Trademark Triumph: Delhi High Court Shields Birkenstock's Brand Identity

Trademark Triumph: Delhi High Court Shields Birkenstock's Brand Identity

Introduction

The Delhi High Court has granted an interim injunction in favour of Birkenstock, restraining the defendants from infringing its trademark, copyright, and design. The case involves allegations of trademark, copyright, and design infringement by the defendants, who were allegedly producing and selling counterfeit products bearing Birkenstock's marks.

Factual Background

Birkenstock alleged that the defendants were producing and selling counterfeit products bearing its trademark, copyright, and design. The plaintiff claimed that it has been producing and marketing footwear under the trademark ‘BIRKENSTOCK’ since 1774 and has several design registrations of the BIRKENSTOCK footwears in India. Birkenstock submitted 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 Birkenstock in bulk.

Procedural Background

Birkenstock filed a suit seeking permanent injunction against the defendants for infringement of its trademark under the Trademark Act, 1999, copyright under the Copyright Act, 1957, and design under the Designs Act, 2000. The plaintiff also sought the appointment of a Local Commissioner to visit the premises of the defendants and other premises that sell similar impugned products.

Issues

1. Whether the defendants had infringed Birkenstock's trademark by using a deceptively similar mark.

2. Whether the defendants had infringed Birkenstock's copyright by reproducing its copyrighted material.

3. Whether the defendants had infringed Birkenstock's design by producing products that were substantially similar to its registered design.

Contentions of Parties

Plaintiff's Contentions: Birkenstock contended that the defendants were infringing its trademark, copyright, and design by producing and selling counterfeit products. The plaintiff argued that it had a prima facie case in its favour and that the balance of convenience tilted in its favour.

Defendants' Contentions: There is no information available on the defendants' contentions as they did not appear to contest the suit.

Reasoning & Analysis

The bench of Justice Saurabh Banerjee observed that “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.”

Final Outcome

The court granted an interim injunction in favour of Birkenstock, restraining the defendants from manufacturing, packaging, storing, selling, or dealing in products bearing its trademark, copyright, and design. The court also appointed Local Commissioners to visit the premises of the defendants and other premises that sell similar impugned products.

Implications

The decision will have implications for cases involving trademark, copyright, and design infringement. The court's decision will provide guidance on the grant of interim injunctions and the protection of intellectual property rights.

In this case the plaintiff was represented by Mr. 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, Advocates.