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I.A. 23362/2023 (Application under Order XXXIX Rules 1 & 2, CPC)

1. This application has been filed by the plaintiff under Order 39 Rule 1&2 Code of Civil Procedure, 1908 (hereinafter referred to as “CPC”) as part of the suit filed inter alia under Sections 134 and 135 of the Trade Marks Act 1999 (hereinafter referred to as “the Act”) seeking an injunction restraining the defendants and all those acting for, or on their behalf, from selling, manufacturing, marketing and dealing in any manner with the wordmark “AERO ARMOUR” and / or “AERO ARMR” and logos or any other trademarks/ labels/ tradename/ domain name which may be identical with and/ or deceptively similar to trademarks of the plaintiff, and other attendant relief.

2. While summons were issued in the suit on 23rd November 2023, when notice of this application was also issued, ex parte ad interim injunction was not granted at that stage. Subsequently, pleadings were completed in the application and counsels for the parties placed their respective submissions.

Factual Background

3. The case of the plaintiff essentially arises from their proprietorship in the registered trademark “UNDER ARMOUR” and the device mark both registered inter alia under class 25. Plaintiff claims to have been founded in the year 1996, by a young 23-year-old football player Mr. Kevin Plank, and is primarily engaged in the business of manufacture, distribution and sale of variety of goods including casual apparel, sports apparel and other related products. The brand ‘UNDER ARMOUR’ was founded by Mr. Plank, who decided to commence business from Washington D.C. The unique selling proposition (hereinafter referred to as “USP”) of Mr. Plank was to make a T-shirt using moisture - wicking synthetic fabric to keep athletes cool, dry, and light. Subsequently over the years, UNDER ARMOUR started gaining reputation in America and later worldwide. In 2004, plaintiff filed its first trademark application in India for the mark under class 25. In 2017, UNDER ARMOUR officially entered Indian market through Amazon Fashion, and in 2019 launched its first retail store at DLF Promenade Mall in Vasant Kunj, Delhi. As of 2021, plaintiff claims to have more than 23 stores of UNDER ARMOUR in 16 cities, with plans to expand further, along with a strong online presence. The tabulation of registrations in UNDER ARMOUR family of marks has been provided by plaintiff as under:

4. It is an admitted position that plaintiff never applied for registration of just the word “ARMOUR” in India, however, plaintiff has registrations in trademark / labels inter alia “ARMOUR” in other jurisdictions in the world which have been tabulated by the plaintiff as under:

5. It is claimed that ARMOUR is an essential, dominant and distinguishing feature of plaintiff’s trademarks / labels and has been granted registration outside India, in isolation and separate from registrations of “UNDER ARMOUR”. Plaintiff also claims registrations in various “ARMOUR” formative marks such as “ARMOURBLOCK”, “ARMOURVENT”, “ARMOURBITE”, “ARMOURFLEECE”, etc.

6. Plaintiff’s grievance is against defendant no.1 who is engaged in business of manufacture and sale of identical goods i.e. clothing and footwear using the marks (hereinafter referred to as “impugned marks”). Defendant no. 2 is the company where defendant no.1 is the Director, and has adopted the mark “AERO ARMOUR” as part of their trade name. Submissions on behalf of the plaintiff

7. Counsel for the plaintiff therefore contends that not only the impugned marks are an exact replica of plaintiff’s marks and similar in terms of overall get-up, structure and representation, but also defendants’ marks are written in same manner, in same font, as further depicted under:

8. Plaintiff came to know about defendant no.1 in the month of October, 2022, when defendants’ applied for registration of the mark “AERO ARMOUR” under class 25, under application n