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IN THE HIGH COURT OF DELHI AT NEW DELHI
IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on : 25.4.2017
Judgment delivered on : 28.4.2017
+
CS(COMM) 1611/2016
COLUMBIA
SPORTSWEAR COMPANY
.....
Plaintiff
Through:Mr.Neeraj Grover,Mr.Himanshu 
Deora and
Mr. Ashwani Pareek, Advs.
Deora and
Mr. Ashwani Pareek, Advs.
versus
HARISH
FOOTWEAR & ANR
.....
Defendants
Through:Mr.S.K.Bansal and Mr.Ajay Amitabh Suman, Advocates.
CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR
INDERMEET KAUR, J.
I.A.
No.16583/2014 (under Order XXXIX Rules 1 & 2 of the Code) & I.A.
No.23361/2014 (under Order XXXIX Rule 4 of the Code)
1 The plaintiff is the Columbia Sportswear Company registered under the
laws of United States of America. In the year 1938, it had conceived and
adopted the mark „COLUMBIA‟ as its trade name and trade mark. It
CS(COMM) No.1611/2016 Page 1 of 17
continues to be a global leader in the design, sourcing, marketing and
distribution of active outdoor apparel and footwear. It has developed an
international reputation for its quality, performance and value. Its reputation
is unparalleled and the value of its produce under the trade mark
„COLUMBIA‟ is well known. Its packaging and trade dress has also
acquired an enormous goodwill and reputation in the market; it has a secondary
meaning with respect to the plaintiff‟s products. The plaintiff has employed
more than 4500 employees and distributors around the world to sell its products
throughout the globe including India. The plaintiff has been a recipient of
various industry awards for its high level performance. It has a strong
association with the Indian territory and a variety of its goods bearing the
plaintiff‟s trade mark „COLUMBIA‟ having been manufactured for export purpose
in India; this was from the year 1996. The plaintiff has applied for and obtained
registration of its trade mark „COLUMBIA‟ in India details of which finds
mention in para 16 of the plaint. They are six such registrations. It is stated
that these registrations are valid and subsisting as on date. Copies of the
registration certificates have also been filed. The annual turnover of the
plaintiff under the trade mark „COLUMBIA‟ .w.e.f.
2004 to
2013 has also been filed; the figure is in millions of US Dollars.
CS(COMM) No.1611/2016 Page 2 of 17
Their goods are available in the Indian market which are the infringing
good. The plaintiff also has a subsidiary M/s Columbia Sportswear India
Sourcing Pvt Ltd having its office at Bangalore who distributes the goods of
the plaintiff.
2 The plaintiff has reason to believe that his consumers which include
mountaineers travelling to India, would be staggered to see identical / similar
goods available in the Indian market which are the infringing goods. In April,
2013, the plaintiff was made aware of these cheap quality shoes under the trade
mark „COLUMBIA‟ (impugned goods) flooding the markets in
Delhi and other neighbouring states. Alarmed with the situation, a
criminal complaint has been lodged at the Bahadurgarh Police Chowki. It was
learnt that these goods under the trade mark „COLUMBIA‟ were being manufactured
by defendant No. 2 i.e. Galaxy Footwear Pvt. Ltd., Bahadurgagh. It was agreed
by the police that the office of defendant No. 2 would be raided. A raid was
carried out at the office of defendant No. 2 and the concerned Police Officer
was able to seize certain counterfeit goods but this raid had thereafter to be
aborted as an unknown source gave a call to the said Police Officer not to
continue with the proceedings. A complaint was lodged with the S.P. but no
formal registration was made by the concerned
CS(COMM) No.1611/2016 Page 3 of 17
S.P. The plaintiff was frustrated with the lack of response from the
police. A criminal complaint was also registered against defendant No. 2 that
defendant No. 2 is using the trade mark „COLUMBIA‟ which is registered with the
plaintiff; defendant No. 2 is passing of the impugned goods making the customer
believe that they are the plaintiff‟s goods and thereby diluting the
plaintiff‟s proprietary rights. This use of trade mark by defendant No. 2 is
dishonest and fraudulent which has caused the huge loss to the plaintiff. In
para 40, it is stated that on the plea of disclaimer on some of the plaintiff‟s
registrations, an opinion was sought from the Registrar of Trade Marks which
opinion was in favour of the plaintiff. Present suit seeking permanent
injunction against the defendants, its directors/agents restraining them from
dealing with the registered trade mark „COLUMBIA‟/passing of the goods of the
plaintiff as that of the defendants along with damages has been claimed as also
the prayer seeking ad-interim injunction against the defendants.
