In the trademark dispute between adidas AG and Keshav H Tulsiani over the mark ‘ADIDAS’, the Delhi High Court ruled in favour of adidas, finding the defendant’s use of the mark to be trademark infringement. The court granted a permanent injunction, reinforcing the protection of the well-known mark adidas against its unauthorized use on textiles.

Background

On July 19, 2024, the Delhi High Court ruled in favor of adidas AG in a trademark infringement case against Keshav Tulsiani. The Court granted a permanent injunction, restraining the defendants from using the “ADIDAS” mark for their textile business. The case involved the defendants adopting the “ADIDAS” trademark and trade name, which Adidas argued was in bad faith. Despite the defendants’ unique claim that the mark was adopted and used out of affection for the defendant’s sister, the court found this unconvincing. The ruling emphasized the likelihood of consumer confusion and brand dilution, reinforcing legal protection for well-known trademarks against unauthorized use and infringement.

Legal Proceedings

The legal landscape unfolded as adidas AG initiated legal proceedings, filing a suit for trademark infringement, and passing off seeking a permanent injunction restraining Mr Keshav Tulsiani from using the brand name adidas on textile goods and as part of its companies and firms that is, Adidas Weaving Mills, Adidas Textile Industries and Adidas Merchandise Private Limited.

adidas AG, at the early stage of the matter (in September 2011) was granted a preliminary injunction restraining the Defendants from trading or dealing with any goods falling in classes 16, 29, 32, 33 and 34 of the Trade Marks Act, 1999 and for sale of textile piece goods included in class 24 under the Plaintiff’s adidas marks or any other deceptively similar mark amounting to infringement or passing off. The injunction order was maintained as the Defendant’s mark ‘ADIDAS’ in class 24 was cancelled vide order dated 24th August 2018 passed by the Intellectual Property Appellate Board (IPAB).

Plaintiff’s Argument

1. The Plaintiff’s grievance arises from the Defendants’ adoption of the word “ADIDAS” as both a trademark and a part of their trade name.
2. Plaintiff argued that Tulsiani’s actions were likely to cause consumer confusion, leading to a loss of sales and damage to adidas global reputation.
3. The Defendants, acting in bad faith, used the term “ADIDAS” for their textile business and sought its registration in Class 24. Although initially granted, the registration was later stayed and ultimately ordered for removal by the Intellectual Property Appellate Board in 2018 due to the Plaintiff’s opposition.
4. The Defendants filed additional applications for variants of the “ADIDAS” mark, which the Plaintiff opposed, with all oppositions currently pending before the Registrar of Trademarks.
5. The plaintiff’s mark is a well-known mark and the use of an identical mark will dilute its distinctiveness.
6. the adoption and use of ‘ADIDAS’ constituted a deliberate attempt to leverage the plaintiffs’ brand equity and reputation, thus constituting a clear infringement upon their intellectual property rights.

Defendant’s Argument

1. The defendant provided one of the most unique arguments to shed itself from the allegation of infringement. The defendant claimed that its adoption 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 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.
2. that ‘defendant’ neither resides nor conducts business within the court’s jurisdiction nor has been a part of any action arisen here, on the basis of which the lawsuit lacks territorial jurisdiction.
3. 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.

Court’s Ruling

Ruling in favour of adidas AG, the court held that the defendants have been using an identical mark and when combined with the similarity between the goods— textiles and garments— it “creates a real likelihood of confusion.” Adding that a word like ‘Adidas’, which has no inherent linguistic meaning and is a coined term which is a unique word, “they are thus deemed to have a high degree of distinctiveness and are given a wide ambit of protection under trademark law”. Finally, the court directed the defendant to pay damages 14.22 lakh (approx. US $16969) in favour of Adidas which includes nominal damages worth Rs 3 lakh (approx. US $3580) and costs borne by Adidas in continuing the trademark infringement litigation over the past 13 years, amounting to Rs 11.22 lakh (approx. US $13389).

Our Comment

The case sets a precedent for trademark protection in India, emphasizing the importance of safeguarding well-known brands. The damages awarded, and permanent injunction will serve as a deterrent to potential infringers which further serves the purpose of not diluting the reputation of the well-known mark globally.

RNA represented adidas AG in this lawsuit.