Who Wore The ARMOUR Better?

In a recent judgment, the Delhi High Court refused Under Armour Inc. an injunction but imposed limitations on Anish Agarwal & Anr. (the defendant) for the mark ARMOUR.

In the year 1996, Mr. Kelvin Plank, a 23-year-old football player, founded Under Armour, Inc. ("the Plaintiff"), which is primarily engaged in the business of manufacture, distribution and sale of a variety of goods, including casual apparel, sports apparel and other related products. Mr. Kelvin Plank also founded the mark UNDER ARMOUR and commenced his business in Washington, D.C., which subsequently gained a reputation in America and thereafter worldwide. The founder's unique selling proposition was to make t-shirts using moisture-wicking synthetic fabric to keep athletes cool, dry, and light.

The plaintiff is the registered proprietor of the marks "UNDER ARMOUR" and the device mark both in Class 25 ("plaintiff's marks").

In 2004, the plaintiff applied for its first trademark in India, being in Class 25. Thereafter, in 2017, the plaintiff, under its mark UNDER ARMOUR, officially entered the Indian market through Amazon Fashion and, in 2019, launched its first retail store at DLF Promenade Mall in Vasant Kunj, Delhi. As of 2021, the plaintiff claimed to have more than 23 stores under the mark UNDER ARMOUR spread across 16 cities with further expansion plans that included a strong online presence.

The plaintiff is also the registered proprietor of the marks ARMOUR, UNDER ARMOUR, and their formative marks in several jurisdictions worldwide. However, it is an admitted position that the plaintiff never applied for registration for the word mark ARMOUR in India.

Issue

The plaintiff's essential grievance is that Defendant No. 1, which is engaged in the manufacture and sale of identical goods, i.e. clothing and footwear, is using the marks ("impugned marks") and that Defendant No. 2, a company of which Defendant No. 1 was the Director, adopted the mark "AERO ARMOUR" as part of its trade name.

Plaintiff's Submissions

The plaintiff inter alia submitted that:

1. The impugned marks are exact replicas are similar in terms of the overall get-up, structure and representation of the plaintiff's marks, and that the defendant's device mark is written in the same manner and font as the plaintiff's mark ;
2. The plaintiff had gained knowledge of Defendant No.1 in October 2022, when the defendant applied for the registration of the mark AERO ARMOUR under no. 5398267 in class 25, which the plaintiff had subsequently opposed and the defendant, in its counter statement, had claimed the marks to be dissimilar;
3. The defendants were also operating the domain name/website www.aeroarmour.store on which their goods are available for sale;
4. There was dishonest adoption of the impugned marks by the defendant that was evident from the following and as depicted in the image herein below:
   1. How the marks are used on some products was engineered to confuse consumers.
   2. The defendant used the short form "ARMR," a peculiar and significant aspect of the plaintiff's products, as part of its "AERO ARMR."
   3. The defendant had also copied the plaintiff's font style.
      
      

The plaintiff further submitted that:

1. The mark UNDER ARMOUR must be seen as a whole, and the defendant's impugned marks must be compared for deceptive similarity;
2. The marks were being used in respect of identical goods, namely apparel, hence the likelihood of confusion was evident;
3. The plaintiff's marks that contained the word ARMOUR had an extremely distinct reputation; hence, there existed a possibility of association with the plaintiff;
4. The initial interest test for the likelihood of confusion is applicable as a customer with imperfect recollection would be in a 'sense of wonderment' as to whether the defendant's product is a part of the plaintiff's portfolio;
5. The Defendants' product was priced at a much lower cost than the cost of the plaintiff's product (g. Rs. 799 vs Rs. 2000), thereby amounting to dilution of the plaintiff's brand;
6. The plaintiff was diligent in protecting its trademark and had filed several opposition, rectifications and suits against other ARMOUR marks in India;
7. The plaintiff relied upon the principle laid down by the Hon'ble Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, and submitted that the overall impression was the critical factor.
8. The plaintiff relied upon South India Beverages Pvt. Ltd. v. General Mills I.A. 23362/2023 in CS(COMM) 843/2023 Page 14/65 Marketing, 2014 SCC OnLine Del 1953, which stated that the anti-dissection rule, which is applied to composite marks is not antithetical to the dominant mark rule;
9. The word "UNDER ARMOUR" was coined and adopted arbitrarily in respect of a product and was therefore entitled to a high degree of protection;
10. The balance of convenience favoured the plaintiff as the plaintiff was a prior registrant of 2004, compared to the defendant, who had an adoption application of 2022 on a proposed to-be-used basis.

