The Delhi High Court has restrained three local companies—Adidas Weaving Mills, Adidas Textile Industries, and Adidas Merchandise—and their directors from manufacturing, trading, selling, or dealing in textile goods under the mark ‘ADIDAS’ or any other mark that is deceptively similar to the trademark of Adidas AG, a German sports and apparel company.
The single-judge bench of Justice Sanjeev Narula has also awarded damages of Rs 14.22 lakh in favour of Adidas. The amount was a combination of nominal damage of Rs 3 lakh and further litigation costs of Rs 11.22 lakh accrued by Adidas in the course of the trademark infringement case that finally got settled after 13 years.
The defendants who sold ‘ADIDAS’ branded goods contended adoption of its trade mark was “bonafide and honest”. It was explained that their reason behind adopting a mark absolutely identical to that of the plaintiff Adidas “is rooted in personal affection”.
It was submitted further on behalf of the defendants that they had named them with the name because “Defendant No. 1 (Keshav Tulsiani, partner/director of Adidas Weaving Mills, Adidas Textile Industries and Adidas Merchandise) had great admiration for his elder sister, who was called ‘ADI’ in the Sindhi community. He had such great admiration for her that he was known as her devotee, that is, ‘Das’ in Sindhi.”. The word “ADIDAS” thus stands for Devotee of Elder Sister, where ‘ADI’ in Sanskrit literally means elder sister and ‘DAS’ mean devotee. It has been concocted to reflect this devotion for an elder sister in the family.
Another objection raised by the defendants was that the plaint be dismissed on grounds of territorial jurisdiction and that they do not reside or have any business within the jurisdiction at Delhi. The defendants also pointed at the delays in filing the suit and on the aspect that they use the mark in all uppercase, while the plaintiff uses it in all lowercase.
However, the court held that the high court has territorial jurisdiction in view of the argument by the plaintiff company that defendants carry on their business through their wholly-owned subsidiary M/s Adidas India Marketing, at Satbari, New Delhi.
One of the issues of delay relates to the use of the mark by the defendant since 1987; however, the burden of proof rested with the defendants, who did not adduce evidence to support their plea of delay.
Thus the court has found in favour of Adidas AG and stated that identical use of the mark by the defendants, coupled with similarity between in the goods that is textiles and garments, “creates a real likelihood of confusion.” Court has gone a step further to actually state that the word ‘Adidas’ being a coined term with no inherent linguistic meaning, yet at the same time being a unique word, “has a high degree of distinctiveness and is afforded broad protection under trademark law.
