Delhi High Court Declares ‘Supreme’ Red-Box Logo A ‘Well-Known’ Mark In Respect Of Apparel & Clothing
The Delhi High Court has declared the ‘Supreme’ red-box logo as a ‘well-known’ mark in respect of apparel and clothing, under Section 2(zg) of the Trade Marks Act, 1999.Justice Prathiba M. Singh made the declaration in a suit for permanent injunction filed by Charter 4 Corp, seeking protection of its red-box device mark ‘SUPREME’.The court remarked that the red-box device...
The Delhi High Court has declared the ‘Supreme’ red-box logo as a ‘well-known’ mark in respect of apparel and clothing, under Section 2(zg) of the Trade Marks Act, 1999.
Justice Prathiba M. Singh made the declaration in a suit for permanent injunction filed by Charter 4 Corp, seeking protection of its red-box device mark ‘SUPREME’.
The court remarked that the red-box device mark ‘SUPREME’ has acquired a secondary meaning keeping in mind the extent of its usage and therefore, it deserves to be protected.
The bench said that considering the period of 29 years, during which the device mark has been used for readymade clothing, the mark has achieved the status of a ‘well-known mark’.
“Accordingly, a decree of declaration declaring the Red-box device mark as a ‘well-known’ mark in respect of apparel and clothing,” the court said.
In its plea, Charter 4 Corp submitted that it adopted the mark ‘Supreme’ in 1994 in the US, and the same has been used in India since 2006 among Indian customers. It submitted that it has more than 700 registrations globally for the mark ‘Supreme’, adding that it has filed applications for its red box device mark in India also.
It was the case of Chapter 4 Corp that the defendant- Dhanpreet Singh, trading as M/s. Punjabi Adda, was using the mark ‘SUPREME’ on its T-shirts and was selling them through its websites. After an interim injunction was granted in favour of the ‘Supreme’ mark, the court was later informed that the parties had settled their disputes.
In its plea seeking a decree declaring the ‘SUPREME’ red box device mark is a ‘well-known’ mark, Charter 4 Corp argued that it has a unique business model of scarcity, combined with high demand and low supply, which creates enormous notoriety for its brand.
It argued that under its unique business model, it solely manufactures and offers for sale readymade clothing, footwear, and accessories in extremely limited quantities and editions. It further claimed that its mark is registered across the world in almost all major jurisdictions. It also relied on a study published by the Harvard Business School where the sales pattern of ‘Supreme’ has been termed as a ‘guerrilla approach’.
The court was also informed that the products bearing the ‘Supreme’ mark have been endorsed by various well-known international and Indian celebrities, including Justin Bieber, Beyonce, Madonna, Rihanna, Diljit Dosanjh, Ranbir Kapoor, and Karan Johar.
The court thus concluded that it was clear that ‘SUPREME’ has acquired a ‘well-known’ status.
“On the strength of averments in the plaint, and the documents placed on record, and the reputation in the red-box device mark ‘SUPREME’ as gleaned from the record, it is clear that the Plaintiff has acquired a ‘well-known’ status. The red-box device ‘SUPREME’ has acquired a secondary meaning keeping in mind the extent of usage of the said device mark. Therefore, the said red-box device mark deserves to be protected. Considering the period of 29 years, during which the red-box device mark SUPREME’ has been used for readymade clothing, and the factors outlined in paragraph 19 above, the said mark has achieved the status of a ‘well-known mark’. Accordingly, a decree of declaration declaring the Red-box device mark as a `well-known’ mark in respect of apparel and clothing,” the court said.
The court added that since the word ‘Supreme’ is a dictionary word, the declaration of ‘well-known’ mark would remain limited to the ‘SUPREME’ red-box logo and not the word itself.
Perusing the Settlement Agreement arrived at between the parties, the court noted that the defendant has agreed not to file any trademark/copyright application to register the ‘Supreme’ marks or any similar mark for any goods or services such as readymade clothing and related goods and services. The court thus decreed the suit in terms of the application filed by the parties under Order XXIII Rule 3 of the Code of Civil Procedure, 1908 (CPC) which contained the terms of settlement.
“Accordingly, in recognition of the trademark rights and common law rights in the red-box device mark ‘SUPREME’ in favour of the Plaintiff, the suit is decreed in terms of paragraphs 2(a)- (p) of the application under Order XXIII Rule 3 CPC. The Defendant shall also stand restrained from seeking any statutory rights by applying for trademarks or copyrights in respect of the red-box device mark ‘SUPREME’,” the court said.
Case Title: CHAPTER 4 CORP vs DHANPREET SINGH TRADING AS M/S PUNJABI ADDA
Citation: 2023 LiveLaw (Del) 609
Counsel for the Plaintiff: Mr. Dushyant K Mahant, Mr. Jaskaran Singh and Mr. Alvin Antony, Advocates