ADIDAS AG VS KESHAV H. TULSIANI & ORS

CASE NAME	Adidas AG v. Keshav H Tulsiani and Ors
CITATION	Adidas AG v. Keshav H Tulsiani
COURT	Delhi High Court
PETITIONER	Adidas AG
RESPONDENTS	Keshav H Tulsiani
DECIDED ON	19 July, 2024

INTRODUCTION

The case involves important issues of trademark infringement and the rights associated with the film franchises. The Plaintiff, Adidas AG, is a worldwide household name in sportswear, initially founded in 1948 as a manufacturer and distributor of footwear and clothing. The Plaintiff, brought an action against the Defendants, Keshav H. Tulsiani and others, for allegedly infringing their trademark “ADIDAS,” by using the same trademark for textiles. This case not only examines the protections offered to trademarks allowed under the Trade Marks Act 1999, but also examines the joint ownership intricacies involved, and issues involving brand reputation within the intensely competitive industry.

This case involves Adidas AG, a globally recognized sportswear brand, challenging Keshav H. Tulsiani and associates for using the “ADIDAS” trademark in the textile industry. The dispute highlights the importance of protecting trademarks that have accumulated goodwill over decades. Key issues include trademark infringement, likelihood of consumer confusion, and joint ownership agreements. The case also examines the registrability of trademarks when prior rights exist and the remedies available to protect established brand identity. Its outcome underscores the role of courts in safeguarding intellectual property and maintaining fairness in competitive markets.

FACTS

1. Parties Involved-

Plaintiff- Adidas AG, the plaintiff, is a sportswear manufacturer and retailer with a history going back to 1948 and has developed a respected globally recognized reputation associated with its items including, footwear, clothing, and accessories.

Defendants- Keshav H. Tulsiani and associates are in the textile business and have applied for trademark “ADIDAS” for their items, thus leading to a quality issue of infringement.

2. Trademark Registration- Adidas AG claims to have registered trademark “ADIDAS” in many classes, including textiles, under the Trade Marks Act, 1999 and has used its trademark since its registration. The goods covered by the registered trademark have been notated and promoted around the world.
3. Trademark Application- The defendants registered the trademark “ADIDAS” in 1987 in respect to products also found to be related to textiles in 2006. The defendants have asserted rights in the mark based upon the assertion of prior use in India.
4. History of Legal Disputes- The plaintiff had previously brought a suit against the defendants regarding their trademark application and in 2018 was able to persuade the Intellectual Property Appellate Board (IPAB) to cancel the trademark application. The defendants however, still claim rights in the mark.
5. Public Visibility and Brand Image- Adidas AG claims that the defendant’s use of “ADIDAS” is likely to cause consumer confusion and hurt the brand image. The plaintiff adds that the actions of the defendants put more than 40 years of goodwill at risk and that the actions jeopardize future business dealings.
6. Court Action- The plaintiff commenced action to prevent the defendants from using the “ADIDAS” mark and demanded damages. The defendants’ absence during court appointed dates and the acts outlined in the action to the plaintiff raised concern on whether the defendants are prepared to follow the legal process.

ISSUES

1. Trademark Infringement- The defendants’ use of “ADIDAS” likely infringes the plaintiff’s registered trademark?
2. Likelihood of Confusion- The defendants’ use of the “ADIDAS” mark likely would cause confusion amongst consumers on the supplier of the product?
3. Joint Ownership of Mark- The findings of a similar joint ownership of the mark have a decreased trade mark registering rights or establish joint ownership rights?
4. Registrability of Trademark- The defendants’ trademark registration may be invalid based on the plaintiff’s prior use and registrations?
5. Possible Remedies with the Trademark right- The plaintiff can possibly request remedies to protect its rights with the “ADIDAS” trademark and the extent to which the court should use its discretion as a further relief?

CONTENTIONS

PLAINTIFF’S CONTENTIONS

1. Proprietary Rights in the “ADIDAS” Trademark- The plaintiff claims to hold rights over the “ADIDAS” mark, referring to its long usage and heavy investments in promoting the brand. The plaintiff argues that the mark has come to represent quality sports products and is well-known as a trademark.
2. Consumer Confusion- The plaintiff claims that the defendants’ use of the same trademark “ADIDAS” for clothing is likely to confuse consumers. The plaintiff states that consumers could think the defendants’ clothing is made or endorsed by Adidas AG, and this is based on the public perception of the strength of the trademark.
3. Joint Ownership History- The plaintiff mentions the history of joint ventures with the defendants, and they indicate that the agreements surrounding the party’s relationship allocate clear rights in connection with the use of the “ADIDAS” mark. The plaintiff asserts that the defendants cannot use the trademark without the plaintiff’s consent.
4. Trademark Registrations- The plaintiff is using its various “ADIDAS” marks as registrations and the plaintiff argues it has a legal right to fight against unauthorized usage based on its registrations of the “ADIDAS” mark. The plaintiff argues defendants’ registration should be vacated since the plaintiff used the mark prior to defendants.
5. Risk of Dilution and Irreparable Harm- The plaintiff claims that the defendants’ continued use of the “ADIDAS” mark poses a threat of dilution of the brand and causes irreparable harm to the brand reputation. They maintain that the plaintiff can only be compensated with monetary damages for the harm caused.

