Intel wins PENTIUM passing off dispute
In Intel Corporation v Pentium Finance and Investment Pvt Ltd (Case 1180/2003), the Delhi High Court has issued an injunction restraining the defendant from all use of the term 'pentium'. The court ordered the injunction even though (i) the defendant was using the term as a trade name, rather than as a trademark, and (ii) the parties offer completely different types of services.
Intel, owns a number of international trademark registrations for PENTIUM in relation to certain types of computer hardware. It filed a passing off action against Indian financial services provider Pentium Finance and Investment for its use of the term 'pentium' in its trade name. Intel argued that:
- 'pentium' is an invented word;
- Intel was the first company to adopt the mark PENTIUM;
- the mark has been used throughout the world and has acquired extensive goodwill and reputation as a result;
- the owner of Pentium Finance is a chartered accountant and ought to have been aware of PENTIUM's reputation;
- Pentium Finance had adopted its trade name as an attempt to profit from the goodwill and reputation in Intel's mark; and
- during pre-trial settlement negotiations, Pentium Finance had stated that it was prepared to change its trade name in exchange for a significant sum of money.
The Delhi High Court found in favour of Intel and ordered an injunction restraining Pentium Finance from using the term 'pentium' as a trade name, trademark or in any manner whatsoever. The court issued the injunction even though the action was in relation to a conflicting trade name, rather than a trademark. This makes the decision noteworthy since it is often far more difficult to establish a risk of consumer confusion in cases involving a conflicting trade name, especially when, as here, the parties involved offer completely different goods and services.
Rachna Bakhru, Rouse & Co International, Dubai
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