Delhi High Court: In a suit filed by Skechers South Asia Private Limited (‘Skechers’) to seek permanent injunction for restraining the defendants from infringing their trade marks and copyright and passing off goods as those of Skechers along with other ancillary reliefs, a Single Judge Bench of Amit Bansal, J. granted an ex-parte ad interim injunction to Skechers and restrained the defendants from using the impugned trade mark or artistic works till the next date of hearing.
Background
Skechers is involved in designing, developing, and marketing uniquely and distinctively designed lifestyle footwear, apparels, and accessories. Skechers submitted that the trade mark ‘SKECHERS’ was adopted by them in 1992 for use in regards to footwear and other goods/services, and that the trade mark was also used as a corporate name, trade name, and trading style by them.
Skechers submitted that in the second week of October 2024, an officer of the investigating agency hired by them came across infringing/counterfeit products bearing Skechers’ trade marks and artistic works which were being manufactured/sold by defendants 1 to 3. All three defendants were found to be dealing in footwear and other articles.
Skechers submitted that they had examined the impugned goods and based on the quality of the product, the material used, etc. it was clear that the same did not originate from Skechers and the said goods were a clear imitation of their goods and were counterfeits/lookalikes bearing Skechers’ trade mark and artistic works.
Skechers averred that the defendants were connected to each other as they operated in a clandestine manner and the source of the impugned goods also appeared to be common. It was also mentioned that upon checking the website of the Trade Marks Registry, they did not come across any application/registration filed by the defendants.
Analysis and Decision
The Court said that it was clear that the defendants were using identical trade mark as that of Skechers for identical products and an attempt was made by the defendants to create an impression that the products being sold were connected to Skechers. Thus, the Court said that a prima facie case was made out on behalf of Skechers.
The Court stated that the balance of convenience was in favour of Skechers and an irreparable injury would be caused to them if the defendants continued using the impugned marks. It was said that prejudice would also be caused to the public as the marks of the defendants were deceptively similar to that of Skechers and were likely to cause confusion in the market.
Consequently, the Court restrained the defendants from using or causing to be used Skechers’ trade marks and artistic works or any other mark or artistic work identical or similar to Skechers’ in relation to the impugned goods or any goods, from manufacturing, marketing, or offering for sale any goods bearing Skechers’ trade marks or artistic works so as to infringe Skechers’ trade marks and copyright, and from passing off or enabling others to pass off the defendants’ impugned goods as being those of Skechers till the next date of hearing.
The Court directed the defendants to give complete disclosure of information and documents to reveal the details of other printer(s) who would have the blocks, dyes, stencils, or other machinery to print the infringing labels, details of other manufacturers/packers of the goods bearing Skechers’ trade mark, details of the people for whom Skechers’ trade marks and artistic works had been manufactured and sold, and the defendants’ assets.
The Court noted that Skechers had sought appointment of Local Commissioners to seize the infringing goods and said that the very purpose of grant of ex parte ad interim injunction would be defeated if the defendants are given notice under Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 (‘CPC’) before the execution of commission. Thus, the Court directed Skechers to serve the said notice at the time of execution of the commission which was directed to be within two weeks.
The application has been listed on 24-02-2025.
Further, another interim application filed under Order XXVI Rules 9 of CPC to seek the appointment of Local Commissioners for seizure of all infringing goods was allowed and the Local Commissioners were directed to make an inventory of and take into custody all finished and unfinished impugned goods, all materials bearing Skechers’ trade marks and artistic works, and business records related to the business conducted under Skechers’ mark.
The Local Commissioners were also directed to handover the same on ‘superdari’ to the defendants after they gave an undertaking that the same would be produced before the Court as and when directed. The Court directed the defendants and their representatives to provide full assistance to the Local Commissioners to execute the present proceedings.
The Local Commissioners were directed to be permitted to enter upon the defendant’s premises to conduct the search and seizure and to make copies of the business records including documentary and electronic material discovered from the premises. The defendants were directed to grant the Local Commissioners access to the computer systems.
The Local Commissioners were permitted to take photographs/videos of the premises along with the impugned products and to break open the locks in case of resistance by the defendants. Further, the SHO of the local police station and the DCP concerned were directed to render necessary protection to the Local Commissioner, if and when sought.
Lastly, the Local Commissioners were directed to file their reports within two weeks of executing the commission and the application was disposed of.
[Skechers South Asia Pvt. Ltd. v. Delhi Polymer, 2024 SCC OnLine Del 7669, Decided on 25-10-2024]
Advocates who appeared in this case:
For Plaintiff — Sr. Advocate Chander M. Lall, Advocate Smriti Yadav, Advocate Kshitij Parashar, Advocate Gautam Wadhwa, Advocate Vanshika Thapliyal, Advocate Annanya Mehan, Advocate Abhinav Bhalla
For Defendants — N/a
