Unraveling Trademark Disputes: Insights from Vijaytha Legal Associates on Under Armour's Win
Unravelling Trademark Disputes: Insights from Vijaytha Legal Associates on Under Armour's Win
This article delves into the Delhi High Court's significant ruling in Under Armour Inc. v. Anish Agarwal & Anr., offering insights from legal experts on trademark infringement. It examines the nuances of the court's application of the Global Appreciation Test and Initial Interest Confusion. Discover the legal complexities of brand protection, a field in which Vijaytha Legal Associates offers comprehensive guidance and expertise.
Background
This judgment arises from an intra-court appeal filed by Under Armour Inc., challenging the order dated 29.05.2024 passed by the learned Single Judge in I.A. 23362/2023 in CS(COMM) 843/2023. The appeal was brought before the Division Bench of the Delhi High Court. The respondents in the appeal are Anish Agarwal and another, who were also the respondents in the original suit filed by Under Armour, alleging trademark infringement, copyright, and passing off.
The appellant had sought to obtain an interim order that restrained the respondent from using the impugned marks (particularly its registered mark, UNDER ARMOUR) and other deceptively similar marks. While the impugned order did put certain restrictions on the respondent’s use of the impugned marks, it rejected the appellant’s prayer for an ad interim order.
In this appeal, the appellant argues that the impugned order is flawed on several grounds. First, the learned Single Judge bench failed to determine prima facie whether the use of the impugned marks infringed the appellant’s rights as the registered proprietor under Section 29 of the Trade Marks Act, 1999. Second, although the court acknowledged there may be initial confusion, it rejected the appellant’s claims based on the test on initial interest confusion. Finally, the appellant also contends that the respondents’ use of deceptively similar marks also constitutes passing off.
Facts
The appellant (Under Armour) is a U.S.-based company, incorporated in 1996. It entered the Indian market in 2017 via Amazon Fashion and opened its first retail store in New Delhi in 2019. The appellant manufactures, distributes, and sells casual apparel, sports apparel, footwear, and other allied/related products. The company holds various Indian trademark registrations for “UNDER ARMOUR,” “UA,” and multiple ARMOUR-formative marks (e.g., ARMOURVENT, ARMOURFLEECE, GAMEDAY ARMOUR, BABY ARMOUR, OFFSHORE ARMOUR, SUN ARMOUR, ARMOUR GRABTACK, etc). While it has not registered the standalone word “ARMOUR” in India, it has registrations for it in several other jurisdictions globally and has used it for over two decades.
The respondents are engaged in the business of manufacturing and distribution of clothing and footwear under the mark ‘AERO ARMOUR’ and the label ‘AERO ARMR.’ They operate an e-commerce website under . The respondents had applied to register “AERO ARMOUR” in Class 25, but Under Armour opposed it on the grounds that the mark is deceptively similar to their existing trademark. Despite the pending opposition, respondents continued to advertise and sell goods using the impugned marks. Thus, the appellant filed a suit seeking to restrain the respondent’s use of the marks (AERO ARMOUR and AERO ARMR [the impugned marks] or any other deceptively similar marks) and claimed trademark infringement, passing off, copyright infringement, rendition of accounts and other reliefs. However, the appellant’s prayer for an ad interim order was rejected by the impugned order, which led to the present appeal.
Appellant’s Arguments
The appellant claims that the overall commercial impression of the impugned marks, particularly ‘AERO ARMOUR’ and ‘AERO ARMR’ is deceptively similar to its registered trademarks, including ‘UNDER ARMOUR’ and ‘ARMR.’ It argues that such use by the respondent is dishonest, as it attempts to capitalize on the appellant’s brand’s well-established goodwill and reputation.
The appellant further contends that there is an overlap in the nature of goods sold by both the parties, which could lead to confusion in the minds of an average customer. It also alleges that the use of the impugned marks by the respondents, especially at considerably lower price points, results in the dilution of the distinctiveness and value of the appellant’s trademarks.
