Done, so Dusted? Discussing the Relevance of the Responses Filed Against FERs Issued by Trademark Registry

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Riddle me this, what is something that, despite cited similar marks, helps you get a trademark right; But is not relevant later unless the cited mark puts up a fight? Well, according to the Delhi High Court’s judgement in Under Armour INC v. Aditya Birla Fashion & Retail Ltd., it’s the reply to the first examination report (FER) filed by the Plaintiff.

Let’s back up a little. The dispute in the present case was around the adoption of the marks “Street Armor” “Strt Armor” and “SA” by the defendant (Aditya Birla Fashion) which were alleged to be similar to the plaintiff’s (Under Armour Inc) registered “Under Armour” “Undr Armr” and “UA” marks. The Delhi High Court after an elaborate discussion on the ’anti-dissection rule’, ‘dominant part of the mark’, ‘likelihood of confusion and deception’, ‘descriptiveness’ and ‘common to the trade’ defence, restrained the defendants from using the impugned mark. However, the present post is about another observation by the court on the relevance of the FER and its reply during a litigation involving the applicant and the impact that it may have on the trademark regime.

Court’s Findings on Suppression of Material Facts and Relevance of the FER/ its Reply

In the midst of the discussion on these key concepts, the defendant raised a plea arguing that the plaintiff suppressed material facts. They argued that since the plaintiff has suppressed its reply to the FER, while seeking a registration, it should not be allowed to take an opposite stance in the trademark infringement litigation now. Looking at the plaintiff’s response to the FER, the defendant argued that the plaintiff has said its “Under Armour” mark needs to be seen as a whole and thus, is not similar to the cited mark that has the common word “Armour.” As opposed to this, the defendant further argued, the plaintiff is seeking exclusivity on “Armour” as the dominant part of its mark. (The FER and Plaintiff’s response to it can be accessed here and here.)

Disagreeing with the defendant’s arguments that the plaintiff took a different stance before both the authorities, the Court interestingly observed that the reply to the FER would be a relevant document in litigation between the parties only where the FER cites the defendant’s mark as a similar mark. Thus, the court’s logic here seems to be that if the defendant’s mark is cited by the FER and if to defend its mark the plaintiffs makes an assertion in the reply to the FER, then the plaintiff will be bound by its assertion only in the litigation between that cited defendant and the plaintiff.

The Trail of Convoluted Interpretations

Time and again, the importance of the stance taken by a plaintiff before the registry has popped up before the Delhi High Court in trademark infringement matters. To name a few,  a Division Bench in SK Sachdeva and Anr. case (2016) (coincidently penned by J. Sachdeva) had restrained the respondent (originally plaintiff) from claiming proprietorship over the mark “Shri Ram” on the basis of its assertion before the registry that no exclusive right on the words “Shri Ram” could have been claimed by anyone and that there are several “Shri Ram” formative marks that peacefully co-exist on the register. (H/t to a reader, who’d prefer to be anonymous, for pointing me toward this order.)

 Later a single judge in H&M Hennes & Mauritz AB & Anr. v. HM Megabrands Pvt. Ltd. & Ors, (2018) observed that merely because the plaintiff took a specific stance that the subject mark must be considered in entirety, at the stage of seeking registration, it cannot be stopped from exercising its statutory and natural rights of suing for infringement and that there is no estoppel against statute. Following this understanding, the single judge in Teleecare Network India Pvt. Ltd. v. M/S Asus Technology Pvt. Ltd. observed that “Post grant of registration of the mark ZEN, neither the Examination Report dated … nor the plaintiff’s reply are relevant documents…. In any event, as there is no estoppel against statute, the stand taken by plaintiff in reply to the examination report is not relevant.” Here the court expressly noted that the decision of SK Sachdeva will not apply as that pertained to the willful and deliberate concealment of material facts, which was absent in the present case.

Then came the Delhi High Court Division Bench order in Raman Kwatra v. KEI Industries where the court agreed with the appellant, that a party cannot be allowed to claim equitable remedy by taking a contrary stance to the previous ones made before the Registry. The court further disagreed with the application of the above proposition expressed in Teleecare and held that “A party that has made an assertion that its mark is dissimilar to a cited mark and obtains a registration on the basis of that assertion, is not to be entitled to obtain an interim injunction against the proprietor of the cited mark, on the ground that the mark is deceptively similar.” (See here for a different aspect of this order by Lokesh.)

Interpreting the last bit of the Raman Kwatra case as a rule of thumb, the court in Under Armour held that the reply to the FER will be a relevant document in a trademark infringement litigation when the FER cites the defendant’s mark as one of the similar marks. However, what the court has missed out here is that the above observation in Raman Kwatra was made in the context of the facts of that case and perhaps not as a general observation (Para 43 and 44). Instead, the opening lines of para 43 of the Raman Kwatra case, wherein the court states that it finds merit in the contention that “a party, that has obtained the registration of a trademark on the basis of certain representation and assertions made before the Trade Marks Registry, would be disentitled for any equitable relief by pleading to the contrary…” and thereby reaffirming the principle that a party cannot approbate and reprobate, should be the takeaway from that case.

Implication of the Order

The underlying principle in the Raman Kwatra case and SK Sachdeva case for their findings is that a party cannot approbate and reprobate. As explained by the Supreme Court in Karam Kapahi & Ors v. M/s Lal Chand  Public Charitable Trust and Anr and the age old Nagubai Ammal and Ors. Vs. B. Shama Rao and Ors, the principle restrains a person from making one submission to claim an advantage and then making an opposing submission to claim another benefit. (This principle has also been discussed by Gopika here.) Therefore, the assessment of what the plaintiff is approbating and reprobating is a peculiar matter of fact and should be seen on a case-to-case basis. For instance, in the SK Sachdeva case, the plaintiff was held accountable for its submission on the capability of the mark to be registered, while in Raman Kwatra, the plaintiff was held accountable for its stance taken to differentiate its mark against one of the cited marks. Similarly, looking past the responses to FERs in Eduspark International Private Ltd. vs Laxmi Publications Private Ltd. and in Ampm Fashions Private Limited vs Mr. Akash Anil Mehta, parties were made accountable for the stances taken by them in their respective notice(s) of opposition.

However, the court in the present case has narrowed the application of this principle by holding that the plaintiff is accountable for its submissions in reply to the FER only when it is involved in litigation against the proprietor of one of the previously cited marks in the FER. The reading thus, essentially undermines a key aspect of the trademark prosecution process. Reading Section 18 (4) with Rule 33(2), one can see that the reply to the FER and Examiner’s subsequent acceptance kick starts the trademark prosecution that may eventually result in the grant of the patent. Thus, the reply to the FER compliments the Trademark application and lays the foundation on the basis of which an applicant seeks proprietorship over its mark.

These submissions play another vital role in cases where the invalidity of the mark is cited as a defence in an infringement proceeding. It is pertinent to note that though registered marks are considered prima facie valid, it is merely a presumption (as noted by the court in Footlocker v. Geeta Kewalani Single Judge Bench order). Thus, during the defence of arguing invalidity of the plaintiff, the submissions made previously by them can offer substantial insight.

The order, in the concluding paragraphs, note that the defendant will prefer an appeal before the Division Bench and hopefully, if the appeal actually sees the light of day one can only hope the Division Bench to set the record straight. 

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