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Trademark Battle: Sony's Failed Appeal Against 'SONY' Nail Polish Registration in India

By Kguttamclc | Views 19612

Background:

Appeal by Sony Kabushiki Kaisha (Petitioners)
Challenging the decision of the Assistant Registrar of Trade Marks.
The Registrar had granted the application of Shamrao Maskar (Respondents) for the registration of a trademark for a rectangular label with the word "SONY" for "Nail Polish".

Facts:

Respondents' Application: Filed application for "Nail Polish for sale in the city of Greater Bombay" and advertised in the Trade Marks Journal.
Petitioners' Opposition: Sony opposed the registration, claiming that "SONY" had acquired a worldwide reputation for electronic goods and its use on nail polish would cause deception or confusion among customers.

Proceedings:

The Assistant Registrar overruled the opposition, directing that the mark "SONY" be registered in Part 'B' of the Register, finding that the mark was not likely to cause confusion or deception among customers.
Sony appealed the decision, arguing that the Registrar had incorrectly evaluated the evidence, given the global reputation of the "SONY" brand.

Issues:

The key issue was whether the registration of the "SONY" mark for nail polish was likely to deceive or confuse customers, particularly considering Sony's global reputation for electronic goods.

Observation:

Court's Analysis: The court examined Section 11(a) of the Act (present 9(2) of Trademark Act, 10), which prohibits the registration of a mark likely to cause deception or confusion. The court emphasized that the likelihood of confusion must be evaluated on a case-by-case basis, considering the nature of the goods, customer base, trade channels, and overall context.
Distinction from Caltex Case: The court distinguished this case from the Caltex decision, where registration was denied due to the likelihood of confusion caused by the widespread reputation of the mark "Caltex." In the Caltex case, the opponents had presented strong evidence in the form of 36 affidavits from different parts of India, showing that people believed there was a connection between the mark "Caltex" and the applicant's goods, leading to the conclusion that confusion was likely.
In contrast, in the present case, Sony did not submit any affidavits from dealers or consumers to support their claim that using the "SONY" mark on nail polish would lead to confusion. The only affidavit provided by Sony, from Mr. Afzal Curim, failed to mention any likelihood of confusion or deception. This lack of evidence was critical in the court's decision to uphold the Assistant Registrar's finding that there was no likelihood of confusion.
Final Decision: The court upheld the Assistant Registrar's order, concluding that the use of the "SONY" mark for nail polish was unlikely to deceive or confuse customers, given the different nature, trade channels, and consumer bases of the goods involved.

Outcome: The petition was dismissed with costs, and the respondent's application for the registration of the mark "SONY" for nail polish was allowed to stand.