Delhi High Court
Under Armour, Inc. vs Anish Agarwal & Anr. on 29 May, 2024
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 1st April, 2024
Pronounced on : 29th May, 2024
+ I.A. 23362/2023 in CS(COMM) 843/2023
UNDER ARMOUR, INC. ..... Plaintiff
Through: Mr. Rishi Bansal, Mr. Mankaran Singh
and Mr. Rishav Gupta, Advocates.
versus
ANISH AGARWAL & ANR. ..... Defendants
Through: Mr. Rajshekhar Rao, Sr. Advocate
alongwith Mr. Samik Mukherjee, Mr.
Manosij Mukherjee, Ms. Meherunissa
Anand Jaitley and Mr. Rajarshi Roy,
Advocates.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
JUDGMENT
%
I.A. 23362/2023 (Application under Order XXXIX Rules 1 & 2, CPC)
1. This application has been filed by the plaintiff under Order 39 Rule 1&2
Code of Civil Procedure, 1908 (hereinafter referred to as "CPC") as part of the
suit filed inter alia under Sections 134 and 135 of the Trade Marks Act 1999
(hereinafter referred to as "the Act") seeking an injunction restraining the
defendants and all those acting for, or on their behalf, from selling,
manufacturing, marketing and dealing in any manner with the wordmark
"AERO ARMOUR" and / or "AERO ARMR" and logos
or any other trademarks/ labels/ tradename/ domain name which may be
identical with and/ or deceptively similar to trademarks of the plaintiff, and
other attendant relief.
2. While summons were issued in the suit on 23rd November 2023, when
notice of this application was also issued, ex parte ad interim injunction was
not granted at that stage. Subsequently, pleadings were completed in the
application and counsels for the parties placed their respective submissions.
Factual Background
3. The case of the plaintiff essentially arises from their proprietorship in the
registered trademark "UNDER ARMOUR" and the device mark
both registered inter alia under class 25. Plaintiff claims to
have been founded in the year 1996, by a young 23-year-old football player Mr.
Kevin Plank, and is primarily engaged in the business of manufacture,
distribution and sale of variety of goods including casual apparel, sports apparel
and other related products. The brand 'UNDER ARMOUR' was founded by
Mr. Plank, who decided to commence business from Washington D.C. The
unique selling proposition (hereinafter referred to as "USP") of Mr. Plank was
to make a T-shirt using moisture - wicking synthetic fabric to keep athletes cool,
dry, and light. Subsequently over the years, UNDER ARMOUR started gaining
reputation in America and later worldwide. In 2004, plaintiff filed its first
trademark application in India for the mark under class 25.
In 2017, UNDER ARMOUR officially entered Indian market through Amazon
Fashion, and in 2019 launched its first retail store at DLF Promenade Mall in
Vasant Kunj, Delhi. As of 2021, plaintiff claims to have more than 23 stores of
UNDER ARMOUR in 16 cities, with plans to expand further, along with a
strong online presence. The tabulation of registrations in UNDER ARMOUR
family of marks has been provided by plaintiff as under:
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
4. It is an admitted position that plaintiff never applied for registration of
just the word "ARMOUR" in India, however, plaintiff has registrations in
trademark / labels inter alia "ARMOUR" in other jurisdictions in the world
which have been tabulated by the plaintiff as under:
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
5. It is claimed that ARMOUR is an essential, dominant and distinguishing
feature of plaintiff's trademarks / labels and has been granted registration
outside India, in isolation and separate from registrations of "UNDER
ARMOUR". Plaintiff also claims registrations in various "ARMOUR"
formative marks such as "ARMOURBLOCK", "ARMOURVENT",
"ARMOURBITE", "ARMOURFLEECE", etc.
6. Plaintiff's grievance is against defendant no.1 who is engaged in business
of manufacture and sale of identical goods i.e. clothing and footwear using the
marks
(hereinafter referred to as "impugned marks"). Defendant no. 2 is the company
where defendant no.1 is the Director, and has adopted the mark "AERO
ARMOUR" as part of their trade name.
Submissions on behalf of the plaintiff
7. Counsel for the plaintiff therefore contends that not only the impugned
marks are an exact replica of plaintiff's marks and similar in terms of overall
get-up, structure and representation, but also defendants' marks are written in
same manner, in same font, as further depicted under:
Plaintiff's mark Respondent's mark
8. Plaintiff came to know about defendant no.1 in the month of October,
2022, when defendants' applied for registration of the mark "AERO
ARMOUR" under class 25, under application no. 5398267, which was
subsequently opposed by the plaintiff. A counter statement was filed by
defendant to the notice of opposition by plaintiff. In the said counter statement
defendant claimed the marks to be dissimilar. Defendants are also operating a
domain name/website "www.aeroarmour.store" on which their goods are
available for sale. Some illustrative screenshots of defendants' impugned goods
are extracted as under:
9. Counsel for the plaintiff contends that it was a dishonest adoption by
defendants which was evident from inter alia the following aspects:
9.1. Firstly, that the manner in which the marks have been used on some of
the products was engineered to cause confusion amongst minds of consumers.
Representative comparison of the same is extracted as under:
9.2. Secondly, defendant also used a shortform "ARMR" as part of "AERO
ARMR" which is evident from pictures above. This, it was contended, was a
peculiar and significant aspect of use by plaintiff on its own product.
9.3. Thirdly, as depicted above, plaintiff's font style was copied by the
defendants.
9.4. Plaintiff's counsel therefore submitted that - firstly, the mark "UNDER
ARMOUR" has to be seen as a whole and defendants' impugned marks have to
be compared for the purposes of deceptive similarity; secondly that the said
marks were being used for identical goods i.e. apparels and therefore the
likelihood of confusion was evident; thirdly, the possibility of association
would arise considering the extremely distinct reputation of plaintiff's marks
which includes the word "ARMOUR" and this aspect was covered under
section 29 of the Act ; fourthly, the initial interest test for likelihood of confusion
would be applicable as a customer with imperfect recollection, would be in a
'sense of wonderment' as to whether defendants' product are a part of plaintiff's
portfolio; fifthly, considering that the pricing of defendants' products was much
lesser than that of plaintiff's products (e.g. Rs. 799/- as opposed to Rs.2,000/-
for a similar product) it amounted to dilution of plaintiff's brand; sixthly, the
plaintiff had been diligent in opposing registrations of other "ARMOUR" based
marks in India for which details have been provided, through oppositions,
rectifications and injunction suits; seventhly, Amritdhara principles as
enunciated by the Hon'ble Supreme Court in Amritdhara Pharmacy v. Satya
Deo Gupta, AIR 1963 SC 449, would apply where the Hon'ble Supreme Court
had stated that the overall impression is the critical factor and rejected the plea
of the opposing party that plaintiff was attempting to monopolise "DHARA" ;
eighthly, that the anti-dissection rule which is applied to composite marks is
not antithetical to the dominant mark rule as was stated by Division Bench of
this Court in South India Beverages Pvt. Ltd. v. General Mills
Marketing, 2014 SCC OnLine Del 1953; ninthly, the word "UNDER
ARMOUR" is a coined word and was arbitrarily adopted with respect to a
product and is therefore entitled to a high degree of protection; tenthly, balance
of convenience was in favour of the plaintiff since plaintiff was a 2004
registrant, while defendants was January, 2022 adopted and applied under on
'proposed to be used' basis.
