Sibling Admiration vs. Corporate Identity: The ADIDAS Trademark Dispute in Delhi High Court

INTRODUCTION

A case emerged where German athletic company Adidas filed a petition in the Delhi High Court against Keshav H. Tulsiani, who sells wholesale sportswear in Connaught Place, Delhi, for unauthorized use of its registered trademark. Tulsiani defended himself by stating that he named his label “ADIDAS” after his favorite sister, Adi, and believed he had implicit approval since Adidas did not act earlier. However, the court observed that Tulsiani’s products with the famous three stripes took advantage of Adidas’s reputation while being of lesser quality. The court instructed Tulsiani’s firms to stop using the mark ‘ADIDAS’ and awarded Rs 14.22 lakh to Adidas for litigation costs and nominal damages.

ORIGIN STORY OF TRADEMARK FROM BOTH PARTIES

Plaintiff: Adolf Dassler, the founder of Adidas, combined his first name ‘Adi’ with the first three letters of his last name ‘Das’ to create “Adidas” in 1948. The brand was commercially used in 1949 with the establishment of ‘Adolf Dassler adidas Sport Schuhfabrik’ for producing and selling sports goods, accessories, and clothing. The company was later restructured and is currently known as Adidas AG.

Defendant: Keshav H. Tulsiani claimed that he named his label “ADIDAS” after his elder sister, Adi, to whom he was devoted (‘Das’ means ‘devotee’ in Sindhi). However, this reasoning did not hold weight in court.

ADIDAS IN INDIA

Plaintiff’s Trademark Registrations in India:

• 1971: The Plaintiff’s predecessor applied for trademark registrations in India.
  • Registration No. 271863: Applied on 06.05.1971 for Class 18 (Bags, holdalls, containers).
  • Registration No. 271864: Applied on 06.05.1971 for Class 25 (Sportsmen’s shoes, training suits).
• 1989: The Plaintiff licensed M/s Bata India Pvt. Ltd. to trade in India and later formed a joint venture, ‘Adidas India Marketing Private Limited,’ in 1996, which became a subsidiary in 2006. Adidas has been doing business in India since 1989.

Defendant’s Registration of Trademark in India:

• 1987: Defendant No.1 registered the mark ‘ADIDAS’ for his goods on May 19, 1987, with the registration effective from September 29, 2006 (Registration No. 472388).

ISSUES RAISED

Whether the Court has the territorial jurisdiction to try and entertain the present suit?

This matter has been addressed in the judgment between paragraphs 14 and 17. This is what is summarized here.

On the basis of section 134(2) of the Act and Section 20 of the Code of Civil Procedure, 1908, the Plaintiff avers that this Court has territorial jurisdiction over trademark infringement cases. The following evidence shows that;

• Operating business operations through its branch in Delhi Sales invoices and yearly filings indicating establishment of business in Delhi To which the Defendants have admitted to selling their products with an ‘ADIDAS’ logo all across India including Delhi.
• The Plaintiff ultimately won the case proving therefore that there was indeed territorial jurisdiction with reference to their own evidence.
• Participation in Business Activities and Setting up in Delhi Some parts of the reasons for lawsuit went under the Court’s authority on this issue.

Whether the suit filed by the Plaintiff is barred by delay, acquiescence and laches?

This issue is dealt in from paragraph 18  to 26 in the judgment. Here is the brief of that.

The Respondents contend that the litigation is impeded because of holding back, acceptance, and laches maintaining that Plaintiff was aware of the Defendant’s use of the trademark since last year but did not act swiftly. Nevertheless, this Court opines that;

• The plaintiff did not only oppose all the Defendant’s applications for trademarks but also sought justice as soon as he uncovered the wrong registration in 2010. By these acts, it is clear from them there was no acceptance at all but a fight for their trademark rights.
• There was no evidence to prove that there were approvals from the plaintiffs concerning this particular use by defendants plus other issues.
• The plaintiffs’ continuous efforts in courts since early 1980s rule out any grounds of delayed action or acquiescence.

Consequently, the Court rules in favor of the Plaintiff and dismisses arguments based on delay, latches and accepting wrongs.

