Columbia Sportswear held guilty for suppression of facts
The Delhi High Court recently set aside the interim injunction granted in favour of Columbia Sportswear Company (Columbia Sportswear) and allowed Galaxy Footwear Pvt. Ltd. (Galaxy) to use COLUMBIA mark for footwear. The court in its ruling appears to have taken a narrow view of global reputation of COLUMBIA brand and spill over of reputation in India.
Columbia Sportswear, an American corporation engaged in marketing and distribution of outdoor apparel and footwear claims to sell its products worldwide including India. It allegedly conceived and adopted COLUMBIA as a trade mark and trade name in 1938. In April 2013 Columbia Sportswear came across shoes of inferior quality under the trade mark ‘Columbia’ manufactured by Galaxy. Columbia Sportswear immediately lodged criminal proceedings in 2013 against Galaxy however no action was taken by the police. Columbia Sportswear therefore lodged a suit for trade mark infringement and passing off seeking permanent injunction against Galaxy and a retailer (joining them in one suit) from using the trade mark COLUMBIA or any other deceptively similar trademark.
The Court granted ex-parte ad interim injunction restraining Galaxy from using COLUMBIA mark and appointed local commissioner to visit their premises to search and seize the infringing goods. Being aggrieved by the injunction order, Galaxy moved the Court to set aside the interim injunction.
The court after hearing the parties set aside the injunction granted to Columbia Sportswear noting the following
- Columbia Sportswear is liable for concealment of facts as it did not disclose in the statement of claim a) disclaimer imposed on COLUMBIA mark in three of the six registrations that it holds b) Galaxy application for ‘Columbia’ that was erroneously abandoned by the Trademarks Registry was ordered to be reinstated. The Court noted “that the conduct of a party who is seeking a discretionary relief from the Court weighs largely in the mind of the Court while dealing with such a prayer. Where a party is guilty of suppression of a material fact, he may not be entitled to such a relief”.
- Columbia Sportswear has not been able to prove sale of footwear under the trade mark/name COLUMBIA in India. It has “not been able to show any advertisement effected in India wherein his (Columbia Sportswear) product has been advertised or he is selling the same i.e. shoes under the trade name “COLUMBIA?. It appears that the plaintiff (Columbia Sportswear) has no market in India. He may be a well known name in foreign countries but his presence in India has not been depicted; it cannot be seen from any of the documents which had been filed by the plaintiff (Columbia Sportswear). His trans-border reputation, if any, has not travelled to India.” On the other hand, the defendant no. 2 (Galaxy) has active presence in Indian market since 2002 which is supported by advertisements and invoices.
- In response to Columbia Sportswear’s contention that its customers who are mountaineers and do trekking buy his shoes aboard and travel to India and on seeing similar / identical shoes of a cheaper brand, are prejudiced, the court remarked “This by itself would not be reason enough for them to discontinue to buy the shoes of the plaintiff (Columbia Sportswear) which are also more heavily priced than the shoes of defendant No. 2 (Galaxy) which are only priced at Rs. 500-600/- in comparison with the shoes of the plaintiff (Columbia Sportswear) which sell at Rs. 3,000/- a pair. Moreover, what is the percentage of that customer (mountaineers) also remains a mystery”.
- The court concluded Galaxy “cannot, at this stage, be restrained from using the trade name “COLUMBIA” as he (Galaxy) has been able to prima-facie show his active presence in the market from the year 2002 which has been reflected not only through his advertisements but also his sale invoices”.
The court setting aside interim injunction concluded that Columbia Sportswear has failed to establish prima-facie case. Further, irreparable loss and injury will be caused to Galaxy if it is not allowed to use COLUMBIA mark.
Appeal before Division Bench
Columbia Sportswear has appealed the order to the division bench (two judge bench). The Court has issued notice directing Galaxy to file its reply. The next hearing is fixed on 11th August 2017. It will be interesting to see whether court reconsiders international use and reputation of COLUMBIA mark.