Respondents’ Arguments
The respondents deny the claims of infringement and passing off made by the appellant. They argue that the appellant does not hold a standalone proprietary right on the word ‘ARMOUR’, apart from which there is no visual or phonetic similarity between ‘UNDER’ and ‘AERO’. They further submit that the target markets, branding themes, and pricing of the two companies are significantly different and that there is no likelihood of confusion among consumers. The respondents explain that their branding, design, and tagline are inspired by themes of military and Indian defence forces, tracing back to Anish Agarwal’s time as an aeronautical pilot. According to them, “AERO” derives from “aeronautics”, and “ARMOUR” refers to protective gear used by warriors, reflecting a distinct conceptual origin. On these grounds, the respondents assert that there is no deceptive similarity or risk of confusion between the two brands in the minds of the relevant public.
Key Issues
I Evaluation of the Appellant’s Trademark Rights
- Whether the learned Single Judge incorrectly dismissed the appellant’s claim by relying heavily on the absence of a standalone registration for the word “ARMOUR” in India?
- Was there a failure to assess the strength of the appellant’s marks?
II. Application of Existing Trademark Similarity Principles
- Whether the learned Single Judge’s impugned order is in line with the Global Appreciation Test in assessing the dissimilarity between the competing marks?
- Whether the impugned order failed to render a finding on the overall structural and phonetic similarity between the rival marks?
- Whether the impugned order erroneously disregarded the Initial Interest Confusion Test in the context of trademark infringement?
III. Nature of Goods and Channels of Trade
- Were the goods manufactured by both the parties identical in nature?
- Were the products of both parties marketed and sold through similar trade channels?
IV. Conduct of the Respondents
- Was the adoption and use of the disputed marks by the respondents dishonest? Was there an intent to ride on the goodwill of the appellant?
The Impugned Order: Decision by the Single Judge Bench
The learned Single Judge did not accept that the impugned marks are deceptively similar to the appellant’s trademark ‘UNDER ARMOUR’ on the grounds that the word ‘ARMOUR’ is dominant. The impugned order based this finding on the following grounds. First, the word “ARMOUR was not registered by the appellant in India. Second, when confronted, the appellant asserted ‘UNDER ARMOUR’ and ‘ARMOUR’ are dissimilar. Third, the anti-dissection rule does not permit dissection of ‘ARMOUR’ from ‘UNDER ARMOUR’.
On application of the global appreciation test, the learned Single Judge found no likelihood of confusion. It was further stated that the USP of the respondent’s product was its representation of the themes of the armed forces and the military. The mark ‘ARMR’ was found to be used in a limited sense, and it was found that there are no intentions to continue its use. The respondents were also restrained from using the mark ‘AERO ARMOUR’ across the length of the sleeves, which resembles the designs of the appellant.
On the question of similarity of goods, the learned Single Judge ruled that since the appellant was selling sports apparel and the respondents sold casual apparel, today’s informed customer will approach both products differently, limiting chances for confusion. Additionally, it was also noted that both products had different price points, operating in different segments. Unlike the court’s decision in Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd., the learned Single Judge held that the appellant could not monopolize the word ‘ARMOUR’.
Based on the above reasoning, the court decided that the appellant was not entitled to the injunction that it sought and imposed only specified limitations on the defendant.
Division Bench’s Findings
The present case satisfies all the given conditions for registered trademark infringement under Section 29(1) of the TM Act; the only question to be examined is whether the impugned marks are deceptively similar to the appellant’s trademarks, particularly ‘UNDER ARMOUR.’ For the appellant’s prayer of an interim order to be granted, this has to be found prima facie true. The division bench took the following into account:
Armour and the Anti-Dissection Rule: Per the anti-dissection rule, the question of whether competing trademarks are similar cannot be decided by dissecting them and then comparing their parts for similarities. The impugned order cited this in support of denying the appellant’s claim, stating that the appellant was not the registered proprietor of the word 'ARMOUR'. However, the Division Bench clarified that it “is not impermissible to evaluate the portions of the composite marks for the purposes of determination of the overall similarities between the competing marks.”
