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.