In a triumph for Tube Investments of India (TI), a group company of Chennai-based Murugappa Group, the Intellectual Property Appellate Tribunal (IPAB) has ruled the mark, BSA, is a well-known trademark owned by the former and ordered removal of a similar BSA trademark of Malaysian company BSA Group Sdn Bhd from the Indian Trade Marks Registry. The order of IPAB, the adjudicating authority for patent and trademark disputes, came in response to TI’s rectification petition against BSA Group Sdn Bhd’s BSA trademark which has been remaining in the registry ‘unfairly’.
The IPAB bench asserted that TI was the registered proprietor of over 25 BSA trademark registrations in India and also holds registration in Nigeria, Kenya, Malawi, Tanzania and Uganda. The bench comprises justice Manmohan Singh, who is the chairman of Trade Mark board, and Sanjeev Kumar Chaswal, its technical member. The trademarks have been used in respect of bicycles, its metal components, spares, and related goods for several decades. In all the parts, spares and accessories including metal parts manufactured by the applicant, the mark BSA is engraved. The company’s goods bearing the mark — BSA — have been extensively advertised in newspapers, magazines and various other visual media, the IPAB observed.
Tube Investments’ division, TI Cycles of India, has been manufacturing BSA brand of bicycles for almost five decades and has plants at Chennai, Nasik and Noida. Originally owned by BSA Cycles, England, the BSA mark has been assigned to TI under an agreement. When TI conducted online search of similar or identical marks in January 2009, the company became aware of BSA Group registration of similar mark BSA for vehicle wheel, vehicle hubs, rims, tyres, parts and fittings for vehicles, that was secured on August 2000 with user claim since 1999. Then, TI approached the IPAB, saying that the company being the prior user and the exclusive owner of the mark BSA, the registration obtained by BSA Group for similar mark was untenable, unsustainable and not maintainable in the eyes of law.
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It submitted the Malaysian company ought to have been well aware that TI’s BSA is a well-known mark and has deliberately copied the same. The company alleged that BSA Group obtained the registration of similar mark BSA by gross misrepresentation and playing fraud on the authority. TI argued the registrar ought not to have registered the mark in the name of BSA Group as it is the proprietor of the well-known trademark, BSA.
The Murugappa company argued the BSA Group had obtained the registration in bad faith and with the malafide 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 mark, BSA.
It was submitted by TI that the registration of identical mark BSA in respect of cogent and similar goods in the name of BSA Group is bound to cause confusion and deception among the trade and public. The registration of the mark BSA in respect of wheel, rims, hubs and tyres would be hindrance to the expansion of the business of the company as it has bonafide intention to manufacture similar products under the trademark BSA in the near future.