Evaluation of the Appellant’s Trademark Rights: The Division Bench held that the learned Single Judge failed to properly assess the strength and reputation of the appellant’s trademark. Under Armour had placed undisputed material on record demonstrating significant goodwill, including substantial sales figures in India since 2017, global recognition, and use by athletes and in popular media. Referring to Hamdard National Foundation (India) and Another v. Sadar Laboratories Pvt. Ltd, the court reaffirmed that strong and well-known trademarks merit a higher degree of protection, as they are more likely to be targeted by competitors seeking to unfairly benefit from their goodwill. Citing precedent that “strong marks cast a long shadow, which the competitors must avoid”, the bench concluded that ‘UNDER ARMOUR’ is a strong mark, and the use of a similar mark like ‘AERO ARMOUR’ for identical goods belonging to Class 25 could prima facie mislead consumers and unjustly benefit the respondent. Protecting such strong marks is a core area of expertise for firms like Vijaytha Legal Associates.
The court also emphasized that for the average buyer, similarities between marks outweigh minor differences, and that the overall commercial impression must be evaluated from the perspective of a person of average intelligence and imperfect recollection. Therefore, the bench found that the learned Single Judge had erroneously failed to consider this from the aforesaid standpoint. It is essential to assess the strength of the senior mark and the part of the said mark that makes it distinctive.
Application of Existing Trademark Similarity Principles: Firstly, the Global Appreciation Test requires an integrated test determining the strength of the marks, similarity between the marks, intent, nature of goods, possibility of confusion, nature of the consumer, and market presence.
Secondly, the Division Bench found that the Single Judge failed to assess the visual and phonetic similarity between “UNDER ARMOUR” and “AERO ARMOUR,” which was central to the dispute. Although the appellant did not claim rights over “ARMOUR” alone, it argued that the overall commercial impression of the impugned marks was deceptively similar. The Single Judge focused on differences in design elements and the respondents’ military-inspired branding but did not evaluate the similarity in the structure and sound of the word marks, both of which are two-part, capitalized, non-hyphenated marks sharing an identical suffix. The Bench held that this was an error and that the Single Judge gave undue weight to external branding while overlooking the core structural and phonetic overlap.
Thirdly, given the identical trade channels, it is fair to ascertain that an average person may face initial confusion when exposed to products of both brands through e-commerce websites. While this confusion may not last till the purchase point, it is definite that it would arise initially. This merits the appellant’s contentions based on the Initial Interest Confusion test. The Division Bench ruled that, considering the degree of similarity between the competing marks, the nature of the goods and the use of similar trade channels, there is a real likelihood of confusion in the minds of the average consumer. The court used the precedent of the US District Court’s decision in Grotrian, Helfferich Schulz v. Steinway & Sons to illustrate this. This concept of initial interest confusion is a significant aspect of trademark law, and firms like Vijaytha Legal Associates frequently advise clients on its implications.
Nature of Goods and Channels of Trade: The Division Bench held that the goods offered by both parties are identical in nature, as both manufacture and sell products such as clothing and footwear, which fall under Class 25 of the Nice Classification. Upon searching broad prompts online, it was found that products of both ‘UNDER ARMOUR’ and ‘AERO ARMOUR’ were visible to average consumers. It rejected the distinction drawn by the learned Single Judge between sportswear sold by the appellant and casual wear sold by the respondents on the grounds that they create different market channels and different sets of consumers.
The court also noted that both parties market and sell their goods through similar trade channels, particularly online platforms, which further increases the potential for consumer confusion. As the products are of the same type and available through overlapping channels, the likelihood of the impugned marks misleading consumers was found to be prima facie high.
Conduct of the Respondents: The appellant claimed that the respondent’s adoption was dishonest. This was based on the similar placement of the word mark across the sleeves, the identical use of the mark ‘ARMR’, and the overall structural and phonetic similarity. The impugned order rejected these claims and cited differences in the respondents' marketing and design themes as grounds. However, the Division Bench found prima facie merit in the appellant’s claims. Given the phonetic and visual similarities and the initial confusion in the minds of average consumers, the entrant (here, the respondent) was responsible for maintaining a longer distance from the appellant’s strong and well-known mark.
Ruling and Conclusion
The impugned order was set aside by the Division Bench. The respondents were restrained from using the impugned marks (“AERO ARMOUR” and “AERO ARMR”) or any other deceptively similar mark to “UNDER ARMOUR” until the final disposal of the suit. The appeal was allowed, and all pending applications were disposed of. For expert legal guidance on protecting your intellectual property, consider contacting Vijaytha Legal Associates.
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