The Delhi High Court has directed Google LLC to remove the application 'PUMA GUARD' from its Google Play Store while dealing with a trademark infringement suit filed by 'PUMA'.
Justice Pratibha M Singh was dealing with a suit filed by the Plaintiff PUMA SE seeking protection of its mark 'PUMA' which was coined and adopted by it internationally in 1948.
'PUMA' is one of the world's leading sports brand designing, developing, selling and marketing footwear, apparel and accessories. The mark 'PUMA' has been used in India from 1980's onwards and the same is registered under several classes.
The Defendant No.1 M/s Hi-Tech Point Technologies Pvt. Ltd. started a GPS service through electronic application by the name 'PUMA GUARD'. Defendant No.2 Black Box GPS Technology OPC Pvt. Ltd. also launched a device with GPS tracking and anti-theft capabilities under the mark 'PUMA'.
The Plaintiff came across two domain names, namely, 'www.pumaguard.in' and 'www.pumaguard.com' where Defendant No. 2 was promoting and selling its GPS and anti-theft vehicle devices under the impugned mark. After effecting a purchase on 15th February, 2021 from Defendant No.2, the present suit was filed.
However, the Court noted that during the pendency of the suit, the Plaintiff and Defendant Nos.1 and 2 had arrived at a settlement and that an application under Order XXIII Rule 3 CPC was filed jointly by the parties.
As per the terms of the settlement, the defendants acknowledged the rights of the Plaintiff in the mark 'PUMA' and also confirmed that they had stopped using the mark 'PUMA' for their GPS tracking devices or any other such similar products which may amount to infringement and passing off.
"The Court has perused the terms of settlement. The same are lawful. There is no impediment in recording the settlement. The terms of settlement shall be binding on the parties and all other acting for and on their behalf. Accordingly, the suit is decreed against Defendant Nos.1 and 2 in terms of paragraphs 3(I) to 3(XII) and 4 as set out above. In addition, the suit is decreed in terms of paragraph 47 (a) to (c) of the Plaint. None of the other reliefs are pressed," the Court said.
However, to give full effect to the injunction, the Court also directed that the LinkedIn profile of Defendant No.1 and 2 shall also be removed.
"In future, if there are any other URLs where the Defendants' products are being advertised, either on the internet or on any other social media platforms, the Plaintiff is permitted to write to the Defendants arrayed as Defendant Nos.7 to 11 in the present suit along with the copy of the order with a request for take down of the said URLs. If the said URLs are not taken down, the Plaintiff is permitted to avail of its remedies in accordance with law," it added.
The Court also directed that the domain names 'www.pumaguard.in' and 'www.pumaguard.com' be transferred to the Plaintiff.
Case Title: PUMA SE v. HI-TEC POINT TECHNOLOGIES P. LTD. AND ORS.
Citation: 2022 LiveLaw (Del) 494