Defendants' Submissions

The defendants inter alia submitted that:

1. The plaintiff's case was based on its word and device mark UNDER ARMOUR registered in India and that the plaintiff had obtained registrations of its word mark ARMOUR in several countries but had not registered the word mark ARMOUR in India. Hence, the plaintiff had no dominance or proprietorship of the word ARMOUR;
2. There was gross suppression by the plaintiff as it had not filed its reply to the examination report issued by the Trade Mark Registry under the mark UNDER ARMOUR wherein the plaintiff had differentiated its mark from the various prior cited ARMOUR marks on the ground that the marks when viewed as a whole were visually and structurally different from the plaintiff's trade mark UNDER ARMOUR. The defendant relied upon Cadila Health Care Limited v. Cadila Pharmaceuticals Limited, (2001) 5 SC 243 for the same and submitted that the plaintiff was estopped from taking a contrary position from its stand that its marks should be seen as a composite whole.
3. The defendant's goods were military-inspired clothing, different from the plaintiff's sports and casual apparel.
4. The defendant had honestly adopted the mark, as in 2020, Defendant No. 1, an aeronautical pilot, started a sole proprietorship under the name "The Accessories" and received a UDYAM registration certificate. Thereafter, it was in 2021 that the defendant realised the potential of the apparel market based on the theme of aviation, the army, defence forces, and patriotism in India. It was only after ascertaining that no other trader was using the same trademark the defendant conceptualised the brand AERO ARMOUR, wherein the word AERO was derived from the word Aeronautics to signify the Applicant's background of a qualified pilot and the word ARMOUR was chosen for metal coverings historically worn in battle by soldiers, thereby connoting the theme of defendant's products that was inspired by the armed forces. Further, Defendant No. 1 also conceived a logo that combined the elements of a shield, aeroplane and stripes indicative of military and aviation ranks, which was part of the brand's core theme.
5. Defendant No. 2 was a company incorporated in 2022, and Defendant No. 1 was one of its directors.
6. Defendant No. 1 applied for the mark AERO ARMOUR under no.5398267 in class 25 on April 06, 2022, on a proposed to-be-used basis, pending due to the opposition filed by the plaintiff and other third parties.
7. The Defendant, as of April 06, 2022, was the registered proprietor of the device mark on a 'proposed to be used basis' under No. 5398244 in Class 25.
8. The defendant referred to its website, which exhibited several products with a particular emphasis on t-shirts indicating a specific regiment of the Indian Army. 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 apparel did not have the mark "AERO ARMOUR" on top even though it was being used as part of their trade name.
9. The defendant enlisted the marks containing the word ARMOUR existing on the records on the Registry and submitted that the mark ARMOUR was not distinctive; it was a common mark in Class 25 and was registered as a word or device mark by multiple brands. The defendant also drew the Court's attention to third-party marks that were filed with disclaimers, which gave no exclusive rights to use the word ARMOUR.
10. The defendant inter alia further submitted that its mark had acquired a huge reputation and goodwill as its products were based on patriotism and love for India; that its products were promoted on the defendant's website https://www.aeroarmour.store and were available for sale on Amazon India and Myntra; that its products were of high quality, affordable, and had served more than 1,50,000 customers across India; that it was the first fashion brand to create a collection inspired by Kargil War, the Operation Bright Star of the Indian Air Force; and had participated in multiple events such as Aero India, Chennai Defence Expo, Indian Kargil Marathon Honour Run and Dubai Air Show; that it had supplied its products to the Aviation Cell of IIT, Kharagpur and the Indian Institute of Management; that it was the official partners of the Hollywood 'Devotion'; and that it was awarded the "Emerging Brands Award" by Shiprocket.
11. The defendant submitted that the plaintiff did not have right over "ARMR" and that there existed no likelihood of confusion in its abbreviation of ARMR, as the word ARMOUR was reduced to ARMR to match the letter count with "AERO" and to give better symmetry.
12. The defendant presented several examples and submitted that the placement of a mark on the sleeves was not unique to any particular brand but a common industry practice carried out by several brands.
    
