SKECHERS SOUTH ASIA PVT. LTD. & ORS v. WARDROBE & ORS 

Case Name	Skechers South Asia Pvt. Ltd. & Ors v. Wardrode & Ors
Citation	Appl. No. 33060 of 2024.  2024 SCC OnLine Bom 3483
Court	Bombay High Court
Bench	Justice R.I. Chagla
Decided On.	24th October 2024.
Plaintiff	Skechers South Asia Pvt. Ltd
Defendants	Wardrode & Ors

INTRODUCTION 

The case is before the Bombay High Court and concerns a trademark and copyright infringement dispute between Skechers South Asia Pvt. Ltd. and others. (Plaintiffs) and Wardrode and Ors. (Defendants). The Plaintiffs claimed that the Defendants were violating both statutory and common law rights by producing and marketing fake goods that bore copies of their registered trademarks (“Skechers” and its logos) and creative works. 

In order to stop additional violations, the plaintiffs requested immediate ex parte interim relief, which included designating a court receiver to confiscate and safeguard all counterfeit goods and associated materials from the defendants’ property.

IMPORTANT PROVISIONS 

• Trade Marks Act, 1999, Section 29: Infringement of registered trademarks prohibits the use of identical or deceptively similar marks without authorization of the registered proprietor, forming the basis for the Plaintiffs’ statutory protection claim. 
• Copyright Act, 1957 Section 51: Infringement of copyright prohibits unauthorized copying or substantial reproduction of artistic works, underpinning the claim regarding Plaintiffs’ artistic works. 

BRIEF FACTS – 

Under the well-known “Skechers” brand and trademarks, the plaintiffs, Skechers South Asia Pvt. Ltd. and others, design, develop, and market lifestyle footwear, clothing, and accessories. The “Skechers” trademarks and related logos are registered to Plaintiff No. 3, a wholly owned subsidiary of Plaintiff No. 2, which has granted Plaintiff No. 1 a license to use them on a variety of Indian goods.

The plaintiffs have consistently defended their common law and statutory rights in these trademarks and the creative works connected to their brand. An investigative officer hired by the Plaintiffs in the second week of October 2024 found that the Defendants, Wardrode and others, were selling counterfeit imitations of the Plaintiffs’ trademarks and artistic creations at their locations in Nashik and Indore.

After examining the contested goods, the plaintiffs concluded that their quality, materials, stitching, and cost made it abundantly evident that they were not the original manufacturer. It was determined that the Defendants’ products were blatant imitations and slavish copies of the Plaintiffs’ copyrights and registered trademarks.

Investigations also showed that the defendants used a common source for these fake goods and operated covertly. The Defendants had not submitted any trademark applications for the contested marks, according to a search on the Trade Marks Registry.

The Plaintiffs filed an ex parte application seeking urgent interim relief due to the Defendants’ dishonest adoption of their intellectual property and the possibility that, if notified, the Defendants would hide or dispose of the counterfeit goods. 

A court receiver and other special receivers were appointed to search the defendants’ property, seize counterfeit goods and related materials, inventory such goods, and safeguard the plaintiffs’ rights while the lawsuit was being resolved. Injunctive orders against infringement were also part of the relief sought.

ISSUES INVOLVED – 

1. Whether the plaintiffs are entitled to an ex parte ad-interim without notice to the defendants, in the nature of an injunction against trademark and copyright, and appointment of court receivers to seize and secure infringing goods?  

ARGUMENTS ADVANCED BY PLAINTIFFS – 

• According to the counsels representing the plaintiffs, the registered owners of the popular “Skechers” trademarks and their variations, such as the renowned “S” logos. These trademarks are owned by Plaintiff No. 3, who has granted Plaintiff No. 1 a license to use them on a variety of products in India, such as clothing, accessories, footwear, and bags. Additionally, the plaintiffs are the owners of the copyright to unique artistic creations connected to their brand.
• Since about 1992, the Plaintiffs have used, marketed, and advertised their products extensively and continuously, gaining a significant amount of goodwill and reputation in the trademarks and artistic works. Advertising materials, social media promotions, and sales invoices all show that they have made significant investments in brand promotion and sales initiatives in India.
• At their locations in Nashik and Indore, the Defendants have been discovered to be selling products that are fake replicas of the Plaintiffs’ trademarks and creative works. Unauthorized imitations of the Plaintiffs’ trademarks and creative works are evident in the contested goods. The Plaintiffs are not the source of the Defendants’ goods, and they lack any valid license or authorization.
• The Defendants’ dishonest adoption of the Plaintiffs’ trademarks and artistic creations is intended to mislead consumers and unfairly profit from the Plaintiffs’ well-established goodwill. The fake products are of lower quality and are purposefully made to make customers unsure of where they came from.
• The Plaintiffs anticipate that the Defendants would likely remove, dispose of, sell off, or conceal the infringing goods in some other way if they were informed in advance of these proceedings. The very goal of the application for temporary relief would be defeated by such a move, and the plaintiffs would suffer irreversible harm.
• In light of the aforementioned, the plaintiffs argued that, in order to stop additional infringement and safeguard their intellectual property rights until the lawsuit is heard and decided, an ex parte injunction is required. They requested a court receiver to confiscate and protect counterfeit goods from the defendants’ property, as well as an order prohibiting the defendants from using the plaintiffs’ trademarks and creative works.

