TN based co beats US clothing giant in a Trademark Suit
In another instance of David crushing Goliath, an Erode-based hosiery manufacturer has humbled a US clothing giant by winning a trademark infringement suit.
The Erode-based Vishnupriya Hosiery Mils had been using the trademark ‘Jones’ for some of its products; and the US giant, Jones Investment Co Inc of Wilmington, Delaware, said that the local brand was creating confusion among customers as the word was the registered trademark of ‘Jones New York’. However, the Indian company was permitted to use the trademark by the Intellectual Property Appellate Board (IPAB) after declining the global giant’s challenge against the local brand.
Jones Investment argue that it has been using the trademark ‘Jones New York’, in many countries across a broad range of goods, including clothing, hosiery, footwear and leather goods and that it was the prior user of the trademark and the products that it sold had acquired great international reputation. Vishnupriya Hosiery Mills, on the other hand rejected the appeal of Jones Investment and stated that it has been using the ‘Jones’ trademark since 1993 and there would be no confusion as Jones Investment’s goods were not sold in India. The deputy registrar of trademarks, Chennai had earlier upheld the arguments of Vishnupriya and disregarded the appeal of Jones Investment to which the latter filed an appeal before the IPAB.
Jones argued that the mark ‘Jones New York’ was currently being used in more than 35 countries, including the US since 1996, and that the deputy registrar failed to regard its “transborder reputation.” Further, they also claimed that Vishnupriya could not claim ignorance of “meagre sales” in this age of information and technology.
Vishnupriya said that the deputy registrar was right in dismissing the appeal Jones did not use its mark in India till date and therefore there could be “no question of establishing transborder reputation in India.” In spite of the claim of Jones, it could not establish that it had been using the mark since 1996. Vishnupriya on the other hand had displayed documents to show that they have been using the mark since 1993. The bench comprising of chairman K N Basha and technical member Sanjeev Kumar Chaswal said that there was no evidence to establish that its “transborder reputation had percolated in India.”
Rejecting the appeal, the bench concluded that, “Multinational companies who have no intention of introducing their products in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and is first in the market cannot be prevented from using it.”
Trademark Registration in Japan
Patent Attorney：Hiroshi Oogai
Address：304 BUREX Hirakawacho 1-5-15 Hirakawa-cho,
Chiyoda-ku, Tokyo
Phone：＋81-3-4570-0792
Mail：contact @ trademark-registration-japan.com
