Trademark

IP controversy with the Sensex?!


In November 2007 SpicyIP had covered the attempts of the Bombay Stock Exchange to acquire trademark protection for the term “Sensex” the abbreviation for Bombay Sensitive Index. The BSE had applied for registration of trademarks under Class 36, 35, 41 of the Trade Marks Act 1999.

As of November 7, 2007 Sugata Ghosh & N Shatrujeet of the Economic Times had come to the following conclusions explaining the sudden move towards IP protection:

1. Following standard practices as most corporates moved to protect their IP.
2. “…a big structural shift where the bourse has been corporatised and foreign institutions have picked up stakes.”

3. An aid for better valuation of the BSE itself.

4. “According to Nabankur Gupta, founder of Nobby Brand Architects & Strategy Consultants, globalisation is one of the biggest motivations behind trademarking the Sensex brand. “As global trading increases, there is a compulsion to have powerful brands, and the Sensex could emerge as one of the strongest brands in its genre. The world trading community cannot ignore India any longer, and as the quantum of trading into India increases, the Sensex will gain strength. In fact, it may well emerge among the Top 3 after New York and China,” he said.

On the next day (8th November, 2007) Maulik Pathak of the Economic Times wrote about an IIT and IIM pass out Mr. Deepak Mohoni the CEO of TrendwatchIndia who claims to have coined the phrase “Sensex” in 1989 to save himself the trouble of typing Sensitive Index. Mr. Mohoni says that he was the only user of the phrase till the mid 1990’s when it started to gain popularity and acceptance; being used by the BSE itself around 1995-1996. The article concludes with Mr. Mohoni’s predictions for the market and the author’s comment on the BSE seeking to “patent” the phrase “Sensex.

To add an interesting turn to the events thus far Sanat Vallikappen reports on Sify that Mr. Mohoni filed a suit in the Pune District Court 3 weeks ago petitioning the court to recognise Mohoni as the lawful and exclusive owner of the trademark “Sensex”, and to order BSE to withdraw its own trademark application for the same.

The suit alleges that the BSE, “for many years even after 1995, was not using the word ‘Sensex’ in its official publication called ‘BSE Times’, which goes to prove that it never had any intent to claim any right, title or claim in the said mark”.

Mohoni, whom DNA Money spoke to, said that he had no objection to ‘Sensex’ (which has now crept into the public consciousness) being used, as long as no other person claimed any ownership rights to it.

But in December 2006, he learnt through news articles that the BSE had applied to the Trade Mark Registry in India for registration of the word “Sensex” under the provisions of Trade Marks Act, 1999 (Act) in its favour.

On February 15, 2007, Mohoni sent a notice to the Registrar of Trade Mark, Mumbai, calling on him to refuse the registration of the trademark.

Following up on this, on November 11, 2007, he filed two trademark applications for registration of the “Sensex” as a trademark in his name. The applications are pending before the Trade Mark Office.

On its part, BSE’s lawyer Wadia Gandhy & Co, sent a notice to Mohoni on March 26, 2008, saying that trademark was adopted by BSE as far back as 1986 to denote the BSE Sensitive Index, and that he withdraw his trademark application immediately.

In the suit filed three weeks ago, Mohoni’s lawyer says that his client asserts no claim to the name Bombay Sensitive Index.

“The said notice of the defendant (BSE) is misconceived in that it has falsely attributed its rights, whatsoever, in the term ‘Bombay Sensitive Index’ with the ownership of the mark (Sensex).”

The Telegraph reports further by including a statement by Mr. Mohoni to the effect that he does not seek to prove anything but just wants the term “sensex” to remain in the public domain.

“I am challenging BSE’s attempt to trademark the term ‘sensex’. They can’t trademark it since they haven’t coined it.”

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