Delhi High Court: A Single Judge Bench of Prathiba M. Singh, J.*, opined that based on the reputation in the red-box device mark ‘SUPREME ', the plaintiff had acquired a ‘well-known' status and thus, passed a decree of declaration declaring the red-box device mark as a `well-known' mark in respect of apparel and clothing. Further, since the word ‘SUPREME' was a dictionary word, the declaration of well-known was limited to the ‘SUPREME' red-box logo and not the word itself.
The plaintiff filed the present suit for grant of permanent injunction and to seek protection of its mark red-box device mark ‘SUPREME' in respect of readymade clothing, accessories, etc. The plaintiff adopted the mark ‘SUPREME' in 1994 in USA, and the same had been used in India since 2006 among Indian customers. The plaintiff also had a website supremenewyork.com, for promoting and marketing its goods and had more than 700 registrations globally for the mark ‘SUPREME' in classes such as Class 25, and it had been in continuous use. The plaintiff also averred that it had filed applications for its ‘SUPREME' red box device mark in India.
In the present case, the grievance against the defendant trading as Punjabi Adda, was that the defendant was using the mark ‘SUPREME' on its t-shirts and was selling them through their websites, www.punjabiadda.com and www.punjabiadda.us. The plaintiff became aware of the defendant's activities, and use of the mark ‘SUPREME' in July 2022. The plaintiff then filed the present suit seeking permanent injunction and seeks a decree declaring the plaintiff's ‘SUPREME' red box device mark to be recognised as a ‘well-known' mark under Section 2(zg) of the Trade Marks Act, 1999 (‘Act').
Analysis, Law, and Decision
On 11-11-2022, an ex-parte ad-interim injunction was granted in favour of the plaintiff and this Court restrained the defendant, and anyone acting on their behalf from engaging in activities such as offering for sale, selling, displaying, or using the plaintiff’s ‘SUPREME’ red box device mark and the word mark ‘SUPREME’.
The Court noted that various celebrities who had endorsed the plaintiff's clothing included Justin Bieber, Beyonce, Madonna, Rihanna, Sade etc. and other well-known international celebrities. In India, the plaintiff's products bearing the mark ‘SUPREME' had been endorsed by the celebrities such as Diljit Dosanjh, Ranbir Kapoor, Karan Johar etc. It was, thus, prayed that the mark be declared as a ‘well-known' mark.
The Court relied on Levi Strauss and Co. v. Imperial Online Services (P) Ltd., 2022 SCC OnLine Del 986, wherein this Court after perusing the extent of reputation in the mark, granted a ‘well-known' status to ‘Arcuate Stitching Mark '. The Court noted that the plaintiff and the defendant had entered into a Settlement Agreement and as per these terms, the defendant agreed not to file any trade mark/copyright application to register the plaintiff’s ‘SUPREME' marks or any mark similar to the plaintiff’s marks for any goods or services such as readymade clothing and related goods and services. The Court opined that the terms of the Settlement Agreement were lawful and there was no impediment in recording the same.
Thus, the Court, in recognition of the trade mark rights and common law rights in the red-box device mark ‘SUPREME' in favour of the plaintiff, decreed the suit under Order XXIII Rule 3 Civil Procedure Code, 1908. Further, the Court restrained the defendant from seeking any statutory rights by applying for trade marks or copyrights in respect of the red-box device mark ‘SUPREME '.
The Court opined that based on the reputation in the red-box device mark ‘SUPREME ', the plaintiff had acquired a ‘well-known' status. The red-box device ‘SUPREME' had acquired a secondary meaning keeping in mind the extent of usage of the said device mark. Therefore, the said red-box device mark deserves to be protected. Considering the period of 29 years, during which the red-box device mark ‘SUPREME' had been used for readymade clothing, the said mark had achieved the status of a ‘well-known mark'. Accordingly, a decree of declaration declaring the red-box device mark as a `well-known' mark in respect of apparel and clothing was passed by this Court.
Further, since the word ‘SUPREME' was a dictionary word, the declaration of well-known was limited to the ‘SUPREME' red-box logo and not the word itself. The Court further directed that since the matter had been settled between the parties, 50% of the Court fee was to be refunded to the plaintiff through counsel.
[Chapter 4 Corp. v. Dhanpreet Singh Trading, 2023 SCC OnLine Del 4454, decided on 11-7-2023]
Advocates who appeared in this case :
For the Plaintiff: Dushyant K Mahant, Jaskaran Singh, Alvin Antony, Advocate
For the Defendant: Dhanpreet Singh, present in person
*Judgment authored by: Justice Prathiba M. Singh