Delhi High Court
Retail Royalty Company vs Northern Harrier Lifestyles Private ... on 21 December, 2018
Author: Najmi Waziri
Bench: Najmi Waziri
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgement delivered on: 21.12.2018
+ FAO 204/2016 & C.M. APPL. 17173/2016
RETAIL ROYALTY COMPANY ..... Appellant
Through: Mr. Pritesh Kapur, Ms. Sujata Chaudhri
and Mr. Ryan Wilson, Advs.
Versus
NORTHERN HARRIER LIFESTYLES PRIVATE LIMITED AND ORS
..... Respondents
Through: Mr. Satish Pandey and Mr. Rajesh
Kumar Maurya, Advs.
CORAM:
HON'BLE MR. JUSTICE NAJMI WAZIRI
NAJMI WAZIRI, J
This appeal impugns an order dated 22.04.2016 which declined the
appellant's an interim injunction against the respondents, from using
'American Fox Outfitters' trademark and logo. The learned counsel for the
appellant, upon instructions, does not press the claim apropos the
respondent's 'Fox' logo vis-a-vis their own 'Eagle' logo. The appellants are
registered trademark owners of 'American Eagle Outfitters' for the last 40
odd years internationally and have applied for registration of their trademark
in India. They claim to be amongst the leading multinational fashion and
clothing companies and are said to have featured in the list of 'Fortune 500'
companies, with a turnover of billions of US dollars.
The respondent has been using the trademark 'American Fox
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Outfitters' with a 'Fox' logo with it. The marks of both the parties appear as
under:
Appellants' logo Respondent's logo
The Trial Court considered the arguments and found that there could
not be any confusion between the two marks for the following reasons:
4.3 For the following reasons, it is
concluded and held that there is no similarity or
deceptive similarity of the defendant's mark with the
plaintiff's mark or to cause confusion to an average
person of imperfect recollection:-
(I) word-American, prefix word-eagle
and word-outfitters suffix eagle do not
give exclusive right or monopoly to the
plaintiff to the exclusion of others to use
such common words;
(II) the plaintiff's complete registered
word mark is AMERICAN EAGLE
OUTFITTERS, the principle of dissect
cannot be applied to see protection of
individual word;
(III)the plaintiff's complete registered
device mark is styled AMERICAN
EAGLE (Label), there is no device of
'bird' registered as being used by the
plaintiff on its products;
(IV)the plaintiff's trade mark being used
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on its product of clothing is composite of
word mark coupled with device bird. The
plaintiff seeks injunction of its such
composite word mark coupled with
device bird against defendant's mark
AMERICAN FOX OUTFITTERS with
device fox;
(V)plaintiff's mark and defendant's mark
have different appearances and over all
expressions, particular their adore with
device 'eagle' and 'fox', make them
pictorial with word eagle and fox, which
further distinguish them from each other;
(VI)both the marks are distinct visually
and structurally vis-a-vis phonetically;
(VII)plaintiff's plea, being demonstrated
in para 49 in photographs in respect of
labels on shirts, would not help it, since
products label are normally fixed in
inner side of collar of shirt. Otherwise,
the test purchase of defendant's product
also shows defendant's mark/device FOX
embroidered on pocket, which is not in
the product of plaintiff;
(VIII)there does not appear to close
resemblance to both the marks, that it
may confuse unwary average person of
imperfect recollection and;
(IX)it is also apparent that website of
both the parties also different, to access
one site does not lead to the other's site.
Thus, the plaintiff is not entitled for interim-
injunction and application under order XXXIX Rules
1 and 2 CPC is dismissed. However, the conclusions
drawn are prima-facie view, therefore, any
expression given would not tantamount to be any
opinion on the merits of case.
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The learned counsel for the appellant submits that i) when comparing
the two marks, the general impression gathered therefrom has to be
considered and not merely the descriptive portions of the two marks; ii) that
the design adaptation of the well known international mark of the appellants
was the main issue otherwise there was no need to adopt the exact font style
and font size for creating similarity in overall impression of the two marks;
iii) that an unsuspecting buyer would assume that the products originating
from the respondent had a link with that of the appellants; iv) as a result
thereof the respondent's goods could well pass off as those of the appellants'
and will lead to dilution of the goodwill of the appellants' trademark, thus
causing irreparable injury should an injunction not be granted.
