Recently, the IPAB issued an order in a trademark dispute in favour of England’s Jaguar Cars and against the Swiss company, Manufacture Des Montres Jaguar. This was an appeal by Jaguar Cars against the order of the Deputy Registrar of Trademarks, Kolkata, wherein he dismissed their opposition to Des Montres’ application for the registration of the trademark Jaguar for watches.
Jaguar Cars’ claimed that they owned the trademark Jaguar not only with respect to cars but also with respect to a range of merchandise which included watches. The phrase, according to their submissions, was coined by them in 1938. They hold around 800 registrations worldwide for the Jaguar trademark. They had got the trademark registered for the first time in 1943 in the United Kingdom. Jaguar Cars submitted that Jaguar was a well-known mark all over the world, including India and therefore, allowing Des Montres to use the trademark Jaguar would cause confusion among the public. Jaguar Cars submitted that this was an attempt by Des Montres to benefit out of the reputation and good will of Jaguar Cars.
Des Montres, on the other hand, contended that there was no attempt to free ride on the brand value of Jaguar Cars in the instant case. They submitted that they had first registered the trademark Jaguar with respect to watches in 1945 in Switzerland. As this was merely two years post Jaguar Cars’ first registration, they contended that there was no mala fide intention on their part. Moreover, in India, Des Montres submitted that they were the prior applicants for registration of the trademark. Additionally, Des Montres only intends to register the trademark for watches. Their trademark with respect to watches is in use in many countries around the world. Des Montres submitted that in any event, Jaguar Cars’ reputation was limited to cars and as the goods were dissimilar and unlikely to be sold together, there was no danger of people getting confused between the two brands. Des Montres also submitted that Jaguar being a common dictionary word, Jaguar Cars cannot claim monopoly over it.
The IPAB noted that the Deputy Registrar had erred when he based his conclusions on the point that Jaguar Cars had not registered in India for watches and that Des Montres was the prior applicant with respect to watches. The test,according to the IPAB, is registration of the trademark in India for any Class of goods and not for a particular good. Jaguar Cars had registered its trademark with respect to the auto industry in India in 1945. It had earned a brand value and reputation in India since then. The mark Jaguar is recognized in India as one of the leading luxury brands. This, not being factored in the Deputy Registrar’s decision, led to the error Moreover, in today’s world, the IPAB noted that even if the competing goods were dissimilar, there existed many possible avenues for confusion such as confusion of sponsorship, confusion of business affiliation, post-sale confusion etc. Therefore, the IPAB held that even if Des Montres was the prior applicant with respect to watches, this was an “artificially constructed and laboured justification” and consequently, ruled in favour of Jaguar Cars. The IPAB noted that the argument that Jaguar was a common dictionary word does not provide any person with a free license to abuse it without any regard to the market realities with respect to that word. Therefore, the IPAB ruled that the Deputy Registrar’s decision was wrong and allowed Jaguar Cars’ appeal.
