TaxTMI 
TaxTMI 
2019 (5) TMI 1919
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....laintiffs. The said mark has been promoted by various sporting celebrities including Sh. Milkha Singh, the legendary Indian Olympian. The 'THREE STRIPES' device mark is used by the Plaintiffs on shoes and various other sportswear, clothing, basketballs and other sporting equipments and the immediate recognition and association of the 'THREE STRIPES' mark is with the Plaintiffs. The 'THREE STRIPES' mark is also registered in several countries of the world as a device mark. It is also registered in India, in various forms, since 1989 in Class 25. The details of the said registrations is as under:- "TRADE MARK REGISTRATIONS - INDIA 11. In order to accord statutory protection to the THREE STRIPES device mark in India, the Plaintiff No. 1 also applied and has been granted trade mark registrations of the same as per the following details: 4. The Plaintiffs have placed on record documents showing various promotional activities and endorsements by well-known personalities such as leading athletes, sportsmen and sportswomen worldwide, including in India, who have been engaged for promotion of footwear bearing the 'THREE STRIPES' device mark in television....
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....ted by this Court, vide order dated 5th December, 2018, have filed their reports. The summary of each of the reports of the Local Commissioners reads as under:- A. Report dated 2nd February, 2019 filed by the Local Commissioner who visited the premises of Defendant No. 1 i.e., at Colo Footwear, WZ 265, 2nd Floor, Madipur, Delhi: From the premises of Defendant No. 1, the Local Commissioner seized a total of 384 pairs of shoes bearing the impugned 'THREE STRIPES' device mark, in various forms. The Local Commissioner also saw the books of accounts of the Defendant, however, was not able to trace any records from the sales of the said shoes. Further, the Local Commissioner observed that the manufacturing of the said goods took place from the second and third floor of the premises of Defendant No. 1 B. Report dated 7th January, 2019 filed by the Local Commissioner who visited the premises of Defendant No. 2 i.e., at M/s. Cotton Zone Footwear, Phool Singh Market, Atta, Sector - 27, Noida - 201301: At the premises of Defendant No. 2, the Local Commissioner found 15 shoes with the trademark 'Colo', used by Defendant No. 1, with the impugned 'THREE STRIPES' d....
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....ndant No. 1 were genuine. 10. Defendant No. 1, as per the Commissioner's report is clearly the manufacturer of the infringing shoes bearing the 'THREE STRIPES' device mark. The ownership of the 'THREE STRIPES' device mark has not been disputed by Defendant No. 1 or any of the other Defendants. In the written statement filed on behalf of Defendant No. 2, it has stated as under: 2. The present Written Statement is being filed on behalf of the Defendant No. 2 Ms. Cotton Zone Footwear, Phool Singh Market, Atta, Sector-27, Noida, U.P., through its Proprietor Mr. Satish Kumar. It is stated that Defendant No. 2, is dealing with readymade garments and shoes in the small outlet at Phool Singh Market, Atta, Sector-27, Noida, U.P., in the name of M/s. Cotton Zone Footwear. The defendant no. 2 is an honest shopkeeper in this area and usually gets shoes from Defendant no. 1, by believing on the defendant no. 1 that they are only supplying the legal and valid shoes to defendant no. 2. 3. It is further submitted that the Plaintiffs have not come before this Hon'ble Court with clean hands and suppressed material facts herein, in fact the answering defendant itself is a....
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.... BVBA, sought to register a position mark, consisting of "two parallel lines positioned on the outside surface of the upper part of a shoe." M/s. Adidas AG filed an opposition to registration of the said mark and the said opposition was rejected by the Opposition Division. This was carried in appeal, which was also dismissed. The European Court of Justice, annulled the judgment of the EUIPO and upon re-examination, the EUIPO allowed the opposition of M/s. Adidas AG. The applicant of the mark approached the European Court of Justice. 15. The European Court of Justice, upon examination of the applicable law and earlier decisions, held as under: "185. It follows that the dual fact, noted by the Board of Appeal and alleging, first, that the earlier mark enjoys a high, long-held and enduring reputation and, second, that the goods covered by the marks at issue are identical, is such as strongly to increase the probability of unfair advantage occurring. 190. The importance of the efforts thus taken by the proprietor of the earlier mark with a reputation renders all the more plausible the likelihood of third parties being tempted, by the use of a mark similar to that mark, to ride on ....