Author: Former Intern - Gazal Sancheti
In the matter of Sony Corporation vs K. Selvamurthy [Com. O.S. No. 8464/2018], a single judge [Lathakumari M., J.] of the City Civil & Sessions Court at Bengaluru vide an order dated June 18, 2021, summarily dismissing a suit for permanent injunction, held that even a well-known registered trademark cannot inherently claim an absolute monopoly over the entire class of goods or services of its registration, implying that even within the same class, certain services and the manner of use in respect thereof may be so different that even an identical mark’s use may not unfairly benefit from or hurt the well-known mark. .
Section 29(4), states: “A registered trademark is infringed by a person who…uses in the course of trade, a mark which— (a)is identical… to the registered trademark; and (b)is used in relation to… services which are not similar to those for which the trade mark is registered; and (c)the registered trade mark 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 trademark.” The question arises whether the use of an identical mark even for dissimilar services within the same class as that of the well-known trademark automatically amounts to taking ‘unfair advantage’ or being ‘detrimental to’ the latter’s distinctive character or repute? Or is it that the ‘unfair advantage’ or ‘detrimental to’ requirement cannot be presumed even in such a context and might in fact be lacking if the the services coupled with manner of use, that is to say the businesses, are sufficiently different.
The plaintiff asserted the use of its well-known trademark “SONY”, registered under Class 39 covering transport, packaging and storage of goods, travel arrangement etc., by the defendant in its trade name and trading style “M/s SONY TOURS AND TRAVELS”, relating to its transport and car rental business, constituted infringement.
The defendant contended that operating an entirely different local business under its trade name neither takes unfair advantage nor causes detriment.
The Court pointed out that “the nature and style of the business of the plaintiff and defendant are altogether different.” Noting the description of plaintiff’s business under Class 39 “…are nothing but service details associated with manufacture of goods.”, the Court stated “…impossible to imagine that an ordinary man would link the electronic goods of the plaintiff to the travel business of the defendant”. Hence, “the plaintiff corporation failed to establish that the defendant has adopted the trade mark to take unfair advantage…”.
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