PREMIER SPG AND WVG MILLS PVT. LTD. vs FOOTBALL ASSOCIATION PREMIER LEAGUE LTD. & ANR.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 15th January, 2024
Pronounced on : 22nd January, 2024.

+ C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023
PREMIER SPG AND WVG MILLS PVT. LTD. ….. Appellant
Through: Mr. N. Mahabir, Advocate.
versus
FOOTBALL ASSOCIATION PREMIER LEAGUE LTD. & ANR.
….. Respondents
Through: Mr. Peeyoosh Kalra, Mr. C.A. Brijesh, Mr. Krisna Gambhir & Ms. Simranjot Kaur, Advocates for R-1.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday & Mr. Krishnan V., Advocates.
CORAM:
HON’BLE MR. JUSTICE ANISH DAYAL

JUDGMENT
ANISH DAYAL, J.
1. This appeal has been filed under Section 91 of the Trade Marks Act, 1999 (“the said Act”) read with Rule 156 of the Trade Mark Rules, 2017 (“the said Rules”) assailing order dated 02nd February, 2023 passed by the Registrar of Trademarks, Delhi (“respondent No. 2”), rejecting the opposition of Premier SPG and WVG Mills Pvt. Ltd (“the appellant”) to registration of the respondent’s mark in class 25 (clothing; footwear; headgear).
2. The respondent had filed application No. 1489060 for registration of the said mark claiming “proposed to be used”. The said mark was advertised for acceptance in the trademark journal on 18th May, 2015. The application was opposed by the appellant through opposition No. 837232 on 07th September, 2015 on the ground that the mark was phonetically, visually, structurally and deceptively similar to the appellant’s mark ‘PREMIER’ which was conceived, coined and adopted in 1949, and registered in various classes from 1980 onwards.
3. The appellant claims that they are part of the Premier Group having an international reputation for quality goods in the clothing industry built over the last 70 years. They are manufacturers, exporters, marketers of yarn, clothing, hosiery including suiting, shirts, ready-made garments, dhotis, textiles under various marks etc. The product portfolio of the appellant comprises of these ranges of products and the following device marks are house marks of the appellant , , , , , , .
4. The details of the registration are tabulated as under:

5. It is claimed that the appellant’s house mark ‘PREMIER’ and other ‘PREMIER’ formative marks have been in continuous and extensive use in India. The mark was coined and adopted in the year 1991 and has been in open and continuous use since then.
6. The respondent claimed in his counter statement that they are headquartered in London and are the organizing body of ‘Barclays Premier League’ and control the rights of the League including its rules, broadcast, and commercial rights. It is a private company wholly owned by 20 member clubs who make up the League. Each individual club is independent but working within the rules of football as defined by the Premier League. In connection with this business, the respondent owns and uses the distinctive trademarks and other variants (hereinafter collectively referred to as the ‘Premier League Marks’).
7. It was stated that the respondent has invested years of time, capital, effort and resources to attain immeasurable fame and goodwill with the Premier League Marks. The Premier League Marks are marketed, advertised, and extensively promoted and have therefore achieved recognition amongst members of the trade and common consumers in public.
8. The Premier League Marks have secured registration in various countries of the world. Some details are tabulated by the respondent as under:

