The "ARMOUR" Trademark Showdown

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:

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 contented that the mark "UNDER ARMOUR" is a coined word and was arbitrarily adopted with respect to its product and therefore Plaintiff is entitled to a high degree of protection.
• The Plaintiff claimed to be the prior registrant of the mark, and have obtained registration for the same in October 27, 2004, whereas the Defendants only adopted and applied for the mark in January, 2022 (As per the registry they have filed the application on April 6, 2024) on a 'proposed to be used' basis.
• The Plaintiff contended that the Defendant's marks not only looked exactly like the Plaintiff's marks but were also written in the same style and font, with similar overall appearance and design.
• The Plaintiff had also opposed the Defendant's trademark application for AERO ARMOUR under class 25 after being aware of the Defendant's business in 2022.

The Plaintiff argued that the Defendant's adoption of the impugned marks was dishonest which was evidenced in the following aspect:

• The Placement of the Mark: the Defendants have used the marks on certain products in a way that it was designed to confuse consumers.
  
• The use of term ARMR: The Defendant also used the term ARMR as a part of its brand AERO ARMR indicated a peculiar and deliberate attempt to mimic the Plaintiff's brand.
  

• Similarity in Font: The Defendant has also copied the font style of Plaintiff's mark.

The Plaintiff further submitted the following contentions:

• The mark UNDER ARMOUR has to be seen as a whole and Defendant's impugned marks have to be compared for purpose of deceptive similarity and how the marks are being used for identical goods i.e. apparels.
• The Plaintiff's marks, including "ARMOUR," have a distinct reputation, making it likely that consumer would confuse the Defendants' products with the Plaintiff's.
• It was also submitted that the lower pricing of the Defendants' products (e.g., Rs. 799 vs. Rs. 2,000 for similar items) amounted to dilution of the Plaintiff's brand.

Contentions of the Defendant

• The Defendant was an aeronautical pilot who entered into the market of apparel based on theme of aviation, army, and defence forces in the year 2021 and conceptualized the brand AERO ARMOUR. The Defendant picked the word AERO from the word Aeronautics to signify its own background of being a qualified pilot, and chose the word "ARMOUR" to connote the theme of Defendant's products which were inspired by the armed forces
• The Defendant also conceived the logo that serves as a part of brand's core theme and has registered the device mark on April 6, 2022 under class 25 on a proposed to use basis
• The Defendant refuted the contentions of the Plaintiff and contended that the Plaintiff had no dominance or proprietorship over the word ARMOUR as it has no registration in India for the word ARMOUR.
• The Defendant relied on the examination report issued by the Trademark Registry on August 19, 2020 against the Plaintiff's trademark UNDER ARMOUR citing several marks of "ARMOUR" to which the Plaintiff replied that the mark UNDER ARMOUR when viewed as whole is visually and structurally different from that of the cited marks present in the examination report. Based on the Plaintiff's submission in the examination report the Defendant pointed that the Plaintiff has taken a position that their mark had to be seen as a composite whole.
• The Defendant claimed that there was no reference to UNDER ARMOUR on its apparels and pointed the fact that most of its apparels did not even use its own brand name AERO ARMOUR hence there was room for confusion amongst the consumer.
• The Defendant further argued that the Plaintiff cannot claim distinctiveness for the mark ARMOUR, as ARMOUR is a common mark and has been registered under class 25 as a word or a device by multiple brands and pointed as to how registration was provided to one of the marks 'ARMOUR Casual Wear" bearing application number 1600906 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 by the Defendant 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.
• Regarding the Plaintiff's contention that using the word "ARMR" would cause consumer confusion in the market, the Defendant refuted the Plaintiff's claim and argued that the Plaintiff has no exclusive right over the term "ARMR." Additionally, the Defendant stated that they used "ARMR" to match the letter count of "AERO" for better symmetry in the design of their apparel.
• The Defendants 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.
• The Defendant contented that the goods and services differed completely from the Plaintiff's goods as the Defendant was engaged in the business of manufacturing apparels and footwear which were essentially military inspired and the Plaintiff was in the business of selling sports and casual apparel.
• The Defendant also placed reliance 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

