Delhi High Court Rejects Textile Firm's Sindhi Breakdown Of Word "Adidas" To Defend Trademark Infringement Suit

In doing so, a single judge bench of Justice Sanjeev Narula rejected the defendants' contention that the name of the firm stems from one of the partners' “deep admiration for his elder sister” addressed as 'ADI' in the Sindhi community.

Contending that the use of the term was bonafide and honest, the defendants said that this admiration was “so profound” that defendant no. 1–Keshav Tulsiani (partner/director of Adidas Weaving Mills, Adidas Textile Industries and Adidas Merchandise Private Limited), was “commonly described as her devotee”– 'DAS' in Sindhi.

Justice Narula in its July 19 order however said that the explanation that the mark 'ADIDAS' was chosen out of Tulsiani's affection for his sister lacked “evidentiary support, further undermining their claim of honest adoption”.

The High Court further observed that plaintiff–Adidas AG and the defendant's use of the 'ADIDAS' mark cannot be understated, as the marks in question are “structurally and phonetically identical”.

The Defendants had tried to distinguish between their and the plaintiff's mark by contending that their mark is “consistently used in all capital letters” while the plaintiff uses lowercase letters in Adidas.

Rejecting this argument, the High Court said that the same is “flimsy” and “untenable”.

“Moreover, as evident from the aforenoted table, Plaintiff also has the registration of the mark 'ADIDAS' in all capital letters…The competing marks are thus identical,” the High Court underscored.

The High Court said that the German company's registered use of the term in relation to readymade garments has to be evaluated against the defendants' use of the term for textiles.

“Given the intrinsic relationship between textiles (raw materials) and garments (finished products), the goods are undeniably similar in nature and purpose. This similarity meets the requirement of Section 29(2)(a) of the (The Trade Marks) Act where the identity of the mark and the similarity of the goods covered by the trademark registration can lead to public confusion. The identity of the marks combined with the similarity between the goods— textiles and garments— creates a real likelihood of confusion. Consumers encountering Defendants' “ADIDAS” branded textiles could logically assume that they originate from or are associated with the same source as the Plaintiff's “ADIDAS” branded garments due to the use of the identical mark. This is particularly probable given that both types of goods could be encountered in similar retail environments, further blurring distinctions in the minds of consumers,” the High Court said.

Pointing to the purpose of Section 29(2)(a) of the Trade Marks Act, the High Court said that the provision has been “consistently interpreted” by courts to protect registered trademarks from uses that “exploit their standing, particularly where such use involves identical marks and similar goods”.

Noting that both the Plaintiff and Defendants operate in “closely related sectors”, the High Court said that the likelihood of “overlap in trade channels is high, potentially leading to consumer confusion” adding that Adidas AG had successfully established a case of trademark infringement.

Pointing to the uniqueness of the term, Justice Narula also observed that 'ADIDAS' is a “coined term” with “no inherent linguistic meaning”.

“Invented or arbitrary marks, such as “ADIDAS,” do not exist in language until created and used as trademarks. They are thus deemed to have a high degree of distinctiveness and are given a wide ambit of protection under trademark law. This distinctiveness means that the likelihood of confusion or deception among the public can be presumed when such a mark is replicated by another party, especially in the same or closely related fields of business,” the Court said.

The Court further underlined that as the term is invented, highly distinctive and had been held as a well known trademark by the Intellectual Property Appellate Board in August 2018, the it is “unlikely” for the term to be “chosen innocently”. Therefore it was incumbent upon the Defendants to demonstrate that their adoption of the identical mark was honest and in good faith, it added.

Disposing of the suit, the court awarded Rs. 3 Lakh as damages to Adidas AG, which is to be recovered jointly and severally from the Defendants. It also went on to award Rs. 11,22,060 as the costs for the litigation to Adidas AG.

Case title: ADIDAS AG v KESHAV TULSIANI AND ORS.

Counsel for the plaintiff: Ranjan Narula, Aishani Singh and Shivangi Kohli

Counsel for the defendants: None

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