Delhi District Court
Retail Royalty Company vs . Northern Harrier Lifestyle Pvt Ltd. on 15 July, 2022
Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
IN THE COURT OF SH. NIKHIL CHOPRA (CURRENT POSTING),
SPECIAL JUDGE, CBI 13, (PC ACT), ROUSE AVENUE DISTRICT
COURT, NEW DELHI;
(TO BE ANNOUNCED BY THE COURT OF SH. DINESH KUMAR,
LEARNED ADDL. DISTRICT JUDGE02, SOUTH, SAKET COURTS,
NEW DELHI)
In the matter of
TM No.:51/2016
Retail Royalty Company
Through its Constituted Attorney
Shashi Chaudhri
101 Convention Center Drive
Las Vegas, Nevada 89109
United States of America
................Plaintiff
Versus
1. Northern Harrier Lifestyle Pvt. Ltd.
Plot No.361,
Rajdip Raw House,
New Dindoli, Village Karadava,
Karadava Road, Near Millenium Park,
Surat, Gujrat394210
2. Arun Kumar Maurya
173, Village Bhadrawan
Barsathi Block, Jaunpur,
Uttar Pradesh 222162
3. Rahat Ali
Page 1 of 58
Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
City Top, E1/408,
Viram Khand, Gomti Nagar,
Lucknow
4. M/s City Top
City Top, E1/408,
Viram Khand, Gomti Nagar,
Lucknow
5. M/s V3 Fashion
J/118, MIDC, Boisar,
Thane401506, Maharashtra
.............Defendants
SUIT FOR PERMANENT INJUNCTION RESTRAINING TRADE MARK
INFRINGEMENT, PASSING OFF OF TRADE MARK, ACTS OFUNFAIR
COMPETIO, SEEKING DAMAGES/ RENDITION OF ACCOUNTS,
FREEZING OF ASSETS, DELIVERY UP AND OTHER APPROPRIATE
RELIEF
Date of Institution : 14.01.2016
Date of reserving the judgment : 10.05.2022
Date of pronouncement : 15.07.2022
Decision : Decreed
JUDGMENT
1. Judgment disposes off a suit for permanent injunction, restraining infringement of trademark, passing off and rendition of accounts filed by the plaintiff claiming violation of its intellectual proprietary rights by defendants.
2. Plaintiff Retail Royalty company, a US based Page 2 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
incorporation engaged in trading of ready made clothing and proprietor of the trade mark - "AMERICAN EAGLE OUTFITTERS", has challenged the use of the trademark "AMERICAN FOX OUTFITTERS", being used by defendant No. 1 company, in relation with it's business of clothing. Defendant No. 2 is stated to be the Director of defendant No. 1. Defendant No. 3 is also a Director, as well as the owner of outfit under the name and style M/s CITY TOP operating from Lucknow. Defendant No. 5 M/s V3 FASHIONS is a manufacturer of cloths, bearing the impugned mark AMERICAN FOX OUTFITTERS.
3. Plaintiff company is stated to have been founded in the 1970s and using the corporate name AMERICAN EAGLE OUTFITTERS, since 1977. Plaintiff is claimed to be listed company, with the New York Stock Exchange, and it's operation is stated to be spanning across numerous countries around the world, including USA, UK, CANADA and HONG KONG. Plaintiff deals in footwear, headgear, belts and jewellery, and the ready made clothing is stated to be the largest source of it's revenue. As regards the reputation, the plaintiff is stated to be listed first in Forbes Platinum; Forbes 500 list of America's 1000 largest corporations, and ranked as amongst the most valuable brands by inter brand. Plaintiff is stated to have achieved significant commercial success and witnessed numerous milestones. It is stated to have opened various stores in different countries Page 3 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
between the year 2001 to 2014. Apart from using the AMERICAN EAGLE OUTFITTERS since 1997, the plaintiff has also been using the domain names americaneagleoutfitters.com and www.ae.com, and stated to be using the domain names - www.americaneagleoutfitters.in and americaneagleoutfitters.co.in, since the year 2011.
4. It is averred that the plaintiff has affiliates around the world. Plaintiff is stated to be the proprietor of Mark AMERICAN EAGLE OUTFITTERS, which is claimed to be used either by itself or in conjunction with an eagle device for the purpose of clothing tags, retail stores, hoardings, signboards, invoices, catalogues, gift cards, discount cards, advertisements etc. Plaintiff extended it's business for clothing for pets and have adopted AMERICAN BEAGLE OUTFITTERS in respect of the said business.
5. Plaintiff has more than 1050 stores/licencsed partners across the globe and it's marketing site is also stated to be accessible from around the world, including from India.
6. It is averred that the plaintiff company has ranked as amongst top 100 internet retailers in US and that consumers in about 81 countries can purchase their merchandise through it's ecommerce web site www.ae.com .
Page 4 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
7. It is averred that the plaintiff revenue has risen from 1.3 billion US Dollars to 3.823 billion US Dollars in the year 2014. As regards the advertisement, it has been claimed that the plaintiff had been advertising through telephone, print media, instore, signages, direct mailings, advertisements in magazines, etc. and it's expenditure has risen from 44.4 million US dollar in 2002 to 94.2 million US dollar till the year 2014. It is stated that the marks has also acquired the status of well known mark, and the mark AMERICAN-EAGLEOUTFITTERS is registered in more than 100 countries. The mark - AMERICAN EAGLE is stated to be registered in over 65 countries. The registrations pertains to various classes, being class3, class9, class14, class 18, class25 and class35.
8. In so far as it's registration in India is concerned, it is averred that the trademark AMERICAN EAGLE OUTFITTERS is registered at no. 905098 on 25.02.2000 under class25 and the mark AMERICAN EAGLE is registered at no. 1486587 on 12.09.2000 under class18 and 25.
9. Plaintiff has further claimed that eversince the year 1995, it has been engaged in getting it's merchandise manufactured from India, and since the year 2006, the consumers in India have been able to purchase plaintiff's goods from the web portal wwe.ae.com.
Page 5 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
10. It is averred that the plaintiff has used it's mark in India quite extensively and it is a well known mark, in terms of Section 2 (1) (2g) of the Trade Marks Act, 1999.
11. Plaintiff became aware of the defendants application filed by defendant no. 2 for registration of it's impugned mark under class25, relating to ready made garments, clothing, apparels, etc. Upon enquiries plaintiff is stated to have found that defendant no. 1 M/s Northern Harrier Lifestyles Pvt. Ltd. is engaged in the sale of clothing, using the mark AMERICAN FOX OUTFITTERS Device. It is stated that letter dated 23.10.2015 for immediate cessation of use were issued, which were served upon the agents of defendants. Reply dated 16.11.2015 is stated to have been received from the defendants. Plaintiff has claimed to have responded vide it's communication dated 20.11.2015 to the said reply.
12. Plaintiff has claimed that defendants continued to use the impugned mark and were also found to have activated the website - www.americanfox.co.in. It's merchandise is also stated to be available for sale on web portals like Flipkart.
13. It is averred that the business of the plaintiff and defendants are identical and that the impugned mark is highly similar in terms of it's structure, colour, font style, as well as over all impression, and having regard to the fact that the same Page 6 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
are being used in relation with identical goods, there is likelihood of confusion amongst the consumers. It is also averred that the defendant is neither a registered proprietor, nor even a permitted user of the said mark, and that the clothing of the defendant does not even match the superior quality of the clothing of the plaintiffs. By such adoption and use of the impugned trademark, plaintiff's reputation has suffered in terms of dilution. Defendant is stated to have committed a tort of passing off.
14. As regards jurisdiction, it is averred that the goods of the defendant are available within the jurisdiction of this court as same can be accessed through the website and purchased from within the jurisdiction of this court, as well as on the ground that the plaintiffs as it's business partners in Delhi.
