Multinational corporations are very sensitive towards their intellectual property portfolio. Their worth is in the number of patents, trademarks, design and other IP proprietary rights they own. With respect to trademarks, it is not unusual to know that their distinctive marks are registered in different jurisdictions across the globe. This step whereas gives their trademarks the protection it needs, also brings with itself litigations galore.
Tiny enterprises tend to adopt famous/well-known marks as it is on their products or intermingle with other features of their label to depict an adventitious operation. This keeps the MNCs on their toes to scan journals from intellectual property registries and other sources to defeat the unsavory motives of free riding on their products hard-earned reputation and goodwill by initiating opposition proceedings against the application for registration. In the instant case A.B.Textiles versus Sony Corporation 2007 (35) PTC 288 (Reg.), Sony Corporation is in opposition to the applicants application for registration of its label trademark ‘ABT SONY’ in respect of undergarments for ladies.
The impugned mark is a label mark having stylized letters ‘ABT’ and the word ‘SONY’ which is in use, continuously and extensively, in certain territories of India since 1998. Its registration is opposed on the ground of deceptive similarity to the rival mark ‘SONY’ which is a well-known mark in respect of electronic goods and also as the mark is registered in respect of boots, shoes, hats, jackets, shirts, trousers and uniforms (Class 25). After completion of leading of the evidences, the matter was heard to be decided in favour of the applicant.
The balance of convenience was found to be in favour of the applicants in the absence of any instance of confusion or deception brought to the notice of the tribunal by the opponent with regard to the applicants use since last more than nine years. The adjudicator also pointed out that the opponents in spite of the registration in class 25 have not produced any evidence of such use for the goods as per their registration; the Opponents are mainly using their trademark for electronic goods.
Also taking into consideration instances, where an identical mark ‘SONY’ has been granted registration in India itself and which has been approved by the Hon’ble High Court like ‘SONY’ for nail polish and ‘SONY’ for frames and spectacles and goggles on evidence of distinctiveness and many other instances where identical marks have been granted registration in spite of the registration of reputed marks like ‘EVEREADY’, ‘HERO’, and ‘BRIDGESTONE’, the tribunal took the view that there will be no likelihood of any confusion and deception during the course of the use of the impugned mark. However, considering the evidence of ‘use’ and other surrounding circumstances regarding the mark ‘SONY’, it was ordered that the application shall proceed on two conditions viz. the goods to read as “undergarments for ladies for sale in the States of West Bengal and Assam only” and the use of the whole impugned label as one trademark.
It can be inferred from the order that in spite of giving green signal to the application for registration of the impugned trademark, the adjudicator, in imposing conditions regarding its use, is in consonance with the importance and protection due to the well-known marks.
This case is also significant from the point of view of trademark prosecution. Application for registration of trademarks having elements of famous/well-known marks, on the question of likelihood of confusion or deception, may be assessed about the psychological reaction and mental association the mark will generate in the mind of an average customer when he buys the goods under normal circumstances and condition of the trade.
The following factors are relevant for consideration for deciding the question of deceptive similarity or likelihood of deception or confusion during the course of the use of the mark applied for registration –
- the nature of marks, i.e. whether they are words, coined or descriptive or non-descriptive, surname or geographical name, devices, letters or numbers or numerals or a combination of two or more of the above,
- the degree of resemblance between the marks and essential features i.e. similarity in phonetic, visual and in idea,
- the nature of the goods in respect of which they are used or likely to be used as trademarks,
- the similarity in the nature, character, and purpose of the goods of the rival traders,
- the class of purchasers who are likely to buy the goods bearing the marks, their level of education and intelligence, and the degree of care they are likely to exercise in purchasing the goods,
- the mode of purchase of the goods or of placing orders for the goods,
- any other surrounding circumstances.
These factors are not to be treated in isolation. The weight to be attached to one factor may often depend upon the relative importance of other factors.
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