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Delhi High Court - Orders

Under Armour Inc vs Sunita Hasani on 4 April, 2022

Author: Jyoti Singh

Bench: Jyoti Singh

                          $~15
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     CS(COMM) 209/2022

                                UNDER ARMOUR INC                         ..... Plaintiff
                                              Through: Mr. K.G. Bansal and Mr. S.K. Bansal,
                                              Advocates.
                                              versus
                                SUNITA HASANI                            ..... Defendant
                                              Through:

                                CORAM:
                                HON'BLE MS. JUSTICE JYOTI SINGH
                                                    ORDER

% 04.04.2022 I.A. 5174/2022 and 5175/2022(exemption)

1. Subject to the Plaintiff filing originals, clearer copies and documents with proper margins on which it may seek to place reliance, within four weeks from today, exemption is granted.

2. Applications are allowed and disposed of.

I.A. 5177/2022(exemption from pre institution mediation)

3. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.

4. Application is allowed and disposed of.

I.A. 5176/2022(exemption from advance notice upon Defendant)

5. Since there is urgency in the matter, Plaintiff is exempted from serving the Defendant with advance notice.

6. For the reasons stated in the application, the same is allowed and disposed of.

CS(COMM) 209/2022

7. Let plaint be registered as a suit.

8. Upon filing of process fee, issue summons to Defendant, through all permissible modes, returnable on 08.07.2022. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiff.

9. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiff. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

10. List before the Joint Registrar on 08.07.2022.

11. List before the Court on 23.08.2022.

I.A. 5173/2022(under Order 39 Rules 1 and 2 CPC)

12. Issue notice to the Defendant through all prescribed modes, returnable on 23.08.2022.

13. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure 1908 for grant of ex-parte ad-interim injunction.

14. As per the pleadings in the plaint, Plaintiff Company was founded in the year 1996 by Mr. Kevin Plank and is stated to be a leader in the segment it deals in. Plaintiff is known worldwide for its UNDER ARMOUR trademark, popularly represented through its acronym UA and its distinctive logo In due course, with a view to expand its business, Plaintiff Signature Not Verified Digitally Signed CS(COMM) 209/2022 Page 2 of 7 By:KAMAL KUMAR Signing Date:07.04.2022 13:22:30 adopted and started using various UA formative trademarks viz.: UA RUSH, UA HOVR, UA TECH, etc. and/or combinations thereof.

15. It is averred that the trademarks of the Plaintiff have over the years become recognizable as a brand which meets the highest standards of quality and reliability. Plaintiff is primarily engaged in the business of manufacture, distribution and sale of a large variety of goods including casual apparel, sports apparel, footwear etc. and has been using the trademarks for over more than two decades in relation to its goods and business.

16. It is further averred that the reputation and goodwill garnered by the said trademark/tradename UNDER ARMOUR transcends to its acronym UA, and as such, they have become synonymous with each other and are used interchangeably. The marks "UA" and "UNDER ARMOUR" are the most essential features of the Plaintiff's trading style/trade name and have all the trappings of an invented and an arbitrary trademark. The trademarks including the acronym "UA" are registered in India in different classes, the details of which have been furnished in paragraph 6 of the plaint and the registrations are valid and subsisting.

17. It is averred that the artworks involved in the Plaintiff's trademark alongwith its distinctive logo are original artistic works and the Plaintiff is the owner and proprietor of the copyright therein, thus having an exclusive right to deal with them in the course of trade in relation to its goods and business under Section 14 of the Copyright Act, 1957. Plaintiff has spent enormous amount of money, time and effort in promotion and advertisement of its distinctive trademarks. Plaintiff operates globally and at the end of the Signature Not Verified Digitally Signed CS(COMM) 209/2022 Page 3 of 7 By:KAMAL KUMAR Signing Date:07.04.2022 13:22:30 year 2020, despite the COVID-19 outbreak, Plaintiff reported a revenue generation reaching upto 4475 million dollars. Plaintiff also carries on business on internet through its website and has a domain name under www.ua.com.