15. Claiming cause of action accrued in favour of plaintiff.
Following relief has been prayed for grant of permanent injunction restraining the Defendant Nos.1 to 5, their directors, officers, proprietors, agents, representatives, managers, employees, and related entities or persons, any entities or persons operating under their control, and all other acting for and on behalf of the Defendants, from manufacturing, marketing, offering for sale, selling, displaying, advertising, whether directly or indirectly, and whether online or offline, goods, including but not limited to, readymade clothing baring the Defendants' Mark, the word mark Page 7 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
AMERICAN FOX OUTFITTERS, the Plaintiff's Marks or any mark that is either identical or deceptively similar to the Plaintiff's Marks; from doing any act that amounts to infringement of the Plaintiff's Marks; from passingoff their goods as those of the Plaintiff or from doing any acts that may suggest a connection or association with the Plaintiff; and from holding themselves out as being related to the Plaintiff in any manner. Plaintiff has further prayed for passing order directing the Defendant Nos.1 to 5 to immediately terminate the sale of readymade clothing and other goods bearing the Defendants' Mark in each of its stores in Lucknow, Surat and elsewhere in India; to immediately cease and desist from manufacturing readymade clothing and other goods bearing the Defendants' Mark, the word mark AMERICAN FOX OUTFITTERS, the Plaintiff's Marks or any mark that is either identical or deceptively similar to the Plaintiff's Marks; directing the Defendant No.2 to withdraw the trade mark application No.2835651 and give an undertaking to this Hon'ble Court to the effect that neither the Defendant No.2 nor the defendant No.2's agents/representatives/affiliated entities will apply to register any mark deceptively similar to any of the Plaintiff's Marks anywhere in the world; for delivery up by the Defendants to the Plaintiff of all goods, including readymade clothing, packaging, labels, price tickets and any other materials that bear the Defendants' Mark
(s), Plaintiff's Marks, or any mark that is either identical of deceptively similar to the Plaintiff's Marks, in possession of the Defendants or a person or entity related to the Defendants or Page 8 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
under control of the Defendants, whether jointly or severally; as well as decree of rendition of accounts of the profits earned by the Defendants, either jointly or severally, from the activities complained of and a decree for the amount so found due to be passed in favour of the Plaintiff. The Plaintiff undertakes to file such court fee, as may be required by this Hon'ble Court at any point of time in future along with damages.
16. Defendant No.1 to 4 filed their common written statement raising the preliminary objections as to the suit being an abuse of process of law; not maintainable on the grounds of concealment of material facts and misrepresentation; based on mala fide & frivolous allegations and concocted stories; bad for want of jurisdiction; lack of any cause of action against the defendants. Defendants submitted that they are engaged in the business of manufacture and marketing of readymade garments, clothing, apparels, footwear etc. and have conceived and adopted the trademark "AMERICAN FOX OUTFITTERS" in the year 2012 in respect of their business only after confirming that no other similar trade mark/ tradename existed in the said business of clothing etc. and have also carried out extensive advertisement & promotional campaign in respect of their trademark "AMERICAN FOX OUTFITTERS". The defendants are stated to have gained goodwill and reputation in market and have applied for registration of their trademark "AMERICAN FOX OUTFITTERS" in India.
Page 9 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
17. Defendants further submitted that their trademark and the plaintiff's trade mark are absolutely different in mark, colour and font size and there is no deceptive similarity between the two. It is submitted that plaintiff's trademark device is "eagle" and defendants' trademark device is "fox" which are distinguishable. It is submitted that the plaintiff being a franchise of big American Company is mounting unwarranted & undue pressure & force upon the defendants to close their business, and that the defendants are not indulged in any business and trade using identical or similar mark of the plaintiff. Defendants' company is stated to have its own entity & reputation in the market and amongst the customers as it is one of the fastest growing manufacturers of readymade garments & other goods. The plaintiff stated to have not opposed the registration of the defendants' trademark. The defendants are stated to have neither activated the domain name of plaintiff company nor controlled the website and that the domain name generated by defendants for their business and the website, never belonged to American Eagle Outfitter.
18. On merits, defendants denied the allegations made by plaintiff while submitting that the words American and Outfitters are common words and no exclusive right is made out according to Trademark Act, 1999.
Page 10 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
19. It transpires that vide order dated 21.03.2016, defendant No.5 was proceeded exparte.
20. Vide order dated 20.07.2017, Learned Predecessor framed the following issues:
1. Whether the defendants have honestly adopted the mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing? OPD
2. Whether the defendant use of the mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing constitutes infringement of plaintiff's Marks? OPP
3. Whether the defendants by use of the mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing have engaged in passingoff? OPP
4. If the above issues or any of them are decided in favour of the plaintiff, then to what relief including of damages and if so in what amount is the plaintiff entitled to and from which of the defendants? OPP
5. Relief
21. Vide order dated 15.03.2018, a Local Commissioner was appointed for the purpose of recording of evidence on behalf of the plaintiff.
22. Plaintiff examined Sh. Shashi Chaudhary as PW1, Page 11 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
who tendered his evidence by way of affidavit Ex.PW1/A. He relied on the following documents:
1. Original Power of Attorney dated 7.05.2015 as PW1/1;
2. Computer printout of plaintiff's annual report for the financial year 2012, 2013, 2014 and 2015 filed with Securities and Exchange Commission of USA, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/2;
3. Printout from the official website of the State of Delaware showing incorporation details of the American Eagle Outfitters and printout of the plaintiff's annual report for the financial year 2015, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/3;
4. Printout form 10KEX21 of the plaintiff's annual report for the financial year 2014 showing the list of plaintiff's subsidiaries using the mark American Eagle as part of their corporate names, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/4;
5. Printout of the Forbes Platinum List for 2006 showing the plaintiff's ranking, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/6;
6. Printout of the Fortune 500's List of American's 100 largest corporation, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/7;
7. Printout of Interbrand's Reports during the period 2009 2014, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/8;
8. Printout from Whois records of the domain names of plaintiff, supported by certificate under Section 65B of Page 12 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
Indian Evidence Act as Ex.PW1/9;
9. Printout from Whois records of the domain names of plaintiff, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/10;
10. Printouts of screenshots of web pages of the plaintiff's India specific website, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/11 (colly.);
11. Printouts of pictures showing use of American Eagle Outfitters mark on clothing, clothing labels, and retails stores, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/12 (colly.);
12. Printouts of pictures showing use of American Eagle mark on clothing, clothing labels, and retails stores, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/13 (colly.);
13. Printouts of plaintiff's social media pages and printouts of screenshots of plaintiff's Ipad, Iphone and Android Apps, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/14 (colly.);
14. Printouts of pictures showing use of American Eagle and American Beagle Outfitters and Device Mark on and in connection with readymade clothing for pets, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/15 (colly.);
15. Printout of representative listing of the plaintiff's stores, supported with certificate under Section 65B of Indian Evidence Act as Ex.PW1/16;
16. Printout of report of the L2 Digital Index, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/17;
Page 13 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
17. Printouts of press release regarding the announcing the launch of the AE all access pass alongwith printouts of pictures of pass, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/19 (colly.);
18. Printout of press release regarding the announcing sponsorship of the TV Show "The Apprentice", supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/20;
19. Printout of representative sampling the copies of advertisement along with Editorial Credits Reports from January 2006, April 2006, November 2006 and April 2007, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/21 (colly.);
20. Printout of email advertisements by the plaintiff, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/21 (colly.);
21. Printouts of Administrative Panel Decisions in Case Nos.DCN1300514 dated 24.04.2013 and DCN 1200495 dated 18.12.2012 passed by Hong Kong International Arbitration, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/24 (colly.);
22. Copy of order dated 03.12.2014 in CS (OS) 3705/2014 and order dated 25.10.2013 in CS (OS) 2039/2013 passed by Hon'ble Delhi High Court as MarkA (colly.);
23. Copy of Resolution No.1109999 dated 26.10.2015 passed by Ecuadorian Institute of Intellectual Propert in process no.IEPIUIOOISD201459416RE along with certified English translation, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/26 (colly.);
Page 14 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
24. A representative list of all the trademark registration of the American Eagle Outfitters Mark as of 19.08.2014, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/27 (colly.);
25. Copies of the trademark certificates for the Marks AMERICAN EAGLE OUTFITTERS and American Eagles as MarkB (colly.);
26. Original trademark certificate of the Marks AMERICAN EAGLE OUTFITTERS, AMERICAN EAGLE and AMERICAN EAGLE Device as Ex.PW1/29 (colly.);
27. Copies of the affidavits executed by Indian Manufacturers and copies of invoices issued by Indian Manufacturers for the manufacture of plaintiff's goods as MarkC (colly.);
28. Copy of orders received from India and copies of invoices issued by the plaintiff company as MarkD (colly.);
29. Printout of photographs of some Indian celebrities wearing clothing bearing one or more marks of the plaintiff's marks, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/32;
30. Printout of the screenshots from few fashion blogs, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/33;
31. Copy of online data base of the Trade Mark Registry dated 29.12.2015 as MarkE;
32. Investigation report dated 06.10.2015 as Ex.PW1/35;
33. Printouts of pictures showing the defendants Page 15 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
clothing items, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/36 (colly.);
34. Two office copies of the cease and desist notice dated 23.10.2015 alongwith three returned envelops etc. as Ex.PW1/37 (colly.);
35. Reply dated 28.10.2015 of the defendants as Ex.PW1/38;
36. Reply dated 20.11.2015 to the reply dated 28.10.2015 as Ex.PW1/39;
37. Printouts of the extracts from the defendants' website dated 08.02.2016, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/40 (colly.); and
38. Printouts of the extract from the defendants' websites dated 09.02.2016, supported by certificate under Section 65B of Indian Evidence Act as Ex.PW1/41 (colly.).
