Delhi High Court: In the appeal filed by the appellant assailing the order dated 29-5-2024, whereby the appellant’s under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 was disposed of, the Division Bench of Vibhu Bakru* and Sachin Datta, JJ., stated that the duration of the confusion in the minds of the customer was not material. The fact that the customer was confused, even if it be momentarily, would be sufficient to establish infringement of trade mark. The Court stated that if a customer of average intelligence and imperfect recollection, who seeks the appellant’s product ‘UNDER ARMOUR’ was for a brief moment deceived to think the respondent’s product as associated with the appellants mark, the appellants action for infringement had to be sustained as the test of likelihood of confusion would stand satisfied.
Thus, the Court set aside the impugned order and restrained the respondents from using the impugned marks or any other mark deceptively similar to the appellant’s word mark ‘UNDER ARMOUR’ till the disposal of the suit.
Background
The appellant was a company incorporated under the laws of the United States of America, with its registered office in U.S.A. It was founded in the year 1996 and was engaged in the business of manufacture, distribution and sale of a wide variety of goods, including casual apparel, sports apparel, footwear, and other allied/related products. The appellant had never applied for registration of the standalone word ‘ARMOUR’ in India. However, the appellant holds trade mark and label registrations, inter alia, comprising the mark ‘ARMOUR’, in various jurisdictions worldwide.
The respondents were engaged in the business of manufacturing and distribution of clothing and footwear under the trade mark ‘AERO ARMOUR’. The respondents applied for the word mark ‘AERO ARMOUR’ and the appellant initiated the opposition proceedings before the Trade Mark Registry by filing the notice of opposition. The appellant alleged that the impugned mark was deceptively similar to the appellant’s trade mark ‘UNDER ARMOUR’ and other formative marks.
Meanwhile, the appellant instituted the suit for trade mark infringement, passing off, copyright infringement, rendition of accounts and other reliefs. The appellant also filed an application seeking that the respondents be restrained from manufacturing, marketing or dealing in any manner with the products bearing the trade marks, AERO ARMOUR and AERO ARMR or any other mark which was deceptively similar to the appellant’s trade marks. The said application was disposed of by the Single Judge as per the impugned order.
As per the impugned order, the Single Judge had placed certain restrictions regarding the use of the impugned marks by the respondents, but had rejected the appellant’s prayer for ad interim order restraining the respondents from using the impugned marks, which the appellant alleged be deceptively similar to its registered trade marks and more particularly its registered word mark UNDER ARMOUR.
The appellant contended that the impugned order was patently erroneous on various grounds including that the Single Judge had not considered various relevant factors for prima facie determining whether the use of the impugned marks constituted infringement under Section 29 of the Trade Marks Act, 1999 (‘TM Act’).
Analysis, Law, and Decision
A. ARMOUR — a dominant part of the trade mark and anti-dissection rule
The Court stated that it was well settled that the question whether competing trade marks were similar could not be decided by dissecting them and then comparing their parts for similarities. It was necessary to note that the anti-dissection rule was not inconsistent with ascertaining whether the competing marks were similar by taking note of their dominant parts. The Court stated that it was not impermissible to evaluate the portions of the composite marks for the purposes of determination of the overall similarities between the competing marks.
The Court stated that the Single Judge rejected the contention that ‘ARMOUR’ could be considered a dominant part of the appellant’s trade mark, but the Single Judge failed to consider whether there was any visual or phonetic similarity between the competing trade marks viewed as a whole. Thus, this was necessary for determining whether the appellant’s registered trade mark was infringed. The Court stated that the Single judge did not examine the overall commercial impression of the competing marks from the standpoint of a person of average intelligence and imperfect recollection.
B. Failure to render any finding qua overall structural and phonetic similarity between the rival marks
The Court stated that the Single Judge erred in not accepting that, prima facie, there was a similarity in the overall structure of the word marks, where both marks were written in capital letters consisting of non-hyphenated words. The Court stated that there was also phonetic similarity between the competing marks, considering that part of the rival word marks were identical.
The Court stated that the Single Judge had erroneously evaluated the overall commercial impression of the competing marks as different by giving undue importance to the overall design used on the t-shirts and by creating an almost illusory distinction between the appellant’s goods being sportwear as against the respondents’ goods being casualwear.
C. Identical goods manufactured by both parties and similar trade channels
The Court stated that considering the fact that the appellant manufactures the same categories of goods as the respondents, coupled with other sub-categories of goods in relation to sports covered within Class 25, the finding of the Single Judge in the impugned order that the appellant manufactures sports apparel and the respondents manufacture casual apparel could not be sustained.
The Court further stated that it would be erroneous to consider that there was no likelihood of confusion on account of products bearing the competing brands on the assumption that the same were distributed and sold through different channels. There was no material to substantiate the said assumption.
D. Initial Interest Confusion Test
The Court noted that the plain reading the impugned order, indicate that the Single judge had accepted that a customer might be confused at the initial stage (transient wonderment) but would undertake the necessary enquiries. Thereafter, the Court stated that if the customer looking at the impugned marks associates the same with the appellant’s marks even though for a brief period, the appellant’s trade marks would be infringed on the plain reading of Section 29(1)/Section 29(2) and even Section 29(4) of the TM Act.
The Court stated that the duration of the confusion in the minds of the customer was not material. The fact that the customer was confused, even if it be momentarily, would be sufficient to establish infringement of trade mark. The Court stated that if a customer of average intelligence and imperfect recollection, who seeks the appellant’s product ‘UNDER ARMOUR’ was for a brief moment deceived to think the respondent’s product as associated with the appellants mark, the appellants action for infringement had to be sustained as the test of likelihood of confusion would stand satisfied.
Thus, given the degree of similarity between the competing marks, the nature of the goods and the use of similar trade channels, the Court was of the prima facie view that there existed a real likelihood of confusion.
Thus, the Court set aside the impugned order and restrained the respondents from using the impugned marks or any other mark deceptively similar to the appellant’s word mark ‘UNDER ARMOUR’ till the disposal of the suit.
[Under Armour Inc v. Anish Agarwal, FAO(OS) (COMM) 174 of 2024, decided on 23-5-2025]
*Judgment authored by Justice Vibhu Bakhru
Advocates who appeared in this case:
For the Appellant: Swathi Sukumar, Senior Advocate with S. Bansal, Rishi Bansal, Mankaran Singh, Kartik Malhotra, Rishabh Aggarwal and Ritik Raghuvanshi, Advocates
For the Respondents: J. Sai Deepak, Senior Advocate with Samik Mukherjee, Manosij Mukherjee and Abhishek Avabhani, Advocates.
