The Plaintiff, Adidas AG, manufacturer and distributor of sports accessories and apparel under the trademark "ADIDAS," has filed the suit seeking to secure their rights against the use of an identical mark by the Defenda

The Plaintiff, Adidas AG, manufacturer and distributor of sports accessories and apparel under the trademark "ADIDAS," has filed the suit seeking to secure their rights against the use of an identical mark by the Defendants for various classes of goods, including textiles. In 1948, the founder of the Plaintiff Company, Mr. Adolf Dassler, also known as 'Adi', coined the mark "Adidas" by combining his name 'Adi' with the first three letters of his surname 'Das'. The mark was put to commercial use in 1949 when Mr. Dassler incorporated the company 'Adolf Dassler adidas Sportschuhfabrik' for manufacturing and marketing a wide range of sporting equipment, accessories, and apparels. Over the years, the company underwent corporate restructuring and is presently known as Adidas AG. The Plaintiff launched several brands, including "Adidas Originals," for its range of products. The cumulative global sales of the Plaintiff till the year 2010, the period preceding the filing of the suit, amounted to € 11,990 million. The trademark "Adidas" has been registered in the Plaintiff's favour in various countries, with the earliest one dating back to 1954. Further, the Plaintiff expended substantial amounts in promoting its products across the world. The Plaintiff has also periodically sponsored popular football, rugby, and cricket leagues. Owing to Plaintiff's extensive promotion and high quality standards of the "ADIDAS" products, they are widely recognized all over the world and exclusively associated with the Plaintiff. The Plaintiff's predecessor first registered its mark "ADIDAS" in India in the year 1971. In 1989, the Plaintiff granted a license to commercially trade in India to M/s Bata India Pvt. Ltd., thus marking their entry in the Indian market. Later, in 1996, Plaintiff established a joint venture company named 'Addidas India Marketing Private Limited' (formerly, Adidas India Trading Private Limited) in India. This joint venture was terminated in 2006, when 'Adidas India Marketing Private Limited' became Plaintiff's subsidiary. Thus, the Plaintiff has been openly and continuously carrying on their business in India since 1989. Even before 1989, the Plaintiff's goods were being purchased by Indian consumers travelling abroad. Further, their products were also available in duty-free shops at Indian airports. That apart, there were extensive broadcasting in India of sporting events which were either sponsored by the Plaintiff or where competing players used the Plaintiff's Adidas products. Such prevalence and widespread publicity even before their launch in India, indicate that Plaintiff's reputation garnered in other countries spilled into India. To further promote their "ADIDAS" mark/products, the Plaintiff sponsored several teams participating in the Indian Premier League along with other tennis, athletics, and football tournaments, and issued advertisements in print media extensively distributed throughout the country. The mark has also been endorsed by celebrated cricketers. The Plaintiff has, over the years, secured multiple registrations for "ADIDAS" trademark including it variants. The grievance arises when the plaintiff came to know that the Defendant has adopted identical word "ADIDAS" as a trademark as well as part of its tradename for their textile business (class 24) which was published in Journal No. 1029 dated 16th April, 1992. The said application was opposed by the Plaintiff's Licensee and Distributor-M/s Bata India Pvt. Ltd. stating that he has adopted this name in bad faith, with dishonest intention. The Plaintiff adopted the "ADIDAS" trademark in 1971 and secured registration of the said trademark before Defendant registration. The Plaintiff has documented the use of the "ADIDAS" mark internationally well before 1987. They have also proved their commercial use in India from 1989 through their witness testimony, who has stated that Bata India Pvt Ltd. was appointed as the Plaintiff's licensee and distributor in 1989. Defendant claims that the adoption of the trademark "ADIDAS" was both bona fide and honest. The rationale for choosing a mark identical to that of the Plaintiff is rooted in personal affection. From childhood, Defendant held deep admiration for his elder sister, addressed as 'ADI' in the Sindhi community. This admiration was so profound that he was commonly described as her devotee ('Das' in Sindhi). Consequently, the term "ADIDAS" (to mean devotee of elder sister) was conceived, combining 'ADI' (elder sister) and 'DAS' (devotee), to reflect this familial devotion. Defendant applied for registration of the Impugned mark on 19th May, 1987 on proposed to be used basis and secured registration of the trademark "ADIDAS" under no. 472388 on 29th September, 2006. The Defendants have been the prior adopter and user of this mark in India since 1987. As per the defendant, lawsuit warrants dismissal on the grounds of the stale nature of the cause of action and the Plaintiff's evident acquiescence and laches. Despite the Plaintiff's acknowledged awareness of the Defendants' use of the trademark since 1987, no suit for infringement was initiated until 2011. This prolonged period of inaction, spanning over two decades, implies a tacit consent to the Defendants' use of the mark. Given this context, initiating a suit after such a significant delay not only undermines the urgency normally associated with trademark infringement claims but also signals an abandonment of any objections to the Defendants' use. Consequently, the Plaintiff's claim is barred by principles of delay, estoppel, acquiescence, and waiver, each underscoring the unreasonable delay and its prejudicial impact on the Defendants. As per the defendant there is no reasonable likelihood of confusion between the Plaintiff's and the Defendants' trademarks, despite their textual similarity. The Defendant's trademark "ADIDAS" is consistently used in all capital letters, distinctly differentiating it from the Plaintiff's use of lowercase letters in 'Adidas.' This deliberate stylistic choice mitigates confusion among consumers, emphasizing a visual distinction in branding. Additionally, the Defendants' adoption of the trademark was conducted honestly at a time when the Plaintiff had not yet established any commercial presence in India. This timing further supports the argument that the Defendants' use of the trademark did not seek to capitalize on the Plaintiff's brand identity, as it was non-existent in the Indian market at that point. The Defendants contend that they are the prior users of the "ADIDAS" trademark for textiles, arguing that when they adopted and began using the mark in 1987, the Plaintiff's products were not commercially available in India under that trademark. However, the Plaintiff's evidence shows that their products bearing the "ADIDAS" mark were introduced into the Indian market in 1989 through Bata India Pvt. Ltd., who acted as their licensee and distributor. A registered proprietor can initiate legal proceedings for infringement, without actual use of the registered mark. Thus, the relevant date for the purpose of establishing prior use in the present case would be the date of registration of the mark and not when the Plaintiff actually started using it. Explain how doctrine of Transborder reputation is associated in this case.