23. During cross examination, PW1 submitted that he did not know as to who signed at PointA on Ex.PW1/1. He submitted that no signature were put in his presence; and that he was not present at the time of execution of document Ex.PW1/1. He stated that Retail Royalty is an original company operating and incorporated in USA and the same has no franchise in India; that "American Fox Outfitters" is not the mark of the plaintiff and volunteered that the mark "American Fox Outfitters" is an infringement of the mark of the plaintiff. He admitted that plaintiff never used the word "American Fox Outfitters" as it has not been involved in the merchandise of the Page 16 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
same anywhere in the World and volunteered that "American Fox Outfitters" have never been used on any of the merchandise ever. He submitted that "Fox" has never been used either in any of their registered domain name till date or any of the affiliated companies all over the world; that there is no domain name registered either with only word "American" or with only word "Outfitters"; that the word Eagle is being used in the domain name and also as a device and neither word American nor word Outfitters is being used in the domain names; that the word American is used for residents of America or any product manufactured by USA or in USA; that word Eagle is a common word for bird and the outfitters, as per English Dictionary is normally used for tailors. PW1 denied that America/ American and Eagle cannot be used by anyone in registering the domain names.
24. He deposed that font size and the font used by the company in the domain names are not specific as it can be typed in any font/size and the size of the font in Marks depends from product to product and he was not aware of the font being used by the company on the marks; that he was not competent to say about the type of font and its size used by the defendants but the use of the words American and the Outfitters in the mark and the domain names is sufficient to be deceptive and can be mistaken as a mark of the plaintiff company. He further submitted that their company has no retail outlets in India and Page 17 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
he was not aware whether defendants are selling their products outside India; that he was not aware if any foreign buyer outside of India had come across any such problem of deception; that they have not attached any complaint from any of their customers from anywhere. PW1 deposed that the plaintiff company filed the opposition to the registration application of the defendants, but not aware as to passing of any order in this respect; and that he could not say anything about the losses, but the use of the mark by the defendant being deceptively similar to the plaintiff's company does create doubt in the minds of the buyers. He denied that the plaintiff company is not in loss due to the business of the defendant company or that the present suit was filed without any basis and documents; or even that defendant company never ever involved in infringement, passing off of plaintiff's domain name and marks. He further denied that the present suit has been filed to harass the defendants and to grab money from them.
No other witness was examined on behalf of the plaintiff.
25. Defendants examined Sh. Basant Lal as DW1 and Sh.
Arun Kumar Maurya as DW2.
26. DW1 tendered his evidence by way of affidavit Ex.DW1/A and relied on the following documents:
Page 18 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
1. Affidavit under Section 65B of the Indian Evidence Act as DW1/B;
2. Internet downloaded copy of Serial No.2, a trademark details of ARBABN OUTFITTERS as Ex.DW1/1;
3. Internet downloaded copy of Serial No.3, a trademark details of COUNTRY OUTFITTERS as Ex.DW1/2;
4. Internet downloaded copy of Serial No.4, a trademark details of COUNTRY OUTFITTERS LIFE as Ex.DW1/3;
5. Internet downloaded copy of Serial No.5, a trademark details of FOX OUTFITTERS as Ex.DW1/4;
6. Internet downloaded copy of Serial No.6, a trademark details of SNOW FOX OUTFITTERS as Ex.DW1/5;
7. Internet downloaded copy of Serial No.7, a trademark details of RED FOX OUTFITTERS as Ex.DW1/6;
8. Internet downloaded copy of Serial No.8, a trademark details of ENGLISH AMERICAN as Ex.DW1/7;
9. Internet downloaded copy of Serial No.9, a trademark details of AMERICAN SWAN as Ex.DW1/8;
10. Internet downloaded copy of Serial No.10, a trademark details of ALL AMERICAN CLOTHING as Ex.DW1/9;
11. Internet downloaded copy of Serial No.11, a trademark details of OUTFITTERS Nation as Ex.DW1/10;
12. Internet downloaded copy of Serial No.12, a list of trademarks details which have 'American' as common word as Ex.DW1/11; and
13. Internet downloaded copy of Serial No.1, a Page 19 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
trademark details of AMERICAN EAGLE as Ex.DW1/12.
27. In cross examination, DW1 deposed that Sh. Arun Kumar Maurya approached him to design the impugned mark; that Sh. Arun Kumar Maurya asked him to search/design a brand name and a logo in Class 25; that he did not have any legal knowledge of Trade Marks laws but he knew what are the restricted words or what are common words in Trade Mark registration as a layman. He deposed that no document relied upon by him is dated prior to 14.01.2016; that he did conduct a search in the Trademark Registry in Class 25 for conflicting marks before suggesting the impugned mark to defendant company. He stated that the examination report issued by Registrar of Trademark was shown to him and he asked the defendant to file reply; that he advised Sh. Arun Kumar Maurya that the words "American" and "Outfitters" are generic words and the trademark cannot be seen in individual words and it should be in conjunction of device of FOX along with jumble words and that trademarks in examination report were neither similar nor same. He further deposed that Sh. Arun Kumar, during the marketing of clothing, manufactured readymade garments in the name of "American Fox Outfitters" and distributed the same to shops and response thereto was observed for more than one year; that after Sh. Arun Kumar did market research and he created & designed the trademark in the year 2012, he could say that the defendants are using "AMERICAN FOX OUTFITTERS" since 2012. He stated that Page 20 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
upon research, he found that there are many brands which either are using American or Oufitters or combination of both and if there are multiple brands in mark with similar word like American and Outfitter and if someone has exclusive rights on these words, the same should not have been used by others; that since there were already many people, in the trademark register, with the words American and Outfitters, he suggested the defendants to use American Fox Outfitters as it would create no problem. He further deposed that he designed the device FOX in defendants' trademark, which he picked from the internet. He denied that defendants' trademark was designed by keeping in mind the plaintiff's trademark.