Lastly, it is argued that since the word mark 'American Eagle
Outfitters' already enjoyed protection of sections 28 of the Trade Marks Act,
therefore, the protection under section 29 of the Act would be available to
the appellant.
The learned counsel for the appellant contends that, assuming that the
respondent innocently devised his trademark as 'American Fox Outfitters'
with serendipitously identical design, font size and font styles, the law
however would come in the way of the use of the said ingenious creation.
He relies upon the judgment in Colgate Palmolive Company vs. Anchor
Health 108 (2003) DLT 51, which 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.
Chesebrough-Pond'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 name or trade
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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 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".
He submits that where the adoption of the mark is prima facie
dishonest, an injunction would be a necessary corollary. 1
In the same vein he refers upon the issues to be examined by the
1
Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004) 3 SCC 90.
FAO 204 of 2016 Page 5 of 13
Court at the time of granting of an interim protection seeking protection of
intellectual property rights.
He relies upon the judgment in Cadbury India Ltd. v. Neeraj Food
Products (2007) 142 DLT 724, which reads as under:-
"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 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".
42. In yet another case reported at AIR 1972 SCR 1359
Parle Products (P). Ltd. v. J.P. & Co., Mysore the plaintiff
was the manufacturer of biscuits and confectionery and
owner of certain registered trademarks. One of them was
the word "Gluco" used on their half pound biscuit packet.
Another registered trademark of theirs was the wrapper
with its colour scheme, general set up and entire
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colloconation of words registered under the Trademarks
Act, 1940. They had filed an action for infringement of their
registered trademark against the defendant on the
allegation that they discovered in March, 1961 that Page
1613 the defendants were manufacturing, selling and
offering for sale biscuits in a wrapper which according to
them was deceptively similar to their registered trademark.
The trial and the appellate court held against the plaintiff.
In the appeal before the apex Court, the court placed
reliance on its earlier pronouncement in Durgadutt v.
Navratra Laboratories (supra) and in Kerly's Law of
Trademarks at Trade (9th Edition paragraph 838) and held
thus:
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. More-over,
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
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broad and essential features of the two are to be considered
they should not be placed side by side to find out if there are
any differences in the design and if so, whether they are of
such character as to prevent one design from being
mistaken for the other. It would be enough if the impugned
mark bears such an overall similarity to the registered mark
as would be likely to mislead a person usually dealing with
one to accept the other if offered to him. In this case we find
that the packets are practically of the same size, the 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
plaintiffs' 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.
73. By virtue of Section 27 of the Trade Marks Act, 1999, a
person has been conferred a statutory right of protection of
its registered trademark. At the same time every person has
a legal remedy for the protection of its common law rights
in a trademark which has acquired distinctiveness by virtue
of extensive and prolonged use; promotional activity and
has goodwill and reputation attached to it. For this reason
Section 17 of the Trademark & Merchandise Marks Act of
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1958 statutorily prohibited the impact of the disclaimer
when it stipulated that the disclaimer shall not affect the
rights of trademark proprietor except those which arose out
of the registration.
In my view, the new act i.e. the Trademarks Act, 1999 also
does not in any manner impact the common law rights and
remedies of the proprietor of a trademark which are not
related to or arise out of any statutory registration of the
trademark. The spirit, intendment and purpose of the
Trademark legislation is to protection of the trader and
consumer against dishonest adoption of another's well
known trademark with the intention of capitalising on the
attached reputation and goodwill or dishonest adoption of a
trademark which is deceptively similar to the well known
trademark. Certainly any other interpretation of the new Act
would run counter to the basic intendment of the law.
The view I have taken is fortified by the expansion given
under the Act of 1999. As per Section 27 of the earlier
statutory provisions, provided passing off action only in
respect of goods. Under the new act, passing off action has
been made statutorily available to a person against another
person for passing off goods or services as the goods of
another person or as services provided by another person.
The impact of the disclaimer on a registration certificate is
that a person is precluded from bringing an infringement
action in respect of the trade mark registration. The statute
did not prohibit in any manner the right given to a person to
bring a passing off action in respect of a trade mark which
though registered, but contains a disclaimer with regard to
any portion thereof."
