The internationally recognised footwear and apparel brand Skechers has long actively pursued legal action to safeguard its intellectual property rights (IPR) in India.
Two recent high-profile cases, Skechers South Asia Private Limited and Ors v Wardrode and Ors in the Bombay High Court and Skechers South Asia Private Limited and Ors v Delhi Polymer and Ors in Delhi High Court exemplify Skechers’ rigorous efforts to combat trademark infringement and the counterfeiting of its products.
In the October 2024 Wardrode case, Skechers alleged that the defendants had infringed its trademarks and copyright and had passed off counterfeit goods as its own. Skechers adduced evidence that the defendants had sold counterfeit footwear and related products bearing identical or deceptively similar marks to its registered trademarks, including the iconic “S” logo and artistic designs. The plaintiffs sufficiently proved that these counterfeit products were of inferior quality and imitated Skechers’ branding, deceiving consumers and damaging the goodwill of the brand.
The court upheld Skechers’ arguments, finding that there was, on the face of it, infringement. Because of the urgency of the situation, the court granted an interim injunction in the absence of the defendants restraining them from using Skechers’ trademarks and artistic works. To enable immediate action, the court appointed a receiver to seize counterfeit goods at the defendants’ various premises. This allowed the officer to collaborate with the local police, search premises, and confiscate infringing products. The court underscored the need for swift intervention to prevent further dilution of Skechers’ intellectual property (IP), particularly before a major festival with its sales opportunities.
Delhi Polymer heard the day after the Wardrode case, involved a network of manufacturers and retailers dealing in counterfeit Skechers’ products. The plaintiffs’ agent had discovered counterfeit footwear and related goods bearing Skechers’ trademarks at the premises of the defendants. The defendants’ activities were alleged to be not only deliberate but also intended to deceive the public into accepting that the products were genuine Skechers goods.
The court found little difficulty in issuing an interim injunction in the defendants’ absence, finding that the plaintiff had made out a sufficient case. Local commissioners were appointed to conduct raids and seize counterfeit goods, marketing materials and related documents from the defendants’ premises. The defendants were directed to disclose the identities of their suppliers, collaborators and all others involved in the counterfeiting.
The court ruled that using Skechers’ trademarks and artistic works was dishonest and clearly intended to exploit the brand’s goodwill for profit. The defendants had attempted to create the impression that the products being sold by the defendants were connected to the plaintiffs.
In both cases, Skechers adduced evidence of its extensive trademark portfolio and its investments in marketing and brand-building activities. The company provided detailed records of its registered trademarks, including its iconic logos and unique artistic designs, as well as its financial records showing significant sales turnover and marketing expenses. Such evidence demonstrated Skechers’ commitment to maintaining its brand equity and ensuring consumer trust in its products.
These cases show the judiciary’s support for IPR and its willingness to take decisive action against counterfeiters. Skechers has set a benchmark for global brands aiming to protect their IP in India’s dynamic marketplace. It has not hesitated to use all available legal sanctions open to it by securing injunctions and using court-appointed receivers and local commissioners. These judgments warn infringers that courts will act swiftly to address breaches and counter opportunistic selling activities, ensuring that businesses can operate in a fair and transparent environment.
Through its strategic legal actions, Skechers has not only defended its IP but also reinforced its brand’s integrity in the eyes of consumers. These cases are a reminder of the importance of robust IP enforcement mechanisms and the need for continuous vigilance in protecting trademarks and copyright in ever-evolving market circumstances.
Authors: Manisha Singh and Kratika Patel
First Published by: IBLJ here