28. DW2 Sh. Arun Kumar Maurya tendered his evidence by way of affidavit Ex.DW2/1 and relied on the documents already exhibited as Ex.PW1/37 & Ex.PW1/38 and copy of receipt no.1272260 issued by Trade Mark Registry, Dwarka, New Delhi as Ex.DW2/4.
29. During cross examination, he deposed that no power of attorney was executed by defendant No.3 & 4 in his favour; that he personally searched about trade mark "AMERICAN FOX OUTFITTERS" from Ministry of Commerce and Trade Affairs and he took the advice from his technical experts, who, after research, informed him that there is no other brand exists in the name of "AMERICAN FOX OUTFITTERS"; that Ministry of Page 21 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
Commerce and Industry, Department of Intellectual Property and Promotion never issued any conflict report; that he did not file any examination report in the present matter as the same has no concern with the said report by Trade Mark Registrar; that he did not remember that the plaintiff's mark "AMERICAN EAGLE OUTFITTERS" was cited as a conflicting mark in the said examination report; that he did not file any reply to the examination report in the present matter; that he did not know about the response in the said reply to the cited mark 'AMERICAN EAGLE OUTFITTERS' vide application no.905098 dated 22.02.2000; that he did not file any invoice raised by him regarding the sale under the Trade Mark AMERICAN FOX OUTFITTERS.
30. DW2 deposed that he instructed Sh. Basant Lal to pick and design a logo which should be unique but did not instruct him to pick the image of FOX in his trademark from the internet and volunteered that he picked the FOX on his own; that till today he was not informed by Sh. Basant Lal that the device of FOX in his trademark was lifted from internet; that he was the one who selected the words American and Outfitters in the trademark; that there is no trademark licence agreement executed between him and defendant No.1; that he adopted the impugned trademark in 2012 and applied for registration in 2014; that he has two trademarks namely "AMERICAN FOX OUTFITTERS" with device FOX and "BRITISH SQUARE"; that Page 22 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
he was aware that the plaintiff had filed an opposition against the registration of "AMERICAN FOX OUTFITTERS" with device FOX and defendant No.1 filed counter statement against that opposition of the plaintiff company; that he never asked/ suggested by Sh. Basant Lal for withdrawing the trademark application after examination report issued by Trade Mark Registry; that presently his goods bearing impugned trademark "AMERICAN FOX OUTFITTERS" with device FOX are being sold in Delhi, UP, Bihar, MP, Uttrakhand, Kerala, Maharashtra, Gujarat and Karnataka; that the domain www.americanfox.com was started in 2015 and he is the owner of the said domain in his personal capacity.
No other witness was examined by the defendants.
31. I have heard the Learned counsel for the parties and have gone through the relevant records as well as written submissions filed by the parties.
32. Main contentions of the Learned counsel for the plaintiff are:
1. The plaintiff is the registered and prior user of the trademark "AMERICAN EAGLE OUTFITTERS" and has proved on record its vast reputation not only by means of proving on record its network of stores, presence on internet, ecommerce, but also its ranking with international agencies;
2. Plaintiff was incorporated in 70s and had been using the Page 23 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
trademark "AMERICAN EAGLE OUTFITTERS" since 1977 regularly and openly and as expended its business in number of countries. Plaintiff has also proved on record Brand ranking in the year 2009 to 2014, which is proved on record as Ex.PW1/8 and its finding place in Fortune 500, which is proved as Ex.PW1/7;
3. Plaintiff has also adopted a domain name "americaneagleoutfitters.com" in the year 2002 and has been using "americaneagleoutfittrs.in", "americaneagle.co.in" and "americaneagle.in", which are proved on record as Ex.PW1/9 and Ex.PW1/10;
4. Plaintiff has proved its extensive presence and advertisements as well as list of stores by means of document proved as Ex.PW1/12 to Ex.PW1/16;
5. Plaintiff has got its trademark registered under various jurisdictions. The list of which has been proved on record as Ex.PW1/27. As records registration in India, the plaintiff's trademark "AMERICAN EAGLE OUTFITTERS"
is registered in India with registration No.905098 dated 22.02.2000 under Class25 and its trademark "American Eagle" is registered under Class18 w.e.f. 12.09.2006 and its device is registered under Class99 registered on 30.01.2008, which is proved by document Ex.PW1/29 (colly.);
6. Plaintiff is the prior user by all means and as would be clear from the mark - E, the defendants have claimed their user details w.e.f. 01.05.2012, in their application dated 02.11.2014. The defendants' user of Mark "AMERICAN FOX OUTFITTERS" is mala fide adoption which is deceptively similar to the plaintiff's mark "AMERICAN EAGLE OUTFITTERS" and the defendants have been riding on the extensive goodwill and reputation painstakingly, built by the plaintiff company;
7. The defendants have copied the mark of the plaintiff in Page 24 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
its entirety, including structurally, placement of words, font style, etc. and have made cosmetic changes by incorporating word "FOX" and replacing the device of Eagle by the device of "FOX". The defendants have not been able to show that the adoption of the impugned mark is bona fide or innocent. The said adoption is capable of misleading an average and unwary consumer into confusion and make them believe that the defendants brand is an extension of the plaintiff, in view of the over all impression of similarity;
8. Plaintiff has also adopted the mark "AMERICAN BEAGLE OUTFITTERS" and accordingly, the use by the defendants of the mark "AMERICAN FOX OUTFITTERS"
may cause an average consumer to believe that it is yet another brand of the plaintiff;
9. Defendants did not exercise due diligence before adopting the impugned mark and in its report dated 07.01.2016 in respect of the defendants' mark, the Registry of Trademark has cited the plaintiff's mark, which itself shows that the defendants' mark is distinctively similar to the plaintiff;
10. The defendant continues to use the impugned mark despite Cease & Desist Notice - Ex.PW1/37;
11. Defendants are guilty of infringement as well as passing off as all the elements distinctive similarity an likelihood of confusion and the plaintiff continue to sell identical goods have been proved on record. The plaintiff is entitled to damages, deliveryup as well as injunction in view of the fact that the defendant has dishonestly adopted the mark distinctively similar to that of the plaintiff and has not been able to justify the adoption as honest.
33. The main contentions of the Learned counsel for the Page 25 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
defendants are:
1. The claim of the plaintiff is mala fide and is made to extract money from the defendants. The defendants have honestly adopted the trademark "AMERICAN FOX OUTFITTERS" in the year 2012 after the confirmation that no any other similar mark exists in line of the concerned business. Extensive market research, and search in Trademark Registry was effected and it was thereafter that the defendants applied for registration of the mark on 02.11.2014;
2. Defendants have honestly adopted the said mark and have been extensively using their distinctive trademark "AMERICAN FOX OUTFITTERS" since 01.05.2012 and being the proprietor of the said mark has generated and developed a domain name "www.americanfox.co.in" for their business;
3. Plaintiff has only filed their application on 17.05.2016 which is opposed by the defendants and it has also been revealed that the plaintiff has claimed user date as 31.12.2013 in its application for Class99, which is subsequent to the user by the defendants;
4. Plaintiff cannot claim any monopoly, over the words "America", "Eagle", or word "Outfitters" as they are general English terms denoting country, animal etc.;
5. There is no similarity in the marks of the plaintiff and the defendants, inasmuch as, neither there is any monopoly, but also marks are different in their appearance and over all expression. The device Fox and word Fox provides the mark different aura and functionality and also renders the mark/ device as different visually/structurally and functionally. The marks are different even phonetically and there is no close resemblance which could confuse any average person of imperfect recollection. Websites of both the parties are different and access to one does not lead to Page 26 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
the other party. Font size and alignment of both the marks are absolutely different;
6. In terms of Vienna Code, the device of Eagle and Fox are different and as such, the plaintiff cannot claim any similarity. There is no infringement and passing off by the defendants as there is no confusion or distinctive similarity, insofar as the trademark of the plaintiff and the trademark of the defendants are concerned;
7. No distinctiveness can be claimed by the plaintiff as there are more than dozen registered trademarks which contain the word "American" or "Outfitters". The defendants have already proved the same on record. No exclusive rights, thus, can be made out in respect of the said words;
8. Insofar as the defendants' mark is concerned, the same should be seen in conjunction/conjugation to Fox Device along with the jumbled word "AMERICAN FOX OUTFITTERS" rather than in individual word "American", "Fox" and "Outfitters";
9. There is no direct or indirect adoption of plaintiff's mark and there is no element of passing off as the defendants' adoption of the mark "AMERICAN FOX OUTFITTERS" is honest adoption of the mark with device of Fox and that the defendants have created a mark of their own as well as earned valuable reputation and goodwill because of quality of goods.