Whether the Plaintiffs mark “ADIDAS” had trans-border reputation in India prior to 1987?

This issue is dealt in from paragraph 27 in the judgment. Here is the brief of that.

The purpose of this question centered around whether or not the Plaintiff had been able to provide evidence for their claims underlying them in terms of product passing off. But, as already mentioned on July 3rd, 2024 Mr. Narula ordered that the Plaintiff would not continue with his passing off challenge so this court therefore has no reason to make any decision in respect to it at all.

Whether the Defendants are the prior user of the mark “ADIDAS” in India and if so, to what extent?

This issue is dealt in from paragraph 28 to 34 in the judgment. Here is the brief of that.

• The plaintiff was declared by the Court to be the earliest user of the “ADIDAS” mark in the classes 18, 25, 28 and 03.
• The Defendants argued that they had been using the product since 1987 but no substantial evidence showing use before filing registration by plaintiff in 1971, 1975, 1979 or 1985 existed.
• Recognized use of the mark began in 1987 after registration by the plaintiff. They were unable to supply an aggregate of proof like sales receipts, promotions or financials that could substantiate their claim.

On the other hand, the Plaintiff:

• Obtained the trademark registration for “ADIDAS” brand in India during 1971 and acquired several registrations across different categories

The Defendants’ claim of prior use is rejected by the Court due to lack of proof and evidence of genuine adoption.

Whether the use of the mark ‘ADIDAS’ in respect of textile pieces by the Defendants results in infringement/passing off?

This issue is dealt in from paragraph 35 to 41 in the judgment. Here is the brief of that.

• The Court found out that the Plaintiff won against the Defendants using the “ADIDAS” trademark on fabrics as they violated the Plaintiff’s rights. Among some of the major outcomes are:
• The Plaintiff is the sole possessor with regards to India that has owned and registered the “ADIDAS” mark since 1971 making them its first user.
• The Defendants’ use of “ADIDAS” in Class 24 has been canceled. – There exists similarity between these two marks and their products which may lead to confusion among customers (textiles and garments).
• There was no proven genuine adoption or evidence showing commercial use on the part of the Defendants.
• The Defendants using the Plaintiff’s mark “ADIDAS” without permission can weaken its uniqueness and damage the brand’s image, as it is a widely recognized and distinct mark.
• The Court determines that the Defendants’ utilization of the “ADIDAS” symbol satisfies the requirements for trademark violation as stated in Section 29(2)(a) of the Act, supporting the Plaintiff’s case.

Reliefs?

This issue is dealt in from paragraph  42 to 47 in the judgment. Here is the brief of that.

• The Plaintiff is granted the following by the Court:
• Permanent injunction forbidding the Defendants from using or applying marks similar to “ADIDAS” on textile products of class 24.
• Nominal damages of Rs. 3,00,000/- (about $4,000 USD) as a result of Defendants’ absence during trial and other relevant circumstances surrounding the case.
• Costs constituting Rs. 11,22,060/- (around $15,000) for litigation including court fees, local commissioner’s fees and attorney’s fees.
• The Plaintiff’s application seeking for damages amounting to Rs 20,00,000/- (approximately $26,000) was dismissed due to lack of sufficient proof justifying the loss incurred. The suit and pending applications are resolved on these conditions.

CONCLUSION

On July 19th, 2024, the Delhi High Court upheld Adidas AG’s trademark rights against Keshav H. Tulsiani, dismissing his personal reasons for using the name “ADIDAS” and noting the similarity and lesser quality of his products. The court emphasized the importance of protecting trademarks and awarded Rs 14.22 lakh to Adidas for damages, thereby reinforcing the significance of trademark maintenance and punishing infringement on well-known labels.

REFERENCES

• https://www.business-standard.com/industry/news/delhi-man-s-devotion-to-elder-sister-created-adidas-hc-gives-this-verdict-124072400850_1.html
• https://indianexpress.com/article/cities/delhi/adidas-delhi-hc-german-firm-tradenarj-infringement-9470362/
• https://dhccaseinfo.nic.in/jsearch/
  

  AUTHOR: Ms. Pragati Tomar, pursuing B.A. LL.B. from Prestige Law College, Gwalior