CS(COMM)/543/2021 of CROSS FIT LLC Vs RTB GYM AND FITNESS CENTRE THROUGH ITS PROPRIETOR MR. ARUN SHARMA

*INTHEHIGHCOURTOFDELHIATNEWDELHIDate of Decision: 6[th]September, 2022

CS(COMM) 543/2021

CROSS FIT LLC

..... PlaintiffThrough:Mr.SaifKhanandMr.ShobhitAgrawal. (M-[REDACTED])

versus

RTB GYM AND FITNESS CENTRE THROUGH ITSPROPRIETOR MR. ARUN SHARMA

..... Defendants

Through:None.

CORAM:JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J.(Oral)

1.This hearing has been done through hybrid mode.

2.The present suit has been filed by the Plaintiff seeking permanentinjunction restraining infringement of trademark, passing off, dilution andtarnishment of trademark, unfair competition, damages, rendition of accounts,delivery up, and other reliefs. The Plaintiff claims to be the proprietor of theregistered trademark ‘CROSSFIT’ used in respect of services in the health,fitness and nutrition sector. The details of the Plaintiff’s registrations inrespect of the mark ‘CROSSFIT’ are set out below:

3.The Plaintiff is company based out of California, USA incorporatedunder the name CrossFit Inc., in the year 2004. Thereafter, the Plaintiff wasincorporated in the State of Delaware, USA in the year 2008. As set out in thePlaint, the Plaintiff is mainly engaged in the business of providing productsand services in the health, fitness and nutrition space. The business model ofthe Plaintiff includes providing services for strength training, fitness programsin addition to conducting fitness seminars and providing trainer certifications.It has operations in more than 145 countries and has more than 1.3 lakhaccredited CrossFit Level 1 trainers. There are more than 15,000 gyms whichare affiliated with the Plaintiff and are using the mark ‘CROSSFIT’.

4.The Plaintiff coined and adopted the mark ‘CROSSFIT’ in the year1995 and has been continuously and extensively using the said mark in respectof its products and services. In India, the first ‘CROSSFIT’ gym was openedin the year 2009 and it has more than 40 licensees/affiliates. The Plaintiff alsoregistered the domain name ‘www.crossfit.com’ in October, 1999. ThePlaintiff has obtained various registrations for the word and device mark

‘CROSSFIT’ in India and in other jurisdictions, including European Union,Australia, USA, Japan, Bahrain, China, Israel, Jordan, Kuwait, Saudi Arabiaand United Arb Emirates. The ‘CROSSFIT’ mark is used by the Plaintiff, asalso, its licensees across the world. It has collaborations with various othercompanies and foundations, and has organized several events, including the‘CROSSFIT’ Games, which are held annually since the year 2007. The markis extensively advertised and popularised. The advertising expenses incurredby the Plaintiff in respect of services provided by the Plaintiff under the mark‘CROSSFIT’ is stated to be over USD 2.5 million in the year 2016. ThePlaintiff’s sponsorship revenue for the year 2018-21 was also around USD 25million.

5.The grievance of the Plaintiff is that the Defendant is gym and fitnesscentre owned and operated by its proprietor Mr. Arun Sharma and is using theidentical mark ‘CROSSFIT’ in respect of identical services relating to gymand fitness. The Plaintiff acquired knowledge of the use of the said mark bythe Defendant in September, 2020. The case of the Plaintiff is that theDefendant has been prominently displaying the mark ‘CROSSFIT’ at itspremises, literature, online pages as hashtags since March, 2018. The mark‘CROSSFIT’ as used by the Defendant is depicted below:

6.The Defendant was also using the mark ‘CROSSFIT’ on various onlinedirectories and social media platforms, including Facebook, Instagram,Justdial, Fitternity etc. The screenshots of the Defendant’s web pages usingthe mark ‘CROSSFIT’ have been placed on record and some of them arereproduced below:

7.In these circumstances, the Plaintiff has filed the present suit. Prior tofiling of the present suit, the Plaintiff also attempted pre-litigation mediationin August, 2021. However, the Defendant did not appear. legal notice dated29th September, 2020 was also issued by the Plaintiff, but the same was notreplied to by the Defendant.

8.The matter was listed before the Court for the first time on 29thOctober, 2021. On the said date, summons and notice were issued by theCourt. An ex parte ad-interim injunction was also granted by the Court, videorder dated 29th October, 2021, in the following terms:

“I.A. 14144/2021

1. This is an application under Order 39 Rules 1 and 2CPC seeking the following reliefs:-

“a) An ex-parte order of ad interim injunctionrestraining the Defendant, partners or proprietorstherein, as the case may be, its officers, servants, agents,dealers, franchisees from using in the course of trade

the mark ‘CROSSFIT’ or any other mark/logo identicaland/or deceptively similar to the Plaintiff’s mark‘CrossFit’, whether offline or online, amounting toinfringement of the trademark and passing off;b) An ex parte order of ad-interim injunction directingthe Defendant to immediately take down all posts,listings,picturesetc.mentioningtheword/mark‘CROSSFIT’ from all websites, webpages, social mediapages run by the Defendant; andXXXXXXXXX7. The plaintiff has made out prima facie case. Aninterim injunction is passed in favour of the plaintiff andagainst the defendant in terms of prayer 15(a) and 15(b)above.”