34. Time now to deal with the issues.
ISSUE NO.1 TO 31. Whether the defendants have honestly adopted the Page 27 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing? OPD
2. Whether the defendant use of the mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing constitutes infringement of plaintiff's Marks? OPP
3. Whether the defendants by use of the mark AMERICAN FOX OUTFITTERS & Fox Device on and in relation to readymade clothing have engaged in passingoff? OPP
35. Issue No.1 to 3 are taken up together being interconnected.
36. The plaintiff's case is that the adoption of the trademark "AMERICAN FOX OUTFITTERS" with device Fox by the defendants is a dishonest adoption, and that it is deceptively similar to the mark of the plaintiff "AMERICAN EAGLE OUTFITTERS", not only in terms of the adoption of essential features but also structurally. It is their case that the defendants have infringed their marks, and as well are liable for consequences arising out of passing off considering the deceptive similarity of the marks, the identical trade and the defendants' failure to desist from using the mark despite Cease & Desist Notice. The defendants' narrative, on the other hand, is that not only the adoption of mark "AMERICAN FOX OUTFITTERS" is honest one, effected only after due diligence by means of market research, and search in the trademark registry, Page 28 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
but also cannot be interfered with for the reasons that the words "American" and "Outfitters" are generic terms, and no monopoly can be claimed by the plaintiff on such elements.
37. The narratives in conflict foreground various aspects for the consideration of the court, respecting priority of the user, similarity of the marks, distinctiveness or lack of it, as well as infringement and passing off.
38. To begin with, the question of priority of adoption and user is taken up. The plaintiff has invited the attention of the court towards various documents proved on record while contending that it was in the year 1977 that the plaintiff started using the said trademark in relation with its trade of garments. The attention of the court is also invited towards Ex.PW1/27 list of registrations of the plaintiff's mark "AMERICAN EAGLE OUTFITTERS" in different countries. It transpires that the earliest registration of the mark "AMERICAN EAGLE OUTFITTERS" relates to the year 1993. Attention of the court is also invited towards Ex.PW1/29 - registration of trademark in India, which shows that the trademark "AMERICAN EAGLE OUTFITTERS" was registered at No. 905098 under Class25 on 22.02.2000, and the mark is disclosed to be used eversince 01.01.1991. In respect of mark "AMERICAN EAGLE", the registration pertains to 12.09.2006, although it is shown to be "proposed to be used". As regard the device, the device stands Page 29 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
registered in the name of the plaintiff under Class99 on 30.01.2008.
39. So far as the defendants mark is concerned, it is defendants own case that they have started using the impugned mark "AMERICAN FOX OUTFITTERS" since the year 2012. Even if the records pertaining to the registration of the plaintiff's trademark with other countries is over looked for a moment, the registration certificate proved as Ex.PW1/29 (colly.) clearly indicate that the Trademark of the plaintiff "AMERICAN EAGLE OUTFITTERS" was being used by the plaintiff since 1991 under Class25 and registered in India on 22.02.2000. The device as well stands registered as on 30.01.2008 and the trademark "AMERICAN EAGLE" also stands registered as on 12.09.2006. The said certificates read with other material proved on record clearly and adequately establishes that the plaintiff is the prior adapter, user, and also is registered in respect of the trademark "AMERICAN EAGLE OUTFITTERS" and "AMERICAN EAGLE" as well as device are concerned.
40. Priority of adoption and use of a mark is one of the most central tenets of the law relating to intellectual property rights. It rigidity neutralizes or trivializes a number of defences that it may counter in a given case. The priority of adoption, use and registration of plaintiff's mark, definitely makes the defendants' burden to prove its mark to be falling within exceptions Page 30 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
identified by law, even heavier.
41. This brings the court to the contention of the defendants as to existence of distinguishing features/ dissimilarities. Insofar as the distinctive features are concerned, it has been contended by the Learned counsel for the defendants that not only the marks in question are using different font style/ type, font size but also the fact that the plaintiff's mark contains the word and device 'Eagle' whereas the defendants' mark contain the word and device 'Fox' which are clearly distinguishable. It is also contended that the plaintiff cannot claim any rights in font colour and as also failed to prove the font style as the same. The plaintiff side, on the other hand, has contended that there is enough similarity between the two so as to cause confusion, which is clear from the structure, placement of the text, placement of device and the colour used by the defendants. It is impressed that the same could not have occurred except by dishonest adoption by the defendants.
42. It has also been contended by the Learned counsel for the defendants that for the trademark to be evaluated, it is to be seen as a whole and cannot be dissected for the purpose of evaluation. It is, accordingly, pressed that the over all appearance of two marks in itself are distinguishable and thus, there is no likelihood of deception.
Page 31 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
43. Before proceeding further, reference to the case laws appeared to be desirable.
44. In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (1965) 1 SCR 737: AIR 1965 SC 980, Hon'ble Supreme Court observed:
"29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks, Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered tradedress as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion"
introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that Page 32 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trademark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it has regards the usage of the trade. It should, however, be borne in mind that the object of the equity in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."
45. In Colgate Palmolive Company vs. Anchor Health 108 (2003) DLT 51, the Hon'ble High Court held as under:
"48. While expounding the doctrine of confusion arising from the deceptive similarities as to the trade dress that may fail the unwary customer to distinguish between the rival goods Mr. Sibal placed strong reliance upon Harold F. Ritchie, Inc. v. ChesebroughPond's Inc, 26 USPQ 310 wherein it was held that while entering a field of endeavor already occupied by another the second comer should, in the selection of a trade mark, keep far enough away to avoid all possible confusion and the leading case on this concept is Florence Mfg. Co. v. J.C. Dowd & CO., 2 Cir. 178 F.73, 75 which again was an American case. The law laid down in this respect is as under:
"It is so easy for the honest business man, who wishes to sell his goods upon their merits, to select from the entire material universe, which is before him, symbols, marks and covering which by no possibility can cause confusion between his goods and those of his competitors, that the courts look with suspicion upon one who, in Page 33 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
dressing his goods for the market, approaches so near to his successful rival that the public may fail to distinguish between them".
"60. In the case of passing off and for that purpose infringement of trade mark which are already in existence, the second or for that purpose the subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior comer. They have to establish and bank upon on their own trade dress or distinctive features so as to establish their own merit and reputation and attract the attention of the purchasing public and if there are no substantial dissimilarities of marks, colour combination, get up or lay out on the container or packing or covering of the goods of the prior comer these are likely to create confusion in the minds of customers between his goods and the goods of the prior comer in the market as underlying and hidden intention of the second comer is to encash upon the successful rival."
46. In Cadila Health Care Ltd vs. Cadila Pharmaceutical Ltd (2001) 5 Supreme Court Cases 73, Hon'ble Supreme Court observed as under:
"18. We are unable to agree with the aforesaid observations in Dyechems case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd.s case (supra), Corn Products Refining Companys case (supra), Amritdhara Pharmacys case (supra), Durga Dutt Sharmas case (supra), HoffmannLa Roche & Co. Ltd.s case (supra).
