Delhi District Court
Under Armour vs Avengers on 14 December, 2020
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IN THE COURT OF MS. NIVEDITA ANIL SHARMA,
DISTRICT JUDGE,
COMMERCIAL COURT-01, SHAHDARA,
KARKARDOOMA COURTS, DELHI
CS (COMM) No.129/2019.
Under Armour, Inc.
(a corporation organized and existing
under the Laws of the state of Maryland)
having its office at
102 Hull Street, Baltimore, MD 21230
United States of America
Through its Authorised Representative
Mr. Narendra Singh
............................................................................Plaintiff.
Versus
1. Avengers
Plot No. 1157, B-2, Rohtash Nagar,
Shahdara, Delhi-110032.
Through its Owner/Proprietor Mr. Ashraf
2. Mr. Dataram
HR, 241/A, Basement, Gali no. 6,
Pul Prahladpur, New Delhi- 110044.
.......................................................................... Defendants.
Date of Institution : 07.07.2018.
Date of consideration of the case for the first time : 09.07.2018.
Date of transfer of the case to this Court : 16.03.2020.
Arguments concluded on : 14.12.2020.
Date of Judgment : 14.12.2020.
Appearances : Ms.Priya Nagpal, counsel for the plaintiff (through
video conferencing on Cisco Webex).
Defendants were proceeded ex-parte vide order dated
01.10.2020. (On 18.02.2019, the right to file written
statement by defendant number 1 was closed. On
08.07.2019, the written statement filed by defendant
number 2 was taken off the record.)
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In compliance to the office order no. 417/RG/DHC/2020 dated
27.08.2020 of the Hon'ble High Court of Delhi, order no. 5595-5615/
Judl.Br./East/KKD/Delhi dated 30.08.2020 regarding Standard
Operating Procedure/Guidelines for resumption of physical hearing
and order no. 6490-6512/Judl/SHD/2020 dated 27.11.2020 in respect of
Roster for physical hearing from 01.12.2020 to 31.12.2020 of the
learned Principal District and Sessions Judge, Shahdara,
Karkardooma Courts, Delhi as well as earlier orders of Hon'ble High
Court of Delhi and District and Sessions Judge, Shahdara,
Karkardooma Courts, Delhi, the present matter is being heard
through video conferencing using Cisco Webex.
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JUDGMENT
1. At the very outset, it is important to mention that this case is listed at serial number fourteen (14) in the list of twenty (20) oldest cases pending in this Court. A sincere endeavour has been made to dispose the same expeditiously. This matter had come up before the undersigned for the first time on 16.03.2020.
2. This is a suit for mandatory and permanent injunction, passing off, infringement of trademark and copyright, rendition of accounts and damages filed by Under Armour, Inc., (hereinafter referred to as the plaintiff) against Avengers and Mr. Dataram (hereinafter referred to as the defendants).
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3. Vide order dated 09.07.2018 of the learned predecessor of this Court, ex parte injunction was granted in favour of the plaintiff and against the defendants restraining the defendants from using the trademark and copyright of the plaintiff o T-shirts and other apparels, packaging material etc. till next date and a Local Commissioner was appointed to visit and search the premises of the defendants and seize the infringed goods.
4. Summons of the case and notice of the application under Order 39 Rules 1 and 2 of the Civil Procedure Code (hereinafter referred to Is the CPC) were ordered to be served upon both the defendants for 05.09.2020. The counsel for defendant number 1 and the proprietor of defendant number 2 with counsel appeared on 05.09.2020 and the matter was referred for mediation to the Mediation Centre. On 19.11.2018, on the application of the plaintiff under Order no. 1 Rule 10 read with section 151 of the CPC, the amended memo of parties was taken on record and summons were ordered to be issued to defendant number 2.
5. On 18.02.2019, the counsel for defendant number 2 appeared and none appeared on behalf of defendant number 1 and the right to file written statement by defendant number 1 was closed. The written statement was filed by defendant number 2 on 06.03.2019 and vide order dated 08.07.2019, the same was taken off the record as the application for condonation of delay was not filed by defendant number 2 despite ample opportunities. The matter was listed for Plaintiff Evidence (PE) on 11.09.2019 vide order dated 08.07.2020.
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6. Thereafter, vide order dated 02.12.2019, on the application of the plaintiff under Order 11 Rule 1 (5) read with section 151 of the CPC, the additional documents of the plaintiff were taken on record.
7. This matter came before the undersigned for the first time on 16.03.2020 (after transfer and creation of the Commercial Court w.e.f. 06.12.2019) at the stage of Plaintiff's Evidence.
