Neutral Citation Number : 2023:DHC:2711

$~29
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 41/2023, I.A. 1349/2023 & I.A. 4142/2023
UNDER ARMOUR, INC ..... Plaintiff
Through: Mr. Gaurav Gogia, Mr. Rishi
Bansal, Mr. Neeraj Bhardwaj, Mr. Rishabh
Gupta and Mr. Mankaran Singh, Advs.

versus

ADITYA BIRLA FASHION & RETAIL LTD. ..... Defendant

Through: Mr. Chander M Lall, Sr. Adv.
with M. Ankur Sangal, M. Ankit Arvind, M.
Raghu Vinayak Sinha and Mr. Shashwat
Rakshit, Advs.

CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
J U D G M E N T (O R A L)
% 20.04.2023

IA 1349/2023 [under Order XXXIX Rules 1 and 2, CPC]

1. I have heard Mr. Rishi Bansal on behalf of the plaintiff and Mr.
Chander Lall, learned Senior Counsel on behalf of the defendant at
considerable length and proceed, by this judgment, to dispose of I.A.
1349/2023, filed by the plaintiff, whereby interlocutory injunctive
reliefs have been sought in this plaint.

2. To facilitate clarity, I would proceed to deal with the individual

issues urged before me as and when they arise.

3. The plaintiff

3.1 The plaintiff UNDER ARMOUR, Inc (UA India) is a company

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incorporated in the US, with its registered office at Maryland, U.S.A.

The plaintiff officially entered the Indian market in 2017, by selling its
goods through Amazon and, in October 2018, the plaintiff
incorporated its Indian subsidiary under the name Under Armour India
Trading Pvt. Ltd. The first physical store of the plaintiff was opened in
India in 2019. The plaintiff holds various registrations, inter alia,
under the Trade Marks Act, 1999, which stands enlisted in a tabular
fashion in para 6 of the plaint. Among others, the mark UNDER
ARMOUR stands registered in the plaintiff‘s favour in Classes 18, 25
and 281 with effect from 24th February 2009 and the mark UA stands
registered in the plaintiff‘s favour in the same classes 18, 25 and 28
with effect from 12th January 2011. For the present, we need not
concern ourselves with the other registrations held by the plaintiff.

3.2 Para 35 of the plaint sets out the receipts from sales effected by
UA India during the period 2018 to 2021. During the financial year
2020-21, these receipts are to the tune of ₹ 64 crores whereas, during
the period April to August 2021, the receipts are to the tune of ₹ 24.7
crores.

3.3 I may note here, that one of the contentions which were
advanced by the plaintiff to vouchsafe its reputation, and which is
advanced before the Court in several cases, is that on a Google search
being done of the word ―ARMOUR‖, the plaintiff‘s site was one of
the first results which popped up. To my mind, such an argument is
misconceived. The mere fact that the particular result may pop up on a
Google search being done of a particular search thread cannot, without
any other data, suffice to establish good will or reputation of a brand,

1
of the NICE classification
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especially vis-à-vis other brands. This Court cannot, even prima facie,
gauge the market repute of a brand on the basis of how quickly it
shows up on a Google search. Much would also depend on the search
thread that is fed in. As such, the argument of the plaintiff, predicated
on its being near the top of the results thrown up when a Google
search for ARMOUR is done, does not, prima facie, appeal to me as
testimony of market repute.

3.4 Nonetheless, given the sales figures of the plaintiff, which are
not disputed, the fact that the plaintiff enjoys considerable goodwill
and reputation even in the Indian market may, prima facie, be taken to
be established.

3.5 The plaintiff also operates the interactive websites

www.underarmour.com and www.ua.com.

4. Infringement

4.1 The plaintiff uses it‘s UNDER ARMOUR/UA/UNDR ARMR

mark essentially on sports apparel. The plaintiff is aggrieved by the
fact that the defendant is, on identical goods, using the marks
―STREET ARMOR‖, ―SA‖ and ―STRT ARMR‖. While doing so, it is
alleged that the defendant is using, for its ―ARMOR‖ part of the mark,
a font, style and lettering which is deceptively similar to that used by
the plaintiff for ―ARMOUR‖. Even while using ―STREET ARMOR‖
as a device, the plaintiff alleges that the defendant uses a similar font
and lettering for ―ARMOR‖ while using a disproportionately small
font and lettering for STREET. This has been attempted to be
demonstrated in para 54 of the plaint, in the following tabular fashion:
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Plaintiff’s Marks Defendant’s Marks

4.2 The defendant‘s argument, on the aspect of infringement, as

advanced by Mr. Chander M. Lall, learned Senior Counsel, did not
really concentrate on comparing the complete marks of the plaintiff
with those of the defendant. The main gravamen of the submission of
Mr. Lall was that, in the plaint, the plaintiff had essentially premised
its case on the premise that ―ARMOUR‖ was the dominant part of its
marks.

4.3 I shall proceed to deal with that aspect of the matter somewhat
later. Suffice it to state, however, that I cannot read the plaint as
restricting the case that has been sought to be made therein, merely to
pleading that the aspect of infringement or passing off has to be
decided solely on the basis of the latter ARMOUR part of the marks
of the plaintiff. The plea of infringement, as well as a passing off, are
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predicated on the entire marks that the plaintiff asserts, i.e. ―UNDER
ARMOUR‖, ―UA‖, ―UNDR ARMR‖ as well as ―ARMOUR‖ in the
distinctive font used by the plaintiff.

4.4 It is true that, in the plaint, the plaintiff has advanced, as one of
its principal submissions, the plea that ARMOUR is the dominant part
of UNDER ARMOUR and that, as the defendant‘s impugned marks
too end with ARMOUR, infringement has taken place. That, however,
would not justify the Court restricting the scope of examination only
to the latter, ARMOUR, part of the plaintiff‘s marks, when what is
asserted is the entirety thereof. The task of the Court is to ascertain
whether, when viewed as a whole, the defendant‘s marks infringe the
plaintiff‘s or whether, by using the said marks, the defendant can be
said to have attempted to pass of its goods as those of the plaintiff.

4.5 Is ARMOUR the dominant part of the plaintiff‘s marks?

4.5.1 The ―dominant part‖ plea, which is raised in case after case,
owes much of its genesis to the judgement of a Division Bench of this
Court in South India Beverages Pvt Ltd v. General Mills Marketing
Inc.2 Section 17(1) and (2)(a)3 of the Trade Marks Act specifically
confers exclusivity, to a holder of a registered trade mark, only on the

2
(2015) 61 PTC 231
3
17. Effect of registration of parts of a mark. –
(1) When a trade mark consists of several matters, its registration shall confer on the
proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark –
(a) contains any part –
(i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-
distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the
whole of the trade mark so registered.

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right to use the mark taken as a whole, and disallows any claim to
exclusivity in matter which forms only a part of the whole of the trade
mark so registered, except where the said part is either subject matter
of a separate application seeking registration, or is separately so
registered. South India Beverages2, however, held:
―The Rule of Anti-Dissection

16. This rule mandates that the Courts whilst dealing with
cases of trademark infringement involving composite marks, must
consider the composite marks in their entirety as an indivisible
whole rather than truncating or dissecting them into its component
parts and make comparison with the corresponding parts of arrival
mark to determine the likelihood of confusion. The raison
d'tre underscoring the said principle is that the commercial
impression of a composite trademark on an ordinary prospective
buyer is created by the mark as a whole and not by its component
parts [Fruit of the loom, Inc. v. Girouard4; Autozone,
Inc. v. Tandy Corporation5].

17. The Court of Appeals of the Federal Circuit in its decision

reported as Shen Mfg. Co. v. The Ritz Hotel6, had the occasion to
apply the principle of ‗anti-dissection‘. The appellant owned and
operated hotels under the trademarks ‗RITZ PARIS‘ and ‗HOTEL
RITZ‘. He also operated under the trademark ‗PUTTING ON THE
RITZ‘ for shower curtains. The respondent owned the trademark
‗RITZ‘ and had also been using it in connection with the sale of
kitchen textiles, towels, potholders, etc. The respondent opposed
the appellant's application for the registration of the trademarks
‗PUTTING ON THE RITZ‘. The Court applied the anti-dissection
rule and held that the mark must be viewed in its entirety. It
observed that the rule ensures that the mark is evaluated in the
same way as a prospective buyer i.e. the commercial impression of
the mark as a whole needs to be considered. It held that the
trademark ‗PUTTING ON THE RITZ‘ when evaluated as a whole,
conveyed an image of ‗comfort, sophistication and wealth‘ which
was completely different from the commercial impression that
respondent's mark gave, which is that of cooking or manual labour.

