Trademark Case Brief – Tata Chemicals Limited Vs. Deputy Registrar of Trade Marks

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Citation – 2003(27) PTC 422 (DEL)

Facts: There was a dispute regarding proprietary rights over the trade mark ‘TATA’ which defendant stated was assigned to M/s Tata Pressure Cooker Manufacturing Company and was being used by the company from 1981. The D then filed for an application for registration of trademark in the year 1994 and the application for registration was opposed by the plaintiff House of Tata.

Procedural History:
Application for registration was filed by the Tata Pressure Cooker Manufacturing Company and opposition has been filed by M/s Tata Chemicals Ltd. challenging the impugned order passed by the Registrar of Trade Marks whereby he had allowed application for registration filed by in both the petitions and had disallowed the objections of the House of Tata. The same order has been challenged in this case.

Issues:
1)
Whether the P could use the trade mark TATA to sell pressure cooker?
2) Whether P could then be given registration for the trade mark TATA?

Holding:
The court held that TATA was the trade mark of the P group since the word TATA is a household expression. Since the P group had considerable of reputation, accrued to the trademark TATA, the use of an identical trade mark would cause confusion and deception. Since the Defendant had no evidence to prove he was an honest concurrent user, the application for registration of trade mark was quashed.

Rationale:
§ The P proved that House of Tata was in existence since the 19th Century founded by late Sir Jamshed Ji Tata. Since the name TATA was not descriptive it had limited protection under trade mark act of 1991 unless P could prove that it acquired distinctiveness.
§ The P could prove that manufacturing activities of the House of TATAS touched almost every aspect of day to day life from edible products to household products, automobile and computers.
§ The trade mark TATA is a “well known” trade mark and is exclusively associated in the minds of the public with THE HOUSE OF TATAS. By the year 1981, the House of TATAS had become a household name and various products under the mark TATA’ were available in every nook and corner of this country.
§ P showed that House of Tata consisted of over 50 companies, out of which, about seven are overseas companies and had an annual turnover of approximately Rs. 16,000/- crores.
§ P was able to prove that D company’s products were likely to deceive or cause confusion, and their trade mark was colourable imitation of the mark of the P.
§ Even though D showed evidence of user and reputation in respect of pressure cookers sold by them since 1981, their mark does not qualify for registration because TATA was not the surname of partners of the D company. How these persons picked up the word TATA as their trade mark remained a mystery.
§ Section 12 of Trade Marks Act, 1991 states that in a special circumstance the Registrar would allow one or more proprietor to use the same trade mark if the applicant for registration can prove he is an honest concurrent user. Even though the D used the trademark since 1981 he cannot register his trademark as it was not an honest user and the taint could not be purified by continuous user.

Rule:
The term “well-known trade mark” refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
Any trade mark with the status of a “well-known” substantially improves the extent of protection available to it, as it provides the owner of the brand, the exclusive right to the trade mark against all unlawful users, regardless of the differences in the field of business, goods or services. To make action successful, it is required to be established that the adoption of the brand by the unauthorized users is mala fide and without due cause.

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