INFOSYS decision may put trademarks at risk

The Chennai IP Appellate Board has ordered the cancellation of Infosys Technologies Ltd's INFOSYS mark in Classes 9, 7 and 16 of the Nice Classification for non-use (Case TRA 25 to 27/2003/TM/CH, September 9 2004).

Jupiter Infosys Ltd had filed the cancellation action as a riposte to an infringement action brought by Infosys (see Infosys Technologies troubleshoots successfully in Delhi). In its petition Jupiter argued that the INFOSYS mark was used for software development services, not for goods. Thus, the mark was liable to be cancelled as it had not been used for a continuous period of five years and one month in relation to the goods for which it was registered. The Chennai IP Appellate Board applied a strict non-use test and ordered the cancellation of INFOSYS.

The decision raises both legal and commercial issues, a few of which are outlined below:

• Service mark registrations were not available in India until the Trademarks Act 1999 came into force in September 2003 (see New law introduces simplified procedures and broader rights). Thus, IP rights holders providing services generally filed an application in corresponding goods classes. In view of the INFOSYS decision, these mark owners may need to reassess their portfolios and take necessary steps to avoid non-use cancellation actions.
  
  
• In the IT industry, hardware and software cannot be delineated. Software is stored on hardware or a CD-Rom for instance, and sold with the maker's name on it, which qualifies as use. Manuals, which also qualify as use in Class 16, are provided with software. Similarly, a number of goods and services in other industries overlap.
  
  
• INFOSYS is a well known mark in India and overseas. It satisfies the criteria of a well-known mark under the new Trademarks Act 1999. Therefore, it is questionable whether the board should have interpreted the non-use provision as strictly as it did.

The Supreme Court has admitted Infosys's appeal and stayed the enforcement of the board's decision until the arguments are heard. It will be interesting to see how the Supreme Court approaches the issue.

Ranjan Narula, Rouse & Co International, Dubai