8. The plaintiff has examined Mr.Narendra Singh as PW1. His affidavit was filed as his examination in chief on 16.03.2020, tendered in evidence and he was cross examined by the counsel for defendant number 2. The Plaintiff's Evidence (PE) was closed on 16.03.2020 and matter was listed for Defendants' Evidence (DE), if any and final arguments for 01.04.2020.
9. Due to the pandemic because of the spread of Corona Virus Covid-
19, there were en block adjournments as Courts were not functioning in the regular manner and only urgent matters were being taken up. However, even after the regular functioning resumed in the Courts, as the defendants did not appear on 24.08.2020 and 01.10.2020 and did not even lead any Defendants' Evidence (DE), they were proceeded ex parte vide order dated 01.10.2020. The defendants have not appeared even thereafter on 26.10.2020, 29.10.2020, 04.11.2020, 09.11.2020, 18.11.2020, 02.12.2020, 07.12.2020, 10.12.2020 and even today i.e. 14.12.2020.
10.In the plaint, the plaintiff has averred that the plaintiff company is registered under the laws of Maryland, United States of America, CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 4 of 34 ::-
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having its office at 102 Hull Street, Baltimore, MD 21230, United States of America and is engaged in manufacturing, sale and distribution of footwear, sports and casual wear including t-shirts, lowers, jackets, caps, other apparel and accessories across the world. The plaintiff has authorized Mr. Narendra Singh, to institute, sign, depose, verify and pursue the present suit. The copy of the Amended And Restated Bylaws and the Power of Attorney dated 01.03.2018 in favour of Narendra Singh were also annexed with the plaint as Annexures P-1 and P-2 respectively. The plaintiff company was founded in the year 1996 and has had its share of influence on the athletic wear market ever since. The sportswear being produced by the plaintiff is an outcome of the innovative ideology being constantly manifested into its products.
11.The plaintiff is the owner of the trademarks "UNDER ARMOUR", "UA","UA RECORD", , and the said trademarks and its logos are registered under the provisions of the Trademarks Act, 1999 in India. The plaintiff has its office across the globe including but not limited to Amsterdam (European headquarters), Austin, Guangzhou, Hong Kong, Houston, Jakarta, London, Mexico City, Munich, New York City, Panama City (international headquarters), Paris, Pittsburgh, Portland, San Francisco, São Paulo, Santiago, Seoul, Shanghai (Greater Chinese headquarters), and Toronto. The plaintiff enjoys global presence and immense goodwill and reputation across the globe. The plaintiff was founded in 1996 CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 5 of 34 ::-
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by Kevin Plank, a then 23-year-old former special teams captain of the University of Maryland football team. With its commitment, hard-work and constant innovation, the plaintiff, within a short span of 21 (twenty-one) years, has been able to earn and report net sales of over 482 million USD. Due to its massive popularity since 1996 and continued and extensive use of the trademarks and logos, the plaintiff's trademarks have become synonymous with apparel, shoes, caps, and other accessories which athletes and sports persons most choose and prefer across the world.
12.It is also averred in the plaint that the "Under Armour" brand and other trademarks are already well known in India as a result of its international business association and sponsorship of top athletic events like NBA, PGA Golf Championship, etc. and also due to the plaintiff company's products range visibility in various Hollywood movies. The plaintiff carries out its business in India through the medium of internet and the products of the plaintiff have very high visibility, prominence and demand. The plaintiff's website https://www.underarmour.com/ provides sale and delivery of the plaintiff's product range. The plaintiff advertises through print, television and other media, for promotion of its brand and products and incurs huge expenses on account of advertisement. The trademarks "UNDER ARMOUR", "UA", "UA RECORD", and are well known trademarks and enjoy huge reputation and goodwill in India.
