SKECHERS Strikes Back: Court Halts the Sale of Counterfeit Products

By Rima Majumdar and Anuj Dhar

Introduction

Counterfeit goods mushroom during the festive season and are often marketed at a fraction of the price of genuine/original articles. It becomes a challenge for not only the potential consumers but also the brand owners, since it becomes almost impossible to differentiate between the original and counterfeit goods. These products are not only illegal but also pose a serious risk to brand integrity, goodwill and reputation.

The Hon’ble High Court of Bombay’s decision marks a major step in protecting the reputation of well-known brand against counterfeiters who have been selling the fake footwear and accessories by producing slavish copy of original SKECHERS

BRIEF FACTS OF THE CASE

The Plaintiffs in the present case, namely Skechers South Asia Pvt. Ltd. and its subsidiary companies, are a global footwear and apparel brand. The Plaintiffs own several trademarks including the well-reputed trademarks, i.e., SKECHERS (word),,(device). The Plaintiffs have filed the present suit against the unauthorized sale of counterfeit products bearing the name/mark SKECHERS, resulting in the infringement of Plaintiffs’ registered trademark, copyright and passing off of the Plaintiff’s registered mark “SKECHERS” by the fraudulent and malafide acts of the Defendants.

PLAINTIFFS’ SUBMISSIONS

1. The Plaintiffs submitted that the trademark SKECHERS was adopted in the year 1992 in respect of the footwear, apparel and accessories. The said trademark is represented in unique label bearing distinct fonts such as ///. The Plaintiffs also claim ownership of copyrights in the said artistic works. A non-exhaustive list of Plaintiff’s registrations in India for the mark SKECHERS are provided below:

Demo

S. No.	Trademark	Class	Application No.	Date of Application	Status
1.	SKECHERS	25	608009	September 28, 1993	Registered
2.	SKECHERS – THE SLIP IN SHOE COMPANY	25	5860621	March 23, 2023	Registered
3.		25	1816188	May 08, 2009	Registered
4.		25	2318332	April 19, 2012	Registered
5.		25	3730211	January 18, 2018	Registered

2. The Plaintiffs further submitted that they, through its investigation officials, came across the impugned goods bearing the Plaintiffs’ trademarks and artistic works in the premises of the Defendants in Nashik and Indore. After careful analysis and examination of the quality of impugned goods, materials used, stitching, MRP, etc., the Plaintiffs concluded that the impugned goods do not originate from the Plaintiffs, and thus, are counterfeit products. The impugned goods were inferior quality imitation of the Plaintiff’s original goods.
3. It was revealed during the investigation that Defendants were conducting business of counterfeit goods in clandestine manner originating from a common source. Shockingly, the Defendant was also present on various social medial websites such as Facebook and Instagram.
4. The Plaintiff contended that a cursory look at the counterfeit goods would reveal that the Defendant has slavishly copied the Plaintiff’s trademark and artistic works on its goods of inferior quality. The impugned goods bear a substantial reproduction of the Plaintiffs’ artistic works in SKECHERS.

COURT’S OBSERVATIONS

After a careful consideration of the submissions and the documentary evidence provided by the Plaintiffs, the Hon’ble Bombay High Court observed the following with respect to the alleged trademark and copyright infringement:-

1. The Defendants have bodily lifted the Plaintiffs’ trademarks and artistic works, and the same has been blatantly applied to the counterfeit goods. The Hon’ble Court opined that, “I am of the view that the adoption of the Plaintiffs’ Trade Marks and the Plaintiffs’ Artistic Works in relation to the Impugned Goods by the Defendants is dishonest.”
2. The Hon’ble Court further noted that Plaintiffs have a strong prima facie case for infringement of trademarks and copyright and the balance of convenience is in the favour of Plaintiffs. Further, the Plaintiffs are likely to suffer irreparable harm, loss and injury if the relief is refused.

COURT’S ORDER

In furtherance of the above-mentioned observations of the Court, the Hon’ble Court passed an ex-parte ad-interim injunction order, thereby restraining the Defendant from dealing in counterfeit products bearing the Plaintiff’s trademark and artistic work in SKECHERS. The Hon’ble Court also appointed a Court Receiver and Additional Special Receiver, directing them to search, seize and make inventory of the counterfeit goods in the Defendants’ premises in Nashik and Indore. The Hon’ble Court has further clarified that the injunction shall not prevent the Defendants from selling original goods or those goods originating from legitimate sources. The said injunction order dated October 24, 2024 shall continue till December 11, 2024. The Hon’ble Court has fixed the next date of hearing on December 10, 2024.

AUTHOR’S NOTE

The festive/wedding season often brings with it an influx of consumer spending. However, this period also sees an alarming rise in the business of blatant copy of goods of well-known brands. The quality of such products are often subpar that leads to consumer dissatisfaction. This, in turn, results in injury to hard-earned goodwill and reputation of these brands.
In the present matter of SKECHERS, a world renowned footwear brand, the Bombay High Court has underlined the critical importance of judicial intervention in combating the counterfeit goods, particularly during the high-demand periods like wedding and festivals. The Order highlights how blatant copy of such global giants leads to unfair advantage of legitimate business.

Aashi Nema, Junior Associate Advocate at S.S. Rana & Co. has assisted in the research of this article.