18. Similarly in the decision reported as Fruit of the Loom4,

the Court repelled the claim of infringement by applying the
principle of ‗anti-dissection‘. The plaintiff operated under the
trademark ‗FRUIT OF THE LOOM‘, whereas the defendant
operated under the trade name ‗FRUIT FLOPS‘ and ‗FRUIT

4
994 F.2d 1359, 1362 (9th Cir. 1993)
5
174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001)
6
393 F.3d 1238 (Fed. Cir. 2004)
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CUPS‘. Both parties were in the business of manufacturing and

selling garments. The plaintiff brought a suit of infringement of
trademark against the defendant. The Court compared the ‗FRUIT
OF THE LOOM‘ mark to ‗FRUIT FLOPS‘ and ‗FRUIT CUPS‘
mark and found the marks to be dissimilar. The Court observed
that the purchasers view the ‗FRUIT OF THE LOOM‘ mark as a
whole rather than as dissected parts. It was further held that it is the
combination of the terms in its entirety that constitute plaintiff's
distinctive mark.

The Identification of ‘Dominant Mark’

19. Though it bears no reiteration that while a mark is to be

considered in entirety, yet it is permissible to accord more or less
importance or ‗dominance‘ to a particular portion or element of a
mark in cases of composite marks. Thus, a particular element of a
composite mark which enjoys greater prominence vis-à-vis other
constituent elements, may be termed as a ‗dominant mark‘.

20. At this juncture it would be apposite to refer to a recent

decision of this Court reported as Stiefel Laborataries v. Ajanta
Pharma Ltd7. The Court whilst expounding upon the principle of
‗anti-dissection‘ cited with approval the views of the eminent
author on the subject comprised in his authoritative treatise-
McCarthy on Trademarks and Unfair Competition. It was
observed:

“41. The anti-dissection rule which is under these

circumstances required to be applied in India is really
based upon nature of customer. It has been rightly set out
in McCarthy on Trademarks and Unfair Competition about
the said rule particularly in Para 23.15 which is
reproduced hereunder:

23.15 Comparing Marks : Differences v. Similarities

[1] The Anti-Dissection Rule

[a] Compare composites as a Whole :

Conflicting composite marks are to be compared by
looking at them as a whole, rather than breaking
the marks up into their component parts for
comparison. This is the “anti dissection” rule. The
rationale for the rule is that the commercial
impression of a composite trademark on an
ordinary prospective buyer is created by the mark
as a whole, not by its component parts. However, it
is not a violation of the anti-dissection rule to view
the component parts of conflicting composite marks

7
211 (2014) DLT 296
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as a preliminary step on the way to an ultimate

determination of probable customer reaction to the
conflicting composites as a whole. Thus, conflicting
marks must be compared in their entireties. A mark
should not be dissected or split up into its
component parts and each part then compared with
corresponding parts of the conflicting mark to
determine the likelihood of confusion. It is the
impression that the mark as a whole creates on the
average reasonably prudent buyer and not the parts
thereof, that is important. As the Supreme Court
observed:“The commercial impression of a
trademark is derived from it as a whole, not from its
elements separated and considered in detail. For
this reason it should be considered in its entirety.”
The anti-dissection rule is based upon a common
sense observation of customer behavior : the typical
shopper does not retain all of the individual details
of a composite mark in his or her mind, but retains
only an overall, general impression created by the
composite as a whole. It is the overall impression
created by the mark from the ordinary shopper's
cursory observation in the marketplace that will or
will not lead to a likelihood of confusion, not the
impression created from a meticulous comparison
as expressed in carefully weighed analysis in legal
briefs. In litigation over the alleged similarity of
marks, the owner will emphasize the similarities
and the alleged infringer will emphasize the
differences. The point is that the two marks should
not be examined with a microscope to find the
differences, for this is not the way the average
purchaser views the marks. To the average buyer,
the points of similarity are more important that
minor points of difference. A court should not
engage in “technical gymnastics” in an attempt to
find some minor differences between conflicting
marks.

However, where there are both similarities and

differences in the marks, there must be weighed
against one another to see which predominate.

The rationale of the anti-dissection rule is based

upon this assumption:“An average purchaser does
not retain all the details of a mark, but rather the
mental impression of the mark creates in its totality.
It has been held to be a violation of the anti-
dissection rule to focus upon the “prominent”
feature of a mark and decide likely confusion solely
upon that feature, ignoring all other elements of the
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mark. Similarly, it is improper to find that one

portion of a composite mark has no trademark
significance, leading to a direct comparison
between only that which remains.”[Emphasis
Supplied]

21. The view of the author makes it scintillatingly clear,

beyond pale of doubt, that the principle of ‗anti dissection‘ does
not impose an absolute embargo upon the consideration of the
constituent elements of a composite mark. The said elements may
be viewed as a preliminary step on the way to an ultimate
determination of probable customer reaction to the conflicting
composites as a whole. Thus, the principle of ‗anti-dissection‘ and
identification of ‗dominant mark‘ are not antithetical to one
another and if viewed in a holistic perspective, the said principles
rather compliment each other.

22. We may refer to the decision of the United States Court of

Appeals for the Federal Circuit reported as Re Chatam Int’l, Inc8,
wherein the Court enunciated the interplay between the principle
of ‗anti dissection‘ and identification of ‗dominant mark‘. The
Court, while ascertaining whether the mark ‗JOSE GASPAR
GOLD‘ was similar to the registered mark ‗GASPAR‘S ALE‘,
held that ‗GASPAR‘ was clearly the dominant element in the two
marks and resembled the relevant mark enough to cause a
likelihood of confusion, to cause a mistake or to deceive. Relevant
would it be to note that the defendant in the said case urged that the
approach of splitting of the marks was in violation of the anti-
dissection rule. The said contention was repelled by the Court and
it was pertinently observed that there was no violation of anti-
dissection rule because the marks were any way examined in
entirety, and each individual term in the marks were given more or
less weightage depending on the overall impression it appeared to
create. The Court was of the view that both marks convey the
commercial impression that a name, GASPAR, is the source of
related alcoholic beverages, tequila or ale. In other words, the
commercial significance of ALE in the registered mark
‗GASPAR'S ALE‘ and JOSE and GOLD in appellant's mark
‗JOSE'S GASPAR GOLD‘ assumed less significance in the
opinion of the Court.

23. It is also settled that while a trademark is supposed to be

looked at in entirety, yet the consideration of a trademark as a
whole does not condone infringement where less than the entire
trademark is appropriated. It is therefore not improper to identify
elements or features of the marks that are more or less important
for purpose of analysis in cases of composite marks.

*****

8
380 F.3d 1340
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26. Dominant features are significant because they attract

attention and consumers are more likely to remember and rely on
them for purposes of identification of the product. Usually, the
dominant portion of a mark is that which has the greater strength or
carries more weight. Descriptive or generic components, having
little or no source identifying significance, are generally less
significant in the analysis. However, words that are arbitrary and
distinct possess greater strength and are thus accorded greater
protection.[Autozone5]
(Emphasis in original)

4.5.2 Thus, where a composite mark consists of various parts, of

which one or the other is dominant, the Court can, while assessing
whether the mark is infringed by another mark, take into account the
dominant part thereof. The decision in South India Beverages2 holds,
unexceptionably, that, as, by doing so, the Court would merely be
formulating a mechanism to compare the marks to assess infringement
or passing off, Section 17(2) would not be infracted.

4.5.3 This principle would apply, however, where, of the various

parts of a mark, a Court could identify one or the other as dominant. I
see no reason to regard ARMOUR/ARMOR, either in UNDER
ARMOUR or in STREET ARMOR, as the dominant part of the mark.
The principal test to determine whether any one part of a mark is
dominant is, unquestionably, the test of whether, when the mark is
seen by a customer of average intelligence and imperfect recollection,
any one part of the mark would impress itself more strongly on his
psyche than the others. Viewed empirically and as a mark per se, and
in the absence of any material or evidence to indicate to the contrary, I
am unable to convince myself that UNDER, or STREET, is any less
dominant, in UNDER ARMOUR or STREET ARMOR, than
ARMOUR or ARMOR, respectively. The plea of the plaintiff that
ARMOUR constitutes the dominant part of the plaintiff‘s UNDER
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ARMOUR mark, therefore, does not prima facie commend itself to

acceptance.

4.6 That, however, would make no real difference as, ultimately,

the issue before the Court is whether the plaintiff‘s marks, seen as
whole marks, are, or are not, infringed by the defendants‘.

4.7 In my prima facie opinion, when viewed as whole marks, the

marks of the defendant have to be regarded as infringing the marks of
the plaintiff within the meaning of Section 29(2)(b)9 of the Trade
Marks Act, for the following reasons:

(i) ‗ARMOUR‘ is not descriptive of sports apparel, as the

discussion to follow later in this judgement would reveal. To a
customer of average intelligence and imperfect recollection,
therefore, who first chances across the plaintiff‘s UNDER
ARMOUR mark and, at a later point of time, comes across the
defendant‘s STREET ARMOR mark, used on identical goods,
i.e. sports apparel, there is every possibility of confusion, or at
the very least, of a feeling that there could be an association
between the two marks. All that is needed, for possibility of
confusion or deception to be said to exist, is for the customer to

9
29. Infringement of registered trade marks. –
(1) A registered trade mark 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 trade mark in relation to goods or services in respect of which the
trade mark is registered and in such manner as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark 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—
(a) its identity with the registered trade mark and the similarity of the goods or
services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the
goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or
services covered by such registered trade mark,
is likely to cause confusion on the part of the public, or which is likely to have an association with
the registered trade mark.

