How robust is automotive brand protection in India?
Bisman Kaur and Raashi Jain of Remfry & Sagar discuss how key judicial decisions have shaped trademark protection in India’s automotive industry
This article looks at how robust a protection is available to auto brands in India – the world's fourth largest automotive market. Plus, it analyses how decisions involving such brands have shaped overall trademark protection discourse in the country.
The registration and protection of trademarks is governed by the Trade Marks Act, 1999, which in a nod to India's common law heritage, also states that unregistered trademarks may be protected through a passing off action.
Regardless of registration, since India is a 'first to use' country, in case of a dispute between two trademark owners, use of a mark is always a key factor. Also, trademarks can be filed on an intent-to-use basis (the threat of cancellation only arises post a contiguous five-year period of non-use post registration), which aids brand owners eyeing the Indian market but shy of product launch. And given that leading automobile brands are well reputed, it is relevant to mention that well-known trademarks are recognised explicitly under the current law, with a procedure to have a trademark declared as 'well-known' and entered as such on the Trade Marks Register.
In 1993, Indian statutory provisions did not recognise well-known marks and Daimler Benz was still a year away from selling its cars in the Indian market. When it discovered that its trademark 'Benz' and 'three-point' star (albeit represented by a human form) were being used by an Indian entity with respect to 'undergarments', a suit for infringement (Daimler Benz AG v Hybo Hindustan, AIR 1994 Delhi 239) was filed.
Very significantly, acknowledging the 'worldwide repute' enjoyed by the famed trademark 'Benz', the judge gave judicial recognition to the concepts of well-known marks and dilution. An injunction was issued and it was stated that unauthorised use of such a famous mark in connection with unrelated goods could not be allowed to continue.
“The concept of ‘transborder reputation’ has come under some strain.”
Another significant case is M/s Jaguar Cars Ltd v M/s Manufacture Des Montres Jaguar SA and Deputy Registrar of Trademarks, M.P. No. 53/2008 in OA/21/2008/TM/KOL. Here Swiss watchmaker Manufacture Des Montres Jaguar, SA sought to register the mark 'Jaguar' in India for 'watches and parts thereof' (Class 14 goods) – its Swiss registration for this mark dated back to 1945 and it was actively using the mark in several jurisdictions.
Jaguar Cars Ltd, owner of over 800 'Jaguar' trademark registrations across the world, the first dating back to 1943 in the UK, filed an opposition. Dismissing the opposition, the Registrar of Trade Marks opined that though the car maker had a prior Indian registration for 'Jaguar', it was a Class 12 registration, and there was insufficient evidence of Jaguar Cars using the 'Jaguar' mark for watches in India – it appeared to have used the trademark only in respect of 'clocks fitted to the dash board of their cars' and that too sparingly.
In an appeal filed before the Intellectual Property Appellate Board (IPAB), the IPAB stated that the extraordinary evidence of fame on record established that the mark 'Jaguar', owned by Jaguar Cars, was recognised as a leading luxury brand in India. There was also clear evidence to show that 'Jaguar' was being used by the car maker in respect of watches and in such circumstances, its lack of an Indian registration for Class 14 goods could not be a determinative factor.
In a decision which set aside factors such as alleged co-existence of the rival marks in other jurisdictions and the argument that 'Jaguar' was a common dictionary word, the IPAB allowed the opposition blocking Des Montres' application for 'Jaguar'.
Territoriality v universality
Both decisions highlight the importance of being able to prove brand reputation in India. That said, Indian judicial practice has echoed a worldwide trend in recognising that such reputation need not arise through a local presence of goods, it could also 'spill over' from another jurisdiction, for example, through advertisement. This principle is particularly useful when it comes to protecting well-known marks that may not have a strong market presence in India (such as the Benz mark in 1993).
However, the concept of 'transborder reputation' has come under some strain post the Indian Supreme Court's 2017 ruling in Toyota Jidosha Kabushiki Kaisha v M/s Prius Auto Industries Ltd & Ors (Civil Appeal Nos. 5375–5377 of 2017) involving the auto mark 'Prius'. Here the court held that "advertisements in automobile magazines, international business magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet" were insufficient to establish goodwill and reputation in India.
Evaluation of evidence is always a subjective exercise – still, the Prius judgment espousing territoriality attracted surprise. However, previous Supreme Court rulings given by benches of equal strength have interpreted transborder reputation broadly and one is optimistic that reputed brands will likely to be able to defend against misuse in India provided they can build a strong case based on well-documented evidence of use and goodwill.
Illustratively, in a recent case argued by Remfry & Sagar, the Delhi High Court quickly ruled in favour of famed auto brand 'Goodyear' based on an Indian trademark registration in class 12 since 1943 (and use in India since 1920); Goodyear being one of the world's largest tyre companies whose products were widely available in India; and net sales in India for the year 2014–2018 under the said mark being in excess of $1 billion.
The May 3 2021 order stated 'Goodyear' was prima facie a well-known mark and despite the defendant allegedly using the said mark for 'brake oil, grease, gear oil' (Class 4 goods) since 1997 and possessing a 2002 registration for the same, the defendant's use was tantamount to infringement. Accordingly, an interim injunction was issued restraining the defendant from any further use of the 'Goodyear' mark.
Remfry & Sagar
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Bisman Kaur is an of counsel at Remfry & Sagar. She is a trademark attorney with extensive experience in advising clients on the adoption and protection of brand names. She has strong knowledge of the finer nuances of the assignment and licensing of trademark rights. Her awareness of trademark law and policy aside, the dual aspects of her practice lend her broad knowledge of developments across the entire IP spectrum.
Having been associated with the firm since 2002, Bisman handles all media outreach, communications and publishing activities at the firm. She is the editor of the firm's newsletter – and ensures that clients and associates are kept updated on the latest IP news from India, as well as happenings at the firm's office.
Bisman is the point of contact for events and conferences that the firm participates in throughout the year, including its own 'Remfry's IP Seminar' and the BRICS IP Forum. Over the years, she has spoken at seminars and authored numerous articles on various IP subjects.
Remfry & Sagar
T: +91 124 280 6100
Raashi Jain is a senior associate at Remfry & Sagar. She has extensive knowledge and experience in IP contentious and non-contentious matters.
Raashi's practice focus is primarily trademark prosecution and opposition, as well as design prosecution. She advises Fortune 500 companies, multinational corporations, small and medium-sized enterprises and technology start-ups on various issues connected with securing and protecting their rights. She has authored several articles and papers in leading IP publications.
Raashi holds a law degree from the University of Delhi.