3 Defendant No. 1 Harish Footwear had filed a
written statement alleging that he has nothing to do with the matter and he is
unaware that any company by the name of defendant No. 2 is functioning. The
matter stood settled with defendant No.1 and the terms of their settlement were
contained
CS(COMM) No.1611/2016 Page 4 of 17
in I.A. No.22778/2014. The suit was decreed against
defendant No.1 in terms of the aforenoted settlement.
4 Defense of defendant No. 2 is two fold. His first submission is that
his user of trade mark “COLUMBIA” is honest and he is the prior adopter and
continuously and extensively using this mark in relation to his goods since
1995. The defendant has also applied for a trade mark application under No.
1126256 which was wrongly shown as abandoned. A writ petition (W.P. (C)
No.5866/2013) had been filed in the High Court which was disposed of on
16.07.2014. The status of the said TM application of defendant No. 2 was shown
to be „pending‟ and not „abandoned‟. This information was in fact uploaded by
the Trade Mark Authorities but this factum has been suppressed by the
plaintiff; he has obtained an ex-parte injunction giving an impression to the
Court that the TM application of defendant No. 2 has been abandoned whereas
this is not the correct position. The plaintiff is guilty of concealment of
material facts. The additional submission on this score is that the plaintiff
in para 40 of his plaint has detailed its registrations which are in his favour
but he has failed to disclose that there is disclaimer qua three of the
aforenoted registrations. This also amounts to an active concealment. Having
approached the Court with unclean hands, he is not
CS(COMM) No.1611/2016 Page 5 of 17
entitled to any discretionary relief. Details of the disclaimer attached
to the aforenoted three applications have been detailed. In fact in rejoinder
this position has not been disputed. It is not in dispute that out of six
registrations which are in favour of the plaintiff, three have a disclaimer
attached to them. The additional defence adopted by defendant No. 2 is that the
plaintiff has no trans-border reputation as has been contended by him; he has
failed to establish this. It is pointed out that there is not a single document
of the plaintiff to show his presence in India; no sale figures have also been
filed. It is denied that the plaintiff is selling shoes under the trade name
„COLUMBIA‟ in India. It is denied that the plaintiff has a subsidiary Company
by the name of M/s Columbia Sportswear India Sourcing Pvt Ltd having its office
at Bangalore. Qua the status of the defendant, it is pointed out that the
defendant has been in active business for the sale of shoes since the year
1995. He cannot be injuncted from carrying out its business. The plaintiff has
failed to make out a prima-facie case.
5
Replication/rejoinder has been
filed reiterating the stand of the plaintiff and denying the defence which has
been adopted by the defendants.
6
On behalf of the plaintiff,
arguments have been addressed by Mr. Neeraj Grover, Advocate. It is reiterated
that the plaintiff company has
CS(COMM) No.1611/2016 Page 6 of 17
worldwide global reputation and his trade mark is registered; per
contra, the defendant‟s TM application is at best „pending‟ if not „abandoned‟;
he does not have a registration. It is pointed out that the plaintiff in para
40 has explained that there was a disclaimer set up by defendant No. 2; there
has been no concealment of any fact; additional submission of defendant No. 2
that his TM application was „pending‟ was a fact not known to the plaintiff at
the time when he had filed this suit which was on 19.07.2014 as this order had
not been uploaded and it was not in the knowledge of the plaintiff. He cannot
be held guilty on this count. Learned counsel for the plaintiff points out
defendant No. 2 is in fact selling his cheap scale goods not only under the
brand name „COLUMBIA‟ but also „COLUMBUS‟ and „COPPER LAND‟ and various other
marks which have been adopted by him; the plaintiff would have no objection to
his continuation of the same; he however cannot infringe upon the registered
mark of the plaintiff which is
„COLUMBIA‟ and for which the plaintiff has developed a worldwide global
reputation; defendant No. 2 cannot encash upon the goodwill of the plaintiff.
