Creativity in trademarks is the key
to successful trademark registration as well as gaining recognition
among the consumers. While it is important that a mark should
represent the Company/proprietor, it is also necessary that the
name should be distinctive enough to not be copied. An arbitrary or
fancy mark tends to have a stronger protection because in the event
that a third party copies the same, it will be difficult to justify
such adoption. In the case of Datamatics Global Services
Limited vs Royal Datamatics Private Limited, the consequence
of adopting an unimaginative mark was borne by the Plaintiff. The
Plaintiff (Datamatics Global) was running its business, in 1975,
under the name ‘Datamatics’ which it claimed to be a
coined word and therefore, exclusive to the Plaintiff alone.
Further, the Plaintiff submitted that it had registered the
trademark ‘Datamatics’ in classes 35 and 42. The
Plaintiff, in 2013 became aware of the Defendant’s presence
and sent a cease and desist notice; on failure to receive a
positive response from the Defendant, the Plaintiff filed a
trademark infringement suit.
The Defendant claimed that the word
‘Datamatic’ was ordinarily used in relation to IT goods
and services and that close to 50 Companies had Datamatics as a
part of their corporate name. This argument was accepted by the
Bombay High Court; it was observed by the Court that the mark was
an obvious combination of the words ‘Data’ and
‘Matic’. Interestingly, the Court also relied upon the
class of consumers to whom the goods and services were directed. It
was held that since the consumers purchasing IT goods and services
constituted a knowledgeable class, they would make choices on the
basis of the “specialized services offered by the service
providers rather than the word ‘Datamtics’”
alone. Also, the fact that the Defendant had applied for
registration of the mark ‘Royal Datamatics Pvt. Ltd.’,
as a whole, rather than ‘Datamatics’ was seen in
favorable light by the Court. In its parting words the Court stated
that the Defendant had been operating under the said corporate name
for 19 years therefore, granting a temporary injunction in favor of
Plaintiff would be harmful for the Defendant. Thus, the Court did
not grant an injunction to the Plaintiff.
This case throws light on the
importance of IP vigilance for Corporates; simply registering
trademarks does not make the corporate houses immune to any
potential infringement. It is necessary that Companies, act
vigilantly and immediately take action against any entity that may
be treading upon their IP rights.
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).