IPAB directs Registrar to remove trademark ‘Double Coin’
A Shanghai-based tyre manufacturing company, Double Coin Holdings Limited, has won a trademark case against an Indian company, Trans Tyre (India) Private Limited, Mumbai. The Intellectual Property Appellate Board (IPAB), Chennai, directed the Registrar of Trade Marks to remove the registration of trademark ‘Double Coin’ granted in favour of Trans Tyre in 2007.
Double Coin Holdings is a leading global manufacturer of tyres and other products and distributes them in more than 90 countries. In 1930, it invented and adopted the distinctive trademark ‘Double Coin’ in respect of goods it manufactured. This trademark is registered in various countries and pending registration in India. The company entered into an agreement with ZAFCO LLC, an authorised agent, to advertise, market and distribute the products. As the authorised agent had no direct presence in the country, Trans Tyre was appointed as its representative and distributor.
According to Double Coin, despite being aware of the ownership of the trademark, Trans Tyre obtained registration from the Registrar of Trade Marks with effect from October 31, 2007. The respondent, Trans Tyre, used to purchase goods as an ordinary dealer. Thus, the association between them was purely commercial and hence it had no right over the trademark.
However, Trans Tyre contended that it was the sole registered proprietor of the trademark. It was registered by it with the consent of the authorised agent and the applicant — Double Coin. Trans Tyre also said that it had introduced the ‘Double Coin’ brand in the country. In 2006, the rights were transferred to it and the company was using it continuously. Also, it spent a huge sum of money for promotion and advertisement.
Rejecting the contention of Trans Tyre, the Board, comprising vice- chairman S. Usha and member V. Ravi, said, “Trans Tyre cannot claim to be a proprietor of the trademark and is merely a distributor. Double Coin Holdings Ltd is the proprietor of the trademark.”
“The registration cannot be allowed to remain on the registry in the name of a person/entity which is not the proprietor,” they added.