Learned counsel for the plaintiff in support of his submissions has placed
reliance upon 2004 (28) PTC 121 (SC) Midas
Hygiene Industries P. Ltd Vs. Sudhir
Bhatia, 2006 (32) PTC 133 Austin
Nichols and Co. and Anr Vs.
CS(COMM) No.1611/2016 Page 7 of 17
Arvind Behl and Anr; submission is that his worldwide reputation has travelled to India and his name is well established in this
country. The defendant even otherwise has no defence in view of the fact that
the plaintiff has a registered trade mark in his favour; the registered trade
mark of the plaintiff cannot be ignored. Reliance has also been placed upon
2013 (53) PTC 323 (Del.) Icrave, LLC
Vs. Icrave Designs Pvt. Ltd. to support this submission. It is
additionally pointed out that merely because defendant No. 2 may have been
advertising his product would not give him a right to use the trade name of the
plaintiff; to support this stand reliance has been placed upon 2009 (41) PTC
362 (Del.) (DB) Pioneer Nuts and Bolts
Pvt. Ltd. Vs. Goodwill
Enterprises. The submission of the defendant that there is a disclaimer attached to the TM
application of the plaintiff also does not make out a defence; disclaimer by
itself would not entitle the defendant to a defence for this proposition
reliance has been placed upon 2007 (35) PTC 95
Cadbury India Limited &
Others Vs. Neeraj Food Products. Delay
in approaching the Court would also
not be a defence in favour of defendant No. 2 and for this proposition reliance
has been placed upon AIR 1990 Delhi 19 Hindustan
Pencils (P) Ltd. Vs. India Stationary Products Co. and Anr.; the
reasons as explained in the plaint; make out a case as to why inspite of all
CS(COMM) No.1611/2016 Page 8 of 17
efforts to get criminal cases registered against the defendants
plaintiff had failed because of the connivance of the higher authorities with
defendant No. 2.
7 Arguments have been refuted by Mr. S.K. Bansal, Advocate appearing for
defendant No. 2. He has reiterated the averments which have been taken in his
defence. It is pointed out that a party who approaches the Court with unclean
hands is not entitled to any discretionary relief. There being an active
concealment on the part of the plaintiff, no interim order could have been
granted in his favour. To support his submission reliance has been placed upon
(2013) 11 SCC 531 Bhaskar Laxman
Jadhav & Others Vs. Karamveer
Kakasaheb Wagh Education Society and Others. On the question of trans-border reputation of the plaintiff having
travelled to India, it is pointed out that the Courts have time and again held
that while dealing with an application for an interlocutory injunction, the
rights of the plaintiff have to be protected against an injury but the
corresponding need of the defendant to be protected against injury resulting
from its having been prevented from exercising his legal rights has to be
weighed in the scale of balance. To support this submission, reliance has been
placed upon 2005
CS(COMM) No.1611/2016 Page 9 of 17
(30) PTC
471 (Del) QRG Enterprises and Anr Vs.
Surendra Electricals and
Others.
8
Arguments have been heard. Record has been perused.
9
Record shows that the plaintiff has a worldwide
registration qua the
trademark „COLUMBIA‟. Copies of his registration certificates showing
his registration in India have been placed on record. There are six such
registrations; details of which finds mention in para 16 of his plaint. Admittedly
there is a disclaimer prevailing qua three such registrations i.e. registration
No. 626883 dated 02.05.1994, registration No. 1380753 dated 30.08.2005 and
registration No. 1585010 dated 27.07.2007. The other three registrations are
alone clear. They have no disclaimer pending against them. This position is
admitted. Thus the first registration which is in favour of the plaintiff is
registration NO. 1585010 dated 27.07.2007 which is a registration in class 18
and class 25. While dealing with this application, this Court is largely
concerned with the items contained in clause 25. This registration is in favour
of the plaintiff qua clothing, headwear and footwear. It dates back to
27.07.2007. Para 16 of the plaint additionally states that these registrations
are valid and subsisting as on date.
CS(COMM) No.1611/2016 Page 10 of 17
10 This position is not quite correct. Admittedly there are disclaimers
qua three such registrations and as noted supra, they have been admitted by the
plaintiff. This has however not been detailed by the plaintiff in his plaint.
