Risk Of Diluting Unique Identity: Delhi HC Restrains Industrialist From Using 'Adidas' Name In Trademark Infringement Case

It was a trademark infringement case involving sportswear giant Adidas and textile industrialist. The industrialist had adopted the name ‘Adidas’ for his businesses, claiming it was in homage to his elder sister whom he affectionately referred to as 'Adi' (meaning 'elder sister' in Sindhi) and himself as her devotee ('Das' in Sindhi).

A bench of Justice Sanjeev Narula said, “it was incumbent upon the Defendants to demonstrate that their adoption of the identical mark was honest and in good faith. However, they failed to provide credible justification or evidence to support this claim. While the Defendants submitted a summary of search results for the mark ‘ADIDAS’ to suggest that due diligence was performed through legal services, this documentation was not substantiated. Moreover, the explanation that the mark ‘ADIDAS’ was chosen out of Defendant No.1’s affection for his sister lacks evidentiary support, further undermining their claim of honest adoption.”

The Court noted that Adidas' founder, Adolf Dassler, known as Adi, had coined the mark ‘ADIDAS’ by combining 'Adi' with the first three letters of his surname 'Das'. The court observed that industrialist’s use of the term 'Adidas' appeared to be in bad faith and with dishonest intentions, especially considering the ongoing dispute over the mark dating back to 1992.

Advocate Ranjan Narula appeared for the Plaintiff.

Despite his argument that his use of 'Adidas' in all capital letters while Adidas uses it in all lowercase letters would prevent confusion, the Court dismissed this as untenable.

The Court emphasized the similarity between textiles(industry products) and readymade garments (Adidas' products), noting that both categories serve similar purposes and could lead to public confusion under trademark law. The Court added, “Given the intrinsic relationship between textiles (raw materials) and garments (finished products), the goods are undeniably similar in nature and purpose. This similarity meets the requirement of Section 29(2)(a) of the Act where the identity of the mark and the similarity of the goods covered by the trademark registration can lead to public confusion. The identity of the marks combined with the similarity between the goods— textiles and garments— creates a real likelihood of confusion. Consumers encountering Defendants’ “ADIDAS” branded textiles could logically assume that they originate from or are associated with the same source as the Plaintiff’s “ADIDAS” branded garments due to the use of the identical mark.”

The Court underscored that trademark protection aims not only to prevent consumer confusion but also to safeguard the investment and unique identity of the mark owner. It criticized the industrialist for failing to prove prior use of the ‘Adidas’ mark in India and for presenting inadequate evidence to support his claim of honest adoption. The Court added, “The legal protection of trademarks is predicated not only on preventing consumer confusion but also on protecting the owner’s investment in the mark. The term “ADIDAS” being invented and highly distinctive is unlikely to be chosen innocently. The unauthorized use of such a mark not only infringes on the trademark owner’s rights but also risks diluting the mark’s unique identity.”

The Court favored Adidas, directing industrialist to pay litigation costs amounting to ₹11,22,060. “Given the identity of the marks, the allied nature of the goods under Classes 24 and 25, and the significant overlap in trade channels, there is a high likelihood of confusion among consumers. The Defendants have not provided evidence to counter this presumption of confusion or to show honest and distinct commercial use. Therefore, based on the statutory provisions of Section 29(2)(a) of the Act and the factual circumstances of this case, the use of “ADIDAS” by the Defendants on textiles meets the criteria for trademark infringement”, the Court said.

Cause Title: Adidas AG v. Keshav H Tulsiani & Ors., [2024:DHC:5361]

Appearance:

Plaintiff: Advocates Ranjan Narula, Aishani Singh, and Shivangi Kohli