Murugappa Group’s arm Tube Investments of India Ltd. has won a trademark case against Malaysia’s BSA Group Sdn Bhd.
The company had moved a petition before Intellectual Property Appellate Board (IPAB) against the similar registration of trade mark BSA by the Malaysian firm.
Tube Investments noted that the company has been the prior user and the exclusive owner of the mark BSA for over five decades. The Malaysian group had secured the similar mark on August 2000, with the user claim since 1999, it added.
The Malaysian firm used BSA mark for wheels, vehicle hubs, rims, tyres, parts and fittings for vehicles and Tube Investments said it came to know about it through an online search for similar or identical marks in January 2009. Tube Investments alleged that the Malaysian firm had obtained the trade mark registration in bad faith and with the mala fide intention to cash in on the hard-earned goodwill and reputation of TI’s BSA, and therefore the latter does not have any ‘imaginary right’ over the BSA mark.
‘Would cause confusion’
It stated that the registration of identical mark is bound to cause confusion among the public. The Murugappa Group said it was the registered proprietor of trademark BSA and has more than 25 registrations in India.
“The mark is registered in five countries outside India. It has been used in respect of bicycles parts and fittings thereof for the last more than five decades…. etc. The sales figures and sales promotions figures of the cycles bearing the mark BSA runs into several crores of rupees,” Tube Investments said in its petition.
The IPAB noted that the Malaysian firm never made use of the impugned mark BSA on a commercial scale continuously in India in respect of the goods for which the mark is registered. In its order, the IPAB ordered the removal of the Malaysian group’s mark from the Register.