In the breakneck athletic footwear sector, where companies constantly compete for market share and a huge consumer base, Skechers has consistently stood out in terms of unique style, comfort and brand identification. But behind the scenes, the brand encountered a legal battle—one that put the brand's reputation and identity at stake. The brand's investigation agency officer discovered that the Defendants (Wardrode & Ors.) had been selling counterfeit goods, including footwear and accessories bearing the brand's trademarks and artistic work in Nashik and Indore. To protect its rights and reputation, Skechers filed a law suit seeking a permanent injunction against the Defendants against the unauthorized use of their trademarks and for passing off. This conundrum was not merely about the brand name; it was to uphold the brand's identity and legacy.
Backdrop To The Battle
Skechers South Asia Pvt. Ltd. (Plaintiffs), founded in 1992, were the registered proprietors of several trademarks, including the iconic mark 'SKECHERS'. They are also the owners of the copyright that subsists in their artistic works. Since its inception, the mark 'SKECHERS' has been uniquely associated with the Plaintiffs' footwear products and other related services. In October 2024, the Plaintiffs' investigation team discovered counterfeit products displaying the company's trademarks and artistic designs being sold at unauthorized retail locations in Nashik and Indore. These counterfeit items, which were of substandard quality, closely mimicked Skechers' genuine products.
Submissions At A Glance
The Plaintiffs' primary contention before the Bombay High Court was that the Defendants' use of the trademarks and artistic works infringes upon their rights and is likely to create confusion among the consumer base. The Plaintiff produced online records of the Trademark Registry, a list of ownership of copyright in the Plaintiffs' Artistic Works and copies of specimen advertisement and promotional material to strengthen their side of the case for an ex-parte interim injunction. Additionally, they submitted photographic evidence and comprehensive descriptions of the counterfeit items, emphasising their striking resemblance to the Plaintiffs' original products. The Plaintiffs also stated that on examination, it was evident that the Defendants' goods did not originate from the Plaintiffs and that the Defendants were connected to each other in terms of operation. The Plaintiff also submitted that the Defendants had no legitimate trademarks applications in the registry in Class 25. The Plaintiff also stated that there was a risk of loss and harm to its reputation, as well as the distinctiveness of Plaintiffs' 'SKECHERS' mark being lost.
Order-Order!
Before any ex-parte interim injunction is granted, the following conditions must be fulfilled for the court passes an order:
i. There must be a prima facie case in favour of the Plaintiff
ii. Irreparable Harm is likely to be caused to the Plaintiff, which cannot be monetarily compensated
iii. The balance of convenience must be in favour of the Plaintiff
The court was convinced that the Plaintiffs had successfully established a strong prima facie case and had acquired immense goodwill and brand reputation over the years. The court noted that the Defendants had clearly violated the Plaintiffs' statutory rights and their actions were not only dishonest, but aimed to create confusion about the origin of the goods and mislead the consumers. Justice Chagla, also recognized the potential irreparable harm that could be caused to the Plaintiffs in case the Defendants were allowed to continue their trade and stated that the balance of convenience tilted towards the Plaintiffs. He was also satisfied that giving a notice to the other party would defeat the purpose of granting interim relief.
Thus, the court pending the hearing and final disposition of the suit, restrained the Defendants from using or causing to be used Plaintiffs' Artistic Works or any other artistic work identical or similar to the Plaintiffs' Artistic Works in relation to the Impugned Goods and Plaintiffs' Trade Marks or any mark which is identical or similar to the Plaintiffs' Trade Marks in relation to the Impugned Goods. However, the order did not restrain the Defendants from selling legitimate goods on which Plaintiffs' trademarks and artistic works have been affixed by Plaintiffs or any other person authorised by Plaintiffs, if any, and which have been sourced from legitimate sources. The court also provided for the appointment of Receivers for search and seizure with all powers, except for the sale, pursuant to Order 40, Rule 1 and Order 39 Rule 7 of the Civil Procedure Code of 1908. The order was also clear as to the procedure for implementing the order and included appointment of Additional Special Receivers in Nashik and Indore, who were directed to send reports through emails and liaise with local police to ensure effective execution.
Conclusion
While the matter is set to be listed on December 10, 2024, the order will continue to be in effect until December 11, 2024. Ultimately, the Bombay High Court's interim relief for Skechers highlights the significance of safeguarding intellectual property and brand identity. The court has acknowledged the considerable risk of irreparable harm to Skechers' brand and distinctiveness from the sale of counterfeit goods. The temporary injunction enables Skechers to protect its trademarks and artistic works while retaining customer trust and market position. This decision by the court establishes a concrete precedent for firms facing similar trademark infringements, emphasising the importance of taking prompt legal action. Moving ahead, brands must be cautious while defending their intellectual property rights in order to avoid more infractions and to maintain their brand.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