In para 40 an evasive statement has been made that in order to register an FIR on the plea of disclaimer, an opinion
had been sought from the Registrar of Trademarks which opinion was in favour of
the plaintiff. This is the end of the matter. There is no further details of
any disclaimer; para 40 relied upon in the plaint does not disclose that a
disclaimer had been set up by defendant No. 2 or that the disclaimer is alive
and as such the aforenoted three registrations are not clear; there being a
disclaimer admittedly attached to them. This in the view of this Court is a
concealment which has been made by the plaintiff for which he has no
explanation. The second suppression of fact which amounts to a concealment of a
material fact is the fact that defendant No. 2 had applied for registration of
his mark. Vide TM application No. 1126256, he had been granted the status of
„pending‟ in W.P. (C) No.5866/2013 which had been disposed of on
16.07.2014. This order had directed the trade mark
authorities to treat the application of defendant No. 2 as per its original
seniority i.e. from the date of its filing. Defendant No. 2 in his list of
documents on the first page has
CS(COMM) No.1611/2016 Page 11 of 17
filed the Court order dated 16.07.2014 which reflects that this order
had been uploaded in the Trade Mark Registry on that date itself. The present
suit has been filed on 19.07.2014. Amended plaint had been filed on 16.10.2014.
The status of this TM application that it had reverted to a „pending‟ status
and was no longer „abandoned‟ had not been disclosed by the plaintiff. This has
been admitted by the plaintiff only in his replication. The fact that the
TM Application of defendant No.2 was “pending” on the date of the filing
of the suit and was not abandoned is also in the view of this Court an active
concealment which would perhaps dis-entitle the plaintiff to a discretionary
relief.
11
The Courts have time and again
noted that the conduct of a party who is seeking a discretionary relief from
the Court weighs largely in the mind of the Court while dealing with such a
prayer. Where a party is guilty of suppression of a material fact, he may not
be entitled to such a relief.
12
The Apex Court had an occasion to
deal with such a situation in (2010) 14 SCC 38 Ramjas Foundation Vs. Union of India and relevant extract of
which reads herein as under:-
21.
The principle that a person who does not come to the court with clean
hands is not entitled to be heard on the merits of his grievance and, in any
case, such person is not entitled to any relief is applicable not only to the
CS(COMM) No.1611/2016 Page 12 of 17
petitions filed under Articles
32, 226 and 136 of the Constitution but also to the cases instituted in others
courts and judicial forums. The object underlying the principle is that every
court is not only entitled but is duty-bound to protect itself from
unscrupulous litigants who do not have any respect for truth and who try to pollute
the stream of justice by resorting to falsehood or by making misstatement or by
suppressing facts which have a bearing on adjudication of the issue(s) arising
in the case.”
13 The
plaintiff has a registration of the year 2007 in India. He has
however
in his entire volume of documents (running into three parts) has not
been able to show any
advertisement which he has effected in India wherein
his product has been advertised
or he is selling the same i.e. shoes under the
trade
name „COLUMBIA‟. It appears that the plaintiff has
no market in
India. He may be a well known
name in foreign countries but his presence in
India has not been depicted; it
cannot be seen from any of the documents
which had been filed by the
plaintiff. His trans-border reputation,
if any, has
not
travelled to India. His registration is in class 25. Class 25
relates to
sportswear, apparel and footwear. Even in
the plaint, the averment of the
plaintiff
is that his customers who are mountaineers and do trekking buy his
shoes
aboard and travel to India and on seeing similar / identical shoes of a
cheaper
brand, are prejudiced. This by itself would not be reason enough for
them to dis-continue to buy the
shoes of the plaintiff which are also more
CS(COMM) No.1611/2016 Page 13 of 17
heavily priced than the shoes of defendant No. 2
which are only priced at Rs.500-600/- in comparison with the shoes of the
plaintiff which sell at Rs. 3,000/- a pair. Moreover, what is the percentage of
that customer (mountaineers) also remains a mystery.
14 At the cost of repetition, these averments are not supported by any
document; although the plaintiff has filed documents showing his returns which
he has filed before the Registrar of Companies (ROC) under the name of his
company i.e. Columbia Sportswear Company Pvt Ltd. yet these balance sheets and
returns before the ROC do not reflect that he had sold any footwear under the
trade name „COLUMBIA‟ in India. On this score, queries had been put to the
learned counsel for the plaintiff but he has no answer.