Submissions on behalf of the defendant
10. Mr. Rajshekhar Rao, Senior Counsel for the defendant, refuted the
submissions of plaintiff's counsel inter alia on the following grounds:
10.1. Trademark registrations of plaintiff in India, basis which plaintiff rests its
case, is of "UNDER ARMOUR" (word and device). There is no registration in
India of the word "ARMOUR", despite that plaintiff had applied for registration
in other countries and has obtained registrations, as evident from the table
above. Therefore, the plaintiff doesn't have any dominance or proprietorship
over the word "ARMOUR".
10.2. To the application for registration by plaintiff in trademark "UNDER
ARMOUR", examination report was issued by Trademark Registry on 19 th
August, 2020 citing several marks of "ARMOUR". In the reply filed by the
plaintiff to examination report at para 3, it was submitted that cited marks were
visually and structurally different form the plaintiff's trademark "UNDER
ARMOUR" when viewed as a whole. Reliance was also placed on Cadila
Health Care Limited v. Cadila Pharmaceuticals Limited, (2001) 5 SC 243,
decision of the Hon'ble Supreme Court stating that marks must be compared as
a whole. Thus, it was contended that the plaintiff had already taken a position
that their mark had to be seen as a composite whole and therefore were estopped
from canvassing a position contrary to the same. More importantly, the said
reply to the examiner's report, was not placed on record by the plaintiff as part
of their plaint and therefore amounts to gross suppression.
10.3. The goods of the defendant were essentially military inspired clothing
and different from the sports and casual apparel which were being sold by the
plaintiff under their brand. It was claimed that the mark was honestly adopted
by defendant in the context that defendant No.1 was an aeronautical pilot who
had started sole proprietorship in the year 2020 under the name "The
Accessories" and had received a UDYAM registration certificate. Later, by the
end of 2021, he realised that there was a huge market for apparel based on theme
of aviation, army, defence forces, patriotism in India and therefore
conceptualised the brand "AERO ARMOUR", after ascertaining that there was
no other trader using the said trademark. The work "AERO" was chosen from
the word Aeronautics to signify defendant's own background of being a
qualified pilot, and the word "ARMOUR" was chosen for metal coverings
historically worn in battle by soldiers, to connote the theme of defendant's
products which were inspired by the armed forces. He further conceived a logo
that combines the element of shield, airplane and stripes
indicative of military and aviation ranks, and was part of brand's core theme.
Defendant no.2 was a company incorporated in year 2022 with defendant no.1
being one of directors of the said company.
10.4. Defendant no.1 had filed an application for registration of its trademark
"AERO ARMOUR" under No.5398267 in class 25 on 6th April, 2022 on
'proposed to be used basis'. This application is currently pending due to
oppositions filed by the plaintiff herein, along with certain third parties.
10.5. The defendant has registered the device mark , on a
'proposed to be used basis' under No. 5398244 in Class 25, as of the date 06 th
April, 2022.
10.6. Screenshots of nature of products which the defendants were supplying
under their trademark are extracted as under:
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
10.7. Reference was also made to website of defendants, which showed the
manner in which these kinds of products were offered, with particular emphasis
on T-shirts indicating a specific regiment of Indian Army.
10.8. There was no reference to "UNDER ARMOUR" on the T-shirts and in
fact, most of T-shirts even did not even have the brand "AERO ARMOUR"
inscribed on top that could cause confusion. It was admitted that certain
products may have had the tradename "AERO ARMOUR" on the top, but
substantially many of these T-shirt products or apparels did not have the mark
"AERO ARMOUR" on top even though it was being used as part of their trade
name.
10.9. The defendants have tabulated a list of marks containing the word
"ARMOUR", which were before the Trademark Registry in class 25 to assert
the point that "ARMOUR" was a common mark which had been registered in
that same class 25 as a word or as a device by multiple brands and therefore,
plaintiff cannot claim distinctiveness in the same mark. The said table is as
under:
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
By:MANISH KUMAR
Signing Date:08.06.2024
11:19:16
10.10. Attention was drawn to a registration provided for one of the marks
"ARMOUR Casual Wear" where registration was given on the basis of a
disclaimer that "this trademark shall give no right to the exclusive use of the
word ARMOUR except as substantially shown in the label". It was thus
contended that the Registrar wanted to maintain purity of the Register and
therefore had provided the said disclaimer in that no party could claim
proprietorship of word "ARMOUR" exclusively. The said mark is extracted as
under:
10.11. The same was case with the device mark where
disclaimer was provided as "the mark as a label should be used in whole as a
composite mark and there is no exclusive right over the descriptive words in the
logo".
10.12. The defendants had established huge reputation and goodwill in their
products since the theme was based on patriotism and love for India. The
tagline the brand is "WEAR YOUR VALOUR" and "WEAR YOUR PRIDE"
thereby celebrating the idea of heroism and bravery. The website
https://www.aeroarmour.store was launched as also promotional campaign on
social media pages. Defendants' products were available on various online
shopping site such as Amazon India and Myntra. Due to this niche category of
products, affordable pricing, high quality, defendants' claim that their brand
achieved wide reputation and has served more than 1,50,000 customers across
India. It was the first fashion brand to create a collection inspired inter alia
from Kargil War, the Operation Bright Star of the Indian Air Force. Defendants
have supplied products to TATA Aerospace and Defence for the C-295
program, where TATA is manufacturing aircrafts in collaboration with the
Indian Air Force. Defendants have been participating in multiple events such
as Aero India, Chennai Defence Expo, Indian Kargil Marathon Honour Run and
Dubai Air Show. They have also supplied products to the Aviation Cell of IIT,
Kharagpur and to the Indian Institute of Management. They claim to be official
fashion partners of the Hollywood movie 'Devotion' in India and have been
awarded the "Emerging Brands Award" by Shiprocket.
10.13. As regards the plaintiff contention that defendants were using "ARMR",
in order to infuse confusion in the market and associate with plaintiff's products,
it is submitted in the reply that the word "ARMOUR" had been reduced to
"ARMR" in few designs to match the letter count with "AERO", to give a better
symmetry and notwithstanding, the plaintiff did not have right over "ARMR",
it would not cause any confusion.
