‘Puma cats and lion belong to same family, Felidae’; Delhi HC cancels ‘leaping lion’ mark of Gajari Online Services Pvt. Ltd in rectification petition filed by PUMA

Delhi High Court: In a case wherein a rectification petition was filed by Petitioner, PUMA SE seeking cancellation or rectification of the trade mark registered in the name of Respondent, Gajari Online Services (P) Ltd., Prathiba M. Singh, J.*, after considering the clear imitation of the Petitioner’s leaping cat device mark and the identity between both marks, opined that the Respondent’s mark was liable to be cancelled.

Background

The Petitioner claimed to be one of the leading sporting brands in the world, which was engaged in designing, developing, selling, and marketing footwear, apparels and accessories for sports. The Petitioner sold products under the mark ‘PUMA’ with the leaping cat device mark worldwide and in India through its wholly owned subsidiary Puma Sports India (P) Ltd. The mark was registered in India in 1977 and the mark was registered in 1986 under Class 25.

The Petitioner submitted that the Respondent’s trade mark was registered on 23-11-2017 and it could lead to confusion if used on apparel, shoes, and other sporting good as puma cats and lion share same family and had a visual similarity. The Petitioner thus was a ‘person aggrieved’ within the meaning of Section 57 of the Trade Marks Act, 1999 (‘the Act’). The Petitioner’s mark was declared as a ‘well-known mark’ in terms of Section 2(1)(zg) of the Act.

Comparison of Petitioner’s and Respondent’s marks

Petitioner’s device mark	Respondent’s device mark

Analysis, Law, and Decision

The Court considered both marks and opined that the Respondent’s mark was an imitation of the Petitioner’s mark as the angle and structure of leaping animal and depiction of font were almost identical. The Court opined that the continuous use of the mark would affect the purity of the Petitioner’s mark as it was likely to cause confusion in accordance with Section 11(2) and 11(3) of the Act. The Court further opined that the impugned registration would also contravene Section 11(2) of the Act, since the detailed services for which the Respondent had obtained the registration were general in nature and would affect the Petitioner’s business.

The Court took note of the Petitioner’s opposition filed against the Respondent’s marks , in 2018 under Section 21 of the Act, filed under class 25. The Court further noted that the Petitioner was clearly, a prior user of the leaping cat device since 1967 and the first registration in India dated back to 1977.

The Court after considering the clear imitation of the Petitioner’s leaping cat device mark and the identity between both marks, opined that the Respondent’s mark was liable to be cancelled in accordance with Section 57 of the Act.

[PUMA SE v. Gajari Online Services Pvt. Ltd., 2023 SCC OnLine Del 7808, decided on 08-12-2023]

*Judgment authored by: Justice Prathiba M. Singh

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Advocates who appeared in this case :

For the Petitioner: Ranjan Narula, Advocate

For the Respondent: Harish Vaidyanathan Shankar, CGSC; Srish Kumar Mishra, Alexander Mathai Paikaday and Krishnan V., Advocates

Buy Trade Marks Act, 1999   HERE