The subject matter Suit was filed by the Plaintiff on the basis of proprietary right in the trademark Columbia since the year 1938. The plaintiff has claimed to have used the said trademark world wide and also claimed to have trademark registration worldwide.

The plaintiff also claimed to have obtained various trade mark registrations in India. The plaintiff has filed the suit for infringement of trademark and passing off against the defendants. The plaintiff claimed 6 trademarks registrations in India. The plaintiff claimed its trademark to be a well known trademark.

The plaintiff claimed to have started exporting the products under the subject matter trademark in India since the year 1996.The plaintiff claimed trans border reputation, which spilled over to India. The subject matter suit was filed against the defendants as plaintiff alleged the shoes used by the defendant, are of inferior and cheap quality, thereby are tarnishing the goodwill and reputation in India.

The plaintiff was able to obtain the ex-parte injunction in the suit. The matter has been settled with defendant no.1. After service of the summons of the suit, the defendant no.2 appeared and filed written statement and application under Order 39 Rule 4 CPC. The plaintiff's interim injunction application under Order 39 Rule 1 & 2 CPC and defendant no.2's application under Order 39 Rule 4 CPC was disposed of by virtue of the present Judgment.

Brief Defense Of The Contesting Defendant No.2:
The defendant no.2 alleged that his user of trade mark 'Columbia' is honest and he is the prior adopter and continuously and extensively using this mark in relation to his goods since 1995. The defendant has also alleged that its trade mark application under No. 1126256, was wrongly shown as abandoned by the plaintiff in the plaint.

The status of the TM application of defendant No. 2 has already been changed to be pending and not abandoned in view of Writ filed by the defendant no.2 in Hon'ble High Court of Delhi. This factum has been suppressed by the plaintiff. The defendant no.2 also alleged that plaintiff wrongly has not disclosed in the plaint that there is disclaimer qua three of the registrations of the plaintiff. The defendant no.2 also alleged that the plaintiff has no trans border reputation in India and that the plaintiff has miserably failed to establish the same.

The Hon'ble Court has discussed the effect of non mentioning of disclaimer condition in the plaint. The Court returned the finding that non disclosing the disclaimer condition on 3 of trademarks registrations does amount to material suppression.

The relevant portion of the judgment dated 28.04.2017, pronounced by Hon'ble Delhi High Court in Suit bearing CS(COMM) 1611/2016 titled as Columbia Sportswear Company Vs Harish Footwear & Other to this effect , is produced as here in below:

Copies of his registration certificates showing his registration in India have been placed on record. There are six such registrations; details of which finds mention in para 16 of his plaint. Admittedly there is a disclaimer prevailing qua three such registrations i.e. registration No. 626883 dated 02.05.1994, registration No. 1380753 dated 30.08.2005 and registration No. 1585010 dated 27.07.2007. The other three registrations are alone clear. They have no disclaimer pending against them. This position is admitted. Thus the first registration which is in favour of the plaintiff is registration NO. 1585010 dated 27.07.2007 which is a registration in class 18 and class 25.

While dealing with this application, this Court is largely concerned with the items contained in clause 25. This registration is in favour of the plaintiff qua clothing, headwear and footwear. It dates back to 27.07.2007. Para 16 of the plaint additionally states that these registrations are valid and subsisting as on date.10 This position is not quite correct. Admittedly there are disclaimers qua three such registrations and as noted supra, they have been admitted by the plaintiff.

This has however not been detailed by the plaintiff in his plaint. In para 40 an evasive statement has been made that in order to register an FIR on the plea of disclaimer, an opinion had been sought from the Registrar of Trademarks which opinion was in favour of the plaintiff. This is the end of the matter. There is no further details of any disclaimer; para 40 relied upon in the plaint does not disclose that a disclaimer had been set up by defendant No. 2 or that the disclaimer is alive and as such the afore

noted three registrations are not clear; there being a disclaimer admittedly attached to them. This in the view of this Court is a concealment which has been made by the plaintiff for which he has no explanation. The Hon'ble Court has also dealt with the issue of not disclosing the exact status of trade mark application of the defendant no.2. The plaintiff mentioned in the plaint that the trade mark application of the defendant no.2 has been abandoned.

