Of animals and trademarks

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Use of animal representations or their names or both as trademarks (“animal marks”) is an intriguing concept. For one, except in some cases, animal marks prove to be arbitrary in application and therefore inherently distinct. However, most businesses like to represent themselves using majestic animals and this therefore limits one’s choice to a considerable extend. Some famous examples of animal marks would include Fevicol (which uses elephant), Eagle, Kiwi, Puma, Jaguar, etc.

It becomes a little tricky for courts to allow animal marks when there are similar or identical animal marks registered as trademarks and even trickier when the first-holder of the animal mark has achieved phenomenal reputation. One such case from last year pertains to the mark “Jaguar”. The automobile giant, Jaguar cars, opposed registration of the mark Jaguar in India for watches by a Swiss company called Des Montres Jaguar.

Arguments

Jaguar cars argued that it is a well-known mark. That it adopted the trademark in 1935 and got its first registration in the UK in 1943. Its earliest registration in India was in March 1945. It also argued that it had been using its trademark in respect of watches since 1983 submitting invoices to evidence this.

Des Montres Jaguar argued that it is the first adopter of the trademark in respect of watches and other allied goods in Class 14 with its earliest registration in Switzerland dating back to August 1945. It submitted that it had co-existence agreement with Jaguar cars in 28 countries. It further argued that “jaguar” is a dictionary word and no monopoly can be claimed over it and that in any event the goods covered by the two marks are different. It pointed that it has opposed Jaguar cars’ trademark in Class 14 which was made in 1996 without claiming use whereas Des Montres Jaguar had been using it in India since 1989.

Registrar’s decision

The Registrar of Trademarks dismissed Jaguar cars’ opposition on the following grounds:

  1. Jaguar is a common dictionary and therefore no monopoly can be conferred on Jaguar cars for using the mark;
  2. There are other registered and pending Jaguar marks on the register;
  3. Distinguishing between clocks and watches, and observing that Jaguar cars limits the use of its trademark to “clocks fitted to the dashboards of cars”, Des Montres Jaguar could register its trademark for watches;
  4. Des Montres Jaguar was the first adopter of the mark in India in respect of watches and that Jaguar cars anyway did not have manufacturing facilities in India for its goods in Class 14.
  5. Jaguar cars did not have a registration in Class 14 for the trademark “Jaguar”.

The appeal

Jaguar cars rightly appealed to the Intellectual Property Appellate Board (“IPAB”). The IPAB gave a dressing down to the Registrar for passing an order which is “full of infirmities and exhibits pronounced bias”. Without disguising its disgust for the Registrar’s order, it refused Des Montres Jaguar’s registration in Class 14 on the following grounds:

  1. Since Jaguar is a well-known trademark of Jaguar cars, it need not be particularly registered in Class 14 to receive statutory protection or oppose an application in Class 14;
  2. Actual use of the trademark in India is not essential when phenomenal reputation precedes it and such a reputation has been proved by Jaguar cars (It had submitted 1600 pages of evidence in the form of consumer recognition surveys, exposure in movies, TV magazines, internet publications, blogs, sales outlets frequented by international tourist etc.)
  3. Changing market realities create a likelihood of confusion and likelihood of associating Jaguar with Jaguar cars;
  4. Requirement of manufacturing facilities to prove use is an “unheard theory in trademarks jurisprudence”
  5. The fact that jaguar is a common dictionary term does not give any person a license to freely ride upon Jaguar cars’ goodwill established across nations through extensive use.
  6. Co-existence in 28 countries is irrelevant when the trademarks law in India is far more guarded against registering copycat marks.
  7. Existence of other jaguar marks on the register is irrelevant. In any event the registered marks belong to Jaguar cars through its affiliates or subsidiaries and other have been cancelled, invalidated or pending rectification proceedings.
  8. Classification of goods under the trademarks law is “an administrative tool for the registry for search purpose and is not a fail proof test to eliminate likely market confusion”

In this case, the IPAB succinctly and clearly applied the settled principles of law. Cases similar to the above show that courts do allow registration of animal marks and protect them from being misappropriated provided extraordinary reputation is established and likelihood of confusion is eliminated.

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