9. In India, the respondent is the registered proprietor of the ‘BARCLAYS PREMIER LEAGUE’ mark . The said mark was advertised in Journal No. 1449 dated 13th September 2010. Pursuant to an arrangement with Barclays Bank, the earlier sponsor of the league, the respondent continued to use his device mark ‘PREMIER LEAGUE’ without the word ‘BARCLAYS’ which continues to be distinctive, different, and highly stylized.
10. In support of the appeal, counsel for the appellant contended that the Registrar of Trademarks erred in his conclusion that “it is palpable that there is no similarity between the marks phonetic, visual, or structural. The only common features between the two marks is the word ‘PREMIER’, and the said word ‘PREMIER’ is generic word and no one can have a monopoly over the said word, nor can claim exclusivity on it.”
11. Counsel for the appellant submitted that firstly, the finding in the impugned order was beyond the pleadings, since the respondent had not filed any evidence with regard to extensive use of the mark ‘PREMIER’ by other entities, which could have led the Registrar to the conclusion as above; secondly, the appellant’s marks of ‘PREMIER’ dated back to the 1980s, while the respondent’s application was dated 2006, therefore, the question of prior use and prior extensive use could not have been ignored; thirdly, reliance of the Registrar on the decision in Corn Products Refining Co. vs Shangrila Food Products Ltd, 1959 SCC OnLine SC 11, in para 14 of the impugned order was out of context and the relevant part of the judgment was not quoted or relied upon by the Registrar; fourthly, the class in which the respondent was seeking registration was class 25 which relates to clothing, footwear, headgear, and the appellants business was relatable to the same category; fifthly, the dominant and essential feature of the appellant’s mark was ‘PREMIER’ and there were various other formative registered marks like ‘PREMIER MILLS NUMBER 1’, ‘PREMIER APPARELS’, ‘PREMIER GARMENTS’, ‘PREMIER KING’ etc., the respondent’s mark was ‘PREMIER LEAGUE’ and it was only the first part which was the distinct feature, league being a common sports and games term; sixthly, reliance was placed on the decision in South India Beverages v General Mills Marketing, 2014 SCC OnLine Del 1953, where the issue between “anti-dissection rule” and the “dominant or essential feature” aspect is clearly explained; seventhly, the Registrar had failed to conduct the triple identity test in that the marks were similar on the dominant part ‘PREMIER’, used in relation to identical goods and having an identical trading channel; eighthly, reliance has been placed on the previous registered mark of ‘BARCLAYS PREMIER LEAGUE’, which had lapsed in 2017 and was not similar to what was being sought to be registered now; ninthly, reliance is placed on Greaves Cotton Limited V. Mohammad Rafi, 2011 SCC OnLine Del 2596, where it was held that the impugned trade mark does not need to be an absolute replica of the registered mark and that the plaintiff needs to establish only that the defendant’s mark resembled his to such an extent that it is likely to deceive or cause confusion.
12. Counsel for respondent refuted the contentions of counsel for the appellant inter alia submitting that; firstly, ‘PREMIER’ is a generic word and cannot become a subject matter of exclusive right of any single person; secondly, the Registrar had correctly applied the concept of “crowded field” highlighting the presence of other trademarks containing ‘PREMIER’ on the Register of Trademarks and no exclusivity could be claimed by the appellant; thirdly, the Registrar had correctly viewed the rival marks as a whole and refrained from dissecting them into different components, noting that the appellant does not have any rights over the ‘PREMIER’ word per se; fourthly, the respondent’s mark could not be dissected into ‘PREMIER’ and ‘LEAGUE’, moreover the device of the lion wearing a crown along with a football was distinct; fifthly, Registrar had noted that there was a previously registered mark of the respondent ‘BARCLAYS PREMIER LEAGUE’ in class 25 and the respondent’s adoption of the impugned mark cannot be said to be dishonest, or riding upon the goodwill of the appellant; sixthly, there was no opposition by the appellant to the earlier registration of the mark ‘BARCLAYS PREMIER LEAGUE’; seventhly, there existed overall visual, phonetic, and structural dissimilarities between the marks, when viewed in detail and compared as a whole, and the Registrar clearly highlighted that while the appellant’s mark contained a flower in the device mark above the letter ‘I’ in ‘PREMIER’, the same is not present and is starkly distinguishable on the respondent’s mark; eighthly, the appellant does not have a separate registration for the word ‘PREMIER’ in class 25 and the only registration is for the device mark which contains the word ‘PREMIER’ with a flower device and the appellant had not submitted any evidence to demonstrate how the word ‘PREMIER’ in their trademarks acts as a source identifier of its products; ninthly, reliance was placed on Vasundhara Jewellers Pvt. Ltd. vs. Kirat Vinodbhai Jadvani and Ors., (2022) SCC Online Del 3370, a decision by a Division Bench of this Court, where it was held that it was not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar.
13. This Court has perused the documents records filed by the parties and heard submissions. For ease of reference, the comparative assessment of the marks is tabulated under:
Appellant’s Marks
Respondent’s Mark

