India: Triple Identity Test Satisfied, Says The Delhi High Court

Last Updated: 31 May 2011
Article by Sonam Lhamu Bhutia

In the case of Jain Electronics v Cobra Cables P. Ltd & Ors, aggrieved by the order of the Intellectual Property Board (IPAB) which dismissed his appeal against an order passed by the Deputy Registrar of Trade Marks, who rejected his application for registration of the trade mark "COBRA", the Petitioner (Jain Electronics) appealed before the High Court in Delhi challenging the aforementioned Orders.

A brief account of the case is as follows:

On 19th November 1987, Jain Electronics applied to register the mark "COBRA" in respect of voltage stabilizer and parts and fittings thereof included in Class 9 of the Trade and Merchandise Marks Act, 1958, the said mark was subsequently advertised in the trademarks journal dated 1 February 1992.

Consequently, Cobra Cables Pvt Ltd (Respondent No1) filed a notice of opposition against such registration. In their grounds for opposition, Cobra Cables stated that they were engaged in the business of manufacturing electrical apparatus and instruments, electric cables and electric conductors under the trademark "Cobra" which was part and parcel of their trading style. The mark Cobra was registered in their favour and was being renewed from time to time. The said trademark was originally owned by M/s.M.P Electric Company and was transferred to M/s.Cobra Cables who in turn had assigned the mark to Cobra Cables Pvt Ltd by an instrument of assignment.

They further objected that the mark "COBRA" sought to be registered by Jain Electronics, being identical to their registered mark would cause confusion and deception and as such should not be registered under Sections 9, 11(a), 12(1) and 18(1) of the TM Act, 1958. Jain Electronics in reply contended that they had been using the mark since 1978, however, they failed to produce any evidence in support of such contention. They relied on the statement of annual sales from the year 1978-79 to 1992-93 and certain unattested photocopies of bills.

The Deputy Registrar refusing to register the trademark "Cobra" in favour of Jain Electronics held that apart from the fact that they had not produced any evidence to prove user since 1978, the mark "Cobra" was not distinctive of the goods. Further, because of non-use of the mark it was not registrable under Section 12(3) of TM Act, 1958. It was also held that the goods of Jain and Cobra Cables were of the same description falling in Class 9. The Registrar further stated that because of the similarity in the two marks, allowing registration to Jain would lead to confusion and thus such registration should not be allowed. The triple identity test i.e. the mark being identical, the goods being of same description and the area of sale or the sales channel being the same stood satisfied.

The IPAB considered whether the evidence produced by Jain Electronics established their use of the mark "COBRA". Upon a perusal of the sales statistics, the IPAB stated that it was a statement of Jain Electronics without any reference to any of the returns submitted to the statutory authorities and not authenticated by the Auditor, as such they were not valid evidence. With regard to the unattested photocopies of invoices, the IPAB observed that in the description of goods sold by the appellant; only "Automatic Voltage Stabilizer" was mentioned without any reference to the trademark. The trademark was even not mentioned in the invoice and the bills. Based on the above grounds, the IPAB rejected Jain Electronics' appeal.

The case finally came before the Delhi High Court , which observed that on the basis of the evidence produced by Jain Electronics, the findings of the Registrar of Trademarks and the IPAB, it was clear that Jain Electronics had not been able to establish use since 1978. The Court concurring with the views of the IPAB and the Registrar with regard to the "Triple Test" being satisfied stated that the use of the mark with regard to "Electric cables" and "Voltage stabilizers" essentially meant that the trade channels were the same and as such allowing Jain Electronic to register the identical mark would lead to confusion in the market.

Thus, the Court dismissed Jain Electronics petition.

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