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
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
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
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
"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
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
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