10.14. As regards plaintiff's contention that they were using the mark on the
sleeves in a similar manner as that of plaintiff's product, it is submitted that
similar brand placements by various parties is a common industry practice and
not unique to any particular brand. Some examples were presented as an
illustration, as under:
10.15. It was claimed that plaintiff's and defendants' products were based on
different categories which is discernible from the images on their websites.
While plaintiff's products were relatable to various categories of sports such as
running, golf, basketball; defendants' products were relatable to categories of
aviation, nautical, travel.
Plaintiff's products Defendants' products
10.16. There is huge difference in pricing of the products in that plaintiff's
products are priced around Rs. 2,000/- while average price point of defendants'
product is around Rs.799/- per T-shirt. This significantly different pricing
reflects different positions of brands in different segments of market, which
would not confuse an average consumer with average intelligence and imperfect
recollection.
10.17. Balance of convenience is clearly in favour of defendants since while
plaintiff came to know about impugned mark in October 2022, as per their own
averments, suit was filed in November 2023 and as per principles of Wander
Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, inunction ought not to follow.
10.18. It is further stated that even as regards copyright, artistic works in both
the marks were totally different, as is evident from a comparison of device
marks itself.
10.19. Reliance was also placed on certain additional documents which were
filed on 5th March, 2024, including WhatsApp chats between the defendant's
promoters and that of their designers. The chat shows that brand "AERO
ARMOUR" was suggested since it was an armour for flight gear and included
within it both aviation and armour category which was 80-85% of their
business.
10.20. Decision of this Court in Under Armour v. Aditya Birla Fashion dated
20th April, 2023, 2023 : DHC : 2711 in which this Court had injuncted
defendant's mark "STREET ARMOUR", was distinguished by the senior
counsel, particularly relying on para 6.6.
10.21. Reliance was placed on section 17 of the Trademarks Act to assert that
exclusive right to the proprietor of a trademark is for use of trademark as a
whole and does not confer any right in part of the said trademark.
10.22. In support of his arguments, senior counsel for defendant relied upon
inter alia the following decisions:
a) Registrar of Trademarks v. Ashok Chandra Rakhit, (1955) SCC
OnLine SC 12, in particular to para 8, for the exaggerated claims
made by proprietors of trademarks, in spite of the fact that parts of
their trademarks have been disclaimed;
b) M/S Gufic Ltd. & Anr. v. Clinique Laboratories LLC & Anr.,
(2010) SCC OnLine Del 2322, in particular on para 24, to point out
that price differential between products being vast, no consumer
would confuse one for the other;
c) PP Jewellers Pvt. Ltd. v. PP Buildwell Pvt. Ltd., (2010) SCC OnLine
Del 932, in particular para 23, relying on Kerly's Law of Trademarks,
in that if some parts of mark were common, the people who would
know the distinguishing characteristics of the marks, would at all be
deceived or not;
d) Kirorimal Kashiram Marketing v. Shree Sita Chawal Udyog Mill,
(2010) SCC OnLine Del 2933, on arbitrary adoption of marks;
e) Vardhman Buidltech Pvt. Ltd. v. Vardhman Proprieties, (2016)
SCC OnLine Del 4738, in particular para 8, in that the word
Vardhman was itself of non-distinctive character and common to
trade and therefore no exclusive right arose in favour of plaintiffs;
f) Soothe Healthcare Pvt. Ltd. v. Dabur India Ltd., (2022) SCC
OnLine Del 2006, in that the word 'Super' was widely used for
various products and no claim cam be made in that regard;
g) Hamdard National Foundation v. Sadar Laboratories, (2022) SCC
OnLine Del 4523, in particular para 42, where the Court stated that
principle of arbitrary adoption, as in Kirorimal Kashiram (supra),
was worded in right terms and has to be read restrictively and in
conformity with the anti-dissection rule;
h) Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinod Bhai Jagwani & Anr.,
(2022) SCC OnLine Del 3370, in particular para 40, for reliance made
on prosecution history of the plaintiff;
i) Prasar Bharti v. Dish T.V. (India), (2024) SCC OnLine Del 1694,
where the commonly used part of the marks 'Dish' was separated out
from the distinguishing part of the whole mark;
j) Premier SPG & WVG Mills Pvt. Ltd. v. Football Association
Premier League Ltd., (2024) SCC OnLine Del 358, where Premier
being part of competing marks was not to stand in the way of
registration of a mark which have Premier only as part of it;
k) Pidlite Industries Ltd. v. Sanjay Jain & Anr., 2024:DHC:2369,
where the word 'KWIK' was held has part of the mark over the
petitioner would not have an exclusive right thereof.
Submissions in Rejoinder
11. Counsel for the plaintiff responded to the submissions by senior counsel
for defendants, and submitted as under:
11.1. Plaintiff had been alert in opposing the marks which were deceptively
similar to plaintiff's marks and included the word "ARMOUR" in India. A list
of such actions was adverted to and tabulated by plaintiff, as under:
11.2. These actions were prior to filing the suits. In situations where trademarks
had already been registered, defendants filed legal proceedings, as evident from
the decision by a Coordinate Bench of this Court in Aditya Birla Fashion
(supra).
11.3. The issue which plaintiff was canvassing was of overall comparison of
composite mark of plaintiff as well as defendants i.e. "UNDER ARMOUR" v.
"AERO ARMOUR", and the issue of "ARMOUR" being a common to the trade
or being registered by the persons would not be relevant. In this regard reliance
was placed on South India Beverages (supra) which held that anti-dissection
rule is not inconsistent with dominant mark rule. The dominant part of the mark
was "ARMOUR" since there was a full "ARMOUR" family of marks including
"ARMOURVENT", "ARMOURFLEECE", "ARMOURBITE",
"ARMOURBLOCK" etc.
11.4. Reliance was placed on Amritdhara principles, which were under Section
10 the Trademarks Act, 1940, which is now succeeded by section 29 of the Act
and includes the element of association with the earlier mark, to contend that an
overall impression was important.
11.5. As regards any allegations of delay by plaintiff in pursuing their right to
the mark, it was stated that mark was applied by the defendant only on 06th April
2022, was opposed on 25nd October 2022 by the plaintiff. The expansion of
business by defendant, pursuant to that was at their own peril. Reliance was
placed on the decision in Aditya Birla (supra).
11.6. As regards estoppel that plaintiff has taken a position on the composite
mark in reply to examination, reliance was placed on decision of this Court in
AO Smith Corporation & Anr. V. Star Smith Export Pvt. Ltd. & Anr., 2024:
DHC: 2366, to state that estoppel operates only inter se between the parties.
11.7. As regards price difference between the products, this nature of plea of
defendants had been rejected in South India Beverages (supra) and in any event
it leads to dilution of plaintiff's trademark.
11.8. Reliance was placed on initial interest confusion test as enunciated in
Google LLC v. DRS Logistics (P) Ltd., 2023 SCC OnLine Del 4809, since the
goods were identical that too of casual apparel.