ARGUMENTS ADVANCED BY DEFENDANTS – 

• The counsels for the defendants argued that their goods do not infringe the plaintiffs’ registered trademarks or copyrights because the marks or artistic words used are not identical or deceptively similar. 
• An ex parte order was passed against the defendants. 

COURT’s ANALYSIS – 

• The Hon’ble High Court of Bombay pointed out that Submissions, records, and proof provided by the plaintiffs, such as sales data, advertising materials, trademark registrations, and the conclusions of the investigation reports included in the Plaint. 
• It stated that the Plaintiffs have a long history of goodwill and reputation in India and are registered proprietors of the “Skechers” trademarks and related reputable logos. Additionally, the plaintiffs claimed copyright ownership of unique artistic creations used in connection with the products.
• Based on preliminary consideration, the Court determined that the Defendants’ artistic creations and products bearing identical or confusingly similar marks were blatant copies or slavish counterfeits of the Plaintiffs’ registered intellectual property. The evidence demonstrated that the contested goods were of lower quality, obtained illegally, and had markings that could lead to consumer confusion or deceit.
• The Court took note of the Plaintiffs’ argument that the Defendants had intentionally and dishonestly attempted to profit from the Plaintiffs’ well-established reputation and goodwill by “bodily lifting” their trademarks and creative works, the contested goods’ purportedly covert and interconnected origin suggested systematic infringement as opposed to isolated or unintentional use, this backed up the Court’s finding of fraudulent adoption and counterfeiting.
• The Plaintiffs would sustain significant, irreversible harm to their business, goodwill, and market reputation if the Defendants were permitted to continue producing, marketing, or selling such counterfeit goods, the Court recognized, harm that could not be sufficiently addressed by monetary compensation. 
• However, the plaintiffs had demonstrated that, in light of the circumstances, it was more convenient to grant temporary relief in order to stop the infringement until the final ruling.
• Because providing prior notice would probably cause the defendants to hide or dispose of the counterfeit stock, defeating the purpose of interim injunctions, the court decided that ex parte relief must be granted without informing the defendants. 
• The covert activities that the Plaintiffs’ investigations uncovered provided solid evidence for their concern about this kind of risk. Thus, the Court’s issuance of ad-interim ex parte injunctions under Order XXXIX CPC was justified.
• The Court issued a permanent injunction prohibiting the Defendants and their associates from using the Plaintiffs’ trademarks or creative works on goods that are contested or comparable. Crucially, the injunction prohibited the production, marketing, offering for sale, advertising, and distribution of infringing goods in addition to their simple use.
• The Court designated a Court Receiver and Additional Special Receivers with broad authority to enter, search, seize, and inventory infringing goods, promotional materials, packaging, and accounts from all of the Defendants’ locations, including warehouses and related areas, in order to successfully enforce this order. They had the authority to carry out the directive even on court holidays and were permitted to break open locks if needed.
• The Court made it clear that the order would not stop the sale of authentic goods that the Plaintiffs had legally sourced or approved. The Court Receiver and Additional Special Receivers were directed to work with Plaintiffs’ representatives to accurately identify counterfeit materials, guaranteeing that only infringing items were seized and sealed. 
• This ensured that the injunction strictly targeted counterfeit or unauthorized goods, maintaining a fair balance. It was required that execution reports be sent to the court on time.
• In order to uphold due process, the Court required the Plaintiffs to adhere to Order XXXIX Rule 3 CPC concerning service and notice following the execution of the ex parte relief. Additionally, it gave the defendants the freedom to change, alter, or recall the order with the proper notice, guaranteeing that they would still have the chance to contest the injunction.

CONCLUSION – 

After evaluating the arguments and supporting documentation, the Bombay High Court determined that the plaintiffs had a strong prima facie case for copyright and trademark infringement. The Court found that the Defendants’ products were blatant imitations of the Plaintiffs’ intellectual property, acknowledging the Plaintiffs’ established ownership and goodwill in the “Skechers” trademarks and artistic creations. 

The Court determined that ex parte interim injunctive relief and the appointment of court receivers to seize infringing goods were required to stop further damage and evidence destruction after weighing the convenience and risk of irreparable harm. 

This article has been written by Mayur Shrestha (Presidency University Bengaluru School of Law).