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13.The plaintiff is the originator of performance apparel - gear engineered to keep athletes cool, dry and light throughout the course of a game, practice or workout. The technology behind plaintiff's diverse product assortment for men, women and youth is complex, but achieving benefits is simple: "wear HeatGear® when its hot, ColdGear® when its cold, and AllSeasonGear® between the extremes". With a simple mission to make all athletes better through passion, design and the relentless pursuit of innovation the plaintiff employs various effective and pioneering means to outgrow itself. The plaintiff has a huge turnover against sale of its products, worldwide. The plaintiff company has strong growth trajectory and aims at maximising of its sales and net profit. The net global sales of the plaintiff company is being detailed as below:
NET SALES PER YEAR (in thousands):
2017 $ 48,260
2016 $ 258,660
2015 $ 232,573
2014 $ 208,042
2013 $ 162,330
2012 $ 128,778
2013 $ 96,919
14.The plaintiff manufactures athletic shoes, t-shirts, jackets, hoodies, pants, leggings, shorts and accessories such as bags, gloves, caps and protective gear. The trademarks "UNDER ARMOUR", "UA", "UA RECORD", and their logos are without doubt the quintessential symbols and with their growing popularity over the years they have become one of the most popular and prestigious marks and logos known to the public in India for sportswear CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 7 of 34 ::-
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apparels and accessories. Apart from common law rights, the plaintiff is the rightful owner to use the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos under the provisions of the Trademarks Act, 1999 in India. The trademarks "UNDER ARMOUR", "UA", "UA RECORD" and its logos are registered under various classes of Trademarks Rules, 2002 in India and details of the same are herein given below:- DETAILS OF TRADE MARKS OF THE PLAINTIFF COMPANY Mark Reg. No. Valid Till Class UA 3000907 06.07.2025 9 RECORD(Device) UA (Word) 2084302 12.01.2021 18 UA UNDER ARMOUR 1317481 27.10.2024 25 (Device) UA (Word) 2084303 12.01.2021 25 UA UA (Word) 2084304 12.01.2021 28 UA UA RECORD 3274222 01.06.2026 41 (Word) UA RECORD UA RECORD 3274224 01.06.2026 42 (Word) UA RECORD UNDER ARMOUR 1788950 24.02.2019 99 (Word) UNDER ARMOUR UNDER ARMOUR 1788951 24.02.2019 99 (Device) CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 8 of 34 ::-
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15.The copy of trademark certificates in respect of the Trademark Nos. 2084303, 2084304, 3274222, 3274224, 1788950, 1788951 in favour of the plaintiff company are annexed with the plaint as ANNEXURE P-3 (Colly).
16.The registration of the trademarks "UNDER ARMOUR", "UA", "UA RECORD" and its logos under different classes is valid and subsisting in favour of plaintiff company till date. The plaintiff company has thus the exclusive right to use said trademarks and logos with respect to its products and no one is entitled to use the trademarks "UNDER ARMOUR", "UA", "UA RECORD" and its logos and or any mark identical and /or confusingly or deceptively similar to "UNDER ARMOUR", "UA", "UA RECORD", and without a license or assignment by the plaintiff.
17.The logos "UNDER ARMOUR", "UA", "UA RECORD", and have their own figurative distinctiveness on account of their unique design effect, sign, graphics, style as a whole. The logos are an artistic work under definition of copyright act owing to their unique design effect and style and the plaintiff company has the copyright over the logos, since it's the original and pristine CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 9 of 34 ::-
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creation of the plaintiff. Thus, the plaintiff is entitled to all relief pertaining to infringement of copyright in logos, under the Copyright Act, 1957.
18.On account of good quality and standards of manufacturing the goods under the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos the plaintiff has earned huge recognition in the market. By putting its skilful and untiring efforts in advertising and marketing, the goods of the plaintiff company have acquired an enviable reputation across the globe. The products carrying "UNDER ARMOUR", "UA", "UA RECORD", and its logos exclusively denote the products of the plaintiff company and of none else.
19.The defendants are business entities engaged in the retail and manufacturing business of storing, distributing and selling of infringing apparels and accessories including t-shirts bearing the falsified trademarks of the plaintiff from their retail and manufacturing units. The retail unit of defendant number 1 under the name and style Avengers is situated at: Plot No. 1157, B-2, Rohtash Nagar, Shahdara, Delhi - 110032 and the manufacturing unit of defendant number 2 is situated at HR. 241/A, Basement, Gali No. 6, Pul Prahladpur, New Delhi - 110044. Defendant number 2 arrayed as Ashok Kumar is based on the John Doe principle as applicable in India, as the same being an unknown identity. (Vide order dated 19.11.2018, the application of the plaintiff under Order 1 Rule 10 read with section 151 of the CPC was allowed and CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 10 of 34 ::-
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amended memo of parties was taken on record and defendant number 2 was ordered to be served).
20. In the month of June, 2018 it came to the knowledge of the plaintiff that the defendants are clandestinely manufacturing, storing, distributing and selling infringing apparels and accessories bearing the falsified trademarks of the plaintiff which are much inferior in quality than the products of the plaintiff. It also came to the knowledge of the plaintiff that defendant number 1 procures infringing products bearing the falsified trademarks of the plaintiff from defendant number 2. The defendants are running their retail and manufacturing business thereby manufacturing, storing, distributing and selling infringing apparels and accessories bearing trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD" and its logos and are causing confusion and deception amongst the unwary purchasing public and trade.
