|Court||Delhi High Court|
|Name of the Case||Retail Royalty Company v. Pantaloons Fashion &Retail Limited & Ors.|
|Year of the Case||2015|
|Plaintiff||Retail Royalty Company|
|Defendant||Pantaloons Fashion & Retail Limited & Ors.|
|Acts Involved||The Trademark Act, 1999|
|Important Sections||Sections 29(1) and 29(2)(b) & (c)|
The US-based Retail Royalty Company, the owner of American Eagle Outfitters, has filed a trademark infringement case in the Delhi High Court against the Indian fashion retailer Pantaloons.
American retailer, which has registered trademarks for its brand and logo, has alleged that the Aditya Birla Group’s Urban Eagle Authentic Outfitters brand is “deceptively similar” to its American Eagle Outfitters brand and logo.
The Trademarks Registry recognizes well-known trademarks in India based on international, national, and cross-border reputation. The Trademarks Act 1999 protects well-known trademarks in two ways: action against the registration of similar marks; and. an action against the misuse of the well-known mark.
A suit for trademark infringement had been filed by U.S. bases Retail Royalty Company, it was argued that popular India clothing brand named Pantaloons, owned by Aditya Birla Group and it was alleged that the Indian company had adopted a logo deceptively similar for the same line of business as its American counterpart. Pantaloons state that it not only has a good reputation but also a strong market hold in India.
The defendants were using the name ‘Urban Eagle Authentic Outfitters’ with the logo of an Urban Eagle whereas, the plaintiff was selling its clothing line under the brand ‘American Eagle Outfitters/American Eagle’ with the logo of American Eagle. The defendants intended to settle the matter as soon as possible and proposed that they would remove the phrase ‘AUTHENTIC OUTFITTERS’ and retain ‘URBAN EAGLE’ wordmark along with a new eagle device as the logo. The Defendants further proposed that for the goods already available in the retail stores the labels would be removed and only the term Urban Eagle would be used. The Plaintiffs contended that the defendants should be prevented from even making use of the mark Urban Eagle since it was deceptively similar to the plaintiff’s American Eagle.
1. The Plaintiff and Defendants are both engaged in, inter alia, the premium clothing retail sector.
2. The Plaintiff is stated to be the owner of the trademarks American eagle outfitters/ American eagle.
3. The Defendants are stated to be using the trademarks Urban Eagle Authentic Outfitters.
4. Its prima facie appears that the Defendants are trying to ride on the goodwill of the Plaintiff and its trademark American eagle outfitters/ American eagle.
5. The Defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance concerning the trademarks of the Plaintiff much less for the same line of specialized goods being casual clothing.
6. It is not as if the Defendants are in the market for a long time and the Plaintiff has approached the Court with delay, noting that Courts look at issues differently where the Defendants are producing goods for a reasonable long time as compared to a case where the Defendants have recently entered into the market or are yet to enter into the market.
There are three main issues,
- Firstly, that was there any deceptive similarity between the two marks owing to the use of the word EAGLE?
- The other issue was that had there been a case of trademark infringement under Section 29(1) by the defendant.
- The third one was that does the plaintiff has copyright claim over ‘swooping eagle’ mark under the copyright protection under Section 13?
Section 29(1) Trademarks act 1999- Infringement of registered trademarks. —
A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trademark concerning goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark.
Section 29 (2) A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of—
(b) Its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
(c) Its identity with the registered trademark and the identity of the goods or services covered by such registered trademark is likely to confuse the part of the public, or which is likely to have an association with the registered trademark.
1. Laxmikant v. Patel Vs Chetanbhai Shah and Anr., 2002 (3) SCC 65 and Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors., (2004) 3 SCC 90 to argue that courts must, once there is an infringement of trademarks and deceptive similarity, proceed to grant injunctions as also appoint Local Commissioners for implementing the injunction order.
2. Register of trademarks v. Ashok Chandra Rakhit Ltd. AIR 1955, it was held that the proprietor cannot restrain others from using any part or word independently or in combination with other words. However, if the proprietor acquires any right by long use of those parts or words concerning his trade, he may claim exclusive right over the same and prevent exploitation of the mark.
- It may be noted that defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance concerning the trademarks of the plaintiff much less for the same line of specialized goods being casual clothing. It is also noted that it is not as if the defendants are in the market for a long time and plaintiff has approached this Court with delay noting that Courts look at the issues differently where the defendants are producing goods for a reasonable long period as compared to a case where defendants have recently entered into the market or are yet to enter into the market. Defendants are trying to ride on the goodwill of the plaintiff created by the trademarks of the plaintiff “AMERICAN EAGLE OUTFITTERS/AMERICAN EAGLE”.
