The Intellectual Property Appellate Board (IPAB) has held that Japanese electronic major Sony has the right to safeguard its brand name in other classes as well, as the tribunal cannot ignore the spillover effect of goodwill and reputation of a well known mark that travels across the borders and across all type of goods.
The IPAB bench, after hearing an appeal by Sony, has issued an order refusing the registration of a trademark, 'ABT Sony', to a Kolkata-based firm. AB Textiles was given the registration ABT Sony in July 2007 by the deputy registrar of trademarks, Kolkata, under Class 25 — for its brand of undergarments.
Aggrieved by the order, Sony moved IPAB against the decision that permitted AB Textiles to register the trademark. The registrar had also rejected Sony's opposition to it while giving the go-ahead to AB Textiles.
Coming down heavily on the deputy registrar, the IPAB bench, consisting of S Usha, vice chairman and V Ravi, technical member (trade marks), said the error was in holding that appellant (Sony) had been only dealing in electronic goods — ignoring the spillover effect of goodwill.
The deputy registrar, while allowing the trademark to Purushottam Agarwal and Ashok Agarwal, trading as AB Textiles, had ordered that it should proceed further only with goods such as undergarments for ladies for sale in West Bengal and Assam only.
The IPAB bench said: "We are amazed at how far and to what extent the learned deputy registrar laboured with his analytical rigour to justify his decision to extend statutory protection in favour of the respondent (AB Textiles). But the devastating negative impact that such rulings send a wrong signal to the international business community and give needless opportunity for elements inimical to the country’s IPR interest to fingerpoint the absurdity of such decision.”
The bench said that while the registrar analysed decisions favourable to the respondent, he maintained a studied silence on the citations relied on by the appellant.
The essential features of the respondent mark ABT Sony include the whole of appellant mark Sony with 'ABT' used as a prefix in conjunction with Sony which is merely an alibi. “The public and consumer will ask for Sony garments and not 'ABT' possibly thinking it originates from Sony trademark owners,” the bench said. Sony argued before the IPAB that the company is a registered proprietor of the trademark Sony in India in five classes, including Class 25, which is for clothing.
However, AB Textiles said in its submission that it has been using the mark 'ABT Sony' extensively in West Bengal and Assam since 1998.