21.Thereafter, the plaintiff has conducted an investigation through its investigator to confirm about such acts of the defendants. The investigator of the plaintiff has visited the premises of the defendants and has purchased an infringing product, the same being a t-shirt from defendant No.1 and has also procured an infringing product, the same being a t-shirt from defendant number 2. Both infringing t-shirts bear the impugned trademarks of the plaintiff.
The defendants do not issue any receipt for their products. The defendants store huge number of infringing apparels and CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 11 of 34 ::-
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accessories bearing trademarks identical and /or confusingly or deceptively similar to the trademark "UNDER ARMOUR", "UA", "UA RECORD" and its logos and other registered trademarks of the plaintiff. The infringing goods manufactured, stored, distributed and sold by the defendants are readily available in the markets of Delhi especially in the market of Shahdara, Lakshmi Nagar, Gandhi Nagar, Prahladpur, Greater Kailash and Saket. In this regard affidavit of the investigator is annexed with the plaint as ANNEXURE P-4. The plaintiff has been able to procure a sample, the same being a t-shirt bearing trademarks "UNDER ARMOUR" and its logos. The defendants do not issue any invoices/bills for the sales/procurement made by its customers and that the said defendants works in a very clandestine manner. Photographs of the said infringing samples of the defendants bearing trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD" and its logos of the plaintiff are annexed with the plaint as ANNEXURE P- 5 (Colly). The photographs of the original product of the plaintiff are also annexed with the plaint as ANNEXURE P-6 (Colly).
22.The products of the plaintiff have certain characteristic features like all products bear standardized labelling, namely security label, size label and care label. Each label satisfies certain given standards as established by law and up to market standards.
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EXAMINATION ON THE BASIS OF THE LABELS ATTACHED ON THE PRODUCTS.
Original T-shirt Infringing T-shirt
Plaintiff Company (Defendant No.1, Retail
Unit)
The Security label The Security label is
fixed on the t-shirt, missing on the infringing t-
contains Under shirt.
Armour logo along
with a printed bar
code.
Every Security label The Security code is
attached to t-shirt missing on the infringing contains a security t-shirt.
code which is unique for every individual product.
Each T-shirt possess a Security code is missing in
unique Security code, the defendant's t-shirt
to affirm its
genuineness.
Detailed information Detailed information about
about every product is the product is missing.
setout in the care
label.
The genuine Under The size label is printed at
Armour t-shirt size the back of the product
label as contains, the Under
printed/stitched at the Armour logo and includes
back of every product inaccurate size of the
contains, Under product along with its
Armour logo and made.
includes the actual
size of the product
along with its made.
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Original T-shirt Infringing T-shirt
Plaintiff Company (Defendant No.2,
Manufacturing Unit)
The Security label The Security label is
fixed on the t-shirt, missing on the infringing t-
contains Under shirt.
Armour logo along
with a printed bar
code.
Every Security label The Security code is
attached to t-shirt missing on the infringing contains a security t-shirt.
code which is unique for every individual product.
Each T-shirt possess a Security code is missing in
unique Security code, the defendant's t-shirt
to affirm its
genuineness.
Detailed information Detailed information about
about every product is the product is missing.
set out in the care
label.
The genuine Under The size label is printed at
Armour t-shirt size the back of the product
label as contains, the Under
printed/stitched at the Armour logo and includes
back of every product inaccurate size of the
contains, Under product along with its
Armour logo and made.
includes the actual size
of the product along
with its made.
EXAMINATION ON THE BASIS OF QUALITY OF MATERIAL, FINISH AND PROPORTION OF TRADEMARKS (is annexed along with the plaint).
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23.It is further averred in the plaint that on a close scrutiny of defendants apparels, it has been observed that the fabric of the defendants apparels are that of an average quality. The said infringing apparels of the defendants has an average quality stitching. The infringing apparels do not carry the appropriate number of stitches per centimetre. The infringing products of the defendants are not well finished as compared to the high end finished products of the plaintiff. The labels on the defendants apparels have been poorly printed upon. The goods manufactured, stored, distributed and sold by the defendants do not carry a care label, security label, and MRP label. Thus, it's obvious that the trademarks and logos adopted by the defendants are identical and /or confusingly and/or deceptively similar to the registered trademarks of the plaintiff company "UNDER ARMOUR", "UA", "UA RECORD", and and unwary customers are likely to be easily deceived, confused or misled.
