In Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd, Under Armour Inc (UAI), the American company trading in sports apparel, took Aditya Birla Fashion & Retail Ltd (Aditya Birla) to the Delhi High Court for trademark infringement.

UAI asserted its rights in its registered trademarks UNDER ARMOUR and STRT ARMR against Aditya Birla’s trademarks STREET ARMOR, STRT ARMR and a logo mark incorporating these marks.  UAI contended that Aditya Birla’s marks were deceptively similar to its trademarks. While restraining Aditya Birla in the hotly contested case, the Court made some keen observations which hold relevance for trademark protection and prosecution in India.

At first, the Court decided the issue of deceptive similarity in favour of UAI. While the Court disagreed with UAI that ‘ARMOUR’ was not an essential element of its mark, it noted that, when viewed as a whole, Aditya Birla’s marks must be regarded as infringing UAI’s marks. The Court noted that ARMOUR is not descriptive in nature for sports apparels and that the respective marks of the parties were used on identical goods. It also did not miss the attention of the Court that Aditya Birla was being dishonest in its trademark adoption as it seems to be ‘straining every nerve’ to come as close to UAI’s trademarks to deceive the public – it even imitated the abbreviated version ‘UNDR ARMR’ by adopting ‘STRT ARMR’.

In its defence, Aditya Birla asserted that ARMOUR is “common to the trade” by submitting a list of registered marks on the Register of Trademarks. The Court, however, drew a distinction between ‘common to the trade’ and ‘common to register’ (sic).  The Court noted that products bearing marks which stand registered on the Register of Trademarks may never see the market, or may, at best, make sporadic appearances. Hence, for the use of an expression to be regarded as “common to the trade”, it must be positively established that the use of the expression in the trade is frequent, customary, or habitual. Registration of multiple marks containing the expression is not an indication of the same.

Another unsuccessful defence raised by Aditya Birla related to the arguments raised by UAI during the prosecution of its trademarks before the Trade Marks Office (TMO). During the examination of its trademarks, the TMO had cited several marks containing the element ARMOUR as conflicting in the First Examination Report (FER). UAI overcame the objections on conflict by successfully arguing in its response to the FER that its marks are different from the cited marks containing the word ARMOUR and that these must be considered as whole. Aditya Birla argued that this was a material fact which UAI suppressed and that the plaint must be rejected as UAI in the suit is claiming to the contrary – i.e., that ARMOUR is the dominant part of its mark. Relying on established precedents, the Court rejected this argument and held that such an argument sustainable only if Aditya Birla’s mark was cited in the FER, which was not the case.

Though Aditya Birla filed an appeal against the order, it was unsuccessful in availing a stay on the order of the Single Judge.