Intellectual Property Appellate Board of India (IPAB) allowed JAGUAR opposition to the respondent’s application for the registration of trademark JAGUAR in class 14 in respect of ‘watches and parts thereof but excluding clocks’.
IPAB severely criticized Deputy Registrar of Trademarks for dismissing JAGUAR opposition against the the respondent and termed the ruling as ‘reckless and illegal conclusion without a critical analysis’.
IPAB said “…….and it is findings like these that dent the image of the Registry with its varying level of generalities and infraction of the law.”
IPAB allowed JAGUAR opposition on the following main grounds: –
1) Deputy Registrar did not appreciate that JAGUAR (appellant) trademark need not be registered in a particular class (14) to receive protection. The appellant are the prior registrant in India since 1945 for auto products. The reason for dismissing the opposition that the appellant are not registered in class 14 for watches is both illogical and fallacious.
2) Deputy Registrar has completely ignored the reputation of the appellants mark. The appellant’s mark JAGUAR is a luxury brand with extensive exposure over the years in India and world over. Changing market realities not only lead a similarity or relatedness between goods or services that would not have been considered as similar or competitive a century ago, but also contributes to the creation of new categories of confusion, to wit-confusion of sponsorship or approval; confusion of business affiliation; initial interest confusion; post sale confusion etc. In the light of this, the reasoning that the respondent were prior applicant for watches for the impugned mark JAGUAR even if factually correct is an artificially constructed and laboured justification to sneak the impugned mark into the register more particularly so once it was lawfully opposed by the appellant.
3) The finding that there is no evidence of use and advertisement is contrary to the material on record. Yes, one may infer appellants JAGUAR has not been used for watches as such but the ruling that there is no advertisement is palpably a false statement. 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.
4) Further, the inference that the respondent is prior applicant for watches is no justification to dismiss a valid opposition. Then again just because JAGUAR is a common dictionary word gives no license for any person to freely grab it for adoption and abuse without any regard to the market realities of how big that word has grown across nations. This is a good example of free riding on someone else goodwill.
5) Another laboured justification is the impugned mark co-existing in 30 other jurisdiction. We should remind ourselves that Indian IP laws including The Trade Mark Act are world class legislation by far superior to most countries and the registry should not lower its guards in granting registration to copycat.
6) Another futile justification is that there are many JAGUAR mark in the register. This is one more example to bulletproof the argument of the respondent. It only shows undue eagerness, excessive zeal and mental gymnastic exercised by the Deputy Registrar to push the impugned mark in the register.
7) Finally, the registrar has categorically ruled that JAGUAR is not well known mark in India. It is a reckless and illegal conclusion without a critical analysis and it is findings like these that dent the image of the Registry with its varying level of generalities and infraction of the law.