Under Armour decision on FERs

15th May, 2023 - 12:55 pm Categories: FERs 0 Comments

Introduction

During the discussion of the key concepts, the defendant raised an argument that the plaintiff had suppressed material facts. According to the defendant, since the plaintiff had not disclosed its reply to the FER when seeking registration, it should not be allowed to take a contrary position in the current trademark infringement litigation. The defendant claimed that the plaintiff’s response to the FER stated that its “Under Armour” mark should be considered as a whole and not similar to the cited mark that contains the common word “Armour.” However, the defendant argued that the plaintiff is now seeking exclusivity on “Armour” as the dominant part of its mark. The Delhi High Court considered this argument in addition to discussing the anti-dissection rule, dominant part of the mark, likelihood of confusion and deception, descriptiveness, and common to the trade defense and ultimately restrained the defendant from using the impugned mark.

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The Court disagreed with the defendant’s argument that the plaintiff had taken a different stance before both the authorities. Interestingly, the Court observed that the relevance of the reply to the FER in litigation between the parties would arise only if the FER cites the defendant’s mark as a similar mark. Therefore, it seems that the Court’s reasoning is that if the defendant’s mark is cited in the FER and the plaintiff makes an assertion in the reply to the FER to defend its mark, then the plaintiff will be bound by that assertion only in the litigation between the cited defendant and the plaintiff.

The Delhi High Court has frequently emphasized the significance of a plaintiff’s position before the registry in trademark infringement disputes. In the SK Sachdeva and Anr. case (2016), for instance, a Division Bench, coincidentally headed by Justice Sachdeva, restrained the respondent (previously plaintiff) from asserting ownership of the “Shri Ram” mark based on its statement before the registry that no one could claim exclusive rights to the words “Shri Ram” and that numerous “Shri Ram” marks coexist peacefully on the register.

Later, in H&M Hennes & Mauritz AB & Anr. v. HM Megabrands Pvt. Ltd. & Ors, (2018), a single judge observed that a plaintiff could not be prevented from exercising its statutory and natural rights to sue for infringement simply because it had taken a specific stance during the registration process. The judge noted that there is no estoppel against statute. Similarly, in Teleecare Network India Pvt. Ltd. v. M/S Asus Technology Pvt. Ltd., another single judge stated that the examination report and the plaintiff’s response were irrelevant documents after the grant of registration of the mark ZEN. The judge emphasized that there is no estoppel against statute and that the SK Sachdeva decision did not apply as there was no deliberate concealment of material facts in that case.

However, in Raman Kwatra v. KEI Industries, the Delhi High Court Division Bench agreed with the appellant that a party cannot claim equitable remedy by taking a contrary stance to its previous ones made before the registry. The court disagreed with the proposition expressed in Teleecare and held that a party that asserts its mark is dissimilar to a cited mark and obtains registration on that basis is not entitled to obtain an interim injunction against the proprietor of the cited mark on the ground that the mark is deceptively similar.

The court in the Under Armour case relied on the Raman Kwatra case to establish that the reply to the FER is relevant only if the FER cites the defendant’s mark as a similar mark. However, it seems that the court may have overlooked the fact that the observation in Raman Kwatra was made in the context of the specific facts of that case, and may not apply as a general rule (Para 43 and 44). Instead, the key takeaway from Raman Kwatra should be the reaffirmation of the principle that a party cannot take a contrary stance to the representations and assertions made before the Trade Marks Registry to obtain registration and still seek equitable relief. The court in Under Armour should have considered this principle.

The principle underlying the findings in both Raman Kwatra and SK Sachdeva cases is that of approbation and reprobation. As per the Supreme Court’s ruling in Karam Kapahi & Ors v. M/s Lal Chand Public Charitable Trust and Anr and Nagubai Ammal and Ors. Vs. B. Shama Rao and Ors, this principle prevents a person from taking a stance to claim an advantage and then taking an opposing position to claim another benefit. Therefore, the determination of what the plaintiff is approbating and reprobating is a specific matter of fact and should be evaluated on a case-by-case basis. For instance, in the SK Sachdeva case, the plaintiff was found liable for its submission on the mark’s registrability, while in Raman Kwatra, the plaintiff was held accountable for its stance taken to distinguish its mark from one of the cited marks. Similarly, in Eduspark International Private Ltd. vs Laxmi Publications Private Ltd. and in Ampm Fashions Private Limited vs Mr. Akash Anil Mehta, parties were found liable for the positions taken by them in their respective notice(s) of opposition, and not for their responses to FERs.

Conclusion

The court in the current case has limited the scope of the principle by holding that a plaintiff is only responsible for their responses to the FER when they are involved in a legal dispute with the owner of one of the previously cited marks in the FER. This reading appears to undermine a critical aspect of the trademark prosecution process. According to Section 18(4) and Rule 33(2), the reply to the FER and the examiner’s subsequent approval initiate the trademark prosecution process, which may eventually result in the granting of the trademark. As a result, the reply to the FER complements the trademark application and establishes the foundation upon which an applicant seeks to claim ownership of their mark.

Furthermore, these responses play a crucial role in cases where the mark’s invalidity is cited as a defense in an infringement proceeding. While registered marks are generally considered prima facie valid, this is merely a presumption, as noted by the court in the Footlocker v. Geeta Kewalani Single Judge Bench order. As a result, the plaintiff’s previous submissions can provide substantial insight when arguing the invalidity of the plaintiff’s mark.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

• https://spicyip.com/2023/04/done-so-dusted-discussing-the-relevance-of-the-responses-filed-against-fers-issued-by-trademark-registry.html
• https://indiankanoon.org/doc/168105264/