Jaguar prevents registration of JAGUAR mark for watches

In Jaguar Cars Limited v Manufacture Des Montres Jaguar SA(OA/21/2008/TM/KOL), the Intellectual Property Appellate Board (IPAB) has upheld an opposition against the registration of the trademark JAGUAR to be used in relation to watches. The opposition was upheld on the grounds that the appellant was a prior user of the JAGUAR mark, which has attained the status of well-known trademark in India and abroad.

The appellant, Jaguar Cars Limited, is well known in the field of luxury cars. It also distributes a range of products, including sports accessories, perfumes, watches and sunglasses, under the brand name Jaguar. The JAGUAR mark and/or the ‘leaping jaguar' device have been registered or are pending registration in numerous classes in several countries, including India.

In 1991 the respondent - a Swiss company - applied for the registration of a mark that was deceptively similar to the appellant’s trademarks.

The appellant filed an opposition against the registration of the respondent’s mark in Class 14 before the deputy registrar of trademarks. The registrar dismissed the opposition on the grounds that:

• the appellant’s application for the registration of its JAGUAR mark in Class 14 was subsequent to the respondent's application; and
• the appellant had not provided any evidence of use of the trademark in relation to watches in India, or of the existence of any manufacturing facilities for watches in India.

The registrar further observed that the word ‘Jaguar’ is a common dictionary word and that the appellant had failed to establish the well-known status of its mark. The respondent had been granted registration for its mark in several countries, which led the registrar to take the view that the respondent's choice of trademark was not dishonest.

The appellant appealed to the IPAB on the following grounds, among others:

• The word ‘jaguar' was first coined by the appellant in 1938.
• The earliest registration of the trademark JAGUAR in the United Kingdom was obtained by the appellant in 1943, and in India in 1945, for goods in Class 12.
• The appellant has over 800 registrations worldwide for the JAGUAR mark for cars and other merchandise, including watches.
• The appellant has been using the mark JAGUAR in relation to watches for several years, and has been marketing and selling watches under the JAGUAR mark since 1983.
• Due to its worldwide reputation, longstanding global use and publicity, members of the trade and the public would associate and identify the trademark JAGUAR solely with the appellant. Moreover, the appellant's mark has been recognised as a well-known trademark by various judicial authorities in numerous jurisdictions.
• The registration of an identical mark by the respondent would cause confusion, and thus dilute the reputation and distinctiveness of the appellant’s trademark.
• The respondent had adopted an identical mark with bad-faith intentions in order to benefit from the goodwill attached to the appellant’s mark.

In response, the respondent put forward the following arguments, among others:

• It had been using the mark JAGUAR since 1945 and had done so openly and extensively in many countries.
• It was the first to apply for the mark in Class 14 (watches) in India and the appellant does not have a reputation in relation to watches in this country.
• ‘Jaguar’ is a dictionary word and over 45 marks containing the word ‘jaguar’ are registered in various classes in India. This showed that the appellant does not have a monopoly over the word ‘jaguar’ and that the appellant’s mark is not well known in India.

Having examined the pleadings of the parties, the record of the case and the decision of the registrar, the IPAB made the following observations before reaching a conclusion:

• The registrar had erred in holding that the appellant’s mark had to be registered in Class 14 in order to receive protection in relation to watches. The appellant had provided proof of use of its mark and evidence of its reputation. Therefore, the registrar’s ruling that there was no actual use of the mark in commerce or advertisement in relation to watches was wrong. The IPAB also observed that the classification of goods is "only an administrative tool for the registry… and is not a fail-proof test to eliminate a likelihood of market confusion".
• The registrar’s ruling that the appellant does not hold any registered trademarks in Class 14, and thus cannot file an opposition, was illogical and against the provisions of the Trademarks Act 1999, which states that “any person” may file an opposition.
• The fact that the word ‘Jaguar’ is a common dictionary word or that the parties' marks coexist in a number of jurisdictions could not justify the respondent’s use and registration of a mark identical to that of the appellant.
• The appellant’s JAGUAR mark is a well-known trademark.

The appellant’s brand has received extensive exposure over the years in India and worldwide. It is instantly recognisable and is protected as a well-known mark in India. Under the provisions of the act relating to well-known marks, the registrar cannot allow the registration of a trademark that is identical to an earlier well-known mark, if such registration would lead to a depreciation of the value of the goodwill attached to the earlier mark.

Based on the facts of the case, the IPAB held that the registrar’s order was “full of infirmities and exhibited pronounced bias necessitating the IPAB to step in to right a terrible wrong”. The IPAB thus allowed the opposition and refused to register the respondent’s mark.

Smitha Krishna Prasad, Aarushi Jain and Vivek Kathpalia, Nishith Desai Associates, Mumbai