Allowed

Puma Se v. Surender Singh and Anr.

Delhi HC13 Dec 2024C.O. (COMM.IPD-TM)/55/2024

Case brief

AI extract

What is this about?

The High Court of Delhi allowed the petitioner's petition under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the deceptive mark 'P11MA', noting the respondent admitted no objection and the mark caused confusion.

What did the court decide?

The trade mark registry is directed to remove the entry of Trade Mark 'P11MA' bearing registration no. 5626764 dated 27th September, 2022.

Puma Se Vs Surender Singh and Anr. — Intellectual Property | Delhi HC (2024)

¶1

$~10

¶2

IN THE HIGH COURT OF DELHI AT NEW DELHI

¶3

% Date of decision: 13^th December, 2024

¶4

- C.O. (COMM.IPD-TM) 55/2024

¶5

PUMA SE .....Petitioner

¶6

Through: Mr. Ranjan Narula, Advocate

¶7

versus

¶8

SURENDER SINGH AND ANR. .....Respondents Through: Mrs. Zeba Tarannum Khan, Advocate for R-1 Ms. Nidhi Raman, CGSC with Mr. Akash Mishra, Advocate for R-2/UOI

¶9

CORAM: HON'BLE MR. JUSTICE AMIT BANSAL

¶10

AMIT BANSAL, J. (Oral)

¶11

The present petition has been filed on behalf of the petitioner under Section 57 of the Trade Marks Act, 1999 seeking cancellation of the impugned Trade Mark “P11MA” bearing registration no. 5626764 dated 27^th September, 2022 in Class 25, from the Register of Trade Marks.

¶12

The petitioner, a company existing and organised under the laws of Germany, is engaged in the business of manufacturing and marketing a wide range of products, inter-alia , sports shoes, apparel and accessories including tracksuits, t-shirts, shorts, polo shirts, travelling bags and cases, accessories and equipment.

¶13

Signature Not Verified

¶14

Page 1 of 5

¶15

C.O. (COMM.IPD-TM) 55/2024

¶16

Digitally Signed By:DHARMENDER SINGH Signing Date:02.01.2025 17:54:20

¶17

The petitioner is the owner of the brand PUMA/ ,

¶18

, along with its formative marks. The mark ‘PUMA’ forms part of the petitioner’s company's name and is solely associated with the petitioner. Along with the said marks, the petitioner has been the owner of the domain name ‘www.puma.com’ since 1997.

¶19

It is stated that the term ‘PUMA’ was coined by Rudolf Dassler in 1948 and the company ‘PUMA Schuhfabrik Rudolf Dassler’ was registered on 1^st October, 1948. Due to the popularity of the petitioner and its extensive use since 1948, the mark ‘PUMA’ has become synonymous with every sport worldwide.

¶20

Since 1982, the petitioner has extensively used its ‘PUMA’ trademarks in India. The petitioner is carrying on its business activities in India under the company name 'Puma Sports India Private Limited' which was incorporated in 2005.

¶21

The petitioner has actively collaborated with renowned brands such as Coca-Cola and Liberty as well as celebrities like Dua Lipa, Nipsley Hussle etc. to introduce innovative designs in the sports world.

¶22

The petitioner has provided its consolidated sales for the last ten years in paragraph 8 of the petition. It is pertinent to note that in FY-2023-24, the petitioner’s sales were approximately € 8601.7 Million. The petitioner also advertises its mark extensively and the advertisement/promotional expenses of the petitioner are given in paragraph 9 of the petition.

¶23

The petitioner has obtained the registration of the mark ‘PUMA’ in several classes. The details of trade mark registrations obtained by the

¶24

Signature Not Verified

¶25

Page 2 of 5

¶26

C.O. (COMM.IPD-TM) 55/2024

¶27

Digitally Signed By:DHARMENDER SINGH Signing Date:02.01.2025 17:54:20

¶28

petitioner are given in paragraphs 17 and 18 of the petition. The petitioner’s mark has also been declared as a ‘well-known trademark’ by the Registrar of Trade Marks on 19^th February, 2024.

