Delhi District Court
Retail Royalty Company vs Al Ahmad Frozen Foods on 28 July, 2022
IN THE COURT OF DISTRICT JUDGE
(COMMERCIAL COURT-01),
SOUTH-EAST, SAKET COURTS, NEW DELHI
Presiding Officer: Sh. UMED SINGH GREWAL
CS No. 296/19
In the matter of:
Retail Royalty Company
Through Its Constituted Attorney
Mr. Shashi Chaudhari
101 Convention Center Drive
Las Vegas, Nevada 89109
United States of America ............Plaintiff No. 1
2. AEO Management Co.
Through Its Constituted Attorney
Mr. Shashi Chaudhari
77 Hote Metal Street
Pittsburgh, PA 15203
United States of America ............Plaintiff No. 2
Vs.
AL Ahmad Frozen Foods
Pvt. Ltd., E-67, 1st Floor
Abul Fazal Enclave, Jamia Nagar,
New Delhi - 110025. ............ Defendant No. 1
Date of institution : 27.04.2019
Date on which argument was concluded : 21.07.2022
Date of pronouncement of the order : 28.07.2022
CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 1 of 12
Judgment
1.This is a suit for permanent injunction for restraining copyright and trademark infringement, passing off, damages / rendition of accounts and delivery up.
2. Plaintiff no. 1 is company incorporated under the laws of State of Nevada, United States of America and plaintiff no. 2 is a company incorporated under the laws of State of Delaware, United States of America. Both are subsidiary of a common parent company namely American Eagle Outfitters, Inc. (hereinafter referred to as "plaintiff") . The plaintiff is a publically listed company and was founded in 1973 in United States of America and since then it is engaged in business of designing, marketing and selling ready-made garments and related accessories around the world including India. It is proprietor of various trademarks in India and around the world, including the Flying Eagle Device Mark .
It is being consistently listed for many years amongst the top clothing and accessory retailers in United States of America. The world's largest and best known brand management consultancy namely "Interbrand" has ranked the plaintiff among America's most valuable brands. In 2009, it was ranked 29 th, in 2010 the rank was 36 and in 2011 it was 38 and in 2012, 2013 and 2014, it was ranked at 42, 41, 43 respectively. It became a billion dollar company in 2001. Its annual revenue was 2.928 billion US Dollar in 2009 which CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 2 of 12 increased to 2.94 billion US Dollar in 2010 and to 3.120 US Billion US Dollar in 2011 and in 2018, the figure of revenue was 3 Billion US Dollar. The mark was created in United States of America by one of its employee namely Keith Fiori way back in 2003. The plaintiff is author / claimant of copyright for that mark by virtue of laws of USA and hence, in India, it is entitled to protection of the same by virtue of Berne Convention, 1886 and International Copyright Order, 1999. It is the first owner of that mark by virtue of Copyright Act, 1957. In India, it is owner of Registration No. A - 122033/2017 for that mark. Besides India, the copyright offices of several countries including USA and Canada have issued registration for that mark. Its goods bearing that mark are sold in over 1000 retail stores around the world including India. Additionally, goods bearing that mark are sold through its e-commerce website located as www.ae.com. The consumers of about 100 countries including India can purchase goods through that website. The said mark is being used on ready-made garments, related accessories, promotional material, in advertisement and on business incidentals such as invoices, shopping bags, gift and discount cards etc. In India, it is the proprietor of following valid and subsisting registered trademarks :-
CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 3 of 12 S.No Mark Reg. Class Reg.
No. Date
1 146355 3, 18 June
. 5 and 22,
25 2006
2 219568 14 August
. 1 and 25,
35 2011
3 255260 9, 16, June
. 4 24, 21,
36 2013
and
38
4 372936 3 Januar
. 9 y 17,
2018
It entered into exclusive multi store retail and e-commerce licence agreement with a leading Indian retail chain, to operate its stores and e-commerce website. From June 2018 to March 2019, 08 retail stores were opened and their number as on the date of arguments was 18. That mark is used on the goods sold through those stores also. Due to these reasons, its mark developed a stellar reputation not only in India, but beyond also.
CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 4 of 123. The defendant is engaged in the sale of buffalo meat under the mark Plaintiff's Indian representative alerted it in November 2018 about trademark Application No. 3976233 filed by defendant on 17.10.2019 for buffalo meat and edible oil in Class 29. Its representative engaged the service of a investigative firm which revealed that the defendant had started using that mark in relation to buffalo meat around October, 2018. That mark is quite identical and / or deceptively similar to its mark and copyright and hence a letter was sent to the defendant on 24.12.2018 not to use the said trademark, but no response was received despite a reminder letter dated 07.01.2019. Opposition against the registration of defendant's trademark application was filed on 11.03.2019 vide Opposition No. 976220 at Trademark's Registry, Delhi. But the defendant is still using the Eagle Device incorporated in his mark. Thus, the act of the defendant constitutes infringement u/s 29 (4) of the Trademark Act, 1999 besides being in violation to Paris Convention.
4. Defendant was served on 03.06.2019 and its right to file written statement was closed on 02.03.2020.
5. Learned counsel for plaintiff argued that side by side comparison of eagle device in defendant's mark and plaintiff's mark shows that defendant's mark is nearly identical to the plaintiff's mark. Though, the defendant's mark is bearing some additional elements CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 5 of 12 such as the words "TWIN EAGLE" followed by the "100 % BUFFALO MEAT". But, the additional words are insufficient to distinguish defendant's mark from that of the plaintiff. So, the requisite relief be granted.
6. Trademark of the plaintiff is "AMERICAN EAGLE OUTFITTERS", whereas the trademark used by the defendant is "TWIN EAGLES". The plaintiff cannot have exclusive appropriation to the word "EAGLE" as it is a descriptive word. On this point, this court is fortified by the following observation of Hon'ble Delhi High in "Retail Royalty Company vs. Pantaloons Fashion & Retail Ltd. & Ors. CS (OS) No. 2872/2015, decided on 23rd September, 2015" :-
"4. In my prima facie opinion, though the word "EAGLE" has been adopted by the plaintiff with respect to clothing, however I refuse to allow exclusive appropriation of the word "EAGLE" to the plaintiff, inasmuch as, unfortunately there is not only one eagle in this world and eagle as a name cannot be allowed to be appropriated exclusively by any one producer of any type of goods similar to the position that a descriptive word mark cannot be allowed to be exclusively appropriated by a manufacturer and/or a seller vide Marico Limited Vs. Agro Tech CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 6 of 12 Foods Limited, 2010 (174) DLT 279. Also, during the course of trial it will be examined whether plaintiff has first used the word "EAGLE" or there would be other persons who have already used the word "EAGLE"
with respect to their goods including clothing even prior to the plaintiff. This is all the more so in view of the following submissions made on behalf of the plaintiff itself before the Registrar of Trade marks at the time of seeking registration of its trade marks:-
"With regard to the remaining citations- "Eagle" (device) under No.301346; "Eagle"
under Nos.383665, 487768, 502740, 520267, 567176, 789654, & 1021087; "Eagle Blue" under No.400560; "Eagle Brand Agarbathies" under No.762782; "Eagle 80"
under No. 762786; "Eagle One" under No. 800611; "Golden Eagle" (with earth and eagle device) under No.858616; "Eagle Women"
(device) under No. 964386; "Pacific Eagle"
under No. 717599; "Blue Eagle" under No. 849107; "Eagle 100" (label) under No. 1395844; "Device of Eagle on Globe" under No. 1325013; and "Eagle Toys" (device) under No.1337366, we wish to invite the learned CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 7 of 12 Registrar's attention to the well-established judicial principle of entirety, which envisages that marks should not be segregated for the sake of unwarranted comparison. In consonance with this principle, while deciding the question of similarity between two marks, the marks have to be considered as wholes, and meticulous or fragmentary comparison is not the correct way. Thus, upon such consideration, the cited marks, when compared with the subject mark, are phonetically, visually, structurally, and conceptually dissimilar and distinguishable from the subject mark.