11.9. Regards actions against other ARMOUR brands, it was stated that they
had been diligent in pursuing the business which were expanding, and when it
started to impact their businesses. There was no obligation on them to pursue
marks simply because they were on the Trademark Register. ARMOUR use has
become distinctive with plaintiff's brand. In fact, they had filed rectifications as
well including against "ARMOUR Heavy".
11.10. The decision in Vasundhra (supra) was distinguished on the ground that
Vasundhra was generic whereas in this case, ARMOUR is not generic but is a
coined word and has assumed distinctiveness in favour of the plaintiff.
Moreover, the plea of the defendants that ARMOUR is not distinctive, is belied
from the fact that they themselves have applied for registration of mark AERO
ARMOUR and they are estopped from contending the same.
11.11. In support of their arguments the plaintiff relied upon inter alia the
following decisions:
a) Pankaj Goel v. Dabur India Pvt Ltd., 2008 SCC OnLine Del 1744,
on the aspect of dishonest adoption of a similar mark;
b) Laxmikant v. Patel v. Chetan Bhai Shah, (2002) 3 SC 65, in that
confusion was the real test and innocent adoption, even if considered,
would not be defence;
c) South India Beverages (supra), on the issue of price difference and
consistency of rule of anti-dissection and rule of dominant mark;
d) Raman Kwatra v. KEI Industries, 2023:DHC:0083, on the issue that
estoppel operates inter se parties and not otherwise;
e) Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories, 1964 SCC OnLine SC 14, on essential features of a
mark being adopted;
f) Midas Hygiene Industries v. Sudhir Bhatia, (2004) 3 SCC 19, on
issue of delay cannot preclude plaintiff from asserting their rights;
g) Hindustan Pencils Private Limited v. India Stationery Products
Company, AIR 1990 Del 19, on the issue of dishonest adoption.
h) Swiss Bike Vertriebs Gmbh Subsidiary of Accell Group v. Reliance
Brands Limited (RBL), 2024:DHC:1884, where phonetic similarity
in a trademark was injuncted.
i) AO Smith (supra) where there were two similar marks were
compared and defendant's mark was injuncted.
Analysis
12. Assessment of Confusion in Trademarks
Through the years, courts have formulated and propounded various tests for a
comparative assessment of trademarks in infringement/passing off cases, to
somehow rationalize the inherent subjectivity in this assessment. Some of these
tests have been a result of pure judicial innovation, and some have nuanced an
already existing formulation. Though it would be impossible to give an
exhaustive list of these tests which are scattered all over trademark
jurisprudence, an attempt is being made under to provide an illustrative list of
such tests, with their sources, and then to categorize the core elements of
assessment into recognizable factors.
13. Illustrative list of tests for assessment of trademark confusion
- The "Pianotist Test" articulated by Parker J. in Pianotist Co. Ltd.'s
application, 23 RPC 774 at 777, was cited with approval by the Hon'ble
Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC
OnLine SC 13;
- The consumer test of "man of average intelligence with imperfect
recollection" was articulated by the Hon'ble Supreme Court in Corn
Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC
OnLine SC 11;
- In K.R. Chinna Krishna Chettiar v. Shri Ambal & Co., (1969) 2 SCC 131,
the Hon'ble Supreme Court propounded in favour of phonetic similarity,;
- The Supreme Court laid down the "added matter test" in Kaviraj Pandit
Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR
1965 SC 980;
- This Court clarified the interplay between "dominant mark rule" and
"anti-dissection" rule in South India Beverages Pvt. Ltd. v. General Mills
Marketing, 2014 SCC OnLine Del 1953;
- The test of "initial interest confusion" was referred to by this court in
Baker Hughes Ltd. v. Hiroo Khushalani, 1998 SCC OnLine Del 481;
- This Court in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender &
Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, cited with approval the
"Sleekcraft Factors", the "Polaroid Factors" and the "DuPont
Factors", which form part of American trademark jurisprudence;
- In the case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683,
the Hon'ble Supreme Court held that a prior user has a superior right
over a registered owner;
- The Supreme Court laid down the "Cadila Principles" for determining
likelihood of confusion in passing off cases, in Cadila Healthcare Ltd.
(supra);
- This Court in Pankaj Goel v. Dabur India Ltd., 2008 SCC OnLine Del
1744, held that onus remains on the defendant to show significant
business turnover, of other marks on the Register;
- This Court in AMPM Fashions (P) Ltd. v. Akash Anil Mehta, 2021 SCC
OnLine Del 4945, highlighted the relevance of an inter-dependent and
holistic approach to balancing various considerations between marks and
consequently laid down the "Global Appreciation Test";
- The Hon'ble Supreme Court in Midas Hygiene Industries (P) Ltd. v.
Sudhir Bhatia, (2004) 3 SCC 90, held that mere delay in bringing an
action is not sufficient to defeat grant of injunction;
- This Court in Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd.,
2016 SCC OnLine Del 4738, in relation to part of a mark, held that
registration does not confer any exclusive right;
- The Hon'ble Supreme Court in Registrar of Trade Marks v. Ashok
Chandra Rakhit Ltd., 1955 SCC OnLine SC 12, held that registration of
the mark may not grant any statutory right or monopoly with respect to
that part;
- This Court in Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v. Sita
Chawal Udyog Mill, 2010 SCC OnLine Del 2933, held that arbitrary
adoption of a word mark with respect to a product with which it has no
correlation is entitled to a very high degree of protection;
- This Court in Automatic Electric Ltd. v. R.K. Dhawan & Anr., 1999 SCC
OnLine Del, held that a party was estopped from claiming lack of
distinctiveness, if itself had sought a proprietary claim and monopoly
over the expression;
- This Court in P.P. Jewellers (P) Ltd. v. P.P. Buildwell (P) Ltd., 2010 SCC
OnLine Del 932, articulated the importance of distinguishing factors,
where some parts of two marks are the same;
- In the decision of Hindustan Pencils Pvt Ltd. v. India Stationery Products
Co., 1989 SCC OnLine Del 34, this Court focussing on dishonest
adoption, stated that an infringer adopting someone else's mark must be
aware of the consequences that would follow;
- In the judgment of Neon Laboratories Ltd. v. Medical Technologies Ltd.,
(2016) 2 SCC 672, the Hon'ble Supreme Court coined the term "first in
the market" test;
- This Court in Schering Corpn. v. Alkem Laboratories Ltd., 2008 SCC
OnLine Del 760, provided that when the price difference of the products
is of a high magnitude, the likelihood of deception` would also be greatly
reduced;
- In the decision of Nandhini Deluxe v. Karnataka Coop. Milk Producers
Federation Ltd., (2018) 9 SCC 183, the Hon'ble Supreme Court held that
the proprietor of a trademark cannot enjoy monopoly over an entire class
of goods, if not using the said trademark in respect of certain goods (being
different products) falling under the same class;
14. Factors for assessment of trade mark confusion - The Guideposts
These and various other tests and factors have been propounded from time to
