Under Armour decision on FERs

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.

[Image Sources : Shutterstock]

FER

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/

Leave a Reply

Categories

Archives

  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010