24.It is further averred in the plain that the trademarks used by the defendants are identical and /or confusingly or deceptively similar to the registered trademarks of the plaintiff company and such use of the trademarks by the defendants violates the statutory rights of the plaintiff. The use of trademarks which are identical and /or confusingly or deceptively similar to registered trademarks of the plaintiff in relation to similar goods with respect to which the CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 15 of 34 ::-
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trademarks are registered are likely to cause confusion in minds of unwary general public and further also such infringing products/apparels displays an association with registered trademarks of the plaintiff. Thus, it is an infringement of the said registered trademarks of the plaintiff.
25.The defendants are engaged in retail and manufacturing business thereby manufacturing, storing, distributing and selling infringing the plaintiff company's goods and the trademarks used on the infringing products being manufactured, stored, distributed and sold are identical and /or confusingly or deceptively similar to trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other trademarks of the plaintiff. The defendants have been engaged in such an illegal act and have thereby caused damage and business loss to the plaintiff on account of dealing in infringing the plaintiff's products. The said damage and loss of business may be huge and can be ascertained only on rendition of accounts of the defendants and that the plaintiff is entitled to such damages after ascertaining the business loss on rendition of accounts of the defendants.
26. By use of trademarks by the defendants which are identical and /or confusingly or deceptively similar to the registered trademarks of the plaintiff company, the defendants are reaping unfair advantage without any due cause and such an act is highly detrimental to the distinctive character and repute of the trademarks of the plaintiff.
Thus, it constitutes infringement within meaning of the Trademarks CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 16 of 34 ::-
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Act, 1999. The said use of the trademarks by the defendants which are identical and /or confusingly or deceptively similar to the registered trademarks of the plaintiff dilutes the reputation of the registered trademarks of the plaintiff company and the trademarks of the plaintiff are entitled to protection.
27.It is further submitted in the plaint that the apparels and accessories being manufactured, stored, distributed and sold by the defendants bearing falsified trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos are not the genuine products and are of an inferior quality. The defendants by falsifying the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos is deceiving the unwary purchasing public and also causing a huge monetary loss to the plaintiff and also diluting the goodwill and reputation of the plaintiff's trademarks.
28.The overall impact of the actions of the defendants and in fact the totality of the circumstances show that the defendants have acted with the sole intention of dishonestly riding upon the goodwill of the plaintiff and to cause deception and confusion in minds of the unwary purchasing public, otherwise there is no reason for the defendants to adopt same/ similar trademarks and logos as that of the plaintiff. The use of the trademarks and logos of the plaintiff by the defendants is a deliberate act to ride upon the goodwill and reputation of the plaintiff. The defendants are infringing the trademarks and logos of plaintiff company and are passing off its products, thereby making illegal gains to itself and causing CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 17 of 34 ::-
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wrongful loss along with loss of business opportunity to the plaintiff. These illegal activities of defendants are not only causing grave and irreparable loss and injury to the plaintiff but are also causing grave prejudice to public interest.
29.The defendants have acted to cause wrongful loss to the plaintiff company by infringing the registered trademarks, logos and passing off its products as the products of the plaintiff and the defendants have earned illegal profits on account of the unlawful use of the name, trademarks and logos of the plaintiff and if the defendants are not restrained from continuing the same, the plaintiff shall continue to have irreparable losses of business as well suffer injury to the goodwill of its trademarks. The plaintiff is entitled for an immediate order of injunction as well as damages in the suit.
30.The plaintiff has a good prima facie case with the balance of convenience entirely in the plaintiff's favour and against the defendants. In case an ad-interim ex-parte injunction is not granted in favour of the plaintiff company then the plaintiff is likely to suffer irreparable harm, loss and injury for which the company cannot be compensated monetarily. The cause of action for filing the present suit has arisen when the defendants started manufacturing, stocking, distributing and selling the infringing goods bearing trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff. The cause of action first arose in the month of June, CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 18 of 34 ::-
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2018, in favour of the plaintiff company and against the defendants when it learnt that such infringing goods are being freely sold and manufactured in the market of Shahadra and Prahladpur are thereby distributed in not only in the market of Shahadra and Prahladpur but also other parts of the country by the defendants and its associates and franchisees. The cause of action is still accruing on a continuous basis as the defendants are manufacturing, stocking, distributing and selling the infringing goods and are passing off goodwill and reputation of the plaintiff.
