Jones Investment Company Inc vs Vishnupriya Hosiery Mills

Introduction

Trademark bullying, as defined under Section 142 of the Trademarks Act, 1999, is making groundless threats of legal proceedings. Such threat could be in the form of anything, a circular, an advertisement, a notice, or even an oral threat made to scare the small businesses from continuing to pursue their trademark. This bullying is done to gain monopoly over their trademark.

Trademark protection was granted to the owners in order to protect their rights to prevent others from misusing their trademark and damaging their reputation by deceiving or confusing the consumers. However, big corporations are now misusing this right to eliminate competition from the markets by threatening anyone who wants to establish their market. They do so by sending cease and desist letters, notice of infringement or dilution, or by simply filing for legal proceedings against such competitors. Since the perpetrators are large corporations, they have the resources to do so, which is not the case in small and newly established businesses as they are still growing in the market and have no financial backing to fight the bully. Due to this, the provision of filing for declaration of non-infringement came into picture to protect such businesses from groundless threats. This paper refers to a case where a small Indian company won against a big US corporation which was bullying the small company.

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Trademark

It is an appeal filed by a US based company named Jones Investment Co. which is engaged in clothing, hosiery, footwear business, etc., and uses the trademark ‘Jones New York’. Further, the respondent is an Indian company named Vishnupriya Hosiery Mills based out of Erode, Tamil Nadu and is engaged in textile business. The respondents had applied for registering the trademark ‘Jones’ for their textile products, but the application was opposed by the appellant company. However, the opposition notice was dismissed by the Registrar of Trademarks in 2010. Aggrieved by the dismissal of the notice, present appeal was filed by the US company in the Intellectual Property Appellate Board (IPAB).

The main argument of the appellants was that they had been using the trademark ‘Jones New York’ since 1966 and have also acquired transborder reputation in the said trademark. They also contended that the said trademark has been registered in India since 1997, therefore, giving registration to the trademark ‘Jones’ of the respondents in the same category of goods will lead to confusion and deception of the consumers and would eventually dilute their own trademark, causing them damage. The appellants also contended that the respondents cannot claim a reputation as they do not have “substantial sales” of their products to be rivals of the appellants.

The respondent’s main argument was based on the question of whether the appellants have established that they are using the trademark ‘Jones New York’ in Indian market on the date of application of registration filed by the respondents. The respondents also established that the appellants are not using the said trademark as on date in India and hence, cannot oppose registration of the respondent’s trademark ‘Jones’ in India. They also questioned the transborder reputation of the appellant’s trademark and said that it is not needed to bring up the concept at all.

The IPAB dismissed both the contentions of the appellant. For the first contention, the IPAB relied on a Supreme Court judgment Milmet Oftho Industries and Ors vs Allergan Inc. where an Indian pharmaceutical company sold ‘Ocuflux’ drugs and the respondent, an international pharmaceutical company, filed a suit for passing off the drugs. The Supreme Court in this case held that “Multinational Corporations who have no intention of coming to India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market.”

The present case is similar to the abovementioned case as in both of them, the appellants had no sale in the Indian market, hence, had no ground to threaten the Indian business. It was said that the respondents were able to prove their presence in India since 1993 whereas the appellants failed to establish their international reputation prior to 1997. Had the appellants been able to establish international reputation as the operative test is “who is in the market”.

Further, it was held that “quantum of sale” is immaterial as long as there is proof that the trademark to be registered will not confuse the consumers and deceive them. The IPAB held that since the appellant company did not have its presence in India, the arguments of the appellant are “absurd in the first place” and the respondents had a limited local presence in India, making them eligible to get the registration of the trademark “Jones”. This decision helped strengthen the intellectual property rights of the small or new Indian businesses and stopped the big corporations from growing bigger at the cost of these small businesses.

Conclusion

This case is a clear example of how big corporations bully small businesses. Since smaller companies do not have the resources to fight such big companies, they give in to the threat. This is the strategy used by the trademark holders to prevent others from using the trademark completely, even though it does not harm the reputation or economic stand. Due to trademark bullying, many new businesses leave the market before they have even entered properly.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

  • Jones Investment Company, Inc. vs Vishnupriya Hosiery Mills, WP No. 3851 of 2015.
  • Spadika Jayaraj, IPAB guards against Trademark Bullying- Jones Investment Co v. Vishnupriya Hosiery Mills, SpicyIP, Aug. 12, 2022, 4.55 PM), https://spicyip.com/2014/04/ipab-guards-against-trademark-bullying-jones-investment-co-v-vishnupriya-hosiery-mills.html

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