IP Case Law › Trade Marks › Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd.
Relevant Acts and provisions
Code of Civil Procedure, 1908
Trade Marks Act, 1999
Provisions considered: Section 29(2)(b) of the Trade Marks Act, 1999, read with Order XXXIX of the Code of Civil Procedure, 1908.
Brief facts
Under Armour, Inc., proprietor of the registered trade mark UNDER ARMOUR for sportswear, sued Aditya Birla Fashion and Retail Ltd. for launching apparel under the marks STREET ARMOR and STRT ARMR, alleging that these were deceptively similar to its mark. Under Armour sought an interim injunction, contending that ARMOUR was the dominant and essential feature of its mark and that the defendant's marks reproduced this dominant element with similar stylisation.
Issues before the Court
- Can a proprietor claim protection for a particular dominant part of a composite registered mark rather than the mark as a whole?
- Are the defendant's marks deceptively similar to UNDER ARMOUR under Section 29(2)(b)?
Court's findings
The Court held that while a composite mark must ordinarily be compared as a whole under the anti-dissection rule, a particular element enjoying greater prominence within the mark may be identified as its dominant part, and it is permissible to compare that dominant part with the corresponding part of a rival mark as part of assessing overall similarity.
The Court found that ARMOUR was the dominant and distinctive component of the plaintiff's mark, since the preposition UNDER is a common word incapable of denoting trade origin by itself.
The Court observed that the defendant's marks reproduced the dominant element with deceptively similar stylisation and lettering, and that adoption of a phonetically identical dominant feature by a competitor in identical goods was likely to cause confusion as to trade origin or association, notwithstanding the addition of a distinguishing prefix.
Decision
Interim injunction granted restraining the defendant from using the impugned marks or any mark deceptively similar to UNDER ARMOUR.
Key legal principle / ratio
Although composite marks must be compared in their entirety under the anti-dissection rule, a mark may contain a dominant element that contributes disproportionately to its overall commercial impression, and such a dominant element may properly be compared with the corresponding part of a rival mark; adoption by a competitor of a phonetically and visually similar dominant element for identical goods can constitute infringement even where the marks as a whole are not identical.
Keywords
Anti-Dissection Rule Composite Marks Deceptive Similarity Dominant Mark Trademark Infringement
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