    
13. The defendant also submitted that the plaintiff's products were relatable to various sports categories, such as running, golf, and basketball. In contrast, the defendants' products were relatable to categories of aviation, nautical, and travel, which were different categories and were discernible from their websites' images.
14. The significantly different pricing of the plaintiff's products and the Defendants' products reflected the different positions of brands in different segments of the market, which would not confuse an average consumer with average intelligence and imperfect recollection and that the balance of convenience was in favour of the defendant as the plaintiff gained knowledge of the defendant's mark in October 2022 but had filed the suit in November 2023.

Submissions of the Rejoinder

The plaintiff inter alia submitted that:

1. The plaintiff was vigilant and regularly filed opposition against several marks in India, including the word ARMOUR.
2. Moreover, the plaintiff's issue was the overall comparison of the mark, namely UNDER ARMOUR v AERO AMROUR. Therefore, the issue of ARMOUR being common to the trade or being registered by several persons was irrelevant. The plaintiff relied upon South India Beverages, which held that the anti-dissection rule is not inconsistent with the dominant mark rule and that the dominant part of the mark was "ARMOUR" as there existed an entire ARMOUR family of marks inter alia "ARMOURVENT", "ARMOURFLEECE", "ARMOURBITE", "ARMOURBLOCK".
3. The plaintiff also relied upon the principles laid down in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, which held that the overall impression was important.
4. With regard to delay, the plaintiff submitted that the defendant applied for its mark on April 06, 2022, and the plaintiff opposed the same on October 25, 2022.
5. With regard to estoppel, the plaintiff had taken a position on the composite mark in reply to the examination report, and estoppel was only applicable inter se between the parties.
6. The plaintiff submitted that the pleas of the price difference were rejected by South India Beverages, leading to the mark dilution of its trademark.
7. The plaintiff, because the identical goods were casual apparel, placed its reliance on the initial interest confusion test as enunciated in Google LLC v. DRS Logistics (P) Ltd., 2023 SCC OnLine Del 4809.
8. The plaintiff was vigilant and took suitable actions when the business expanded and began affecting its business. The plaintiff was not obligated to take action against every mark on the Register.
9. The plaintiff also submitted that ARMOUR was coined and assumed distinctiveness in its favour, and the defendant's plea that ARMOUR was not distinctive is belied as the defendant itself had applied for registration of the mark AERO ARMOUR. Hence, the defendant was estopped from contending the same.

Court Analysis and Order

The Court held that the plaintiff was not entitled to an injunction inter alia for the following reasons:

