SONY in the name of third party allowed trade mark registration for ladies undergarment

Sony Corporation seems to be having a nightmare of sorts in protecting its brand SONY from third person violation. If the fact that SONY for “nail polishes” was not held to violate the rights of “SONY” of Sony Electronics (see AIR 1985 Bombay 327) was used as a precedent by another Indian trader to defend the mark SONY for “frames for spectacle and goggles” from Sony Corporation (see 1989 IPLR 92). In both these cases, Sony Corporation failed to prove that their mark SONY was well known and therefore should be protected across classes.

Both the above cited cases happened in 1980s and Sony Corporation must be thinking that now with passage of new Indian Trade Marks Act, 1999 on September 15, 2003, which gave statutory recognition to well known trade marks, they can safely battle out any third parties violating their rights.

This was not to be. In the case of AB Textiles v. Sony Corporation 2007 (35) PTC 288, Sony Corporation could not defend the use of the trade mark SONY by AB Textiles for ladies undergarment in Class 25 despite having prior, valid and subsisting registration for the mark SONY in Class 25. The Registrar while deciding the case against Sony Corporation relied upon the following factors:

(a) The Opponents(Sony Corporation) have not adduced any evidence in support of their use in class 25 despite having registration in the same class.

(b) The Opponents are mainly using the mar SONY for electronic goods;

(c) AB Textiles have been using the mark SONY for ladies undergarment since 1998 continuously and extensively in the States of Assam and West Bengal;

(d) There has bee not a single instance of confusion and deception that has been brought to the notice of the Tribunal by the opponents.

(e) The above-stated two cases serve as precedents and instances where identical marks have been granted registration. The Registrar also relied upon where BRIDGESTONE was allowed registration in relation to “bicycle parts other tyres an tubes” against opposition by the registered proprietors of the same mark for heavy vehicles, tyres and tubes (see FAO (T& M) 156-D/1963 (Delhi) p. 154);

(f) SONY is not an invented word, but is a “feminine name” as well as a surname in India.

The important lesson one can learn from this case is that if any company, foreign or Indian, looking to protect their mark across classes based upon their well known status, should first of all start collecting evidence which will help them defend their case. It is easier said then done, but it also better then getting an adverse decision.