Delhi High Court Appoints Justice Nageswara Rao As Mediator In 'Shape Mark' Infringement Suit By Cricket Helmets Manufacturer

The Delhi High Court has appointed former judge of the Supreme Court of India, Justice Nageswara Rao, as a mediator in a suit filed by manufacturer of cricket helmets alleging infringement of its shape mark by a Meerut based entity selling identical products.

Justice Prathiba M Singh passed the order after the defendant entity, Ashi Sports, said it is willing to explore mediation in the matter and bring in some changes to ensure that the design or shape of its cricket helmets is not identical to that of the plaintiff, Kohli Sports Private Limited.

The court referred the parties to mediation to enable the defendant entity to suggest some options for change in design of its helmet so that grievance of the plaintiff is duly addressed.

“Considering the nature of the matter, the matter is referred to mediation before Justice Nageswara Rao (Retd), Judge, Supreme Court. The Ld. Mediator shall be paid a fee of Rs.3,00,000/-. The same shall be shared equally by both parties,” the court ordered.

In its suit, Kohli Sports claimed that it launched its cricket helmets with a distinctive shape in the year 2014 under the mark 'SHREY'. The suit sought permanent injunction restraining passing off, copyright infringement, unfair trade practice, damages etc.

It was submitted that the helmets have various distinctive features including the shape of the grill and ear guards as well as the manner in which the grill protects the face of the cricketer.

Kohli Sports claimed that 80% of the IPL teams wear its helmet and that even in the recent ICC World Cup, almost 70% of the players wore them.

The suit alleged that the defendant entity had copied the entire design of Kohli Sports' cricket helmets. It was also alleged that the content of the plaintiff's website was copied by the Defendant and it was uncanny that even the spelling mistakes were replicated.

It defendant took a stand that Kohli Sports' helmets have not achieved the distinctiveness as claimed in the suit, while adding that Ashi Sports is willing to change the content of its website.

Issuing summons in the suit, Justice Singh observed that the suit raises an interesting question as to whether the shape of a cricket helmet can be a trademark.

“In the case of a shape trade mark the threshold of distinctiveness that is required to be achieved is much higher than a mere device or word trade mark. In such a case, the shape has to be so distinctive that it should be capable of being associated with the entity, even without any name or mark being present on the product,” the court said.

Perusing the documents placed on record, the court observed that almost all famous Indian cricketing stars were wearing Kohli Sports' helmet and the preference for the product is, therefore, not doubted.

“The question as to whether the Plaintiff's helmet has attained such a level of distinctiveness to be protected as a shape trade mark would have to be considered and adjudicated by the Court,” the court added.

While referring the parties to mediation, the court directed the Defendant entity to take down its website within 48 hours and ensure that any new website which is put up does not have any content from Kohli Sports' website.

The matter will now be heard on February 09, 2024.

Counsel for Plaintiff: Ms. Swathi Sukumar, Mr. Essenesse Obhan, Ms. Yogita Rathore, Ms. Anjali Swami, Mr. Pratyush Rao, Mr. Rishubh Agarwal & Mr. Ritik Raghuwanshi, Advs.

Counsel for Defendant: Mr. Siddharth Bambha & Mr. Aman Thukral, Advs.

Title: KOHLI SPORTS PRIVATE LIMITED v. ASHI SPORTS

Citation: 2023 LiveLaw (Del) 1233

Click Here To Read Order