, , , , , ,

14. A bare perusal of these marks would prima facie indicate that there is no deceptive similarity between the two marks and the only commonality between the same is the use of the word ‘PREMIER’. Moreover, the word ‘PREMIER’ is suffixed by the word ‘LEAGUE’ in the respondent’s mark and has a device of a lion wearing a crown and standing over a football, which is indicative of the nature of the services being provided by the respondent in the industry of football. On the other hand, ‘PREMIER’ as used in the appellant’s mark is of a completely different font and style and has a small flower device on top of the word. Applying the fundamental test as to whether there is a deceptive similarity, in the opinion of this Court, there is none on a bare perusal of the marks. Notwithstanding the prima facie assessment, the appellant’s mark is a device mark, and they have no registration in the word ‘PREMIER’.
15. Therefore, the composite device mark would have to be seen for the purposes of comparison. In this regard the two rules which are applied by the Courts for analysis of composite marks may be pressed into service. These are “the rule of anti-dissection” and the “identification of dominant mark”. These rules are clearly documented and explained inter alia in South India Beverages (supra), paragraphs 16 and 19 of which are extracted below for ease of reference:
“The Rule of Anti-Dissection
16. This rule mandates that the Courts whilst dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as an indivisible whole rather than truncating or dissecting them into its component parts and make comparison with the corresponding parts of arrival mark to determine the likelihood of confusion. The raison d’tre underscoring the said principle is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole and not by its component parts [994 F.2d 1359, 1362 (9th Cir. 1993) Fruit of the loom, Inc.v. Girouard; 174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation].
xxxxx xxxxx xxxxx
The Identification of ‘Dominant Mark’
19. Though it bears no reiteration that while a mark is to be considered in entirety, yet it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-à-vis other constituent elements, may be termed as a ‘dominant mark’.”
Reliance by the appellant was primarily on paragraph 21 of the said decision which reads as under:
“21. The view of the author makes it scintillatingly clear, beyond pale of doubt, that the principle of ‘anti dissection’ does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark. The said elements may be viewed as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, the principle of ‘anti dissection’ and identification of ‘dominant mark’ are not antithetical to one another and if viewed in a holistic perspective, the said principles rather compliment[sic] each other.”
(emphasis added)
16. Essentially, the appellant pleads that applying the principle of anti-dissection as held in South India Beverages (supra) does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark, and these elements may be viewed as a preliminary step on the way to an ultimate determination of conflicting composites.
17. In response, reference made by the respondent to Vasundhara Jewellers (supra), another decision of Division Bench of this Court and subsequent in time, may be apposite. While adverting to the statement made by the Division Bench in South India Beverages (supra), this Court in Vasundhara Jewellers stated in paragraph 33 as under:
“33. Having stated the above, it is also necessary to bear in mind that examining the dominant part of the trademark for comparing it with the conflicting mark is solely for the purpose of determining whether competing marks are deceptively similar when viewed as a whole. It is, thus, not permissible to hold that two competing marks are deceptively similar by examining a portion of one mark and comparing it with the portion of another mark, if the composite marks viewed as a whole are dissimilar. It is relevant to refer to the text from McCarthy on Trademarks and Unfair Competition, which explains the said principle as under:—
“23.15 Comparing Marks : Differences v. Similarities
[1] The Anti-Dissection Rule
[a] Compare composites as a Whole : Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the “anti dissection” rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed: “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.” The anti-dissection rule is based upon a common sense observation of customer behavior : the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper’s cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in “technical gymnastics” in an attempt to find some minor differences between conflicting marks.
However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate.
The rationale of the anti-dissection rule is based upon this assumption: “An average purchaser does not retain all the details of a mark, but rather the mental impression of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains.” .”
(emphasis added)

