The Intellectual Property Appellate Board (IPAB) has recently rejected the appeal of Jones Investment Co. Inc., A US Company, challenging the order of the Registrar of Trade Marks, dismissing the opposition filed by US Company against the registration of trade mark JONES label by Indian party trading as Vishnupriya Hosiery. 

The case of the appellant was that it is the registered proprietor of trade mark JONES NEW YORK and is using it internationally in relation of wide range of goods including clothing for men, women from the year 1966 the mark has and acquired an international reputation.  The Appellant argued that the Respondents have copied and adopted the Opponent's trade mark in respect of identical/same goods and as such the use of trade mark JONES label would cause confusion or deception.

The appellant contended that the impugned order passed by the Registrar is liable to be set aside on the grounds of its prior use and adoption since 1966 and registration since 1977 and international reputation and goodwill.  In return, the respondent drew the attention of the Board to the relevant portion of the impugned order which stated that:

"Since, the speaking parts of the rival marks being "JONES‟ are same and the goods under the competing trade marks are same, trade channels are same, class of customers is same, the competing marks can be considered similar, however, the million dollar question arises whether the opponents‟ trade mark by way of use is competing in India and/or the international reputation/trans-border reputation as alleged by the opponents is percolated into India as on the date of application, the material date."

The  respondent argued that the question involved in this matter as pointed out by the Deputy Registrar is whether the appellant has established its use of trade mark ―JONES NEW YORK" in India on the date of application filed by the respondent before the Registrar for the registration of the impugned trade mark. It was contended that the appellant has not used its trademark ―JONES NEW YORK in India. Therefore, there is no question of establishing its trans-border reputation in India.

The Board agreed with the Respondent that the main crux of the question in this matter is that whether the appellant has established its trans-border reputation. The Board discussed the decision of the Hon'ble Supreme Court in Milmet Oftho Industries & Ors vs Allergan Inc wherein it was observed that: 

"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."

The Board while agreeing with the Registrar's order, rejected the Appellant's arguments and the appeal and concluded that:

  • The Appellant has not used its trade mark JONES NEW YORK in respect of its business in India. On the other hand, the Respondent has used its trade mark from the year 1993 and it has also produced documents to substantiate the user claim. Therefore, there is no question of causing any confusion in the eyes of public.
  • The Appellant has failed to establish the trans-border reputation with cogent and relevant evidence.
  • The Registrar has rightly observed in the impugned order that when the respondent, namely the applicant before the Registrar, is prior in the adoption and use of the mark in India, the quantum of sales figure is immaterial.  It is rightly held by the Deputy Registrar that the respondent has discharged the onus ultimately cast upon it that there is no likelihood of confusion or deception and as such it is entitled for registration.

The reasoning provided by the Board is consistent with the principle laid down in Milmet Oftho Industries & Ors vs Allergan which makes it clear that the multinational companies who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark.

It becomes important for multinational companies to evaluate the evidence available with them to ascertain whether they would be able to establish the argument of trans-border reputation with sufficient documentary evidence. If not, then the time has come for strategic change in enforcing trade mark rights against third parties.

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