Avni Chari, one of our regular guest bloggers, has sent us this interesting post, analyzing the recent Delhi High Court decision over-turning the IPAB’s decision in the case of T-Series v. TELCO. While T-series was led by Amit Sibal, TELCO was represented by Mr. Mahabir. The judgment of the Delhi High Court can be accessed over here.Avni S. ChariThe High Court of Delhi overturned the decision of the Intellectual Property Appellate Board (IPAB) and granted registration in respect of the mark “T-SERIES” to Super Cassettes Industries Ltd. The original opposition was filed by Tata Motors Ltd. (TELCO) in June 1991 before the Deputy Registrar of Trademarks (DR). In his order, the DR rejected TELCO’s opposition and directed that Super Cassettes’ application for registration be accepted. TELCO appealed this decision and the matter was transferred to the IPAB. Although it affirmed the grant of registration in respect of the mark “T-SERIES,” the IPAB qualified the order of the DR by directing Super Cassettes to remove the circle around the letter “T”. It was Super Cassettes’ appeal from the order of the IPAB which was heard and decided favourably by the Delhi High Court.
In its opposition, TELCO claimed fundamental proprietorship of the letter “T”. It asserted that the letter “T” in a circle was the house mark of TELCO and there was likelihood of deception and confusion if the Super Cassettes’ application was sanctioned registration. Super Cassettes, in its counter, asserted that it has been using the trademark “T-SERIES” extensively and continuously since 1979 in respect of audio cassettes and subsequently for a variety of electronic goods. It stated that the mark has acquired an immense reputation and the members of the public associate the mark “T-SERIES” solely with Super Cassettes.
The cardinal issue before the Delhi High Court was whether there was a similarity between the competing marks of Super Cassettes and TELCO. According to Section 2 (1) (h) of the TM Act, 1999 a trade mark is deemed to be “deceptively similar” to an earlier mark if it “so nearly resembles that other mark as to be likely to deceive or cause confusion.” On a close comparison of marks, the Court opined that they were structurally, stylistically and substantially different. The Court concluded that, “there is no similarity in the two marks much less a deceptive similarity which is likely to cause confusion.”
The High Court further observed that Super Cassettes and TELCO were using the marks for different kinds of goods. Therefore, the average consumer is unlikely to be either confused or deceived into mistakenly associating the mark “T-SERIES” with TELCO (Tata Motors Ltd.) or its products which are primarily trucks and automobiles.
The core consequence of this judgment rests in the Court’s interpretation of Section 17 of the Trade Marks Act, 1999. Section 17 provides that the registration of a composite mark confers on its proprietor the exclusive right to use it only as a whole. Consequently, the registration granted to the TELCO of its composite mark did not give it any right to the exclusive use over the letter “T” or over the letter “T” within a circle. It cannot claim monopoly over letter “T” since the letter, per se, is not distinctive of any goods. The trademark registration granted to TELCO was not for “T” simpliciter, but the letter in combination with “TATA ENGINEERING” and the device of 2 twigs.
