Just because a mark happens to be a common dictionary word, that is no licence for anyone to freely grab it for adoption and abuse. This was the ruling given on Tuesday by the Intellectual Property Appellate Board (IPAB), Chennai, on a trademark dispute between an English manufacturer of luxury cars and a Swiss watchmaker.
Setting aside an order by the Deputy Registrar of Trademarks in Kolkata, the IPAB, comprising its Vice-Chairman S. Usha and Member V. Ravi, ruled in favour of England’s Jaguar Cars, which had objected to the application of Swiss company Manufacture des Montres Jaguar to register the trademark ‘Jaguar’.
The IPAB said the “Registry should not lower its guard in granting registration to a copycat,” while rejecting the application of Manufacture des Montres Jaguar.
In 2006, while dismissing the opposition of Jaguar Cars, the Deputy Registrar in Kolkata said it had not filed any evidence of using the trade mark ‘Jaguar’ for watches in India and it used the mark sparingly for clocks fitted to the dashboard. The mark ‘Jaguar’ was a dictionary word, and, hence the Registrar said Jaguar Cars should not claim exclusive monopoly right in respect of totally different goods. Aggrieved over the order, Jaguar Cars filed the application before the IPAB to refuse the Swiss company’s application for registering the Jaguar trademark for watches and parts thereof, but excluding clocks.
Jaguar Cars said its earliest registration for the mark ‘Jaguar’ dated back to March 27, 1945 and had been using the mark on watches for the last several years. A range of its products is distributed through a wholly owned subsidiary including watches and sunglasses. By virtue of long-standing global use and publicity in respect of automobile goods, it became a well-known mark among the public. The mark has also been recognised by various judicial authorities. The mark applied for by Manufacture Des Montres Jaguar is identical to its mark, the company contended.
Des Montres Jaguar also claimed ownership of the mark ‘Jaguar’ for its watches in various countries. Pointing out that various courts around the world had decided in its favour, the Swiss company said the competing goods — watches and cars — were completely dissimilar and never sold through the same outlets and were unlikely to be associated with the goods of the appellant.
Disposing of the application of Jaguar Cars, the IPAB observed that the Registrar’s order was full of infirmities and the conclusion that ‘Jaguar’ was not a well-known mark in India was “without critical analysis.”
Holding that the Deputy Registrar had completely ignored the reputation of Jaguar Cars’ mark, the Board also pointed out that “Jaguar Cars is the prior registrant in India since 1945 for auto products. Forty-six years later another entity seeks protection of the same mark in another class for watches. The mark ‘Jaguar’ is a luxury brand with extensive exposure over the years in India and world over.”