DEFENDANT’S CONTENTIONS

1. Prior Use and Registration- The defendants maintain that they were the earlier adopters of the “ADIDAS” mark in India, and they have a valid registration for their trademark. They contend their use of the mark preceded the plaintiff’s use and registration, and as such, it should take priority.
2. No Likelihood of Confusion- The Defendants maintain that there is no chance of plausible confusion between the manner in which they use “ADIDAS” and the name of the Plaintiff. The Defendants assert that consumers would not associate the products with the Plaintiff because the Defendants’ opinion is that the manner of brand and marketing of the product would isolate and separate the Defendants from the Plaintiff in the consumers’ mind. 
3. Bona Fide Adoption- The Defendants assert in good faith that the adoption of “ADIDAS” was devoid of any of the characteristics discernable to the Plaintiff’s mark or otherwise. The Defendants assert the Mark has personal significance which was not selected to exploit the Plaintiff.
4. Generic Nature of “ADIDAS”- The Defendants assert that “ADIDAS” is generic, and not entitled to any protection. They argue many businesses in the. Textile industry have terms that are generically similar to their and therefore cannot claim it is exclusive.
5. Jurisdictional Challenges- The Defendants assert challenges related to jurisdiction of the Delhi High Court related to an agreement between the parties as to where hearings, if any, should have been heard. Jurisdiction was based on the agreement. Accordingly, the Defendants maintain that the court could not accept the Plaintiff’s claims.

JUDGMENT

1. Trademark Rights Confirmed- The High Court recognized and sustained the trademark rights of the plaintiff in “ADIDAS.” The Court said that the trademark has built significant goodwill and distinctiveness over the years and therefore is entitled to protection under trademark law.
2. Deceptively Similar Finding- The Court found that the Defendants’ usage of the identical mark “ADIDAS” for textiles was infringing. Trade mark infringement is found when marks are similar, and those markets are related then presumptive confusion exists.
3. Joint Ownership Agreements- The court examined the joint ownership agreements between the parties and found that both parties must consent to any further adaptations or productions that have the “ADIDAS” name. The unilateral action of the defendant was found to violate the joint ownership agreements.
4. Validity of Trademark Application- The Court found that the Trademark of “ADIDAS” for the Defendants is invalid based on the Plaintiff’s prior use and registrations. The Plaintiff’s rights were confirmed based on their use history and evidence. 
5. Injunction Granted- In the plaintiff’s favor, the Court issued an interim injunction that prohibited the defendants from exhibiting any conduct with the use of the mark, “ADIDAS”, or any other similar marks that would infringe on the plaintiff’s trade-mark rights.
6. Examination of Acquiescence- There was no evidence of acquiescence on the plaintiff’s behalf for the defendants’ use of the mark. Furthermore, the plaintiff acted appropriately in pursuing to protect its trademark.
7. Damages Awarded- While the plaintiff claimed a high level of damages, the court only issued a nominal damage award due to a lack of evidence actually establishing damage. The court highlighted that there is no legitimate basis to hold others liable for injury or damage without some clear and substantial evidence.

CONCLUSION

The High Court’s ruling emphasizes the importance of trademark protection in circumstances of limitation, and provides a thorough exposition for resolving trademark use cases in the film and fashion industry. The ruling expresses the value of collaboration and goodwill in joint ownership of trademarks, and brings clarity to the legal significance of the use of an established trademark. 

This case will also serve as a valuable point of reference for future cases in social trademark agreements, particularly in the fashion and film sector, the identity of a brand, and the consumer perception of that brand, are key factors to consider. In addition, the case highlights the neo-necessary nature of acting as a legal intervention regulation for patent protection frameworks, and also highlights the legal necessity on behalf of Adidas to protect a precept or goodwill associated with one of their most prominent brands in the competitors market.

The ruling serves as an example of the intricate relationship of trademark law, brand management, and consumer rights in the context of a changing industry, and there will always be a need to stay vigilant in protecting one’s intellectual property. The ruling will likely help shape future cases, especially in the context of the responsibilities of trademark holders and the responsibilities of joint ownership as well as the development of appropriate agreements.

‘This article has been written by Tamanna Jain from University Five Year Law College, University of Rajasthan.’