Delhi High Court Appoints Former Supreme Court Judge Justice Nageswara Rao to Mediate Trademark Dispute

Delhi High Court Appoints Former Supreme Court Judge Justice Nageswara Rao to Mediate Trademark Dispute

The Delhi High Court has appointed Justice Nageswara Rao, a former judge of the Supreme Court of India, to mediate a suit filed by a cricket helmet manufacturer alleging that a Meerut-based entity infringed its shape mark by selling identical products.

Judge Prathiba M Singh, presiding over a single-judge bench, granted the order after Ashi Sports expressed its willingness to engage in mediation and modify the design or shape of its cricket helmets to ensure they are distinct from those of Kohli Sports Private Limited.

The Court directed the parties to engage in mediation, allowing the defendant to propose potential design modifications to its helmet that would address the plaintiff's grievances.

“Considering the nature of the matter, the matter is referred to mediation before Justice Nageswara Rao (Retd), Judge, Supreme Court. The Ld. Mediator shall be paid a fee of ₹3,00,000. The same shall be shared equally by both parties,” Justice Singh ruled.

In its lawsuit, Kohli Sports asserted that it introduced its distinctively shaped cricket helmets under the trademark "SHREY" in 2014. The suit sought a permanent injunction against passing off, copyright infringement, unfair trade practices, and damages.

The helmets were argued to possess several distinctive features, including the shape of the grill and ear guards, as well as the specific manner in which the grill shields the cricketer's face.

Kohli Sports highlighted their substantial market presence, noting that 80 per cent of IPL teams and approximately 70 per cent of players in the recent ICC World Cup used their helmets.

The lawsuit alleged that the defendant entity had replicated the entirety of Kohli Sports' cricket helmet design. Additionally, it claimed that the defendant had copied the content of the plaintiff's website, including the uncanny reproduction of even spelling errors.

The defendant countered that Kohli Sports' helmets had not achieved the claimed level of distinctiveness while expressing willingness to modify the content of Ashi Sports' website.

The Court noted that the lawsuit raises a fascinating legal question: whether the shape of a cricket helmet can qualify as a trademark.

“In the case of a shape trade mark the threshold of distinctiveness that is required to be achieved is much higher than a mere device or word trade mark. In such a case, the shape has to be so distinctive that it should be capable of being associated with the entity, even without any name or mark being present on the product,” Justice Singh said.

Reviewing the submitted documents, the Court noted that a significant majority of renowned Indian cricketers wore Kohli Sports helmets, indicating a clear preference for their product.

The court stressed the need to determine whether the plaintiff's helmet has acquired a sufficient level of distinctiveness to be protected as a shape trademark, a question that requires further consideration and adjudication.

While referring the parties to mediation, the Court imposed a 48-hour deadline for the defendant to remove its website. Additionally, the Court mandated that any new website launched by the defendant must not contain any content from Kohli Sports' website.

The Court has scheduled the next hearing in this matter for February 9, 2024.