Delhi High Court Restrains Aditya Birla from Infringing Trademark Registered by Under Armour
The Delhi High Court by its division judge’s bench of Justices Manmohan and Saurabh Banerjee while observing that ‘Under Armour’ is a huge international brand having substantial and senior rights in India, retrained the marks adopted by Aditya Birla.
The background of the case involved two famous brands – Under Armour and Aditya Birla who were tangled in a dispute before the Delhi High Court regarding their trademark in sportswear apparel, where the single judge Justice C Hari Shankar had passed an injunction against Aditya Birla and restrained any usage of the concerned registered mark of Under Armour.
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 submitted that it held 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.
Mr. Rishi Bansal Counsel for the plaintiff submitted before the Court that the registered marks – UNDER ARMOUR/UA/UNDR ARMR by Under Armour were infringed by Aditya Birla Fashion & Retail Ltd., (defendant) on identical goods, by using the marks “STREET ARMO/SA/STRT ARMR.”
While doing so, it was alleged that the defendant was using, for its ― “ARMOR” part of the mark, a font, style and lettering which was deceptively similar to that used by the plaintiff for ― “ARMOUR”. Even while using ― “STREET ARMOR” as a device, the plaintiff alleged that the defendant used a similar font and lettering for ― “ARMOR” while using a disproportionately small font and lettering for STREET.
Mr. Bansal argued that ARMOUR is the primary component of UNDER ARMOUR and that infringement occurred because the defendant’s disputed marks also include the mark ARMOUR.
The defendant’s Counsel Mr. C.M. Lall to support the argument that “ARMOUR” was descriptive, countered with three facts:
1. 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”.
2. He further stressed the dictionary meaning of “armour,” which is “clothing,” often made of metal that soldiers wore in earlier times to protect themselves”.
3. He submitted that the plaintiff while registering the mark “UNDER ARMOUR” mentioned the items in the class as “protective clothing.”
In its preliminary observation, the Judge Justice C Hari Shankar opined that on the aspect of infringement and passing off ‘Under Armour’ was entitled to injunction as the defendant's marks were recognized as infringing the plaintiff's marks under Section 29(2)(b) of the Trade Marks Act when evaluated as whole marks.
Aggrieved by the same, defendant 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.
Hence, the defendant filed an appeal and challenged the Judgment before the divisional judge’s bench of the Delhi High Court.
The Appellate Court however, after 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.
Noting the same. the Court granted time of 3 weeks to the defendant- Aditya Birla to file an undertaking in these terms.