9.The above interim order granted on 29th October, 2021 was madeabsolute during the pendency of the present suit, vide order dated 15[th]February, 2022.

10.It is noticed that, despite service, the Defendant has chosen not toappear. As recorded in order dated 15[th]February, 2022, the affidavit of servicedated 14th December, 2021 has been filed by the Plaintiff which shows thatthe Defendant has been served by speed post, as also, by email. Accordingly,the Defendant was proceeded against ex parte on the said date. In addition, itis noted that the Registry has also issued summons to the Defendant.

11.In view of the above, following the judgment in Disney EnterprisesInc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2012 decided on 20thFebruary, 2014], this Court is of the opinion that no ex parte evidence wouldbe required in this matter. The same has been reiterated by the Court in S.Oliver Bernd Freier GMBH & CO. KG v. Jaikara Apparels and Ors. [210(2014) DLT 381], as also, in United Coffee House v. Raghav Kalra and Ors.[2013 (55) PTC 414 (Del)]. The relevant observations from the judgment in

Disney Enterprises Inc. (supra), are as under:

“3. Though the defendants entered appearancethrough their counsel on 01.02.2013 but remainedunrepresented thereafter and failed to file writtenstatement as well. The defendants were thusdirected to be proceeded ex-parte vide order dated04.10.2013and the plaintiffs permitted to fileaffidavits by way of ex-parte evidence.

4. The plaintiffs, despite having been grantedsufficient time and several opportunities, havefailed to get their affidavits for leading ex-parteevidence on record.However, it is not deemedexpedient to further await the same and allow thismatter to languish, for the reason that I have inIndianPerformingRightsSocietyLtd.Vs.Gauhati Town Club MANU/DE/0582/2013 heldthat where the defendant is ex parte and thematerial before the Court is sufficient to allow theclaim of the plaintiff, the time of the Court shouldnot be wasted in directing ex parte evidence to berecorded and which mostly is nothing butarepetition of the contents of the plaint.”

12.In view of the foregoing discussion, this Court is convinced that thePlaintiff has made out case for the grant of permanent and mandatoryinjunction and the present suit is liable to be decreed. Accordingly, the presentsuit is decreed in terms of the reliefs sought in paragraph 44 of the Plaint, asextracted below:

“a) Decree for permanent injunction restraining theDefendants, their partners or proprietors, as the casemay be, their officers, servants, agents, dealers,franchisees from using in the course of trade the mark‘CROSSFIT’ or any other mark/logo identical and/ordeceptively similar to the Plaintiff’s mark ‘CrossFit’,whether offline or online, amounting to infringement of

the trademark;

b) Decree for permanent injunction restraining theDefendants, their partners or proprietors, as the casemay be, their officers, servants and agents, dealers,franchisees from using the mark ‘CROSSFIT’ or anyother mark/logo identical and/or deceptively similar tothe Plaintiff’s mark ‘CrossFit’, whether offline oronline, for offering goods and services, amounting topassing off of the Defendants’ goods/services as that ofthe Plaintiff’s;

a) An order of mandatory injunction directing theDefendants to take down its websites, domain name,online pages and all posts, listings, pictures etc.mentioningthe word/mark‘CROSSFIT’fromallwebsites, webpages, social media handles run by theDefendants.

c) Decree for permanent injunction restraining theDefendants, their partners or proprietors, as the casemay be, their officers, servants and agents, dealers,franchisees acting for and on their behalf etc. fromengaging in any acts whatsoever that will result in theunfair competition, dilution and tarnishment of thePlaintiff’s trademark ‘CrossFit’; and

d) An order of delivery up of all infringing materialincluding brochures, cartons, applications, promotionalmaterial or any other material where the mark‘CROSSFIT’ or any other mark/logo identical and/ordeceptively similar to the Plaintiff’s mark ‘CrossFit’appears for purposes of destruction and/or erasure;and”

13.Pursuant to the previous order dated 12th May, 2022, the Plaintiff hasfiled an affidavit dated 5th September, 2022 of Mr. Dinesh Sharma, as towhether the Defendant has complied with the injunction order, along with thestatement of costs. perusal of the said affidavit shows that the Defendant iscontinuing to use the mark ‘CROSSFIT’ despite the injunction granted in the

present suit. The Defendant, having had knowledge of the injunction orderdated 29th October, 2021, has chosen not to respond or even contest thematter. The fact that the Defendant has knowledge of the present suit and theinjunction is established from the following facts and circumstances -

i.Issuance of legal notice dated 29th September, 2020, towhich no reply was received.which no reply was received.