Therefore, although all the abovementioned cited marks and the subject mark share the common component "Eagle", it is the combining element "American" in the subject mark that helps the subject mark create a different and distinct overall impression from all the other marks."
xxx xxx xxx xxx As a concluding argument, we wish to submit that if so many marks comprising the element "eagle" can co-exist peacefully on the Register of Trade Marks (a fact that is apparent from the search report), CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 8 of 12 then there is absolutely no reason why the subject mark shouldn't be allowed to proceed to registration."
5. The aforesaid submissions made by the plaintiff before the Registrar of Trade marks referred to by me are as per the documents which have been filed before me today during the course of hearing on behalf of the defendants, and which documents clearly show that even the plaintiff claims exclusivity to its trade mark by use of the expression "American".
9. Now let me examine the word marks "AMERICAN EAGLE OUTFITTERS" / "AMERICAN EAGLE" of the plaintiff on the one hand and "URBAN EAGLE AUTHENTIC OUTFITTERS" of the defendants on the other hand. I have already stated above, the aspect with respect to the use of the word "EAGLE"
in the respective trade marks, and therefore there cannot be any illegality or lack of bona fides on the part of the defendants in using the word "EAGLE" along with the expression "URBAN", more so because plaintiff itself has CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 9 of 12 claimed exclusivity of the word "EAGLE"
along with the expression of "AMERICAN"
before the Registrar of Trade marks.
Therefore, there cannot be identity or
deceptive similarity of the mark "AMERICAN EAGLE" with "URBAN EAGLE", although the goods of both the parties are same, more so as the word "EAGLE" cannot be exclusively appropriated by the plaintiff.
13. So far as the first argument urged on behalf of the plaintiff of infringement of registered trade mark is concerned, it is seen that to establish infringement there will have to be either identity of the trade mark or deceptive similarity of the trade mark. It cannot be doubted that there is no identity of the trade mark, inasmuch as, the plaintiff uses the word mark "AMERICAN EAGLE"
whereas, the defendants want to use "URBAN EAGLE" without the expression "AUTHENTIC OUTFITTERS". There is no identity or deceptive similarity between the marks "AMERICAN EAGLE" and "URBAN EAGLE" and there is sufficient amount of distinction between the two, more so keeping CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 10 of 12 in mind as already stated above that plaintiff itself claims exclusivity of the mark not on account of use of the word "EAGLE" but because of the use of the word "AMERICAN"
along with the word "EAGLE" as is the case of the plaintiff before the Registrar of the Trade marks. At this stage, it will not be possible to hold that the trade mark of the defendants "URBAN EAGLE" will be identical or deceptively similar to the trade mark "AMERICAN EAGLE" of the plaintiff."
7. Now, let us see whether the device mark of the plaintiff and defendant are identical or similar or dissimilar. Following are their device marks :-
Plaintiff's Device Defendant's Device Mark Mark CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 11 of 12
8. Above device mark of the plaintiff shows that it is having only one eagle, but the defendant's device mark has two eagles. The first one is in dark shade and the second in light shade. The light shade suggests that the second eagle is the image of the first one. The other difference between device marks is that there is a shape of half moon below two eagles of the defendant's mark whereas, there is no such shape under the eagle of the plaintiff. The third difference is the words used below the device. The words "AMERICAN EAGLE OUTFITTERS", are written below the eagle of the plaintiff whereas the words "TWIN EAGLE " are used below the eagles of the defendant. Infact, the word "TWIN" suggests two eagles which are appearing just above that word. So, these are three vital differences which do not make them identical or similar. Rather, they make them totally dissimilar. Also, the plaintiff is in the business of clothing etc whereas the defendant is in the business of buffalo meat. So, goods sold by them are entirely different and not connected with each other in any manner. Due to dissimilarity between them, the general public cannot be said to have been mislead.
9. In view of the above discussion, the case is dismissed. Decree sheet be drawn accordingly.
File be consigned to Record Room.
Announced in Open Court
UMED Digitally signed
by UMED SINGH
on 28.07.2022 SINGH Date: 2022.07.28
16:50:16 +0530
(UMED SINGH GREWAL)
District Judge (Commercial Court)
South East/Saket Courts, New Delhi
CS No. 269/19 Retail Royalty Company & Anr. vs. Al Ahmad Frozen Foods Pvt. Ltd. . Page 12 of 12