Delhi High Court: In a case wherein Defendant 1, trading as ‘Sastajoota’ was selling counterfeit duplicate “PUMA” sportswear and shoes, C. Hari Shankar, J.*, held that Defendant 1, as well as all others acting on its behalf, shall stand permanently injuncted from dealing, in any manner, including by way of purchase and sale, whether physically or online, of any products, including footwear, sportswear, apparels or accessories thereof, under the mark “PUMA”, 
and Form strip logo 
or any other identical or deceptively similar marks or logos.
Background
Plaintiff was a company based in Germany, which manufactured sportswear and athletic shoes, under the brand “PUMA” with the mark of a leaping PUMA, resulting in the logo. Plaintiff also used a distinctive Form strip logo, and it was asserted that the “PUMA” mark was coined in 1948. Plaintiff’s “PUMA” mark had also been declared as a well-known mark in India by the Trade Marks Registry in 2020.
Defendant 1 was engaged in making and selling counterfeit PUMA products, using plaintiff’s “PUMA” and Form strip logo, through its revealingly titled website www.sastajoota.com. Plaintiff provided screenshots of various sites on which Defendant 1’s products were sold and photographs of Defendant 1’s products, which show that defendants were selling counterfeit duplicate “PUMA” sportswear and shoes.
Analysis, Law, and Decision
The Court observed that Defendant 1 was using marks which were identical to plaintiff’s registered trade marks, on goods which were identical to the goods on which plaintiff used its marks and was selling the goods to the very same consumers who form the consumer target base of plaintiff through the very same channels. Thus, the Court opined that the triple identity test, which envisaged identity of marks, goods and consumers and availability of the goods through identical sources and outlets, was satisfied.
The Court further opined that the present case, directly invoked Section 29(2)(c) read with Section 29(3)1 of the Trade Marks Act, 1999, under which, where the rival marks were identical, and used in respect of identical goods or services, the Court would presume likelihood of confusion in minds of consumer. Thus, the Court held that the present case clearly made out a case of infringement and passing off, by the defendant, of the registered “PUMA” word mark and the registered device marks and of plaintiff.
The Court held that Defendant 1, as well as all others acting on its behalf, shall stand permanently injuncted from dealing, in any manner, including by way of purchase and sale, whether physically or online, of any products, including footwear, sportswear, apparels or accessories thereof, under the mark “PUMA”, and Form strip logo or any other identical or deceptively similar marks or logos.
The Court opined that Defendant 1 was a counterfeiter and had dragged plaintiff in the Court for an entirely unnecessary litigation, thus, plaintiff would be entitled to actual costs against Defendant 1. Thus, the Court held that plaintiff was also entitled to a decree against Defendant 1 for costs quantified at Rs. 4,59,520.
[Puma Se v. Brijendra Singh, 2023 SCC OnLine Del 6690, decided on 18-10-2023]
Advocates who appeared in this case :
For the Plaintiff: Ranjan Narula, Shashi P. Ojha, Aishani Singh, Shivangi Kohli, Advocates
*Judgment authored by: Justice C. Hari Shankar