18. It is contended by learned counsel for the Plaintiff that the Defendant, in the course of its business, has adopted and is using the mark "UA WOMEN / in relation to its impugned goods or business which are similar to that of the Plaintiff, by depicting the impugned mark/label upon its store front as well as on its packaging bags and other identifying and promoting materials via offline as well as online modes. The impugned mark UA WOMEN, is identical and deceptively similar to that of the Plaintiff's trademarks/tradename. The impugned mark/label as used by the Defendant on its offline store outlet and packaging bags are scanned and placed below-

19. It is contended by learned counsel for the Plaintiff that Defendant's adoption of the impugned mark/label is dishonest and with mala fide intentions in relation to the goods which are identical, deceptively similar to the goods of the Plaintiff. The Defendant's impugned mark UA WOMEN/ bears a high degree of resemblance with the Plaintiff's trademarks/tradename in each and every aspect viz. phonetically, conceptually, visually and in its basic idea and as such the impugned mark/label would falsely lead the members of the trade and public to believe that: (i.) the impugned mark/label and impugned goods thereunder originate from and/or have an association/relation/nexus with the Plaintiff's trademarks/tradename; (ii.) Plaintiff has set up a new business or venture for providing the impugned goods under the impugned mark/label; and/or Signature Not Verified Digitally Signed CS(COMM) 209/2022 Page 5 of 7 By:KAMAL KUMAR Signing Date:07.04.2022 13:22:30 (iii.)Plaintiff has granted a license to the Defendant for the use of the impugned mark/label while guaranteeing the high quality that the public is accustomed to and expects from the Plaintiff's trademarks/tradename.

20. It is further contended that Defendant has applied for the registration of the impugned mark/label in Class 25 and a publication was made in the Trademark Journal on 28.06.2021 on a "Proposed to be used basis" and on noticing the publication Plaintiff served a legal notice upon the Defendant. On 17.03.2021, the learned Registrar has raised objections under Section 11(1) of the Trade Marks Act, 1999 on the ground that there is a prior existing similar/identical trademark on record wherein the trademark of the Plaintiff "UA" has been cited.

21. It is contended by the learned counsel that on an investigation in the market in February 2022 the Plaintiff found that the Defendant is trading under the name and style of "UA WOMEN" and selling, advertising and promoting the impugned goods through its physical stores even in the State of Rajasthan, more particularly in the women's wear such as jackets, joggers etc. and another allied and cognate goods where the trade channels are identical. It is the contention of the Plaintiff that the Defendant is infringing the registered trademarks of the Plaintiff under Section 29 (4) of the Trade Marks Act, 1999 as well as passing off the goods by taking undue advantage of the reputation and goodwill of the Plaintiff.

22. Having heard the learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad- interim injunction. Balance of convenience also lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

23. Accordingly, Defendant, its proprietors/partners, agents, representatives, distributors, assignees, heirs, successors, stockists and all others acting for and on their behalf are restrained from using, selling, soliciting, manufacturing, marketing, importing, exporting, displaying, advertising on the internet through the afore-mentioned third-party websites or through any social networking websites or through their physical stores or by any other mode or manner dealing in or using the impugned mark/label UA WOMEN / or any other word/mark which may be identical with and/or deceptively similar to the Plaintiff's said trademarks/tradename in relation to their said goods and related/allied goods and from doing any other acts or deeds amounting to or likely to infringe the Plaintiff's registered trademark as aforementioned or amount to passing off their goods as that of the Plaintiff, till the next date of hearing.

24. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within one week from today.

JYOTI SINGH, J APRIL 04, 2022/st Signature Not Verified Digitally Signed CS(COMM) 209/2022 Page 7 of 7 By:KAMAL KUMAR Signing Date:07.04.2022 13:22:30