ii.Issuance of notice in the pre-litigation mediation under theaegis of the Delhi High Court Mediation and ConciliationCentre, wherein the Defendant failed to enter appearance.aegis of the Delhi High Court Mediation and ConciliationCentre, wherein the Defendant failed to enter appearance.

iii. Email dated 17th September, 2021 at the pre-litigationmediationstagewhichshowsthatatelephonicconversation took place between the Plaintiff and theproprietor of the Defendant, Mr. Arun Sharma.mediationstagewhichshowsthatatelephonicconversation took place between the Plaintiff and theproprietor of the Defendant, Mr. Arun Sharma.

iv. Compliance has been effected under Order XXXIX Rule3 CPC.3 CPC.

v.Summons have been issued by the Court Registry.

vi. Affidavit of service dated 14th December, 2021 has beenfiled by the Plaintiff which shows that the Defendant hasbeen served by speed post, as also, by email.filed by the Plaintiff which shows that the Defendant hasbeen served by speed post, as also, by email.

14.Despite the above, the Defendant has chosen to neither comply with theorder nor raise any defence in the present suit. Thus, considering theobservations of the Supreme Court on the issue of costs to be awarded incommercial matters in Uflex Ltd. v. Government of Tamil Nadu & Ors. [CivilAppeal Nos.4862-4863 of 2021, decided on 17th September, 2021], thisCourt is convinced that the present is fit case for the grant of actual costs infavour of the Plaintiff.

15.The statement of costs has been filed by the Plaintiffs as part of theaffidavit dated 5[th]September, 2022. As per the said statement of costs, ThePlaint has incurred expenses to the tune of Rs.8,54,069/- on various accountsincluding legal fees, court fees and miscellaneous expenses. Accordingly, inview of the fact that the Defendant has brazenly violated the orders of theCourt, costs of Rs.10,00,000/- are awarded in favour of the Plaintiff.

16.The Defendant shall pay the said amount within three months, failingwhich, the Plaintiff is permitted to avail of its remedies, in accordance withlaw.

17.The Plaintiff is also permitted to approach the concerned onlinedirectories and social media platforms for taking down of the infringing listingand posts of the Defendant, using the mark ‘CROSSFIT’. Upon the said noticebeing issued to the intermediaries, the infringing listings and posts shall betaken down, within 48 hours.

18.The present suit is decreed in the above terms. Decree sheet be drawnaccordingly. All pending applications are also disposed of.Contumacious Conduct of the Defendant

19.This Court has perused the affidavit dated 5th September, 2022 filed bythe Plaintiff. perusal of the same clearly shows the continued use of thePlaintiff’s mark ‘CROSSFIT’ by the Defendant in violation of the injunctiongranted. In the opinion of this Court, the conduct of the Defendant constitutescontempt of the injunction order dated 29th October, 2022.

20.In the case of National Lawyers Campaign for Judicial Transparencyand Reforms and Ors. v. Union of India [W.P.(C) No.191/2019; Order dated

12th March, 2019], the Supreme Court has observed as under:

“13. When contempt is committed in the face of theCourt, judges’ hands are not tied behind their back”

21.Recently, in Urban Infrastructure Real Estate Fund v. Dharmesh S.Jain & Anr. [Contempt Petition (C) No.940/2021 decided on 10th March,2022], the Supreme Court has observed as under:

“13.3 Contempt jurisdiction could be invoked in every

case where the conduct of contemnor is such aswould interfere with the due course of justice; videRama Narang vs. Ramesh Narang [(2006) 11 SCCwould interfere with the due course of justice; videRama Narang vs. Ramesh Narang [(2006) 11 SCC

114. Contempt is matter which is between the Courtpassing the order of which contempt is alleged and thecontemnor; questions as to executability of such orderis question which concerns the parties inter-se.Thepower of the Court to invoke contempt jurisdiction, isnot, in any way, altered by the rights of the parties inter-se vide Bank of Baroda vs. Sadruddin Hasan Daya –[(2004) 1 SCC 360].passing the order of which contempt is alleged and thecontemnor; questions as to executability of such orderis question which concerns the parties inter-se.Thepower of the Court to invoke contempt jurisdiction, isnot, in any way, altered by the rights of the parties inter-se vide Bank of Baroda vs. Sadruddin Hasan Daya –[(2004) 1 SCC 360].

