22 May 2015

Trans-border reputation of trade mark

The IPAB has held that mere filing of applications or obtaining certificates of registration for the impugned trade mark from some countries will not be sufficient to establish trans-border reputation. The applicant (for rectification), an overseas supplier of handcrafted beds alleged that the respondent had registered the trademark by dishonest adoption and wanted to take advantage of the tremendous goodwill enjoyed by the mark. The applicant (HYPNOS Ltd) sought to prove that the mark was used in India in luxury hotels but did not furnish certified copies of sales reports and actual proof of sale in other countries.

The respondent (Hosur Coir Foam Pvt. Ltd.) argued that a mark will be considered well known only if it is known to substantial segments of consumers. Observing that the suit for passing off is different from opposition proceedings, the IPAB on 16-4-2015 held that the applicant for rectification had not discharged his onus in removing the registered trademark. The fact that the applicant had also applied for the mark as label mark ’proposed to be used’ without evidence of intention to use did not help its case.


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