 "Jaguar Cars wins appeal against Swiss watch maker in IPAB")
The IPAB's order comes in response to a petition filed by Jaguar Cars Ltd, which asked IPAB to quash a decision of Deputy Registrar of Trade Marks, Kolkata, to dismiss car maker’s opposition.
The Registrar's decision allowed the Swiss company to proceed with using the Jaguar name in watches and parts thereof excluding clocks.
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The Registrar stated Jaguar Cars has not filed any evidence of use of the trade mark 'Jaguar' for watches, there is no evidence of use and advertisement of Jaguar in India, brochure and promotional materials of the company do not evidence that they have any manufacturing facilities in India.
He also stated the car maker do not hold any registration for Jaguar in Class 14 for watches. Besides, Jaguar is a common dictionary word, both companies mark are co-existing in over 30 countries.
However,the carmaker argued in IPAB that the trademark was registered by the company on March 27, 1945 in India, the company also use the trademark Jaguar in relation to watches for the last several year, the impugned mark applied by the Swiss company is identical to Jaguar Car trademark/name and its adoption is vitiated by dishonestly with a malafide intention to trade upon and benefit from the reputation and goodwill attached to the car company's trade mark.
On Registrar's observation that the brochures and promotional materials filed by Jaguar car do not evidence that they have ‘the manufacturing facilities’ for the goods watches in India, the company stated that “....clearly proves the bias of the Registrar and is contrary to the established principles of the trade marks law. This is contrary to the settled position in law that the use of a mark may inure to the proprietor even though goods are manufactured through permitted user, common-law licensees, contact manufacturers etc”.
The company also noted that it succeeded in canceling the registration of trademark 'Jaguar' by the Swiss company in France, Singapore, etc.
However, the watch maker argued that it was the first to adopt the impugned trademark in respect of watches and the car maker have not filed a shred of documentary evidence to show use of the mark Jaguar for watches.
It also argued that the mark Jaguar is co-existing with 45 other registered Jaguar trademark in the names of various proprietors. The Swiss firm has registered the mark in 90 countries and co-existing with the car manufacturer's mark in 28 countries, it said while arguing that the prayer of Jaguar Cars is “totally untenable, unsustainable and liable to be rejected.”
Hearing Jaguar Car's petition, S Usha, vice chairman and V Ravi, technical member of IPAB passed an Order stating that “we conclude that the Registrar’s order is full of infirmities and exhibits pronounced bias necessitating the Board to step in to right a terrible wrong”.
Critising various observations of the Deputy Registrar, the IPAB order said, “The registrar has concocted a new and novel test of 'manufacturing facilities' in India to draw an inference of non-use. This is a unheard of theory in trade marks jurisprudence and almost amounts to a trade barrier not envisaged by law.”