Jaguar wins race against Swiss watch maker

In a recent decision the Intellectual Property Appellate Board (IPAB) adjudicated on a trademark dispute between one of the world’s most popular car manufacturers and a famous Swiss watch maker. Deciding in favour of Jaguar Cars (the appellant), the IPAB struck down the order of the Kolkata Trademarks Registry dismissing Jaguar's opposition to the application of Manufacture Des Montres Jaguar (the respondent) for registration of its trademark JAGUAR in Class 14 for watches.

Background
The core submission of the appellant was that the impugned mark was identical to its well-known trademark and trade name, and had been adopted by the respondent in outright bad faith in order to cash in on the appellant's goodwill and reputation. In addition, the appellant submitted that the trademark JAGUAR was first coined by it in 1938 and applied for in the United Kingdom in 1943. In India, it applied to register the trademark in respect of cars in 1945 and in respect of watches in 1996. In support of the well-known status of its trademark, the appellant filed approximately 1,600 pages of documents, including:

• Evidence justifying 800 worldwide registrations for JAGUAR.
• Orders passed by courts in several international jurisdictions recognising the trademark as well known.
• The first invoice for the sale of watches in 1983 under the trademark JAGUAR.

One piece of evidence to which the IPAB seems to have given reasonable consideration was the affidavit of the chief trademark counsel for Ford Motors, the previous owner of the appellant, which stated that the appellant had been, via its wholly owned subsidiaries and licensees, distributing a wide range of its consumer-oriented products, including watches across India. 

On the other hand, the respondent contended that there was no bad faith or surreptitiousness involved in the adoption and use of the impugned mark for watches, considering that it had adopted the impugned mark only two years later than the appellant (in 1945). The respondent further submitted that the impugned mark was registered in over 90 countries worldwide and co-existed with the appellant’s trademark in approximately 28 countries. It also contended that the word "jaguar" was a common word with a dictionary meaning, and hence no monopoly could be claimed on it by the appellant, which had not established  reputation and goodwill in relation to watches in India.

Issue
According to the IPAB, the primary issue was whether the reputation and goodwill attached to the appellant’s trademark JAGUAR extended to products other than automobiles – in other words, whether the appellant’s mark could be deemed to be a well-known mark with considerable cross-border reputation. Simultaneously, the IPAB also had to determine whether the use and registration of the impugned trademark by the respondent amounted to dilution and depreciation of the goodwill attached to the appellant and its trademark and name JAGUAR.

Decision
While allowing the appeal filed by Jaguar Cars, the IPAB concluded that the registrar’s decision was erroneous and legally incorrect. At the outset, the IPAB was of the view that the registrar had completely disregarded the appellant’s reputation in arriving at the conclusion that the appellant could enforce its trademark rights only on establishing actual commercial use in relation to watches.

The IPAB also struck down the registrar’s findings that "jaguar" was a common dictionary word and that the rival marks co-existed in other jurisdictions. The reasoning that several other JAGUAR marks already existed on the register was also deemed to be fallacious. Further, rejecting the respondent’s argument of the different classification of the competing goods, the IPAB opined that classification was a mere administrative tool and ought not to be considered as a complete test to determine market confusion. The IPAB held that none of these reasons justified the unauthorised adoption and use of the appellant’s trademark without giving due regard to its market reputation and goodwill.    

Comment
Examination of the IPAB’s order reveals strong condemnation of the registrar’s decision. For instance, the registrar’s reasoning that the respondent was a prior applicant for watches for the impugned mark was struck down by the IPAB as an “artificially constructed” and “laboured justification” to grant registration to the impugned mark. Further, in its decision the registrar had used the "manufacturing facilities test" to infer non-use of the appellant’s trademark in India, which was deemed by the IPAB to be a “trade barrier” and “unheard of theory” in trademark jurisprudence. The registrar’s decision to deny the well-known status of the appellant’s trademark JAGUAR was also dismissed by the IPAB as a “reckless and illegal conclusion without a critical analysis”.

The below-opined phrases clearly sum up the IPAB’s opinion of the registrar’s decision dismissing the appellant’s opposition:

“14... We should remind ourselves that the Indian IP laws including The Trade Marks Act are world class legislations by far superior to most countries and the Registry should not lower its guard by granting registration to copy cats… It only shows undue eagerness, excessive zeal and mental gymnastic exercised by the Deputy Registry to push the impugned mark in the Register… it is findings like these that dent the image of the Registry with its varying levels of generalities and infraction of the law…”