Having come to the conclusion, in our opinion Page 34 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
incorrectly, that the difference in essential features is relevant, this Court in Dyechems case (supra) sought to examine the difference in the two marks Piknic and Picnic. It applied three tests, they being 1) is there any special aspect of the common feature which has been copied ? 2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar and 3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ?. In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded that the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK."
47. In Cadbury India Ltd. v. Neeraj Food Products (2007) 142 DLT 724, it has been observed that:
"30. I find that the principles which apply to a consideration of as to whether the plaintiff has made a prima facie case of the defendant's dishonestly attempting to trade upon the plaintiff's goodwill and adopted such name or label, have been succinctly and aptly laid down by the court of Appeal in the judgment rendered in Slazenger & Sons v. Feltham & Co. (2) RPC 1889 6 531 where the court held thus:
One must exercise one's common sense, and if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every Page 35 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
nerve to do?
"31. Holding that it is the points of similarity which have to be given greater attention to than those of dissimilarity in 22 RPC 273 Munday v. Carey, it was held thus:
.......where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity, and less to the items of dissimilarity".
Two marks, when placed side by side, may exhibit many and various differences yet 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 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 the 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 trademarked 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 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 trademark 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 Page 36 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
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 colour 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 essential 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 today 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 plaintiff's goods, he might easily mistake 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 Page 1614 Homes. We have therefore no doubt that the defendants wrapper is deceptively similar to the plaintiffs which was registered."
48. In Walter Bushnell Pvt ltd & Ors vs. Miracle Life Sciences & Anr. 2014 SCC OnLine Del 3243: (2014) 213 DLT 119: (2014) 59 PTC 339, it has been observed that:
"20. It is settled law that in order to prove the case for infringement of trade mark, the plaintiff has to show Page 37 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
that the essential features of the registered trade mark which has been adopted by the defendant has been taken out from the plaintiff's registration. Only the marks are to be compared by the Court and in case the registration is granted in favour of the plaintiff, he acquires valuable right by reason of the said registration."
......................
"22.The test of comparison of the marks side by side is not a sound one since a purchaser will seldom have the two marks actually before him when he makes his purchase. The eye is not an accurate recorder of visual detail and that marks are remembered by general impression or by some significant detail rather than by any photographic recollection of the whole. While judging the question as to whether the defendant has infringed the trade mark by colourable imitation of the mark or not, the Court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks."
49. Undoubtedly, the law precepts that such an evaluation is to be done by looking at the marks as a whole, however, the law does not completely proscribes the comparison of dominant and essential features of the marks in question. Besides, the principles governing the evaluation of marks are "similarity" centric as it has been held that for the purpose of arriving at a conclusion, the court has to look into the similarities between the marks, in preference over dissimilarities.
50. Having regard to the above, it transpires that the similarity quotient between two marks is so high and it far out Page 38 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
weighs the dissimilarities. The selection of words "American" & "Outfitters" per se, cannot be a mere chance. The use of words in Capital letters, and the placement of the word "American" in the beginning and the word "Outfitters" towards the end of both the marks contributes heavily towards similarity of the marks. No doubt, the word in between the two i.e. "Eagle" in the case of the plaintiff and "Fox" in the case of the defendants, with their corresponding device perched atop are different, however, the structural appearances and the first impression of two marks are found to have a striking connection. Although, it has been impressed by the Learned counsel for the defendants that the court cannot dissect the marks so as to find the similarities, having regard to the observations made in Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (1965) 1 SCR 737: AIR 1965 SC 980; Cadila Health Care Ltd vs. Cadila Pharmaceutical Ltd (2001) 5 Supreme Court Cases 73; and Walter Bushnell Pvt ltd & Ors vs. Miracle Life Sciences & Anr. 2014 SCC OnLine Del 3243:
(2014) 213 DLT 119: (2014) 59 PTC 339, the dominant and essential features can be looked into for the purpose of said evaluation. The words "American" and "Outfitters" are not only common denominators, but also are dominant and essential features, the same being prominently featured in the marks. The defendants cannot heard to say that word "American" or "Outfitters" are not the dominant or essential features of either of the marks. As regards the dissimilarities, true that the device Page 39 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
and text "Eagle" and "Fox" are different but same are eclipsed by other dominant and essential features and the dissimilarity on this count is muted further by use of same colour and placement of the device. Over all impression of the defendants mark shows that its configuration is more aligned towards resemblance with plaintiff's mark, to such a degree that confusion amongst the class of purchasers, cannot be ruled out. There is an extraordinary coherence between the two marks and the dissimilarities, as induced by "Fox" and "Fox Device," are not too strong or prominent enough to offset the similarities that define the marks in question.
51. Having regard to what have been stated by DW1 as regards the adoption of the mark "AMERICAN FOX OUTFITTERS" and considering the two marks in question, on the touch stones of their structure and general appearance, it is clear that the same could hardly occur otherwise then direct imitation. Thus, the microcosm and macrocosm of defendants' mark, grossly as well as subtly indicate the dishonest adoption of plaintiff's mark with introduction of different device in order that the mark can be claimed to be different than that of the plaintiff's.
52. In Sarabhai International Ltd & Another vs Sara Exports International AIR 1988 Delhi 134, where the defendant was using similar trade mark and parties were in Page 40 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
similar business, the Hon'ble Delhi High Court held that:
"The aforesaid articles bearing the trade mark SARA and SARABHAI denoted and connoted the goods of the plaintiff and no one else, and was an indication of the source of manufacture as such. That there were common fields of activities in respect of the similar goods of plaintiffs and defendant. The adoption of trading style Sara Export International by the defendant and offering for sale, export and advertising the goods under the aforesaid trading style, that is Sara Exports International was calculated to deceive and create confusion amongst the doctors, chemists and the general public in India and the Importers and general public abroad. The use of the trading style Sara Exports International created an impression in the mind of the general public, dealers and importers that defendant may be an organization or a Division or Branch of the plaintiffs."
53. Having regard to the similarity quotient of the marks, the likelihood of confusion cannot be ruled out. It is impressed upon by the Learned counsel for the defendants that the plaintiff has not been able to cite even a single instance of any confusion or any mistaken purchase. In view of the law settled, such instances are not expected to be proved, once the deceptive similarity of the marks is proved on record.
54. This brings the court to the next contention of the defendants relating to the descriptive and generic nature of the terms / words "American" and "Outfitters".
Page 41 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
55. In the opinion of the court, the defendants' contention to the above effect is hedged by two limitations (i) the defendants themselves had applied for the registration of their mark "AMERICAN FOX OUTFITTERS"; and (ii) that even if the word is generic, the mark having attained distinctiveness cannot be ruled out.
56. As far as the first limitation is concerned, the court may profitably resorted to the observations made by Hon'ble High Court of Delhi in Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 IAD Delhi 603, 77 (1999) DLT 292 and Indian Hotels Company Ltd. & Anr. v. Jiva Institute of Vedic Science & Culture.
57. In Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 IAD Delhi 603, 77 (1999) DLT 292, the Hon'ble High Court of Delhi observed as under:
"16. The defendants got their trade mark "DIMMER DOT"
registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression."
58. In Indian Hotels Company Ltd. & Anr. v. Jiva Institute of Vedic Science & Culture, the Hon'ble High Court of Delhi observed as under:
Page 42 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
"39. It was next argued by Mr. Rohtagi that the word 'JIVA' is a descriptive word which cannot be protected as a trade mark by a Civil Court. We do not think so, the appellant has itself applied for registration of the Jiva as a trade mark and cannot, therefore, argue that the mark is descriptive. In Automatic Electric Limited. v. R.K. Dhawan and Anr. 1999 PTC (91) 81 this court has in similar circumstances repelled the contention and held that since the defendant had itself sought to claim a proprietary right and monopoly in "DIMMER DOT", the disputed trade mark it did not lie in its mouth to say that the said mark was a generic expression. The Court observed"
59. Having itself applied for the registration, the defendants side is estopped from claiming any lack of distinctiveness or that the words "American" and "Outfitters" are merely generic terms. Besides, it is the defendants' own contention, as also recorded in their written submissions that their mark should be seen in conjunction/ conjugation to Fox device along with jumbled words "AMERICAN FOX OUTFITTERS", which in itself is suggestive of the fact that the said words, when read with conjunction with other words can be claimed to be distinctive. Even otherwise, a word in itself howsoever generic it may be, can attain distinctiveness.
