The Intellectual Property Appellate Board (IPAB) has set aside order of Joint Registrar of Trade Marks refusing opposition of Mex Switchgears Pvt Ltd against issuing trademark Kamax to German firm Kamax-Werke Rudolf Kellerman GmbH & Co, which manufactures high-strength fasteners for the automotive industry.
The German firm has filed application with the Registrar of Trade Marks to register trade mark for Kamax with the device of a screw inscribed square in respect of machines, apparatus and machine tools for treating, processing or controlling the fashioned parts and forming parts, especially hydraulic presses.
Mex Switchgears, which manufactures electrical switchgears, electric motors starter, change over switches and fuse units and isolators among others, opposed the application for registration stating that they are the registered proprietors of the trade mark Mex and the trade mark challenged is phonetically and visually similar to its trade mark and the goods are also of the same description.
Mex is a registered trade mark in respect of electrical switchgears and switches and ignition switches, electric capacitors, plugs, sockets, transformers, distribution boards and electrical circuit breakers respectively and the company has been using the same since 1960, it argued.
The Board observed that the application for registration of Kamax is filed in 1999 proposing to use the trade mark, while Mex Switchgears had been using the trade mark since 1960, and has filed sufficient proof to satisfy its claim of use since that year.
The trade mark under dispute, Kamax was only proposed to be used and therefore not distinctive nor capable of being distinguished. "It is well settled principle of law that the onus is always on the applicant to prove his case of deception or confusion. The respondent herein is the applicant for registration, has not satisfied that the registration if granted will not cause any confusion on deception," said the order.
The German firm argued that there was no similarity between the marks and the goods are different. It has adopted the trade mark Kamax from their corporate name and that they have obtained registration of the trade mark Kamax in more than 30 countries. The trade mark Kamax has acquired worldwide reputation and is identified exclusively, it said.
The Joint Registrar of Trade Marks, earlier after hearing the arguments, passed order stating that the allegation is not sustainable as the German firms' impugned trade mark is prima facie distinctive and qualifies for registration. The goods are different on the face of it, it said.
