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 9th 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 Abhijeet@khuranaandkhurana.com

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

  1. Dear Sumitra,

    Thanks for the comment. We appreciate your point of view, but as we understand from the IPAB decision, although the appellants had registered their mark in India in 1997, they did not provide cogent evidence to prove that they had an established international reputation prior to 1997, and the respondents were able to prove that they had a presence in India since 1993. Even in Milmet case, it was held that, had the international company acquired a reputation prior to the adoption of trademark by the Indian company, it would be immaterial whether the former had a presence in India and it could validly proceed against the Indian company. The operative test, therefore, is merely who is first in the market.

    The Apex Court in Milmet case had held-

    “Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market”

    Comparing the facts of Milmet and the present case, IPAB concluded that this was also a similar situation where the appellant company had no sales whatsoever in India under the name ‘Jones New York’. Therefore, the appellant does not have any ground to ‘throttle’ the Indian business.

    We feel the judgement is in conformity with the decision of Hon’ble Delhi High Court in the case of Roca Sanitario S.A. vs. Naresh Kumar Gupta & Anr, pronounced on 15/03/2010, where the facts were more or less similar.

    Please let us know your views.

    Warm Regards
    Abhijeeet

Leave a Reply

Your email address will not be published. Required fields are marked *

twenty − 3 =

Archives

  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010