Tata Chemicals Ltd. v. Deputy Reg.- 2003 (27) PTC 422 Del
FACTS:
Tata Chemicals Ltd. and Tata Sons Ltd. (Petitioners) are part of the well-known business house “THE HOUSE OF TATAS,” which manufactures everything from edibles to household goods, automobiles, and computers.
Shri Madan Lal, an Ashoka Industries partner, assigned the exclusive rights to the trademark “TATA” to M/s. Tata Pressure Cooker Manufacturing Company.
Shri Madan Lal filed an application for trademark registration of “TATA” on May 14, 1984, claiming use since September 1, 1981, primarily for pressure cookers.
Petitioners filed an opposition to this trademark registration, claiming that Shri Madan Lal’s use of “TATA” was not an honest concurrent user and constituted an attempt to infringe on their well-established “TATA” mark.
To be eligible for registration, a trademark must not be likely to deceive or cause confusion, and it must not be a colourable imitation of an existing brand. Evidence of repute and earlier use can be important elements in assessing whether or not a trademark registration should be permitted. Furthermore, when evaluating opposition to trademark registration, it is critical to evaluate the legitimacy of any concerns stated, even if they are not explicitly pled, and not to discard pertinent evidence without adequate justification.
ISSUE:
Whether the applicant’s use of the trademark “TATA,” even with evidence of use since 1981, is an honest concurrent user or an attempt to trespass on the petitioner’s well-established mark, “THE HOUSE OF TATAS”?
Is the rejection of the petitioner’s evidence based on a lack of pleading on the registered status of the “TATA” trademark, as well as the failure to consider a prior court order against respondent No. 2, a fair basis for dismissing the opposition to the trademark registration?
HELD:
The petitioners’ oppositions were dismissed by the Registrar of Trade Marks, allowing the registration of “TATA” for pressure cookers. Three factors influenced the decision:
The Registrar determined that the applicant had successfully supplied proof of user and reputation in relation to pressure cookers sold by them since 1981, thereby qualifying the mark for registration.
However, the petitioners maintained that Shri Madan Lal and Shri Ashok Kumar’s use of “TATA” was not based on their surnames, raising doubts about how they chose this mark as their trade name.
The Registrar further dismissed the opposition on the grounds that the mark sought was a colorable replica of the petitioners’ mark.
The petitioners challenged these findings, claiming that Shri Madan Lal and Shri Ashok Kumar’s usage of “TATA” was not honest concurrent use and could not be cleansed by continual use.
The court noted that the petitioners had stated in the grounds of opposition that “TATA” was their trade mark and that they had secured a court injunction against respondent No. 2 (Shri Madan Lal) prohibiting them from selling pressure cookers under the “TATA” mark.
The court agreed with the petitioners that Shri Madan Lal’s use of “TATA” needed to be investigated further in terms of its honesty and whether it constituted trespass on the petitioners’ mark.
Furthermore, the court ruled that the Registrar’s rejection of evidence based on the lack of precise pleading on the registered status of the “TATA” trademark, as well as the failure to consider a prior court injunction, were unjustified.