Adidas Ag Vs Keshav H Tulsiani

In the High Court of Delhi, Adidas AG, a renowned sports goods manufacturer, filed a suit against Keshav H. Tulsiani & Ors for trademark infringement. Adidas, established in 1948, has a global reputation and extensive sales, including in India, where it has been present since 1989. The company has multiple trademark registrations in India, including for the "Adidas" mark.

The defendants, who did not appear in court, claimed they adopted the mark "Adidas" in good faith, inspired by personal affection, and argued that the suit was barred by delay, acquiescence, and laches. However, the court found that Adidas had consistently opposed the defendants' trademark applications and promptly challenged the erroneous registration upon discovery.

The court established its territorial jurisdiction based on Adidas's business activities in Delhi and the defendants' admission of selling their goods all over India. The court also ruled that the suit was not barred by delay, laches, or acquiescence, as Adidas had actively pursued legal actions to protect its trademark rights.

The court found that Adidas was the prior user of the "Adidas" mark in India, with registrations predating the defendants' adoption in 1987. The defendants' trademark registration in class 24 for textiles was canceled, and their claim of prior use was not substantiated.

The court concluded that the defendants' use of the "Adidas" mark for textiles infringed Adidas's trademark rights, given the identity of the marks and the similarity of the goods. The defendants failed to demonstrate honest adoption or to provide evidence of actual use before Adidas's registrations.

In light of the infringement, the court granted Adidas a permanent injunction against the defendants' use of the "Adidas" mark for textiles. Adidas was awarded nominal damages of Rs. 3,00,000 and litigation costs of Rs. 11,22,060. The court disposed of the suit and pending applications with these terms.

Case Citation: Adidas Ag Vs Keshav H Tulsiani:19.07.2024 : CS(COMM) 582/2018: Delhi High Court: Sanjeev Narula: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

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Adidas AG Vs Keshav H Tulsiani

The case revolves around the trademark "Adidas," which was coined by Adolf Dassler in 1948 by combining his nickname 'Adi' and the first three letters of his surname 'Das'. The mark was first used commercially in 1949. Adidas registered its mark in India in 1971 and formally entered the Indian market in 1989 through a licensing agreement with Bata India Pvt. Ltd.

Defendant No. 1 claimed his adoption of the "ADIDAS" mark was in good faith, motivated by personal affection for his elder sister, who was called 'ADI' in the Sindhi community. This defense of personal significance aims to suggest that the adoption was not intended to infringe on the established Adidas brand. However, the court's primary focus is not on the personal reasons behind adopting the mark but on the legal implications of its use in commerce.

The Defendants challenged the court's jurisdiction, arguing they neither reside nor conduct business within the court's jurisdiction, and thus, the cause of action did not arise there. This argument aimed to dismiss the case on procedural grounds. Nonetheless, the court found that it had territorial jurisdiction under Section 134(2) of the Trademarks Act and Section 20 of the Code of Civil Procedure. This decision was based on the fact that Adidas conducts business in Delhi through its subsidiary, establishing a sufficient nexus for the court to exercise jurisdiction.

The Defendants also claimed they had applied for and secured registration of the "ADIDAS" mark in class 24 in 1987, predating the Plaintiff's commercial use in India. This assertion was crucial, as prior registration and use could potentially negate claims of infringement. However, the court determined that Adidas was the prior adopter and registered proprietor of the "ADIDAS" mark in India. The Defendants failed to substantiate their claim of prior use, which weakened their defense.

The court concluded that the Defendants' use of the identical "ADIDAS" mark on textile goods constituted trademark infringement under Section 29(2)(a) of the Trademarks Act. This decision was based on the similarity of goods and the likelihood of consumer confusion. The identical nature of the mark used by the Defendants and the established reputation of the Adidas brand likely led to consumer confusion, fulfilling the criteria for trademark infringement.

The court's ruling granted a permanent injunction restraining the Defendants from using the "ADIDAS" mark or any deceptively similar mark. This injunction aimed to prevent further consumer confusion and protect the integrity of the Adidas brand. The case underscores the importance of prior use and registration in trademark disputes and highlights the court's role in maintaining fair competition and protecting established trademarks from infringement.

Case Citation: Adidas AG Vs Keshav H Tulsiani: 19.07.2024/CS(COMM) 582/2018 :2024:DHC:5361: Delhi High Court: Sanjeev Narula. H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]