60. In case titled as T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011) 4 SCC 85, Hon'ble Supreme Court observed as under:
"Even assuming that the mark is a generic word, yet if it Page 43 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
is found by the court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent users to use or buy the product of the defendant, which establishes dishonest intention and bad faith, the court would grant an injunction to protect the business of the plaintiff. User of similar word by a competitor coupled with dishonest intention and bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party. (Paras 75 and 81)"
61. Considering the above, the plea of the defendants side as to the word "American" and "Outfitters" being generic or descriptive does not do the defendants' case any good.
62. In order to buttress this contention further, Learned counsel for the defendant has also vehemently impressed that in terms of Ex.PW1/1 to Ex.PW1/12, the defendants have proved that the words "American" & "Outfitters" as well as "Eagle" are being used by various third parties including registered trademark owners pertaining to the same Class. The court, however, is of the opinion that the said contention would not advance the case of the defendants as the rights of the parties to the lis are to be determined, and existence of several other parties using the similar mark would not alter this position.
63. In Amrit Soap Company V/s New Punjab Soap Factory 1989 (2) ACR 242, where the defendant resisted the infringement and passing off action by the plaintiff on the Page 44 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
ground that there are several other parties using the trademark "Billy" in question, the Hon'ble Delhi High Court, while taking into consideration the priority of use, negated the contention of the defendant, holding: "11. It was next submitted by counsel for the defendant that the plaintiff has no right to use the trade mark "BILLY" and artistic wrapper as so many other parties who are referred to earlier were also using the same trade mark. This contention of the defendant is wholly devoid of any force. In this connection it is sufficient to say that under the law it is the right of two parties before the court which has to be determined and, as already discussed, the plaintiff being prior user has the better and legal right to seek relief from this court".
64. In Rolex SA vs. Alex Jewellery Pvt Ltd. and Ors. 2009 (41) PTC 284 (Del.), the Hon'ble Delhi High Court observed:
"22. The next aspect to be considered is the effect/ impact, if any, of a larger number of other persons using the word ROLEX as claimed by the defendant. At this stage, his plea will be examined believing the same to be true. In my view, the same would be immaterial. Firstly, nothing has been shown that any of the said users has any significant presence. Secondly, it is now well settled in Honda (supra) in turn relying upon Indian Shaving Products Ltd vs. Gift Pack that merely because the plaintiff who is otherwise found entitled to the interim injunction is shown to have not taken any step against other infringers is no ground to deny relief to the plaintiff. It cannot be said that the plaintiff's trade mark has lost its distinctiveness for the said reasons. The reply affidavit of the plaintiff lists the orders of the Trade Mark Regitry from 1964 to 2000, where plaintiff's Page 45 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
trademark has been protected inter alia for reason of having great reputation. It also shows that the plaintiff has been enforcing its rights. Though the list filed by defendant No.1 in this regard is long but a perusal thereof shows a number of applicants to have abandoned or withdrawn their applications. This is a vast country. Mere long list of applicants/ registrants of mark, without any extensive use of the mark, cannot dent the distinctive character or repute of the mark."
65. The contention as to the existence of third party users, also did not find any acceptance in Tata Iron Steel Co. V/s Mahaveer Steels & Ors. 1992 (47) DLT 412 & Jindal Industries Ltd. V. Samana Steels Ltd. 1993 (13) PTC 129.
66. Coming now to the aspect of Infringement and passing off. Before proceeding further, reference to the case law appears to be desirable.
67. In the case of Ruston & Hornsby Limited vs. Zamindara Engineering Co. (1969) 2 SCC 727, observed thus:
"5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the getup of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case Page 46 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
of actual deception nor any actual damage need be proved.
6. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. [58 RPC 147 at 161] :
"The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passingoff. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive."
68. In Laxmikant V. Patel v. Chetanbhat Shah and Another, AIR 2002 Supreme Court 275, Hon'ble Supreme Court had observed as under:
"The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. The same principle which applies to trade mark,, is applicable to trade name. Passing off cases are often cases of deliberate and intentional misrepresentation, but it is wellsettled that Page 47 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
fraud is not a necessary element of the right of action and the absenc of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception."
69. Satyam Infoway Ltd vs. Siffynet Solutions (P) Ltd (2004) 6 Supreme Court Cases 145, Hon'ble Supreme Court observed as under:
"13. An action for passing off, as the phrase "passing off itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its service in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement.
14. The second element that must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is Page 48 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff. What has to be established is the likelihood of confusion in the minds of the public, (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory".
15. The third element of a passing off action is loss or the likelihood of it."
70. In Cadila Health Care Ltd vs. Cadila Pharmaceutical Ltd (2001) 5 Supreme Court Cases 73, Hon'ble Supreme Court observed as under:
"35. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they Page 49 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
71. In Walter Bushnell Pvt ltd & Ors vs. Miracle Life Sciences & Anr. 2014 SCC OnLine Del 3243: (2014) 213 DLT 119: (2014) 59 PTC 339, it has been observed that:
"23. In order to establish infringement, the main ingredients of Section 29 of the Act are that the plaintiff's mark must be registered under the Act; the defendant's mark is identical with or deceptively similar to the registered trade mark; and the defendant's use of the mark is in the course of trade in respect of the goods covered by the registered trade mark. The rival marks are to be compared as a whole. Where two rival marks are identical, it is not necessary for the plaintiff to prove further that the use of defendant's trademark is likely to deceive and cause confusion as the registration shows the title of the registered proprietor and the things speak for themselves. In an infringement action, once a mark is used as indicating commercial origin by the defendant, no amount of added matter intended to show the true origin of the goods can effect the question. If Court finds that the defendant's mark is closely, visually and phonetically similar, even then no further proof is necessary. It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement. If packaging of two products is different in an action of Page 50 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
infringement, the same is immaterial. Its validity cannot be challenged in the infringement proceedings under the Trade and Merchandise Marks Act, 1958."
72. In the recent judgment passed by the Hon'ble High Court of Delhi, the relevant considerations for grant of relief for a claim based on intellectual property rights have been summarized. The Hon'ble High Court of Delhi in Phonepe Pvt Ltd vs. EZY Services & Anr. IA 8084/2019 in CS (Comm) 292/2019 decided on 15.04.2021 observed as under:
"20. On the aspect of confusing or deceptive similarity, which is the sine qua non for any successful action for infringement or passing off, this Court has, in its decision in FDC Ltd. v. Faraway Foods Pvt. Ltd.38, Natures Essence Pvt. Ltd. v. Protogreen Retail Solutions Pvt. Ltd. 39 and Britannia Industries Ltd. v. ITC Ltd.40, culled out the following principles, from the decisions in Satyam Infoway (P) Ltd. v. Siffynet Solutions (P) Ltd.41, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.42, Kaviraj Pt. Durga Dutt Sharma1 , National Sewing Thread Co. Ltd. v. James Chadwick & Bros Ltd.43, Corn Products Refining Co. v. Shangrila Food Products Ltd.44, Amritdhara Pharmacy v. Satya Deo Gupta45, K. R. Krishna Chettiar v. Shri Ambal& Co.46, F. HoffmanLa Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.47, Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.48, Laxmikant V. Patel v. Chetanbhai Shah49, Khoday Distilleries Ltd. v. Scotch Whisky Association50, Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd.51 and Wockhardt Ltd. v. Torrent Pharmaceuticals Ltd.52:
(i) In assessing deceptive similarity, the class of the Page 51 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
customer who would purchase the product is relevant. The look/appearance, and the sound, of the trade marks, as well as the nature of the goods, are all relevant considerations. Surrounding circumstances are also relevant.