While fact is that the status of the trade mark application of the defendant no.2 has been changed from abandoned to pending in Writ filed by the defendant no.2. This concealment does amount to be material suppression. The relevant portion of the Judgement to this effect, is produced as here in below:

'The second suppression of fact which amounts to a concealment of a material fact is the fact that defendant No. 2 had applied for registration of his mark. Vide TM application No. 1126256, he had been granted the status of pending in W.P. (C) No.5866/2013 which had been disposed of on 16.07.2014. This order had directed the trade mark authorities to treat the application of defendant No. 2 as per its original seniority i.e. from the date of its filing. Defendant No. 2 in his list of documents on the first page has filed the Court order dated 16.07.2014 which reflects that this order had been uploaded in the Trade Mark Registry on that date itself.

The present suit has been filed on 19.07.2014. Amended plaint had been filed on 16.10.2014. The status of this TM application that it had reverted to a pending status and was no longer abandoned had not been disclosed by the plaintiff. This has been admitted by the plaintiff only in his replication. The fact that the TM Application of defendant No.2 was 'pending' on the date of the filing of the suit and was not abandoned is also in the view of this Court an active concealment which would perhaps disentitle the plaintiff to a discretionary relief.'

The Hon'ble Court has also discussed the issue of trans border reputation. The Court has returned the finding that the plaintiff has failed to prove its presence in India. The plaintiff has failed to put on record to show any advertisement or sale in India. The plaintiff's trademark may be a well known trademark but the plaintiff could not show its presence in India, hence benefit of trans border reputation was not given to plaintiff.

The relevant portion of the Judgment to this effect is being reproduced as herein below: The plaintiff has a registration of the year 2007 in India. He has however in his entire volume of documents (running into three parts) has not been able to show any advertisement which he has effected in India wherein his product has been advertised or he is selling the same i.e. shoes under the trade name Columbia. It appears that the plaintiff has no market in India.

He may be a well known name in foreign countries but his presence in India has not been depicted; it cannot be seen from any of the documents which had been filed by the plaintiff. His trans-border reputation, if any, has not travelled to India.'

The Hon'ble Court also given due consideration to this fact that the defendant no.2 has shown its user since the year 2002. Hence the right of the defendant no.2 has to be protected.

The relevant portion of the Judgment to this effect is being reproduced as herein below: Although, the advertisements of defendant No.2 reflects that he is selling shoes under the brand name not only of Columbia but also of COLUMBUS and COPPER LAND which are all footwear of defendant No. 2 company yet this Court is of the view that he cannot, at this stage, be restrained from using the trade name Columbia as he has been able to prima-facie show his active presence in the market from the year 2002 which has been reflected not only through his advertisements but also his sale invoices. His sale figures which include sale of Columbia shoes is also on record.

Thus, defendant No. 2 has been able to establish that he is selling shoes under the trade name Columbia from the year 2002. The Hon'ble Judge also gave due given due consideration to this fact that there is huge price difference between the price of shoes of the plaintiff and the defendant no.2. The relevant portion of the Judgment to this effect is being reproduced as herein below: This by itself would not be reason enough for them to discontinue to buy the shoes of the plaintiff which are also more heavily priced than the shoes of defendant No. 2 which are only priced at Rs.500-600/- in comparison with the shoes of the plaintiff which sell at Rs. 3,000/- a pair.

Conclusion:
Application of the plaintiff filed under Order 39 Rule 1 & 2 CPC was dismissed and application of the defendant no.2 filed under Order 39 Rule 4 CPC was dismissed.

Written By: Ajay Amitabh Suman, Advocate