Bombay High Court: The present suit was filed for infringement of trade mark, copyright in relation to plaintiffs’ trade marks including the trade marks SKECHERS (word per se) / 
/ 
/
and plaintiffs’ Artistic Works 
, / / and for passing off. A Single Judge Bench of R.I. Chagla, J., held that pending the hearing and final disposal of the suit, defendants were restrained by a perpetual order and injunction of this Court from using or causing to be used plaintiffs’ artistic works or any other artistic work identical or similar to plaintiff’s artistic works in relation to the impugned goods or any goods or in any manner from manufacturing, marketing or offering for sale, advertising or dealing in any goods bearing plaintiffs’ artistic works or any other artistic work identical or similar to plaintiff’s artistic works so as to infringe plaintiff’s copyright subsisting in plaintiff’s artistic works.
Background
It was submitted that the trade mark ‘SKECHERS’ was adopted around 1992 in respect of plaintiffs goods pertaining to footwear, etc. and related services. Plaintiff 2, designs, develops, and markets uniquely and distinctively designed branded lifestyle footwear, apparels, and accessories for men, women and children, performance footwear for men and women under the ‘Skechers Work’ brand name and permitted other parties to use the trade mark ‘Skechers’ for accessories, pet accessories, leather goods, eye wear, and medical scrubs amongst others. Plaintiff 3 was the registered proprietor of the trade mark ‘Skechers’ and its variants, and its reputed ‘S’ logos such as / / and its variants.
Plaintiffs stated that around October 2024, an officer of the investigating agency hired by plaintiffs, came across the impugned goods in the premises of defendants in Nashik and Indore bearing plaintiffs’ trade marks and plaintiffs’ artistic works, which were an imitation of plaintiffs’ goods. Plaintiffs examined the impugned goods and based on the quality of the impugned goods, the materials used, the stitching, the MRP, etc., it was clear that the same did not originate from plaintiffs, thus, the impugned goods were counterfeits/lookalikes.
It was submitted that defendants had bodily lifted plaintiffs’ trade marks/artistic works, and that as such the rival marks were identical and/or deceptively similar and that the impugned goods bear a substantial reproduction of the plaintiffs’ artistic works.
Analysis, Law, and Decision
The Court stated that prima facie, plaintiffs were the registered proprietors of plaintiffs’ trade marks SKECHERS/ / / and were the owners of copyright subsisting in plaintiffs’ artistic works , / /, etc. The Court opined that from the impugned goods, it was clear that defendants’ impugned goods were counterfeits and they had bodily lifted plaintiffs’ trade marks and the artistic works and had applied the same to the impugned goods. The Court also opined that the adoption of plaintiffs’ trade marks and plaintiffs’ artistic works in relation to the impugned goods by defendants was dishonest.
The Court opined that a strong prima facie case for infringement of trade marks and copyright had been made out by plaintiffs. The Court stated that giving any notice to defendants before passing the present order would defeat the very purpose of granting ad-interim reliefs. Thus, the Court held that pending the hearing and final disposal of the suit, defendants, directly or indirectly, by themselves, their concerns, firms, partners, servants, employees, agents, dealers, distributors and all persons claiming under them be restrained by a perpetual order and injunction of this Court from using or causing to be used plaintiffs’ artistic works or any other artistic work identical or similar to plaintiff’s artistic works in relation to the impugned goods or any goods or in any manner from manufacturing, marketing or offering for sale, advertising or dealing in any goods bearing plaintiffs’ artistic works or any other artistic work identical or similar to plaintiff’s artistic works so as to infringe plaintiff’s copyright subsisting in plaintiff’s artistic works.
The Court clarified that the order shall not prevent defendants from selling original/legitimate goods upon which plaintiffs’ trade marks and artistic works had been affixed by plaintiffs or any other person authorized by plaintiffs, if any, sourced from legitimate sources, though the order shall apply to all other products, bags, invoices, signboards, material bearing plaintiffs’ trade marks and artistic works which was not authorized by plaintiffs.
The Court appointed Court Receiver, High Court, Bombay and directed it to visit and search all premises of defendants, forcibly breaking open locks, if necessary; and, where necessary, with police assistance and to seize and seal in defendants’ premises all the offending goods, including, cartons, dyes, moulds, printing equipment and material and other material of all description that carry the impugned packaging/label/trade dress.
The Court stated that the order would continue till 11-12-2024.
The matter would next be listed on 10-12-2024.
[Skechers South Asia Pvt. Ltd. v. Wardrode, 2024 SCC OnLine Bom 3483, decided on 24-10-2024]
Advocates who appeared in this case :
For the Applicants/Plaintiffs: Hiren Kamod along with Smriti Yadav, Shubham Shende, i/b Khaitan & Co. for the Plaintiff.