31.The plaintiff has prayed as follows:-
i. For an order for mandatory injunction thereby restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using the trademarks and copyright "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff company on goods including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff, thereby infringing plaintiff's registered trademarks and copyright.
ii. For an order for permanent injunction thereby restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using the trademarks and copyright "UNDER ARMOUR", "UA", "UA CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 19 of 34 ::-
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RECORD", and its logos and other registered trademarks of the plaintiff company on goods including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff, thereby infringing plaintiff's registered trademarks and copyright.
iii. For an order for mandatory injunction thereby restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using any trademarks identical and /or confusingly or deceptively similar to trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "Under "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff, thereby from passing off its goods and business as that of the goods and business of the plaintiff.
iv. For an order for permanent injunction thereby restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using any trademarks identical and /or confusingly or deceptively similar to trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff on goods CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 20 of 34 ::-
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including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff, thereby passing off its goods and business as that of the goods and business of the plaintiff.
v. For an order for ad-interim ex-parte temporary injunction thereby restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks/logos of the plaintiff in any form and manner which is identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff, on goods including apparels and accessories or any other goods, thereby infringing plaintiff's registered trademarks, copyright and passing off his goods.
vi. For an order for delivery up of all the impugned finished and unfinished materials bearing the impugned and violative trade mark/label or any other identical and /or confusingly or deceptively similar trade mark/label including labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff company for the purposes of destruction and erasure.
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vii. For an order to disclose the name of all other persons who are engaged in manufacturing, stocking and retail business of infringing products bearing marks/logos "UNDER ARMOUR", "UA", "UA RECORD", and its logos and using any indicia whatsoever to show any association or affiliation or connection of the defendants or their products with the plaintiff.
viii. For an order to provide a complete discovery of any and all documents and information relating to any and all transaction concerning the infringement of the trademarks of the plaintiff and preserve all documents and other evidence in their possession relating to the subject matter of the instant suit.
ix. For a decree for rendition of accounts and loss of business on account of sale of infringing goods by the defendants, in favor of the plaintiff company and against the defendants for infringing the trademarks of the plaintiff and passing off the business of the defendants in the name of the plaintiff.
x. For an order of appointment of Local Commissioner under Order XXVI Rule 9 of Civil Procedure Code, 1908, at an appropriate stage, directing the Local Commissioner to search and to inspect the above mentioned/stated premises of the defendants and seize all infringing goods including apparels and other accessories bearing marks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff used in similar manner and/or in a manner identical or confusingly or CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 22 of 34 ::-
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deceptively similar to the word mark "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff and to open the lock and door of the godown, if any, where the defendants are manufacturing, stocking and keeping huge quantity of spurious and infringing goods including apparels and other accessories.
xi. For a decree of punitive damages against the defendants.
xii. For costs in the proceedings;
xiii. For such further relief/reliefs to which the plaintiff's may be entitled looking into the facts and circumstances of the case.
32.In order to prove its case, the plaintiff has filed the affidavit of Mr.Narendra Singh, its AR, in evidence as his examination in chief and examined him as PW-1.
33.The witness of the plaintiff was not cross examined on behalf of the defendant number 1 and was cross examined on behalf of defendant number 2 only.
34.In his evidence, Mr.Narendra Singh has proved and exhibited the documents relied upon as follows:
i. Copy of the amended and restated bylaws is marked as Mark PW1/1.
ii. Copy of Power of Attorney dated 01.03.2018 is exhibited as Ex.PW1/2 .
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iii. Affidavit under section 65 B of the Indian Evidence Act is exhibited as Ex.PW1/3.
iv. Legal proceeding of trademark nos. 3000907, 1317481, 3274222 and 3274224 under class 9, 25, 41 and 42, are Ex.PW1/3 A, Ex.PW1/4, Ex. PW1/5 and Ex.PW1/6.
v. Affidavit of the investigator is exhibited as Ex.PW1/7.
vi. Photographs of infringing samples of the defendants bearing trademarks identical and / or confusingly or deceptive similar to the trademarks 'UNDER ARMOUR', 'UA', "UA RECORD" and its logos of the plaintiff company are exhibited as Ex.PW1/8 (collectively).
vii. Photographs of the original product of the plaintiff company are exhibited as Ex.PW1/9.
35.I have heard the arguments at length and have given my conscious thought and prolonged consideration to the material on record, relevant provisions of law and the precedents on the point. I have also carefully perused the judgment relied upon by the plaintiff i.e. Parle Products (p) Ltd. v. J.P. & Co. Mysore, 1972 AIR 1359;
1972 SCR (3) 289 decided by the hon'ble Supreme Court of India (date of decision : 28.01.1972) wherein it has been observed as follows:
"....Under s. 28(1) of the Trade and Merchandise Marks Act, 1958the registration of a trade mark in Part A or Part B of the register gave to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark was registered and to obtain relief in respect of the infringement of the trade mark in the manner provided by the Act. Under s. 29 (1):
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"A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark."