time by various courts. Rather than trundling through these innumerable
parameters, factors and nuances scattered all over the jurisprudence, this Court
has attempted to categorize them into intelligible, thematic silos. Each category
strings together and collates factors, any or all of which may be needed for
assessment of trademark confusion. Needless to state these factors are not
exhaustive, but may serve as useful guideposts when embarking on a journey
of trade mark assessment. These categories and factors are as under
A. Strength of the marks
A.1 Registration and user details
A.2 History of enforcement
A.3 Evidence of use
A.4 Sales and advertising
A.5 Portfolio of goods where mark is used
A.6 Disclaimers in registrations
A.7 Well-known marks
A.8 Other similar/identical marks in use/ registered/common to trade
B. Similarity between marks
B.1 As to word and/or device
B.2 As to appearance, layout, get-up, trade dress
B.3 As to representation in commerce
B.4 As to phonetic similarity
B.5 As to overall impression
B.6 As to connotation
B.7 Extent of similarity/dissimilarity
B.9 Anti-dissection rule
B.9 Dominant mark rule
B.10 Part of mark
C. Proximity of goods and services
C.1 Identical/ similar goods and services
C.2 Allied/cognate goods and services
C.3 Category of goods/services, registration classes
C.4 Specialized goods/services e.g. pharmaceutical products
C.5 Price point of goods/services
C.6 Uniqueness of goods/services
C.7 Quality of goods/services
D. Confusion
D.1 Nature of confusion
D.2 Point of sale confusion
D.3 Post purchase confusion
D.4 Initial interest confusion
D.5 Extent of confusion - substantial or de minimis
D.6 Duration of confusion - concurrent use
D.7 Evidence of confusion
E. Consumer
E.1 Socio/Economic category
E.2 Sophistication of consumer
E.3 Knowledge, awareness, access to information
E.4 Market presence of goods/services
E.5 Trade channels
E.6 Likelihood of expansion of the business
F. Intent
F.1 Defendant's good/bad faith
F.2 Dishonest adoption
F.3 Prior association with plaintiff
F.4 Prior knowledge of plaintiff's marks
F.5 Monopolizing intent of plaintiff
F.6 Arbitrary adoption of marks/origin of the mark
F.7 Close competitors
F.8 Publici juris
G. Conduct
G.1 Delay
G.2 Estoppel
G.3 TM oppositions
15. Having heard submissions of counsel for parties, perused the pleadings
and documents on record, this Court is of the opinion that plaintiff is not entitled
to injunction in terms of what it seeks, inter alia for the following reasons:
15.1. There were some deliberations on whether the dominant part of plaintiff's
marks was "ARMOUR". Counsel for plaintiff in his initial submissions had
focussed on this aspect and pointed out to the registrations of "ARMOUR" in
their favour in other jurisdictions of the world, though not registered in India. It
was emphasized that "ARMOUR" had been registered since it was an essential,
dominant and distinguishing feature of plaintiff's trademark "UNDER
ARMOUR" and therefore granted registrations outside India. Plaintiff also
claimed ownership of various formative marks with the word 'ARMOUR' such
as "ARMOURBLOCK", "ARMOURVENT", "ARMOURBITE",
"ARMOURFLEECE", etc.
15.2. This assertion, however, leads to some difficulty for the plaintiff, since
plaintiff never chose to register "ARMOUR" in India, despite having applied
for and having obtained registrations in other countries. Plaintiff's application
for registration of "UNDER ARMOUR" was faced with an examination report
citing several marks containing "ARMOUR". In its reply to the examination
report, plaintiff stated that the cited marks were visually and structurally
different when compared to plaintiff's trademark "UNDER ARMOUR" being
viewed as a whole. Having taking this position and not registered "ARMOUR",
the plaintiff cannot claim proprietorship of part of the mark.
15.3. This aspect has been dealt with by a decision of this Court in Vardhman
Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738,
where this Court has held that registration itself does not grant exclusive right
in a part of the mark. Relevant extracts of the said judgment are as under for
ease of reference:
"8. On a plain reading of Section 15(1), it is evident that
where a proprietor of a trade mark claims to be entitled to
the exclusive use of any part thereof separately, he is
permitted to apply to register the whole and the part as
separate trade marks. In the present case, the respondent is
the proprietor of the label/mark which includes the words
'VARDHMAN PLAZAS'. The respondent is claiming
exclusivity in respect of the word 'VARDHMAN'. It is clear
that he had the option to make an application for
registering the word 'VARDHMAN' as a separate trade
mark. Assuming that he could have had the word mark
registered, it is an admitted fact that the respondent made
no such application. Section 17 of the said Act makes it
clear when a trade mark consists of several matters, as it
does in the present case, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken
as a whole. There is no dispute that the label/mark, taken
as a whole, is the exclusive property of the respondent. The
learned counsel for the appellants has no quarrel with this
at all. The issue arises when the respondent claims
exclusive right to a part of the label/mark and particularly
to the word 'VARDHMAN'. Section 17(2) is a non-obstante
provision [vis-à-vis sub-section(1)], which stipulates that
when a trade mark contains any part which is not the
subject matter of a separate application by the proprietor
for registration as a trade mark or which is not separately
registered by the proprietor as a trade mark or contains
any matter which is common to the trade or is otherwise of
a non-distinctive character, the registration thereof shall
not confer any exclusive right in the matter forming only a
part of the whole of the trade mark so registered. In the
present case, neither has the respondent separately
registered 'VARDHMAN' as a trade mark nor has any such
application been made. Furthermore, the word
'VARDHMAN' is itself of a non-distinctive character and
is not only common to this trade but to several other
businesses. Consequently, the registration of the
label/mark which contains the words 'VARDHMAN
PLAZAS' does not confer any exclusive right on the
respondent insofar as a part of that mark, namely,
'VARDHMAN' is concerned.
9. We now come to Section 28 of the said Act which deals
with the rights conferred by registration. It is clear that by
virtue of Section 28, the registration of a trade mark, if
valid, gives to the registered proprietor of the trade mark
the exclusive right to the use of the mark in relation to the
goods or services in respect of which the trade mark is
registered and, importantly, to obtain relief in respect of
infringement of the trade mark in the manner provided by
the Act. What is important to notice is that Section 28(1)
begins with the words 'subject to the other provisions of
this Act'. In other words, Section 28 would have to be read
as subject to Section 17 of the said Act. Consequently, in
our opinion the registration of the label/mark in favour of
the respondent, which includes the words 'VARDHMAN
PLAZAS', does not confer an exclusive right on the
respondent insofar as part of the mark, which has reference
to the word 'VARDHMAN', is concerned.
