Trademark

‘Watch’out for Trademark Wars between Titan and Saint


Titan Industries v. Saint Watches Pvt. Ltd and Ors.

In 2010, the Deputy Registrar of the Trademarks Registry dismissed an Opposition filed by Titan Industries challenging the Saint Watches logo. Titan (appellant) then appealed to the IPAB, and IPAB in the instant Order remanded the matter to the Deputy Registrar owing to non-consideration of a point raised by the respondents before the Registrar. The respondents (Saint Watches) had claimed that the Notice of Opposition was barred on grounds of limitation and this point was not dealt by the Registrar to arrive at the decision. The Order was delivered  by IPAB chairman, Justice K N Basha, and technical member V Ravi.

Untitled

The primary contention of the appellants was that the Registrar had failed to invalidate the Saint’s logo despite the mark consisting of the registered trademark of Titan Industries. Saint’s mark was similar to Titan’s registered trade mark and even the goods were the same in respect of which marks were used, thus the appellants invoked S 11(1) of the Act before the Registrar. The Registrar held that there was no possibility of confusion or deception, because the Saint logo consisted of letter ‘S’ which was a mirror image or ‘S’ with welcome symbol on the bottom, and on the other hand the Titan logo was the letter ‘T’ written in a different style. As per the appellant’s Counsel, the notice for opposition had been filed within four months of publication of the mark in the Trademarks Journal, and the decision of the Registrar was erroneous in law.

The respondents argued that S. 21 of the Trademarks Act, 1999 stated that Opposition should be filed within three months from the date of advertisement or re-advertised application for registration and further one month is available for the opponent to file opposition. In the instant case the appellants had failed to file an application accordingly.

Order

The IPAB refused to enter into the merits of the case. It expressed its disappointment with the Registrar on his failure to consider the matter on the ground of limitation and proceeding to decide squarely on the merits of the case. The Board was of the opinion that the respondents should not be deprived of an opportunity to rely on the ground of limitation. Therefore, in the interest of justice and in order to protect the interests of both parties the matter was remanded to the Registrar to be heard again on the ground of limitation, with permission granted to the parties to raise any additional grounds. The Board directed the Registrar to hear the matter within the next four months.

Comments

In my opinion, a quick comparison of the marks reveals a certain degree of similarity, in spite of the reasoning provided by the Registrar. It would be difficult for an unsuspecting buyer to distinguish the marks, especially when they are used on goods of the same kind.  Further, the Registrar had relied on a Delhi HC decision namely  M/S. John Oakey & Mohan Ltd. v. M/S. Million Abrasives Pvt. Ltd, wherein the goods to which the marks were applied were the same(abrasives), however the marks were extremely dissimilar to the naked eye. Thus, obviously there was no question of confusion. This particular case therefore seems inapplicable to the instant case, and the same was argued by the appellant before the IPAB. Furthermore, the Saint Watches logo was published in the Trademarks Journal only in August 2006, whereas Titan Watches has been operating in the market since the 1987.  Therefore, in my opinion there is a certain degree of similarity between the two marks and similarity between products. This may result in confusion amongst the consumers as to the source of the goods. Hopefully, the Registrar will carefully reconsider both the issues afresh in the next hearing.

Read the order here.

Anubha Sinha

Anubha Sinha

Anubha Sinha - @anubhasinha_ on Twitter — is a graduate of Dr. RML National Law University, Lucknow, and presently works at the Centre for Internet and Society. She also blogs on www.cis-india.org

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