Similar marks for identical goods allowed to coexist

India
The Delhi High Court has considered rival applications for an interim injunction filed by Roca Sanitario SA against Naresh Kumar Gupta, trading as Roma International, and by Roma against Roca (CS (OS) 626/2006 and CS (OS), 2223/2006, March 15 2010). The court dismissed both applications.
 
In support of its application, Roca argued as follows:
  • It owned registrations for the trademark ROCA in respect of bathroom tiles and fittings and sanitary products in over 90 countries.
  • It had owned registrations for the ROCA mark in India since March 28 1979. It had owned numerous domain names containing the word 'roca' since 1995. It started using the ROCA mark in India before 1998.
  • Roma’s prior use claim was unfounded. The evidence provided by Roma showed that the earliest use of the ROKA mark was in September 1999. Invoices submitted by Roma to demonstrate use since 1996 were not credible.
  • Roca's worldwide sales figures, import of goods and advertisements in international magazines showed that its reputation had spilt over into India.
  • Roma's explanation for the adoption and use of the ROKA mark since 1996 was unconvincing. Roma adopted the ROKA mark without conducting a trademark search.
  • Roma adopted a mark similar to Roca's trademark for identical goods (ceramic and sanitary goods). Therefore, confusion and deception were inevitable. Moreover, Roma's use of a similar font showed that its intentions were dishonest. Roma’s attempt to establish prior use by relying on affidavits of its dealers was pointless, as the affidavits did not demonstrate sales.
  • Before the opening of the Indian economy, Roca could not import its goods into India due to trade barriers.
In contrast, Roma argued as follows:
  • It had owned a registration for ROKA in respect of sanitary goods and fittings since 1996. It had imported goods from China and marketed them under that mark since that date. It filed affidavits of several dealers that had sold ROKA-branded goods over the past 10 years. It also provides invoices dating from 1996 onwards.
  • 'Roka' was a coined term which was derived from the names of Gupta's children, Romika and Kanishk.
  • Roca had not used the mark in India. It had not advertised ROCA-branded goods in trade journals or magazines which were available in India or of which the average Indian consumer was aware.
  • The mere assertion that the ROCA mark had a trans-border reputation was insufficient. There should be documentary evidence to support that claim.
  • ROCA had failed to show why it had not used its mark for 23 years (from 1979 to 2002) after securing registration.
The court was of the view that Roca had failed to show that its international reputation had spilt over into India. The court pointed out that the magazines relied on by Roca were in Spanish or French. Therefore, it was questionable whether these magazines were available to Indian consumers. The court considered that Roca exported products to India only for specific customers, such as hotels. It was thus difficult to conclude that Roca had a presence in the Indian ceramic tiles market. Consequently, Roca was not entitled to an interim injunction.
 
The court also dismissed Roma's application for an injunction, stating that its explanation for the choice of the term 'roka' was unconvincing. The court also concluded that the evidence submitted by Roma was insufficient to establish any kind of brand awareness or distinctiveness. 
 
Abhishek Nangia, Ranjan Narula Associates, associate firm of Rouse Group, Delhi

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