October 05, 2015     

 FIGHT OR FLIGHT: AMERICAN EAGLE V/s. URBAN EAGLE

 

The High Court of Delhi, while granting an ex parte interim injunction to Retail Royalty Company (Plaintiff) and restraining Pantaloons Fashion & Retail Limited & Ors. (the Defendants) from using the trademark “URBAN EAGLE AUTHENTIC OUTFITTERS” vide its Order dated September 21, 2015, disallowed exclusive right over the mark “EAGLE” by the Plaintiff vide its Order dated September 23, 2015 in Retail Royalty Company v. Pantaloons Fashion & Retail Limited & Ors. (CS(OS) 2872/2015).

Brief facts of the Case

  • The Plaintiff and Defendants are both engaged in, inter alia, the premium clothing retail sector.

  • The Plaintiff is stated to be the owner of the trademarks AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.

 

  • The Defendants are stated to be using the trademarks URBAN EAGLE AUTHENTIC OUTFITTERS.

 

Court’s Ex-Parte Interim Order dated September 21, 2015

The High Court of Delhi, vide its order dated September 21, 2015, granted ex parte interim injunction against the Defendants stating that –

  • It prima facie appears that the Defendants are trying to ride on the goodwill of the Plaintiff and its trade mark AMERICAN EAGLE OUTFITTERS / AMERICAN EAGLE.

  • The Defendants are themselves one of the largest groups of industries in India and therefore they cannot claim ignorance with respect to the trademarks of the Plaintiff much less for the same line of specialized goods being casual clothing.

  • 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 period of time as compared to a case where the Defendants have recently entered into the market or are yet to enter into the market. Court’s Order dated September 23, 2015

  • Pursuant to the aforesaid Order dated September 21, 2015, the Defendants appeared before the Court and suggested that they will remove the expression “AUTHENTIC OUTFITTERS” from its trade mark leaving only the expression “URBAN EAGLE”.

  • The Defendants further agreed to replace their existing DEVICE of EAGLE with a new EAGLE DEVICE, even though the existing DEVICE of EAGLE used by the Defendants is stated to be not deceptively similar or identical to the Plaintiff’s device.

  • The offer of the Defendants is however stated to be not acceptable to the Plaintiff who prayed that the Defendants must not use the EAGLE DEVICE at all and must also not use the trade mark “URBAN EAGLE”.

  • Relying on Marico Limited v. Agro Tech Foods Limited, 2010 (174) DLT 279, the Court refused to allow exclusive appropriation of the word “EAGLE” to the Plaintiff, all the more so in view of the submissions made by the Plaintiff itself in its reply to the Examination Report issued by Registrar of Trade Marks with respect to the cited marks. In the said Reply, the Plaintiff had argued that the well-settled judicial principle of entirety envisages that marks should not be segregated for the sake of unwarranted comparison, and that while deciding the question of similarity between two marks, the marks have to be considered as wholes, and meticulous or fragmentary comparison is not the correct way. The Plaintiff had further argued that upon such consideration as above, the cited marks, when compared with the subject mark, are phonetically, visually, structurally and conceptually dissimilar and distinguishable from the subject mark. Therefore, although all the cited marks and the subject mark share the common component “EAGLE”, it is the combining element “AMERICAN” in the subject mark that helps the subject mark create a different and distinct overall impression from all the other marks. As a concluding argument, the Plaintiff had submitted that if so many marks comprising the element “EAGLE” can co-exist peacefully on the Register of Trade Marks (a fact that is apparent from the Search Report), then there is absolutely no reason why the subject mark should not be allowed to proceed to registration.

  • In view of the above submissions, the Court noted that the Plaintiff claims exclusivity to its trade mark by use of the expression “AMERICAN” alongwith “EAGLE” and not “EAGLE” in itself. Therefore, there cannot be identity or deceptive similarity of the mark “AMERICAN EAGLE” with “URBAN EAGLE”, although the goods of both the parties are same.

  • During arguments, the Plaintiff also raised an issue of public interest, however, the Court rejected this argument stating that “URBAN EAGLE” is sufficiently distinguishable from “AMERICAN EAGLE”. Also, an issue of public interest will not be raised in the present case where the goods are only clothing, as opposed to certain cases where grave public interest would be involved such as the case of pharmaceutical goods or medicines.

  • The Court also compared the two DEVICES of EAGLE as being used by the Plaintiff and Defendants, and observed that whereas the Plaintiff’s device is a swooping eagle showing an eagle going towards earth, the Defendants’ device is of an eagle which is taking off or flying higher or ascending. Obviously, there is bound to be some sort of similarity between two devices which uses an eagle, however, it cannot be said that the device of the swooping eagle is identical or deceptively similar to an eagle which is taking off or flying higher.

  • The argument of the Plaintiff that it has a copyright in their device of swooping eagle and the Defendants therefore cannot use its device of eagle is also misconceived for the reasons stated above. Moreover, Section 13 of the Copyright Act, 1957 states that copyright is only with respect to an original artistic work and a swooping eagle device cannot by any stretch of imagination be said to be an original artistic work to be a subject matter of copyright as claimed by the Plaintiff.

  • The next date of hearing in this matter has been fixed on December 15, 2015.

Concluding Remarks

A registered trademark provides the exclusive rights to use a trademark against others, but only in the form in which it is applied and registered. In case of a composite trademark, which has various distinctive and non-distinctive elements, the right to take action against an infringer is limited to the extent that the distinctive part of the trademark is misused by the infringer. Therefore, the pertinent questions here are, what happens when a part of trademark is misused and how can the proprietor take action against the infringer.

 

Section 15 of the Trade Mark Act, 1999 covers the registration of parts of trademarks, where the trade mark consists of more than one feature, and for claiming exclusive right of all such features separately, one has to seek registration for each such part as a separate trademark which shall be examined independently to determine whether it can be registered or not.

 

Section 17 of the said Act states the effect of registration of parts of a mark and states the general proposition that registration confers on the proprietor the exclusive right to use the whole trade mark. Therefore, if the proprietor desires statutory protection for exclusive use of any part of the trade mark, then he has to apply to register that part as a separate trade mark. Further, any part of the trade mark containing a matter which is common to the trade or is of non-distinctive character will not be allowed registration. However, if the applicant is able to adduce evidence of acquired distinctiveness for such part, he may then rightly claim exclusive right for that part of the trade mark, even if it has not been separately registered.

 

The aforesaid view has also been taken by the Supreme Court of India in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 which held that the proprietor cannot restrain others from either 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 in relation to his trade, he may claim exclusive right over the same and prevent exploitation of his mark.

 

The aforesaid Orders dated September 21 and September 23, 2015 can be accessed here and here respectively.

 

 

 

 

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