¶29

The respondent no.1, Mr. Surender Singh s/o Bharm Park, is engaged in the business of manufacturing, trading, and supplying socks. 10. The respondent no.1 obtained the registration of the impugned mark “P11MA” in Class 25 on 27^th September, 2022 on a ‘proposed to be used’ basis.

¶30

In the second week of April 2024, the petitioner conducted an online trade mark search on the website of Trade Mark Registry and discovered that the respondent no.1 was using the impugned mark, which is deceptively similar to that of the petitioner.

¶31

Being aggrieved by the aforesaid activities, the petitioner filed the present petition seeking cancellation of the mark obtained by the respondent no.1

¶32

Notice in the present petition was issued on 29^th April, 2024 and while issuing the notice the respondent no.1, Mr. Surender Singh, was asked to be present in person on the next date of hearing.

¶33

Mr. Ranjan Narula, counsel for the petitioner, states that the impugned registration of the respondent no. 1 is ex-facie in bad faith as is evident from the manner in which the impugned mark is being utilized on the respondent’s impugned products. The same is depicted below:

¶34

Signature Not Verified

¶35

Page 3 of 5

¶36

C.O. (COMM.IPD-TM) 55/2024

¶37

Digitally Signed By:DHARMENDER SINGH Signing Date:02.01.2025 17:54:20

¶38

The above depiction leaves no doubt in my mind that the respondent

¶39

no. 1 has slavishly copied the mark of the petitioner company so that his goods can be passed off those of the petitioner.

¶40

Mr. Surender Singh, respondent no.1, is present in person in court today and submits that he does not wish to contest the present petition and states that he has no objection to the removal of the aforesaid impugned mark from the Register of Trade Marks.

¶41

Signature Not Verified

¶42

Page 4 of 5

¶43

C.O. (COMM.IPD-TM) 55/2024

¶44

Digitally Signed By:DHARMENDER SINGH Signing Date:02.01.2025 17:54:20

¶45

Clearly, the petitioner is the prior user and adopter of the mark, PUMA. The petitioner is also the prior registered proprietor of the aforesaid mark in Class 25 as well as other classes. In my considered view, the adoption and used of a deceptively mark for similar goods is likely to cause confusion in the trade and the members of public at large. The impugned registration violates the provisions of Section 9 and Section 11 of the Trade Marks Act, 1999 and is therefore, liable to be rectified in terms of Section 57 of the Act.

¶46

Accordingly, the present petition is allowed and the Trade Mark Registry is directed to remove the entry bearing Trade Mark “P11MA” registered via registration No. 5626764 dated 27^th September, 2022 in Class 25.

¶47

The Registry is directed to send a copy of the present order to the Trade Mark Registry at e-mail - [email protected] for compliance.

¶48

AMIT BANSAL, J

¶49

DECEMBER 13, 2024 ds

¶50

Signature Not Verified

¶51

Page 5 of 5

¶52

C.O. (COMM.IPD-TM) 55/2024

¶53

Digitally Signed By:DHARMENDER SINGH Signing Date:02.01.2025 17:54:20

Puma Se v. Surender Singh and Anr.

Case brief

What is this about?

What did the court decide?

Puma Se v. Surender Singh and Anr.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

Coram

Case details

Similar cases

Itc Limited Vs Omni Plast Pvt. Ltd. & Anr.

Bentley Systems Inc. & Anr. Vs Pnc Infratech Limited & Ors.

Spv Laboratories Private Limited Vs the Controller General of Patents and Designs

Sun Pharmaceutical Industries Ltd. Vs Wyeth Limited & Ors.

Spaceman Spirits Lab Private Limited Vs the Registrar of Trade Marks Trademarks Registry

Marriott Worldwide Corporation Vs Hotel Marriot Prime & Anr.