10. The learned counsel for the respondent, as pointed out
above, sought to take the benefit of Section 29(9) of the said
Act. That provision stipulates that where 'distinctive
elements' of a registered trade mark consist of or include
words, the trade mark may be infringed by the spoken use
of those words as well as by their visual representation and
the reference in Section 29 to the use of a mark is to be
construed accordingly. First of all, the stress in the said
provision is on the words 'distinctive elements'. Neither is
'VARDHMAN' nor the word 'PLAZAS' a distinctive
element of the trade mark. The word 'VARDHMAN' has not
been registered as a trade mark nor could it be because it
is commonly used and, as pointed out above, is the name of
Lord Mahavir. Secondly, the word 'PLAZAS' is also
commonly used and cannot be appropriated by the
respondent. Therefore, the distinctive elements are neither
the word 'VARDHMAN' nor the word 'PLAZAS'. But, the
two words taken together - 'VARDHMAN PLAZAS' - is a
distinctive element of the label/mark. Thus, if the appellants
were to use words 'VARDHMAN' and 'PLAZAS' in
conjunction, then the respondent may have had a right to
restrain them from using the same. We are, therefore, of the
view that Section 29(9) of the said Act also does not come
in aid of the respondent."
(emphasis added)
15.4. Notably, during submissions in rejoinder counsel for plaintiff stressed
that it was actually the overall comparison of the composite mark "UNDER
ARMOUR" that they were pressing in their challenge to defendant's mark
"AERO ARMOUR", and that "ARMOUR" being common to trade would
therefore not be relevant, even though the 'anti-dissection-rule' is not consistent
with the 'dominant mark rule' as per South India Beverages (supra). The
overall reliance of the plaintiff on the decision of this Court in CS (COMM)
41/2023 dated 20th April 2023, in Aditya Birla Fashion (supra) also does not
comes to its aid, on this issue. Even though the decision in that matter was in
their favour, the Single Judge quite clearly analysed plaintiff's plea for treating
"ARMOUR" as dominant part of their mark and rejected it. In this regard the
following paragraphs from that decision, extracted hereinbelow, may be
relevant:
"4.5.3 This principle would apply, however, where, of the
various parts of a mark, a Court could identify one or the
other as dominant. I see no reason to regard
ARMOUR/ARMOR, either in UNDER ARMOUR or in
STREET ARMOR, as the dominant part of the mark. The
principal test to determine whether any one part of a mark
is dominant is, unquestionably, the test of whether, when
the mark is seen by a customer of average intelligence and
imperfect recollection, any one part of the mark would
impress itself more strongly on his psyche than the others.
Viewed empirically and as a mark per se, and in the
absence of any material or evidence to indicate to the
contrary, I am unable to convince myself that UNDER, or
STREET, is any less dominant, in UNDER ARMOUR or
STREET ARMOR, than ARMOUR or ARMOR,
respectively. The plea of the plaintiff that ARMOUR
constitutes the dominant part of the plaintiff's
UNDERARMOUR mark, therefore, does not prima facie
commend itself to acceptance."
(emphasis added)
15.5. Therefore, this leads the Court to examine the marks in toto and not
dissected. This is also in consonance with the Amritdhara Principles where
there overall similarity has to be considered. Incidentally, in Amritdhara
(supra) itself, it was stated that 'all the circumstances of the case must be
considered' taking a foothold on the observations of Parker, J. in Pianotist Co.
Application extracted under, which continues to be the applicable test:
"You must take the two words. You must judge them, both
by their look and by their sound. You consider the goods
to which they are to be applied. You must consider the
nature and kind of customer who would be likely to buy
those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is
likely to happen if each of those trade marks is used in a
normal way as a trade mark for the goods of the respective
owners of the marks."
15.6. The circumstances that one needs to look at while assessing similarity,
has also been collated in what is called a 'Global Appreciation Test' adverted
to by this Court in ABROS Sports International (P) Ltd. v. Ashish Bansal,
2024 SCC OnLine Del 3165, relying upon AMPM Fashions (P) Ltd. v. Akash
Anil Mehta, 2021 SCC OnLine Del 4945, and extracted as under:
"37. Essentially, the Division Bench, in relying on the
principles enunciated by the Hon'ble Supreme Court
in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals
Ltd., (2001) 5 SCC 73, and the factors laid down by the
American Courts, was underscoring that a holistic global
consideration and assessment needs to be made rather
than giving excessive weightage only to isolated factors for
assessment of infringement and/or passing off. This theme
of integrated, holistic assessment, rather than a
compartmentalized approach is echoed by a Single Judge
of this Court in AMPM Fashions (P) Ltd. v. Akash Anil
Mehta, 2021 SCC OnLine Del 4945, in particular in para
61, 62, where the Court while applying the "global
appreciation" test held as under:
"61. When applying the test, one has to make a "global
appreciation". The "global appreciation" test requires
one to examine, inter alia, the following facets, albeit,
holistically as they are inter-dependent:
(i) The degree of visual, aural and/or conceptual similarity
between the marks.
(ii) The overall impression created by the marks.
(iii) The impact that the impugned marks have on the
relevant public i.e., the matter should be considered
through the eyes of an average consumer, who would buy
or receive the goods or services.
(iv) The distinctive character that the infringed mark has
acquired i.e. either because of the mark per se or on
account of reputation that it has enjoyed in the public
space.
(v) That the average consumer has an imperfect
recollection.
(vi) The degree of similarity between the goods or services,
which are purveyed under the rival marks.
62. It needs to be emphasized that, while evaluating the
aforesaid facets, one has to bear in mind the
global/composite appreciation test, which enjoins that
each of them is inter-connected and explicable, as a whole.
In other words, an integrated rather than a
compartmentalized approach is required to be adopted.
The proclivity of giving weight to one facet as against the
other facet(s) is to be abjured. It is only an overall
evaluation of all facets which helps in ascertaining,
whether or not there is a likelihood of
confusion. Likelihood of confusion would arise, if there is
a risk of the relevant consumers/public believing that the
goods or services offered by the defendants originate from
the plaintiff or in some way, are economically or
commercially linked to the plaintiff."
(emphasis added)
15.7. This involves an assessment of various factors, not only one. All aspects
must be considered e.g. strength of the marks, similarity between the marks,
intent, nature of goods, possibility of confusion, nature of the consumer and
market presence. This aspect has already been elaborated upon above in para
13 and 14.
15.8. Taking a cue from this holistic appreciation test, it is to be appreciated
that the kernel and soul of defendant's mark, target consumer, market presence,
USP (unique selling proposition) is of casual wear which was inspired by icons
from the Indian Armed Forces, informally termed as 'military inspired
clothing'. Defendant no.1 was an aeronautical pilot who started his enterprise
in 2020 and later realising that there was huge market based on the theme of
Armed Forces, fuelled by Indian patriotic fervour, decided to conceptualise the
brand as 'AERO ARMOUR'. The defendant states that he checked the TM
Register and found no mark which was the same; he decided to go ahead and
seek registration. Even though that statement would be subject to the scrutiny
of trial, the unique combination of these two words seems to be adopted for a
reason: AERO refers to aeronautical part of Armed Forces while ARMOUR is
more associated with the military aspect reminding of the armours worn by
armies in the historical past, and in fact in more sophisticated form even today.
