Indian Automobile giant Maruti Udyog Limited (hereinafter
referred to as the 'Respondent') has won a legal battle
against a piston producing company from the Indian state of
Gujarat, i.e., Maruti Piston Private Limited (hereinafter referred
to as the 'Appellant') which sought to claim trademark
rights over the mark 'Maruti'. Dismissing the appeal, the
Intellectual Property Appellate Board (hereinafter referred to as
the 'IPAB') held that no one is entitled to encroach on the
goodwill and reputation obtained by another company. The bench
comprising of the Honorable IPAB Chairman, Mr. Justice K.N. Basha
and Technical Member (Trade Marks), Mr. Sanjeev Kumar Chaswal,
stated in their order dated December 17, 2015 (made available on
February 12, 2016), that it is needless to say that the brand name
Maruti has obtained a worldwide reputation in four-wheelers and any
attempt to use the name for two-wheelers or threewheelers would
affect the reputation of Maruti.
The initial case was instituted by the Respondent against the
Appellant where the Assistant Registrar of Trademarks, had held
that the Appellant cannot register the mark 'Maruti' in
their name. Subsequently, the Appellant appealed to the IPAB which
upheld the decision of the Assistant Registrar.
Appellant's contentions before IPAB
The learned counsel for the appellant, Mr. R.R. Shah contented
The appellant using the trademark
only for pistons which could be used for two wheeler or three
wheeler and not for four wheeler
Trademark No. 405671 under class 12
of the respondent is not in existence as on date as per the status
report and the website report is produced.
The Assistant Registrar failed to
consider the special circumstances contemplated under Section 12
namely Piston not manufactured by the respondent/opponent. The
piston to be used only two wheeler and not for four wheeler of the
The appellant has regularly
participated in the world famous Auto Expo held at Pragathi Maidan,
Delhi right from the year 2004-2012 and the same was ignored and
all these special circumstances have been ignored
The respondent/opponent has not
initiated any civil proceedings for infringement or passing-off nor
issued any desist notice against the appellant herein.
The volume of evidence namely sales
particulars have been ignored by the Registrar.
The counsel for the respondent, Ms. Anju Agarwal contented
The so called special circumstances
relied by the appellant were not placed before the Registrar before
passing the impugned order and as such the same could not be relied
for the application of Section 12
Even in the application, the
appellant has specifically stated that they proposed to use the
trademark under question and as such they cannot take shelter under
The appellant/application has not
established their distinctiveness of their product and as such they
are not entitled for seeking registration of the trademark
The appellant failed to clear the
obstacles contemplated under Section 9(1), 11(1), 11(1)(b) 11(2)
Observation/Decision of the IPAB
Though the Appellant contended that they were using the mark
Maruti for a long time, they were not able to substantiate their
reputation and goodwill to establish the distinctiveness of their
products for registration. The claim that their mark was different
and dissimilar did not hold good according to the Assistant
Registrar. The Applicant's mark was similar or identical to the
Respondent's and the logo device was also same, namely the wing
device. The name of the mark makes it clear that the
Appellant's trademark is visually and phonetically similar to
the Respondent's trademark, which would certainly cause
confusion in the minds of the public who are the consumers and
users of Maruti cars.
The bench held that the brand name Maruti has obtained a
world-wide reputation with respect to the four wheelers and there
was an attempt to use the same brand name for two or three
wheelers, which would definitely affect the reputation of the
Respondent that would result in the reduction of trade of the
Respondent and dilution of their reputation.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).