The expression '.'deceptively similar" has now been defined under s. 2(d) of the Act of 1958 thus "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;"
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According to Karly's Law of Trade Marks and Trade (9th edition paragraph 838):
"Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side .lm0 (1) [1965] 1 S.C.R. 737. 754 294 for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which. bore tile same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade- marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 25 of 34 ::-
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are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essen- tial features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in, our opinion who has a look at one of the packets to-day may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mis- take the defendants' wrapper for the plaintiffs if shown to. him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 26 of 34 ::-
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to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it..."
36.In his affidavit and his evidence recorded before the Court, Mr.Narendra Singh has deposed on the lines of the plaint and has reaffirmed, reasserted and reiterated the averments made in the plaint. His evidence qua defendant number 1 remains uncontroverted and unrebutted as the defendant number 1 has failed to appear before the Court and has failed to cross examine him.
Therefore, his claim as elaborated in the plaint and his evidence can be presumed to have been admitted as correct by the defendant no. 1.
37.As regards defendant number 2, his counsel has cross examined PW-1 Mr.Narendra Singh but only suggestions have been put which have been denied by him. Also a question regarding the name of Mr.Data Ram as defendant number 1 not being specifically mentioned in the plaint has been asked which has been admitted (It must be noted here that vide order dated 19.11.2018, on the application of the plaintiff under Order no. 1 Rule 10 read with section 151 of the CPC, the amended memo of parties was taken on record and summons were ordered to be issued to defendant number
2). Nothing material has come forth in the cross examination of PW-1 by defendant number 2 which may be of any help or aid to defendant number 2. No cogent nor convincing cross examination CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 27 of 34 ::-
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of PW-1 has been conducted on behalf of defendant number 2. The evidence of PW-1 Mr.Narendra Singh remains unshattered and unshaken qua defendant number 2.
38.As regards the jurisdiction, it is clear from the averments made and the evidence of PW-1 Mr.Narendra Singh that this Court has jurisdiction to try this case. Also, the following judgments also indicate that the cause of action arose within the jurisdiction of this Court:
(i) Lalli Enterprises v. Dharm Chand & Sons, R.F.A (OS) 29 of 2002, decided on 11.02.2000, MANU/DE/1596/2002 (hon'ble High Court of Delhi) ;
(ii) Shree Rajmoti Industries v. Rajmoti Oil Mill Pvt. Ltd and anr, decided on 02.11.2004, 115(2004) DLT 212, 2005 (30) PTC 38 Del, ( hon'ble High Court of Delhi);
(iii)World Wrestling Entertainment, Inc. v. Reshma Collection, FAO (OS) 506 of 2013, decided on 15.10.2014 MANU/DE/2597/2014, (hon'ble High Court of Delhi) ;
(iv) RSPL Limited v Mukesh Sharma and Ors, FAO (OS) 145/2016, decided on 03.08.2016, MANU/DE/1862/2016 (hon'ble High Court of Delhi) ;
(v)Marico Limited v. Gayatri Sevashram Private Limited and Ors, CS (Comm) 114/2016, decided on 29.04.2016 (hon'ble High Court of Delhi);
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(vi)Teva Pharmaceutical Industries Limited and Ors v. Natco Pharma Limited, FAO (OS) 144/2014, decided on 30.05.2014, MANU/DE/1373/2014 (hon'ble High Court of Delhi).
39.It is clear on perusal of original trademark/ label/mark of the plaintiff (Exhibit PW-1/9) and the impugned trademark/ label/mark of defendant (Exhibit PW-1/8) that they are very similar, rather deceptively similar. The impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case the trademark/logo/mark are practically of the same size; the design on both though not completely identical bears such a close resemblance that one can easily be mistaken for the other. The same appears to be deceptively similar to the mark of the plaintiff as it so nearly resembles that other mark as to be likely to deceive or cause confusion.
40.It is clear from the record including the evidence led by the plaintiff that the impugned the trademark/logo/ markof the plaintiff adopted and being used by the defendant in relation to its impugned goods appears to be identical with and deceptively similar to the plaintiff's above-said the trademark/logo/ mark of the plaintiff. The size of the trademarks etc. of the products of the defendants are deceptively similar to the trademark of the product of the plaintiff.