Some evidence was placed by the defendant through a WhatsApp chat to bear
this out through a WhatsApp conversation between them and their creative
designer; this chat stating that 'the brand would be associating with the aviation
and armour category' which was 80-85% of their business.
15.9. This armed forces inspiration continues to resonate through the rest of
the business proposition adopted by the defendant - firstly the design of their
logo . The device adopted by them combines the element of a
shield, airplane and stripes to indicate military and aviation ranks and was
reflective of their theme. Notably this device had absolutely
no similarity with that of the plaintiff's device, which was essentially.
. Considering that the plaintiff has laid a lot of stress on
their device as well, in other decisions passed by this Court, there was no
attempt by the defendant to come close to the same and in fact, the plaintiff
conceived a completely new logo, which was distinctive in its own right. The
font used for their brand as part of the logo is also quite dissimilar to the font
used by the plaintiff.
15.10. Secondly, the tagline for the brand was, "WEAR YOUR VALOUR" and
"WEAR YOUR PRIDE" thereby celebrating the idea of heroism and bravery.
15.11. Thirdly, the designs which are on various goods, particularly t-shirts, are
mostly relatable to the armed forces. An illustrative extraction of the same is as
follows:
15.12. Fourthly, a part of defendant's supply is to institutions which are
associated with armed forces or aeronautical/ defence industry, e.g. TATA
Aerospace, Aviation Cell of IIT, and to the Indian Institute of Management.
15.13. Fifthly, the promotional outreach of defendant's products is also based
on the same theme.
The defendants have participated in multiple events such as Aero India,
Chennai Defence Expo, Indian Kargil Marathon Honour Run and Dubai Air
Show etc., clearly showing that their whole business proposition was to
associate with this theme.
15.14. The facts and circumstances as stated in the para above regarding their
unique business proposition, also prima facie absolves the defendant from
plaintiff's allegation of dishonest adoption. It is quite evident from all the
factors stated above that the defendant had tried to carve out a niche for itself in
a unique, distinctive, thematic category of apparel, not intending to generalize
the same and was aligned in all respects with that central theme. This is not the
usual behaviour of somebody who was dishonestly adopting. In fact, prima
facie, it seems that the defendant did generally conceive something afresh and
unique and has now, along the way, due to the use of the word ARMOUR, along
with AERO, has become a defendant in this suit.
15.15. The plaintiff's contention that dishonest adoption was evident. from the
use of "ARMR" by the defendant, could have had some relevance if seen in
isolation. However, as the counsel for defendant clarified that "ARMR" was
used on a very few products initially, and since has not been used, as also an
undertaking was given in the Court by the counsel, that they do not intend to
use "ARMR" at all, or at the very least, would give that up, during the suit
proceedings.
15.16. The second aspect of dishonest adoption was of the use of the brand
"AERO ARMOUR" in a similar manner on the sleeves of their t-shirts, pictures
of which have been extracted in para 10.13 above. Yet again, those pictures in
isolation give the impression that it is defendant's intent to copy in order to cause
confusion. However, it has to be appreciated in the context of other factors as
well. While counsel for the defendant did point out that using a brand on the
sleeve of a t-shirt is normal in the industry, it is not as if this usage was across
all their products in order to cause confusion for every customer. In any event,
the defendant would be better restrained from using their brand in a manner that
is placed similarly to that of the plaintiff's brand, in particular, this example of
the use on the sleeve.
15.17. Senior Counsel for the defendant pointed out that mostly the defendant's
apparel does not have the mark "AERO ARMOUR" on the front of the apparel,
in a prominent place, which is different from what the plaintiff does, regards his
mark "UNDER ARMOUR". Plaintiff's mark, or the device, is the main aspect
of their apparel, as is evident from these pictorial examples,
15.18. A very critical differentiation, even though the larger category of goods
of the plaintiff and defendant are identical, is that while the plaintiff is selling
sports apparel, the defendant's goods are casual apparel and even though at first
blush it seems like an overlap, this does create different market channels and
different sets of consumers who would purchase these products. As has been
elaborated in Mountain Valley Springs India Pvt. Ltd. v. Baby Forest
Ayurveda Pvt. Ltd., 2024 SCC OnLine Del 3665, by this Court where the
element of sophisticated consumer has been underscored, this aspect assumes
importance. A customer who will purchase a defendant's product will be doing
it for its very Indian iconic theme, imbued with a patriotic fervour or a desire to
associate with the 'Indian-ness'. The plaintiff's goods on the other hand are
categorized for sports and are not nationalistic in their theme or flavour but more
designed to appeal to a sportsperson or a person involved in sports. These two
kinds of consumers mindsets, even though may be resident in the same person,
will involve a different purchasing journey, as also highlighted in Mountain
Valley (supra), today's customer is not an ignorant customer but an informed
customer who chooses, even if faced with transient wonderment, to find out
what the differences could be.
15.19. The plaintiff's attempt to monopolise the apparel market by excluding
all possible brands which have "ARMOUR" in it, is not acceptable, particularly
when the Registrar even for other "ARMOUR" marks has provided a
disclaimer. Monopolies have been eschewed, even as per the Supreme Court
in Ashok Chandra Rakhit (supra), relevant paras of the said judgment are
extracted as under:
"8. The third thing to note is that the avowed purpose of
the section is not to confer any direct benefit on the rival
traders or the general public but to define the rights of the
proprietor under the registration. The registration of a
trade mark confers substantial advantages on its
proprietor as will appear from the sections grouped
together in Chapter IV under the heading "Effect of
Registration". It is, however, a notorious fact that there is
a tendency on the part of some proprietors to get the
operation of their trade marks expanded beyond their
legitimate bounds. An illustration of an attempt of this kind
is to be found in In re Smokeless Powder Co.'s Trade
Mark [LR (1892) 1 Ch 590 : 9 RPC 109] . Temptation has
even led some proprietors to make an exaggerated claim
to the exclusive use of parts or matters contained in their
trade marks in spite of the fact that they had expressly
disclaimed the exclusive use of those parts or matters.
Reference may be made to Greers Ltd. v. Pearman and
Corder Ltd. [(1922) 39 RPC 406] commonly called the
"Banquet" case. The real purpose of requiring a
disclaimer is to define the rights of the proprietor under
the registration so as to minimise, even if it cannot wholly
eliminate, the possibility of extravagant and unauthorised
claims being made on the score of registration of the trade
marks.
xxx xxx xxx
14. It is true that where a distinctive label is registered as
a whole, such registration cannot possibly give any
exclusive statutory right to the proprietor of the trade mark
to the use of any particular word or name contained
therein apart from the mark as a whole. As said by Lord
Esher in Pinto v. Badman [8 RPC 181 at p 191] :
"The truth is that the label does not consist of each
particular part of it, but consists of the combination of
them all".
