Swedish apparel manufacturing firm Vagabond Skor Varberg AB (“Applicant”) won the trademark
[Image from here.]
dispute against Italian firm Vagabond SPA in the Intellectual Property Appellate Board (“IPAB”). [The Order is available here.] The latter opposed the attempt of the Applicant to register the mark “VAGABOND” on the ground that the latter enjoyed trademark registration over the same mark (Registration No. 551738). The Applicant filed an application with the IPAB seeking the removal of the said trademark “VAGABOND” in Class 25 of Vagabond SPA and Carrera SPA (which was officially recorded as a subsequent proprietor and simultaneously opposed by the Applicant). The Applicant, which manufactures and markets clothing, footwear and headgear with registered trademarks in UK, US, Japan, Russia, Canada and Singapore, had earlier successfully opposed the trademark “VAGABOND” of respondent in many other countries.
[The instant Order is similar to the Order in M/s. Pops Food Products (P) Ltd v. M/S. Kellogg Company where the IPAB did not find any bona fide intention in the use of the mark by the respondent within India. It was noted that no step had been taken towards the same for 22 years since the date of registration of the said marks. Accordingly, the respondent’s marks were removed from the register. Shouvik covered the Order here.]
The Applicant sought the removal of the impugned mark from the register under Sections 47 and 57 of the Trade Marks Act, 1999 on the following grounds: a) The respondent Vagabond SPA did not have the bona fide intention to use the impugned mark; b) The respondent Vagabond SPA neither had any business establishment / infrastructure in India nor any distributor or license agreement to use the mark. The impugned registration in fact precluded the genuine proprietor from seeking statutory protection under the Act. The respondent Vagabond SPA had no principal place of business in India and services, if any, had to be made through their agent at New Delhi; and c) The evidence in support of cancellation petition inter-alia included: (i) A list of 41 countries wherein the trade mark “VAGABOND” had been registered along with the registration certificate as proof thereof (ii) the International Registration under the Madrid Protocol (iii) Auditors Certificate concerning turnover in several important countries (iv) Copies of broachers, posters, catalogs etc.
The respondents (Vagabond SPA and Carrera SPA) did not file any counter statement. As they were absent, they were set ex-parte.
The IPAB noted the dictum – if the applicant at the time of making the application had knowledge that the mark as applied for or a similar mark had already been used by another trader in relation to similar goods, then the claim to proprietorship made by him is false and fraudulent [Gynomin (1961) RPC 408; Vitamin’s Appln. (1956) RPC 1 and Brown Shoe’s Appln. (1959) RPC -29]. A trade mark application primarily makes the assertion under Section 18(1) “claiming to be the proprietor thereof” of the mark for which application was made. The aforesaid claim, which was challenged in the instant dispute, had not been traversed by the respondents herein. Further, the Apex Court, in Milment Ortho Industries & Ors. Vs Allergan Inc. [2004(28) PTC 585 SC] held that the mere fact that the party has not used the mark in India will be irrelevant if they were first in the world market. From the evidence adduced, the Applicant has used the trademark outside India. Also, the Applicant expressed its intention to use the trademark by filing the application for registration.
The impugned mark was held to be a blatant copy of the applicant’s trade mark “VAGABOND”. The application was allowed and accordingly, the impugned mark was removed from the register. There was no order as to costs.
Firstly, the Order is right on its conclusion but wrong on the reasoning. The Order referred to the SC judgment in Milment Ortho Industries where it was held that the mere fact that the party has not used the mark in India will be irrelevant if they were first in the world market. This legal principle is, however, just an exception to the general rule. Moreover, the present fact situation attracted the general rule and not the exception. I shall reproduce the relevant paragraph in Milment Ortho Industries judgment (with emphasis on parts in bold):
“In respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products. It was held that even though certain products may not be sold across the counter, nevertheless it was not uncommon that because of lack of competence or otherwise that mistakes arise specially where the trade marks are deceptively similar. It was held that confusion and mistakes could arise even for prescription drugs where the similar goods are marketed under marks which looked alike and sound alike. It was held that physicians are not immune from confusion or mistake. It was held that it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently the handwriting is not legible. It was held that these facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike. We are in full agreement with what has been laid down by this Court. Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. Doctors particularly eminent doctors, medical practitioners and persons or Companies connected with medical field keep abreast of latest developments in medicine and preparations worldwide. Medical literature is freely available in this country. Doctors, medical practitioners and persons connected with the medical field regularly attend medical conferences, symposiums, lectures etc. It must also be remembered that nowadays goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring a worldwide reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market.”
As evident from the judgment, an exception to the general rule is made in case of pharmaceuticals. The present fact situation attracted the general rule viz., who is first in the Indian market as the subject matter is not a pharmaceutical brand name . Accordingly, the respondent would lose the registration as it had no intention of doing business in India and not for the reason that the Applicant was the first in the world market. The test whether the Applicant was the first in the world market would have been applicable if the Applicant was marketing pharmaceuticals under a certain brand name. The Order would have had a coherent reasoning if it had appreciated the above parts of the judgment which are in bold. On the other hand, it applied the exception to the general rule.
I am also bewildered over the fact that costs were not imposed upon the respondents especially when the IPAB was highly critical of the impugned mark and the conduct of the Respondents – “The conduct of the respondent in the instant case speaks for itself leaving the applicant shell shocked giving the signal that imposters can set up any claim in the registry. The substantial purpose of the trade marks law in India is to ensure orderly marketing of goods and services. Registration of the impugned mark only defeats this objective. The impugned mark is a blatant copy of the applicant’s trade mark VAGBOND and should be removed from the register forthwith.” As I had stated earlier, the respondents did not appear. The IPAB should have used this opportunity to deter attempts to obtain mala fide registrations.