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be placed in a ―state of wonderment‖. The distinction between

―confusion‖ and ―deception‖ was thus explained in Shree Nath
Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt
Ltd.10:
―6. When a person knows that the mark in question
does not originate from the senior user but the senior user is
called to mind, then it's a step before confusion. If on the
other hand, the consumer is in a state of wonderment if
there's a connection, this is confusion. Further, if this
consumer then purchases the junior users product, this is
then deception.‖

(ii) The fact that the plaintiff‘s and defendant‘s marks are
used for identical goods is of considerable significance in this
regard. A customer of average intelligence and imperfect
recollection who comes across the plaintiff‘s UNDER
ARMOUR, or UNDR ARMR mark on sports wear at one point
of time and, some time later, chances on the defendant‘s
STREET ARMOR or STRT ARMR mark on identical sports
apparel, is bound, in my considered opinion, to wonder whether
there does not exist a connection between the two marks, or
whether he has not seen the mark earlier. The use, by the
defendant, of a closely similar manner of abbreviating its name
– as STRT ARMR, vis-à-vis the plaintiff‘s UNDR ARMR –
would only fortify this impression. That fact that a chance of
such an inference of association between the marks exists is
sufficient to constitute infringement, within the meaning of
Section 29(2)(b) of the Trade Marks Act.

(iii) In fact, (a) the abbreviation, by the defendant, of its

STREET ARMOR mark to STRT ARMR, similar to the

10
221 (2015) DLT 359 (Del – DB)
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manner in which the plaintiff has abbreviated UNDER

ARMOUR to UNDR ARMR, (b) the use, for the ARMOR part
of the STREET ARMOR mark, of a font which is similar to
that used by the plaintiff for its ARMOUR mark and (c) the use
of an almost imperceptibly small font size for ‗STREET‘ in the

logo, compared to ‗ARMOR‘, indicates that the

defendant was ―straining every nerve‖ to approach as close to
the plaintiff‘s mark and, thereby, deceive the public, as
possible. In such circumstances, the following exordium of
Lord Lindley, in Slazenger & Sons v. Feltham & Co.11
squarely applies:
―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?‖

(iv) The following words of Kekewich, J., in Munday v.

Carey12 are also instructive, in this context, regarding the
manner in which the Court is required to approach the issue of
infringement in such cases:
―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.‖

The use, by the defendant, of the STRT ARMR abbreviation

and of a lettering and style, for ‗ARMOR‘, which is strikingly
similar to that in which the plaintiff prints ARMOUR, in my
view, prima facie betokens dishonesty. The use of the suffix
11
(1889) 6 RPC 531
12
(1905) 22 RPC 273
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ARMOR, vis-à-vis the plaintiff‘s ARMOUR, seen in

conjunction with the font in which the defendant prints
ARMOR, and the fact that the both marks are used for identical
goods, would be available at the same outlets, and cater to the
same consumer segment (the classical ‗trinity test‘) would,
conjointly seen, suffice to constitute enough points of similarity
as would lead to a clear possibility of confusion in the mind of
the customer of average intelligence and imperfect recollection.

(v) Besides, the matter has to be examined from the point of

view of initial interest confusion. It has to be examined from the
point of view of a customer of average intelligence and
imperfect recollection who, after having come across the goods
bearing the plaintiff‘s mark, comes across the mark of the
defendant at a somewhat later point of time. The question that is
to be asked is whether, in such a situation, the customer of
average intelligence and imperfect recollection is likely to be
placed in a state of wonderment as to whether the mark is the
same as that one he had earlier seen, or whether the mark which
is before him bears an association to the mark that he had seen
earlier. If such a feeling arises when the customer initially
views the defendants’ mark – having seen the plaintiff‘s some
time earlier – that feeling, by itself, suffices to make out a case
of infringement. The initial impression is what, fundamentally,
matters.

(vi) Section 29(2)(b) of the Trade Marks Act, 1999

specifically provides that where the marks of the plaintiff and
the defendant are similar, and are used on identical goods, and
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there is a chance of likelihood or confusion as a result of the

similarity in the marks and the similar/identity of the goods on
which the marks are used, a case of infringement is made out. In
this context, one may analogize the present case to that fact that
came before the Supreme Court in Amritdhara Pharmacy v.
Satyadeo Gupta13.

(vii) The Amritdhara principles: In Amritdhara13, which

arose under the Trade Marks Act, 1940, the competing marks
AMRITDHARA (of the plaintiff) and LAXMANDHARA (of
the defendant) were used for similar Ayurvedic preparations.
AMRITDHARA was registered as a trade mark. The defendant
contended that there was no phonetic similarity between
AMRITDHARA and LAXMANDHARA. The Supreme Court
identified two issues as arising before it, of which we are
concerned only with the first, viz., ―whether the name
‗Laxmandhara‘ was likely to deceive the public or cause
confusion‖. In para 6 of the report, the Supreme Court noted
the fact that the statute, while using the words ―likely to deceive
or cause confusion‖, did not lay down any criteria in that regard
and that, therefore, ―every case must depend on its own
particular facts, and the value of authorities lies not so much in
the actual decision as in the tests applied for determining what
is likely to deceive or cause confusion‖. The definitive test, in
that regard, was postulated, further in the same paragraph, thus:
―…A trade mark is likely to deceive or cause confusion by
its resemblance to another already on the Register if it is
likely to do so in the course of its legitimate use in a market
where the two marks are assumed to be in use by traders in
that market. In considering the matter, all the circumstances

13
(1963) 2 SCR 484
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of the case must be considered. As was observed by Parker,

J., in Pianotist Co Application14 which was also a case of
the comparison of two words.

―You must take the two words. You must judge

them, both by their look and by their sound. You
consider the goods to which they are to be applied.
You must consider the nature and kind of customer
who would be likely to buy those goods. In fact you
must consider all the surrounding circumstances;
and you must further consider what is likely to
happen if each of those trade marks is used in a
normal way as a trade mark for the goods of the
respective owners of the marks.‖ (p. 777)

For deceptive resemblance two important questions are :

(1) who are the persons whom the resemblance must be
likely to deceive or confuse, and (2) what rules of
comparison are to be adopted in judging whether such
resemblance exists. As to confusion, it is perhaps an
appropriate description of the state of mind of a customer
who, on seeing a mark thinks that it differs from the mark
on goods which he has previously bought, but is doubtful
whether that impression is not due to imperfect
recollection. (See Kerly on Trade Marks, 8th Edition, p.
400.)‖

These words continue to represent the legal position, on the

aspect of confusing or deceptive similarity in the case of rival
word marks, to this day. Applying these tests, the Supreme
Court went on to hold that the name ―LAXMANDHARA‖ was
confusingly similar to ―AMRITDHARA‖ thus, in paras 7 to 9
and 12 of the report:
―7. Let us apply these tests to the facts of the case under
our consideration. It is not disputed before us that the two
names “Amritdhara” and “Lakshman-dhara” are in use in
respect of the same description of goods, namely a
medicinal preparation for the alleviation of various
ailments. Such medicinal preparation will be purchased
mostly by people who instead of going to a doctor wish to
purchase a medicine for the quick alleviation of their
suffering, both villagers and townsfolk, literate as well as
illiterate. As we said in Corn Products Refining

14
(1906) 23 RPC 774
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Co. v. Shangrila Food Products Ltd.15 the question has to

be approached from the point of view of a man of average
intelligence and imperfect recollection. To such a man the
overall structural and phonetic similarity-of the two names
“Amritdhara” and “Lakshmandhara” is, in our opinion,
likely to deceive or cause confusion. We must consider the
overall similarity of the two composite words
“Amritdhara” and “Lakshmandhara”. We do not think
that the learned Judges of the High Court were right in
saying that no Indian would mistake one for the other. An
unwary purchaser of average intelligence and imperfect
recollection would not, as the High Court supposed, split
the name into its component parts and consider the
etymological meaning thereof or even consider the meaning
of the composite words as ―current of nectar‖ or ―current of
Lakshman‖. He would go more by the overall structural
and phonetic similarity and the nature of the medicine he
has previously purchased, or has been told about, or about
which has otherwise learnt and which he wants to
purchase. Where the trade relates to goods largely sold to
illiterate or badly educated persons, it is no answer to say
that a person educated in the Hindi language would go by
the etymological or ideological meaning and see the
difference between ―current of nectar‖ and ―current of
Lakshman‖. ―Current of Lakshman‖ in a literal sense has
no meaning; to give it meaning one must further make the
inference that the ―current or stream‖ is as pure and strong
as Lakshman of the Ramayana. An ordinary Indian villager
or townsman will perhaps know Lakshman, the story of the
Ramayana being familiar to him; but we doubt if he would
etymologise to the extent of seeing the so-called ideological
difference between ―Amritdhara‖ and ―Lakshmandhara‖.
He would go more by the similarity of the two names in the
context of the widely known medicinal preparation which
he wants for his ailments.

