India: TATA - Principle Of Well-Known Mark Upheld

Last Updated: 24 March 2006
Article by Manisha Singh Nair

Sandyz Confezioni S.P.A, an Italy based company, filed for the registration of the trademark letters ‘ST’, which appears to be a geometrical device in respect of articles of ‘sport clothing’. TELCO, in response to the application advertised in the Trade Marks Journal, filed a notice of opposition to protest the registration of the impugned mark on the ground that they were proprietors of various trademarks consisting of the letter "T" as its essential feature and that their application for registration of "T" marks were still pending and that the said trade mark had come to be identified and associated with them.

Sandyz Confezioni’s mark was said to be deceptively similar to that of TELCO’. The registration of the impugned mark was stated to be contrary to the registration under Sections 9,11, 12(1), 18(1) and Rule 44(b) of the Trade and Merchandise Marks Act, 1958. Sandyz Confezioni refuted these arguments stating that the ‘ST’ trademark had been registered in various parts of the world. Further they contended that the channels of trade and the class of purchasers for the goods was different from that of TELCO’

TELCO in support of the opposition application filed an affidavit, which was replied vide an affidavit, subsequent to which Deputy Registrar heard the matter. TELCO confined to objections based on Rule 144(b) and Sections 9, which were overruled. The objection raised under Section 11(a) was sustained and the application filed by Sandyz Confezioni was rejected with the Opposition filed by Tata Engineering being allowed. Hence, the appeal was filed at the Hon’ble High Court of Delhi, which was transferred to Intellectual Property Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999.

Describing the two marks, it was contended that the mark of Sandyz Confezioni was totally different from that of TELCO’ and that Section 11(a) of Trade and Merchandise Marks, 1958 was not attracted. Various judicial precedents were also relied upon to state that when the goods or their descriptions are different, there cannot arise any confusion or deception and such a mark may be registered.

TELCO in response to this argument contended that the ‘T’ mark was their house mark, was protected and was in use for a considerably long period of time for all their goods including Road Transport vehicles. They contended that with this mark they were able to build high reputation and goodwill. Contending that both the marks were identical and as such could not be registered in view of the Delhi High Court judgment in Daimler Benz’s case.

The Tribunal considering the contentions of the two parties arrived at the conclusion that the two marks though dissimilar, there did not exist difference so as to make the appellant’s mark a distinctive one from that of TELCO. The difference in the Marks was noticed not on bare look but the same was visible on straining. However, one should not strain to differentiate or distinguish the trademark. The Tribunal was of the view that both the marks are almost similar and there is not much difference to make Sandys’ Mark a distinctive one from that of Tata.

Further the contention of Sandyz Confezioni of being in a different trading channel and that their goods were different from that of TELCO’ and consequently there arose no chance of confusion or deception was considered by the Tribunal. Sandyz Confezioni having no sales in India and with registered marks in other countries did not entitle them to evidence with regard to any trade reputation or good will acquired. The Tribunal held that TATA having established its goodwill and reputation all over India naturally was entitled to protect its Mark and if the impugned Mark is registered as the sport-wear mark it will lead to confusion and deception in the minds of the public as the proprietor of the goods. The Tribunal reiterated the Benz Case and Honda Case held that the Deputy Registrar was right in rejecting the application for registration of the impugned mark and allowing the Opposition.

© Lex Orbis 2006

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