The Delhi High Court recently imposed a cost of Rs. 87 lakh on Pure Play in the case of Skechers USA Inc & Ors v. Pure Play[1] sports for infringing Skechers’ Intellectual Property Rights by manufacturing and distributing rip-offs of Skechers’ Go-walk 3 series range of shoes. The order[2] for the cost was decided by the Joint Registrar (Judicial) Raj Kumar Tripathi as per Chapter 23 of the Delhi High Court (Original Side) Rules, 2018. Skechers had filed a passing off suit against Pure Play for which it was granted interim inunction in May 2016. After the order in 2015, summary judgment was again passed by the Delhi High Court without any application for such a judgment.

Background of the Case

Skechers had filed a case of passing off against Pure Play claiming that Pure Play was copying the unique and distinct elements and features comprising the footwear that was sold under the brand GoWalk 3 series. Skechers claimed that Pure Play intended to mislead, confuse and cause deception to the public and members of the trade with regard to the source of origin of their footwear and wanted to have a false association with Skechers’ that would result in passing off their products as Skechers’ products. Sketchers not only claimed exclusive ownership of their trademark but also showed that GoWalk 3 series had distinct features and elements which constitute a trade dress. Skechers not only provided evidence in the form of photographs but also produced footwear of both the companies to show the similarity. One of the cases relied upon by the plaintiffs was John Haig and Company Limited v. Forth Blending Company Limited[3] where the court   stated “If the goods of a trader have, from the peculiar mark or get-up which he has used, become known in the market by a particular name, the adoption by a rival or second trader of any mark or get-up which will cause his goods to bear the same name in the market is a violation of the rights of the first trader." However, Pure Play went ahead to show how the wordmarks and logos of both the companies were distinct and held no question of being confused as one. The defendant also averred that the people chose high ranged product by considering the price factor. The defendants brought forward that the plaintiffs have not got their design or trade dress (as a trademark) registered,. In order to rebut the same, the plaintiffs relied on Kellogg Company v. Pravin Kumar Bhadabhai& Anr[4]. where, the court while taking note of Kerly’s Law on trademarks observed that cases of passing off, premised on get up or trade dress, are rather few since traders do not rely on get up alone to distinguish their goods. The trade names or wordmarks are ordinarily present too."

Judgment and further development

Judgment was passed in favor of the Plaintiffs where an interim injunction was granted by the judge. prima facie case was established by the plaintiff. The court talked about gullible and unwary customers and the likelihood of confusion among them with regard to the product of the plaintiff's to be that of the defendant’s. While the court agreed that the word marks were essentially very different it still would not stop the confusion and reasoned that“This is, because, the several aspects of trade dress are strikingly similar between the shoes of the plaintiffs and those of the defendants and the overall get up and trade dress is also markedly similar. It is these features that would catch the attention of the consumer and it is likely that the consumers – who would be youngsters more often than not, would overlook the labels printed inside the shoe sole which contain the word marks” The court accepted that the GoWalk 3 series has very distinct features and that the footwear has a trade dress, which acted as a source identifier. The arguments based on price range were not accepted by the court and neither was the submission of the Kellogg’s[5] was considered Thus, Injunction was granted in order to avoid any kind of prejudice to the plaintiff’s goods. After this, summary judgment was passed by Skechers U.S.A., INC., which entitled to costs of the suit from defendant No.1. Further on 20^th August, the cost of 87 Lakhs was imposed by the court ex parte.

Analysis

This case is one of the few Intellectual Property rights cases, where a summary judgment had been passed. A party can apply for Summary Judgment at any time after the summons has been served on the defendant and as per the grounds laid down in Rule 3. Summary judgments as per Order 13A are passed in order to avoid long trials when claims relate to a commercial dispute are decided without recording oral evidence when neither of the parties has no prospect of succeeding and the court sees no reason for not disposing of the suit. Order 13A is a recent addition through the Commercial Courts Act, which was cleared by the Cabinet and received Presidential assent on October 23, 2015. But the most intriguing part of the present case is that the summary judgment passed by the Delhi High Court was passed without filing an application for summary judgment by either of the parties. The plaintiffs raised an issue they needed to file an application under Order 13A of the Cod of Civil Procedure but were unable to do so because their signatory wasn’t present. However, the court went ahead and passed the order.

This overruled the order passed by the same court given in the case of Bright Enterprises Private Ltd. & Anr. v. MJBizcraft LLP & Anr[6]., passed on 4^th January 2017. It was the first case to study the Summary Judgment proceedings in detail and which was also related to Trademark infringement and dilution of goodwill. The court observed that “From the provisions laid out in Order XIIIA, it is evident that the proceedings before Court are adversarial in nature and not inquisitorial. It follows, therefore, that summary judgment under Order XIIIA cannot be rendered in the absence of an adversary and merely upon the inquisition by the Court. The Court is never an adversary in a dispute between parties” The Court stressed upon how the proceedings couldn’t happen without the filing of an application which is mentioned under Rule 4 of Order 13 of CPC and why the defendant’s reply is necessary The Court very rightly stated that “a court may feel that the case of a Plaintiff is weak but that is no ground whatsoever for throwing out the suit log, stock, and barrel without giving the Plaintiff an opportunity of proving and establishing its case”

Thus, the present case of Skechers USA Inc&Ors v. Pure Play essentially goes against the judgment of the previous judgment and Order 13 A, as it never gave the chance of a reply to the defendant and neither was any application filed by the plaintiff. As per Bright Enterprises Private Ltd. & Anr.v. MJ Bizcraft LLP & Anr, no summary judgment can be passed by the court on its own accord and also without giving the stipulated time to the defendants to reply and state facts and the law. Current summary judgment seems to have been contradictory to the prior judgments but as not many deliberations have been done on the topic of summary judgments, it is difficult to assume the right manner of interpretation of such an order. The costs that were analyzed in the case have been as per Chapter 23 of the Delhi High Court (Original Side) Rules, 2018 which have been implemented for the very first time. The cost that was imposed was ex parte. The defendants throughout the case have failed to file proper responses or appear in the courts, like the summary judgments where maximum defendants were not present.

Conclusion

Parts of the case that were related to Intellectual Property Rights have been very intrinsically analyzed by the Courts after looking at the proper evidence and precedents laid down by both the sides where the judge gave reasoning for all his decisions. What needs to be analyzed after looking at the judgments as a whole is the procedure related to summary judgments and the passing of the intellectual properties. Courts need to come to a consensus as to the interpretation and implementation of rules related to summary proceedings in order to avoid any sort of contradictory judgments and to take a clear stand.

Author: Nishka Tyagi, Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.