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.

Well known trade mark cases in India

I am just trying to compile all the cases that speak about well known trade marks and trans-border reputation I am just commencing the process and will give it shape over a period of time


N.R. Dongre v. Whirlpool Corporation reported in 1996 (16) PTC 583

Milmet Oftho Industries and Ors. Vs. Allergan Inc. 2004(28)PTC585(SC).

Austin Nichols & Co. & Anr V. Arvind Behl & Anr 2006 (32) PTC 133(Del) where the High Court of Delhi restrained the Defendants from using the trade mark “BLENDERS PRIDE” for “alcoholic beverages including whisky or any other allied goods thereof” and it was held that the Defendants, merely by virtue of their obtaining registration in India prior to the registration by the Plaintiff do not acquire “first past the post” rights and such registration would not hold good.

Mercedes Benz case

WIPO case No. D2000-0049: tata wins domain name case. http://cyberlaws.net/cyberindia/tata.htm


1
Manu Kosuri & Ors
(Re: various domain names)
159 of 1999
Permanent injunction granted against the defendants from using the domain names jrdtata.com, ratantata.com, tatahoneywell.com, tatayodogawa.com, tatateleservices.com, tatassl.com, tatapowerco.com, tatahydro.com, tatawestside.com, tatatimken.com or using any mark which comprises Tata or any other identical or deceptively similar mark.

Permanent injunction granted on March 9, 2001.


2
Windals Auto & Another
(tatasons.com)
2615 of 1999
Defendants agreed to transfer the domain name to Tata Sons Limited; entered into a settlement agreement. The suit has been decreed in such terms.

Final order passed on February 8, 2002.


3
Domain
(tatapower.com)


2001-0627
Complaint withdrawn as the registrant voluntarily transferred the domain name to the complainant, Tata Sons, in August 2001.


4
Shahid Tanvir
(tata.ws)
2001-0002
Complaint withdrawn as, subsequent to the filing of the complaint, the registrant gave up the domain name. The domain name was then registered in the name of Tata Sons Limited.


5
Hasmukh Solanki
(tataamex.com, tata-amex.com and amextata.com)
2001-0974
WIPO ordered transfer of domain names in favour of Tata Sons Limited.

Final order passed on September 25, 2001.

Tata Sons Limited versus Chitra Pendse.tata.org