UAA
Introduction
"Our similarities bring us to a common ground; our differences allow us to be fascinated by each other" said Tom Robbins remarking on Universe and the need for peaceful coexistence, but little did he realize that similarity either in whole or in part might often breed contempt. In the recent case of UnderArmour Inc v. Anish Agarwal Anr.1, the Hon'ble Delhi High Court highlights this intrinsic issue and an essential aspect of trademark jurisprudence concerning similarity/deceptive similarity of trademarks and draws attention to the never ending issue concerning the prominent part of a trademark and registration of part of a trademark.
Brief Facts
In the present case, UNDER ARMOUR Inc., (hereinafter referred as Plaintiff) is in the business of manufacturing and selling of apparel/T-shirts. The Plaintiff is the registered proprietor of the mark UNDER ARMOUR, and ARMOUR formative marks such as ARMOURFLEECE, ARMOURBLOCK, etc., under Class 25 in India and has also obtained registration for the part of its mark "ARMOUR" in foreign Jurisdiction such as EU, Canada, Switzerland, USA etc., (It is relevant to mention here that the Plaintiff did not register or file for the sole mark "ARMOUR" in India).
Registrations owned by Plaintiff in India for UNDER ARMOUR and its formative marks in class 25 are as under:
Sl.No
Application Number
Mark
Class
Status
1.
1788950
UNDER ARMOUR
18,25, 28
Registered
2.
3970909
ARMOURVENT
25
Registered
3.
3970911
ARMOURFLEECE
25
Registered
4.
3970912
ARMOURBLOCK
25
Registered
5.
1317481
25
Registered
The Defendant (Anish Agarwal Anr.) in the present case is involved in the selling and manufacturing of clothing and footwear under class 25 and used the marks "AERO ARMOUR" , , , The Plaintiff learnt about the use of the impugned marks by the Defendant and filed a trademark infringement suit against the Defendant in the Hon'ble Delhi High Court alleging that the Defendant's use of the mark "AERO ARMOUR" was deceptively similar to the Plaintiff' "UNDER ARMOUR" marks for clothing and accessories.
Contentions of Plaintiff
The Plaintiff argued that the Defendant's adoption of the impugned marks was dishonest which was evidenced in the following aspect:
The Plaintiff further submitted the following contentions:
Contentions of the Defendant
Contentions in the Rejoinder
Analysis of the Court
The Hon'ble Court did not pass an injunction order in favour of the Plaintiff for the following reason:
Plaintiffs Device Mark
Defendants Device Mark
Based on the submission made by the Defendant the Court imposed the following limitations on use of the impugned marks by Defendant:
Conclusion
The wise old saying of 'A stitch in time saves nine' perfectly captures the essence of proactive brand protection. The judgement rendered by the Hon'ble Delhi High Court in the present case not only sheds light on the importance of registration of part of a trademark but also highlights the necessity for brands to carefully consider their brand protection and enforcement strategies and the importance of timely and comprehensive trademark registration to safeguard brand integrity.
SSR Comments
Few things that brands can consider when filing Trademark Application are as follows:
Footnotes
1 CS(COMM) 843/2023
2 AIR 1963 SC 449
3 2023 SCC OnLine Del 4809
For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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