(ii) The onus of proof is on the plaintiff who alleges passing off. As against this, in an opposition to the registration of a trade mark, the onus to prove deceptive similarity is on the defendant who seeks nonregistration, or removal of the trade mark from the register.
(iii) "Confusion" refers to the state of mind of the customer who, on seeing the mark, thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. The question is one of first impression.
(iv) This is especially true in the matter of phonetic similarity. A meticulous comparison of the words, syllable by syllable, is to be avoided. The possibility of careless pronunciation and speech, both on the part of the buyer walking into the shop, as well as the shop assistant, is also required to be factored into consideration.
(v) The matter has to be examined from the point of view of a person of average intelligence and imperfect recollection. It has to be seen as to how such a purchaser would react to the trade mark, the association which he would form and how he would connect the trade marks with the goods he would be purchasing.
(vi) The Pianotist test, postulated over a century ago, has repeatedly been endorsed by the Supreme Court, as the definitive test to be adopted while comparing rival trade marks. According to this test, the Court is required to judge the rival trade marks by their look and sound, and Page 52 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
consider,
(a) the goods to which they are to be applied
(b) the nature and kind of customer who would be likely to buy those goods,
(c) all surrounding circumstances and
(d) the consequences which would follow if each of the marks is used in the normal way as the trade mark for the goods of the respective owners. While doing so, the common part of the words forming the competing marks may not be decisive. The overall similarity of the composite words is required to be seen, having regard to the circumstance (if applicable) that both are on like goods of similar description. The test to be applied is whether, if the two marks are used in a normal and fair manner, there is likelihood of confusion or deception.
(vii) The whole word/mark is to be considered. An ordinary man would not split a word or name, in a trade mark, into its components, but would go by the overall structural and phonetic similarity of the marks at the nature of the goods previously purchased, or of which he has been told and which he wants to purchase. It has to be examined whether the totality of the trademark of the defendant is likely to cause deception/confusion or mistake in the minds of the persons accustomed to the existing trade mark of the plaintiff.
(viii) The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The Court is, however, required to apply both the phonetic and the visual tests. At times, ocular similarity may be sufficient to find possibility of confusion/deception, even if the marks are visually dissimilar, though ocular similarity, by itself, may not, generally, be the decisive test. Where, however, (i) in all other respects, the marks of the Page 53 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
plaintiff and defendant are different, (ii) the word/words, in the marks, which are phonetically similar, cannot be regarded as the dominant word, or essential feature, in the marks, and
(iii) the surrounding circumstances also belie any possibility of confusion, it has been held that deceptive similarity cannot be found to exist merely on the basis of phonetic similarity or even identity. The matter, apparently, is always one of fact. The Court would have to decide, on a comparison of the two marks, and the parts thereof which are phonetically similar, as to whether such phonetic similarity is likely, considering all other circumstances, to confuse or deceive a purchaser of average intelligence and imperfect recollection, always bearing in mind the nature of the goods, and the degree of circumspection which would be expected of the purchasers who would purchase such goods.
(ix) The Court is required to examine whether the essential features of the plaintiff's mark are to be found in the mark of the defendant. Identification of the essential features is a question of fact, left to the discretion of the Court.
(x) No objective standards are possible, regarding the degree of similarity which is likely to cause deception. It has to be seen from the viewpoint of the purchasers of the goods.
(xi) The test to be applied would depend on the facts of the case. Precedents are valuable only to the extent they specify tests for application, and not on facts.
(xii) On the issue of deceptive similarity, and especially with respect to the aspect of phonetic similarity, English cases are not of relevance. English cases are useful only to the extent they aid in understanding the essential features of trade mark law. The tests for deceptive similarity, which Page 54 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
apply in other jurisdictions, may not always apply in India."
73. Having regard to the factual calculus and the law as discussed above, the court comes to the following conclusions:
1. There is a striking similarity between the two marks and the mark of the defendants can be legitimately treated as deceptively similar mark. The similarity, especially, in terms of the placement of words "American" and "Outfitters" and the placement of the device on the top of the Text is such that it can hardly be a coincidence or an honest adoption. The adoption of the mark in question by the defendants is of questionable intent, if not downright dishonest. The similarity in terms of the font, the reproduction of text in capital letters, their placement vis a vis the device, indicate the intention of the defendants to bring its own mark as close to that of the plaintiff. The similarities are far more fundamental and have far greater and stronger over reach, over the dissimilarities. In the overall impression, the dissimilarities are too weak to be qualify the test of confusion amongst the purchasers.
2. Although the words "American", "Outfitters", and "Eagle"
are generic / are not distinctive by themselves, there conjunction with other and depiction in a particular format, renders the same as distinctive, and it is for this reason that the plaintiff has been able to secure with the registration of its mark. To believe or to hold that there is no distinctiveness in the mark of the plaintiff would amount to leach the mark of its very protection guaranteed by registration.
3. The defendants have not been able even to carve out their case as honest and concurrent user, although there is a feeble attempt by the defendants to impress upon the court that the adoption of the impugned mark is honest and Page 55 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
pursuant to due research.
4. The fact that the defendants have themselves applied for the registration, implies a clear divestiture of right to claim that the words "American" & "Outfitters" used in plaintiff's mark are descriptive/generic.
5. The probability of confusion amongst the class of buyers is high having regard to the quotient of similarity between the marks in question, which is further sharpened by the fact that the marks are being used in identical trade.
6. The plaintiff is a prior user of the mark, and considering the rigidity that defines the rights of the prior adapter and user, the defendants cannot be permitted to use the mark identical or deceptively similar to that of the plaintiff.
74. Since the plaintiff has been able to prove the mark of the defendants to be deceptively similar, the plaintiff has been able to prove it to be a case of infringement as well as passing off. What factors in significantly here is that the defendants continue to proceed with his business even after the issuance of Cease & Desist Notice.
75. In view of the above, issue No.1 is decided against the defendants and issue No.2 & 3 are decided in favour of the plaintiff.
ISSUE NO.4
4. If the above issues or any of them are decided in Page 56 of 58 Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
favour of the plaintiff, then to what relief including of damages and if so in what amount is the plaintiff entitled to and from which of the defendants? OPP
76. Although, it is impressed upon the court that the plaintiff is entitled to damages, having regard to the fact that there is no evidence by the plaintiff as to suffering of any pecuniary damages, the court is not inclined to grant of damages to the plaintiff.
RELIEF
77. As a sequel to the findings above, the suit is partly decreed and the defendants, their directors, officers, proprietors, agents, representatives, managers, employees, and related entities or persons, etc. are hereby permanently restrained from using the mark AMERICAN FOX OUTFITTERS, or any other marks either identical or deceptively similar to that of the plaintiff's as well as from using the website/ domain - www.americanfox.co.in or any other domain identical or deceptively similar to that of the plaintiff.
78. Cost of the suit is also awarded to the plaintiff. Decree sheet be prepared.
79. File be consigned to the record room after due compliance.
Page 57 of 58Retail Royalty Company vs. Northern Harrier Lifestyle Pvt Ltd.
80. Ahlmad is directed to send the copy of this judgment to the Learned counsel for the parties through email, if available on record.
(NIKHIL CHOPRA) (currently posted as) SPECIAL JUDGE, CBI 13, (PC ACT) ROUSE AVENUE DISTRICT COURT, NEW DELHI/15.07.2022 (TO BE ANNOUNCED BY THE COURT OF SH. DINESH KUMAR, LEARNED ADDL. DISTRICT JUDGE02, SOUTH, SAKET COURTS, NEW DELHI ON 15.07.2022) Page 58 of 58