8. We agree that the use of the word “dhara” which

literally means “current or stream” is not by itself decisive
of the matter. What we have to consider here is the overall
similarity of the composite words, having regard to the
circumstance that the goods bearing the two names are
medicinal preparations of the same description. We are
aware that the admission of a mark is not to be refused,
because unusually stupid people, “fools or idiots”, may be
deceived. A critical comparison of the two names may
disclose some points of difference, but an unwary
purchaser of average intelligence and imperfect
recollection would be deceived by the overall similarity of
the two names having regard to the nature of the medicine

15
(1960) (1) SCR 968
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he is looking for with a somewhat vague recollection that

he had purchased a similar medicine on a previous
occasion with a similar name. The trade mark is the whole
thing-the whole word has to be considered. In the case of
the application to register ―Erectiks‖ (opposed by the
proprietors of the trade mark ―Erector‖) Farwell, J., said
in William Bailey (Birmingham) Ltd. Application16:
―I do not think it is right to take a part of the word
and compare it with a part of the other word; one
word must be considered as a whole and compared
with the other word as a whole…. I think it is a
dangerous method to adopt to divide the word up
and seek to distinguish a portion of it from a portion
of the other word.‖

9. Nor do we think that the High Court was right in

thinking that the appellant was claiming a monopoly in the
common Hindi word “dhara”. We do not think that that is
quite the position here. What the appellant is claiming is its
right under Section 21 of the Act, the exclusive right to the
use of its trade mark, and to oppose the registration of a
trade mark which so nearly resembles its trade mark that it
is likely to deceive or cause confusion.

*****

12. On a consideration of all the circumstances, we

have come to the conclusion that the overall similarity
between the two names in respect of the same description of
goods was likely to cause deception or confusion within the
meaning of Section 10(I) of the Act and the Registrar was
right in the view he expressed. The High Court was in error
in taking a contrary view.‖
(Emphasis supplied)

I may note that though Section 10 of the Trade Marks Act,

1940, which was the statutory provision that applied in
Amritdhara13 was not nearly as comprehensive as Section 29 of
the present Trade Marks Act, yet, for the purpose of
applicability of Amritdhara13 as a precedent, sub-section (1)
thereof was similar in concept, insofar as it envisaged

16
(1935) 52 RPC 137
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likelihood of confusion or deception as the definitive test for

infringement:
―10. Prohibition of registration of identical or similar trade
mark. –

(1) Save as provided in sub-section (2), no trade mark

shall be registered in respect of any goods or description of
goods which is identical with a trade mark belonging to a
different proprietor and already on the register in respect of
the same goods or description of goods, or which so nearly
resembles such trade mark as to be likely to deceive or
cause confusion.‖

What is, however, of considerable significance, when

comparing Section 10(1) of the 1940 Trade Marks Act with
Section 29(2) of the present Trade Marks Act, and the
applicability of Amritdhara13 as a precedent, is the fact that, in
Section 29(2), it is not merely likelihood of confusion or
deception that would betoken infringement; infringement would
also stand established if there is likelihood of ―an association
with the registered trade mark‖. Section 29(2) of the Trade
Marks Act, 1999, therefore, casts a wider net than Section 10(1)
of the Trade Marks Act, 1940, did. Keeping this statutory
distinction in mind, the principles that emerge from
Amritdhara13 are (taking care to retain, as far as possible, the
actual words used by the Supreme Court) that
(a) the possibility of confusion or deception has to be
gauged in the course of the legitimate use of the
impugned mark in a market where the two marks are
assumed to be in use by traders,
(b) in doing so, all the circumstances of the case must
be considered,
(c) where the rival marks were word marks, the
Pianotist14 test would apply, which requires the Court to
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(i) judge the two words by look and sound,

(ii) keep in mind the goods to which the marks
apply,
(iii) keep in mind the nature and kind of
customer who would be likely to buy those goods,
(iv) consider, in fact, all circumstances, and
(v) also consider what is likely to happen if each
of the marks is used in a normal way as a trade
mark for the goods of the respective owners of the
marks,
(d) the two important questions are
(i) who the persons, whom the resemblance
must be likely to deceive or confuse, are and
(ii) the rules of comparison to be adopted in
judging whether such resemblance exists, and
(e) ―confusion‖ was an appropriate description of the
state of mind of a customer who, on seeing a mark thinks
that it differs from the mark on goods which he has
previously bought, but is doubtful whether that
impression is not due to imperfect recollection.

(viii) How the Supreme Court applied the principles to the

facts before it: It is also important to note how the Supreme
Court applied these principles to the facts before it. In holding
that the name LAXMANDHARA was confusingly or
deceptively similar to AMRITDHARA, the Supreme Court
observed (again retaining, to the extent possible, the words of
the Supreme Court) that

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(i) the two names were in use in respect of the same

description of goods, namely a medicinal preparation for
the alleviation of various ailments,
(ii) such medicinal preparations would be purchased
mostly by people who, instead of going to a doctor,
wished to purchase a medicine for the quick alleviation
of their suffering, both villagers and townsfolk, literate
as well as illiterate,
(iii) the question had to be approached from the point
of view of a man of average intelligence and imperfect
recollection,
(iv) the Court had to consider the overall similarity of
the two composite words Amritdhara and Laxmandhara,
(v) to such a man of average intelligence and
imperfect recollection, the overall structural and
phonetic similarity of the two names Amritdhara and
Lakshmandhara was likely to deceive or cause confusion,
as he would not split the name into its component parts
and consider the etymological meaning thereof, but
would go more by the overall structural and phonetic
similarity and the nature of the medicine he had
previously purchased, or told about, or about which he
had otherwise learnt and which he wanted to purchase,
(vi) the Court was required to consider the overall
similarity of the composite words, having regard to the
circumstance that the goods bearing the two names were
medicinal preparations of the same description,
(vii) though a critical comparison of the two names may
disclose some points of difference, an unwary purchaser
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of average intelligence and imperfect recollection would

be deceived by the overall similarity of the two names
having regard to the nature of the medicine he is looking
for with a somewhat vague recollection that he had
purchased a similar medicine on a previous occasion
with a similar name.
I have deemed it appropriate to place especial emphasis on the
underscored words because, in my opinion, they are words –
taken verbatim from the judgment of the Supreme Court –
which encapsulate, in excelsis, the primordial principle for
gauging infringement.

(viii) When we apply this test to the present case, on the aspect
of infringement, the result appears pre-ordained. An unwary
purchaser of average intelligence and imperfect recollection,
who has once purchased sportswear bearing the plaintiff‘s
UNDER ARMOUR, or UNDR ARMR, mark has every chance,
on later coming across the defendant‘s STREET ARMOUR, or
STRT ARMR, mark, having a vague recollection that he had
purchased a similar piece of sportswear on a previous occasion
with a similar name. That, in the words of the Supreme Court
in Amritdhara13, suffices to constitute infringement.

(ix) Further, as already noted, unlike Section 10(1) of the

1940 Trade Marks Act which applied in Amritdhara, Section
29(2)(b) also treats, as indicating infringement, a case in which
the customer of average intelligence and imperfect recollection,
on seeing the defendant‘s mark, is likely to presume an
association with the mark of the plaintiff. To my mind, having
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seen, or purchased, an UNDER ARMOUR item of sportswear,

if such a customer were, later, see the defendant‘s STREET
ARMOUR sportswear, there is every likelihood of his
presuming an association between the mark of the defendant
and the earlier mark of the plaintiff which he had seen some
time back. That possibility, again, would indicate, prima facie,
infringement.

(x) As the Supreme Court holds, by so ruling, the plaintiff is

not being allowed a monopoly on the suffix ARMOUR. The
two marks are compared as wholes, and not in their respective
parts.

4.8 As in the case of Amritdhara13, the latter part of the two marks
in the present case is the same, i.e., ―ARMOUR‖ and ―ARMOR‖. The
fact that the defendant has chosen to abbreviate its complete name to
―STRT ARMR‖ indicates a conscious attempt to use an abbreviation
similar to that used by the plaintiff which is ―UNDR ARMR‖. All
these factors, put together, prima facie, make out a case of
infringement, by the defendant, using the impugned marks, of the
marks asserted in the plaint.

5. Is the ‗ARMOUR‘ part of the plaintiff‘s marks descriptive?

5.1 Mr. Lall sought to contend that in the facts of the present case,
the decision which would apply would not be Amritdhara13, but
would be J.R. Kapoor v. Micronix India17. This contention is
predicated on the premise that the ―ARMOUR‖ part of the plaintiff‘s

17
(1994) Supp (3) SCC 215
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mark is descriptive, unlike Amridhara13, where the ―DHARA‖ part of

the mark was not descriptive in nature. Where the common part of the
mark is descriptive, and the remainder of the rival marks are
dissimilar, Mr. Lall would seek to contend, on the basis of J.R.
Kapoor17, that no case of infringement can be said to exist.

