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

CS Professional · Intellectual Property Rights - Laws and Practices · PYQS · December 2024
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 the exception in which the Registrar may permit the registration of trademark which is identical or similar to other trademark.

Answer & Explanation:

Exception for Registration of Identical or Similar Trademarks In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trademarks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. Honest Concurrent Use of a Trade Mark An Honest Concurrent Use of a Trade Mark is said to exist where two distinct entities have coexisted for an extended period of time while honestly utilizing the same or a strikingly similar representation of the same name or mark that is registered. It is important to note that in India, even the unregistered Trade Marks have been given statutory protection by the virtue of Sections 34 and 35 of the Trade Marks Act, 1999. Thus, the concept of honest concurrent use acts as a barrier of protection for those entities who have been honestly using such marks and/or names that are same or have a strikingly similar representation, thereby also allowing for the same to be registered as Section 12 of Trademark Act, 1999 provided that it satisfies the Registrar that it is a result of special circumstance and not an ordinary case of infringement. Scope of Honest Concurrent Use It is common knowledge that the use of a Trade Mark that is deceptively similar to another's constitutes infringement. Nevertheless, honest concurrent use can be utilized as a defense strategy in the event of infringement claims or proceedings. However, the person taking the defense of Honest Concurrent Use must not take actions that intensify uncertainty beyond what is unavoidable and so infringe upon the claimant's goodwill. However, such defense strategies, if satisfied, can be used to register such Trade Marks as per S.12 of the Trade Marks Act, 1999, which provides for registration in cases of Honest Concurrent Use. Confusion Arising Out of Resemblance and Remedies Every time a product has a resemblance to another or is comparable to one in the market, there is a likelihood of the same creating confusion in the minds of the public. Thus, exploiting the more well-known brand's reputation for one's own advantage would be an infringement on the other's Intellectual Property Rights. However, there are also instances when such confusion is due to Trade Marks that are deceptively similar to each other. Therefore, the Registrar must determine, based on the facts of the case, whether a specific Trade Mark is likely to mislead or create confusion. Indian Courts on the subject matter: The Hon'ble Supreme Court of India in National Sewing Thread Co. Ltd., Chidambaram Vs. James'Chadwick & Brothers Ltd. has observed that the burden of proof lies on the Applicant who seeks to register his Trade Mark, so as to prove that his mark is not likely to deceive or cause confusion in the minds of the public. Thus, the onus lies on him to satisfy the Registrar that his mark does not fall within the ambit of S.8 of the of the Trade Marks Act, 1940 and therefore, it should be registered. Moreover, in deciding whether a particular Trade Mark is likely to deceive or cause confusion, that duty is not discharged by merely comparing it with the Trade Mark that is already registered and whose proprietor is offering opposition to the registration of the said mark. The Hon'ble Apex Court further observed that in such cases, the real issue to be decided is how a purchaser, who must be perceived as an average man of average intelligence, would react to a particular Trade Mark, what associations he would form by looking at the Trade Mark, and how he would associate the Trade Mark with the goods he would be purchasing. The Hon'ble Supreme Court of India in Renaissance Hotel Holdings Inc. Vs. B. Vijaya Saihas has provided clarity on the subject by observing the following: When the defendant's mark is identical to the plaintiff's registered Trade Mark, and the goods or services covered are similar to those covered by such a registered Trade Mark, it may be necessary to prove that it is likely to cause public confusion, or that it is likely to have an association with the registered Trade Mark. Similarly, when the Trade Mark of the plaintiff is similar to the registered Trade Mark of the defendant and the goods or services covered by such registered Trade Mark are identical or similar to the goods or services covered by such registered Trade Mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the Trade Mark of the defendant is identical to the registered Trade Mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered Trade Mark, then the Court shall presume that it is likely to cause confusion on the part of the public.

Topics: Trademark Law

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