Trademark Crystal : Taking on Goliath and winning

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In the world of fashion, Swarovski is known for its crystals. Yet in what could be described as a David vs. Goliath battle, Swarovski lost its registered trademark “Crystal Glamour” in January 2014 because of a rectification petition filed by an innocuous and relatively unknown textile manufacturers from Tiruppur (a city in the South Indian state of Tamil Nadu) called Crystal Knitters. However, much like the Cadbury in Cadbury vs. ITC case before the IPAB, Swarovski gave up its registered mark without a fight.

Arguments

Crystal Knitters in its petition argued that they had been continuously using the trademark Crystal in Class 25 since 1971 and had trademark registrations and copyright in the artistic work of its trademark. Upon perusing the Trademarks Registry, it can been seen that they have quite a few registrations for “Crystal”. It can also be seen that they have opposed numerous applications made for “Crystal” in Class 25.

Moving on, Crystal Knitters further argued that Swarovski was aware of its existence and yet sought to register its trademark Crystal Glamour in 2002 and got its registration in 2005. It also argued on a number of grounds for rectification including non-use and lack of bona fide intention to use the trademark.

Swarovski’s response to the rectification petition

Interestingly, when the notice of this rectification petition was served on Swarovski’s counsel, they replied through a letter stating that Swarovski’s trademark lapsed a long time ago and it was not interested in reviving its registration. They also stated that given the status quo they did not see any point in attending a hearing in the matter.

Hearing

A hearing was appointed in this matter upon insistence from Crystal Knitters. During the hearing, they sought to remove the trademark citing, among other things, that Swarovski had disclaimed Glamour from its trademark which is in essence meant that they claimed “crystal” as their trademark in Class 25. However, since “Crystal” is the registered trademark of Crystal Knitters in Class 25, Swarovski’s registration ought to be cancelled to avoid confusion. They relied on various precedents to support their contentions.

The IPAB passed the inevitable order for removing Swarovski’s trademark from the Trademarks Register.

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