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41.The judgment in re Parle Products (Pvt) Ltd. relied upon by the plaintiff is squarely applicable to the given facts.
42.Therefore, it is clear from the above discussion that the plaintiff has been able to successfully prove its claim against the defendant.
43.The plaintiff has been able to show that the defendants had infringed the registered trade mark of the plaintiff and the suit of the plaintiff should be decreed and an injunction granted restraining the defendant from selling or using in any manner whatsoever its produce similar in appearance to the registered trade mark of the plaintiffs on their packets.
44.All the relevant averments and documents have been successfully proved by the plaintiff against both the defendants.
45.Accordingly, the case is hereby decreed in favour of the plaintiff and against the defendants and decree is passed in favour of the plaintiff as follows:
i. Mandatory injunction is hereby granted in favour of the plaintiff restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using the trademarks and copyright "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner and/or CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 30 of 34 ::-
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trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff company, thereby infringing plaintiff's registered trademarks and copyright.
ii. Permanent injunction is hereby granted in favour of the plaintiff restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using the trademarks and copyright "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trademarks of the plaintiff, thereby infringing plaintiff's registered trademarks and copyright.
iii. Mandatory injunction is hereby granted in favour of the plaintiff restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using any trademarks identical and /or confusingly or deceptively similar to trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner and/or trademarks CS (Comm) No.129/2019. Under Armour Inc. v. Avengers and another. -:: Page 31 of 34 ::-
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identical and /or confusingly or deceptively similar to the trademarks "Under "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff, thereby from passing off its goods and business as that of the goods and business of the plaintiff.
iv. Permanent injunction is hereby granted in favour of the plaintiff restraining the defendants, their associates and agents, officers, employees, distributors, representatives and assigns from using any trademarks identical and /or confusingly or deceptively similar to trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff on goods including apparels and accessories in any form and manner and/or trademarks identical and /or confusingly or deceptively similar to the trademarks "UNDER ARMOUR", "UA", "UA RECORD", and other registered trademarks of the plaintiff, thereby passing off its goods and business as that of the goods and business of the plaintiff.
v. An order for delivery up in favour of the plaintiff and against both the defendants of all the impugned finished and unfinished materials bearing the impugned and violative trade mark/label or any other identical and /or confusingly or deceptively similar trade mark/label including labels, display boards, sign boards, trade literatures and goods etc. to the plaintiff for the purposes of destruction and erasure.
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vi. An order in favour of the plaintiff and against the defendants to disclose the name of all other persons who are engaged in manufacturing, stocking and retail business of infringing products bearing marks/logos "UNDER ARMOUR", "UA", "UA RECORD", and its logos and using any indicia whatsoever to show any association or affiliation or connection of the defendants or their products with the plaintiff.
vii. An order in favour of the plaintiff and against the defendants to provide a complete discovery of any and all documents and information relating to any and all transaction concerning the infringement of the trademarks of the plaintiff company and preserve all documents and other evidence in their possession relating to the subject matter of the instant suit.
viii. Also, the counsel for the plaintiff has filed cost sheet of attorney fee i.e. lawyer fees for an amount of Rupees One Lac only (Rs.1,00,000/-) and cost sheet of expenses for an amount of Rupees Two Lacs and Eighty Five Thousand only (Rs.2,85,000/-) including attorney fee of Rupees One Lac only (Rs.1,00,000/-). Therefore, the attorney fee of Rupees One Lac only (Rs.1,00,000/-) and other costs of Rupees One Lac Eighty Five Thousand only (Rs.1,85,000/-) are also awarded in favour of the plaintiff and against both the defendants.
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ix. As regards a decree for rendition of accounts and loss of business on account of sale of infringing goods by the defendants, punitive damages against the defendants, the plaintiff has failed to lead any evidence to prove the same and this relief cannot be granted to the plaintiff.
x. The relief of appointment of Local Commissioner has already been granted in favour of the plaintiff vide order dated 09.07.2018. and other accessories.
46.The decree sheet be prepared accordingly.
47.After completion of formalities, the Ahlmad/JA of the Court shall consign the file to the record room.
NIVEDITA ANIL Digitally signed by NIVEDITA ANIL SHARMA
Location: delhi
SHARMA Date: 2020.12.14 15:36:17 +0530
Announced through video (NIVEDITA ANIL SHARMA)
conferencing on Cisco Webex on District Judge,
this 14th day of December, 2020. Commercial Court-01, Shahdara, Karkardooma Courts, Delhi. 14.12.2020.
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