Delhi High Court Grants Ex-Parte Injunction to Birkenstock Against Trademark Infringement
The Delhi High Court granted an interim injunction in favour of Birkenstock from infringement of its trademark, copyright and design.
Birkenstock filed a suit seeking grant of permanent injunction restraining the defendants from infringement of trademark, under the Trademark Act, 1999 (the Act) its copyright under the Copyright Act, 1957 and its design under the Designs Act, 2000.
The Bench of Justice Saurabh Banerjee observed, “In view of the aforesaid, the balance of convenience and probabilities tilt in favour of the plaintiff for grant of an ex parte ad interim injunction in its favour and against the defendant nos.2 to 4. So much so, as per the existing circumstances, the plaintiff has been able to make out a prima facie case in its favour and against the defendant nos.2 to 4 as well. Therefore, allowing the defendant nos.2 to 4 and/ or those associated with them to continue passing off their products as that of the plaintiff and infringing upon the goodwill of the plaintiff by using the impugned marks which is/ are deceptively/ identically similar to that of the plaintiff is prone to cause irreparable harm, loss and injury to the plaintiff.”
Senior Advocate Chander M. Lall represented the Plaintiff.
Case Brief
It was the case of the Plaintiff that it is a part of the Birkenstock Group of companies that produces and markets footwear under the trade mark ‘BIRKENSTOCK’ since 1774. Further, the Plaintiff also has several design registrations of the BIRKENSTOCK footwears in India.
It was submitted by the Birkenstock that there are various production units operating out of the rural areas in/ or around Agra, Uttar Pradesh, who are producing the counterfeit/ misbranded products of the Birkenstock in bulk, who are further exporting the said goods and/ or are distributing/ supplying the same in various states, including the markets of New Delhi.
The appointment of Local Commissioner was also sought by Birkenstock to visit the premises of the defendants along with other premises that are discovered during the pendency of the suit which sell similar products.
Court’s Analysis
The Court opined that the products of the defendants seem like a cheap knock off of the Birkenstock products.
“Therefore, there is all likelihood of the public getting deceived and confused into thinking that the products of the defendant nos.2 to 4 are in some way associated/ connected with and/ or coming from the house of the plaintiff or that there is some kind of understanding inter se the plaintiff and the defendant nos.2 to 4”, the Court added.
In the light of the above, the Court granted interim injunction in favour of Birkenstock restraining anyone/ any entity from manufacturing, packaging, storing selling, offering for sale, importing, exporting, retailing, distributing, marketing and/ or using or dealing in the said products and any products bearing the its trademarks ‘BIRKENSTOCK’.
The Court also appointed Local Commissioners to visit the premises of the defendants along with other premises that are discovered during the pendency of the suit which sell similar impugned products.
Accordingly, the application was allowed.
Cause Title: BIRKENSTOCK IP GMBH v. ASHOK KUMAR(S)/JOHN DOE(S) & ORS
Appearance
Petitioner: Chander M. Lall, SR. Adv. With Mr. Raghav Malik, MS. Aastha Kakkar, Mr. Lalit Alley, Mr. Prashant, MS. Nida Khanam, MS. Ananya chug and ms. Annanya Mohan, Advs.