Supreme’ Red-Box Logo Given A ‘Well-Known’ Mark Status by the Delhi High Court

13th September, 2023 - 1:29 pm Categories: Trademark Trademark Litigation 0 Comments

Introduction

Brand logos are one of the key identification factors of brands globally. Most brands register their trademark under the relevant law to prevent and punish any unauthorized usage. But some brands and their logos become so famous that even in the absence of registration, their logos get legal protection. The present case Chapter 4 Corp. v. Dhanpreet Singh Trading as M/S Punjabi Adda (2023) is one such instance. Let’s dive into this case, the arguments advanced by the parties, and the eventual judgment.

Background

Chapter 4 Corp. (the plaintiff), operating under the brand ‘Supreme’, introduced its mark ‘Supreme’ in the USA in 1994 and later internationally expanded its presence in India in 2006. The plaintiff owns over 700 registrations around the world for the mark ‘Supreme’ inside a red box. Additionally, the plaintiff has an active website, supremenewyork.com, to promote its products. On the other hand, Dhanpreet Singh (the defendant) was in the business of trading clothes under the name ‘M/s Punjabi Adda’.

The defendant was apparently selling T-shirts with the impugned logo on his websites, punjabiadda.com and punjabiadda.us. Upon discovering this, the plaintiff filed the present suit to seek a permanent injunction against the defendant.

Plaintiff’s Argument

The plaintiff heavily relied on the case of  Levi Strauss and Co. v. Imperial Online Services Pvt. Ltd. (2022), wherein ‘evidence of sales success, advertising expenditures, and length and exclusivity of use’ were observed as the factors determining the strength of a mark. Further reliance was placed on two more cases, namely Hermes International v. Crimzon Fashion Accessories Pvt. Ltd. (2023) and Disruptive Health Solutions v. Registrar of Trade Marks (2022). Both these cases provided more relevant factors to determine a mark as ‘well-known’, such as the extent of usage, knowledge or recognition of the mark, geographical area of the mark’s usage, acquisition of secondary meaning, etc.

Throughout the suit, the plaintiff tried to establish the ‘Supreme’ red-box logo’s popularity and goodwill in India and abroad. The plaintiff asserted that it has received extensive media coverage from leading media houses and that the mark reminds the public exclusively of the plaintiff and no other company.

To assert its popularity in the clothing industry, the plaintiff pointed out that it has collaborated with several high-end international clothes brands like Louis Vuitton, Burberry, Nike, etc. to launch its limited edition collaborative merchandise. According to the plaintiff, their brand’s valuation was around 1 billion USD in 2017, which, itself is proof of the well-known character of the impugned mark.

Further, it is worth noting that the plaintiff filed applications for registration of the ‘Supreme’ red-box logo in India in 5 classes (Classes- 9, 18, 25, 28 and 35). It was also contended that the plaintiff brand has over 700 trademark registrations of the mark in several key jurisdictions like the USA, EU, France, etc.

The plaintiff also relied on a study conducted by Harvard Business School, named ‘Supreme: Remaining Cool While Pursuing Growth’’ (2021), which referred to the plaintiff brand’s marketing strategy as a ‘guerilla approach’ because its products speak for themselves.

Defendant’s Argument

The defendant did not file its written statement in this case. Instead, during the proceedings, they entered into a Settlement Agreement with the plaintiff, acknowledging the plaintiff’s trademark rights in the impugned ‘Supreme’ red-box mark. As per the Settlement Agreement, the defendant agreed to abstain from filing any copyright or trademark application to register the impugned mark or any other mark similar to that of the impugned mark. The said Agreement also recorded the payment of Rs. 2,00,000/- (Rupees Two Lakhs Only) as the plaintiff’s acknowledgement.

[Image Sources : Shutter stock]

Judgment

Pursuant to the plaintiff brand’s contentions and the Settlement Agreement signed by the parties, the Hon’ble Delhi High Court declared the ‘Supreme’ red-box logo or mark’s acquisition of a ‘well-known’ mark status with respect to clothing and apparel.

However, the court observed that since the word ‘Supreme’ is a dictionary word, the well-known mark status is provided only to the ‘Supreme’ red-box logo, and not to the word ‘Supreme’ in itself.

Conclusion

So, in this case, the plaintiff brand ‘Supreme’ managed to successfully protect its iconic red-box device mark. The court’s judgment recognized the mark as ‘well-known’ because of the brand and its logo’s long-standing presence in the market and extensive reputation.

One aspect that is still unclear with regard to the Settlement Agreement signed by and between the parties is whether or not it specifically prohibits the defendant from continuing to sell fake products with the impugned ‘Supreme’ red-box logo. Nevertheless, even if the said Agreement does not expressly prohibit it, the defendant’s continuous sale of counterfeit products with the impugned ‘Supreme’ red-box logo would be considered a violation of the court’s judgement. Since the settlement agreement specifically acknowledges the plaintiff’s trademark rights and restricts the defendant from filing trademark or copyright applications for similar marks, it can be inferred that the defendant is also prohibited from using the ‘SUPREME’ red-box logo in any manner without the plaintiff’s authorization. This includes selling counterfeit products that bear the protected mark. So, if the defendant persists in infringing on the plaintiff’s trademark rights, the plaintiff can take legal action to enforce the settlement agreement and the court’s judgment.

Author: G.B. Vishwa, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

2. judgementphp-12-482096.pdf (livelaw.in)
3. https://insideretail.asia/2022/11/07/supreme-plots-asia-expansion-entering-china-and-south-korea/
4. https://www.calameo.com/books/00717523382c350ba2742
5. The History of Supreme: From Small Shop to Legendary Cult Status | Vogue