18. What was therefore stressed, reiterated, and underscored by the Division Bench of this Court in Vasundhara (supra), is that examining the dominant part of a trademark for the sake of comparison of the conflicting marks is solely for the purpose of determining whether the marks were deceptively similar, when viewed as a whole. In essence, firstly, there is no cavil that conflicting marks have to be examined as a whole; secondly, composite marks cannot be held to be deceptively similar by examining portions of the conflicting marks specially when the composites when viewed are dissimilar; thirdly, as stressed in McCarthy (supra), “a violation of the anti-dissection rule to focus upon the “prominent” feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark.”.
19. These principles were applied in the facts of Vasundhara (supra). The Court held that device/composite mark containing a word ‘VASUNDHRA’, could not give an exclusive right to use the word ‘VASUNDHRA’ and assail another device mark which was using the said mark. The Court noticed that a proprietor of a trademark cannot expand the area of protection granted to the mark in these circumstances and that the appellant in that case did not enjoy the monopoly for the use of the word ‘VASUNDHRA’. It was further emphasized in paragraphs 38 and 39 of Vasundhara (supra) as under:
“38. Second, the word ‘Vasundhra’ is a generic word and it is brought on record that there are several registered trademarks, which include the word ‘Vasundhra’. Further, ‘Vasundhra’ in Hindi means the earth or the bearer of all. Thus, intrinsically, the word ‘Vasundhra’ would be a weak trademark. Although it is possible for a proprietor to claim exclusive right in respect of the word ‘Vasundhra’, however, for that, it would be necessary to establish on account of extensive use, the said common word has been identified exclusively with the business of the proprietor and no other. Prima facie, it is difficult to accept that the appellant meets the said threshold. The learned Single Judge had noted that the appellant has a single store. Although the appellant’s turnover is about Rs. 79 crores, it pertains to high value items and therefore, does not necessarily establish the reputation associated with the VASUNDHRA Trademarks.
39. The observations in the impugned judgment that” ‘VASUNDHRA’ is a common name in India and an exclusive right to use the same cannot be granted to the plaintiff” has to be read in the aforesaid context. The learned Single Judge had found that the word ‘Vasundhra’ was a part of the composite marks and the appellant did not have exclusive monopoly over the word ‘Vasundhra’ merely on account of registration of composite marks including the said words.”
(emphasis added)
20. Thus, on an assessment of the decision cited before this Court, it is amply clear that the rules of anti-dissection would clearly apply to the two composite device marks being compared. The device mark of the respondent cannot be dissected to pluck out the word ‘PREMIER’ and then compared with the appellant’s registered mark. The appellant’s registered mark is only a device mark and not a word mark. The appellant clearly cannot have a monopoly over the word ‘PREMIER’ considering it is a word of general use, as is rightly noted by the Registrar. It would be difficult to accept the appellant’s contention that ‘PREMIER’ was the dominant mark of the respondent’s mark and thus in conflict with the appellant’s mark. In the opinion of this Court ‘PREMIER’ in respondent’s mark cannot be severed, excised from its associated word ‘LEAGUE’ since it derives its context from it. ‘PREMIER’ refers to the category of a League, a special kind of League which in context of football has acquired and amassed worldwide recognition, goodwill and immediate re-call.
21. The appellant’s contention that no evidence was led by the respondent to establish that there was wide and extensive use of the word ‘PREMIER’, in the opinion of this Court is unmerited. This is for the reason that the Registrar was empowered to look at the Trademark Register to make an assessment from the other marks which would contain ‘PREMIER’.
22. Further, the impugned order relies upon the respondent’s search report of the word ‘PREMIER’ to show that the word was common to trade and is generic. Reference is made to the counter statement filed by the respondent before the Registrar where the same has been exhibited as ‘Ex. A’. A perusal of the said Ex. A, would show that the word mark ‘PREMIER’ in class 25 returned numerous registrations including the device which had been registered as ‘BARCLAYS PREMIER LEAGUE’, as well that of ‘INDIAN PREMIER LEAGUE’ [by the Board of Control for Cricket (BCCI)] and ‘SRI LANKA PREMIER LEAGUE’, ‘PREMIER GOLF LEAGUE’, ‘PREMIER BADMINTON LEAGUE’, ‘PREMIER SPORTS’ etc. This would clearly bear out that the word “Premier” is a commonly used generic word particularly in conjunction with sporting leagues around the world and therefore has acquired extensive use.
23. Therefore, as held in Vasundhara (supra), this Court is of the opinion that the word ‘PREMIER’ is an intrinsically weak trademark since on account of extensive use, the said common word cannot be exclusively connected and relatable with the business of the appellant. It was for the appellant to prove that the word ‘PREMIER’ which formed part of the device mark would be identified exclusively with the business of the proprietor and no other. Clearly this threshold had not been met and no other evidence had been presented by the appellant in order to achieve the same.
24. Further, reliance which had been placed by the respondent on a decision of the High Court of Bombay in Pidilite Industries Ltd. v. Vilas Nemichand Jain, 2015 SCC OnLine Bom 4801, is also appropriate in the context. Paragraph 17 of the said decision is extracted as under for ease of reference:
“17. Therefore, mere evidence of extent of use — invoices, financial figures of sales and so on — might perhaps show use or even increased use. But something more is necessary to show that the use is such that the mark has become distinctive. As the commentary says, use itself does not equal distinctiveness. In the context of a descriptive mark even extensive use is insufficient and what is required, as is borne out by the extract from the commentary in Narayanan on Trade Marks, is that the secondary meaning acquired must be shown to have displaced entirely the primary descriptive meaning of the mark. To succeed in such a action what a plaintiff must show is that the goods bearing the mark have come to be identified with his goods exclusively, and in the case of a descriptive mark, evidence is necessary of members of the public as well, not just people who are specially placed to attest to its uniqueness.”
(emphasis added)

