India: Trademark Opposition in India

The Trademark law provides that a mark shall not be registered if it is identical with or similar to the earlier trademark even though it is to be registered for goods or services, which are not similar to those for which the earlier mark is registered, if this earlier trademark is a well known mark and the registration of the mark would be detrimental to the reputation of this well known mark.

The recent case of Sony Corporation V. Jasbir Singh Kohli & Anr. 2005 (31) PTC 486 (IPAB) dwells on registerability of marks in India that are identical or similar to a well-known trademark. The Trademark Act, as amended in 1999, makes registration of a mark that is identical to a well-known trademark, even with respect to a different class of goods, a relative ground of opposition.

The respondent Jasbir Singh Kohli filed an application for registration of their mark "SONICO" in respect rubber bushes for the use in automobiles included in class 12. The first and the last letter of the impugned mark were in bold and double the size of rest of the other letters. The marks "SONY" and "SONYCO" of the appellant Sony Corporation were registered in respect of goods in class 9. Sony filed an opposition to the registration of the mark "SONICO" which was disallowed by the Registrar interalia on the ground that the impugned mark is an inventive word and so there could be no reference to the quality of goods. According to the Registrar as the impugned mark is visually and phonetically different from the trademark of Sony, objection on the ground of deceptive similarity or likelihood of confusion in the minds of the consumers, cannot be maintained. Further, the goods specification of the mark sought to be registered is different from that of the Sony’s mark, and so the objection under Section 12 was not maintainable.

Aggrieved by the decision of the Registrar, Sony filed the instant appeal. In the appeal, it contended that its mark "SONY" has acquired immense global reputation and goodwill. The mark has been extensively used with respect to the electronic goods and is also the trading style of Sony Corporation. As "SONY" is a well-known trademark, use of the identical mark by any other person would dilute the reputation of the mark, which cannot be permitted. On the other hand Jasbir Singh kohli contended that since the impugned mark is with respect to a different class of goods, the question of confusion in the minds of prospective consumers does not arise. He also drew out the visual and phonetic dissimilarities between the two marks to sustain the claim to registration of the impugned mark.

The Board was of the opinion that the international reputation and tremendous goodwill of the mark "SONY" is irrefutable and as such has also not been challenged. The Board then compared the marks "SONICO" and "SONY" to identify the dissimilarities between the two marks. According to the Board, the prefix ‘CO’ of the impugned mark is a general term that can be used by anyone. Apart from this, there is no difference between the two marks. Therefore, both the marks are identical.

The Board outrightly rejected the contention of the respondents that as goods specification of the two marks is different therefore the impugned mark is not likely to cause confusion among the consumers. The Board held:

This case upholds the internationally recognized and well-entrenched principle of the trademark law that ‘a mark should not be allowed to take unfair advantage of an earlier trademark and that no one should be permitted to trade on the goodwill of another’. This decision is also in keeping with the past decisions of the Courts and the Appellate Boards where the registration was denied in the face of the international reputation of the registered trademark.

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