5.2 On the fact that, if the common part of the rival marks is
descriptive of the goods on which the mark is affixed, and the
remaining parts of the marks are dissimilar, J.R. Kapoor17 holds that
there is no infringement, I entirely agree with Mr Lall.

5.3 ‗ARMOUR‘ is not, however, in my opinion, descriptive of the

goods either of the plaintiff or of the defendants.

5.4 In order to support his submission that the ―ARMOUR‖ was

descriptive in nature, Mr. Lall has relied on three facts. The first is
that, the name ―UNDER ARMOUR‖ was coined in 1996 to be used as
a mark on T-shirts made of moisture wicking synthetic fabric which
could be worn under the jersey and would absorb sweat (as is
mentioned in para 5 of the plaint). As such, it literally conformed to
the description of ―under armour‖. The second basis for Mr. Lall‘s
contention is predicated to the dictionary meaning of ―armour‖. Mr.
Lall has referred me to the meaning of ―armour‖ which has, resulting
from a Google search of the meaning of the expression, which defines
―armour‖ as ―clothing, often made of metal that soldiers wore in
earlier times to protect themselves‖. As such, even when used for
clothing, Mr. Lall would submit that the word ―armour‖ is descriptive
in nature. The third basis for Mr. Lall‘s contention is the application
submitted by the plaintiff while seeking to register the mark ―UNDER
ARMOUR‖ which includes, among the categories of items
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encompassed in the class for which the registration was sought,

―protective clothing‖.

5.5 Mr. Bansal, learned Counsel for the plaintiff advanced a

preliminary objection to this line of argument of Mr. Lall, contending
that, as the defendant had itself applied for registration of the mark
―STREET ARMOUR‖, it was estopped from contending that
―ARMOUR‖ was descriptive. The submission is obviously
misconceived, as the defendant‘s application was not for registration
of ―ARMOUR‖ per se, but for registration of the complete mark
―STREET ARMOUR‖.

5.6 On merits, however, I am unable to subscribe to the point of

view espoused by Mr. Lall.

5.7 To my mind, ―Armour‖ when used in the context of clothing,

especially in the context of sportswear, cannot, by any stretch of
imagination, be treated as descriptive in nature. Sportswear is not
armour, nor is it armorial in nature. At the highest, it might have been
possible to advance an argument that, if the clothing in respect of
which the mark ―ARMOUR‖ was being sought to be used was
protective, the mark might have been suggestive in nature. Even then,
it could not be said that it was descriptive.

5.8 This Court has, on more occasions than one, recognised the
difference between descriptive marks and suggestive marks. Marks
which are suggestive can be registered, though marks which are
descriptive cannot be registered in view of the proscription contained

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in Section 9(1)(b)18 of the Trade Marks Act. For this purpose, one may
refer to the following passages from the judgement of a coordinate
bench of this Court in Teleecare Network India Pvt Ltd v. Asus
Technology Pvt Ltd19:
―22. There are various types of trademarks. Initially four
categories of trademarks i.e. (1) generic, (2) descriptive, (3)
suggestive, and (4) arbitrary or fanciful were set out
in Abercrombie & Fitch Co. v. Hunting World, Inc.20,.
Subsequently in Two Pesos, Inc. v. Taco Cabana, Inc.21, , it was
held that there are five categories of trademarks. The relevant
portion of the said judgment is reproduced hereinbelow: -

“… Marks are often classified in categories of generally

increasing distinctiveness; following the classic
formulation set out by Judge Friendly, they may be (1)
generic; (2) descriptive; (3) suggestive; (4) arbitrary; or
(5) fanciful. …The latter three categories of marks, because
their intrinsic nature serves to identify a particular source
of a product, are deemed inherently distinctive and are
entitled to protection. In contrast, generic marks-those that
“refe[r] to the genus of which the particular product is a
species,‖ Park N Fly, Inc. v. Dollar Park & Fly, Inc.22,
citing Abercrombie & Fitch Co20, supra, at 9-are not
registrable as trademarks. Park ‘N Fly22, supra, at 194.

Marks which are merely descriptive of a product are not

inherently distinctive. When used to describe a product,
they do not inherently identify a particular source, and
hence cannot be protected. However, descriptive marks
may acquire the distinctiveness which will allow them to be
protected under the Act. Section 2 of the Lanham Act
provides that a descriptive mark that otherwise could not

18
9. Absolute grounds for refusal of registration. –
(1) The trade marks –
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of the service or other characteristics of the
goods or service;
(c) which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established practices of the
trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use made of it or
is a well-known trade mark.
19
262 (2019) DLT 101 : (2019) 79 PTC 99
20
537 F.2d 4, 9 (2nd Cir. 1976)
21
505 US 763
22
469 U.S. 189, 194 (1985)
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be registered under the Act may be registered if it “has

become distinctive of the applicant's goods in commerce.”.
…

The general rule regarding distinctiveness is clear: An

identifying mark is distinctive and capable of being
protected if it either (1) is inherently distinctive or (2) has
acquired distinctiveness through secondary meaning. …”

23. The said categorisation of trademarks has been accepted by

a Coordinate Bench of this Court in Evergreen Sweet
House v. Ever Green23, wherein it was held that the mark
‗Evergreen‘ in its application to sweets and confections is an
arbitrary one and accordingly is entitled to protection.

24. The term ‗generic‘ refers to the ‗genus‘ to which a

particular product or service is a species of.

25. The term ‗descriptive‘ refers to a word/mark which

describes an article/service, its qualities, ingredients or
characteristics.

26. However, often the lines differentiating different categories

of marks are blurred. Often, distinctions between suggestive,
fanciful and arbitrary marks may seem artificial.

27. For instance, in Abercrombie & Fitch Co.20 (supra) it was

explained that ―Deep Bowl‖ when used for an article which is a
deep bowl, does not only describe the article, but also identifies it.
Therefore, ―Deep Bowl‖ is generic when used for a deep bowl.
Similarly the term ―spoon‖ is not merely descriptive of the article
i.e. spoon, but identifies the article and therefore, is generic.

28. However, the mark ―Deep Bowl Spoon‖ for a spoon merely
describes the significant characteristic of being able to reach deep
in a bowl. It is not descriptive of the article i.e. spoon, since the
article is not a deep bowl, but a spoon.

29. In common law, neither the generic nor merely descriptive

terms are valid trademarks and the exclusive use of such terms is
not entitled to legal protection. However, protection is awarded to
descriptive marks which have acquired secondary significance.

30. The category of suggestive marks refers to those marks

which are neither exactly descriptive on the one hand, nor truly
fanciful on the other. A term is suggestive if it requires
imagination, thought and perception to reach a conclusion as to
the nature of the goods. If a term is suggestive, it is entitled to
registration without proof of secondary meaning. For instance, as

23
2008 (38) PTC 325 (Del)
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pointed out in Abercrombie & Fitch Co.20 (supra) the word

―Ideal‖ when used for hair brushes, is in no sense indicative or
descriptive of the qualities or characteristics or merits of a brush. It
is therefore not descriptive. However, the word ―Ideal‖ for
hairbrushes does suggest that the product meets the very highest
ideal mental conception of what a hair brush should be and is
therefore suggestive.

31. The term ‗fanciful‘ refers to a mark which is an invented

word solely for use as trademarks. When a common word is
applied in an unfamiliar way, it is called an ‗arbitrary‘ mark. For
instance, ―Ivory‖ would be generic when used to describe a
product made from the tusks of elephants but would be arbitrary
when applied to a soap.

32. Fanciful and arbitrary terms enjoy all rights accorded to

suggestive marks and are also entitled to registration without proof
of secondary meanings.

33. Keeping in view the aforesaid mandate of law, this Court is

of the view that a word may be generic qua a specific business or
trade or industry but not across the board for all business or trades
or industries. For instance, the word ―Arrow‖ is a generic
word qua archery business, but is an arbitrary word qua shoes.‖

Applying the understanding of suggestive marks contained in para 30

from Teleecare Network19, ―armour‖, when used for sportswear
would, at best, be suggestive, as it would need a degree of
imagination to visualize that the term was used because the apparel in
question was intended to be protective in nature. In the present case,
however, as Mr. Bansal correctly submits, the sports apparel on
which the plaintiff‘s marks are used is not protective. ―ARMOUR‖,
when used for such apparel, cannot, therefore, be regarded even as
suggestive, but is prima facie arbitrary.

5.9 The reliance, by Mr. Lall, on the initial provocation for use of
the term ―UNDER ARMOUR‖, at the time when the ―UNDER
ARMOUR‖ mark was initially coined, is obviously without
substance. What has to be seen is not the provocation for coining the

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mark at the time when it was coined, but the nature of the use to
which the mark is being put at this point of time. Presently, it is not in
dispute that the ―UNDER ARMOUR‖ mark is being used by the
plaintiff, not merely for vests or other clothing which to be worn
under any other outer apparel but for sportswear per se. It cannot,
therefore, be said that, as used on date, ―ARMOUR‖ is even
suggestive, much less descriptive, in nature.