25. What the High Court of Bombay has stressed upon is that mere evidence of invoices, financial figures, and sales is not enough to show distinctiveness, but what needs to be achieved is that the mark has acquired secondary meaning and displaced the primary descriptive meaning of the mark. The use of the word ‘PREMIER’ as part of the device mark thorough registered earlier and used by the appellant for number of years, but the distinctiveness of the appellant’s mark lies in the arrangement of the various elements in the device mark in order to achieve a wholesome composite. This would include the word ‘PREMIER’ written in a particular style and fashion along with the flower device which is also embedded in the said mark. What makes it difficult to accept the appellant’s argument of deceptive similarity is that the respondent’s mark in fact has a completely distinctive element using the lion wearing a crown and standing over a football, as well as, using the word ‘LEAGUE’ along with ‘PREMIER’, which signifies the industry of football that they are associated with.
26. An application in class 25 is clearly for the purposes of selling merchandise, which is a standard industry practice for premium sports brands, and it is normal for them to protect the same. Selling of sports merchandise has become concomitant to the business and revenues of sporting organizations and the greater reputation and goodwill that the sporting event has, the greater is the fan craving for the merchandise. It is nobody’s case that the respondent is planning to get into wholesome manufacture, distribution, export of general clothing goods and their use is clearly relatable to the sporting merchandise, considering that the mark is distinctive and relates to the Football League.
27. Moreover, there was a lack of opposition by the appellant to the earlier registration of the respondent’s mark ‘BARCLAYS PREMIER LEAGUE’. It does not support the appellant’s plea of the challenge to the respondent’s mark. If at all ‘PREMIER’ was also contained in the earlier mark of ‘BARCLAYS PREMIER LEAGUE’, and if at all distinctiveness is sought on the basis of the word ‘PREMIER’, an opposition ought to have been filed at that stage itself. The said mark of ‘BARCLAYS PREMIER LEAGUE’ subsisted on the trademarks register for at least a period of 10 years, and the appellant has not presented any step which was taken by them for opposition/rectification. Note is also taken of extensive worldwide registrations of the respondent’s trademark in various countries across continents thereby reinforcing their right over the said mark.
28. Accordingly, the appeal is dismissed. Pending applications, if any, are rendered infructuous.
29. Order be uploaded on the website of this Court.

(ANISH DAYAL)
JUDGE
JANUARY 22, 2024/RK

C.A.(COMM.IPD-TM) 15/2023 2 of 21