Playing card spat highlights that prior rights are a winning hand

In November 2009, the Indian company TM Printers applied to register the mark BONUS BLACK in Class 16 for playing cards, claiming it has been used since 1 January 1984.

Upon publication, this application was opposed by the United States Playing Card Company – a major name in the international playing cards, children’s card games, collection card games and card accessory industries. The US company based its opposition on the contention that it owned and used the BONUS trademark in the card-related space and brought its case before the Indian Trademark Office.

The resulting decision ruled on whether the concurrent registration of the BONUS and BONUS BLACK marks could create confusion in the playing-card space. Perhaps, more importantly, it also demonstrated the power of proof of prior rights in India with regard to trademark registration.

Key contentions

In its opposition to TM Printer’s attempt to register the BONUS BLACK trademark in India, the United States Playing Card Company, founded in 1867, emphasised that it had been the registered proprietor of the BONUS trademark in the playing-card industry since 1950 and had been using the (unregistered) mark in India since 1944. The argument echoed the company’s history of conflicts with potential third-party infringers – many of which eventually resulted in written acknowledgement of the US company’s ownership of the BONUS mark.     

Concurrently, TM Printers – declaring itself the largest player in India’s playing card industry, with more than 50 brands to its name – claimed that it had coined the impugned mark by combining two dictionary words: ‘bonus’ and ‘black’. It specifically deemed the word ‘bonus’, indicating a premium, gift or reward, to be a laudatory but generic word, which was commonly used as a trademark by various manufacturers in the playing-card industry.

From 1984 to 2008, the company used the combination of the phrase ‘bonus black’, represented in black text, and an image of a golden spade on certain products. Its application maintained that the phrase led to the acquisition of valuable goodwill for TM Printers and backed this assertion up with affidavits detailing the sale of goods bearing the mark in question.

The Trademark Office's decision

In the Indian Trademark Office’s decision, the hearing officer held that the applicant’s mark and the opponent’s registered mark clearly bore a close resemblance.

They determined the goods sold under the two marks – as well as their trade channels and primary consumers – were identical. As such, there existed a likelihood of confusion caused by the applicant’s use of the phrase ‘bonus black’ and the existence of the opponent’s trademark. The decision further observed that the likelihood of the phrase mistaken for a commercial extension of the BONUS mark was high and that the applicant’s mark was bound to cause confusion and deception amongst consumers and traders.

According to the hearing officer, by no stretch of the imagination could the word ‘bonus’ be said to inherently refer to playing cards. The United States Playing Card Company established prior worldwide statutory and common law rights through its BONUS trademark with regard to playing cards. Specifically concerning India, the registration of said mark in 1950 served as prima facie proof of the opponent’s longstanding and prior statutory rights to the trademark. Additionally, the mark had acquired a secondary meaning in the country by virtue of its extensive and longstanding use.

Impact of the case

Despite the applicant’s claim of use dating back to 1984, the Indian Trademark Office refused its registration of the mark BONUS BLACK. This case serves as a strong example of how proof of prior rights through registration and use can defeat an interloper in India – even if they have managed to secure a toehold in the market.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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