In an Order dated the 25th of October, 2013 the Intellectual Property Appellate Board (IPAB), through its Technical Member S. Ravi allowed an appeal against the order of Deputy Registrar M.C. Gupta refusing an opposition filed by Sony Corporation against trademark application No. 1255896 filed by Kolkata based textile firm, AB Textiles, for the label that is pictured on the left. The label contains the words ABT and Sony on a blue background. (The order can be accessed over here)
Registrar M.C. Gupta had disposed the opposition filed by Sony Corporation in a fairly well- reasoned order dated 3rd of July, 2007. (You can read the relevant extract of the order in para 14 of the IPAB’s judgment or access the entire order on this link.) In his order, the Registrar notes that although Sony Corporation did have a registration in Class 25, it did not provide any evidence that it was using the mark in that class. Sony Corporation’s only use of the trademark was for electronic goods, radios etc. Similarly, the Registrar also noted that Sony Corporation was not able to provide any evidence that any consumer had been, or would be, confused by the trademark label sought to be registered by AB Textiles. The Registrar also cited a judgment of the Bombay High Court where a business was allowed to use the trademark Sony for the sale of nail-polish. Despite finding all factors in favour of AB Textiles, the Registrar imposed a condition on AB Textiles, informing them that they would be allowed to use the entire label as one trademark i.e. A.B. Textiles could not claim the Sony mark independently of the entire label.
By any standard, the order by M.C.Gupta was a well-reasoned order but S. Ravi of the IPAB clearly did not agree with the order. Instead of merely finding Gupta’s order to be an error in law, the IPAB set aside his order with some rather bitter words. I extract the relevant portions as follows:
(i) “We are amazed at how far and to what extent the learned Deputy Registrar laboured with his analytical rigour to justify his decision to extend statutory protection in favour of the respondent but the devastating negative impact such rulings send a wrong signal to the international business community and give a needless opportunity for elements inimical to the country’s IPR interest to finger point the absurdity of such decision.” (Emphasis supplied)
(ii) “We need to make a few pointed observations how the Deputy Registrar cleverly and with phony reasoning circumvented the law.” (Emphasis supplied)
It is surprising to see the IPAB use such strong language when the Registrar’s decision was grounded in precedent and principles of trade mark law. In fact, if anything the reasoning of the IPAB leaves much to be desired. The tribunal’s entire reasoning is available in merely 2 paragraphs and fails to meet the standards of review expected of an Appellate Tribunal. For example the IPAB faults the Registrar for not referring to the Benz judgment of the Delhi High Court where the defendant was restrained from using the Benz mark for the sale of men’s underwear. This judgment was not really relevant to the discussion at hand since it was a judgment under common law of passing-off. A trade mark can be removed from the Register only on the grounds mentioned in the Trade Marks Act, 1999. The IPAB’s order fails to make any reference to any of the grounds mentioned in the Trade Marks Act, 1999. In a similar vein, the IPAB fails to distinguish the precedents cited by the Registrar to support his decision.
Prahant, You can imagine the reason for Mr. Ravi’s rage from the fact that Mr Gupta and Ravi were colleagues in the Registry for many years. Another intereting thing is that Ravi has been attacking the REgistry for its malfunctioning, lack of quality of examination etc for the last two years, concealing that he is one of the main culprits for the bad state of affairs in the Registry until Mr Kurian had initiated the clean up drive.
I think Mr. Gupta have given ample of reasons for his order, though we are committed to protect international brands under various treaties but it should not happen that our own business/brands get suffered due to arbitrary use of this immunity.
Another thing which I noticed in the judgment of IPAB is the wording used by the IPAB as “The Deputy Registrar simply and willfully shut his eyes to an open and shut case. The respondent application should have been thrown out of the window long time ago. Instead, the appellant has been made to suffer needlessly for over ten years.” This is use of cheap language not expected from IPAB. It is not a open and shut case. How many cases have been thrown out of the window by Mr. Ravi?
I remember having argued a matter before HMJ NN Goswami against SONY. My client applied for SONI, his surname. The Judge admitted the appeal after I relied upon his Lordships own judgment on a foreign trade mark. The matter was later compromised resulting in co-existence with condition of not expanding the goods. Interestingly, the spelling of the name of HMJ NN Goswami at one place in the said judgment was mentioned as Goswami and at other place as Goswamy. This made my case easier to make the Judge understand my point.
The Deputy Registrar had held that SONY is an invented word in japan. I showed Telephone directory to show it is a surname in India and that even if it is one person with the same as his surname, it would be a surname for whole of the mankind, as wherever he goes, he would be called SONY.
In your criticism of the IPAB’s decision, you folks seem to be ignoring the concept of “trademark dilution”. It was I think H Schechter in a Harvard Law Journal article a long time ago argued about the “rational basis of trademarks”. In that article he had opined that if Rolls Royce mark was to be used by different traders for pants and shirts, restaurants etc in five years time there won’t be the brand Rolls Royce anymore.
BTW can readers, bloggers enlighten this reader on how Amul for underwear and vests and Lux Cozy for the same are being used? Also, in Mumbai there is a chain of electronic goods sellers trading under the name “Sony Mony”. Did Sony challenge this?
As for using one’s own name/surname —if there is an honest use of it, then no trademark law can prohibit the using of one’s own name to distinguish a trader’s goods/services from that of another. (Will “honest concurrent use” cover this?).
Sorry, I had read IP law a long time ago and not practising as such. So a little rusted.