1. The Court, while deliberating if ARMOUR was the dominant part of the plaintiff's mark UNDER ARMOUR, observed that the plaintiff had not applied for registration of the mark ARMOUR in India despite having applied and obtained registrations of the same in other countries and; that the plaintiff was also the proprietor of various formative marks such as ARMOURBLOCK, ARMOURVENT, ARMOURBITE.
2. The Court observed that the plaintiff, in its reply to the examination report, stated that when compared as a whole, the prior cited marks were visually and structurally different from the plaintiff's mark UNDER ARMOUR. Given the plaintiff's stand and the absence of a registration of the mark ARMOUR and whilst relying upon the ruling in Vardhaman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738 that stated that a trade mark registration does not grant exclusive rights in a part of the mark, opined that the plaintiff could not claim proprietorship of the mark ARMOUR.
3. The Court observed that the plaintiff, in its rejoinder itself, was pressing upon the overall comparison of the composite marks, namely UNDER ARMOUR v AERO ARMOUR, and that ARMOUR was common to the trade was not relevant, even though the 'anti-dissection-rule' was not consistent with the 'dominant mark rule' as per South India Beverages. The Court also relied upon the judgment of Under Armour v. Aditya Birla Fashion dated April 20, 2023, 2023: DHC: 2711, wherein the Court had opined that ARMOUR was not the dominant part of the plaintiff's mark UNDER ARMOUR.
4. The Court further examined the marks in toto and did not dissect them in accordance with the principles laid down in the Amritdhara and Pianotist Co. Application, which stated that the overall similarity must be considered, as well as all the circumstances of the case must be considered. To assess similarity, the Court relied upon the Global Appreciation Test mentioned in ABROS Sports International (P) Ltd. v. Ashish Bansal, 2024 SCC OnLine Del 3165, and AMPM Fashions (P) Ltd. v. Akash Anil Mehta, 2021 SCC OnLine Del 4945. It opined that all aspects such as strength, similarity between the marks, intent, nature of goods, possibility of confusion, nature of the consumer and market presence must be considered.
5. The Court relied upon the holistic appreciation test and observed that the kernel and soul of the defendant's mark, target consumer, market presence, and unique selling proposition is that of casual wear, inspired by icons of the Armed Forces informally termed as military-inspired clothing. The Court further observed that Defendant No.1, being an aeronautical pilot, had started the business in 2020 and adopted the mark AERO ARMOUR wherein AERO refers to the aeronautical part of the Armed Forces and ARMOUR is associated with the military aspect, especially the armour worn by armies in the past and present. The Court also relied upon the WhatsApp chat between the defendant and his creative designer, which mentioned that 'the brand would be associated with the aviation and armour category', which formed 80-85% of the defendant's business.
6. The Court further observed that the defendant had honestly adopted its marks and that the products of the defendant were inspired by armed forces for the following reasons:
   1. The design of the defendant's logo combined the elements of a shield, aeroplane and stripe that indicated the military and aviation ranks; that the defendant's device has no resemblance and is dissimilar with the plaintiff's ;
   2. The defendant's tagline "WEAR YOUR VALOUR" and "WEAR YOUR PRIDE" celebrates the idea of heroism and bravery;
   3. The designs present on the defendant's goods t-shirts are related to the armed forces;
   4. The defendant's supply is to institutions associated with the armed forces or to the aeronautical/defence industry;
   5. The defendant's manner of promotion of its products and business is based on the same theme such that the defendant has participated in multiple events such as Aero India, Chennai Defence Expo, Indian Kargil Marathon Honor Run and Dubai Air Show;
7. The Court also observed that the Defendant's ARMR was used on very few products initially and was not in use, and the defendant had given an undertaking that the defendant did not intend to use ARMR.
8. The Court further observed that although the goods of the plaintiff and defendant were identical, the critical differentiation between them was that the plaintiff was selling sports apparel. In contrast, the defendant sold causal apparel, creating different market channels and sets of consumers and buyers. A customer who would purchase the defendant's product would do so for its iconic Indian theme imbued with patriotic fervour or a desire to associate with Indianness. In contrast, the plaintiff's products would appeal to a sportsperson. Hence, the purchasing journey of a person for both products will be different, and today, customers are informed customers and not ignorant customers.
9. The Court also relied upon Ashok Chandra Rakhit and rejected the plaintiff's attempt to monopolise the apparel market and exclude all other brands, especially when the Registrar had provided disclaimers for other ARMOUR marks.
10. The Court, relying upon the P. Jewellers case, observed that the difference in pricing of the products of the Plaintiff and the Defendant (Rs. 2000 v Rs. 799) reflected that the brands operated in different segments and that one must advert to this aspect in relation to the sophisticated consumer as well.
11. The Court also observed a complete lack of evidence of actual confusion filed by the plaintiff.
12. The balance of convenience was in favour of the defendant, which had commenced its business in 2021, made a significant turnover since then, and had a reasonable presence as it supplied to reputed institutions.
13. The Court further distinguished the Aditya Birla judgment, stating that the word Street was written in imperceptibly small font size as compared to ARMOUR; that the goods of the Plaintiff and Defendant were of sportswear; that there was extensive use of ARMR in Street Armour such as inter alia STRT ARMR, ATREET AEMOR; ARME DEPT; and that none of the above factors existed in the present suit.

Conclusion

Given the above, the Court held that the plaintiff was not entitled to an injunction. However, the Court, based on the submissions made by the defendant, imposed the following limitations on the defendant: the defendant was prohibited from using ARMR, from using the mark AERO ARMOUR on the sleeve; that pending the suit - the defendant would not venture into or market their goods as sportswear; that the defendant would be permitted to use its device mark on the front of the apparel but was prohibited from using the word mark AERO ARMOUR.

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