Two famous brands – Under Armour and Aditya Birla recently had a dispute before the Delhi High Court regarding their trademark in sportswear apparel, where Justice C Hari Shankar passed an injunction against Aditya Birla and restrained any usage of the concerned registered mark of Under Armour.
Brief Background
Under Armour, Inc, (plaintiff) is a company having its registered office in Maryland USA officially entered Indian Market in 2017. It incorporated its Indian subsidiary under the name “Under Armour India Trading Pvt. Ltd.” in October 2018, and the first physical store opened in India in 2019.
Under Armour holds various registrations under the Trade Marks Act 1999 including the concerned trademarks “UNDER ARMOUR” and “UA” registered under Classes 18, 25 and 28 with effect from 24th February 2009 and 12th January 2011 respectively.
Submissions
Mr. Rishi Bansal, counsel for the plaintiff submitted before the Court the registered marks – UNDER ARMOUR/UA/UNDR ARMR by Under Armour are infringed by Aditya Birla Fashion & Retail Ltd. (defendant) on identical goods, using the marks “STREET ARMO/SA/STRT ARMR”.
While doing so, it is alleged that the defendant is using, for its ― “ARMOR” part of the mark, a font, style and lettering which is deceptively similar to that used by the plaintiff for ― “ARMOUR”. Even while using ― “STREET ARMOR” as a device, the plaintiff alleges that the defendant uses a similar font and lettering for ― “ARMOR” while using a disproportionately small font and lettering for STREET.
The similarities are demonstrated in the plaint in the following manner:
Mr. Bansal, counsel for plaintiff (Under Armour) argued that ARMOUR is the primary component of UNDER ARMOUR and that infringement occurred because the defendant’s disputed marks also terminate with ARMOUR. That, however, does not justify the Court limiting the scope of examination to the latter, ARMOUR, part of the plaintiff’s marks, when the entirety is asserted. The Court’s role is to determine whether taken as a whole, the defendant’s marks infringe the plaintiff’s or whether, by using the abovementioned marks, the defendant tried to pass off its goods as those of the plaintiff.
The defendant’s counsel, Mr. C.M. Lall to support the argument that “ARMOUR” is descriptive, replied on three facts –
- The name “Under Armour” was coined in 1996 to be used as a mark on a specific kind of T-shirt made of moisture-wicking synthetic fabric, that conforms to the description of “under armour”.
- He further stressed the dictionary meaning of “armour”, which is “clothing, often made of metal that soldiers wore in earlier times to protect themselves”.
- He submitted that the plaintiff while registering the mark “UNDER ARMOUR” mentioned the items in the class as “protective clothing”.
Court’s Verdict
The Court rejected the arguments that the learned Senior Counsel, Mr. Lall on behalf of Aditya Birla (defendant) that the argument did not put much concentration on comparing the complete marks of Under Armourf to those of Aditya Birla.
The main essence of Under Armour’s submission was that ARMOUR is the dominant part of UNDER ARMOUR and as the defendant’s impugned marks too end with ARMOUR, causing an infringement. Now, the question arises how ARMOUR is making the dominant part of the plaintiff’s mark?
Though it bears no reiteration that while a mark is to be considered in its entirety, it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular portion or element of a mark is in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-a-vis other constituent elements may be termed a ‘dominant mark’.
Under this principle, the Court identifies one mark or the other as dominant, and here the Court agreed to the fact that the plaintiff‘s and defendant‘s marks are used for identical goods is of considerable significance in this regard. A customer of average intelligence and imperfect recollection may feel confused or by the defendant, of a closely similar manner of abbreviating the STREET ARMOR mark to STRT ARMR,
The Court admitted that there are chances that a consumer may assume that there is a relationship between the mark of the defendant and the earlier mark of Under Armour, which is a ‘prima facie’ infringement. Moreover, following the ruling by the Supreme Court of India, Under Armour can not claim a monopoly on the suffix ARMOUR, therefore the marks are compared as a whole, instead of in their perspective parts.
The Court did not find any merit to the point raised by Mr. Lall and said that “Armour” when used in the context of clothing, especially of sportswear, can not be treated as descriptive, as sports wears are not armorial. However, considering the complete marks in consideration, both parties are using the respective marks on identical goods, which indicates an infringement.
In the Court’s preliminary opinion, the defendant’s marks are recognised as infringing the plaintiff’s marks under Section 29(2)(b)9 of the Trade Marks Act when evaluated as complete marks.
The Court held that on the aspect of infringement and passing off, in favour of Under Armour on merits, an injunction must follow.
The court restrained the defendant from using the impugned marks and logos mentioned or any other mark which is confusingly or deceptively similar to the said marks of the plaintiff, in respect of apparel or any other goods or services which may be regarded as similar or allied to the goods in respect of which Under Armour uses its marks.
The Court on the aspect of infringement and passing off, in favour of UnderArmour, allowing an injunction, restraining Aditya Birla from dealing in or using the impugned marks and logos as listed here – STREET ARMOR, STRT ARMR, ARMR, ARMOR, SA, ARMR DEPT, SA DEPT, STREET ARMOR CO., STRT ARMR LAB or any other trademarks/labels that are identical with and/or deceptively similar to plaintiff’s registered UNDER ARMOUR, UNDR ARMR or UA word marks or device marks or any other mark which may confuse the concerned marks registered by Under Armour, for apparel or any other products or services that is similar or allied to the products or services that the plaintiff uses its marks.
The application for an injunction and passing off stands allowed accordingly.
Appellate Order
Aditya Birla requested the Court that the order to bring into effect after two weeks, to avail the appellate remedies, but the Court did not agree as Order XLI Rule 5(2) of the Civil Procedure Code does not allow to put a stay on its own judgement
Aditya Birla Fashion filed an appeal and challenged this Judgment before the Divisional 2 Judge Bench of the Delhi High Court.
The Appellate Court however, after a hearing, made it clear that there is no case made out on behalf of Aditya Birla. The Court expressed shock at the obvious dishonesty in the adoption of the mark Street Armor by Aditya Birla. The Court believed that Under Armour is a huge international brand having substantial and senior rights in India also and the marks of Aditya Birla should be restrained.
At this stage, counsel appearing for Aditya Birla informed the court that they have instructions to give an undertaking that they shall cease the brand altogether. The court has given time of 3 weeks to Aditya Birla to file an undertaking in these terms.
The matter has been listed for May 22nd, 2023.