15. When party which is required to comply with theterms or directions in an order has not done so withinsuch time as stipulated in the order, two options areavailable to the party which was required to complywith such order:(a) give an explanation to the Court as to thecircumstances due to which the party could not complywith the order of the Court;terms or directions in an order has not done so withinsuch time as stipulated in the order, two options areavailable to the party which was required to complywith such order:(a) give an explanation to the Court as to thecircumstances due to which the party could not complywith the order of the Court;

(b) seek for further time to comply with the order of theCourt. If delay has occurred in complying with theterms of an order and the party which was to complywith the order has not resorted to either of the twoaforestated options, then, the party responsible for delayin compliance, may be held to have committed-Court. If delay has occurred in complying with theterms of an order and the party which was to complywith the order has not resorted to either of the twoaforestated options, then, the party responsible for delayin compliance, may be held to have committed-contempt; vide State of Bihar vs. Subhash Singh [(1997) 4 SCC 430][(1997) 4 SCC 430]

15.1 Further, the decision of this Court in Maruti Udyogvs. Mahinder C. Mehta AIR 2008 SC 309 suggests thatirrespective of whether or not decree is executable, thevs. Mahinder C. Mehta AIR 2008 SC 309 suggests thatirrespective of whether or not decree is executable, the

question to be considered by this Court in determiningwhether case for contempt has been made out was,whether, the conduct of the contemnor was such aswould make fit case for awarding punishment forcontempt of Court.16. Applying the legal propositions discussed supra, tothe facts of the case at hand, we are of the view that theconduct of the respondent/contemnors is such aswould justify invocation of contempt jurisdiction ofthis Court. Not only have the contemnors unreasonablydelayed and defaulted in compliance of the orders of thisCourt without explaining the cause for such default, orseeking extension of time for compliance; but they havealso sought to avoid compliance of the order, even aftertaking benefit of the extended time period granted forcompliance of the same. The contemnors cannot, at thisjuncture, claim that the requirement of deposit was notmandatory, but directory and therefore noncompliancethereof would not constitute contempt.”

22.The conduct of the Defendant in the present case prima facie amountsto contempt. Issue notice to show case to the Defendant’s proprietor Mr. ArunSharma as to why contempt action ought not to be initiated.

23.In view of the settled legal position as set out above and in order toensure the strict compliance with the orders of the Court, as also, the timelyexecution of the present decree, this Court deems it appropriate to appoint aLocal Commissioner to visit the premises of the Defendant to ensurecompliance of the orders of this Court by removing any hoardings and anyother billboards, signage, display material, brochures, packaging, andliterature bearing the mark ‘CROSSFIT’.

24.Accordingly, Ms. Meghna Jandu, Advocate [M:[REDACTED]], isappointed as the Local Commissioner to visit the premises of the Defendant.

The mandate of the Local Commissioner is set out below:

i)The Local Commissioner shall visit the premises of theDefendant - RTB Gym and Fitness Centre, which is the proprietaryconcern of Mr. Arun Sharma, located at Plot No-77, Sheetla MataRoad, Opposite Paradise Garden, Sector 05, Gurugram 122001,New Delhi.

ii)The Local Commissioner shall remove and take down anyinfringing billboards, advertisements, signage and/or hoardings usingthe mark ‘CROSSFIT’ or any other mark which is identical,deceptively similar or confusingly similar to the Plaintiff’s mark‘CROSSFIT’.

iii)The Local Commissioner shall prepare complete inventoryand seize any stock of infringing products, as also, any packagingmaterial, stationery, promotional material, invoices, brochures, or anyother literature or items, bearing the mark ‘CROSSFIT’, or any othermark which is identical, deceptively similar or confusingly similar tothe Plaintiff’s mark ‘CROSSFIT’.

iv)The seized products and material shall be handed over to thePlaintiff on superdari, subject to the undertaking that the saidproducts shall be kept in safe custody, and shall not be utilized in anymanner, without the permission of the Court.

v)The Local Commissioner is permitted to take the assistance of thelocal SHO of the concerned area, if required;

vi)The Local Commissioner is permitted to take photographs andvideograph the proceedings, if required.vii)Two representatives of the Plaintiffs, including an advocate,

are permitted to accompany the Local Commissioner for the purposeof facilitating the inspection;

viii) The present order shall be communicated by the LocalCommissioner to the Defendant. Copy of the order shall be served bythe Local Commissioner upon the Defendant at the time of executionof the Local Commission.

25.The fee of the Local Commissioner is fixed at Rs.1,50,000/- excludingtraveling and other miscellaneous expenses. The said fee shall be borne by thePlaintiff.

26.The Local Commission shall be executed within period of two weeks.The report of the Local Commissioner shall be filed within two weeks afterthe execution of the Local Commission.

27.The proprietor of the Defendant, Mr. Arun Sharma, shall remainpresent in Court on the next date of hearing. Let Reply to the show cause befiled within six weeks.

28.List before the Court for hearing on the show cause for contempt on29th November, 2022.

29.Order Dasti.

SEPTEMBER 6, 2022

PRATHIBA M. SINGH, J