- The defendants are guilty of infringement of the registered trademarks of the plaintiff, and therefore injunction must follow since infringement is of nature as specified under Sections 29(1) and 29(2)(b) & (c) of The Trademarks Act, 1999.
- The deceptive similarity is an overall position and courts do not decide by keeping the mark’s side by side and look at the differences to decide the issue of identity or deceptive similarity.
- Defendants have acted dishonestly and not innocently and when the defendants designed their trademark, they did so keeping in mind the trademark of the plaintiff and hence the defendants should not be allowed to take benefit of their dishonest actions by passing off their goods as that of the plaintiff.
- Though the word “EAGLE” has been adopted by the plaintiff concerning clothing, however, there cannot be an exclusive appropriation of the word “EAGLE” to the plaintiff, since, unfortunately, there is not only one eagle in this world and eagle as a name cannot be allowed to be appropriated exclusively by any one producer of any type of goods similar to the position that a descriptive wordmark cannot be allowed to be exclusively appropriated by a manufacturer and/or a seller vide Marico Limited Vs. Agro Tech Foods Limited, 2010 (174) DLT 279. during the trial, it will be examined whether the plaintiff has first used the word “EAGLE” or there would be other persons who have already used the word “EAGLE” concerning their goods including clothing even before the plaintiff.
- There is no identity or deceptive similarity between the marks “AMERICAN EAGLE” and “URBAN EAGLE” and there is sufficient amount of distinction between the two, more so keeping in mind as already stated above that plaintiff itself claims exclusivity of the mark not on account of the use of the word “EAGLE” but because of the use of the word “AMERICAN” along with the word “EAGLE” as is the case of the plaintiff before the Registrar of the Trademarks. At this stage, it will not be possible to hold that the trademark of the defendants “URBAN EAGLE” will be identical or deceptively similar to the trademark “AMERICAN EAGLE” of the plaintiff. it is seen that to establish infringement there will have to be either identity of the trademark or deceptive similarity of the trademark. It cannot be doubted that there is no identity of the trademark, since the plaintiff uses the word mark “AMERICAN EAGLE” whereas the defendants want to use “URBAN EAGLE” without the expression “AUTHENTIC OUTFITTERS”.
- Reliance upon the judgments of the Supreme Court in the cases of Laxmikant V. Patel and Midas Hygiene Industries P. Ltd. amounts to begging the question because the observation in these two cases will apply only if firstly courts find the existence of infringement or passing off by use of the identical trademark or deceptive trademark. Once the opposing mark is not identical to the mark of the plaintiff and is also not deceptively similar, and as stated in detail above, there does not arise any issue concerning the grant of injunction in terms of the judgments relied upon by the plaintiff.
- The device of the eagle as used by the defendants is completely different from the device of the plaintiff because the plaintiff’s representation is a swooping eagle and the defendants’ representation is of a taking off or a flying eagle. There is also another reason for me to decline any claim of copyright in the device of the swooping eagle claimed by the plaintiff since Section 13 of the Copyright Act, 1957 states that copyright is only concerning original artistic work.
The plaintiff had alleged that there had been a case of trademark infringement under Section 29(1) by the defendant; also, there was a case of deceptive similarity. The court was of the view that with the removal of ‘AUTHENTIC OUTFITTERS’ by the defendant there existed only URBAN EAGLE and it was not similar to AMERICAN EAGLE, the two were sufficiently distinct. The court reiterated that the plaintiff had a trademark claim for the use of the word AMERICAN EAGLE; it could not restrain others from using ‘EAGLE’ as a part of their mark.
The court rejected the plaintiff’s copyright claim over the ‘swooping eagle’ mark and stated that copyright protection under Section 13 was granted only to original artistic works and the same would not qualify within that criterion. Finally, the court stated that if it is shown that there is a balance of convenience in its favour, the plaintiff could be given monetary compensation however, no interim injunction order was granted by the court.
It was observed by the court that the plaintiff could not claim the monopoly over the word ‘EAGLE’ since it was a word used in common parlance, it would be a different case if monopoly was claimed on AMERICAN EAGLE since this was the trademark registered by the plaintiffs in the trademark register.
A comparison of the two logos showed that the plaintiff’s depicted an Eagle on the verge of landing/descending whereas that of the defendant showed an eagle taking a flight/ascending hence, there was a distinction between the two marks. The court stated that since the decision was almost at an expertise stage, and the defendant had not been allowed to file return statements and replies because they had only been granted two days for the same hence, the views of the court were only prima-facie.