Claiming affection towards their sibling as the justification for adopting a deceptively similar ‘Adidas’ mark, the defendant in Adidas v. Keshav Tulsiani pleaded honest adoption of the impugned mark as a defense against trademark infringement allegations. Highlighting this interesting argument, SpicyIP intern Rishabh Deshpande discusses the Delhi High Court judgement passed in this case. Rishabh Deshpande is a 3rd year B.A.LLB. student from WBNUJS, Kolkata.
Adidas v. Keshav H. Tulsiani & Ors: A Case of Skewed Contentions
By Rishabh Deshpande
Recently on July 19, 2024, in a trademark infringement case filed before the Delhi High Court (Adidas AG v. Keshav Tulsiani), the defendant provided one of the most unique arguments to shed itself from the allegation of infringement. The defendant claimed that the use of the trademark “ADIDAS” was done out of love and affection for his sister!
Here, the defendant’s rationale for using the trademark of “ADIDAS” is anything, but based on legal arguments and would remind our long term readers about the “Vishnu Brahma Mahesh” case (discussed here by Tejaswini) where the defendant adopted a similar, unconventional defence, that one rarely see in trademark infringement cases.
The Defendant’s Arguments
There are multiple contentions that the defendant has presented, out of which, one of the more pertinent one, which has received much attention, is as follows: –
- The defendant contended that registering the trademark “ADIDAS” was done in a bona fide and honest manner. As said above, he claims that it is based on his love and affection for his sister. In Sindhi, an elder sister is referred to as “ADI” and when you are fond of someone or admire someone, the devotee is referred to as “DAS” . Thus, clubbing these two together, the defendant adopted the mark “ADIDAS”, showcasing his familial devotion. Moreover, there was a difference in the terms of usage, since the defendant uses the term “ADIDAS”, whereas the plaintiff employed “Adidas”, before they shifted to the capitalized version of the mark. This argument “appears” to be quite novel and does have the basis to convince the Court that the rationale behind the specific mark is honest. However, even though it is etymologically true, as would be subsequently covered, the defendant was unable to justify the actual claim that he sought, since there was evident proof to the contrary, to showcase that the plaintiff in actuality had a better claim to the mark, than the defendant. Most importantly, apart from presenting this argument, the defendant was not able to establish with substantive evidence how his “love and affection” for his elder sister motivated him to register the given mark for his business, thus nudging one to believe that this argument could perhaps be an afterthought instead of the actual reason.
Apart from this, other contentions were also submitted which were ordinary and the Court handled them appropriately, some of them being:-
- The defendant also claimed that the given lawsuit lacks territorial jurisdiction since the defendant’s business did not reside within the Court’s territorial jurisdiction, nor did the cause of action arise here.
- The defendant also argued that he had registered his trademark in 1987 itself and that his claim over the trial predated that of the demonstrated usage by the plaintiff.
- Lastly, the defendant contended that despite the plaintiff being aware of the defendant’s usage of the name since 1987, they only filed a suit for infringement in 2011. This prolonged inaction, spanning over two decades, granted the defendant tacit consent. Moreover, the plaintiff’s claim is barred by principles of delay, estoppel, acquiescence, and waiver.
The Court’s Rationale & Opinion
The Court was satisfied with the plaintiff’s evidence on territorial jurisdiction and was convinced that businesses of both the parties were predominantly present in Delhi. The Court held that the plaintiff could show that even before its official presence in the Indian market in 1989, its products were available in India before 1989 through its subsidiary. Additionally, barring that domestic presence, the plaintiff could establish that their products were widely known by Indian consumers travelling abroad. Moreover, the claim that there was a delay in filing the suit for trademark infringement has no rationale. The plaintiff filed a suit for protecting rights in 2002, where the matter was remanded to the assistant registrar. However, there was no record to keep a check on the process and only in 2010, did the plaintiff get notified that the defendant’s trademark had been registered. The defendants mark had been registered under Class 24, concerning “textile goods” which too was cancelled in 2018! The plaintiff on the other hand, was able to prove they were the prior adopter and had registered their trademark in India, under Classes 18 (bags), 25 (sports clothing), 29 (balls for games) and 03 (goods in general) since 1971, 1975 1979 and 1985 respectively. Lastly, as had been aforementioned, the defendant did not give any evidence or proof to further his claim, that this was based on an honest belief, where the mark was adopted in honour of his elder sister. Thus, for the aforementioned reasons, the Court granted an interim injunction in favour of the plaintiff.
Barring the Court’s analysis, what is also pertinent, is that the use of a trademark is admissible, if done under good faith, as long as it does not affect the rights of the plaintiff and was done without notice of their rights. However, as has been witnessed in the given case, the defendant was well aware of the plaintiff’s product and thus, even this defence was something that was not available to them. But that would have only arisen if the defendant had even considered this in the form of an argument as part of his contentions!
The Way Forward
It is the requirement of the day and age, that submissions before the Court must be founded in not just matters that can stalwartly rely on the shoulders of the evidence present, but the argument at the forefront of the entire process, must in themselves have some fundamental and indispensable logic driving them. The rest is for the courts to determine.