Jinchun Ji sought trademark registration for “雪佛龙” (“Chevron” in Chinese version) before the Chinese Trademark Office (TMO) in respect of goods falling in Class 12 viz. automobiles and motor cycles. Chevron Intellectual Property LLC (a subsidiary of Chevron Corporation) opposed the application on the grounds that the impugned mark was similar to its mark and which was otherwise registered in respect of the goods petroleum oil (crude oil or refined oil), industrial oil. It additionally contented that automobile and motor cycles for which the impugned mark was being sought to be registered was in a sense related to petroleum and related products and on account of which could cause confusion in the minds of the consumers.
However after considering the matter the Chinese Trademark Review and Adjudication Board (TRAB) came to the conclusion that the nature, the channels through which they were distributed and the ultimate consumers of the goods were different and resultantly not cause any confusion.
Chevron pursued the matter through an administrative lawsuit against Jinchun Ji and TRAB before the Beijing Higher People's Court but which however upheld the ruling of the TRAB and led to the grant of registration of the impugned trademark “雪佛龙” in Class 12.
It would be significant and pertinent to note the legal position had the aforesaid case been decided in India under Indian trademark laws.
The applicable provisions of the Trademarks Act, 1999 state that:
- if a trademark that is identical or similar to an earlier trade mark is sought to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, it shall not be registered if or to the extent the earlier is a well-known trademark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark. Courts would whilst determining whether a trademark is well known take into consideration several factors such as the knowledge or recognition of the trademark in India, it’s promotion, use, registration, record of successful enforcement of the rights subsisting in the trademark and whether it has been recognized as well-known by the court, number of consumers, number of persons involved in the channel of distribution.
- A registered trademark is infringed by a person who not being a registered proprietor or a person by way of permitted use, uses in the course of trade, a mark which is identical with or similar to the registered trademark in relation to goods and services which are not similar to those for which the trade mark is registered, the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark.
In 2013, the Intellectual Property Appellate Board, India (IPAB) by its order in an appeal filed by the Japanese electronics major Sony Corporation, refused the registration of the trademark “abt Sony” the registration of which was sought by a Kolkata-based firm AB Textiles. The order was passed pursuant to an appeal filed by Sony Kabushiki Kaisa, also trading as Sony Corporation, against the decision of the Deputy Registrar of trademarks, Kolkata, permitting AB Textiles to register the trademark ‘abt Sony’ and refusing Sony Corporation’s opposition against it. AB Textiles had sought registration of the trademark in respect of goods falling in Class 25 viz. ladies and gents undergarments. IPAB’s bench allowed the appeal filed by Sony Corporation, refusing registration of the trade mark.
The bench came down heavily on the decision of the Deputy Registrar in refusing the Japanese firm’s opposition and allowing the textile firm to register the trade mark. “It is clear the respondent was trying to take unfair advantage of the famous mark Sony to the detriment of the reputation of the appellants and is against the honest practice in industrial or commercial matters”. It was observed the essential features of the respondent’s mark ‘abt Sony’ included the whole of appellants mark ‘Sony’ with ‘abt’ used only as a prefix in conjunction with Sony. What the members of the trade and / or the general public would ask for was Sony garments and not “abt Sony” garments leading to a possible confusion as regards the source and origin of the garments.