5.10 Again, the reliance by Mr. Lall, on the dictionary meaning of

―ARMOUR‖ is also, in my considered opinion, bereft of merit. The
aspect of whether a particular mark is descriptive, or not, cannot be
decided by referring to dictionaries. The test of infringement, or of
passing off, is to be decided from the point of view of a customer of
average intelligence and imperfect recollection, and such a customer
does not walk around with a dictionary in his hand. The test has,
therefore, to be one of common parlance. In common parlance,
―ARMOUR‖ cannot be regarded as descriptive of sportswear.

5.11 This is quite apart from the fact that in the present case, we are
not concerned with ―ARMOUR‖ per se, but with the complete mark
―UNDER ARMOUR‖. The complete marks used by the plaintiff,
when viewed vis-à-vis the complete marks used by the defendant and
keeping in mind the fact that both sets of marks are used on identical
goods, prima facie, indicate a case of infringement to exist.

6. The ‗common to trade‘ defence

6.1 Mr. Lall also advanced the contention that the mark
―ARMOUR‖ was common to trade and that the plaintiff was,

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therefore, operating in what he, interestingly, called a ―crowded

market place‖. He relied, for this purpose, on a tabular statement,
filed with the reply to the present application, in which there is a
reference to a large number of marks which include the word
―ARMOUR‖. Thus, submits Mr. Lall, even the register of trade
marks, insofar as the word ―ARMOUR‖ is concerned, was crowded.

6.2 With all due respect to the felicity of Mr Lall in presenting, for
judicial consideration, the somewhat innovative concept of a crowded
market place, the Trade Marks Act does not recognise any such
concept. The proscription against claiming of exclusivity in respect
of part of a mark is to be found in Section 17(2). That provision
proscribes claiming of exclusivity in respect of part of a registered
trademark, where the said part is ―common to the trade‖. A Division
Bench of this Court has already examined the ingredients which are
required to be satisfied before Section 17(2) can be invoked against
the plaintiff, to dispute the entitlement of the plaintiff to seek claim
exclusivity in respect of the whole or part of the mark which is
asserted in the plaint. In Pankaj Goel v. Dabur India24, this Court
has spoken thus:
―21. As far as the Appellant's argument that the word MOLA is
common to the trade and that variants of MOLA are available in
the market, we find that the Appellant has not been able to prima
facie prove that the said ‗infringers‘ had significant business
turnover or they posed a threat to Plaintiff's distinctiveness. In fact,
we are of the view that the Respondent/Plaintiff is not expected to
sue all small type infringers who may not be affecting
Respondent/Plaintiff business. The Supreme Court in National
Bell v. Metal Goods25, has held that a proprietor of a trademark
need not take action against infringement which do not cause
prejudice to its distinctiveness. In Express Bottlers Services Pvt.
Ltd. v. Pepsi Inc26, it has been held as under:—

24
(2008) 38 PTC 49 (DB)
25
(1970) 3 SCC 665
26
(1989) 7 PTC 14
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―….To establish the plea of common use, the use by other

persons should be shown to be substantial. In the present
case, there is no evidence regarding the extent of the trade
carried on by the alleged infringers or their respective
position in the trade. If the proprietor of the mark is
expected to pursue each and every insignificant infringer to
save his mark, the business will come to a
standstill. Because there may be occasion when the
malicious persons, just to harass the proprietor may use his
mark by way of pinpricks…. The mere use of the name is
irrelevant because a registered proprietor is not expected to
go on filing suits or proceedings against infringers who are
of no consequence… Mere delay in taking action against
the infringers is not sufficient to hold that the registered
proprietor has lost the mark intentionally unless it is
positively proved that delay was due to intentional
abandonment of the right over the registered mark. This
Court is inclined to accept the submissions of the
respondent No. 1 on this point… The respondent No. 1 did
not lose its mark by not proceeding against insignificant
infringers…‖

22. In fact, in Dr. Reddy Laboratories v. Reddy

Pharmaceuticals27, a Single Judge of this Court has held as
under:—

―…the owners of trade marks or copy rights are not

expected to run after every infringer and thereby remain
involved in litigation at the cost of their business time. If
the impugned infringement is too trivial or insignificant and
is not capable of harming their business interests, they may
overlook and ignore petty violations till they assume
alarming proportions. If a road side Dhaba puts up a board
of ―Taj Hotel‖, the owners of Taj Group are not expected to
swing into action and raise objections forthwith. They can
wait till the time the user of their name starts harming their
business interest and starts misleading and confusing their
customers.‖‖
(Emphasis supplied)

6.3 Relying on Pankaj Goel24, this Bench has, in a recent decision

in Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals
Pvt. Ltd28, observed as under:
―7.2.4 The onus to establish the existence of the ingredients to

27
(2004) 29 PTC 435
28
2023: DHC: 2390
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substantiate a plea that a mark, or a part thereof, is common to the

trade, is unquestionably on him who so asserts. It is for Mr. Khera,
therefore, to positively establish, at least prima facie, that the suffix
DEX is common to the trade in pharmaceutical preparations. I do
not think that he has succeeded in doing so.

7.2.5 How has Mr. Khera attempted to discharge this burden? He

has cited a number of pharmaceutical products, the names of which
end in DEX. The question is – does the burden on him thus stand
discharged?

7.2.6 Pankaj Goel24 would indicate otherwise, but, before

adverting to that decision, another facet of this issue merits
mention.

*****

7.2.8 For the rest, the issue stands covered by the passages from
Pankaj Goel24 reproduced supra. Merely citing marks of products
containing DEX as a suffix is insufficient to substantiate a
contention that DEX, as a suffix, is common to the trade in
pharmaceutical preparations. On the defendant, pleading that the
part of the brand name, common to the product of the plaintiff and
the defendant, is publici juris, is cast the onus to establish the
assertion. This, according to Express Bottlers Services26 and
Pankaj Goel24, requires the defendant to show (i) substantial use,
by the proprietors of the marks cited by it, (ii) the extent of trade in
products bearing the said marks and (iii) that the said marks pose a
threat to the distinctiveness of the mark asserted by the plaintiff.
Else, would not be possible for this Court to return a finding that
the mark of the plaintiff, or the part thereof which, according to the
defendant, is common to the trade, is indeed so.

7.2.9 By corollary, it would be even more impermissible for the

defendant to plead that the plaintiff‗s mark, or a part thereof, has
become common to the trade, thereby invoking Section 17(2)(b) of
the Trade Marks Act, by merely citing registrations, existing on the
Register of Trade Marks, of names containing the asserted mark, or
a part thereof. As is often correctly pleaded in these cases,
―common to register‖ is qualitatively different from ―common to
the trade‖. One may register a mark and leave it unused. Products
bearing marks which stand registered in the Register of Trade
Marks may never see the market, or may, at best, make sporadic
appearances. Such registrations cannot divest the plaintiff‗s mark
of distinctiveness, or disentitle the plaintiff to injunction.

7.2.10 Plainly put, a mark, though registered, may not make it ―to
the trade‖. Section 17(2)(b) applies only where the asserted mark,
or a part thereof, is common ―to the trade‖. The use of the article
―the‖, in Section 17(2)(b) is, in my considered opinion, significant.
There is a clear difference between the expressions ―common to
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trade‖ and ―common to the trade‖.

7.2.11 It is an elementary principle of legislative interpretation that

the legislature is presumed not to indulge either in superfluity or
tautology. Every word used in parliamentary legislation is
intended, axiomatically, to have been deliberately used29. This
principle applies with greater force where the use of the concerned
word or phrase is not necessary to make the provision, in which it
is used, syntactically complete. If, therefore, the legislature has, in
the phrase ―common to trade‖, inserted the definitive article ―the‖,
that insertion has to be treated as deliberate and intended to serve a
particular purpose. Etymologically, the insertion of the definitive
article ―the‖ is obviously intended to make the provision applicable
to ―the trade‖ which could, in a manner of speaking, be analogised
to ―the market‖. The use of the definitive article ―the‖ indicates
that the accompanying word ―trade‖ is to be understood, in the
provision, as a noun, and not a verb. As a noun, ―trade‖ has been
defined in several judgements of the Supreme Court. Perhaps the
most comprehensive definition is to be found in Fatechand
Himmatlal v. State of Maharashtra30 , which defines ―trade‖, used
as a noun, as meaning ―lending, movements of goods, transactions
linked with merchandise order, flow of goods, the promotion of
buying and selling advance, borrowings, discounting bills and
mercantile documents, banking and other forms of supply of
funds‖. What, therefore, section 17(2)(b) requires is commonness,
of the asserted mark or part thereof, to ―the trade‖; in other words,
in the trade relating to the goods to which the mark pertains, the
use of part of the mark must be found to be ―common‖. ―The
trade‖ referring to actual flow of goods in the market, it is
necessary for the defendant who invokes Section 17(2)(b) to
establish that, in the market relating to such goods, the use of the
asserted mark, or part thereof, is common.