Contentions in the Rejoinder

• The Plaintiff claimed that the term "ARMOUR" is a coined word and has acquired distinctiveness through their use.
• The Plaintiff argued that the overall comparison between their composite mark "UNDER ARMOUR" and the Defendant's "AERO ARMOUR" should be considered, and that the issue of ARMOUR being a common to the trade or being registered by the persons would not be relevant rather. The Plaintiff placed reliance on South India Beverages case, which held that anti-dissection rule is not inconsistent with dominant mark rule. According to the Plaintiff "ARMOUR" is a dominant part of its mark as there exists formative marks of ARMOUR family marks such as "ARMOURVENT," "ARMOURFLEECE," "ARMOURBITE," and "ARMOURBLOCK."
• The Plaintiff also placed reliance on Amritdhara principles², which held that the overall impression was important.
• The Plaintiff contends that the price difference between their products and the Defendant's products is irrelevant to the trademark infringement case, citing the South India Beverages case.
• The Plaintiff further asserts that the "initial interest confusion" test, as outlined in the Google LLC v. DRS Logistics (P) Ltd.,³ case, applies because the goods in question (casual apparel) are identical.

Analysis of the Court

The Hon'ble Court did not pass an injunction order in favour of the Plaintiff for the following reason:

• After deliberating on whether "ARMOUR" was the dominant part of the plaintiff's mark "UNDER ARMOUR," the Hon'ble Court observed that the Plaintiff never chose to register "ARMOUR" in India. The Hon'ble Court considered the Plaintiff's reply to the examination report, where the Plaintiff claimed that the cited marks were visually and structurally different from the Plaintiff's mark "UNDER ARMOUR" as a whole. Given this position and the lack of registration for the mark "ARMOUR" in India by the Plaintiff, the Court opined that the Plaintiff could not claim proprietorship over part of the mark.
• The Hon'ble Court also noted that the defendant, who was an aeronautical pilot, chose the brand name 'AERO ARMOUR' for selling Armed Forces-themed products, fuelled by Indian patriotism and observed that the armed force inspired theme continued to resonate through the rest of the business proposition of the Defendant.
• Furthermore the Hon'ble Court stated that the armed forces inspiration continues to resonate through the rest of business proposition adopted by the Defendants and that the device mark adopted by both the parties were different from each other and there was no attempt by the Defendant to copy the Plaintiff's mark.

• In view of the aforesaid circumstance and facts the Hon'ble Court was of the opinion that the Defendant had carved out a niche area for itself and that the use of AERO ARMOUR did not amount to dishonest adoption of the mark.
• The Court also stated that "the Plaintiff's attempt to monopolise the apparel market by excluding all possible brands which have "ARMOUR" in it, is not acceptable, especially when the Registrar even for other "ARMOUR" marks has provided a disclaimer".
• Dilution of trademark caused by price differentiation- The Hon'ble Court also dealt with the issue of dilution of trademark caused by price differentiation and observed that the Plaintiff had failed to provide evidence of showcasing actual confusion by consumers and opined that the pricing of Plaintiff's and the Defendant's products, were entirely different. While average price of Plaintiff's products was around Rs.2,000/-, the Defendant's products were around Rs.799/- per t-shirt. This reflected that the brands operated in different segments and had different target consumers.

Based on the submission made by the Defendant the Court imposed the following limitations on use of the impugned marks by Defendant:

• Defendant was prohibited from using the mark ARMR, AERO ARMOUR during the pendency of the suit.
• The Defendant shall not venture into sportswear and not market their goods as sportswear, during the pendency of this suit.
• The Defendant will not use the word mark on the front of their apparel, akin to the Plaintiff's use, but only the device mark.
• The Defendant would be permitted to use its device mark on the front of the apparel but were not allowed to use the word AERO ARMOUR during the pendency of the suit.

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:

1. Always try to protect your marks till greater extent, if part of a trademark is capable of being registered separately then file registrations for part of the mark, as well as the entire mark.
2. Brands sometimes submit that the mark is to be seen as a whole or provide disclaimers for part of their trademark in order to avoid "Objection" in the Examination Report, however the same submissions binds you in future and may prevent you from taking legal action against your competitor for infringement in future. Therefore, one must be very careful of what one is submitting in their reply before the Trade Mark Registry during Trademark Prosecution or any Office Action.

Footnotes

1 CS(COMM) 843/2023

2 AIR 1963 SC 449

3 2023 SCC OnLine Del 4809

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