Parth Bajaj, Advocates

Case Title: PUMA SE v. Himanshu Sharma

Neutral Citation: 2025: DHC:5585

Case Number: CS(COMM) 383/2021

Bench: Justice Saurabh Banerjee