7.2.12 The word ―common, too, has its own significant

etymological connotation. Commonality cannot be easily
presumed. It has to be established as a statistical reality.
―Common is defined in P. Ramanatha Aiyar‗s authoritative
Advanced Law Lexicon, as ―describing something that happens
very frequently, or that applies equally to a number of people,
without exclusion or differentiation. The Worcester Dictionary,
also quoted in Ramanatha Aiyar, defines ―common, as an
adjective, as meaning ―usual, accustomed, shared among several;
owned by several jointly; belonging to the public; general;
universal; frequent, customary, habitual. Plainly stated, therefore,
for the use of an expression to be regarded as ―common to the
trade‖, the persons who are asserting as to establish, positively, that
the use of the expression in the trade is frequent, customary or
habitual. Registering of a multiplicity of marks containing the

29
Refer Umed v. Raj Singh, (1975) 1 SCC 76 ; Dilbagh Rai Jerry v. UOI, AIR 1974 SC 130
30
AIR 1977 SCC 1825
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expression can go no way, whatsoever, towards that end.

7.2.13 In other words, what Section 17(2)(b) envisages is, firstly,

the existence of a trade in the articles, or class of articles, in respect
of which the asserted mark is used by the plaintiff and, secondly,
frequent, customary or habitual use, in that trade, of the mark, or
part of the mark, asserted by the plaintiff which the defendant
claims to have become ―common to the trade‖. By its very nature,
satisfaction of this test would require appreciation of evidence. It
would require the Court to be satisfied of (i) the existence of a
trade in the article, or class of articles, in respect of which the
plaintiff uses the asserted mark and (ii) common, i.e. frequent,
customary or habitual use, in that way, of the mark or part thereof.
It is only, therefore, where there is sufficiently overwhelming
evidence, of the satisfaction of these two ingredients, placed on
record by the defendant, that the Court may, at a prima facie stage,
justify the invocation of Section 17(2)(b), by holding that the mark
asserted by the plaintiff, or a part thereof, has become ―common
to the trade‖, thereby disentitling the plaintiff from claiming
exclusivity in respect thereof.

7.2.14 Tested on this touchstone, it cannot be said that Mr. Khera

has made out a case for holding the plaintiff disentitled from
claiming exclusivity on the ground that the suffix DEX is common
to the trade. The Court does not have, with it, statistical data
regarding the market presence of other pharmaceutical compounds,
the brand names of which end with DEX. When one excludes,
from the examples cited by Mr. Khera, those products which
contain dexamethasone or dextromethorphan, the remaining
examples cannot, at the prima facie stage, make out a case under
Section 17(2)(b) of the Trade Marks Act. The principle that the
mere failure, on the part of the plaintiff, to sue every infringer,
cannot disentitle it from claiming exclusivity vis-à-vis the infringer
whom it chooses to sue, would also apply in such circumstances.‖

6.4 The aforenoted observations apply mutatis mutandis, to the

facts of the present case. Mere citing of a multitude of marks, which
are available on the register of trade marks and which include, as a
part or as the whole thereof, ―ARMOUR‖, cannot make out a case of
the marks asserted in the present case, or even of part thereof, being
common to the trade.

6.5 Mr. Bansal has pointed out, mark by mark, as to how none of
the marks, on which the defendant relies in its reply to the present
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application, can detract from the plaintiff‘s right to claim exclusivity

in respect of the marks forming subject matter of the suit. None of the
marks, on which the defendant relies can, therefore, discredit the
plaintiffs‘ marks, or indicate that ARMOUR is common to the trade.
This may be explained in the following tabular fashion:

S.No. Mark cited by defendant Observation

1.  Available only in
the United Kingdom

2.  Available only in
the United Kingdom

3.  Scantily available

4.  Available only in
the United Kingdom

5.  Used only in Car

Accessories

6.  Scantily available
 Opposed by the
plaintiff

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 Registered in Class
7. 9 for mobile covers

8.
 No evidence of use
in India
9.
 Not available in
India
10.
 No evidence of use
 Unrelated Goods

11.  Protective gear

 Rectification filed
by plaintiff
12.
 Registered for
laptop bags
13.
 Opposed by
plaintiff

14.
 Available only in
US
 No evidence of use
in India
15.
 Opposed by
plaintiff

16.
 Scantily used

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17.
 Used since
December 2022
 Armour not found
on product

6.6 That apart, even if it were to be assumed, for the sake of

argument, that the ―ARMOUR‖ part of the mark was common to the
trade, the proscription in Section 17(2)(b) would apply only if
exclusivity were being sought to be claimed by plaintiff in respect of
that common part of the mark, i.e. ―ARMOUR‖. Though the plea that
ARMOUR is a dominant part of the plaintiff‘s mark might have been
taken in the plaint, the plaintiff is, quite clearly, asserting its entire
mark ―UNDER ARMOUR‖ and the abbreviated forms thereof ―UA‖
and ―UNDR ARMR‖. This Court has already arrived at the subjective
satisfaction that the defendant‘s marks are deceptively similar to the
said marks. The aspect of whether ―ARMOUR‖, per se, is common to
the trade, therefore, actually recedes into insignificance.

7. Suppression of Fact

7.1 Mr. Lall‘s final contention, on which he placed considerable

emphasis, was that the plaint was liable to be rejected for suppression
and misstatement, as the plaintiff had not approached this Court with
clean hands. His submission was that the plaintiff has deliberately
suppressed the replies filed by it, by way of response to the First
Examination Reports (FERs), raised by the Registry of Trade Marks
when the plaintiff sought to obtain registration of the ―UNDER

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ARMOUR‖ mark. He submits that the various marks which contain

―ARMOUR‖ either by itself or in conjunction with other words
suggests ―TOMMY‖ ―BHH‖ etc. were put up as examples by the
Registry under Section 11(2)(a) of the Trade Marks Act as being
deceptively similar to the mark that the plaintiff sought to register, and
the plaintiff‘s response was that the aspect of deceptive similarity
could not be assessed by merely viewing ―ARMOUR‖ part of the
concerned marks, which had to be seen as a whole. The precise
contention of Mr Lall was, in fact, that

(i) the plaintiff had, in its reply to the FER, taken a specific
stand that the plaintiff‘s marks could not be refused registration
under Section 11(2)(a) on the ground that other marks which
had ARMOUR as a part thereof were already registered, as the
marks had to be seen as a whole,
(ii) as against this, in the present plaint, the plaintiff‘s case is
that ARMOUR is a dominant part of the UNDER ARMOUR
mark, and exclusivity is being sought to be claimed on that
basis,
(iii) the stand adopted before this Court is, therefore, opposed
to the stand taken in the reply to the FERs,
(iv) this could not be allowed, as it would amount to
approbate and reprobate and
(v) in any event, the plaintiff was bound, in such
circumstances, to disclose the replies filed to the FERs with the
present plaint, and non-disclosure disentitled the plaintiff to
injunctive relief.

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7.2 To my mind, the stand that the plaintiff took before the Registry
of Trade marks would actually support the stand that they are taking
before this Court in the present case. There, as also here, the plaintiff
asserts that the entire mark has to be seen as a whole. This Court has
also assessed the aspect of infringement and deceptive similarity by
comparing the marks of the plaintiff and defendant as a whole. As
such, it cannot be said that the stand taken by the plaintiff in their
responses to FER is at all inimical to the case that seek to set up in the
present plaint.

7.3 Relevance of FER and reply thereto in infringement/passing off

proceedings:

7.3.1 Even otherwise, there is a fundamental error in the submission

of Mr. Lall. In Teleecare Network19, this Court, speaking through
Manmohan, J., held that, post grant of registration of the plaintiff‘s
mark, neither the FER, nor the reply thereto, were relevant documents.
Following the judgment of a Division Bench of this Court in Raman
Kwatra v. KEI Industries Ltd31, a notion has emerged that this legal
position is no longer good law. That, however, does not, in my view,
appear to be the position.

7.3.2 Adverting to Teleecare Network19 on this issue, the Division

Bench, in Raman Kawatra31, held as under:
―43. We also find merit in the appellant's contention that a party,
that has obtained the registration of a trademark on the basis of
certain representation and assertions made before the Trade Marks
Registry, would be disentitled for any equitable relief by pleading
to the contrary. The learned Single Judge had referred to the
decision in the case of Teleecare Networks19 (supra) holding that
after grant of registration neither the Examination Report nor the

31
(2023) 296 DLT 529
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plaintiff's reply would be relevant. We are unable to agree with the

said view. In that case, the Court had also reasoned that that there
is no estoppel against statute. Clearly, there is no cavil with the
said proposition; however, the said principle has no application in
the facts of the present case. A party that has made an assertion
that its mark is dissimilar to a cited mark and obtains a
registration on the basis of that assertion, is not to be entitled to
obtain an interim injunction against the proprietor of the cited
mark, on the ground that the mark is deceptively similar. It is
settled law that a person is not permitted to approbate and
reprobate. A party making contrary assertions is not entitled to any
equitable relief.‖
(Emphasis supplied)

7.3.3 Clearly, the reply to the FER, even as per the decision in
Raman Kwatra31, would be a relevant document only where the FER
set up the defendant‘s mark as one of the cited marks against the mark
asserted by the plaintiff. It is only in that circumstance that the
plaintiff‘s response, to the defendant‘s mark having been set up
against it, would be a circumstance which the Court would take into
consideration as relevant while assessing the plaintiff‘s right to assert
its mark. If the defendant‘s mark is cited against the proposed mark of
the plaintiff in the FER as a similar mark under Section 11(1)(b), then,
unquestionably, the stand adopted by the plaintiff while responding to
the FER would be relevant, as it could not adopt a contrary stand,
opposing the very same mark of the defendant, in the infringement
suit. Any such contrary stand would amount to approbate and
reprobate. The principle has no application where the defendant‘s
mark, as in the present case, was never put up as a similar mark in the
FER, while objecting to the application of the plaintiff for registration
of the UNDER ARMOUR mark.

