It has recently been reported that U.S. based Retail Royalty Company had filed a suit for trademark infringement by popular Indian retail clothing brand Pantaloons. Pantaloons is owned by the Aditya Birla Group which in itself goes on to show its powerful reputation in the Indian market and among the consumers. It had been alleged that the Indian company had adopted a logo deceptively similar for the same line of business as its American counterpart.
Facts
The defendants were using the name ‘URBAN EAGLE AUTHENTIC OUTFITTERS’ with the logo of an URBAN EAGLE whereas, the plaintiff was selling its clothing line under the brand ‘AMERICAN EAGLE OUTFITTERS/AMERICAN EAGLE’ with the logo of AMERICAN EAGLE. The defendants intended to settle the matter as soon as possible and proposed that they would remove the phrase ‘AUTHENTIC OUTFITTERS’ and retain ‘URBAN EAGLE’ word mark along with a new Eagle device as logo. The Defendants further proposed that for the goods already available in the retail stores the labels would be removed and only the term URBAN EAGLE would be used. The Plaintiffs contented that the defendants should be prevented from even making use of the mark URBAN EAGLE since it was deceptively similar to the plaintiff’s AMERICAN EAGLE.
Decision
The court disagreed on the aspect of the plaintiff stating that there was deceptive similarity between the two marks owing to the use of the word EAGLE, it was observed that the plaintiff could not claim monopoly over the word ‘EAGLE’ since it was a word used in common parlance, it would be a different case if monopoly was claimed on AMERICAN EAGLE since this was the trademark registered by the plaintiffs in the trademark register. A comparison of the two logos showed that the plaintiff’s depicted an Eagle on the verge of landing/descending whereas that of the defendant’s showed an eagle taking a flight/ascending hence, there was a distinction between the two marks. The court stated that since the decision was almost at an exparte stage, and the defendant had not been given an opportunity to file return statements and replies because they had only been granted two days time for the same hence, the views of the court were only prima-facie. The plaintiff had alleged that there had been a case of trademark infringement under Section 29(1) by the defendant; also, there was a case of deceptive similarity. The court was of the view that with the removal of ‘AUTHENTIC OUTFITTERS’ by the defendant there existed only URBAN EAGLE and it was not similar to AMERICAN EAGLE, the two were sufficiently distinct in nature. The court reiterated that the plaintiff had a trademark claim for the use of the word AMERICAN EAGLE, it could not restrain others from using ‘EAGLE’ as a part of their mark. The court failed to find any public interest in the present litigation since the goods in question were clothing not pharmaceuticals which demanded extra caution to prevent deceptive goods from flooding the market. Also, the court was convinced that if the defendant would only use URBAN EAGLE there would be no confusion whatsoever among the consumers. The court rejected the plaintiff’s copyright claim over ‘swooping eagle’ mark and stated that copyright protection under Section 13 was granted only to original artistic works and the same would not qualify within that criteria. Finally, the court stated that the plaintiff could be given monetary compensation if it is shown that there is a balance of convenience in its favor however, no interim injunction order was granted by the court citing the same as prima-facie observation of the court.
Conclusion
This is an ongoing litigation so the verdict is not final for either of the parties but Pantaloons can take a breather for now. While the observations with regard to logo of the two brands might be acceptable, considering that the two depict an Eagle in a different positions (ascending/descending), but the fact that URBAN EAGLE and AMERICAN EAGLE don’t sound confusingly similar can be disputed -considering that while purchasing clothes not everyone has a discerning eye, people can mistake between the two products as well as the logo. The sophistication of the consumer is often an important test resorted to when deciding cases of trademark infringement and in the present case it can be stated that literate, semi-literate, and illiterate people all purchase these goods and the probability of confusion can be reasonably high. Also, the two operate in the same market of goods as well the price of the goods are quite close (based on the information available online) which further increases the possibility of confusion. The defendants did not give any argument to explain their adoption of the phrase ‘AUTHENTIC OUTFITTERS‘ , it is understandable that ‘outfitters’ is a descriptive term but when used with the EAGLE logo and name it can be a cause for confusion among the purchasers regarding the origin of the goods (it can be assumed that there has been a licensing agreement between the two companies hence, similarity of name.) Another issue on which I do not agree with the Hon’ble Delhi High Court is regarding the copyright claim under Section 13, an important condition for copyright claim is that the work must be original but it does not set a very high bar for creativity the work of the plaintiff might not be new and reinforcing the known image of the American Eagle but it has been adopted in a unique fashion such that it invokes the identity of the plaintiff’s brand itself. An Artistic work under the Indian Copyright Act doesn’t have to qualify as a very high quality of work, it can be random scribbling but still be protectable under copyright. It is important to note that the defendant has agreed to make certain amends which a great move to settle the issue soon but regarding the previous conduct, questions can be raised (unless there is a settlement.)
Of course, the above decision is not a final verdict and is merely a prima-facie observation it can be subject to change in the upcoming proceedings after the defendant files a written response to the plaintiff’s allegations. Do you agree with these observations or hold another view for this case? decide for yourself you can access the judgment here.
Image From: https://en.wikipedia.org/wiki/American_Eagle_Outfitters
POP!Corn Law -India 