Who would have thought Scott Fitzgerald’s Gatsby, a fictional character portrayed as a decadent dandy in the 1920s, will leave an ‘intellectual’ legacy to fight over? No, it was not an argument between two writers for naming the protagonist in their work after the character. Rather, it was a long drawn-out turf battle between two perfume manufacturers over a trademark named after the F. Scott Fitzgerald’s The Great Gatsby .
The dispute has now came to an end with the Intellectual Property Appellate Board ruling in favour of Mumbai-based Fem Care Pharma Ltd, while dismissing the application filed by Mandom Corporation, a Japanese company.
Mandom Corporation is engaged in manufacturing and trading in cosmetics, perfumeries, toiletries and hair care products. It approached the IPAB, Chennai, to remove Fem’s trademark ‘Gatsby’, contending that Mandom had been continuously using the mark in the domestic market since November 1998 and in the international market since 1978.
Fem Care claimed that the mark owed its origin to Fitzgerald’s novel..
In 1994, Fem Care’s managing director, Sunil Pophale, conceived the idea of Gatsby as a trademark in respect of the company’s perfumeries and toiletry business. In 2003, the mark was registered in its name.
Dismissing the Japanese company’s application, the Board comprising its vice-chairman S. Usha and its member V. Ravi said, “Details and exhaustive explanation for adoption of the mark by Fem appear to be reasonably justified and convincing.”
Noting that it could give rise to the suspicion that the trademark had been copied, the Bench said, “Suspicion alone cannot be the basis to oust a registered trade mark. There is not a single bill, invoice or documents of any sort to show that Mandom’s mark ‘Gatsby’ was in use or even available in India prior to 2003”.
