Hiring distributors to sell your products in India? IPAB advises constant vigilance

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The facts narrated in one of recent orders of the Intellectual Property Appellate Board (IPAB) send out one clear signal: constant vigilance!

What is the case about?

Pasco Sports (Pasco) traded in sports related goods and claimed to have adopted and used the trademark PAMA since 1994. Between 2002 and 2008, it appointed Capital Sports (Capital) as its distributor for goods under the mark PAMA. On October 14, 2002, Capital sought registration of the trademark PAMA claiming use from July 15, 2002.

In December 2008, Pasco received a cease and desist notice from Capital as regards the mark PAMA in respect of games and play things, gymnastic and sporting articles. The same month, Pasco also came across the advertisement of Capital’s trademark application no. 1689269 for the mark PAMA. It promptly opposed registration of this mark.

Later, upon a casual inquiry with the Registry regarding the status of this opposition proceeding, Pasco learnt of Capital’s registered trademark PAMA under Application no. 1143025 for hosiery and garments. It filed a cautionary notice in the newspaper iterating its ownership of the mark PAMA.

Following this cautionary notice, Capital filed a suit for infringement claiming use since 1993 and also filed a cancellation request against Pasco’s registered mark PAMA under Application no 1305764.

Pursuant to all this, Pasco requested cancellation of Capital’s trademark registration under Application no. 1143025.

Contentions of the parties

Pasco argued that Capital’s adoption and use of the trademark PAMA was dishonest, tainted, mala fide and fraudulent and that Capital had deliberately concealed its association with Pasco as a distributor between 2002 and 2008. It further argued that while Capital claimed use from 2002 in the trademark applications, its infringement suit claimed use from 1993. For its part, Pasco provided the court with an invoice dated December 19, 1994 to prove its first use in 1994. It also provided evidence in terms of cash memos from January and June 2002 showing supply of its goods to Capital.

Capital argued that it had adopted the mark PAMA in 1993 as when it started off as a partnership firm and was later incorporated as a company in 2002 with the partners of this firm as its directors. It argued further that the mark PAMA had acquired secondary because of Capital’s use and would “instantly” be associated only with Capital and that it had registrations in Classes 1 and 42 and had a copyright registration for PAMA logo. It also argued that its rights were protected since it was a prior registrant and Pasco had only applied for its trademark in 2004. A further argument was that Pasco ought to have conducted a trademark search before seeking trademark protection.

What the IPAB found

The IPAB observed that Capital was aware of Pasco’s existence on the day of its application for trademark registration. It also observed in accordance with the settled principle of law priority in use prevails over registration of trademark.

The IPAB was not impressed with Capital’s argument on how Pasco ought to have conducted a prior trademark search and unamusingly stated that this case dealt with Capital’s trademark registration and not with Pasco’s.

It therefore held that Capital’s adoption of the mark was not honest and bonafide. It directed that the Registrar remove Capital’s mark from the Registry’s records.

Distributors to sell your products in India-Thoughts

This was an open and shut case. Honestly, I am not sure what Capital was thinking. In this day and age where we have everything on paper and Pasco certainly preserved those papers well, how and why did Capital think it could have convinced the IPAB to dismiss Pasco’s rectification petition? Beats me.

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