He also relies upon the judgment in T.V. Venugopal v. Ushodaya
Enterprises Ltd. (2011) 4 SCC 85, which reads as under:-
"57. The respondent company's reply to the appellant's
contention that `Eenadu' is not a household name since it only
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deals with newspaper is complete fallacy because the group is
known as "Eenadu Margadarshi Group" and the meaning of
`Eenadu' in various publications is stated to be the respondent
company's group. Furthermore, it also overlooked that in
actual fact there are various products which are also being
produced and sold by the respondent company under the
business name of `Eenadu'. It is also relevant to mention that
the `Eenadu' TV Channel (also known as ETV) is one of the
most popular channels and, therefore, the word `Eenadu' has
come to be completely associated with the respondent
company group and in fact is a household name. He has
referred to the findings of the Trial Court, the High Court and
that of the learned Single Judge and submitted that such
findings are not unreasonable so as to require interference
under section 136 of the Constitution.
75. Mr. Sundaram also relied on a judgment of this court in
the case of Bata India Limited v. Pyare Lal & Company,
Meerut City & Ors. AIR 1985 All 242] the Allahabad High
Court observed that considering the plea of passing-off or
enabling others to pass-off mattresses, sofa cushions and other
articles associating them with the name of "Bata" in any
manner or form held that:
"The name `Bata' was well known in the market and
the user of such a name is likely to cause not only
deception in the mind of an ordinary customer but may
also cause injury to the plaintiff Company. The fact
that the plaintiff was not producing form was not
enough to hold that there could be no passing- off
action in respect of the user of the name `Bata' to the
products marketed by the defendants. The use of the
name or mark `Bata' by the defendants is indicative of
their intent."
From the above, what needs to be examined is the impression which
the unsuspecting buyer would gather from the respondent's trademark
'American Fox Outfitters'. The replacement of the eagle with a fox is too
FAO 204 of 2016 Page 10 of 13
much of a coincidence, however, that the respondent would adopt three
identical words in seeking for a garment brand akin to that of the
appellant's. If this case satisfied the tests laid down in T.V. Venugopal v.
Ushodaya Enterprises Ltd.-(2011) 4 SCC 85, the Court would consider it
as an honest adoption of the trade name/trademark of a prior user. In this
case, it does not appear to be so.
It is the appellant's case that they have been selling clothing goods in
India under the registered trademark 'American Eagle Outfitters' since the
year 2000. He states that although local sales in India may not be of high
volume or value, i.e., it is limited to approximately US $ 3000.
Nevertheless, the brand is well known in the Garment Manufacturing
Sector of India. Since manufacture first began in India, the total dollar
value of products manufactured in India has exceeded several billion
dollars. The importance of India as a manufacturing location for the
appellant's readymade clothing bearing the appellant's marks is evidenced
by the following dollar payments made to Indian manufacturers during the
period 2007-2013:-
Year Payments
(inUS$)
2007 17,855,240
2008 32,451,793
2009 35,273,001
2010 35,242,546
2011 85,897,026
2012 101,975,670
FAO 204 of 2016 Page 11 of 13
2013 98,712,620.06
It is the appellant's case that having tested the orders in India they are
likely to open stores in India in a couple of months and their reputation is
well known and therefore needs to be protected.
The learned counsel for the respondent states that if the injunction as
sought in the suit is granted, the designs of the contesting respondent would
effectively cease, thus rendering them immeasurable and causing
irreparable loss.
The learned counsel for the respondent states that for any protection
to be granted to the appellant what needs to be tested is whether the
respondent's goods is deceptively similar to that of the appellant's. The
element of deception has to be a rational test, i.e., impression to be covered
from looking at the mark not only on first impression but also upon closer
scrutiny. The mere comparison of three words American Fox Outfitters does
grant them any protection. He submits that no ground is made out for grant
of any interim protection because loss, if any, can always be repaired upon
such amounts as may be fixed by the Court. He refers to section 29 which
lays the test of association between the conflicting trademarks by the mere
use of the words.
The Court is of the view that while font style and font size of the two
marks may be similar, the overall impression gathered by an ordinary
unsuspecting purchaser has to be seen. The appellant's mark includes the
distinctive image of an eagle above the words 'American Eagle Outfitters'
while the respondent's mark includes the image of a 'fox' above the words
'American Fox Outfitters'. The visual impact of the images are the
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distinguishing feature. Therefore, the impression of the two marks would
prima facie not appear to be deceptive to an ordinary person.
In view of the above, no case is made out, the petition is dismissed.
NAJMI WAZIRI, J.
DECEMBER 21, 2018 FAO 204 of 2016 Page 13 of 13