Showing posts with label COLUMBIA SPORTSWEAR COMPANY VS HARISH FOOTWEAR. Show all posts
Showing posts with label COLUMBIA SPORTSWEAR COMPANY VS HARISH FOOTWEAR. Show all posts

Tuesday, May 2, 2017

COLUMBIA SPORTSWEAR COMPANY VS HARISH FOOTWEAR & ANR




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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.




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



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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.






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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





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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




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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



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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





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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.




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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





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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







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(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.






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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





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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




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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





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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





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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




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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







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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




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