7.3.4 It cannot be said that, even if the plaintiff did not refer to the
replies to the FERs raised by way of objection to the plaintiff‘s
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application seeking registration, the plaintiff was guilty of

suppression.

7.4 In this context, I may also refer to two decisions of the Supreme
Court, which deal with the aspect of when suppression can be a
ground to non-suit a petitioner or a plaintiff. In S.J.S. Business
Enterprises (P) Ltd. v. State of Bihar32 and Supreme Court, in para 13
and 14 of the report, held thus:
―13. As a general rule, suppression of a material fact by a
litigant disqualifies such litigant from obtaining any relief. This
rule has been evolved out of the need of the courts to deter a
litigant from abusing the process of court by deceiving it. But the
suppressed fact must be a material one in the sense that had it not
been suppressed it would have had an effect on the merits of the
case. It must be a matter which was material for the consideration
of the court, whatever view the court may have taken
[R. v. General Commrs. for the purposes of the Income Tax Act
for the District of Kensington33]. Thus when the liability to
income tax was questioned by an applicant on the ground of her
non-residence, the fact that she had purchased and was maintaining
a house in the country was held to be a material fact, the
suppression of which disentitled her to the relief claimed [Ibid.] .
Again when in earlier proceedings before this Court, the appellant
had undertaken that it would not carry on the manufacture of liquor
at its distillery and the proceedings before this Court were
concluded on that basis, a subsequent writ petition for renewal of
the licence to manufacture liquor at the same distillery before the
High Court was held to have been initiated for oblique and ulterior
purposes and the interim order passed by the High Court in such
subsequent application was set aside by this Court [State of
Haryana v. Karnal Distillery Co. Ltd.34]. Similarly, a challenge to
an order fixing the price was rejected because the petitioners had
suppressed the fact that an agreement had been entered into
between the petitioners and the Government relating to the fixation
of price and that the impugned order had been replaced by another
order [Welcom Hotel v. State of A.P.35] .

14. Assuming that the explanation given by the appellant that

the suit had been filed by one of the Directors of the Company
without the knowledge of the Director who almost simultaneously

32
(2004) SCC OnLine SC 341
33
(1917) 1 KB 486 : 86 LJKB 257 : 116 LT 136 (CA)
34
(1977) 2 SCC 431 : AIR 1977 SC 781
35
(1983) 4 SCC 575 : 1983 SCC (Cri) 872 : AIR 1983 SC 1015
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approached the High Court under Article 226 is unbelievable (sic),

the question still remains whether the filing of the suit can be said
to be a fact material to the disposal of the writ petition on merits.
We think not. The existence of an adequate or suitable alternative
remedy available to a litigant is merely a factor which a court
entertaining an application under Article 226 will consider for
exercising the discretion to issue a writ under Article 226 [A.N.
Venkateswaran v. Ramchand Sobhraj Wadhwani36]. But the
existence of such remedy does not impinge upon the jurisdiction of
the High Court to deal with the matter itself if it is in a position to
do so on the basis of the affidavits filed. If, however, a party has
already availed of the alternative remedy while invoking the
jurisdiction under Article 226, it would not be appropriate for the
court to entertain the writ petition. The rule is based on public
policy but the motivating factor is the existence of a parallel
jurisdiction in another court. But this Court has also held
in Chandra Bhan Gosain v. State of Orissa37 that even when an
alternative remedy has been availed of by a party but not pursued
that the party could prosecute proceedings under Article 226 for
the same relief. This Court has also held that when a party has
already moved the High Court under Article 226 and failed to
obtain relief and then moved an application under Article 32 before
this Court for the same relief, normally the Court will not entertain
the application under Article 32. But where in the parallel
jurisdiction, the order is not a speaking one or the matter has been
disposed of on some other ground, this Court has, in a suitable
case, entertained the application under Article 32 [Tilokchand
Motichand v. H.B. Munshi38] . Instead of dismissing the writ
petition on the ground that the alternative remedy had been availed
of, the Court may call upon the party to elect whether it will
proceed with the alternative remedy or with the application under
Article 226 [K.S. Rashid and Son v. Income Tax Investigation
Commission39] . Therefore, the fact that a suit had already been
filed by the appellant was not such a fact the suppression of which
could have affected the final disposal of the writ petition on
merits.‖

7.5 Following S.J.S. Business Enterprises32, another Bench of two

Hon‘ble Judges of the Supreme Court, in Arunima Baruah v. Union
of India 40 held as under, in paras 12 and 15:
―12. It is trite law that so as to enable the court to refuse to
exercise its discretionary jurisdiction suppression must be of

36
AIR 1961 SC 1506
37
(1963) 14 STC 766, 918 : (1964) 2 SCR 879
38
(1969) 1 SCC 110 : AIR 1970 SC 898
39
AIR 1954 SC 207
40
(2007) SCC OnLine SC 586
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material fact. What would be a material fact, suppression whereof

would disentitle the appellant to obtain a discretionary relief,
would depend upon the facts and circumstances of each case.
Material fact would mean material for the purpose of determination
of the lis, the logical corollary whereof would be that whether the
same was material for grant or denial of the relief. If the fact
suppressed is not material for determination of the lis between the
parties, the court may not refuse to exercise its discretionary
jurisdiction. It is also trite that a person invoking the discretionary
jurisdiction of the court cannot be allowed to approach it with a
pair of dirty hands. But even if the said dirt is removed and the
hands become clean, whether the relief would still be denied is the
question.

*****
15. In Spry on Equitable Remedies, 4th Edn., p. 5, referring
to Moody v. Cox41 and Meyers v. Casey42 it is stated:

―… that the absence of clean hands is of no account ‗unless the

depravity, the dirt in question on the hand, has an immediate
and necessary relation to the equity sued for‘. When such
exceptions or qualifications are examined it becomes clear that
the maxim that predicates a requirement of clean hands cannot
properly be regarded as setting out a rule that is either precise
or capable of satisfactory operation.‖

Although the aforementioned statement of law was made in

connection with a suit for specific performance of contract, the
same may have a bearing in determining a case of this nature
also.‖

7.6 It is only, therefore, where material facts, which would have an

impact on the ultimate outcome of the proceeding, are suppressed, that
suppression of fact could disentitle the party suppressing the fact to
relief.

7.7 Holistically seen, it cannot be said that the plaintiff is guilty of

any such material suppression of fact as would disentitle it to release
in the present case.

41
(1917) 2 Ch 71
42
(1913) 17 CLR 90
Signature Not Verified
CS(COMM) 41/2023 Page 43 of 45
Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:23.04.2023
11:38:29
 Neutral Citation Number : 2023:DHC:2711

Conclusion

8. As this Court has already held, on the aspect of infringement

and passing off, in favour of the plaintiff on merits, an injunction must
follow.

9. Pending disposal of the suit, therefore, the defendant shall stand

restrained from dealing in or using the impugned marks and logos

―STREET ARMOR/ ‖, STRT ARMR, ARMR, ARMOR, SA,

ARMR DEPT, SA DEPT, STREET ARMOR CO, STRT ARMR
LAB or any other trademarks/labels which are identical with and/or
deceptively similar to plaintiff‘s registered UNDER ARMOUR,
UNDR ARMR or UA word marks or device marks, or any other mark
which is confusingly or deceptively similar to the said marks of the
plaintiff, in respect of apparel or any other goods or services which
may be regarded as similar or allied to the goods in respect of which
the plaintiff uses its marks.

10. The application stands allowed accordingly.

11. Mr Lall prayed that the Court may direct that the present order
be brought into effect only after a period of about two weeks so that
the defendant could avail appellate remedies. On first principles, I am
of the view that granting such a request would amount to this Court
staying the operation of its own judgment, which it has no power to
do. Short of Order XLI Rule 5(2), the CPC does not empower a Court
to stay its own judgment or decree.

Signature Not Verified

CS(COMM) 41/2023 Page 44 of 45
Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:23.04.2023
11:38:29
 Neutral Citation Number : 2023:DHC:2711

12. Nonetheless, as this judgment was dictated in Court and has to

be finalized, corrected, and proof read, it is directed that it would take
effect only on its being uploaded on the website of this Court.

C.HARI SHANKAR, J
APRIL 20, 2023
ar

Signature Not Verified

CS(COMM) 41/2023 Page 45 of 45
Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:23.04.2023
11:38:29