IP Connect

India: Maruti Udyog Wins Trademark Battle Against Maruti Piston

Indian Automobile giant Maruti Udyog Limited (hereinafter referred to as the ‘Respondent’) has won a legal battle against a piston producing company from the Indian state of Gujarat, i.e., Maruti Piston Private Limited (hereinafter referred to as the ‘Appellant’) which sought to claim trademark rights over the mark ‘Maruti’. Dismissing the appeal, the Intellectual Property Appellate Board (hereinafter referred to as the ‘IPAB’) held that no one is entitled to encroach on the goodwill and reputation obtained by another company. The bench comprising of the Honorable IPAB Chairman, Mr. Justice K.N. Basha and Technical Member (Trade Marks), Mr. Sanjeev Kumar Chaswal, stated in their order dated December 17, 2015 (made available on February 12, 2016), that it is needless to say that the brand name Maruti has obtained a world-wide reputation in four-wheelers and any attempt to use the name for two-wheelers or three-wheelers would affect the reputation of Maruti.

The initial case was instituted by the Respondent against the Appellant where the Assistant Registrar of Trademarks, had held that the Appellant cannot register the mark ‘Maruti’ in their name. Subsequently, the Appellant appealed to the IPAB which upheld the decision of the Assistant Registrar.

Appellant’s contentions before IPAB

The learned counsel for the appellant, Mr. R.R. Shah contented that:

1. The appellant using the trademark only for pistons which could be used for two wheeler or three wheeler and not for four wheeler
2. Trademark No. 405671 under class 12 of the respondent is not in existence as on date as per the status report and the website report is produced.
3. The Assistant Registrar failed to consider the special circumstances contemplated under Section 12 namely Piston not manufactured by the respondent/opponent. The piston to be used only two wheeler and not for four wheeler of the respondent/ opponent.
4. The appellant has regularly participated in the world famous Auto Expo held at Pragathi Maidan, Delhi right from the year 2004-2012 and the same was ignored and all these special circumstances have been ignored
5. The respondent/opponent has not initiated any civil proceedings for infringement or passing-off nor issued any desist notice against the appellant herein.
6. The volume of evidence namely sales particulars have been ignored by the Registrar.

Respondent’s Contentions

The counsel for the respondent, Ms. Anju Agarwal contented that:

1. The so called special circumstances relied by the appellant were not placed before the Registrar before passing the impugned order and as such the same could not be relied for the application of Section 12
2. Even in the application, the appellant has specifically stated that they proposed to use the trademark under question and as such they cannot take shelter under Section 12
3. The appellant/application has not established their distinctiveness of their product and as such they are not entitled for seeking registration of the trademark ‘Maruti’
4. The appellant failed to clear the obstacles contemplated under Section 9(1), 11(1), 11(1)(b) 11(2) and 11(3).

Observation/Decision of the IPAB

Though the Appellant contended that they were using the mark Maruti for a long time, they were not able to substantiate their reputation and goodwill to establish the distinctiveness of their products for registration. The claim that their mark was different and dissimilar did not hold good according to the Assistant Registrar. The Applicant’s mark was similar or identical to the Respondent’s and the logo device was also same, namely the wing device. The name of the mark makes it clear that the Appellant’s trademark is visually and phonetically similar to the Respondent’s trademark, which would certainly cause confusion in the minds of the public who are the consumers and users of Maruti cars.

Held

The bench held that the brand name Maruti has obtained a world-wide reputation with respect to the four wheelers and there was an attempt to use the same brand name for two or three wheelers, which would definitely affect the reputation of the Respondent that would result in the reduction of trade of the Respondent and dilution of their reputation.