15 Per contra, the defendant‟s documents although also not be too many
yet do reflect that the defendant has an established presence in India.
Advertisement of his product from the year 2002 showing sale of footwear under
the name „COLUMBIA‟ with the details of distributors are evident. The invoices
filed by him reflect the sales made by defendant No. 2 to various distributors
in India which show that defendant No. 2 company
(Galaxy Footwear Pvt. Ltd.) is
selling „COLUMBIA‟ shoes. Various
CS(COMM) No.1611/2016 Page 14 of 17
documents have been filed by defendant No. 2 which reflect that
„COLUMBIA‟ shoes have been purchased from the year 2002-2003 onwards by
distributors one of whom is Indian Adopter who had purchased gents shoes under
the name „COLUMBIA‟. (page 211 of the documents filed by defendant No. 2). The
invoice dated 03.01.2004 is another such document. Although, the advertisements
of defendant No. 2 reflects that he is selling shoes under the brand name not
only of „COLUMBIA‟ but also of „COLUMBUS‟ and „COPPER LAND‟ which are all
footwear of defendant
No. 2 company yet this Court is of the view that he cannot, at this
stage, be restrained from using the trade name „COLUMBIA‟ as he has been able
to prima-facie show his active presence in the market from the year 2002 which
has been reflected not only through his advertisements but also his sale
invoices. His sale figures which include sale of “COLUMBIA” shoes is also on
record. Thus, defendant No. 2 has been able to establish that he is selling
shoes under the trade name „COLUMBIA‟ from the year 2002. His advertisement
campaign is also since that period. The registration of the plaintiff is dated
27.07.2007.
16 At the cost of repetition, the plaintiff has failed to discharge
(through any documentary evidence) his burden showing that his presence in
India has
CS(COMM) No.1611/2016 Page 15 of 17
been active or that he is recognized in the Indian market. There is not
a single sale document filed by him to evidence that he has sold any shoe under
the trade name „COLUMBIA‟ in India.
17
There is no doubt to the settled
legal proposition that reputation and goodwill in a business generally attaches
with the trade name adopted by a business house and such a reputation or
goodwill has to be protected by the Court; copying of the name by a competitor
is likely to cause an injury to the business of the original party which the
other party is not entitled to do so. However the legal right which is asserted
by the plaintiff and the corresponding need projected by the defendant must be
weighed while determining where the balance of convenience lies.
18
In 2002 (24) PTC 121 (SC) Mahendra and Mahendra Paper Mills Ltd.
Vs. Mahendra and Mahendra Ltd.,
the Court while dealing with such a situation
had made an observation which would be relevant in the context of this case.
“The Court also, in restraining a
defendant from exercising what he considers his legal right but what the
plaintiff would like to be prevented, puts into the scales, as a relevant
consideration whether the defendant has yet to commence his enterprise or
whether he has already been doing so in
CS(COMM) No.1611/2016 Page 16 of 17
which latter case considerations somewhat different
from those that apply to a case where the defendant is yet to commence his
enterprise, are attracted.”
19 In the instant
case, defendant No.
2 has admittedly
been in the
business
since the year 2002 (although he has projected that he is in business
since
1995). The documentary evidence supports
the fact that he is in active
business
and selling shoes under the trade name „COLUMBIA‟ since the
year 2002 onwards. The plaintiff has failed to show
that he has sold any
footwear
under the trade name „COLUMBIA‟ in India.
20
The plaintiff has failed to make
prima-facie case. Balance of convenience in fact lies in favour of defendant
No. 2. Irreparable loss and injury will be suffered by defendant No. 2 in case
he is not allowed to continue his trade which is legal.
21
I.A. No.23361/2014 (under Order
XXXIX Rule 4 of the Code) filed by defendant No. 2 is allowed.
22
I.A. No. 16583/2014 filed by the plaintiff under
Order XXXIX Rules
1 & 2
is dismissed.
CS(COMM)
1611/2016
23 For framing of issues list on 19.9.2017
INDERMEET KAUR, J
APRIL, 2017/A/gb
CS(COMM) No.1611/2016 Page 17 of 17
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