PRINCIPLES OF ‘PRIOR ADOPTION AND USE’ VIS A VIS TRANSBORDER REPUTATION: JONES INVESTMENT CO V. VISHNUPRIYA HOSIERY MILLS

In the recent decision of the Intellectual Property Appellate Board (IPAB) in the case of Jones Investment Co v. Vishnupriya Hosiery Mills, it was held that a multinational company cannot claim infringement of trademark by a local Indian company purely based on international presence unless they can expressly establish that their presence extends to India or precedes that of the Indian company.

Facts of the case:

The appellant in this case is the Jones Investment Co. an American company that is engaged in the business of apparel, hosiery, footwear, etc. and uses the Trademark ‘Jones New York’ internationally thereto for the aforementioned goods. On the other hand, the Respondent is the Vishnupriya Hosiery Mills, a textile firm based in Erode, Tamil Nadu. The respondent applied for the registration of the trademark ‘Jones’ for their textile products. This application was opposed by the appellant and in the adjudication of the same Deputy Registrar of Trademarks dismissed the notice of the opposition on 9^th March 2010. Thus being aggrieved by the decision of the Deputy Registrar, the appellants preferred this appeal in IPAB.

Arguments on behalf of the Appellants:

The counsel for the appellants mainly relied on two contentions inter alia. First, that the appellants had been using the mark ‘Jones New York’ since 1966 and thus they had acquired an international reputation in the same. Further, it was also contended that the appellants had registered their trademark in India since 1997. Therefore, the registration of the trademark with respect to the same goods under the name ‘Jones’ by the respondent would cause confusion and would deceive the consumers.

Secondly, it was contended by the appellant that the respondent has not shown any substantial sale of their goods by using the impugned trademark and the Deputy Registrar also pointed out that they have produced the only meager sales. As such the respondent cannot claim reputation among the public in respect of their goods using a similar trademark as adopted by the appellant. Also, it was contended that in view of the development of technology and communication the respondent cannot claim the ignorance of the international reputation of the appellant’s mark.

Arguments on behalf of the Respondent:

The counsel for the respondent submitted that the main issue involved in the case is that whether the appellants have established their use of trademark ‘Jones New York’ in India on the date of the application filed by the respondent before the Registrar for the registration of the impugned trademark. And in response, it was contended that to date the appellant is not using the trademark ‘Jones New York’ in India. Therefore the question of transborder reputation of the appellant’s marks need not arise at all. The learned counsel relied on the decision of the Hon’ble Supreme Court in Millet Oftho Industries & Ors vs. Allergan Inc reported in 2004 (28) PTC 585 among other cited cases.

Judgment:

IPAB at the outset stated that it is undisputed that the appellant to date is not using their trademark ‘Jones New York’ in respect of their goods in India and it is their categorical statement that they proposed to use the same in India. The appellants failed to prove the use of the alleged trademark since 1966 as they have filed their documents only from the year 1997 whereas the respondent has proved their claim of use of the trademark since 1993 by producing relevant documents to substantiate their claim. Thus the question of confusion or deception need not arise.

The IPAB relied on the decision of the Hon’ble Apex Court in Milmet Oftho Industries & Ors vs Allergan Inc. which is squarely applied to the present case that the multinational companies who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark.

Further, the IPAB upheld the observation of the Deputy registrar that when the respondent is prior in adoption and use in India, the quantum of sales figure is immaterial. Thus the appeal was dismissed by IPAB with no order as to cost.

Conclusion:

The IPAB compared the facts and relied on Milmet and held that this was also a similar situation where the appellant company had no sales whatsoever in India under the trademark ‘Jones New York’. Therefore, the appellant does not have any ground to ‘throttle’ the Indian business. Here it is pertinent to note that this was adjudicated only for the reason that the Appellants did not provide evidence to show that they had an established international reputation prior to 1997, whereas on the other hand the respondents substantially their presence in India since 1993. The operative test, therefore, in such cases is merely who is first in the market. Thus the IPAB has held in favor of the small firm like Vishnupriya Hosiery and against the big corporation solely in the interest of justice, equity and conscience. And if IPAB had held otherwise, it would lead to the growth of multinational corporations at the cost of small firms which is undesirable.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates, and IP Attorneys and can be reached at [email protected]