Observations to the same effect will be found also in In re
Apollinaris Company's Trade Marks [LR (1891) 2 Ch 186]
, In re Smokeless Powder Co., In re Clement and Cie [LR
(1900) 1 Ch 114] and In re Albert Baker & Company and
finally in the Tudor case referred to above which was
decided by Sargant, J. This circumstance, however, does
not necessarily mean that in such a case disclaimer will
always be unnecessary. It is significant that one of the facts
which give rise to the jurisdiction of the tribunal to impose
disclaimer is that the trade mark contains parts which are
not separately registered. It is, therefore, clear that the
section itself contemplates that there may be a disclaimer
in respect of parts contained in a trade mark registered as
a whole although the registration of the mark as a whole
does not confer any statutory right with respect to that
part."
(emphasis added)
15.20. Most importantly, the pricing of plaintiff's and the defendant's products,
is entirely different. While average price of plaintiff's products is around
Rs.2,000/-, the defendant's products are around Rs.799//- per t-shirt. This
reflects that the brands operate in different segments and yet again, one must
advert to this aspect in relation to the sophisticated consumer as also a different
consumer. The issue of a different price point was highlighted by Courts inter
alia in GUFIC Ltd. v. Clinique Laboratories, LLC, 2010 SCC OnLine Del
2322:
"24. Another important circumstance is that the price
differential between the two products is so vast that no
consumer of products of either the appellant or the
respondent would confuse one for the other..."
15.21. Also, when parts of marks are common, discernment requires consumers
to look at the dissimilar parts of the products. This aspect was highlighted in
P.P. Jewellers (P) Ltd. v. P.P. Buildwell (P) Ltd., 2010 SCC OnLine Del 932:
"23. Observations from Kerly's Law of Trade Marks and
Trade Names, Fourteenth Edition page 590 are also
relevant:
"In considering all of the authorities below, it must be
borne in mind that they were decided in relation to passing
off or under older Trade Mark Acts, with the said, the
general principles are as follows:
(1) It must not be assumed that a very careful or intelligent
examination of the mark will be made;
(2) But on the other hand, it can hardly be significant that
unusually stupid people, "fools or idiots", or a "moron in
a hurry" may be deceived.
(3) If the goods are expensive or important to the
purchasers and not of a kind usually selected without
deliberations, and the customers generally educated
persons, these are all matters to be considered.
(4) If some parts of the mark are common, one must
consider whether people who know the distinguishing
characteristics of the opponents, mark would be
deceived."
(emphasis added)
15.22. There is complete lack of evidence of actual confusion by consumers
and no document was filed by the plaintiff in this regard. The assertion that there
is confusion is merely theoretical or speculative in nature.
15.23. Balance of conveniences also in favour of the defendant having
commenced their business since 2021 and having achieved a reasonable
turnover as well as a reasonable presence considering that they are suppliers to
reputed institutions.
15.24. Regards the decision in Aditya Birla (supra) which related to plaintiff's
brand Under Armour and the defendant's brand Street Armour, there are
distinguishing factors, aside from the basic tenet that each matter has to be
decided on its own facts. Essentially, these are that Street Armour was used in
a manner where the 'Street' part was imperceptibly small font size as compared
to 'Armour' and the court stated that the defendant was "straining every nerve
to approach as close to the plaintiff's mark". In the fact stated above that
certainly may not be the case for the defendant here. Secondly, the subcategory
of goods in Aditya Birla (supra) was of sportswear for both the plaintiff and the
defendant, which is not the case here, as has been pointed out above. Thirdly,
there was an extensive use of the short form "ARMR" in the case of Street
Armour (supra) in that following abbreviated versions of marks were used,
"STREET ARMOR", "STRT ARMR", "ARMR", "ARMOR", "SA", "ARMR
DEPT", "SA DEPT", "STREET ARMOR CO", "STRT ARMR LAB" which is
not the case here as is noted above.
16. Conclusion
16.1. For these reasons, above, the plaintiff is not entitled to the injunction it
seeks. Needless to state this assessment above, is prima facie, and issues will
have to be finally decided after trial. However, there are some limitations being
imposed on the defendants on the manner and use of their mark on their goods,
based on submissions made during the hearing, and to excise out aspects of use
that may lead to likelihood of confusion.
16.2. Defendants' counsel during arguments submitted, on instructions, that
they are not using ARMR anymore, though used on some products earlier to
arrive at a symmetrical abbreviation with AERO. The defendants will be bound
by this statement and will not use "ARMR" in any form or manner on any
product of theirs, during the pendency of this suit.
16.3. Defendant's counsel also submitted that placement on the sleeve of the
"AERO ARMOUR" mark was an infrequent and isolated use and they do not
intend to insist on the same. The defendants would be bound to this statement
and will not use their mark in the manner depicted in para 9 above, during the
pendency of this suit.
16.4. Defendant's counsel also submitted that they are only in casual wear and
not sportswear, as distinct from the plaintiffs who are into sportswear.
Defendants would be held bound to this statement and will not venture into
sportswear and not market their goods as sportswear, during the pendency of
this suit.
16.5. It was also submitted that predominantly the defendant don't use just the
word mark on the front of their apparel, akin to the plaintiff's use, but only the
device mark. Defendants would be held bound to this statement and will not
use, on the outside layer of the apparel, their word mark "AERO ARMOUR",
but are permitted to use their registered device mark , during the
pendency of this suit.
17. Before leaving this discussion, it may be instructive to extract some
relevant passages from McCarthy on Trademarks Vol 4, which also inform this
opinion of the court:
"Purchasers of retail services do not engage in trademark
dissection. Legal surgery, in which trademarks have parts
enhanced or discarded, is of little aid in determining the
effect of design marks on purchasers who merely recollect.
The scalpel is employed by lawyers, not purchasers" (23:
58 page 370).
"A side-by-side comparison is improper, if that is not the
way buyers see products in the market.....the Court must
determine purchasing public's state of mind when
confronted by somewhat similar trade names singly
presented" (23: 59 pages 371 - 373).
"To arrive at a realistic evaluation of the likelihood of
buyer confusion, the court must attempt to recreate the
conditions under which prospective purchasers make their
choices" (23: 57 pages 366)
18. Accordingly, the plaintiff is not entitled to the injunction it seeks in its
application under Order XXXIX Rules 1 & 2, CPC being I.A. 23362/2023
which is disposed of, with only specified limitations on the defendant, as
directed in para 16.2-16.5 above.
19. Application stands disposed of in terms of these directions.
20. Judgment be uploaded forthwith on the website of this Court.
ANISH DAYAL, J.
APRIL, 2024/sm/ig/kp
