Decathlon Sports India filed a trademark infringement suit against NCR-based Pentathlon Sports alleging that the latter is selling substandard products in the market and passing them off as goods by the former. Decathlon says that its legal action is to stop Pentathlon Sports from “illegal and mala fide acts of inter alia of infringement of the registered trademark of the Plaintiff No I (Decathlon), selling substandard products in the market and passing them off as goods/ products of the Plaintiffs (Decathlon).” The suit further says that Pentathlon copied their trademarked tagline, Sports for All / All for Sports.
The suit has been filed on the grounds as follows:
- The colour scheme and font style used is similar to that of Decathlon.
- In its trademark Pentathlon has also italicised “A” in the name just like in the Decathlon trademark.
- Tagline adopted by Pentathlon’s “Sports for Everyone- Everyone for Sports” is same as Decathlon’s tag line “Sports For All- All For Sports”.
- The concept of Pentathlon appears to be identical with that of the Decathlon.
- Pentathlon Sports, which already has three retail stores, in the NCR region, has caused Plaintiffs “irreparable loss”.
Founder and owner of Pentathlon TNM Vijay Kumar Rana refuted all the allegations and contended that they will be defending their trademark based on following:
- There is difference in font and the colour scheme used in both logo’s
- In Decathlon both ‘C’ and ‘A’ is in cursive and is adjoined, on the other hand Pentathlon only has ‘A’ in cursive.
- Decathlon’s does not have a tennis ball iconography as is present in Pentathlon’s logo in place of ‘O’, which prominently differentiates between both the logos.
- There is sufficient differentiation in the tagline due to the use of ‘Everyone’ instead of ‘All’.
- Pentathlon sells products of brands such as Yonex, Wilson, Head, Nike and Indian ones such as Cosco and Nivea, alongside self-branded cricket accessories while Decathlon mostly sells their own brands which can be found only in Decathlon.
- Use of trademark Pentathlon and the manner and style in which the word Pentathlon is written in the logo and use of similar italicization of letters appears to be deceptively similar to DECATHLON. Further Pentathlon went ahead and adopted a tag line that is conceptually similar to Decathlon which could go against them in this suit.
The case can be argued on basis of Deceptive Resemblance:
“For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection”.
The court could consider following question:
(a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient.Finally the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must be considered.
The case was scheduled to be heard on 22nd March 2021. However, the judge was on leave and the next hearing is on 7th April 2021.
By Ishaan Michael