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Case Analysis: American Eagle Vs. Urban Eagle


Authored by - Ruma Minj

Keywords - Trademarks, Copyrights, Inter alia, Infringement, Deceptively Simple Marks.


Name of the Case: Retail Royalty Company v. Pantaloons Fashion & Retail Limited & Ors. (CS(OS) 2872/2015).

Plaintiff: Retail Royalty Company

Defendants: Pantaloons Fashion & Retail Limited & Ors.

Bench: Hon’ble Justice Valmiki J. Mehta

Court: In the High Court of Delhi at New Delhi

Abstract


In this instant matter, the plaintiff had filed the suit, inter-alia, for infringement of trademarks and copyright. This article shall be discussing the case of Retail Royalty Company v Pantaloons Fashion & Retail Limited in a more comprehensive manner.


Introduction


The appellant submitted that the marks and devices adopted by the defendant amounted to clear infringement of the rights under the Trademarks Act and the marks and devices were deceptively similar. The appeal has been filed because the learned Single Judge had not granted an injunction, in favor of the appellant.


Background of the Case


The plaintiff had filed the suit, inter-alia, for infringement of trademarks and copyright. The marks of the plaintiff have registered with the Trademarks Registry are:

(i) American Eagle

(ii) American Eagle Outfitters

(iii) Eagle Device

and the complaint was regarding the marks which were being used by the defendant are:

(i) Urban Eagle Authentic Outfitters

(ii) Eagle Devices

Facts of the Case


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


2. The plaintiff is stated to be the owner of the trademarks American Eagle Outfitters and American Eagle. On the other hand, defendants are stated to be using the trademarks Urban Eagle Authentic Outfitters.


3. The High Court of Delhi, vide its order dated September 21, 2015, granted ex parte interim injunction against the defendants stating that it appears prima facie and the defendants are trying to ride on the goodwill of the plaintiff and its trademark American Eagle Outfitters and American Eagle.


4. Court’s Order dated September 23, 2015, which is pursuant to the aforesaid Order dated September 21, 2015, when the defendants appeared before the Court and agreed to give up the words “Authentic Outfitters” and thereby to only retain the mark “Urban Eagle”. The learned Single Judge had agreed with this proposal of the defendant.


5. The defendants also agreed to replace their existing device of Eagle with a new Eagle device, even though the existing device of Eagle used by the defendants is stated to be not deceptively similar or identical to the Plaintiff’s device.


6. The offer of the defendants is not accepted by the plaintiff and therefore, they prayed that the defendants must not use the eagle Device at all and must also not use the trademark “UrbanEagle”.


Issues


1. The marks and devices adopted by the defendant amounted to clear infringement of the rights under the Trademarks Act.

2. The marks and devices were deceptively similar.

3. The issue regarding public interest.


Judgment


1. Relying on Marico Limited v. Agro Tech Foods Limited[i], the Court refused to allow exclusive appropriation of the word “Eagle” to the plaintiff.


· The court highlighted the point that when the plaintiff sought registration of its marks ‘American Eagle’ a point had been raised that there existed several entities that had registered trademarks bearing the word ‘Eagle’. At that point in time, the plaintiff submitted before the Trademarks Registry that it is not the word ‘Eagle’ which is to be seen but composite marks ‘American Eagle’ and ‘American Eagle Outfitters’ which had to be seen and which are distinctive marks. Therefore, on this basis, the trademarks were registered in favor of the plaintiff.


· Plaintiff itself in its reply to the Examination Report issued by the Registrar of Trade Marks while deciding the question of similarity between two marks said that the marks must have to be considered as the whole and meticulous or fragmentary comparison is not the correct way.


· The Plaintiff had further argued that upon such consideration that the cited marks when compared with the subject mark, are phonetically, visually, structurally, and conceptually dissimilar and distinguishable from the subject mark. Therefore, although all the cited marks and the subject mark share the common component “Eagle”, it is the combining element “American” in the subject mark that helps the subject mark create a different and distinct overall impression from all the other marks.


· As a concluding argument, the Plaintiff had submitted that if so many marks comprising the element “Eagle” can co-exist peacefully on the Register of Trade Marks, then there is absolutely no reason why the subject mark should not be allowed to proceed to registration.

In view of the above-mentioned submissions, the Court noted that the Plaintiff claims exclusivity to its trademark by the use of the expression “American” along with “Eagle” and not “Eagle” in itself. Therefore, there cannot be identity or deceptive similarity between the mark of “American Eagle” and “Urban Eagle”, even though the goods of both parties are the same.


Therefore, the plaintiff cannot appropriate the word ‘Eagle’ although it is the proprietor of the mark ‘American Eagle’ and the mark ‘American Eagle Outfitters’ and an injunction cannot be granted, prima facie, because the marks ‘Urban Eagle’ and ‘American Eagle' are not deceptively similar marks.


2. The Court also compared the two devices of‘Eagle' as being used by the plaintiff and defendants. It observed that the plaintiff’s device is a swooping eagle showing an eagle going towards earth whereas the defendant’s device is of an eagle that is taking off. There needs to be some sort of similarity between two devices that uses an eagle but it cannot be said that the device of the swooping eagle is identical or deceptively similar to an eagle that is taking off. Hence, the argument of the plaintiff that it has a copyright in their device of swooping eagle and the defendants cannot use its device of the eagle is misconceived. Moreover, Section 13 of the Copyright Act, 1957 states that copyright is only with respect to original artwork and a swooping eagle device cannot by any stretch of imagination be said to be an original artistic work to be a subject matter of copyright as claimed by the Plaintiff

3. During arguments, the Plaintiff also raised an issue of public interest, however, the Court rejected this argument stating that “Urban Eagle” is sufficiently distinguishable from “American Eagle”. Also, an issue of public interest will not be raised in the present case as the goods are only clothing.


Concept Highlighted


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


In case when a part of the trademark is misused and then also the proprietor has the right to take action against the infringer. Section 15 of the Trade Mark Act, 1999 covers the registration of parts of trademarks, where the trademark consists of more than one feature, and for claiming the exclusive right of all such features separately, one has to seek registration for each such part as a separate trademark which shall be examined independently to determine whether it can be registered or not.


Section 17 of the Trademarks Act states the effect of registration of parts of a mark and states the general proposition that registration confers on the proprietor the exclusive right to use the whole trademark. Hence, in case the proprietor wants statutory protection for the exclusive use of any part of the trademark, then he has to apply to register that part as a separate trademark. Moreover, any part of the trademark containing a matter which is common to the trade or is of non-distinctive character will not be permitted for registration. But if the applicant is able to adduce evidence of acquired distinctiveness for such part then in such circumstance, he may rightly claim the exclusive right for that part of the trademark, even if it has not been separately registered. This view has also been taken by the Supreme Court of India in the Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.[ii]case it was held that the proprietor cannot restrain others from either using any part or word independently or in combination with other words. However, if the proprietor acquires any right by long use of those parts of words in relation to his trade, he may claim exclusive right over the same and prevent exploitation of his mark.


[i]Marico Limited v. Agro Tech Foods Limited, 2010 (174) DLT 279. [ii]Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. AIR 1955 SC 558.

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